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The Brave New World of Section 101 Guidance

He promised he'd do it. United States senators begged him to do it. A Federal Circuit judge said he'd welcome it. And on Thursday, Andrei Iancudid it.

The PTO took its first step in the Iancu era to try and clean up the mess that is Section 101 law. The agency proposed some new guidance for its examiners on patent eligibility—specifically, how to apply a series of recent Federal Circuit decisions led by Berkheimer v. HP that in turn are trying to explain what the Supreme Court meant by “well-understood, routine or conventional activity” that isn't patent-worthy.

The former Irell & Manella partner has been saying for months that the PTO will begin issuing guidance that, while respectful of court decisions, will seek to lead the dialogue, rather than just react to it.

But as is so often the case with Section 101, beauty is in the eye of the beholder. The immediate reviews of the new guidance were all over the map. Either it's great for patentees …

… or it's just routine guidance, nothing really to see here.

A reader who prefers to remain anonymous points out at least one way the guidance does seem to be getting out over the Federal Circuit's skis. Berkheimer emphasized that some Section 101 cases can be decided as a matter of law, and that previous cases taking that approach remain good law.

That nuance seems lost in the guidance, which states that examiner rejections based on Section 101 “must be based upon a factual determination that is supported as discussed in the memorandum.”

Making Section 101 Robot-Proof

I mentioned the Senate. It seems like ancient history now, but Iancu and the Judiciary Committee sent out shock waves at Wednesday's oversight hearing on the PTO.

The PTO director has already said he's reviewing the way the Patent Trial and Appeal Board conducts America Invents Act trials. On Wednesday he spelled out the breadth: “the institution decision, claim construction, the amendment process, composition of judging panels, the conduct of hearings, and a variety of operating procedures.”

Prodded by Sen. Orrin Hatch, Iancu also said the PTO is studying whether AIA trials “are impacting Hatch-Waxman in a disproportionate way.”

Judiciary Chairman Charles Grassley at one point sounded some alarm. “There is concern from some stakeholders that you might gut the process that has been set in the statute,” he said. Iancu assured him that the goal is to ensure balance in IPRs, though he also told Sen. Chris Coons that, generally speaking, it's “critically important that we change the narrative, that we drive a pro-innovation, pro-IP narrative” at the PTO.

Coons, Grassley and Sen. Kamala Harris also raised concerns about Section 101 law. Harris in particular is worried the artificial intelligence industrywon't be able to patent its algorithms. “As you know, you're a native Californian, we have an outsized investment in resolving some of these questions,” Harris told him.

Iancu is a native of Romania, but we take her point. She asked him to report back on actions he's taken within 90 days. “There are a lot of folks who need more guidance,” Harris added, “and are quite confused and need clear guidance that only you can provide.”

Yep, all we need is someone who can draw a clear, bright line between what should be eligible and what shouldn't. Then the Supreme Court can smudge it up all up again.

Who Got the Work?

A Virginia company that provides safe, filtered content for school kids picked a fight with a Google-centric competitor, but it looks like the two have become friends. Backed by Wilson Turner Kosmo and Friedman, Suder & Cooke, Kajeet Inc. sued the Gibson, Dunn & Crutcher-represented Liminex Inc. for patent infringement in January. Google and Kajeet announced a business partnership earlier this month, and Kajeet and Liminex reached a tentative settlement April 10.

➤ The dispute: Kajeet Inc. says it was founded in 2003 by three fathers who wanted to ensure their children could use mobile devices without encountering “inappropriate and distracting online content.” Their solutions are now used in hundreds of school districts around the country. Liminex Inc., also known as GoGuardian, manages Chromebook use in “Google-powered schools.” Kajeet accused Liminex of infringing systems and methods for controlling computers based on remotely stored use policies. Kajeet announced April 2 that it's partnering with Google to provide filtered WiFi on school buses.

➤ The attorneys: Partner Frederick Kosmo Jr., senior counsel Hubert Kimand Associate Morgan Suder of San Diego's Wilson Turner Kosmo teamed up with partners Jonathan Suder and Corby Vowell and attorney Richard Wojcio Jr. of Fort Worth's Friedman, Suder & Cooke for Kajeet. Gibson Dunn partner Michael Sitzman and Associate Jaysen Chung represented Liminex.

Who Got the Work? Tribal Immunity Edition

A Covington & Burling team led by partner Robert Long has signed on to represent Allergan before the Federal Circuit as the court weighs whether Native American tribal immunity shields Allergan's Restasis patents from inter partes review.

Fish & Richardson had represented Allergan before the Patent Trial and Appeal Board. But Shore Chan DePumpo, counsel for Allergan's licensing partner the Saint Regis Mohawk Tribe, had taken the lead on the sovereign immunity issue. Both remain on board at the Federal Circuit.

Allergan and the tribe also are being represented by regulatory lawyer Jonathan Massey of Massey & Gail, who signed the parties' Federal Circuit brief, and Marsha Kostura Schmidt. The Federal Circuit has indicated it will hear Allergan and Saint Regis' appeal in June.

Perkins Coie; Wilson Sonsini Goodrich & Rosati; Sterne, Kessler, Goldstein & Fox; and Sughrue Mion represent Mylan, Teva and Akorn, the generic drug makers challenging Allergan's patents.

Pass the Patented Popcorn

If I were in Silicon Valley next week, I'd sure want to attend IP Counsel Cafe's annual conference, if for no other reason than to see Stanford law professor Mark Lemley and former Federal Circuit Chief Judge Randall Rader debate the outlook for U.S. patent protection on the same panel.

Rader, who could get the last laugh on inter partes review pending the Supreme Court's decision in Oil States or Iancu's PTAB overhaul, will also share a panel on IPR strategy with PTAB Vice Chief Judge Scott Weidenfeller.

U.S. District Judge James Robart—known in patent circles for FRAND licensing, and in the rest of the world for enjoining the Trump travel ban,will give a keynote address.

That's all from Skilled in the Art for this week. In the meantime, may your children be safe from harmful internet content and your robot algorithms safe for patenting.