MVS Filewrapper® Blog: PTO Interference Decisions do not Preclude Invalidity Defenses in Court

The Federal Circuit has issued a decision in AbbVie v. Janssen Biotech and Centocor Biologics, which relates to patents that broadly cover antibodies which can neutralize activity of human interleukin 12 (IL-12) and have useful application in the treatment of autoimmune disorders. The patent owner, AbbVie, sued Janssen and Centocor for infringement of the patents at issue.  At trial, the jury found that all of the asserted claims were invalid on the grounds of lack of written lack of description, enablement, and obviousness.  AbbVie appealed the district court's decision. 

 

On appeal, AbbVie asserted that the denial of its summary judgment was improper, because the district court erroneously held that Centocor was not collaterally estopped from raising invalidity defenses in the infringement action after the interference proceeding at the Patent and Trademark Office.  Collateral estoppel or issue preclusion can be invoked when the issue sought to be precluded was involved in an earlier matter, has actually been litigated, the issue was determined by final and binding judgment, and the determination of the issue was essential to the judgment. The court here reasoned that the proceedings and judgment from the Patent and Trial Appeal Board was not final as an action for interference was still pending at the district court level. Also, §146 of the Patent statute provides in relevant part that "[a]ny party to an interference dissatisfied with the decision of the [Board] on the interference, may have remedy by civil action, if commenced within such time after decision, not less than sixty days. . . ." Further, there is language in the statute which allows the district court to make a de novo review of findings of fact in situations where new evidence is presented following the Board's review. Because procedures are provided in the patent statute that allows for additional judicial remedies if a party to an interference action is not satisfied, the court held that Centocor was not collaterally estopped in this case from raising invalidity defenses in the infringement action.  However, the Federal Circuit's discussion also left open the possibility that collateral estoppel may have applied had Centocor appealed under §141 instead of bringing a civil action. 

 

The Court also discussed the written description requirement and acknowledged that in light of Ariad this requirement is separate from the concept of enablement. While AbbVie classified its claims as a set of human antibodies, they did not disclose any structural features to indicate a commonality within the genus.  The Federal Circuit found the claims to be invalid in view of Ariad's holding that "merely drawing a fence around a perceived genus is not a description of the genus" and the fact that the jury heard substantial evidence that AbbVie's patents described only one type of structurally similar antibodies which are not representative of the full variety of scope of the genus.  The court also emphasized the inherent vulnerability of patents to invalidity challenges based on lack of written description, where the areas of technology are unpredictable and difficult to prove a correlation between function and structures found within the genus. 

 

The court ultimately affirmed the district court's judgments in both the infringement action and the interference action. 

 

The full opinion can be found here.

MVS Filewrapper® Blog: Federal Circuit Holds Common Sense Cannot Establish Presence of an Element

The Federal Circuit's recent decision in K/S HIMPP v. Hear-Wear Technologies presents an interesting development in the law of obviousness.  In affirming a finding of non-obviousness by the PTO Board of Patent Appeals and Interferences ("BPAI"), the Federal Circuit held that while common sense or basic knowledge may provide a reason to combine elements present in the prior art, it cannot establish the presence of an element itself.

 

Hear-Wear Technologies ("Hear-Wear") owns U.S. Patent No. 7,016,512 ("the '512 patent"), relating to a hearing aid that has three components.  The components that make up the hearing aid are a behind the ear audio processing module, an in-the-canal module, and a connector between the two.  Initially, during prosecution, the examiner rejected dependent claims 3 and 9 for obviousness, but ultimately allowed all claims.

 

K/S HIMPP ("HIMPP") filed an inter partes re-examination of the '512 patent, arguing that claims 3 and 9 were obvious for the same reasons supplied by the Examiner during the original prosecution.  The re-examination examiner rejected HIMPP's arguments due to lack of evidence and ultimately maintained the patentability of claims 3 and 9. HIMPP appealed the examiner's decision to the BPAI, which found that although HIMPP argued that the content of claims 3 and 9 was “well known,” HIMPP failed to direct the Board to any portion of the record for underlying factual support for its arguments for obviousness, and therefore affirmed the Examiner.

 

On appeal to the Federal Circuit, HIMPP argued that the detachable connection was already known, and that adding the detachable connection was a natural combination of prior art.  The majority of the panel (Judges Lourie and Wallach) affirmed the BPAI, holding that record evidence was required to support an assertion that the structural features of claims 3 and 9 of the ’512 patent were known prior art elements. Because HIMPP did not provide any evidence, and the Board cannot accept general conclusions about what is “basic knowledge” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability, there was no support for HIMPP's position. 

