Chicago Patent Attorney: Free 20-minute Phone Consultation

Chicago Patent Attorney: Free 20-minute Phone Consultation

Chicago Patent Attorney: What you can expect from our free 20-minute Phone Consultation

The experienced intellectual property attorneys at Corridor Law Group are based in the Chicago area, but serve clients across the U.S. and in foreign countries. Our IP services and expertise cover a diverse range of businesses and technologies, with a focus on securing strong patents at a very reasonable cost.

“I’m almost always able to break away from what I’m doing to take a new client’s call. Technology developers are naturally cautious about sharing their information, but once I explain the process and costs to them, their initial wariness subsides and we can explore how the tools afforded by the patent laws can benefit their business.”

—Bob Fieseler, Attorney and Founder

We offer potential new clients a free 20-minute phone consultation, which allows us to answer clients’ questions about the patenting process without imposing on them any obligation to formally retain our firm. This initial consultation provides new clients with the information they need to determine whether they should entrust their valuable ideas to our attorneys. We also provide new clients with strategic options for protecting and building a business around their ideas. Corridor Law Group isn't in the business of writing and filing patent applications for every new client, because in some cases the patenting process won’t provide the level of protection that’s worth the costs.

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Bob Fieseler, Corridor Law Group’s founder, reports that in a normal week he conducts between three and five free phone consultations. To schedule your free 20-minute phone consultation with an experienced patent attorney, visit this page.

How could the passing of Scalia affect patent owners?

The question many in the patent field are asking is how the recent passing of Justice Antonin Scalia may change the patent landscape. The short term answer is probably not a lot. The long term answer depends on who is eventually appointed to the Court.

During his thirty year tenure on the court since his appointment by Ronald Reagan, Scalia was known as an originalist and textualist. His opinions earned him varying degrees of praise and notoriety. Often seen as pro-business and a protector of property rights, Scalia admitted to not completely understanding patent law and, surprisingly, often turned to the liberal Justice Ginsberg for guidance on patent matters. 

While President Obama has nominated Merrick Garland (a move that patent owners should be skeptical of), it is unlikely that the Senate will confirm before the presidential election. This means that at least three patent cases (discussed below) will be decided by a Court that is ideologically split down the middle (4 conservatives and 4 liberals). While for many matters this would lead to 4-4 splits (and the decisions in the lower courts being affirmed), patent law is traditionally not an area decided along ideological lines (as indicated above Scalia often turned to Ginsberg for advice on patent matters).

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It’s hopeful the Court (and Scalia’s replacement) will eventually see Scalia’s wisdom and help clarify the now uncertain patent landscape.

The three patent cases the Supreme Court has agreed to hear the session include Halo Electronics v. Pulse Electronics, Stryker Corporation v. Zimmer Inc, and Cuozzo Speed Technologies v. Michael K. Lee. The rulings on these cases will have impacts on damages and claim construction evaluation in inter partes reviews (IPR). Most legal scholars do not see the outcome of these cases changing with the passing of Scalia. However, in the unlikely event that Halo, Stryker, and/or Cuozzo ends in a 4-4 tie in, the Federal Circuit decision(s) will stand.

Despite openly admitting patent law was not his strong suit (Scalia said the hardest case he ever decided was a patent case) his legacy in patent law is likely to outlive his own expectations. Scalia was the first justice to use the term “patent troll” in an opinion. He also offered biting criticism of the tests that courts have adopted to try and make sense out of a highly abstract field (Scalia once referred to the court’s proposed test for non-obviousness as “gobbledygook”). Scalia also openly criticized the need to go beyond Bilski in Alice saying “Why isn’t doing it through a computer not enough? I mean, was the cotton gin not an invention because it just means you’re doing through a machine what people used to do by hand?”

It’s hopeful the Court (and Scalia’s replacement) will eventually see Scalia’s wisdom and help clarify the now uncertain patent landscape. Patent owners everywhere should hope for another justice who shares Scalia’s respect for property rights and recognizes that intellectual property should be provided that same respect.


