Many requests received to dismiss the patent infringement lawsuit about Alices judgement

James DONATO Judge United Stated

The 2020 International IP Court Conference an international exchange event of the professionals in the IP field consisting of five sessions which are status of international trials high technology and patent eligibility major issues in design litigation cross-border patent infringement and mock trials has been ended successfully on November 12.

The session 2 of the conference covered opinions of the speakers from the United States Australia Germany China and Korea about Advanced technology and eligibility of patent : Focusing on Biotechnology and Software Inventions.

Judge James DONATO who participated the conference online is a judge of the United States District Court for the Northern District of California. He is currently working as a patent exclusive judge in the Patent Pilot Program and member of Local Rules Commit-tee of the Northern District Court. He also has been teaching many lectures about federal trials in the United States and abroad.

Before being appointed as a judge he worked as a partner attorney at Shearman & Sterling LLP working mainly in technical and anti-competition fields for nearly 20 years. He also served as a president of the San Francisco Bar Association.

He studied history at the University of California Berkeley received a masters degree in history from Harvard University achieved Ph.D in law from Stanford University and in 2014 he was nominated as a judge by president Obama. Since then he worked as a law clerk for judge Procter R. Hug Jr. of the 9th United States courts of appeals.

Q: Under the legal system of your country please explain are there cases of patent exclusion that fails to meet the patentable subject matter before judging the reasons for patent invalidation such as novelty non-obviousness and lack of sufficient description. If there are cases in your court please explain the cases of the judgement and if there is any discussion in the academic field please introduce it together.

A: The section 8 of Article 1 of the Constitution of the United States has given the federal government the authority to grant patents of the indemnity of exclusive authority to the authors and inventors literal art and development for finite period in order to encourage the advancement of science and useful arts. According to Article 101 of the Patent Law patent eligibility stands for method machine article of manufacture composition or novelty and useful improvement of those. The invention refers to creation or discovery method means a way or technique including notification of method machine article of manufacture composition or novelty usage of the materials. The rationale (Principle of preemption) is that if exclusive patent right is granted to the above object which is basic tool of scientific and technological knowledge it would violate the main purpose of the United States Patent Law by hindering the innovation rather than encouraging.

Alices second-stage patent eligibility judging criteria is that as a first-stage is the claim for a subject is a subject that cannot receive patent protection? If so in step2 it is about whether the component of the claim contains an Inventive concept which is converting a subject that cannot be protected as a patent into a protected patent application.

Alices judging criterion had a great influence on United States patent litigation and patent eligibility analysis under Article 101 of the Patent Law. The United States district courts of california that the speaker belongs to is one of the top five courts handling new patent cases in the United States. Following the Alices judgment a number of applications for dismissal of patent infringement lawsuits are being received and successful cases of Alice dismissal requests that are received to local courts and CAFC are confirmed through United Statess court statistics.

This conference held on November 12 2020 was held at the Grand Hyatt Hotel in Seoul under the theme of Court IP and Globalization with the method using parallel online and offline to prevent the spread out of Covid 19. Focusing on IP5 which are United States China Japan and Germany about 300 IP related professionals from 8 nations around the world participated online and offline to share and progress IP issues with various cases.

The 2020 International IP Court Conference was ended in great success raising the status of the IP international trial in Korea covering five sessions and mock trials.

Photo of venue participation of the real-time online

2020 International IP Court conference venue

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