Posts Tagged: "Federal Circuit"

Companies accused of patent infringement are increasingly looking at patent reexamination at the Patent Office as an attractive avenue for challenging the patent’s validity. Reexamination offers a number of well-known advantages as a forum for such validity challenges over District Court, among them the absence of a presumption of validity and a lower burden of proof. Less well-known, however, is the potential for reexamination to eliminate an accused infringer’s liability for past damages – even if the PTO confirms the validity of a patent in reexamination, the accused infringer might be entitled to “intervening rights,” effectively eliminating past damages, if the patent owner amends its claims to distinguish its invention over the prior art. This possibility of “intervening rights” received a big boost last week with the CAFC’s decision in Marine Polymer Techs. v. HemCon, finding that such rights may be created even without an amendment of the claims if the patent owner presents arguments in reexamination that “effectively amend” the claims.

I like writing about esoteric patent law topics and the question of “intervening rights” in reexaminations/reissues is one of the more esoteric. See my 1998 JPTOS article entitledIntervening Rights: A Potential Hidden Trap for Reexamined Patent. The case of Marine Polymer Technologies, Inc. v. HemCon, Inc. is one of those rare instances in this esoteric area of patent law where the Federal Circuit announced a new “wrinkle” on when “intervening rights” apply in reexamination. Unfortunately, the rule announced by the majority in Marine Polymer Technologies (“intervening rights” apply to unamended claims based on statements made during reexamination) is squarely in conflict with the express language of 35 U.S.C. § 307(b), as Judge Lourie’s dissent vigorously (and more importantly, correctly) points out.

The basic argument in Myriad is whether DNA that is isolated from the chromosomes is statutory subject matter, or whether it is a product of nature. The stakes are high in the Myriad case, since the isolated DNA claimed by Myriad encodes mutated BRCA1 and BRCA2 proteins that can be used to detect breast cancer. Myriad has the only test offered in the United States because of its aggressive enforcement of its several patents. The numerous plaintiffs in the case speak to the core of the patent versus non-patent debate: whether patents actually “promote the progress of science and useful arts” as required in the U.S. Constitution. Myriad and other companies heavily reliant on biotechnology patents, would support the argument that strong patent enforcement allows companies which have invested millions or billions in assay or drug development for clinical use to recoup their investment and provide a return for investors. The plaintiffs would argue that such patents not only hinder the useful arts, but also endanger lives and/or drives up the cost of providing potentially life-saving testing and treatment.

That there was a majority (and a dissenting) opinion in the remand of Classen wasn’t surprising. But that there was yet a third “additional views” opinion would likely not have been predicted by anyone. And it is that “additional views” opinion, along with the majority and dissenting opinions, that will certainly generate a “firestorm” through the Federal Circuit, and which may eventually reach the Supreme Court. The judicial donnybrook on the question of what the standard is (or should be) for patent-eligibility under 35 U.S.C. §101 is about to begin in earnest.

Yesterday the United States Patent and Trademark Office profiled U.S. Patent No. 1,000,000, which was issued on August 8, 1911. Under the current numbering system for patents, U.S. Patent No. 1 was issued on July 13, 1836 to John Ruggles of Thomaston, Maine for his invention related to the locomotive steam engine. Therefore, it took just over 75 years to issue 1,000,000 United States patents. Today the U.S. Patent and Trademark Office is poised to soon issue patent number 8,000,000, perhaps as soon as next week. Just over 5 years since U.S. Patent No. 7,000,000 issued.

It was also determined that the underlying patent litigation was brought for no other reason than to extract nuisance payments despite the fact that there was no infringement. Specifically, the district court determined that Eon-Net filed the lawsuit against Flagstar had “indicia of extortion” because it was part of Eon-Net’s history of filing nearly identical patent infringement complaints against a plethora of diverse defendants, where Eon-Net followed each filing with a demand for a quick settlement at a price far lower than the cost to defend the litigation.

