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Patent Eligibility Used as the Federal Circuit’s Shuttlecock in Weekly Badminton Match

In the months following the release by the USPTO of The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 Revised Guidance”), anecdotal evidence shows a noticeable uptick in the number of patent ineligibility rejections that have been withdrawn by Examiners at the USPTO, which is promising for applicants and inventors filing patents in technology areas that have been gridlocked since the Supreme Court decision in  Alice Corp. v. CLS Bank International, 573 U.S. 208, 134 S. Ct. 2347 (2014).  While the trend at the USPTO appears to be improving in favor of applicants, a division continues to exist in the Court of Appeals for the Federal Circuit (“CAFC”).  Recently, two different panels of the CAFC made apparently contradictory decisions on patent eligibility within a week of each other that.  Sample claims from each case are reproduced below: Case #1: 1.  A computer-automated method of hierarchical event monitoring and analysis within… Continue Reading

Invention by Another – How the Prior Art Status of a Reference Can Be Affected by the Significance of a Joint Inventor’s Contribution to that Reference

Invention by Another – How the Prior Art Status of a Reference Can Be Affected by the Significance of a Joint Inventor’s Contribution to that Reference

At times, a patent owner’s previous patent can be used as a prior art reference against their later filed patents. A reference is prior art under pre-AIA 35 U.S.C. 102(e) if it was “described in … an application for patent … by another.” A patent is “by another” if it lists a different set of inventors than the patent at issue. In other words, if a patent owner’s previously filed patent lists one inventor that is not listed on their later filed patent, the previously filed patent is “by another” and may qualify as prior art for the later filed patent. This issue was explored further in Duncan Parking Technologies, Inc., v. IPS Group Inc., (Appeal No. 2018-1205, Fed. Cir. Jan. 31., 2019), where the Federal Circuit overturned the PTAB’s finding that portions of the anticipatory reference used in an Inter Partes Review (IPR) proceeding were not by another and… Continue Reading

Broadening Statements Can Save You During Claim Construction

Many experienced practitioners have come to realize that a fair amount of wordsmithing is required to ensure that an invention is not unduly limited.  The Federal Circuit has consistently taken the approach that the intrinsic evidence contained within the patent is most highly regarded during claim construction, to the point where inventor statements characterizing the invention may be irrelevant.  In Continental Circuits LLC v. Intel Corp., (Appeal Number 2018-1076, Fed. Cir. February 8, 2019) (“Continental Circuits”), the Federal Circuit looked at a limitation that was read into the claims by the District Court and found that the exacting requirements to infer a claim limitation had not been met. Continental Circuits LLC (“Continental”) owned four patents directed to a “multilayer electrical device… having a tooth structure.”  Continental Circuits at 2.  The four patents at issue, U.S. Patent No. 7,501,582 (“the ‘582 patent”), U.S. Patent No. 8,278,560 (“the ‘560 patent”), U.S. Patent… Continue Reading

Patent Term Adjustment deductions for applicant delay are only appropriate when the Applicant could have taken steps to advance prosecution but failed to do so

In Supernus Pharmaceuticals, Inc. v. Iancu, No. 2017-1357 (Fed. Cir. Jan. 23, 2019), the Federal Circuit rejected the U.S. Patent and Trademark Office’s practice of deducting time from the patent term adjustment (PTA) for applicant delays during periods of time when the applicants had no reasonable steps to take to advance prosecution.  Slip op. at 19. The PTA statute provides that PTA will be reduced by the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.  35 U.S.C. § 154(b).  The U.S. Patent and Trademark Office (USPTO) promulgated regulations relating to PTA, including 37 C.F.R. § 1.704(c)(8), which states Submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed, in which case the period of adjustment set forth in § 1.703 [that extends the… Continue Reading

Collateral Estoppel is Allowed to Apply to Rule 36 Affirmances of the PTAB

The Federal Circuit has affirmed that a Rule 36 judgment may serve as a basis for collateral estoppel in Patent Trial and Appeal Board (PTAB) proceedings, in addition to district court proceedings. In VirnetX Inc. v. Apple, Inc., Nos. 2017-2490, 2017-2494 (Fed. Cir. Dec. 10, 2018), the Federal Circuit affirmed the PTAB’s determination in two Inter Partes Reviews (IPRs) that a prior art document was a printed publication. While the PTAB’s final written decision did not reach the merits of any collateral estoppel argument,[1] the Federal Circuit affirmed the PTAB’s determination in those two IPRs that a prior art document was a printed publication expressly on the basis of collateral estoppel in view of a Rule 36 affirmance.[2] How did we get here? Apple challenged U.S. Patent No. 8,504,696 (the ’696 Patent), owned by VirnetX, in two IPR proceedings (IPR2016-00331 and IPR-2016-00332).[3] In IPR2016-00331, and in the companion case IPR2016-00332,… Continue Reading

Printed Publications – Public Accessibility Requires More Than Technical Accessibility

Printed Publications – Public Accessibility Requires More Than Technical Accessibility