Photo credit: Steve Petteway, photographer, Supreme Court of the United States - Collection of the Supreme Court of the United States (Public Domain)
 
 

Have Mayo and Alice gone too far?

For those of you following this blog, you will be familiar with our assessment of the recent decisions from the Supreme court in Mayo Collaborative Services v. Prometheus Laboratories and Alice Corp. v. CLS Bank International. These cases concerned what types of inventions qualify for patent protection under 35 U.S.C. 101, the statute governing patent eligibility. The cases were decided by the Supreme Court in 2012 and 2014, respectively, and both resulted in the invalidation of the patents involved. The first of these cases, Mayo, involved a method of administering a drug, gathering data on how the patient was responding to that drug, and deciding whether or not to alter dosage based on that information. This was determined to be a manipulation of natural laws using data and methods known to persons skilled in the art. Alice dealt with software for financial transactions, which the Court ruled to be an “abstract idea.”

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Mayo and Alice ...interpretation, but too far?

So why is it that these cases have become points of contention in the field of patent law? Simply put, these Supreme Court decisions offer precedent which is at best unhelpful for attorneys and courts, and at worst seriously concerning for patent owners.

To illustrate this result, we’re going to briefly examine a recent decision by the Federal Circuit, Ariosa v. Sequenom. In June of 2015, the Federal Circuit issued a ruling invalidating the method claims of U.S. Patent No. 6,258,540, held by Sequenom Inc. The patent concerned a means for using cell-free fetal DNA, which they discovered could be found in the blood of a pregnant mother, to determine the fetus’ susceptibility to a panel of genetic defects. The tests could also establish paternity or gender of the fetus, among other characteristics. While other diagnostic tests are able to make these determinations, until the method of the ‘540 patent was discovered the DNA for such tests would have to be harvested from the placenta or fetus. The method of the ‘540 patent allowed these tests to be run in a manner that was less invasive and dangerous for the fetus and the mother by using a sample of the mother’s blood. When the patent was struck down under the precedents set by Mayo and Alice, Sequenom petitioned the Federal Circuit for en banc review (a process by which the entire court is urged to reconsider the decision of one of its 3-judge panels). On December 2, 2015, the en banc court denied the petition, letting stand the panel’s decision and maintaining that it was bound by the Supreme Court decisions in Alice and Mayo.

Alice is firm on the impermissibility of patenting an abstract idea.

Ariosa represents one of the first major cases in which Alice and Mayo were applied to their fullest extent, with predictably troubling results. For instance, Alice is firm on the impermissibility of patenting an abstract idea (as is the language of 35 U.S.C. 101). However, the opinion issued by the Federal Circuit failed to define what constitutes an abstract idea, or offer a test for determining if an idea was too abstract to be patentable. Mayo concluded that discovering something new in nature did not show an inventive step; however, the court there stated that they “need not determine here whether, from a policy perspective, increased protection for discoveries of diagnostic laws of nature is desirable”. Neither of these decisions made clear how their precedents should be applied in upcoming cases, yet both made clear that violations of these unknown standards would result in the invalidation of a patent.

Despite denying en banc review in the Sequenom case, the en banc review panel of judges expressed concerns about the rigid application of Alice and Mayo in these types of cases. Notably, Judge Dyk called the test of patentability outlined in Mayo “too restrictive" and stated that continued use of this standard may “discourage development and disclosure of new diagnostic and therapeutic methods in the life sciences.” He also noted that the discovery of natural laws is the basis of diagnostic methods, and further went on to say that an inventive concept is present in a novel discovery of “a specific application of [a] new law of nature discovered by the patent applicant and reduced to practice.”

While the denial of further review for Sequenom stands, opinions such as these issued by the Federal Circuit only serve to further highlight the need for clarification on what the Alice and Mayo decisions mean for those of us in the business of acquiring and enforcing patents. This certainly isn’t the end of what will be a difficult battle for patent owners in the fields of software and medical diagnostics. We’ll keep you posted on new developments on this topic as they emerge.

