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Logos and the Ordinary Observer Test

Logos and the Ordinary Observer Test

The Federal Circuit recently held in Columbia Sportswear North America, Inc. v Seirus Innovative Accessories, Inc. that logos may be considered in the ordinary observer test.[1]  Seirus Innovative Accessories (“Seirus”) makes and sells cold weather gear, and a lower court had ruled on summary judgment that U.S. Patent No. D657,093 to Snyder was infringed by Seirus’s gloves and glove liners:  The Federal Circuit reversed the summary judgement in part because the lower court improperly disregarded Seirus’s logo in the ordinary observer test. The ordinary observer test is used to determine whether a claimed design is infringed and provides that an accused product infringes a claimed design if the two designs are substantially the same in the eye of an ordinary observer.   In this case, Seirus’s gloves and glove liners included a logo that repeatedly interrupted a wave design, and Seirus argued that?due to the logos?the gloves and glove liners were… Continue Reading

“Consisting Essentially Of” Claims Nixed at Federal Circuit

“Consisting Essentially Of” Claims Nixed at Federal Circuit

Michael Tobin Associate Haynes and Boone, LLP In HZNP Medicines LLC v. Actavis Laboratories UT, Inc. (Fed. Cir. 2019)[1], the Federal Circuit affirmed the district court’s holding that the transitional phrase “consisting essentially of” was indefinite as used in several claims of patents owned by HZNP Medicines LLC and Horizon Pharma USA, Inc. (“Horizon”).[2]  Slip Op. at 2, 33.  Horizon’s patents cover its PENNSAID® 2% product, which is a Non-Steroidal Anti-Inflammatory Drug (NSAID) and the first FDA-approved twice-daily topical diclofenac sodium formulation for the treatment of pain of osteoarthritis of the knees.  Claim 49 of U.S. Patent No. 8,252,838 (the “‘838 patent”) is illustrative of Horizon’s formulation patents and recites: A topical formulation consisting essentially of: 1–2% w/w diclofenac sodium; 40–50% w/w DMSO; 23–29% w/w ethanol; 10–12% w/w propylene glycol; hydroxypropyl cellulose; and water to make 100% w/w, wherein the topical formulation has a viscosity of 500–5000 centipoise. Prior to… Continue Reading

Did the Federal Circuit Just Raise the Evidentiary Bar for Establishing Obviousness?

Did the Federal Circuit Just Raise the Evidentiary Bar for Establishing Obviousness?

According to the panel in OSI Pharmaceauticals, LLC v. Apotex, Inc., Slip Op. No. 2018-1925 (Fed. Cir. Oct. 4, 2019), the answer to the question posed in this article’s title is a solid no.  But considering the opinion’s precedential nature and the facts in the case, the Federal Circuit may have just given patentees extra ammunition to defeat an obviousness challenge on evidentiary grounds.  The Federal Circuit analyzed whether certain pharmaceutical method claims related to a treatment for lung cancer were obvious and concluded that the lack of efficacy data in asserted prior art showed a person of ordinary skill would not have a reasonable expectation of success in applying their teachings.  This holding reversed an obviousness determination by the PTAB in a preceding IPR of the patent at issue, and shows that for challengers mounting an obviousness challenge, prior art containing data-based evidence may be needed to be successful,… Continue Reading

Chevron Deference and the USPTO’s Determination of Applicant Delay in the Calculation of Patent Term Adjustment

Chevron Deference and the USPTO’s Determination of Applicant Delay in the Calculation of Patent Term Adjustment

Angela Oliver, Associate, Haynes and Boone, LLP With administrative law principles becoming increasingly important in patent law, a recent decision from the Federal Circuit highlights the relevance of those principles in patent prosecution.  In Intra-Cellular Therapies, Inc. v. Iancu,[1] the Federal Circuit extended Chevron deference to the USPTO’s determination that an applicant’s failure to submit a proper reply to a final Office action constituted “fail[ure] to engage in reasonable efforts to conclude prosecution of the application” under 35 U.S.C. § 154(b)(2)(C)(i), thus resulting in the accrual of applicant delay for patent term adjustment purposes.  Congress set forth the framework for calculating patent term adjustment (“PTA”) in 35 U.S.C. § 154(b) (“the PTA statute”).  Section 154(b)(1) enumerates the types of Patent Office delay that will lead to PTA accrual, while § 154(b)(2) provides that PTA may be reduced for delays caused by an applicant.  The dispute in Intra-Cellular Therapies pertained to the calculation of… Continue Reading

Section 112 Indefiniteness Is Still a “Lofty” Invalidity Attack

Jason Whitney, Counsel, Haynes and Boone, LLP After the U.S. Supreme Court tightened the requirements of 35 U.S.C. Section 112 in Nautilus, Inc. v. Biosig Instruments, Inc. by holding that claims must describe “the scope of the invention with reasonable certainty,”[1] some envisioned the possibility of a reinvigorated indefiniteness standard standing as a bulwark against overly broad or vaguely drafted patent claims. Indeed, just months after Nautilus, the Court of Appeals for the Federal Circuit hinted at such a future with Interval Licensing LLC v. AOL, Inc., which established the rule that terms of degree “must provide objective boundaries” for claimed inventions.[2] But as the Federal Circuit has continued to define the contours of Nautilus over the following years, indefiniteness attacks have met uneven success and produced inconsistent application of Section 112. The Federal Circuit’s recent opinion in Guangdong Alison Hi-Tech Co. v. ITC,[3] which examined the term of degree… Continue Reading

