For patent practitioners, prosecution disclaimer is an often forgotten patent law principle that can find its way back into the formalistic claim construction adhered to in many Federal Circuit decisions. In some cases, patentees may disclaim more than is necessary to overcome cited art during prosecution. That was exactly the case in Technology Properties Ltd. v. Huawei Tech, et al. (Case Numbers 2016-1306, 2016-1307, 2016-1309, 2016-1310, and 2016-1311, Fed. Cir. March 3, 2017) (“Tech. Prop. Ltd.”), where a patentee’s remarks during prosecution ultimately led to narrowing limitations being read into the issued claims. In Tech. Prop. Ltd., Technology Properties Limited LLC, Phoenix Digital Solutions LLC, and Patriot Scientific Corp. (“Technology Properties”) asserting U.S. Patent No. 5,809,336 (“‘336 patent”) against several defendants, including Huawei Technologies Co., Samsung Electronics Co., Nintendo Co., and LG Electronics, Inc. (“Appellees”). The ‘336 patent is directed to decoupling a variable frequency system clock connected to a CPU… Continue Reading
View the PDF version of the March 2017 IP Beacon. Subject Matter Eligibility Guidance from the Federal Circuit: Thales Visionix v. United States By Kelvin Varghese Both the courts and the Patent and Trademark Office (PTO) have struggled to define the metes and bounds of the subject matter eligibility analysis under 35 U.S.C. § 101. The Court of Appeals for the Federal Circuit’s recent decision on March 8, 2017 in Thales Visionix Inc. v. United States further clarifies the first step of the eligibility analysis, while confirming the significance of that step. Read more. No Respite On The Horizon For CBM Patents By Andrew Cohn The Patent Trials and Appeals Board and the Federal Circuit have continued their hostility to payment and financial technology patents, recently invalidating three patents and reversing a large damage award in Smartflash LLC v. Apple Inc, see Smartflash LLC v. Apple Inc., Case No. 2016-1059… Continue Reading
Differing burdens of proof in the PTAB and district courts can allow patent challengers a second bite at the apple
The different burdens of proof in the Patent Trial and Appeal Board (PTAB) and in district court means that the PTAB may find patent claims unpatentable even after the claims were held valid over the same evidence in litigation. Novartis AG v. Noven Pharm. Inc., No. 2016-1678, 2016-1679 (April 4, 2017).
In two separate Inter Partes Review (IPR) proceedings, the PTAB found the asserted claims of Novartis’s U.S. Patent Nos. 6,316,023 and 6,335,031 unpatentable for obviousness over various combinations of prior art references. Novartis, No. 2016-1678, 2016-1679 at 2, 4. However, those same claims had previously been litigated in the U.S. District Court for the District of Delaware. Id. at 6. Based on the “same” arguments and the “same” evidence considered by the PTAB, the Delaware District Court held the claims not obvious, and the Federal Circuit affirmed the court. Id.; Novartis Pharm. Corp. v. Watson Labs., Inc., 611 F. App’x 988 (Fed. Cir. 2015); Novartis Pharm. Corp. v. Noven Pharm., Inc., 125 F. Supp. 3d 474 (D. Del. 2015).
Federal Circuit clarifies limited exception to the presumption that ‘consisting of’ is a closed term
In the case of a claim directed to a composition “consisting of” substances selected from a Markush group, when is the presence of an unclaimed ingredient sufficiently unrelated to the invention to preclude infringement? The Federal Circuit recently addressed this question in Shire Dev., LLC v. Watson Pharm., Inc., No. 2016-1785 (Fed. Cir. February 10, 2017). The Federal Circuit reversed the district court’s finding of infringement because the accused product did not satisfy the claimed Markush group requirements. Shire, No. 2016-1785 at 2. Specifically, the Court found that the accused product containing an ingredient not listed in the claimed Markush group did not infringe where that additional ingredient structurally and functionally related to the invention. Id. at 7-9. The asserted claims of U.S. Patent No. 6,773,720 require a controlled-release oral pharmaceutical composition including a specific active ingredient; an inner, lipophilic matrix; an outer, hydrophilic matrix; and other excipients. Id. at… Continue Reading
Both the courts and the Patent & Trademark Office (PTO) have struggled to define the metes and bounds of the subject matter eligibility analysis under 35 U.S.C. § 101. The Court of Appeals for the Federal Circuit’s recent decision on March 8, 2017 in Thales Visionix Inc. v. United States1 further clarifies the first step of the eligibility analysis, while confirming the significance of that step. Under § 101, patent protection is available to “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Patent claims directed to laws of nature, natural phenomena, and abstract ideas, however, are not patent-eligible subject matter.2 Courts and the PTO evaluate the subject matter eligibility of claims under a two-step framework set forth by the Supreme Court in Mayo Collaborative Servs. v. Prometheus Labs., Inc.3 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l. … Continue Reading
