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.

MVS Filewrapper® Blog: 2014 Supreme Court Cases Relating to Intellectual Property

On January 10, 2014 the Supreme Court agreed to review a variety of intellectual property cases in the upcoming session, including two patent cases, a copyright case, and a trademark case (including Lanham Act claim).  A brief overview of these cases is provided and more detail will be available once decisions are entered by the Court.

Limelight Networks, Inc. v. Akamai Technologies, Inc. (U.S., No. 12-786.)

Question Presented to the Supreme Court: Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).

The Federal Circuit dismissed the “single-entity” rule for finding induced infringement of a method/process claim, finding that steps taken by multiple parties can result in induced infringement. The Federal Circuit stated, “To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.” If the Supreme Court upholds the Federal Circuit’s ruling, a patentee has increased opportunity to assert induced infringement for method/process claims in the marketplace.

Nautilus, Inc., v. Biosig Instruments, Inc. (U.S., No. 13-369)

Question Presented to the Supreme Court: Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory requirement of particular and distinct patent claiming? Does the presumption of validity dilute the requirement of particular and distinct patent claiming?

The Federal Circuit reversed a district court decision that a patent claim to a heart rate monitor was invalid for indefiniteness as a matter of law because of its use of the claim term “spaced relationship” in describing the positioning of two electrodes with respect to each other. The Court held that this claim term was not one that is “insolubly ambiguous” when the intrinsic evidence is considered from the perspective of a person of skill in the art. It considered the functionality of the claimed monitor, as described in the specification, as did the USPTO when the claim was under reexamination. “[T]he claims provide inherent parameters sufficient for a skilled artisan to understand the bounds of ‘spaced relationship.’” Judge Schall concurred in the result but would have used a more narrow analysis, explaining that he would not have used the functional limitation to address the definiteness issue.

 

POM Wonderful LLC v. The Coca-Cola Company, U.S. (No. 12-761)

Question Presented to the Supreme Court: Whether the court of appeals erred in holding that a private party cannot bring a Lanham Act claim challenging a product label regulated under the Food, Drug, and Cosmetic Act.

The case arising out of the 9th Circuit resulted in affirming judgment in favor of Coca-Cola, finding that POM's Lanham Act challenge to Coca-Cola’s “Pomegranate Blueberry” name was barred under the Food Drug and Cosmetic Act (FDCA).  Applicability of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a) (authorizing actions of false/misleading description of goods), The FDCA and/or state law claims will be addressed.

American Broadcasting Companies, Inc. v. Aereo, Inc. (U.S., No. 13-461)

Question Presented to the Supreme Court: Does a company “publicly perform” a copyrighted television program when it retransmits a broadcast of that program to thousands of paid subscribers over the Internet?

The Second Circuit denied reviewal of a panel decision that online streaming of TV programs to individual subscribers is not an infringing public performance. The panel found that the creation of a copy of a broadcast that is transmitted to individual subscribes failed to establish infringement as streaming “to the public.”

MVS Filewrapper® Blog: Bring on the New Year—What is in Store for IP in 2014?

Happy New Year to all of our FilewrapperÒ followers! We hope 2013 was a productive year and wish you the best in 2014. As the New Year quickly approaches we would like to share with you a few predictions for 2014 for you to look forward to and for which to prepare!

·         Increased opportunities for quasi-litigation under AIA.  Various new mechanisms are available to challenge patents under the America Inventors Act (also referred to as “AIA” or “Patent Reform”) many provisions of which took effect in 2013. New strategies are available to challenge patents at the USPTO instead of challenging in court, providing distinct advantages—and some disadvantages.  Inter Partes Review, Post-Grant Review and transitional programs specific for business method patents are quasi-litigation proceedings which are heard by a panel of USTPO administrative law judges.  Ex Parte Reexamination—which has been available since 1981—also remains to allow a patent challenge to be heard by a patent examiner, requiring little from the challenger other than filing required papers with some evidence of patent invalidity.  The cost for ex-parte reexamination has significantly increased, although it remains a far less expensive option than litigation with the courts.

·         (Finally) an international design patent application is available!  Design patents protect a product’s new, original and ornamental design.  Design patents present a smart option for investment in protecting a product, since they cost significantly less than utility patents and are generally granted at a much faster rate.  In addition to these benefits of filing design patents, changes in international design registration under the Hague Agreement may facilitate more effective international protection for your design inventions.  Effective December 18, 2013 a single international application designating a variety of countries for protection can be filed through the International Bureau of WIPO.  This is beneficially a single international application to be filed at one location, which will ultimately be examined by many different Offices thereafter to provide more prompt and cost effective options for design protection.  Over 60 countries and territories—including the European Union—are members of the Hague Agreement.  However, there are various countries that are excluded from this treaty (e.g. Australia, Canada, China, Mexico, Japan, India, and Brazil), which would require a separate application as has been done in the past for foreign design patents.  Nonetheless, the Hague Agreement provides significant improvements for international design protection.