Inter Partes Review: Bane for Patent Owners, Boon for Investment Firms

The Inter Partes Review can be a bane for patent owners and a boon for investment firms.

Can an investment fund file a challenge to a patent and bet on the outcome? This appears to the case ever since the America Invents Act gave birth to Inter Partes Review proceedings before the U.S. Patent and Trademark Office.

An Inter Partes Review is a route to invalidate a patent before the USPTO’s Patent Trial and Appeal Board, as opposed to bringing the case before a district court. In an IPR, a patent can be challenged on the grounds of anticipation by or obviousness in view of prior art. Only prior art in the form of patents or printed publication can be asserted in an IPR, but IPRs nonetheless have some notable advantages over district court proceedings. First, IPRs are relatively inexpensive to file as compared to district court cases. IPRs also adhere to different standards than district courts to invalidate a patent. While a district court is bound to interpret the words of a claim according to their ordinary and customary meaning, the PTAB examines claims under the broadest reasonable interpretation standard. This means that claims a district court may find patentable over the prior art could be found patentable in an IPR. Another notable advantage is that anyone can file an IPR to invalidate a patent, which brings us to investment mogul Kyle Bass. (continued below...)
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Bass is the president of Hayman Capital, a Texas based hedge fund. He is noted for two particularly interesting investment strategies, the first being his prediction of and profit from the recent mortgage crisis. The second, his latest strategy, involves filing IPR petitions against pharmaceutical companies and then shorting their stock or investing in their competitors. The obvious question here is “Does it work?” The answer is sometimes, but Bass and company don’t appear to be waging bad bets, considering that over 75% of patents in IPR proceedings have had at least one claim struck. In the wake of Bass’s first IPR filing against Acorda Therapeutics involving the drug Ampyra, Acorda’s stock price dropped approximately 10%, although his more recent filings against other companies have been met with a mix of changes in stock prices.

Upon hearing about this investment strategy, people’s first reaction is “That’s legal?” The answer is yes. What Bass is doing is legal. These are not frivolous lawsuits. The PTAB will only initiate an IPR if the prior art being asserted could reasonably be interpreted as anticipating the claims of the patent or rendering them invalid as being obvious variations of the asserted prior art. This is a classic example of the letter versus the spirit of the law giving rise to (presumably) unintended consequences. IPRs were designed to be a low-cost alternative to litigation in the courts, aimed at allowing parties to settle disputes over claims without spending millions. Bass’s strategy is certainly well outside of the intentions of IPR proceedings, but the PTAB has initiated IPRs in 7 of the 13 petitions filed by Bass and his associates, and there are at least 20 cases pending before the PTAB. The PTAB has also stated that “profit is at the heart of nearly every patent and nearly every inter partes review” when they ruled in September that Bass’s practice did not constitute an abuse of the IPR process.

An Inter Partes Review is a route to invalidate a patent before the USPTO’s Patent Trial and Appeal Board, as opposed to bringing the case before a district court....anyone can file an IPR to invalidate a patent.

In response to allegations that he is abusing the system, Bass and others in his investment fund and legal team have pointed out that a small number of pharmaceutical companies rely heavily on a few weak patents, and use them to artificially inflate drug prices. If this is truly the case, then the outcome of the Bass-initiated IPRs will result in a number of unhappy patent owners but some very happy investors.

There is hope for Bass’s besieged patent owners in the form of the Protecting American Talent and Entrepreneurship Act, or PATENT Act for short. While the Act currently proposes only minimal changes to IPR proceedings, there is a considerable amount of lobbying to change both the standards of review and who can file an IPR, primarily to thwart strategies like Bass’s. Similarly, the Innovation Act (discussed in one of our previous blog posts) would amend post-grant proceedings such that the PTAB would have to interpret claims under the same doctrine of ordinary and customary meaning that district courts use. But since the PTAB has determined there is nothing wrong with investment firms filing IPR petitions, it will be up to Congress to decide whether this unintended consequence of the America Invents Act should be squelched.

