IP Law360 Selects Mary Murray to Join Expert Panel

June 16, 2015

By: Mary K. Murray, Ph.D.

IP Law360

IP Law360IP Law360 recently debuted an article series that focuses on timely critique by leading intellectual property experts. The series, Voice of the Bar, will feature 50 intellectual property experts who will provide commentary on the hottest issues in the industry. Mary Murray, Ph.D., was selected out of 300 experts for her expertise and thought leadership.

Mary Murray

The following is an excerpt from IP Law360's Voice of the Bar on June 17, 2015:

Question: June 19 marks the first anniversary of the U.S. Supreme Court's decision in Alice Corp. v. CLS Bank. Where do we stand one year later and what does the future hold?

Mary Murray: “In the year since the Supreme Court’s ruling in Alice v. CLS Bank, the Court of Appeals for the Federal Circuit has held several patents invalid as failing to claim patent eligible subject matter. Neither the Supreme, the Court of Appeals for the Federal Circuit or district courts have provided much clarity as to what constitutes an “inventive concept” sufficient to render application of an abstract idea, a law of nature or a naturally occurring phenomena patent eligible. The Supreme Court’s ruling in Alice, for example, heightens the vulnerability of many existing patents and may disincentivize filing of patent applications to many types of inventions, particularly those directed to so-called “business methods.” New examination guidelines by the United States Patent and Trademark Office based, in part, on Alice, are intended to assist patent applicants and examiners in identifying the limits of patent eligible subject matter under several sets of circumstances. However, it is likely that significant developments in this area of patent law remain. For example, the Federal Circuit’s June 12, 2015, decision in Ariosa Diagnostics v. Sequenom makes clear that because a claimed method of detecting paternally inherited cell-free fetal DNA includes “well-understood, conventional and routine” steps, the method is not patent eligible under 35 U.S.C. § 101. The analysis bears a resemblance to other statutory requirements for patentability, such as novelty and nonobviousness, and opens an additional door of vulnerability and doubt of what constitutes patent eligible subject matter. The challenges and debates of what is patent eligible will continue well into the future.”

 

The following is an excerpt from IP Law360's Voice of the Bar on August 21, 2015:

Question: On Aug. 13, in Akamai Technologies Inc. v. Limelight Networks Inc., the Federal Circuit overruled its prior narrow interpretation of divided infringement under 35 U.S.C. §271(a). In the Limelight decisions on direct and indirect infringement, and rulings on patent-eligibility since the U.S. Supreme Court decision in Alice Corp. v. CLS Bank, the courts appear to be struggling with how those aspects of the Patent Act apply to modern technology. How could Congress revise the statute to make it clearer?

Mary Murray: “Various decisions by the Federal Circuit and Supreme Court, such as those in Limelight and Alice, have led to speculation on the views of courts regarding the rights of nonpracticing entities. For example, the Federal Circuit’s recent decision in Limelight concerning the standard for direct infringement may raise for some the prospect of an increase in the assertion of patents by nonpracticing entities. In contrast, the Supreme Court’s decision in Alice has fueled speculation that the Supreme Court is disfavoring nonpracticing entities. These varying results may be a consequence of courts struggling with applying and interpreting patent statutes as technology advances. Nonetheless, many proposed revisions to the patent statute, such as specifying the award of attorney fees or mandating details in an initial complaint, to curtail activities of nonpracticing entities will not clarify the rights of patent owners. Further, in response to Alice, Congress should not amend the patent statute to craft a brightline of patent eligibility. In some instances, however, such as following the Limelight decision, Congress should consider amending 35 U.S.C. § 271(f) to include method claims, regardless of the perceived benefit to nonpracticing entities. How could Congress revise the statute to make it clearer?"

 

The following is an excerpt from IP Law360's Voice of the Bar on August 29, 2015:

Question: The U.S. Patent and Trademark Office recently announced a set of proposed new rules for America Invents Act reviews that would allow patent owners to introduce expert testimony in their responses, while leaving many other aspects of the proceedings unchanged. Do these proposals go far enough to address the concerns of patent owners and attorneys, or do they go too far?

