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USPTO publishes interim guidance for assessing patentable subject matter post-Bilski

Tue, 27 Jul 2010 16:16:00-0500

In a Federal Register notice today, the USPTO has published interim guidance regarding how examiners are to assess whether an application's patent claims fall within the scope of patentable subject matter defined in § 101 in light of the Supreme Court's decision in Bilski. Many patent attorneys were concerned when the initial memo to examiners was released, suggesting the machine-or-transformation test was a burden-shifting mechanism and leaving it to an applicant who did not meet the test to prove the claims fell within § 101. The new guidance should allay these concerns somewhat, and comments are sought on both the guidelines and to provide examples of claims that are perceived to fall both within and without § 101.

The notice provides a background of the Bilski decision, particularly in the context of abstract ideas, given that was the basis for the Court finding Bilski's claims unpatentable. It then provides details on how examiners are to evaluate claims for § 101 compliance and provides factors to be considered. Of particular note is the following passage:

Section 101 is merely a coarse filter and thus a determination of eligibility under § 101 is only a threshold question for patentability. Sections 102, 103, and 112 are typically the primary tools for evaluating patentability unless the claim is truly abstract . . . .

The guidelines also provide how the examiner can make a § 101 rejection such that it can be responded to:

If a claim is rejected under § 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea. Specifically identifying the factors used in the analysis will allow the applicant to make specific arguments in response to the rejection if the applicant believes that the conclusion that the claim is directed to an abstract idea is in error.

The Notice lists various factors that an examiner can use to assist in the determination. On the whole, this approach should assist both applicants and examiners in addressing § 101 issues in a productive manner, although there will in most cases be room for argument regarding the relative weighing of the factors.

Click below for a listing of the factors identified in the notice as relevant to the § 101 analysis.

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Copyright Office issues new DMCA exemptions: iPhone jailbreaking, noncommercial use of DVD snippets

Mon, 26 Jul 2010 19:40:00-0500

Every three years, the United States Copyright Office seeks proposals for exemptions from the Digital Millennium Copyright Act ("DMCA"). As part of the DMCA, it became unlawful to circumvent access control measures copyright holders used to secure their copyrighted works. For example, it is arguably a violation of the DMCA to use a program to "break" the content scrambling system ("CSS") encryption used for standard DVDs in order to make a copy of the DVD, even if making such a copy would otherwise be considered fair use under copyright law (although a recent decision by the Fifth Circuit arguably holds to the contrary). The purpose of the exemptions is to adapt to any unintended consequences of the DMCA, such that lawful uses of copyrighted works are not unduly restricted.

Today, the Copyright Office issued the list of exemptions in this go-around of the triennial rulemaking process. Included among the newly-granted exemptions are circumvention of the above-mentioned CSS encryption to use "short portions" in new works for the purpose of criticism or comment, when the use is educational, noncommercial, or for documentary filmmaking. This is an important exemption, as it arguably covers the majority of videos on sites such as YouTube where short portions of movies, televisions shows, and the like are posted as a portion of a remix or other creative work.

In addition, unlocking a mobile phone to allow software to be run (commonly called "jailbreaking") is also exempted from the DMCA. Notably, this does not prevent phone providers (such as Apple) from placing the restrictions on a phone in the first instance, it simply makes it not a DMCA violation to remove the restrictions.

The Office also permitted circumvention of prohibitions on "read-aloud" functionality of e-books. Some e-books have been sold with a limitation that prevents the user from using their e-reader's "read-aloud" function, essentially turning the e-book into an audio book. This is now not a violation of the DMCA anti-circumvention provisions.

The Copyright Office revisits these exemptions every three years. Click below for the full text of the exemptions granted, or head to the Copyright Office website for the full release.

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Supreme Court: Business method patents survive, but barely; Bilski's claims unpatentable

Tue, 29 Jun 2010 10:53:00-0500

Yesterday, the Supreme Court decided Bilski v. Kappos, the most recent case at the Court probing the boundaries of patentable subject matter under § 101. Details of the underlying facts of the Bilski case may be found in our post on the Federal Circuit's en banc decision here.

All nine Justices agreed that Bilski's method claims were not patentable. All nine Justices also agreed the "machine-or-transformation" test, held by the Federal Circuit to be the exclusive test for whether method claims are patentable subject matter, was a useful test, but not the exclusive test for such claims. In this way, the outcome was similar to KSR. There, the Federal Circuit had adopted an exclusive test for the question of obviousness. The Supreme Court then held the test was useful, but not the exclusive test for obviousness. In addition, all members of the Court at least expressed skepticism that the "useful, concrete, tangible result" test from State Street was a viable test, with the majority stating "nothing in today's opinion should be read as endorsing interpretations of § 101 that the Court of Appeals for the Federal Circuit has used in the past," citing State Street, and the Justice Stevens opinion concurring in the judgment stating it would be a "grave mistake" to assume that all claims meeting this test are patentable.