In Acceleration Bay, LLC v. Activision Blizzard Inc. et al., Nos. 2017-2084, 2085, 2095, 2096, 2097, 2098, 2099, 2117, 2118 (Nov. 6, 2018), the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) final written decision in a group of related proceedings, including IPR2015-01951.[1]  The PTAB had found that several claims of the challenged patents were unpatentable and that other claims, along with substitute claims of the challenged patents, were not unpatentable.  Particularly, the PTAB found that one of the references used to challenge the different patents was not a printed publication under 35 U.S.C. § 102(a).  The Federal Circuit affirmed the PTAB’s decision with respect to the printed publication issue and held that the reference was not a printed publication under § 102(a). Background Acceleration owns U.S. Patent Nos. 6,829,634 (the ’634 patent), 6,701,344 (the ’344 patent), and 6,714,966 (the ’966 patent).  Blizzard filed six petitions for inter partes review… Continue Reading

Reliance on Inherently Disclosed Embodiments in Prior Art is Dangerous

Prior art disclosures, and particularly non-patent literature, can be relied on for more than what they explicitly disclose.  For example, many prior art references may be interpreted as including inherent disclosures. However, reliance on inherent disclosures does not come without a large amount of risk, requiring a careful analysis of the inherent yet undisclosed characteristics of the reference. The strict test for inherent disclosures was apparent in Endo Pharmaceuticals Solutions, Inc. et al., v. Custopharm Inc., (Appeal Number 2017-1719, Fed. Cir. July 13, 2018) (“Endo Pharms.”), where a showing that an undisclosed (but actually used) formulation in the prior art was insufficient to find an inherent disclosure. In Endo Pharms., Endo Pharmaceuticals Solutions, Inc., Bayer Intellectual Property GHBM, and Bayer Pharma AG(“Endo”) sued Custopharm Inc. (“Custopharm”) over infringement of U.S. Patent No. 7,718,640 (“the ‘640 patent”) and U.S. Patent No. 8,338,395 (“the ‘395 patent”). The ‘640 and ‘395 patents cover… Continue Reading

Oracle v. Google – Redefining The Applicability and Scope of The Fair Use Defense for Software

Oracle v. Google – Redefining The Applicability and Scope of The Fair Use Defense for Software

2018 Summer Associate Mira Park contributed to this post. On March 27, 2018, in Oracle America Inc. v. Google LLC, No. 17-1118 (Fed. Cir. 2018), the Court of Appeals for the Federal Circuit held that Google’s use of Oracle’s software code did not constitute a fair use and remanded for a trial on damages. Oracle is the copyright owner of the “declaring code”, as well as the structure, sequence, and organization (“SSO”) of the Java application programming interface (“API”) packages at issue in this case. A Java API package is a collection of pre-written Java source code programs for providing computer functions, and allows programmers to provide desired functions into their own programs without the need to write the corresponding code from scratch. In 2005, Google wrote its own code to run programs written in the Java language on its Android platform, but used the declaring code verbatim (i.e. 11,500… Continue Reading

SQUARELY DECIDED: THE FIFTH CIRCUIT SIDES WITH SPONGEBOB

SQUARELY DECIDED: THE FIFTH CIRCUIT SIDES WITH SPONGEBOB

On May 22, 2018, in Viacom Int’l, Inc. v. IJR Captial Invs., LLC, 242 F. Supp.3d 563 (2017), the Fifth Circuit Court of Appeals upheld summary judgment in favor of Viacom International Inc. (Viacom) on its trademark infringement and unfair competition claims against IJR Capital Investments, LLC (IJR).  In a case of first impression, the court held that “specific elements from within a television show—as opposed to the title of the show itself—[can] receive trademark protection.” Viacom is the owner of SpongeBob SquarePants, an animated television series created for Viacom’s Nickelodeon Network that first premiered in 1999, and recently renewed for a twelfth season.  The series follows the life of the title character, SpongeBob SquarePants, and his friends in the underwater town of Bikini Bottom.  The Krusty Krab, the center of the controversy in this case, is a fast-food restaurant in the submerged town owned by Mr. Krabs, a money-hungry… Continue Reading

Vanda v. West-Ward: This Time, Dosage Adjustment Claims are Patent Eligible Subject Matter

Vanda v. West-Ward: This Time, Dosage Adjustment Claims are Patent Eligible Subject Matter

The Federal Circuit’s decision in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, No. 2016-2707, addresses the complicated topic of patent eligibility in the pharmaceutical space. The decision upheld the district court’s decision finding of Vanda’s personalized medical treatment claims as patent eligible under § 101.  The case also confirms that amending an Abbreviated New Drug Application (ANDA) to address a patent issued after the original ANDA’s filing can infringe the later-issued patent. Vanda owns a New Drug Application (NDA) for FANPAT (iloperidone), an antipsychotic drug used to treat schizophrenia. Id. at 4. Upon filing the NDA, Vanda listed U.S. Reissue Patent No. 39,198 in the Food and Drug Administration’s Orange Book for iloperidone. Id. at 2. In 2013, West-Ward filed its ANDA seeking approval to manufacture and sell a generic version of iloperidone. Id. at 5. While West-Ward’s ANDA was pending, the Patent Office issued U.S. Patent No. 8,586,610. Soon thereafter,… Continue Reading

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