The Patent Trials and Appeals Board (“PTAB”) and the Federal Circuit have continued their hostility to payment and financial technology patents, recently invalidating three patents and reversing a large damage award in Smartflash LLC v. Apple Inc., Case No. 2016-1059 (Fed. Cir. March 1, 2017 (Smartflash). Given this stance, it seems as though the Covered Business Method (“CBM”) patent review under the America Invents Act (“AIA”), along with the decision in Alice Corp. v. CLS Bank Int’l, have become the death knell for many such patents moving forward. In Smartflash, the Federal Circuit invalidated three patents held by Smartflash LLC (“Smartflash”) that were asserted against Apple Inc. (“Apple”) two years ago, resulting in a decision of $533 million in damages in favor of Smartflash. However, the overturning of the two-year old verdict from the Eastern District of Texas seemed likely after the PTAB found, in multiple CBM patent reviews, that the… Continue Reading
As a result of the Federal Circuit’s decision in Secure Axcess, LLC v. PNC Bank National Association in late February, it is not likely that a flood of Covered Business Method (“CBM”) reviews will be coming any time soon. By statute, CBM reviews are reserved for patents relating to “a financial product or service,” and under the Federal Circuit’s narrow reading of that statute, the number of CBM reviews will likely remain quite small relative to the number of Inter Partes Reviews (“IPR”). Although relatively few in number, CBM reviews have generated a number of precedential Federal Circuit opinions recently. In Secure Axcess, the Federal Circuit reversed the Patent Trial and Appeals Board’s (“PTAB”) decision finding that claims relating to website authentication were eligible for CBM review. No. 16-1353, slip op. at 3 (Fed. Cir. Feb. 21, 2017). Although earlier precedent, such as Blue Calypso, LLC v. Groupon, Inc., could… Continue Reading
The design patent train has been chugging along ever since the Federal Circuit overhauled the test for determining design patent infringement back in September 2008, making it easier for design patent owners to establish infringement and signaling the start of a pro-design patent era. Apple jumped on the design patent train by winning a $399 million (!) award at the expense of Samsung after Samsung’s smartphones were found to infringe Apple’s design patents relating to the front portion of Apple’s iPhone. This high-profile litigation award heightened awareness of the value of design patents, and the design patent train kept chugging. However, the design patent train appears to have hit a cow on the tracks, the cow being a unanimous 8-0 decision by the U.S. Supreme Court in Samsung Elecs. Co. v. Apple Inc., No. 15-777, (Dec. 6, 2016), overturning Apple’s $399 million award. The $399 million award by the lower… Continue Reading
Don’t Worry – You Got This: the Federal Circuit Clarifies the PTAB’s Power to Review IPR decisions after Cuozzo.
The Patent Trial and Appeals Board (PTAB) has authority to review institution decisions for inter partes reviews (IPRs), according to the Federal Circuit’s October 20 decision in Medtronic v. Robert Bosch Healthcare.1 This decision comes after Medtronic petitioned for rehearing after the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee.2 Background The Medtronic suit began in 2013 when Bosch alleged that Cardiocom, LLC (a subsidiary of Medtronic) infringed Pat. Nos. 7,769,605 and 7,870,249, directed to patient monitoring systems. Cardiocom then petitioned for inter partes review (IPR) of the two patents. After those petitions were denied, Medtronic filed an additional three petitions for the same two patents, listing Medtronic as the sole real party in interest. Even though Bosch argued that the petitions should be denied because Medtronic failed to name Cardiocom as a real party in interest as required under 35 U.S.C. § 312(a)(2), the PTAB instituted IPR proceedings. … Continue Reading
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 15-1180 (Fed. Cir. Nov. 1, 2016) is the latest in a series of recent decisions in which the U.S. Court of Appeals for the Federal Circuit has reversed a district court’s finding of patent ineligibility under 35 U.S.C. § 101. In Amdocs, the Federal Circuit addressed the application of the judicially created “abstract idea” exception to patent eligibility under the two-step framework set forth by the U.S. Supreme Court in Alice Corp. v. CLS Bank International 134 S. Ct. 2347 (2014) (following Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)). The district court in Amdocs invalidated the four patents asserted by Plaintiff-Appellant Amdocs (Israel) Ltd. as patent ineligible under § 101 using the two-step Alice/Mayo framework: US Patent Nos. 7,631,065 (“’065 patent”); 7,412,510 (“’510 patent”); 6,947,984 (“’984 patent”); and 6,836,797 (“’797 patent”). As discussed by the Federal Circuit, all… Continue Reading