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Programs - Hot Topics Subcommittee

This subcommittee holds free conference calls roughly every two months to discuss important policy questions being addressed by the courts. These calls will be open to all Patent Law Committee Members, and are a terrific opportunity to learn more about the cases and issues involved and provide input to the Patent Law Committee on what positions it might recommend to the AIPLA Board.

Contact Gary or Benjamin if you are interested in joining and contributing to this subcommittee.

Teleconference on In re Cuozzo - May 3, 2016


Information about this telephonic meeting was also distributed to the Patent Litigation committee for their membership to join.


The teleconference will focus on the SCOTUS appeal of In re Cuozzo involving the first IPR decided by the PTAB.  The two issues on appeal are (1) Whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

The Federal Circuit opinion is at http://www.cafc.uscourts.gov/content/re-cuozzo-speed-technologies-llc-opinion-0, while the corresponding petition for writ of certiorari along with the brief of the respondent Michelle K. Lee and many amici briefs are at http://www.scotusblog.com/case-files/cases/cuozzo-speed-technologies-llc-v-lee/

While the discussion of the teleconference is intended to focus primarily on various perspectives around the justification(s) for and consequences associated with using one claim interpretation style over another in IPRs, some consideration will be given to whether the Federal Circuit’s refusal to judicially review the decision of the PTAB to institute an IPR is warranted.

Teleconference on Provisional Application Pitfalls - February 2, 2016

Information about this telephonic meeting was also distributed to the PCT committee for their membership to join.

This teleconference focused on the consequences of filing provisional applications not providing sufficient support for later filed claims in the context of (1) prior art (in U.S. practice), (2) “toxic priority” scenarios (in EPO practice), and (3) 35 USC § 102(a)(2)/(d) of the AIA.  The call was very successful with over 60 people joining the call.

Discussion of (1) focused on Dynamic Drinkware LLC v National Graphics, Inc. (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1214.Opinion.9-2-2015.1.PDF) [and In re Wertheim]: the prior art effect of a patent extends back to the filing date of an associated provisional application if the claims of the patent are supported by the provisional application.  An interesting perspective of the Dynamic Drinkware decision can be found at https://www.pharmapatentsblog.com/2015/11/03/wertheim-dynamic-drinkware-and-the-aia/.

Discussion of (2) focused on the situation in which a priority application can become novelty-destroying prior art for a subsequent priority-claiming application – See a helpful discussion of the “toxic priority” (or “toxic divisional”) scenario at http://www.jonesday.com/partial-priority-and-dealing-with-toxic-divisionals-under-the-european-patent-convention-08-27-2015/.

Discussion of (3) focused on the decision of Dynamic Drinkware in view of the AIA – See e.g., an article at https://www.pharmapatentsblog.com/2015/11/03/wertheim-dynamic-drinkware-and-the-aia/.

Teleconference on Overcoming Section 101 Alice Rejections - August 11, 2015

The teleconference focused on two recent opinions in the area of functional claiming of computer implemented inventions.  Recent Federal Circuit decisions have touched on the dangers associated with using functional claim limitations in defining computer implemented inventions.  In Williamson v. Citrix Online, LLC (Fed. Cir. 2015) (en banc), the Federal Circuit overturned the “strong” presumption against construing a claim element as being in means-plus-function format where the word “means” was not used in conjunction with a functional expression.  In Internet Patents Corp. v Active Network, Inc (Fed. Cir. 2015), a panel of the Federal Circuit found a claim invalid as patent ineligible since it was directed toward an abstract idea, and was not suitably restricted by mere use of functional limitations.  The call was very successful with over 70 people joining the call.

Teleconference on Overcoming Section 101 Alice Rejections - April 1, 2015

This call included practitioners sharing of their patent application prosecution experiences, successes and techniques for overcoming overcome "Abstract Idea" rejections under Section 101 post-Alice.  The call was very successful with over 100 people joining the call.