BPLA Case Law Committee

Recent 101 Decisions on Appeal from the PTAB:  CAFC Consensus or Continuing Chaos?

Presenters: David J Thibodeau, Partner, VLP Law Group

 Scott Pierce, Partner, Saul Ewing

When: Friday October 26 at 8:30AM

Where: Saul Ewing

131 Dartmouth Street, Suite 501

Boston MA 02116

Register Here!

The general consensus among the intellectual property community (with the possible exception of the Supreme Court) is that the jurisprudence of patent eligibility is in disarray.  Despite many decisions of the lower courts since the Supreme Court's holdings in Bilski, Alice, and Myriad, it appears that confidence in the outcome of any new set of facts is diminishing.  This is evidenced, for example, by the exceedingly high rates of rejections at the Patent Office under 35 U.S.C. 101 during examination in certain examining groups, the number of such cases being appealed to the Patent Trial and Appeal Board (PTAB), and from the PTAB to the Federal Circuit, the lack of unanimous decisions at the Federal Circuit, the rising number of petitions for certiorari to the Supreme Court, and the persistent need for revised guidance from the Patent Office consequent to decisions from both the Federal Circuit and the Supreme Court.

The next meeting of the BPLA Case Law Committee will discuss two recent Federal Circuit cases: Urvashi Bhagat v. Iancu and the petition for certiorari filed on August 28, 2018 (Case No. 18-277); and In re Villena, decided by the Federal Circuit on August 29, 2018.  Bhagat questions the validity of an earlier Supreme Court case, Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), in view of Myriad.   In re Villena tests application of the CAFC’s recent holding in  Berkheimer v. HP Inc., that determination of patent eligibility under section 101, while being a matter of law, nevertheless may involve questions of fact.  We will explore fundamental differences of opinion among judges on the Federal Circuit in both cases, and the Patent Office’s reasoning in the brief they filed in Villena, that exposes apparent confusion by both the judiciary and the Patent Office.

Please read the following before attending:

Bhagat v. Iancu, Petition for Cert

In Re Villena, CAFC Opinion (See also the Petition for Rehearing and USPTO Brief)

Contact caselaw@bpla.org for more information.

Committee Co Chairs

James Lampert, WilmerHale, Retired

Yvonne Lee, WilmerHale

N. Scott Pierce, Saul Ewing Arnstein & Lehr LLP

Valarie Rosen, Cabot Corporation
David Thibodeau, VLP Law Group
caselaw@bpla.org