IP Uncertainty for the Innovation Economy

By: Josh Sloat

From Alice to Axle

IP Uncertainty for the Innovation Economy

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 at Aurora
• Kristen Hansen, Patent Strategist at Aurora 
• David Cohen, Principal at Cohen Sciences
• Ty Davis, Patent Strategy Associate at Aurora
• Dr. Sophia Hsin-Jung Li, Patent Strategy Fellow at Aurora
• Arman Khosraviani, Patent Agent and Former U.S. Patent Examiner

Availability

​Patently Strategic is available on all major podcasting directories, including Apple Podcasts, Spotify, and Google Podcasts. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.

Topic and guest participant requests

​If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.​

Resources

• Related content. Today’s conversation focuses on Sections 101 and 112. We dissect these and relevant case law including the referenced Alice decision in much greater detail in Season 2, Episode 1 on Software Patents and Season 2, Episode 5 on Fortifying Life Science Patents. This episode also focuses on distinctions between the “Spec” or “Specification” and the Claims of the American Axle application. For a deeper understanding on all of the parts of a patent, check out Season 1, Episode 9 on Patent Anatomy.
• Transcripts. We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities. 
• Slides. For the visual learners out there, we also like to make our presenter slides available for your reference.