·         (Some USPTO) Fees Decrease January 1, 2014.  In addition to the new classification of “micro-entity” status for Applicants to receive 75% reduction of some USPTO fees that took effect in 2013, the New Year also brings certain fee reductions.  Notably, Issue Fee payments for granted patents are substantially reduced (from $1,780 to $960 for large entity), along with the removal of publication fees and assignment recordation fees.  Reissue patent, design patent and plant patent issue fees are also decreasing.  In addition, in 2014 certain PCT fees will be eligible for payment under small and micro entity status.

·         The search continues for a test to determine patentable subject matter under §101.  The Supreme Court will hear CLS Bank v. Alice in 2014 after the Federal Circuit’s en banc decision in 2013 found many software patents to be ineligible.  The Supreme Court will again try to define an abstract idea in considering whether claims to a computerized method (using a computer-readable medium and a computer to implement instructions) is patentable subject matter.  Both the Federal Circuit and patentees are still searching for a test under §101 that is “consistent, cohesive, and accessible [to provide] guidance and predictability for patent applicants and examiners, litigants, and the courts.”

·         We may receive further guidance on Claim Indefiniteness.  The Supreme Court is expected to grant certiorari on Nautilus v. Biosig Instruments involving indefiniteness under §112, second paragraph to determine whether claims having multiple reasonable interpretations are too ambiguous and would render a patent unenforceable for lack of written description.

·         Protecting American from “Patent Trolls.”  As previously reported on FilewrapperÒ, there is legislative movement in the House and Senate to limit lawsuits which can be filed by non-practicing entities (NPEs or Patent Trolls).  There seems to be great energy around limiting “frivolous” lawsuits in our court system.  In early 2014, the Senate will consider a companion bill to Senate 1720 ("Patent Transparency and Improvements Act of 2013"), which is said to already have support from the White House.  If legislation passes the Senate, then the House and Senate bills will need to be reconciled before being sent to the President.

·         New Patent Director.  Stay tuned for further administrative changes at the USPTO as the new Director, Michelle Lee, takes office January 13, 2014. The former Google executive has been made deputy director of the USPTO, and in that capacity will take on the duties of acting director.  Lee has issued statements planning to “attack” the backlog of unexamined patents (remains at more than 500,000) and improve patent quality with improved inter partes review.

MVS Filewrapper® Blog: H.R. 3309 – The Innovation Act

On December 5, 2013, the U.S. House of Representatives passed H.R. 3309, the "Innovation Act", with bipartisan support by an overwhelming margin of 325-91 votes.  H.R. 3309 was drafted to address the perceived growing problem of abusive patent litigation attributed to alleged “patent trolls.”  Early next year, the Senate will likely consider a companion bill, S. 1720, the "Patent Transparency and Improvements Act of 2013", previously introduced by Senator Leahy (D-VT).  While S. 1720 has similar goals of H.R. 3309, the bills have many provisions that are not shared or coextensive.  Thus, it remains to be seen what impact H.R. 3309's passage will have on Senate deliberations in light of the fact the bill enjoys support from the White House.  If legislation passes the Senate, then the House and Senate bills will need to be reconciled in conference committee and sent to the President's desk for signature.  In the meantime, the Senate Committee on the Judiciary will address the issue by holding a hearing entitled "Protecting Small Businesses and Promoting Innovation by Limiting Patent Troll Abuse" on December 17, 2013.

 

Supporters of H.R. 3309 praised its passage as instituting important patent reforms made necessary after the passage of the America Invents Act (P.L. 112-29).  Particularly, the bill heightens pleading standards; requires patent plaintiffs to name anyone who has a financial interest in the patent being litigated; requires courts to delay the discovery process until after claim construction is determined; creates a voluntary process for small businesses to postpone patent lawsuits while their larger sellers complete similar patent lawsuits against the same plaintiff; and, allows a manufacturer to intervene in a lawsuit against its customers and have the action stayed for the customer if both the customer and manufacturer agree.  The centerpiece of the legislation is a fee-shifting provision that requires courts (with some exceptions) to award prevailing parties reasonable attorneys' fees and other expenses when parties bring frivolous lawsuits or claims that have no reasonable basis in law or fact.  Proponents of this legislation include broad support from the technology sector, including internet companies such as Google, Microsoft, Amazon, and Apple.  H.R. 3309 is also favored by brick-and-mortar industries such as restaurants, retailers, realtors, hotels, casinos, airlines, and the auto industry.