Mary Murray: The proposed rule strikes an appropriate balance by allowing the patent owner to counter evidence submitted by the petitioner and should increase the efficiency of administrative review. The proposed rules also suggest a suitable change to claim construction for patents that will expire before a final decision that is narrower than the currently employed “broadest reasonable interpretation” benchmark for invalidating patents by the USPTO. Any further change in the standard of claim construction will likely need to await congressional intervention. Clarifications to the standard that patent owners must show in support of claim amendments to distinguish “over the prior art of record” is a further move by the USPTO in a positive direction in response to comments by patent owners, practitioners and third parties. The USPTO is listening and reacting to concerns regarding AIA administrative proceedings in a logical and systematic manner. Further revisions will likely surface with time.

 

The following is an excerpt from IP Law360's Voice of the Bar on October 13, 2015:

Question: The Federal Circuit's decision in SCA Hygiene Products v. First Quality Baby Products is the latest in a number of closely split en banc rulings by the court in patent cases — e.g., Suprema Inc. v. International Trade Commission, In re Cuozzo Speed Technologies LLC, CLS Bank International v. Alice Corp. and STC.UNM v. Intel Corp. Why hasn't there been stronger consensus in these cases?

Mary Murray: The split in recent en banc Federal Circuit decisions may be explained as evolving legal precedent following changes in intellectual property law and the court’s struggle to interpret Supreme Court cases that lack clear lines of demarcation for the court to apply. An alternative explanation is that the pace of technology has surpassed the pace of legislative clarification that is a necessary predecessor to guide the maturation of new law in intellectual property, including the case law established by the Supreme Court and, by extension, the Federal Circuit. A fundamental approach taken by courts is to cite to stare decisis when a ruling on an issue has been rendered. Without clear precedent for guidance, the Federal Circuit judges vary in their interpretation of new issues in intellectual property, perhaps cautious of establishing legal precedent in controversial areas of IP. The inevitable consequence is a further absence of clarity and an increase in litigating issues that lack established precedent. Congressional intervention with the input of the federal judiciary, inventors, patentees, practitioners and the Patent Office may not provide immediate clarification, but should ignite a much needed discussion for interpreting Supreme Court holdings in emerging areas of intellectual property law.

About

June 16, 2015

By: Mary K. Murray, Ph.D.

IP Law360

IP Law360IP Law360 recently debuted an article series that focuses on timely critique by leading intellectual property experts. The series, Voice of the Bar, will feature 50 intellectual property experts who will provide commentary on the hottest issues in the industry. Mary Murray, Ph.D., was selected out of 300 experts for her expertise and thought leadership.

Mary Murray

The following is an excerpt from IP Law360's Voice of the Bar on June 17, 2015:

Question: June 19 marks the first anniversary of the U.S. Supreme Court's decision in Alice Corp. v. CLS Bank. Where do we stand one year later and what does the future hold?

Mary Murray: “In the year since the Supreme Court’s ruling in Alice v. CLS Bank, the Court of Appeals for the Federal Circuit has held several patents invalid as failing to claim patent eligible subject matter. Neither the Supreme, the Court of Appeals for the Federal Circuit or district courts have provided much clarity as to what constitutes an “inventive concept” sufficient to render application of an abstract idea, a law of nature or a naturally occurring phenomena patent eligible. The Supreme Court’s ruling in Alice, for example, heightens the vulnerability of many existing patents and may disincentivize filing of patent applications to many types of inventions, particularly those directed to so-called “business methods.” New examination guidelines by the United States Patent and Trademark Office based, in part, on Alice, are intended to assist patent applicants and examiners in identifying the limits of patent eligible subject matter under several sets of circumstances. However, it is likely that significant developments in this area of patent law remain. For example, the Federal Circuit’s June 12, 2015, decision in Ariosa Diagnostics v. Sequenom makes clear that because a claimed method of detecting paternally inherited cell-free fetal DNA includes “well-understood, conventional and routine” steps, the method is not patent eligible under 35 U.S.C. § 101. The analysis bears a resemblance to other statutory requirements for patentability, such as novelty and nonobviousness, and opens an additional door of vulnerability and doubt of what constitutes patent eligible subject matter. The challenges and debates of what is patent eligible will continue well into the future.”