The disagreement among the Justices came when considering the question of whether business methods as a more general category fall within the scope of patentable subject matter defined in § 101. More detail of that disagreement after the jump.

Update: The Court, in its last orders of the Term, has issued a GVR in two § 101 cases, the Prometheus case, relating to methods for measuring the level of certain drug metabolites in the system for the purpose of adjusting the drug administration level, and the Classen case, a nonprecedential opinion relating to a method of selecting a vaccination schedule by comparing alternatives and selecting the alternative with the lower likelihood of autoimmune disorders. The Federal Circuit will therefore have two opportunities to address § 101 in light of the Court's guidance sooner rather than later.

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Bilski decided

Mon, 28 Jun 2010 09:53:00-0500

This morning, the Supreme Court handed down its opinion in Bilski v. Kappos. The court affirmed the Federal Circuit's decision.

We'll have more detailed analysis soon.

To read the opinion, click here.

USPTO proposes tiered system for patent application examination speed

Thu, 03 Jun 2010 14:35:00-0500

In a press release today, the USPTO has proposed a tiered examination system where applicants could choose to pay a higher fee in exchange for quicker examination of an application or could opt for a delay of up to 30 months before docketing for examination. This is the latest in Director Kappos' attempts to control application pendency at the Office.

The "prioritized examination" track would be much like the current accelerated examination system in that final action on the application would be targeted to be within one year of filing. However, applicants would not have to provide the onerous examination support document with the application.

Similarly, the slow track would permit applicants to elect a delay of up to 30 months before the application is placed in the examination queue. There is no indication in the press release as to whether applications filed under this track would receive a break on the filing fee. However, this track would seem to be a favorable choice for companies that would prefer their patents to issue later (and therefore, with patent term adjustment, expire later).

There will be a Federal Register notice with additional details tomorrow [UPDATE (6/4): click here for the Federal Register Notice], and a public hearing is set for July 20 at the USPTO.

To read the full press release, click here.

Ninth Circuit: Filing copyright application sufficient to bring suit under Section 411(a)

Thu, 03 Jun 2010 13:40:00-0500

In a decision last week, the Ninth Circuit held the filing of an application for registration with the copyright office is sufficient to meet the requirement that a copyright be "registered" before suit is brought under 17 U.S.C. § 411(a). In the first circuit court decision on the subject since the Supreme Court's Reed Elsevier decision (holding the registration requirement of § 411(a) is not jurisdictional), the Ninth Circuit took the position that the statute was ambiguous, and that the "application" approach better comported with the purpose of the registration requirement.

The decision deepens the circuit split on the subject, with the Fifth, Seventh, and Ninth Circuits following the "application" approach, and the Tenth and Eleventh following the "registration" approach. This continues to be an issue that would benefit from either Congressional action or a definitive ruling from the Supreme Court, something the Court declined to do in Reed Elsevier.

More detail of Cosmetic Ideas, Inc. v. IAC/InteractiveCorp after the jump.

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Supreme Court: NFL collective licensing of trademarks not immune from Section 1 antitrust scrutiny

Wed, 26 May 2010 15:52:00-0500

Monday the Supreme Court unanimously held the NFL's practice of collectively licensing the trademarks of all 32 individual teams is not immune from antitrust scrutiny under Section 1 of the Sherman Act. The NFL argued that because the marks are all licensed through a single entity, NFL Properties, there was no "contract, combination, . . . or conspiracy" under § 1, and therefore there could be no antitrust problem.

The Court disagreed. The Court first observed the question of whether there is a "single enterprise" is not dependent on the specific legal structure of the entities. As stated by the Court (internal citations omitted):

The relevant inquiry, therefore, is whether there is a "contract, combination . . . or conspiracy" amongst "separate economic actors pursuing separate economic interests," such that the agreement "deprives the marketplace of independent centers of decisionmaking," and therefore of "diversity of entrepreneurial interests," and thus of actual or potential competition.

Applying this framework, the Court held the existence of NFL Properties was not sufficient to prevent a "contract, combination . . . or conspiracy" and therefore avoid § 1 scrutiny. The teams are "sparately controlled, potential competitors with economic interests that are distinct from NFLP's financial well-being."

