Experts weigh in on the most important IP developments of the past year
The Supreme Court’s refusal to review the American Axle case shows it “is not up to the task of correcting erroneous lower-court misapplications of the patentable subject-matter standard.”
—Alden Abbott
BY EILEEN McDERMOTT
All Eye on Washington stories initially appeared on IPWatchdog.com.
In 2022, we had surprising denials at the Supreme Court, expected rulings from the U.S. Court of Appeals for the Federal Circuit, a flurry of activity from the U.S. Patent and Trademark Office under newly appointed director Kathi Vidal, and some exciting precedents set in the rapidly evolving area of inventions and art created by artificial intelligence machines, among other developments.
These experts provided their opinions on the biggest stories:
Alden Abbott, former Federal Trade Commission general counsel—The most significant development was the Supreme Court’s decision to deny certiorari (refuse to review) in the American Axle case.
The [federal circuit’s] decision had held that a technology that reduced noise from driveshaft vibrations did not qualify as patentable subject matter under Section 101 of the Patent Act. This decision, which found no support in the plain language of the statute (and was at odds with a common sense understanding of what could be patentable), made manifest that the Supreme Court is not up to the task of correcting erroneous lower-court misapplications of the patentable subject-matter standard.
It is plain now that efforts to undo this damage must be pursued before Congress, through advocacy for a rewrite of Section 101.
Bruce Berman, chief executive officer, Brody Berman Associates—Inability to pass meaningful legislation to enhance patent certainty; continued difficulty securing patent licenses, even under fairest and most reasonable terms; the crypto/NFT meltdown (they will return); proliferation of negative IP stereotypes, including those that belittle legitimate licensors; confirmation of Kathi Vidal as USPTO director; and the World Trade Organization’s decision to waive patent obligations associated with COVID-19 vaccines.
Marla Grossman, partner, American Continental Group—The good COVID-related news was the U.S. patent system awarding valuable patent rights to incentivize innovators to risk their efforts and treasure to promote the progress of science and thereby enhance public welfare. The system worked as designed in the past few years as scientists and pharmaceutical companies, with remarkable speed, developed and brought to market vaccines that significantly reduced the harmful effects of the COVID epidemic and, in the process, saved hundreds of thousands, if not millions of lives.
The bad news was that even though the rewards offered by the patent system produced such outstanding results in dealing with the pandemic, the World Trade Organization agreed, with the support of the United States, to waive patent obligations for COVID vaccines for five years. By so acting, our government has reduced the incentives offered by our patent system with respect to innovation to meet future crises that threaten humanity.
Wendy Verlander, managing shareholder, Verlander, LLP—Many important things happened in 2022.
The Western District of Texas stopped assigning cases filed in Waco to Judge Alan Albright and began assigning them to judges across the district, resulting in a dramatic reduction of cases filed in Waco. VLSI was awarded over $2 billion in a case against Intel and then became the subject of a shakedown from a third-party company that used an inter partes review to try to extort money, punctuating the need for an IPR standing requirement.
Courts required disclosure of litigation funding arrangements, which caused a lot of discussion about the relevance of that information. Most important, the Supreme Court again refused to weigh in on the patent eligibility mess it created in Alice when it refused to accept cert in American Axle, despite the solicitor general’s recommendation and the deafening pleas from inventors, lawyers and judges.
Thankfully, a bill attempting to fix this intractable problem has been introduced in the Senate. Let’s hope that gets some traction in 2023.
Steve Kunin, partner, Maier & Maier—The two biggest moments for IP in 2022 were the confirmation of Kathi Vidal as director of the USPTO and the formation of the Council for Innovation Promotion, chaired by former USPTO Directors David Kappos and Andrei Iancu.
