Thursday, February 28, 2013

The Demise of 35 U.S.C. § 102(f)

The main provisions of the Leahy-Smith America Invents Act (AIA) will go into effect on March 16, 2013. Among these, 35 U.S.C. § 102(f), which provided a defense to patent infringement based on lack of inventorship, will be repealed. This section provided that a person is not entitled to a patent if “he did not himself invent the subject matter sought to be patented.”

However, 35 U.S.C. § 101 will to some extent, at least, fill that gap. Thus, the repeal of § 102(f) will require those seeking to invalidate a patent or prevent a patent from being granted to fall back on § 101. This raises this question of how “lack of inventorship” under § 101 will be treated the same and how it will be treated different from § 102(f). For example, will it now be treated more similarly to the subject-matter eligibility requirement that coexists in § 101?

First, some review. Although sometimes overlooked, § 101 actually provides the basis for four requirements to obtain a patent: (i) inventorship, (ii) patent-eligible subject matter, (iii) utility, and (iv) absence of double-patenting on an anticipation rationale. As Joe Matal discussed in his excellent Guide to the Legislative History of the America Invents Act, the legislative histories of both the 1952 Patent Act and the AIA include commentary that § 101 requires the named inventor to have actually invented the subject matter that he seeks to patent.

Meanwhile, defenses that may be asserted in any patent infringement action are enumerated in 35 U.S.C. § 282. In the new Post-Grant Review established by the AIA, review is explicitly limited to the grounds for invalidation specified in § 282. In relevant part, § 282 states that an accused infringer may assert “[i]nvalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability” (emphasis added).

Professor David Hricik, interestingly, has made the case that the defenses available under § 282(b) may not include the patent-eligible subject matter requirement as “a condition for patentability.” Professor Hricik also appears to believe that § 282 is the exclusive source of defenses to infringement in district court litigation, just as in the new Post-Grant Review and Inter Partes Review. If Professor Hricik is correct, then courts have been wrongly assuming that a patent can properly be invalidated on subject-matter-eligibility grounds during litigation.

Since Professor Hricik’s based his conclusion that subject-matter eligibility falls outside of the ambit of § 282(b) on the wording of §§ 282 and 101 generally, then § 282(b) should similarly be interpreted to leave out the lack-of-inventorship defense. If so, lack of inventorship does not provide a basis for invalidity in Post-Grant Review and probably also does not provide a defense to infringement during litigation. (Inter Partes Review, meanwhile, is limited even more narrowly to §§ 102 and 103.)

Similarly, statutory double-patenting and the other requirements of § 101 would also not provide a defense to infringement during litigation. This would turn out to be very strange since, e.g., courts have frequently recognized judicially-created obviousness-type double patenting as a defense to infringement during litigation.

Two observations in conclusion. First, assuming that Professor Hricik is correct, at what stage could inventorship actually be challenged? The USPTO’s implementation of the AIA’s Third-Party Submissions provision permits persons to submit, before issuance of a patent, “patents, published patent applications, or other printed publications of potential relevance to examination.” However, given the facts that lack-of-inventorship evidence often does not take the form of a printed publication and that patents are often not published before issuance, in the vast majority of cases this will not be a useful way to challenge a patent before issuance.

Second, the Supreme Court stated in Bilski v. Kappos, 130 S. Ct. 3218 (2010), that the subject-matter eligibility requirement of § 101 presents a “threshold test.” 130 S. Ct. at 3225. Certain judges on the Federal Circuit appear to interpret this “threshold” language as imposing some kind of procedural framework. For example, Judge Mayer wrote in his dissent in Myspace, Inc. v. GraphOn Corp., 672 F.3d 1250 (Fed. Cir. 2012):

The issue of whether a claimed method meets the subject matter eligibility requirements contained in 35 U.S.C. § 101 is an “antecedent question” that must be addressed before this court can consider whether particular claims are invalid as obvious or anticipated. In re Comiskey, 554 F.3d 967, 975 n.7 (Fed. Cir. 2009). . . . This court must first resolve the issue of whether the GraphOn patents are directed to an unpatentable “abstract idea” before proceeding to consider subordinate issues related to obviousness and anticipation.

672 at 1264 (emphasis added). This point specifically, and the topic generally, have been discussed at the Patently-O Blog.

Given the Supreme Court’s basis in Bilski for stating that subject-matter eligibility is “threshold test," which appears to be the language of § 101 and its location in the Patent Act, there is no obvious reason why the other three requirements of § 101 also should not be considered to be of a procedurally “threshold” nature. Thus, with the repeal of § 102(f) we may come to find inventorship also being explicitly treated as a “threshold test” that must be resolved before “subordinate issues” such as obviousness and anticipation.