Despite holding the NFL's actions were subject to review under § 1, the Court did not pass on the merits, and noted some aspects of the NFL may provide a sufficient justification of its licensing practices under the Rule of Reason. Ultimately, it will be up to the district court to address the merits of the case and determine whether there is a § 1 violation.

Click below for more detail of American Needle, Inc. v. National Football League and links to media coverage of the case.

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Another issue headed for en banc review by the Federal Circuit: How to assess redesigned products

Mon, 17 May 2010 10:49:00-0500

In an order Friday, the Federal Circuit granted en banc review of its second case in the past three weeks and its third over the past three months. This time it's a case involving Tivo relating to the contempt proceedings against Echostar relating to Tivo's DVR patents. After Echostar was found to infringe Tivo's patent and was permanently enjoined from infringement, it redesigned its DVR software. Tivo asked the district court to hold Echostar in contempt for violating the injunction. The district court agreed with Tivo, and the Federal Circuit affirmed.

That opinion has now been vacated, and the Federal Circuit has granted en banc review to address whether and in what circumstances a contempt proceeding is appropriate to address alleged infringement of a newly accused device. Specifically, the questions presented are:

Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?
How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).
Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?
Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?

Consistent with its typical practice in en banc cases, the Federal Circuit is permitting amicus briefs on these issues.

To read the full order granting en banc review in Tivo, Inc. v. Echostar Corp., click here.

To read our post regarding the original appeal, click here.

Federal Circuit to consider overhaul of inequitable conduct standards en banc

Mon, 26 Apr 2010 13:09:00-0500

In an order today, the Federal Circuit granted rehearing en banc in Therasense, Inc. v. Becton, Dickinson & Co. The order indicates the court will be reconsidering its precedent on virtually the entire gamut of issues relating to inequitable conduct. Specifically, the questions presented are:

Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?
If so, how? In particular, should the standard be tied directly to fraud or unclean hands? See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?
What is the proper standard for materiality? What role should the United States Patent and Trademark Office's rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?
Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).
Should the balancing inquiry (balancing materiality and intent) be abandoned?
Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.

The court explicitly allows for the filing of amicus briefs without leave of court, and also specifically invites the USPTO to file such a brief.

For the order granting rehearing en banc, click here.

For the original panel opinion (affirming the district court's finding of inequitable conduct), click here.

More detail of the original panel opinion after the jump.

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En banc Federal Circuit reaffirms written description requirement is separate from enablement

Wed, 24 Mar 2010 17:23:00-0500

Monday the Federal Circuit released its en banc opinion in Ariad Pharmaceuticals, Inc. v. Eli Lily & Co., where the court addressed whether 35 U.S.C. § 112 has a written description requirement separate and apart from the enablement requirement. A substantial majority of the court (10 judges) joined in the majority opinion, with two judges dissenting. As summarized by the court:

We . . . read the statute to give effect to its language that the specification "shall contain a written description of the invention" and hold that § 112, first paragraph, contains two separate description requirements: a "written description [i] of the invention, and [ii] of the manner and process of making and using [the invention]."

The Federal Circuit analyzed several old Supreme Court cases, and concluded that the Supreme Court, while not specifically calling this requirement a "written description" requirement, has consistently held that an inventor must do more than simply enable one in the art to make and use the invention claimed, but also must describe what the invention is.

This decision is not unexpected, and leaves intact the Federal Circuit's jurisprudence on the subject. In fact, one of the grounds for retaining the requirement is that forty years of case law has held such a requirement exists, and inventors have relied upon the requirement over the course of that time. The court was reluctant to upset the settled expectations of the patent community. The court also declined to set forth a rule where original claims always meet the written description requirement, noting:

Although many original claims will satisfy the written description requirement, certain claims may not. For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result.

More detail of the en banc decision after the jump. Click here for our post regarding the original panel decision, which has much of the factual background of the invention at issue. Click here for a discussion of court's decision to grant en banc review, including the questions presented.

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False marking applies on a per article basis, not a per decision to mark basis

Wed, 03 Mar 2010 15:06:00-0500

In Forest Group v. Bon Tool Co., the Federal Circuit held that the false marking statute applies on a per article basis, rather than on a per decision to mark basis. The Federal Circuit reversed the district court, which had imposed a fine of $500 for a single decision to falsely mark a shipment of stilts as patented when they were not patented, and instructed the district court to recalculate the fine based on the total number of stilts that were falsely marked.

More details of Forest Group v. Bon Tool Co. after the jump.

