Posts in Federal Circuit

Ethicon sued Covidien in the Ohio district court for infringement of utility and design patents directed to ultrasonic surgical shear devices. The court granted Covidien’s motions for summary judgment, concluding that one patent was invalid as indefinite, that another patent was not infringed by Covidien’s products, and that several design patents were invalid as functional and were not infringed. Ethicon appealed the judgment to the Federal Circuit. The Federal Circuit reversed on indefiniteness, reversed the district court’s determination that Ethicon’s design patents were invalid as primarily functional, and vacated the summary judgment of non-infringement for a surgical shears patent.

The issue was whether the disputed prior art is sufficiently “analogous” to the art of marking interface plates for it to be applied in a proper obviousness analysis. The Court held that even though an inventor may be aware of rock carving, engraved signage, or Prussian Blue methods, this does not mean that he would look to these methods when trying to improve markings for circuit board testers. The Court also found that the jury’s determination of validity, which tacitly concluded the disputed prior art was non-analogous, was supported by substantial evidence in the record.

Amgen filed a biologics license application (“BLA”) and obtained FDA approval for its filgrastim product, Neupogen. Sandoz subsequently filed an abbreviated BLA (“aBLA”) under 42 U.S.C. § 262(k), seeking approval for a biosimilar (generic) version of Neupogen. Amgen sued Sandoz, asserting claims of (1) unfair competition under state law based on violations of the Biologics Price Competition and Innovation Act (“BPCIA”); (2) wrongful use of Amgen’s approved BLA; and (3) infringement of U.S. Patent No. 6,162,427, which claims a method of using filgrastim. Amgen alleged that Sandoz violated the BPCIA by failing to disclose its aBLA and manufacturing information as required by 42 U.S.C. § 262(l)(2)(A) and by prematurely giving a notice of commercial marketing under 42 U.S.C.§ 262(l)(8)(A), i.e. giving notice before the FDA approved its biosimilar product.

In Williamson v. Citrix, the Federal Circuit overruled its own precedent that there is a “strong” presumption that claim limitations that do not use the term “means” are not means-plus-function limitations. This change has been decried by practitioners who purposefully avoid the word “means” in order to avoid means-plus-function treatment of their functionally claimed elements. Means-plus-function claiming is an opportunity to be embraced, not a trap to be avoided. Invoking §112(f) and the associated scope of a means-plus-function limitation is largely in the control of the patent drafter.

This week in the Federal Circuit Review: (1) Proposed rejections to claims added during Inter Partes Reexamination are not evaluated for substantial new question of patentability (Airbus S.A.S., v. Firepass Corp.); and (2) Likelihood-of-Confusion requires full consideration of strengths and weaknesses of existing mark (Juice Generation, Inc., v. GS Enterprises LLC ).

In general, the courts distinguish between functions and algorithms, and they require patent applicants to disclose algorithms to cure perceived deficiencies in functions. The problem with this line of reasoning is that both algorithms and functions under 35 U.S.C. § 112(f) are composed of the same things: steps. So the result of the algorithm requirement is to simply make patent applicants “fix” one step by specifying more steps. Accordingly, if the algorithm requirement is taken to its logical conclusion, then each step would be fixed with more steps, and each of those steps would be fixed with even more steps, like Russian dolls. Instead, the courts do not take the algorithm to its logical conclusion and, instead, only require a single layer: the original step and the further steps (i.e., algorithm) for it. This is arbitrary, confusing for patent applicants and examiners, and a poorly calibrated solution to concerns about software patents.

In this issue of the Federal Circuit Review: (1) Personal Jurisdiction Remains Unchanged – Federal Circuit Declines “Stream-of-Commerce” Theory; (2) Court Denies Fee Award Under Octane But Recognizes “Troll”-Like Behavior is Relevant Consideration; (3) 35 U.S.C. § 324(e) Does Not Bar Judicial Review of Initial USPTO Determination That Patent is for a “Covered Business Method” (Versata I); and (4) 35 U.S.C. § 324(e) Bars District Court Review of USPTO Decision to Institute CBM Review (Versata II).

In three related decisions (most recently including a denial of rehearing en banc by a badly divided 6-5 decision issued concurrently with reissuance of the earlier panel decision) titled In re Cuozzo Speed Technologies, the Federal Circuit has held: (1) claim construction in IPR proceedings is governed by the prosecution standard of “broadest reasonable interpretation,” rather than the adjudicatory standard applied in the district courts (i.e., claim terms have their “ordinary and customary meaning” per the 2004 Federal Circuit decision of Phillips v. AHW Corp.); and (2) the Federal Circuit lacks appellate jurisdiction to review the PTAB’s decision to institute an IPR proceeding. Whether the AIA permits appellate review of improperly instituted IPR proceedings, the Administrative Procedures Act clearly permits such appellate review.

In this issue of the Federal Circuit Review: (1) Damages for Lost Profits May Not Be Based On Extraterritorial Services Performed by an Infringer’s Customers Under § 271(f); (2) Federal Circuit Invalidates Claims Under the On-Sale Bar for Commercial Exploitation of the Invention Before the Critical Date; and (3) The PTO’s 180-Day Filing Deadline of the Optional Interim Procedure for PTA Reconsideration Request Is Not Arbitrary and Capricious.

Former Finnegan, Henderson partner Kara Stoll has been unanimously confirmed by the United States Senate for a seat on the United States Court of Appeals for the Federal Circuit. According to Politico, Stoll’s confirmation makes history because she is the first minority woman to serve on the Federal Circuit.

The Apple Pay mobile payment service created by the company should get an important security upgrade through the technology described within U.S. Patent Application No. 20150127549, which is titled Using Biometric Authentication for NFC-Based Payments. The electronic device claime includes a secure element with a payment applet and a processor which is configured to compare local authentication information for the device with stored authentication information. The processor also provides local validation information for the device to allow a payment applet to conduct a financial shopping center servicestransaction. This system relates to secure mobile payments and works without requiring a user to manually input authentication information for each transaction.

Last week the Federal Circuit scheduled oral argument en banc in THE SLANTS trademark case for the morning of October 2, 2015, taking up the question of whether §2(a) of the Lanham Act (15 U.S.C. § 1052(a)) can withstand First Amendment scrutiny. Writing separately after the panel decision, Judge Moore offered 24 pages of “additional views” on the matter, encouraging the Federal Circuit to “revisit McGinley’s holding on the constitutionality of §2(a),” noting that “the protection accorded to commercial speech has evolved significantly since the McGinley decision.”

In this issue of the Federal Circuit Review: (1) Bad Lawyering Is Not Misconduct For Awarding Attorneys Fees; (2) Continuing Applications Are not Entitled to Patent Term Adjustment for Delay in the Prosecution of the Parent Application.

In this issue of the Federal Circuit Review: (1) A Patent Owner Must Show They Are Entitled to Amended Claims In an Inter Partes Review, Including in View Of All Prior Art of Record, and Known to the Patent Owner; (2) Federal Circuit Reverses Every E.D. Va. Claim Construction on Appeal in TomTom v. Adolph Mobile Tracking System Suit; and (3) Federal Circuit Overrule the “Strong Presumption” Embodied in § 112 para. 6 for Functional Limitations Expressed Without the Term “Means.”