 

MVS Filewrapper® Blog: Internet Discussion Systems as Prior Art

The Federal Circuit's recent decision in Suffolk Technologies, LLC, v. AOL Inc., and Google Inc., adds another item to the list of "printed publications" that may preclude patenting of a claimed invention:  posts on internet newsgroups. 

 

In June 2012 Suffolk Technologies, LLC sued Google Inc. for infringement of U.S. Patent No. 6,081,835 ("the '835 patent"), related to "methods and systems for controlling a server that supplies files to computers rendering web pages."  Google argued that a newsgroup post—made nine months before the priority date of the '835 patent by a college student in response to a question posed in a discussion of common gateway interface—anticipated the claims at issue. 

The district court agreed with Google and granted summary judgment of invalidity.

 

Suffolk appealed the district court's decision, arguing that the court improperly construed the claim term "generating said supplied field," and that the newsgroup post should not be considered a printed publication under 35 U.S.C. § 102.  The Federal Circuit affirmed the district court on both counts.

 

Suffolk argued that the district court erred by deciding that the newsgroup post was prior art, deciding that the post was accurate and reliable, omitting the testimony of their validity expert, and ultimately granting summary judgment.  Suffolk asserted that the post was not made publically accessible because locating it would be too difficult, and the audience was mostly "beginners" and therefore not those of ordinary skill in the art.  Suffold also asserted that, if presented to a jury, a "'second-hand reproduction of an old Usenet post'" would be discredited and that the testimony of their validity expert was crucial to the decision, and as a result summary judgment was inappropriate.  The Federal Circuit was unpersuaded by any of Suffolk's arguments.

 

Of particular note, while the post in question was non-indexed and non-searchable, the Federal Circuit held that is was nonetheless sufficiently publically accessible to be considered a printed publication because someone interested in the topic could easily locate a list of posts in the newsgroup based on its hierarchical organization.  Further, the court held that the post in question was sufficiently disseminated because dialogue with the intended audience was the entire purpose of the newsgroup posting; the post elicited a number of responses; and many more people may have viewed the post.

 

While the decision deals with printed publications and public disclosure under pre-AIA § 102, the analysis is unlikely to be any different under the AIA. 

 

The full decision is available here.

 

MVS Filewrapper® Blog: Federal Circuit Finds Clones Unpatentable

The Federal Circuit issued its opinion in In re Roslin Institute, a case involving cloned animals.  The Roslin Institute (Roslin) owns a patent for methods of cloning animals, based on the work that created Dolly the Sheep.  The inventors of that patent also assigned to Roslin an application claiming protection for the clones themselves.  During prosecution, the USPTO deemed the claims to the clones contained in that application to be directed to non-statutory subject matter under 35 U.S.C. § 101 because the clones constituted a natural phenomenon that did not possess markedly different characteristics than any found in nature.  The USPTO decision was appealed to the Patent Trial and Appeal Board, which upheld the rejection. 

 

On appeal to the Federal Circuit, the appellate court affirmed the PTAB decision, concluding that genetic identity of a clone to a progenitor/donor animal precludes it from patent protection, despite the fact that such a clone itself does not exist in nature.  The court held that "clones are exact genetic copies of patent ineligible subject matter, [and as a result] they are not eligible for patent protection."

 

Interestingly, the court dismissed Roslin's arguments that environmental factors lead to phenotypic differences between its clones and their donor mammals that render their claimed subject matter patentable, stating that any such differences were not claimed.  In contrast, the court focused on the genetic aspect of the clones—which although similarly unclaimed—the court determined was implicit in the use of the term "clones".  The court further discounted any phenotypic differences as being the result of "environmental factors" uninfluenced by Roslin's efforts. 

 

The court ultimately qualified it's holding, stating that "having the same nuclear DNA as the donor . . . may not necessarily result in patent ineligibility in every case," but that in this case "the claims do not describe clones that have markedly different characteristics from the donor animals of which they are copies."

 

The full opinion is available here

MVS Filewrapper® Blog: "Insolubly Ambiguous" Standard not Applicable at the USPTO

In In re Packard the Federal Circuit held that the USPTO need not follow the insolubly ambiguous standard in order to satisfy a prima facie rejection for indefiniteness.  Rather, the Federal Circuit held that

when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claims claim as [indefinite]. 

