USPTO’s Berkheimer Memo Provides Important Insights for Countering Subject Matter Ineligibility

The Federal Circuit’s Berkheimer v. HP decision has brought the patent eligibility statute, 35 U.S.C. § 101, back into the headlines. In October 2016, Ryan Truesdale wrote on this  blog that “the statute addresses the basic question of ‘is this invention the type that is patentable.’” The Federal Circuit’s decision in the Berkheimer case finally provides some degree of clarity and the USPTO, after several false starts, has finally set out clear directions for the examiners and the PTAB.

The USPTO’s Berkheimer memo states that a rejection under 35 U.S.C. § 101 requires an examiner to provide written support that the claimed subject matter is “well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). One benefit of the ruling in the Berkheimer case is that facts will always matter. Examiners must use facts from citations to declare an application ineligible. Citations can be used from court decisions, publications, and/or an official notice statement(s). The memo describes “an appropriate” publication as a “book, manual, review article, or other source that describes the state of the art discusses what is well-known and common use in the relevant industry.” As a gift to applicants, the memo states that when an applicant responds to an ineligibility determination, the examiner must provide explicit support, citing books, manuals, review articles, or case decisions, thereby effectively negating ineligibility rejections based solely upon official notice.

The Berkheimer memo drew from the Federal Circuit Court’s decision in that case as to “whether the purported improvements were more than well-understood, routine, conventional activity previously known in the industry.” Id., at 1370-71. "The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional." Id., at 1369. Applicants following the directives in the Berkheimer memo will be more successful in overcoming ineligibility determinations than in the USPTO’s previous directives under the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). There, the Supreme Court invalidated patent claims because abstract ideas were declared unpatentable by the court without “something more”.

In sum, the USPTO’s Berkheimer memo provides avenues for overcoming abstract idea ineligibility determinations. Examiners will need to provide evidence to support their contentions. Finally, the USPTO has provided safeguards against arbitrary, anecdotally-based decision making by examiners and the PTAB.

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...)
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.



Encouraging Kids of All Ages to Learn About Intellectual Property

Our kids are the future of this country; they are the inventors and innovators of tomorrow as well as our future business leaders. Thankfully there are many resources for them to learn about intellectual property. We were thrilled to learn that the USPTO has launched a new website that encourages kids and teens to create and invent, all the while discovering the importance of protecting their Intellectual Property (IP). The new site includes history, informative links, activities, and videos designed to help educate students, parents and teachers about patent law.

Here's a nicely produced video where innovators within the arena of extreme sports talk about the importance of inventing, patenting, and advancing their own tools of the trade. Many athletes (and even young people who aren't athletes) constantly serve as innovators within their disciplines, creating goods and technologies that make it possible to break new ground in competitions such as the X Games. Have a look:


That's how it's done, and it all starts with your idea! Corridor Law Group attorneys have a history of educating students about the patent process. Firm founder Bob Fieseler has visited local schools to teach students about patent law. This is something we feel that is important, because tomorrow's innovators are nearby in our own local classrooms.

Learning how to get your idea off the ground (and protected properly) isn't just for kids, either. Our attorneys often find themselves taking on the role of a teacher as they instruct and guide "first-time" clients through the patenting process. Give us a call if you have your own questions and want to learn more about developing your own IP.

So, way to go USPTO! Big applause from all of us at Corridor Law Group.



The United States Patent and Trademark Office’s (USPTO) 16th Annual Independent Inventors Conference will be held August 15-16, 2014. After taking place in various regions around the country, the annual conference is coming home to the USPTO headquarters in Alexandria, Virginia.

For two days, independent inventors and small business owners will have an opportunity to learn, network, and jumpstart their creative endeavors. Experts and senior officials from the USPTO will present valuable information on patents, trademarks, and other intellectual property (IP) matters while successful business owners and inventors will relate their inspiring personal experiences in bringing their dreams to market. In addition, representatives from government, legal, and business development entities will discuss commercial best practices and the various resources offered by their organizations. Each attendee will have an exclusive opportunity to meet one-on-one with a USPTO expert or IP professional of his or her choice, as well as hear keynote addresses from major figures in the entrepreneurial world. The featured keynote luncheon speaker for Friday, August 15, is Woody Norris. A successful serial inventor holding over 50 patents, Norris was the recipient of the $500,000 Lemelson-MIT prize in 2005.

While the Annual Independent Inventors Conference promises to be a great opportunity for independent inventors and small business owners to obtain a better understanding of the legal tools available to them; one doesn’t need to travel to Virginia to receive this valuable information. In fact, an expert resource is very accessible right here...a phone call away with the IP attorneys at Corridor Law Group. Our attorneys offer a free 20-minute consultation to anyone in the market for legal advice on how to protect their intellectual property. With decades of experience, our attorneys have advised clients ranging from individual inventors to Fortune 500 companies.

So if you’re an individual inventor, a CEO of a fortune 500 company, or a president of a startup and you don't have time for a trip to Virginia in the coming days, just give the attorneys at Corridor Law a call.

Patent Law Treaties Implementation Act Webinar hosted by USPTO

Patent Law Treaties Implementation Act Webinar hosted by USPTO

Patent Law Treaties Implementation Act: Under-the-Radar Legislation Worth Knowing About (USPTO to Host Webinar)

President Obama just signed into law the Patent Law Treaties Implementation Act of 2012, which puts into effect two little-known patent law treaties:
(1) The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva on July 2, 1999; and (2) The Patent Law Treaty

These treaties were ratified by the Senate without opposition and seek to simplify the formal obligations and reduce costs for Americans seeking patent protection outside the United States and for foreigners seeking patent protection in the United States.

Skilled IP attorneys keep abreast of new developments in intellectual property law so they can make available to their clients all of the tools afforded by U.S. and international laws. Corridor Law Group’s attorneys have been recommending the USPTO’s free upcoming webinar to their clients and colleagues in the IP field.

Here is the webinar information:

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) will host a webinar on Monday, December 16, 2013, to discuss changes to the patent law introduced by the Patent Law Treaties Implementation Act. USPTO subject matter experts will discuss application filing provisions; restoration of the right of priority to foreign applications and benefit of provisional applications; and restoration of patent rights. Attendees will have the opportunity to ask questions as well. The Act becomes effective on December 18, 2013. This webinar will educate patent practitioners on those changes.

What: Patent Law Treaties Implementation Act Webinar

When: Monday, December 16, 2013 from 2:00 p.m. – 3:00 p.m. ET

Webinar Access Information:

Event number: 994 201 304

Event password: 123456

Event address for attendees:

Teleconference information:
 Call-in toll number (US/Canada): 1-650-479-3208
 Access code: 994 201 304

Agency officials will answer questions on provisions of patent law.