No Nonce-nse: MTD Products Inc. v. Iancu Untangles Means-Plus-Function Interpretation

    In MTD Products Inc. v. Iancu[1], the U.S. Court of Appeals for the Federal Circuit described how to identify a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6[2].  In particular, the court clarified that the question of whether § 112, ¶ 6 applies is distinct from the determination of what structure corresponds to the means-plus-function limitation[3], and held that the description in the specification of corresponding structure does not determine if § 112, ¶ 6 applies.[4] MTD is a decision on appeal from an inter partes review (“IPR”) of U.S. Patent No. 8,011,458 (“the ’458 patent”)[5], owned by MTD Products.[6]  The ’458 patent describes zero turn radius (“ZTR”) vehicles such as riding lawnmowers[7], and explains how for prior art ZTR steering systems, when a vehicle was moving forward, it turned in the direction the steering wheel was rotated, but when the vehicle was moving in reverse, it turned… Continue Reading

Working Draft Distributed to Members of Well-Known Standard Setting Group Was Not a Publication

Working Draft Distributed to Members of Well-Known Standard Setting Group Was Not a Publication

In Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd., the Court of Appeals for the Federal Circuit (“the CAFC”) addressed the legal standard for assessing the public accessibility of prior art documents before a patent’s critical date. Appeal No. 18-2007 (Fed. Cir. July 12, 2019). This case arises from an appeal by Samsung to decisions by the Patent Trial and Appeal Board (“the Board”) in two inter partes review proceedings which upheld all challenged claims of U.S. Patent 8,917,772 (“the ’772 patent”) owned by Infobridge. In each proceeding, the Board found that Samsung failed to show that a certain prior art reference was publicly accessible before the critical date for the ’772 patent, and thus could not be considered prior art. The CAFC vacated the Board’s decision, holding that that the correct standard for public accessibility is whether a person of ordinary skill in the art could, after exercising reasonable… Continue Reading

Adding a Real Party in Interest Does Not Necessarily Alter the Petition’s Filing Date

Adding a Real Party in Interest Does Not Necessarily Alter the Petition’s Filing Date

In Mayne Pharma International Pty. Ltd. v. Merck Sharp & Dohme Corp., (Fed. Cir. June 21, 2019), the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (“Board”) permitting the petitioner to include an additional real party in interest in its mandatory notice without altering the petition’s filing date. Background Merck Sharp & Dohme Corp. (“MSD”) filed a petition for inter partes review against U.S. Patent Number 6,881,745 (“the ’745 patent”) assigned to Mayne Pharma International Pty. Ltd. (“Mayne”). In its Patent Owner’s Preliminary Response, Mayne urged the Board to decline institution because MSD’s parent company, Merck & Co., Inc. (“MCI”), was not identified as a real party in interest. Based on the record at that time, however, the Board was not persuaded and instituted review. Mayne then requested rehearing, arguing that the Board abused its discretion. The Board rejected this argument and maintained the proceeding. During… Continue Reading

Broad claim language may render patent invalid under obviousness

Broad claim language may render patent invalid under obviousness

          In BTG Int’l Ltd. v. Amneal Pharms. LLC (Fed. Cir. May 14, 2019), the Federal Circuit affirmed the decisions of the Patent Trial and Appeal Board (PTAB) and the District Court in a consolidated appeal addressing whether generic versions of an anti-cancer drug infringed the claims of U.S. Patent No. 8,822,438 (the ’438 patent) held by BTG International Ltd (BTG).  The PTAB and the District Court found that the asserted claims of the ’438 patent were obvious and therefore invalid. The Federal Circuit focused on one of the final written decisions of the PTAB, which it affirmed, rendering the remaining appeals moot. Background BTG produces Zytiga (abiraterone acetate), a CYP17 inhibitor used in conjunction with prednisone to treat refractory prostate cancer.  The ’438 patent discloses a method to treat cancer by administering a therapeutically effective amount of a CYP17 inhibitor and a therapeutically effective amount of… Continue Reading

Patent Eligibility of GUI-Related Claims in Light of the Federal Circuit’s Recent Decision in Trading Techs. Int’l. v. IBG LLC

Patent Eligibility of GUI-Related Claims in Light of the Federal Circuit’s Recent Decision in Trading Techs. Int’l. v. IBG LLC

In Trading Techs. Int’l. v. IBG LLC, the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that the claims in a GUI-related patent, U.S. Patent No. 7,783,556 to Singer et al. (“the ’556 Patent”), were ineligible under 35 U.S.C. § 101.[i]  Generally, the ’556 Patent relates to displaying a trading screen on a graphical user interface (“GUI”).[ii]  The trading screen displays market information to a trader and also places orders for a trade from the trader.[iii]  Using the Alice framework, the Federal Circuit determined that the claims were “directed to” an abstract idea at step one of the Alice framework, and that there were no additional elements that transformed the claims into a patent eligible application at step two of the Alice framework.[iv]  At first glance, this decision might be disappointing to inventors of GUI-related technology.  However, a review of the ’556 Patent reveals support for this decision, which still… Continue Reading

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