(emphasis added).  The Federal Circuit tempered this holding by citing to Georgia-Pacific Corp. v. U.S. Plywood Corp., 258 F.2d 124, 136 (2d Cir. 1958), stating,

At the same time, this requirement is not a demand for unreasonable precision.  The requirement, applied to the real world of modern technology, does not contemplate in every case a verbal precision of the kind found in mathematics. . . .  Rather, how much clarity is required necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances.

 The patent application on appeal (Serial No. 12/004,324) was directed to a coin change holder shown in Figures 1 and 2 above.  Claims 28 through 37 were on appeal—claims 1 through 27 were cancelled during prosecution.  Claim 28 is representative of the issue on appeal:

28.       I claim a small, thin, flat plane, rectangular change holding card and wallet/billfold or purse construction with the front top side of the card comprising three raised, straight, parallel, double flanged separators and two raised, straight, parallel, double flanged side edges and a raised side edge end thereby forming four parallel, side by side, flanged coin holding channels or rows of the same length and of different widths, one for quarters, one for dimes, one for nickels, and one for pennies, that are similarly blocked at one side edge by the raised side end edge with the other side of the channel/rows open except for small, fixed, flexible, partially moveable, rubber or plastic retainers that are attached to the topside and ends of the double flanged separators such that coins can be retained on the card and yet slide freely above the surface of the card and obliquely overlap as necessary within the channel/rows between the separators while the bottom, back side of the card is constructed with a wallet, billfold or purse extending from it.

The Examiner rejected the claim as indefinite for lack of written description and as obvious.  The Examiner asserted that multiple limitations were indefinite for lacking antecedent basis or "were otherwise unclear."  Mr. Packard appealed to the Patent Trial and Appeal Board (PTAB).  The PTAB affirmed the rejection citing MPEP § 2173.05(e) which states, "[a] claim is indefinite when it contains words or phrases whose meaning is unclear."  Mr. Packard appealed the PTAB's decision to the Federal Circuit.  On appeal, Mr. Packard argued that the test applied by the PTAB, as set forth in the MPEP, fails to meet the insolubly ambiguous standard articulated by the Federal Circuit. 

The Federal Circuit noted that no case had previously addressed the question presented by this case—"what standard for indefiniteness should the U.S. Patent and Trademark Office apply to pre-issuance claims." The Federal Circuit made clear that a different standard applies to pre-issuance claims (i.e. patent applications under prosecution) that to post-issuance claims (i.e. when an issued patent is being challenged).  Further, the Federal Circuit noted a basis for its decision is that "Congress assigned to the USPTO the responsibility to examine applications to ensure compliance with the statutory criteria for issuance of a patent."  Thus, "indefiniteness rejections by the USPTO arise in a different posture from that of indefiniteness challenges to an issued patent."  

MVS Filewrapper® Blog: Competing Without Practicing—Preliminary Injunctions for Patent Infringement

In Trebo Manufacturing, Inc., v. Firefly Equipment, LLC, the Federal Circuit held that a plaintiff seeking a preliminary injunction for patent  infringement does not need to practice the patent at issue in order to receive an injunction, so long as it sells a competing product.  Trebro brought suit alleging that FireFly's sod harvester product infringed its U.S. Patent No. 8,336,638, and seeking a preliminary injunction to stop the infringement.  The United States District Court for the District of Montana denied Trebro's request for a preliminary injunction, finding insufficient likelihood of success on the merits of the patent infringement claims and no irreparable harm to Trebro. 

 

On appeal, the Federal Circuit vacated, finding that the district court erred in its claim construction, and that it therefore abused its discretion in finding no likelihood of success on the merits.  In addition, the Federal Circuit held that "the fact that Trebro does not presently practice the patent does not detract from its likely irreparable harm."  Because Trebro and FireFly compete in the same tiny, niche market, there is a strong probability of irreparable harm, and "a party that does not practice the asserted patent may still receive an injunction when it sells a competing product."

MVS Filewrapper® Blog: StoneEagle v. Gillman – Patent Inventorship, Authorship, and Ownership

In StoneEagle Services, Inc.,v. Gillman the Federal Circuit confirmed that assistance in reducing an invention to practice generally does not contribute to inventorship. In this case, the issue centered on whether there was a sufficient controversy regarding inventorship for the case to remain in federal court.  The plaintiff alleged that the defendant had "falsely claimed that it is his patent, that he wrote the patent, that it is on his computer, and that he ‘authored’ or ‘wrote’ it, or words to that effect.” 

