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Our Take May 8, 2018

On April 24, 2018, the Supreme Court in Oil States Energy Services, LLC v. Greene’s Energy Group, LLCupheld the PTAB and declared patents to be a "public franchise."

Our Take: Justice Thomas's decision reads like an ends justifies the means tortured explanation as to why the cases and history of Article III courts are wrong and why patents are like toll bridges.  On the other hand, Justice Gorsuch's dissent is a simple, beautifully crafted retort that shows the folly of the majority with a simple analogy to a gift.  Justice Gorsuch writes that "[j]ust because you give a gift doesn't mean you forever enjoy the right to reclaim it."  The oddest part of the odd majority opinion is their caveat that "our decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause."  What are they doing here?  Are they inviting a Due Process Clause or the Takings Clause challenge?  If they are, why didn't they just decide it now? Why leave patent owners in the dark again?

Our Take Jan 12, 2017

On Thursday, Steve Brachman of IPWatchdog in his article on Nintendo of America, Inc., et. al. v. iLife Technologies, Inc. listed two astonishing statistics regarding PTAB trials.  1.  Last summer, research of PTAB trials using legal data analytics showed that perhaps more than 90 percent of patents challenged through validity trials at the PTAB were being rendered defective . 2. As of December 31st, only 319 petitions for patent validity challenges at the PTAB, or 4 percent of the total 7,937 petitions filed at the PTAB, have led to final written decisions where all claims of a challenged patent are upheld as valid. 

Our Take: How can proceedings that favor a Petitioner 96% of the time be considered anything other than unfair?

Our Take Dec 13, 2017

At the same time the Supreme Court was hearing oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and in SAS Institute Inc. v. Matal they denied cert in an important 101 eligibility case Openet Telecom, Inc. v. Amdocs (Israel) Limited.

Our Take: Denial of cert is important here because it essentially affirmed the eligibility of very broad claims directed to processing network accounting information.  Representative claim 1 in AMDOCS (ISRAEL) LIMITED v. OPENET TELECOM, INC. is shown below:

1. A computer program product embodied on a computer readable storage medium for processing network accounting information comprising:

computer code for receiving from a first source a first network accounting record; 

computer code for correlating the first network accounting record with accounting information available from a second source; and 

computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.

Our Take Nov 29, 2017

Just after the Supreme Court heard oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC they heard oral arguments in SAS Institute Inc. v. Matal.

Our Take: It is instructive to read the transcripts of both cases 1. Note that in Oil States Justice Ginsburg argues that IPRs are just like reexams.  However, in SAS, Justice Gorsuch gets the government's solicitor, Mr. Bond to state that "I think the scheme of ex parte reexamination is fundamentally different."  2. In SAS, Justice Roberts quips "if I understand your answer to Justice Breyer, that Congress deliberately adopted an ambiguous term in the statute so that the agency would determine what it meant." 3.  Both cases show the liberal justices siding with the government and some if not all of the conservative justices favoring the other side.  4.  Our tally of questions:  Oil States: for: 56  against: 52 tossup: 2; SAS: for: 38  against: 65 tossup: 2 (Note that "for" means for petitioner.  Also note that Oil States had respondent and the government arguing, so that could explain more "for" questions.)

Our Take Nov 27, 2017

Today the Supreme Court heard oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.   

Our Take: Although determining a decision based on oral arguments is fraught with peril, it seems clear that unlike most patent cases this case will not be decided 9-0.  Justice Gorsuch was a vociferous advocate for Petitioner's position that a patent is a private right.  The four liberal justices seem ready to side with the respondents, with Justice Ginsburg being the most outspoken advocate.  Chief Justice Roberts appeared to side with Petitioner and Justice Thomas is likely to vote for a private right.  The wildcards here are Justices Kennedy and Alito.  Whatever the result, expect Justice Gorsuch to write a lively opinion detailing the history of patents as private rights.


                Our Take Nov 13, 2017

The CAFC in SMART SYSTEMS INNOVATIONS, LLC v. CHICAGO TRANSIT AUTHORITY invalidated claims directed to validating entry into a first transit system using a bankcard terminal.

Our Take: The most important citation in the case is right after the listing of the claims. “We . . . look to whether the claims . . . focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” McRO, 837 F.3d at 1313.  This suggests that claims should be drafted to show how the abstract idea "improves the relevant technology."  For Smart Systems, showing how validating entry specifically improved the transit system (if possible) may have helped.

Our Take Oct 9, 2017

The CAFC in AQUA PRODUCTS, INC. v MATAL recognized that "patent owners largely have been prevented from amending claims in the context of IPRs. A February 2017 study noted that the Board has only granted eight motions to amend in postissuance review proceedings (six in IPRs and two in CBM proceedings)."  As a result, after reviewing the five opinions in the case, the en banc court could only conclude that "(1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled deference, the PTO may not place that burden on the patentee."

Our Take: Hopefully this case will, at least, start the process of making post-grant trials more fair to patent owners. If anything, this decision further confirms that the current system remains completely biased in favor of petitioners and unfairly removes the property rights of patent owners.

Kasha Law LLC is an Intellectual Property law firm located in the Washington D.C. area.  The firm specializes in high quality patent preparation and prosecution before the United States Patent and Trademark Office.  The firm has significant experience in electrical engineering, software development, and bioinformatics.  The firm is well-suited to handle your most complex cases in these and other areas. 


April 24, 2018 - Supreme Court upholds the PTAB and declares patents a public franchise, like a toll bridge, in OIL STATES ENERGY SERVICES, LLC v. GREENE’S ENERGY GROUP, LLC, ET AL.  

December 13, 2017 - Supreme Court denied cert on Nov 27 in Openet Telecom, Inc. v. Amdocs (Israel) Limited essentially validating claims directed to a computer program product for processing network accounting information.

November 27, 2017 - Supreme Court hears oral arguments. SAS Institute Inc. v. Matal

November 27, 2017 - Supreme Court hears oral arguments. Oil States Energy Services, LLC v. Greene's Energy Group, LLC

November 27, 2017 - Supreme Court denies cert confirming 101 eligibility of claims directed to processing network accounting information. OPENET TELECOM, INC. v. AMDOCS (ISRAEL) LIMITED 

October 4, 2017 - CAFC shifts the burden in post-grant motions to amend to the Petitioner.  AQUA PRODUCTS, INC. v MATAL 

September 19, 2017 - Patexia names Kasha Law as one of the top 50 law firms in Inter Partes Review (IPR) out of more than 5,000 attorneys.   Patexia Names the Top 50 Law Firms, Attorneys and Companies in IPR Intelligence Report