 

On the other side, opponents of H.R. 3309 are concerned that the fee-shifting provision would likely favor wealthy parties while discouraging small inventors from pursuing legitimate patent infringement claims.  Opponents include members of the biotechnology and pharmaceutical industries, the Intellectual Property Owners' Association, patent attorneys, and even universities—which warned that the legislation would harm their patent-licensing revenues.  Notably, the Biotechnology Industry Organization ("BIO") believes that the Act will undermine biotech research and innovation, as it would ultimately make it more difficult for patent holders with legitimate claims to protect their intellectual property.  In a press release, BIO stated "[p]rovisions in the legislation would erect unreasonable barriers to access justice for innovators, especially small start-ups that must be able to defend their businesses against patent infringement in a timely and cost-effective manner, and without needless and numerous procedural hurdles or other obstacles."

 

Additional information about H.R. 3309 and S. 1720 will be available shortly from MVS. 

MVS Filewrapper® Blog: Unitary Patent—The New European Patent Regime

Starting in 2014, the European Union will provide another option for obtaining patent protection throughout the European Union and a more streamlined approach to enforcing or invalidating patents throughout the EU.  In 2012 the European Parliament and European Council approved the “EU unitary patent package,” which establishes the European Unitary Patent and the Unified European Patent Court.  The Unitary Patent is scheduled to be effective January 1, 2014 or from the date of the entry into force of the Agreement on a Unified Patent Court, whichever is later. 

Unitary Patent

Patent protection in Europe is currently obtained by individually applying for patents in the desired European countries, or by applying for a patent through the European Patent Office (EPO) and subsequently validating in individual countries after examination.  Both of these options ultimately require a decision regarding in which individual European countries you desire patent protection.  The Unitary Patent will alter this regime by allowing applicants to obtain a single “European” patent that is valid—has a unitary effect—in all 25 EU countries that are contracting members of the Unitary Patent.  The Unitary Patent can be applied for by filing an application through the EPO and opting for the unitary patent.  It will not alter the EPO’s current search and examination procedures or standards for granting a patent.  A further benefit of the Unitary Patent is that it will reduce the need for applicant-validated translations for individual countries—under the Unitary Patent, machine translations of the application into each EU-contracting country’s language will eventually be utilized once machine translation technology is sufficiently improved.  However, until machine translations in all contracting member languages are possible, the requirement will be that the patent is published in two languages.  Thus, only one translation is required.  Applications provided in English can be translated into any contracting member country’s language.  Applications provided in French or German will be translated into English.  It is expected that the first unitary patents may issue as early as April 2014. 

Unified Patent Court

The Unified Patent Court will provide a judicial body with jurisdiction over European patents and Supplementary Protection Certificates.  Currently, European patents must be litigated separately in each country where a patent has been validated and is in effect.  Under the Unified Patent Court, the contracting countries transfer their jurisdiction over European patents and Supplementary Protection Certificates to the Unified Patent Court.  This should alleviate the need for parallel litigation both with respect to validity and infringement.  Under the Unitary Patent Court Agreement, the Unitary Patent will provide the “right to prevent direct use of the invention” and the “right to prevent indirect use of the invention.”  The Agreement specifically exempts “acts done privately and for non-commercial purposes,” “acts done for experimental purposes relating to the subject matter of the patented invention,” “the use of biological material for the purposes of breeding, or discovering and developing other plant varieties,” “the extemporaneous preparation by a pharmacy, for individual cases, of a medicine in accordance with a medical prescription,” and actions exempted in previous Directives or Trade Agreements.  Particular Courts will be set up in local and regional divisions and based on technology:  London will house the Central Division for Life Sciences and Chemistry; Paris will house the Central Division for Physics and Materials; Munich will house the Central Division for Mechanical and Engineering; and the Court of Appeals for the Unified Patent Court will be located in Luxembourg.  It is expected that the Unitary Patent Courts will be operable by 2015.

MVS Filewrapper® Blog: Exhausting Patent Rights Without a "Sale"

In LifeScan Scotland, LTD v. Shasta Technologies, LLC, the Federal Circuit clarified the ability of a patnet holder to enforce patent rights in a product it has given away, but not "sold."  Defendant Shasta Technologies appealed from a decision of the United States District Court for the Northern District of California granting LifeScan Scotland a preliminary injunction.  The injunction prohibits Shasta from making, using, or selling blood glucose test strips. The District Court found that Shasta's strips likely indirectly infringed LifeScan's U.S. Patent No. 7,250,105 ("the '105 patent"). The '105 patent does not cover any corresponding test strips. Rather, the technology described in the '105 patent relates to an apparatus for measuring glucose. LifeScan manufactures a system called "OneTouch Ultra" blood glucose monitoring system, which uses this technology. LifeScan distributes 60% of its patented meters through health care providers, who in turn provide the meters to diabetic individuals for free.