 

 

Patent Reform Legislation: More Potential Impact on Patent Owners

Patent Reform Legislation: More Potential Impact on Patent Owners

Current Patent Reform Legislation

Whether one’s role in the IP community is as an inventor, agent, attorney, examiner, or business owner, a number of significant reforms to the U.S. patent system in the last decade have been a source of angst to owners and developers of intellectual property. The parade of landmark Supreme Court decisions and Congress’s passing of the America Invents Act has quickly made obsolete the relatively static patent laws we knew in the twentieth century. In the last decade alone, we’ve seen the Supreme Court repeatedly reverse district court and Federal Circuit decisions regarding patentable subject matter under 35 U.S.C. 101 (most notably in Bilski, Prometheus, Alice and Myriad). Technology developers now question whether or not they have actually produced something that’s patentable.

The Supreme Court’s opinion in Alice provides a roadmap for invalidating many, many software and internet patents, and patent owners and applicants are seeing that the Federal Court and the USPTO’s Patent Trial and Appeal Board are overturning patents and denying applications at historic high rates. Just as unsettling is the prospect of further legislation and higher court rulings that could add to the present turmoil in the U.S. patent system. And the bias in the current U.S. patent system against inventors and patent owners could get worse. It’s therefore worth examining two recent legislative proposals and their potential impacts on the U.S. patent system.

Innovation Act

The first legislative proposal is the Innovation Act, a bill which passed the House in late 2013, but failed to progress through the Senate. This bill is once again up for consideration (with certain reforms), and is directed towards cutting down the number of patent lawsuits by non–practicing entities (NPEs). The bill generally requires plaintiffs to be specific as to the exact means by which their patent is being infringed (claim by claim), as well as mandatory fee–shifting, where a losing plaintiff/patent owner would be responsible for paying the attorney fees of the winning defendant). Another noteworthy change in the bill would affect the Post Grant Review (PGR) process. Currently, post-grant patent challengers are barred from raising in later court proceedings “any ground that the petitioner raised or reasonably could have raised” throughout the review process. The new bill would remove the portion regarding grounds the petitioner “reasonably could have raised”, meaning that a challenger could theoretically file for Post Grant Review on ground A, eventually lose on this ground, and then seek a further PGR of the same patent on ground B.

The Innovation Act has been criticized for its potential to raise the cost of patent litigation and prolong lawsuits, while discouraging small patent owners from asserting their exclusive rights. In the view of many, the reforms included in the Act would continue to push the U.S. patent system away from protecting inventors, and would discourage technology developers from engaging in the costly process of acquiring patents that have a higher potential than ever of being overturned. So even though the Act’s main focus is to prevent abuse of the patent system by NPEs (“patent trolls”), the effects will undoubtedly spill over to weaken the hand of technology developers generally.

STRONG Patents Act

The second legislative proposal worth noting is the Support Technology and Research for Our Nation’s Growth, or STRONG Patents Act of 2015. Introduced this year in the Senate, STRONG proposes a number of revisions to the patent system, most notably requiring the PTAB during PGR to review patent claims the way a district court would. Currently, the PTAB evaluates claims under a “broadest reasonable interpretation” standard, while district courts employ a standard of “ordinary and customary meaning.” STRONG would also place the burden of proof in a PGR on the entity challenging the patent, and would also require that claims under review be assumed valid. Other important provisions of STRONG would empower the FTC to pursue patent owners who sent frivolous demand letters, change the way damages are calculated in patent cases, and direct how the USPTO can use the fees it collects. STRONG is seen as being particularly helpful for inventors and entities seeking to enforce their patents. Many have argued that this type of law is necessary in the wake of cases like Alice, where patents that were once considered valid and enforceable are now too easily overturned. Unfortunately, the legislation would do nothing to clarify the definitions of “abstract ideas” as they relate to software in the Alice ruling.