 

The court determined that the most favorable possible inference in favor of the plaintiff only indicated that the defendant assisted in constructively reducing an invention to practice by drafting the patent application.  The court confirmed that those activities confer no more rights of inventorship than activities in furtherance of an actual reduction to practice, which is usually insufficient to rise to the level of inventorship.  As the court concluded, if they were to hold otherwise, "patent attorneys and patent agents would be co-inventors on nearly every patent. Of course, this proposition cannot be correct."

 

The full decision is available here.

MVS Filewrapper® Blog: Means-Plus-Function Claims and Written Description for Priority

In EnOcean GMBH v. Face International Corp., the Federal Circuit vacated and remanded a final order of the U.S. Patent and Trademark Office (“PTO”) and the Board of Patent Appeals and Interferences (“Board”) with respect to EnOcean’s U.S. Patent Application No. 10/304,121.   The Federal Circuit held (1) the term “receiver” was recited with sufficient structure as to not invoke the means-plus-function requirements of 35 U.S.C. § 112, ¶ 6, and (2) the related German and PCT Applications recited a “receiver” such that one of ordinary skill in the art would understand the bounds of the invention as to allow the U.S. Application to claim the benefit of the German and PCT applications’ priority dates.

On June 25, 2010, the Board declared an interference between EnOcean and Face International—the real party of interest in U.S. Patent No. 7,084,529, directed at similar self-powered switches to those claimed in the EnOcean application.  After finding the claims of the ’529 Patent unpatentable under 35 U.S.C. § 103, the Board applied the presumption that the claims in EnOcean’s Application were also unpatentable.  EnOcean argued that the claims of its Application should be entitled to the filing date of its related German and PCT applications, which would antedate the cited art.  The Board held the claims of EnOcean’s Application were means-plus-function claims and were not entitled to the earlier priority date. 

On appeal, the Federal Circuit first examined the claims of EnOcean’s Application which read on “a signal receiver for receiving” and a “a receiver adapted to receiving” (the “receiver claims”).  The Federal Circuit disagreed with the Board’s finding that there is no distinction in meaning between ‘receiver’ and ‘signal receiving means,’” noting that the lack of the word “means” entitles the claims to a presumption that they are not means-plus-function claims and then cited to extensive evidence that one of skill in the art would sufficiently understand the structure defined by the term “receiver.” 

The Court then turned to the question of whether the written description of the German and PCT Applications were drafted with sufficient detail as to conclude that the inventor invented the claimed invention.  The Court decided that one of ordinary skill in the art would understand the bounds of the invention “merely by reading the term ‘receiver’” in the German and PCT Applications.  The Court further held that the Board’s requirement that the German and PCT Applications “expressly describe the structure of the receiver” applied the incorrect standard.

MVS Filewrapper® Blog: Patent Invalidity Based on Non-Compliant Claims of Priority

In Medtronic Corevalve, LLC v. Edwards Lifesciences Corp., the Federal Circuit affirmed summary judgment of invalidity of the asserted claims of U.S. Patent No. 7,892,281 ("the '281 patent") based on the patent's claimed priority date.  Medtronic sued Edwards for infringement of claims 3, 4, 7, 12, 14, and 15 of the '281 patent.  The U.S. District Court of the Central District of California granted summary judgment of invalidity to Edwards, holding the asserted claims of '281 patent were invalid as not being entitled to a priority date earlier than April 10, 2003.  The Federal Circuit affirmed the district court’s holding.

The '281 patent was filed on January 5, 2009 and issued on February 22, 2011.  It descended from a family of patents claiming priority to U.S., international, and French applications.  On its face, the '281 patent claims priority to French Application No. 99/14462 filed on November 17, 1999.  However, the asserted claims had proper priority to French Application No. 00/14028, filed on October 31, 2000.  The pertinent chain of priority was summarized by the Federal Circuit as follows:

Application

Serial Number

Filing Date

French App. 1b

French App. No. FR 00/14028

Oct. 31, 2000

International App. 2b

International App. No. PCT/FR01/03258

Oct. 19, 2001

U.S. App. 4

U.S. Patent App. Serial No. 10/412,634

Apr. 10, 2003

US. App. 6

U.S. Patent App. Serial No. 11/352,614

Feb. 13, 2006

U.S. App. 8

U.S. Patent App. Serial No. 12/029,031

Feb. 11, 2008

U.S. App. 10

U.S. Patent App. Serial No. 12/348,892

Jan. 5, 2009

 