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable? Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise. I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment. Right away I can tell what is happening. The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained. Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable. So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

After much anticipation, the United States Court of Appeals for the Federal Circuit earlier today issued a decision in Association for Molecular Pathology v. Myriad Genetics. The decision on first glance will seem to be a split decision, particularly by Federal Circuit standards. The majority opinion was written by Judge Lourie, Judge Moore wrote a concurring opinion and Judge Bryson concurred in part and dissented in part. Having said that, the outcome largely seems to be what was predicted by the patent community. On the major substantive issue — are isolated DNA molecules patent eligible subject matter — the Federal Circuit reversed the decision of the district court and ruled that isolated DNA molecules do constituted patent eligible subject matter. The Federal Circuit also ruled that methods relating to the screening for potential cancer therapeutics are, likewise, patent eligible subject matter. All three Judges also found the “comparing” and “analyzing” claims to be ineligible for patent protection because they were not transformative, and thus were merely abstract mental steps.

In view of Therasense, the Patent Office is proposing to revise the materiality standard for the duty to disclose information to the Office in patent applications and reexamination proceedings. It is the belief of the Patent Office that the Therasense standard will reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, thereby reducing the incentive for applicants to submit marginally relevant information to the Office. Thus, the Therasense standard should curtail the practice of filing Information Disclosure Statements that refer to boxes full of prior art that is of marginal significance, allowing patent examiners to focus on that prior art that is most relevant. The USPTO adopting the Therasense standard could, as a result, lead to improved patent quality and even a streamlining of prosecution in at least some cases.

One of the critical issues in the Stanford case that is glossed over (or at least not addressed directly) by the Supreme Court majority (as well as others in the patent “blogosphere”) is what happens when you have a present assignment (or at least a contractual obligation to assign) of invention rights that don’t exist at the time of the assignment (aka “future invention rights”). Should (as the Federal Circuit held) Roche (or more appropriately its predecessor, Cetus) by using the language “I will assign and do hereby assign” (aka the “Cetus Assignment Clause”) trump what may have been an earlier obligation by a Stanford University researcher (Mark Holodniy) to assign invention rights to Stanford University (aka the “Stanford University Assignment Obligation”)? I would argue, as did Justice Sotomayor’s concurring opinion and Justice Breyer’s dissenting opinion (joined by Justice Ginsburg) that a “yes” answer to that question defies logic, reason, and prior case precedent (other than the Federal Circuit’s 1991 case of FilmTec Corp. v. Allied Signal, Inc. whose logic, reasoning, and adherence to prior case precedent was challenged by both Justice Sotomayor’s concurring opinion, as well as Justice Breyer’s dissenting opinion).

Whether the term “body” encompassed “multi-piece” structures became the crux of the claim construction issues in Retractable Technologies. The District Court for Eastern Texas, apparently applying the doctrine of claim differentiation, construed independent Claims 1 and 43 to cover a “body” which might be a “multi-piece” structure. Accordingly, the District Court denied post-trial motions by the alleged infringer (Becton Dickinson or “BD”) to overturn the jury verdict that BD infringed these Claims of the ‘224 patent. Judge Lourie (writing for the panel majority) reversed the District Court, ruling that the term “body” was limited to a “one-piece” structure in light of the ‘224 patent specification.

By accepting cert. in Kappos v. Hyatt the United States Supreme Court has clearly and undeniably jumped the shark in terms of patents. This case, which raises issues of such little importance to the greater scheme of patent law, is hardly appropriate for Supreme Court consideration. All those attorneys and parties who will have your petition for cert. denied you are left with the sad reality that your case is not as important as a matter that statistically comes up in .00% of all patent applications filed at the USPTO.

Earlier today the United States Supreme Court granted certiorari in Mayo Collaborative Services v. Prometheus Laboratories, Inc., which sets up another foray into the patent eligible subject matter waters for the Supreme Court in the October 2011 term. This appeal by Mayo will challenge the December 17, 2010 decision of the United States Court of Appeals for the Federal Circuit, one of the first patentable subject matter cases for the Federal Circuit in the wake of the Supreme Court’s decision in Bilski v. Kappos. In fact, this case was returned from the Supreme Court to the Federal Circuit for further consideration in light of the Supreme Court ruling in Bilski v. Kappos.

Simply stated, the overwhelming evidence suggests that the United States Supreme Court, the Federal Circuit and even early political and judicial leaders of the United States all envisioned the truth that one can legitimately be called an inventor even though they are not the first to invent. Unlike the many arguing in this debate I will actually prove this if you keep reading, which actual citation to cases and statutes. You see, when truth is on your side it is easy to come up with support for your argument. Sadly, those who want to challenge truth don’t provide citation to cases, they simply think that the passion of their beliefs ought to be enough to will their erroneous statements accurate.