From Alice to Axle: IP Uncertainty for the Innovation Economy

​​Patently Strategic - Patent Strategy for Startups

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In today’s episode, we’re discussing a recent court decision that judges have said could threaten "most every invention for which a patent has ever been granted", turning the patent system into a "litigation gamble."
Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into American Axle’s recent bid to have the Supreme Court overturn a lower court decision that invalidated the company’s patent in a closely followed legal battle with rival Neapco Holdings. This case offered a much anticipated opportunity to more broadly clarify patent eligibility in a time where many believe that court precedent has undermined the U.S. patent process and, in the words of retired U.S. Court of Appeals Chief Judge Paul Michel, “confused and distorted the law of eligibility”, making it an “illogical, unpredictable, chaotic” mess. Critics of these rulings and the resulting present state of IP law claim that the confusion and inconsistency has led to courts canceling many patents that should be protected. The Solicitor General has stated that problems arising from the application of Section 101 have “made it difficult for inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent eligible”.
Despite cries for help and urges to provide clarification from multiple presidential administrations, the Solicitor General, members of Congress, the Federal Circuit Court, IP bar associations, and the Patent Office, the Supreme Court refused to hear this case, leaving many inventors and industries in limbo since as a USPTO spokesperson said after the ruling, innovation "cannot thrive in uncertainty."
David and our all star patent panel discuss the case law, its implications, how present statute is being conflated and taking section 101 well beyond its gatekeeping function, and in their analysis of the American Axle patent, provide some great tips that may have changed American Axle’s present fate – and can hopefully improve your odds of success if approached intentionally at the drafting stage.
David is joined today by our always exceptional group of IP experts including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Cohen, Principal at Cohen Sciences
⦿ Arman Khosraviani, Patent Agent and Former U.S. Patent Examiner
⦿ Ty Davis, Patent Strategy Associate and
​⦿ Dr. Sophia Hsin-Jung Li, Patent Strategy Fellow
** Resources **
⦿ Show Notes
⦿ Slides
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And as always, thanks for listening!
Correction Update: This recording refers to Chief Judge Moore as "he". This is not the correct pronoun for Justice Moore. Our host did look into this pre-recording, but unfortunately misspoke in real time. Apologies to Chief Judge Moore.

Chapter

1. Intro (00:00:00)

2. Patent Concepts Primer (00:03:46)

3. Patent Act Rejection Sections (00:04:19)

4. Sections 101 and 112 (00:04:58)

5. Judicial Exception (00:06:00)

6. Specification vs Claims (00:06:27)

7. What is the CAFC? (00:07:00)

8. Discussion Overview (00:07:24)

9. Claims Analysis - Tuning and Positioning (00:08:30)

10. Court Decisions (00:12:45)

11. SCOTUS Involvement (00:14:02)

12. Practical Application, Novelty, and Improvement (00:16:04)

13. CAFC (Opinion Modified) (00:20:25)

14. Specification Analysis (00:29:01)

15. Case Law Precedent (00:37:53)

16. Alice v. CLS Bank (00:40:34)

17. CAFC Dissent (00:43:21)

18. Parting Thoughts (00:53:28)

19. Outro (00:59:30)