   

Shasta does not sell or make blood glucose meters, but instead competes with LifeScan in the market for test strips. Shasta's "GenStrip" test strips are designed to work with LifeScan's meters. LifeScan's suit alleged that Shasta's GenStrip test strips indirectly infringed the '105 patent.  In turn Shasta claimed the sale and distribution of LifeScan's meters exhausted its rights under the method patent because the meters substantially embody the invention.

   

The District Court agreed with LifeScan, granting it a preliminary injunction. The District Court reasoned that patent exhaustion applies only to a "sale" where the patentee received "consideration" in exchange for the patented product. The district court concluded that because LifeScan did not receive consideration when it distributed the patented product, patent exhaustion does not apply.

   

On appeal, the Federal Circuit relied on Quanta Computer, Inc. v. LG Electronics, Inc., which holds that a method claim is exhausted by the sale of a product that "substantially embodies" the invention.  The appellate court also held, as a matter of first impression, that "[w]here a patentee unconditionally parts with ownership of an article, it cannot later complain that the approach that it chose results in an inadequate reward and that therefore ordinary principles of patent exhaustion should not apply."   As a result, LifeScan could not circumvent the application of patent exhaustion principles by distributing a product embodying the patent for free, and reversed the district court’s grant of a preliminary injunction.

   

MVS Filewrapper® Blog: New and Useful - August 26, 2013

·         In University of Utah v. Max-Planck-Gesellschaft, the Federal Circuit held that a patent lawsuit between a state university and the officers of another state university is not a controversy between two states.  The case began when the University of Utah (“UUtah”) sued the Max Planck Institute and the University of Massachusetts (“UMass”) to correct inventorship of two patents—U.S. Patent Nos. 7,056,704 and 7,078,196.  The basis of UUtah’s claim was that the named inventor of the patents—Dr. Thomas Tuschl, a UMass Professor—incorporated the ideas of a UUtah Professor—Dr. Brenda Bass—and did not name her as an inventor.  UMass argued that the dispute was between two states as both UUtah and UMass are state institutions.  This presents constitutional law questions.  In particular, two provisions of the Constitution are at issue, Article 3, §2, cl.2 and the 11th Amendment.  The 11th Amendment provides sovereign immunity to state governments from any cause of action brought by citizens of another state in Federal Court.  However, Article III of the Constitution provides for state-versus-state lawsuits, for which the United States Supreme Court has original jurisdiction.  Thus, under UMass’s argument, only the United States Supreme Court should have jurisdiction to hear the matter.  In response to UMass’s argument, UUtah amended its complaint and substituted UMass with four UMass officials as defendants.  The district court held that the action was no longer a state-versus-state action and could proceed.  Immediate appeal was heard by the Federal Circuit, which affirmed the district court in a 2-1 decision.  Judge Moore provided a notable dissent arguing that UMass is an indispensable party and should be a named defendant and the case is in fact a controversy between two states.

·         In Skinmedica v. Histogen, the Federal Circuit affirmed summary judgment of non-infringement.  Skinmedica asserted infringement of two of its patents covering methods for producing dermatological products containing “novel cell culture medium compositions.”  The Federal Circuit noted that “[d]uring prosecution of the ’494 patent, the inventors limited their claimed inventions to pharmaceutical compositions comprising cell culture medium conditioned by animal cells only in three-dimensions” in order to overcome an anticipation rejection.  Histogen cultures cells beginning with “one- or two-dimensional growth” on beads that “evolves into a three-dimensional growth phase in which the cells crawl off the beads.”  On appeal Skinmedica argued “that the district court erroneously excluded beads from the definition of ‘culturing . . . cells in three-dimensions.’”  The Federal Circuit, however, found no basis to overturn the district court’s construction of the phrase “culturing . . . cells in three-dimensions.”  This was because the patents-in-suit define “three dimensional culturing” to exclude beads by “expressly confin[ing] culturing with beads to two-dimensional culturing.”  In light of this, the Federal Circuit affirmed the district court’s grant of summary judgment of non-infringement. 

·         In Ex parte Mewherter, the Patent Trial and Appeal Board held that a software composition cannot meet the requirements of patentable subject-matter under § 101 unless the invention excludes transitory media such as signals and carrier waves.  Independent claim 16 was rejected under § 101.  Claim 16 recited in pertinent part, “A machine readable storage medium having stored thereon a computer program for converting a slide show presentation for use within a non-presentation application.”  The Examiner rejected the claim arguing that the phrase “machine-readable storage medium” encompassed transitory media “such as signals, carrier waves, etc.”  The patent Applicant—IBM—countered that the term “storage” differentiates the claimed invention from the non-patentable subject matter “machine-readable medium” because it requires permanent storage.  The Board, however, affirmed the Examiner’s rejection noting that the specification failed to exclude transitory signals from its definition of “machine-readable storage medium.”  As a result, the Board held that one of skill in the art would construe the term to encompass transitory media and not be limited exclusively to permanent storage media.

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