 

The following is an excerpt from IP Law360's Voice of the Bar on August 21, 2015:

Question: On Aug. 13, in Akamai Technologies Inc. v. Limelight Networks Inc., the Federal Circuit overruled its prior narrow interpretation of divided infringement under 35 U.S.C. §271(a). In the Limelight decisions on direct and indirect infringement, and rulings on patent-eligibility since the U.S. Supreme Court decision in Alice Corp. v. CLS Bank, the courts appear to be struggling with how those aspects of the Patent Act apply to modern technology. How could Congress revise the statute to make it clearer?

Mary Murray: “Various decisions by the Federal Circuit and Supreme Court, such as those in Limelight and Alice, have led to speculation on the views of courts regarding the rights of nonpracticing entities. For example, the Federal Circuit’s recent decision in Limelight concerning the standard for direct infringement may raise for some the prospect of an increase in the assertion of patents by nonpracticing entities. In contrast, the Supreme Court’s decision in Alice has fueled speculation that the Supreme Court is disfavoring nonpracticing entities. These varying results may be a consequence of courts struggling with applying and interpreting patent statutes as technology advances. Nonetheless, many proposed revisions to the patent statute, such as specifying the award of attorney fees or mandating details in an initial complaint, to curtail activities of nonpracticing entities will not clarify the rights of patent owners. Further, in response to Alice, Congress should not amend the patent statute to craft a brightline of patent eligibility. In some instances, however, such as following the Limelight decision, Congress should consider amending 35 U.S.C. § 271(f) to include method claims, regardless of the perceived benefit to nonpracticing entities. How could Congress revise the statute to make it clearer?"

 

The following is an excerpt from IP Law360's Voice of the Bar on August 29, 2015:

Question: The U.S. Patent and Trademark Office recently announced a set of proposed new rules for America Invents Act reviews that would allow patent owners to introduce expert testimony in their responses, while leaving many other aspects of the proceedings unchanged. Do these proposals go far enough to address the concerns of patent owners and attorneys, or do they go too far?

Mary Murray: The proposed rule strikes an appropriate balance by allowing the patent owner to counter evidence submitted by the petitioner and should increase the efficiency of administrative review. The proposed rules also suggest a suitable change to claim construction for patents that will expire before a final decision that is narrower than the currently employed “broadest reasonable interpretation” benchmark for invalidating patents by the USPTO. Any further change in the standard of claim construction will likely need to await congressional intervention. Clarifications to the standard that patent owners must show in support of claim amendments to distinguish “over the prior art of record” is a further move by the USPTO in a positive direction in response to comments by patent owners, practitioners and third parties. The USPTO is listening and reacting to concerns regarding AIA administrative proceedings in a logical and systematic manner. Further revisions will likely surface with time.

 

The following is an excerpt from IP Law360's Voice of the Bar on October 13, 2015:

Question: The Federal Circuit's decision in SCA Hygiene Products v. First Quality Baby Products is the latest in a number of closely split en banc rulings by the court in patent cases — e.g., Suprema Inc. v. International Trade Commission, In re Cuozzo Speed Technologies LLC, CLS Bank International v. Alice Corp. and STC.UNM v. Intel Corp. Why hasn't there been stronger consensus in these cases?

Mary Murray: The split in recent en banc Federal Circuit decisions may be explained as evolving legal precedent following changes in intellectual property law and the court’s struggle to interpret Supreme Court cases that lack clear lines of demarcation for the court to apply. An alternative explanation is that the pace of technology has surpassed the pace of legislative clarification that is a necessary predecessor to guide the maturation of new law in intellectual property, including the case law established by the Supreme Court and, by extension, the Federal Circuit. A fundamental approach taken by courts is to cite to stare decisis when a ruling on an issue has been rendered. Without clear precedent for guidance, the Federal Circuit judges vary in their interpretation of new issues in intellectual property, perhaps cautious of establishing legal precedent in controversial areas of IP. The inevitable consequence is a further absence of clarity and an increase in litigating issues that lack established precedent. Congressional intervention with the input of the federal judiciary, inventors, patentees, practitioners and the Patent Office may not provide immediate clarification, but should ignite a much needed discussion for interpreting Supreme Court holdings in emerging areas of intellectual property law.

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