Through the litigation, Edwards realized that the '281 patent had several defects in its chain of priority, including failure to comply with 35 U.S.C. §§ 119 and 120.  Edwards moved for summary judgment of invalidity of the asserted claims, on the basis "that these defects limited the priority date of the Asserted Claims to no earlier than April 10, 2003."  Based on the April 10, 2003 priority date, Edwards also moved to invalidate the Asserted Claims on summary judgment under 35 U.S.C. § 102 with earlier filed French Application [No. 00/14028] and [it’s related PCT Application.

The district court granted Edwards motion.  The court's decision rested on it finding that the claims to priority under §§ 119 and 120 were not in compliance with the statutory sections.  The district court noted that § 119 requires "that 'all intermediate applications in a priority chain contain a specific reference to the earlier-filed foreign application' from which priority is claimed."  Not every one of the intervening Medtronic applications in the priority chain did so.  Thus, the court held that the '281 patent was not in compliance with § 119 and priority could not be established any earlier than at least April 10, 2003.  With respect to § 120, the court "noted that under § 120, a later filed application may claim priority based on an earlier field application if, inter alia, the later filed application contains or is amended to contain a specific reference to the earlier filed application."  The district court found that applications within the  priority chain failed to comply with these requirements of § 120.  As such, the court held that the '281 patent was not in compliance with § 120 and priority could not be established any earlier than at least April 10, 2003.

Medtronic appealed the district court's decision.  The Federal Circuit affirmed the district court's grant of summary judgment.

MVS Filewrapper® Blog: Federal Circuit Clarifies Patent Term Adjustment

The U.S. Court of Appeals for the Federal Circuit has issued an opinion that provides guidance for how Patent Term Adjustments should be calculated.

Between June 2009 and May 2011, Novartis filed four civil lawsuits against the Director of the United States Patent and Trademark Office (PTO) in the United States District Court for the District of Columbia claiming that, for twenty-three of its issued patents, the Director had improperly determined the amount of patent term adjustment (PTA).  On February 16, 2012, the district court consolidated the cases.    

Novartis claimed that the Director’s determinations of the patent term adjustment were erroneous because they were based on two mistaken interpretations of the PTA statute as it applies to an applicant’s request for continued examination (RCE).   The District Court held that for the patents where review of PTA was applicable, the Director’s determinations were incorrect, and granted Novartis the additional patent term.  On appeal, the Federal Circuit court affirmed-in-part and reversed-in-part the District Court’s ruling, concluding that Novartis was entitled to most—but not all—of the additional patent term adjustment it sought.   

The portion of the PTA statute relevant to this case is set out in in 35 U.S.C. § 154(b).  This provision states:

 

if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application under section 111(a) in the United States or, in the case of an international application, the date of commencement of the national stage under section 371 in the international application, not including—

(i)      any time consumed by continued examination of the application requested by the applicant under section 132(b);

(ii)     any time consumed by a proceeding  under section 135(a), any time consumed by the imposition of an order under section 181, or any time consumed by appellate review by the Patent Trial and Appeal Board or by a Federal court; or

(iii)    any delay in the processing of the application by the United States Patent and Trademark Office requested by the applicant except as permitted by paragraph (3)(C), the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.

Novartis asserted that the PTA it was granted on its patents was incorrect because the Director erroneously interpreted this provision to provide that (1) time spent in any continuing examination, no matter when initiated by the applicant, does not count towards tolling the statute’s three year allotment, and (2) both the time from initiation of continued examination to allowance and the time from allowance to issuance do not count toward tolling the three year allotment.  The Federal Circuit agreed with the PTO on the first issue and Novartis on the second.    

In finding that the Director's first interpretation of § 154(b) is correct, the court held that the best reading of the statute is that "the [PTA] time should be calculated by determining the length of the time between application and patent issuance, then subtracting any continued examination time and determining the extent to which the result exceeds three years."   The court concluded that this interpretation is fairest to the applicant while also conforming to the statute's purpose.

In ruling for Novartis on the second issue, the court determined that there is no basis in the statute for distinguishing a continued-examination case from a case not involving a continued examination.  As a result the court held that any time between allowance and issuance should count toward the PTO’s three year allotment, regardless of whether there has been any continued examination.  

The full opinion is available here.

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