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Supreme Court: Registration requirement of 411(a) not jurisdictional for copyright claims

Tue, 02 Mar 2010 12:32:00-0500

Today the Supreme Court decided Reed Elsevier, Inc. v. Muchnick, a case regarding whether the registration requirement of 17 U.S.C. § 411(a) is jurisdictional or a claim processing rule. The Court held the requirement to be nonjurisdictional.

The case involves a class action for copyright infringement by freelance journalists based on republication of works in electronic databases that originally appeared in, for example, newspapers. Some members of the class had copyright registrations, some did not. Nevertheless, the district court certified the class and approved the proposed settlement agreement. The Second Circuit sua sponte raised the issue of jurisdiction, and eventually held the district court lacked jurisdiction to enter an order regarding the unregistered copyrights by virtue of § 411(a).

The Supreme Court disagreed, and held the registration requirement of § 411(a) did not prevent a court from entering an order affecting unregistered copyrights. Specifically, the Court held there was nothing in the statute that indicated Congress intended the requirement to be jurisdictional. Notably, the Court observed § 411(a) did not "clearly state[]" that its requirement was jurisdictional, and also explicitly permits claims involving unregistered works in certain circumstances. This was inconsistent with a jurisdictional requirement, and therefore the district court had jurisdiction to approve the settlement agreement even though it adjudicated claims for unregistered copyrights.

The Court left the question as to whether district courts should sua sponte dismiss copyright cases where the Plaintiff is asserting an unregistered copyright for another day.

More detail of Reed Elsevier, Inc. v. Muchnick after the jump.

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Federal Circuit to consider en banc whether new evidence may be introduced in a section 145 action

Thu, 18 Feb 2010 11:50:00-0500

In an order yesterday, the Federal Circuit has agreed to consider the scope of evidence to be considered in an action filed under 35 U.S.C. § 145 to obtain review of a decision of the Board of Patent Appeals and Interferences. The case is Hyatt v. Kappos. Specifically, the court ordered briefing on the following issues:

(a) Are there any limitations on the admissibility of evidence in section 145 proceedings? In particular—
(i) Does the Administrative Procedure Act require review on the agency record in proceedings pursuant to section 145?
(ii) Does section 145 provide for a de novo proceeding in the district court?
(iii) If section 145 does not provide for a de novo proceeding in the district court, what limitations exist on the presentation of new evidence before the district court?
(b) Did the district court properly exclude the Hyatt declaration?

In the original panel decision, the court affirmed the district court's exclusion of evidence that "should have been" raised before the Board but was not, specifically evidence relating to enablement. Judge Moore dissented, contending Hyatt was entitled to introduce new evidence in a § 145 proceeding.

No oral argument date has yet been set. To read the full order granting en banc review, click here.

Developments up to second-filed application relevant to show no double patenting

Wed, 17 Feb 2010 16:45:00-0500

The Federal Circuit has clarified the relevant timeframe for purposes of determining whether two claimed inventions are patentably distinct or would result in impermissible double patenting. The court held "the relevant time frame for determining whether a product and process are 'patentably distinct' should be at the filing date of the secondary application."

Here, the product application was filed over a decade before the process application. The district court originally granted summary judgment of no double patenting based on evidence of developments that came after both applications were filed. It was unclear whether any of the alternative methods were available before the second application was filed, so the court remanded the case for resolution of that issue.

More detail of Takeda Pharm. Co. v. Doll after the jump.

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If there are no sources of proof in the Eastern District of Texas, expect to be transferred

Tue, 15 Dec 2009 11:23:00-0500

After the Fifth Circuit's Volkswagen and the Federal Circuit's TS Tech decisions, potential patent plaintiffs should be getting the message: Don't file in the Eastern District of Texas unless there are actually some sources of proof there. The Federal Circuit has again granted mandamus ordering the district court to transfer another case out of the district.

In this case, there were no witnesses within the court's subpoena power. The allegedly infringing product was designed, manufactured, and tested elsewhere. The plaintiff had no offices in the district. While 75,000 pages of relevant documents were in the district, they were electronically transferred to the plaintiff's counsel there, apparently for purposes of providing an "anchor" to the district. The district court held the case was "decentralized," and transfer would only adjust which witnesses would be inconvenienced.

The Federal Circuit was having none of it, however. The court observed that the Eastern District of North Carolina had subpoena power over four (of eighteen) non-party witnesses and was also the site of all documentation regarding the development of the accused product. The court was particularly unimpressed with the presence of the 75,000 pages of documents, stating the notion that these documents were "Texas" documents was "a fiction which appears to have been created to manipulate the propriety of venue." Because of the utter lack of connection to Texas, the court ordered the district court to transfer the case to North Carolina.

More detail of In re Hoffman-La Roche Inc. after the jump.

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