Posts in Patents

The Federal Circuit has often demanded some technical advantage under § 101 when none is required by U.S. patent law. The Federal Circuit has also made § 101 more burdensome, unpredictable and subjective than an obviousness determination under § 103, and § 101 is supposed to be a threshold test that acts to weed out only the most egregious attempts to patent fundamental principles. § 101 was never meant to weed out whole new areas of technology, particularly not nascent technologies. But that is exactly what is happening and the Court that has been charged to make sense of it all, the Federal Circuit, seems to be abdicating its collective responsibility by refusing to settle on a repeatable test that results in predictable outcomes.

Last week the Patent Trial and Appeal Board (PTAB) entered a final written decision terminating an inter partes review (IPR) proceeding that had challenged a patent owned by technology licensing company Kamatani Cloud. According to the PTAB, petitioner Unified Patents failed to show by a preponderance of evidence that any of the challenged claims of the patent were invalid on obviousness ground under 35 U.S.C. § 103. “We are delighted with the PTAB’s decision in this matter,” Shanahan said. “The Kamatani Cloud patent survived the validity challenge presented by Unified Patents and its beneficiary members with all 41 claims emerging intact.”

If you ever want a pick-me-up, flip through the first 50 pages of any recent Official Gazette from the PTO. Just look at what is issuing week-to-week. Astounding. The scope and creativity revealed in those pages is impressive. Simply put: These pages reveal the future; and, the owners of that future. Everything you rely on today, i.e., your phone, your monitor, your car, your pharma, your food prep and delivery, your mattress, your digital existence, etc., was conjured up and protected a decade back, when you were doing something else.  The folks doing the filing and protecting weren’t thinking about what the documents were doing, they’re too close to it for it to be revealed. This revelation, however, is easily understood once an observer is removed a little from the detail. You can see the shadow of the future before it emerges into view.

Director of the U.S. Patent and Trademark Office Andrei Iancu made some interesting remarks yesterday at the Intellectual Property Owners Association Annual Meeting in Chicago on September 24, 2018 regarding a proposal for new guidance on how the USPTO would approach determination of subject matter eligibility under §101. In the IPO meeting’s (written) remarks, Dir. Iancu speaks at length about the current confusion in the Mayo/Alice framework and how “significantly more work needs to be done, especially on the ‘abstract idea’ exception.” Director Iancu asserted that “Currently, we’re actively looking for ways to simplify the eligibility determination for our examiners through forward-looking guidance. Through our administration of the patent laws, which we are charged to execute, the USPTO can lead, not just react to, every new case the courts issue.”

Academic institutions and federal labs receive approximately the same amount of  R&D funding from the government, although universities have more money overall because of contributions from industry, states and other sources.  Still, the disparities in their licensing impact reinforces the implication from Sec. Ross that a top to bottom review of the federal lab tech transfer system is sorely needed.

Nobel Biocare Srvcs. AG v. Instradent USA, Inc. makes one wonder whether all U.S. patents are invalid, or will eventually become invalid. This case demonstrates that decisions affirming the validity of patent claims by the Federal Circuit are nothing more than advisory opinions. Decisions affirming validity of patent claims are merely a preliminary round in a fight that will last until the patent claims are all finally invalidated.

Once composition of matter claims have been obtained for a new compound, or the composition of matter claims for an old compound have expired, what is next? Securing additional patent protection usually entails obtaining claims to methods of treatment, methods of prevention or improvement, methods of maintaining health, and mechanisms of action. These paths diverge depending on whether the compound is being developed as a pharmaceutical (i.e., a drug or biologic) or a dietary supplement.

Previously, the ITC instituted an investigation of Instradentdental implants based on a complaint filed by Nobel alleging violations of 19 U.S.C. § 1337 by reason of importation of an implant product infringing the ’977 patent and another patent. The ITC’s Administrative Law Judge issued an Initial Determination finding claims 1–5 and 19 anticipated by the ABT catalog but the ITC later issued a Commission Opinion finding that Instradent failed to show by clear and convincing evidence, the standard applied by the ITC, that the ABT catalog is prior art under § 102(b). A Federal Circuit panel affirmed the ITC’s decision without opinion. Subsequently, Instradent petitioned for IPR of claims 1–7, 9, and 13–20 of the ’977 patent, and Nobel filed a statutory disclaimer of claims 9 and 13–18.

Recently, the Inventor Protection Act, H.R.6557, was introduced to Congress.  It’s a very well intentioned piece of proposed legislation.  However, it may actually do more harm than good to efforts to strengthen patent rights in the aftermath of the AIA. We need to fix what is wrong with the patent system for everyone, not merely carve out exceptions for a few.  Is H.R.6557 a step in the right direction, gaining momentum for stronger patent property rights for everyone, or will it harm the ability to reach that goal?  We think the answer is clear that H.R. 6557 as written doesn’t do what the patent laws were intended to do.

To invalidate method claims, a challenger must show more than that the prior art is “capable of” performing the claimed limitations—the challenger should also show that “a person of ordinary skill would have been motivated to operate [the prior art device] in a manner that satisfied the [claimed] limitation.”

The Federal Circuit reversed the District of Delaware’s decision to invalidate Orexo’s opioid treatment patent as obvious because obviousness was not proved by clear and convincing evidence. Specifically, the Court pointed to the absence of a teaching in the prior art that citric acid could serve as a carrier particle for the drug agonist.  The Court also noted that the lower court improperly discounted evidence of objective indicia of nonobviousness.

The Federal Circuit recently weighed in on an interference proceeding between the University of California (“UC”) and the Broad Institute over the use of CRISPR-Cas9 technology. The Court affirmed a Patent Trial and Appeal Board (“Board”) decision finding there was no interference-in-fact between UC’s patent application and the claims of twelve patents and one application owned by Institute… Considering the evidence of simultaneous invention, along with evidence regarding the state of the art, inventor statements, and application of similar technologies, the Court concluded the Board’s finding was supported by substantial evidence.

The United States Court of Appeals for the Federal Circuit recently issued a ruling affirming a district court’s finding that certain pharmaceutical patent claims owned by Acorda were invalid due to obviousness over the prior art.  The patents’ claims covered a species of a genus taught by the prior art.  The invalidity determination hinged on (1) whether claiming the same concentrations as the prior art, but for a different indication would be obvious to a person having skill in the art; and (2) whether secondary considerations such as solving a long-felt need demonstrated nonobviousness… Strong objective indicia such as solving a long-felt need may be insufficient to prove nonobviousness when a blocking patent deters others from an improvement.

The Federal Circuit recently issued an opinion affirming the Patent Trial and Appeal Board’s (“PTAB”) finding of obviousness of a hot-spot technology patent based on implicit disclosures in a prior art reference. Even though the reference did not expressly disclose the limitation at issue, the Board’s holding that a POSITA would, nonetheless, read the reference as implicitly describing the claimed configuration was supported by substantial evidence.

Earlier today the USPTO announced the substantial revision of Standard Operating Procedures (“SOPs”) for the paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2). The revisions deliver upon the repeated promises of USPTO Director Andrei Iancu to increase transparency, predictability, and reliability across the USPTO. These new SOPs update the procedures based upon feedback the Office received from stakeholders, courts, legislators, and six years of experience with AIA trial proceedings. These new SOPs are a major change to how PTAB panels will be comprised, and how precedential opinions will be designated. Given Director Iancu’s speeches, actions and apparent desire to have a more patent owner and innovator friendly Patent Office, these revisions will likely be game changing.