Posts Tagged: "Patentability"

On February 21, the Patent Trial and Appeal Board (PTAB) issued a pair of institution-phase decisions in inter partes review (IPR) proceedings petitioned by Internet tech giant Google, both of which challenge claims of a patent owned by Virentem Ventures and asserted in a District of Delaware infringement case against Google subsidiary YouTube. Although the PTAB denied institution to one of the IPRs, institution of the other Google IPR threatens each patent claim that has been asserted against variable speed audio/video playback services enabled by YouTube and Google products. With the IPR proceeding instituted, Virentem Ventures is now facing IPR proceedings instituted upon six of its patents asserted against Google in Delaware.

In IPR 2018-01472, brought by Apple Inc., HTC Corporation, HTC America, Inc., and ZTE (USA) Inc. (Apple), the Patent Trial and Appeal Board (PTAB) last week determined all challenged claims of INVT SPE LLC’s (INVT) Patent No. 6,466,563 to be unpatentable as obvious. The ‘563 patent is titled “CDMA [Code Division Multiple Access] Mobile Station and CDMA Transmission Method” and was issued on October 15, 2002. The patent describes an addition of burst data to the end of a transmission “allow[ing] synchronization with the base station apparatus to be maintained,” thus “making it possible to restart communication immediately.” The transmission interval control circuit also “controls the transmission interval of burst data to N times one slot (N: a natural number) at the end of transmission” to conserve power consumption.

When can an inherent property add patentable weight in the context of obviousness? Over the years, the Federal Circuit has shed light on this question in a number of cases. Persion Pharmaceuticals v. Alvogen Malta Operations Ltd., Docket No. 2018-2361 (Fed. Cir. Dec. 27, 2019) (Persion v. Alvogen) is the most recent decision to address this question. In Persion, the Federal Circuit affirmed the conclusion of the U.S. District Court for the District of Delaware that asserted claims of U.S. Patent Nos. 9,265,760 (“the ’760 patent”) and 9,339,499 (“the ’499 patent”) are invalid as obvious because the feature at issue was inherent in the prior art.

Twenty-two member states of the World Intellectual Property Organization (WIPO), more than 100 organizations, and over 100 individuals have submitted comments and suggestions in response to WIPO’s Draft Issues Paper on IP Policy and AI. The submissions have been posted in the form and in the languages in which they were received on WIPO’s website. The comments will feed into a revised issues paper for discussion at the second session of the WIPO Conversation on IP and AI, which takes place in Geneva in May 2020.

If a recent decision denying institution of an inter partes review (IPR) is any indicator, the answer to the titular question seems to be no, the Board does not routinely review a challenged patent’s prosecution history—even when the history includes a prior Board decision construing claim terms at issue in the IPR. In Apple Inc. v. Uniloc 2017 LLC, IPR2019-00753, Paper 7 (PTAB. Sep. 16, 2019), the Board majority denied institution, finding certain claimed subject matter missing from Apple’s prior art—despite the Board’s earlier finding in a prosecution appeal that the very same subject matter was disclosed and obvious based on different prior art. Making the apparent oversight even more remarkable, one member of the Patent Trial and Appeal Board (PTAB) majority had actually authored the earlier prosecution appeal decision.

The Federal Circuit in a precedential decision issued earlier today affirmed the Patent Trial and Appeal Board’s finding that Claim 11 of Prisua Engineering Corp.’s U.S. Patent No. 8,650,591 was unpatentable as obvious, and reversed and remanded for further consideration the Board’s finding that the other asserted claims were indefinite and could not be assessed for patentability under Sections 102 or 103. IPR2017-01188 was Samsung’s response to Prisua’s 2016 patent infringement lawsuit against the company, which alleged that Samsung’s “Best Face” feature infringed claims 1, 3, 4, and 8 of the ’591 patent. In that case, a jury in the Southern District of Florida ultimately found that Samsung had willfully infringed the asserted claims and awarded Prisua $4.3 million in damages, but that action was stayed pending the CAFC appeal.

On January 30, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeals Board’s (PTAB) decision rendering claims 1-11 of U.S. Patent No. 7,529,806 (the ‘806 patent) obvious. The ‘806 patent, owned by Koninklijke Philips (Philips) is directed toward improved playback of digital content on a client device through reducing delay. The patent covers a method for forming media presentations using a control information file that does two things: (a) provides the media presentation in various alternative formats, allowing a client device’s media player to “choose the format compatible with the client’s play-out capabilities” opposed to using two way intelligence between the client and server software; and (b) provides the presentation in multiple files so that subsequent files download at the same time as files are played back.

Things are bad for many innovators and there is little hope for improvement on the foreseeable horizon. Despite the best efforts of Senator Thom Tillis (R-NC) and Senator Chris Coons (D-DE), efforts to reform America’s patent system for the better have stalled to the point that the Senate IP Subcommittee is moving on from patent matters and will focus on copyright reform throughout 2020. “Given the reasonable concerns that have been expressed about the draft as well as the practical realities of the difficulty of passing legislation, absent stakeholder consensus I don’t see a path forward for producing a bill—much less steering it to passage—in this Congress,” Senator Tillis told the Intellectual Property Owners Association in an interview published earlier today. Sources tell IPWatchdog that it is not inconceivable that the Subcommittee will steer back toward patent issues – namely patent eligibility reform – but disagreement among the interested constituencies has shelved any hope for patent eligibility reform. Shockingly, the disagreement that has shelved the long-awaited legislative fix for 35 U.S.C. 101 is among those who support reform. It seems the various constituencies that want 101 reform have their own demands and – if you can believe it – would prefer no change to a change that doesn’t give them 100% of what they are seeking.

The U.S. Supreme Court today denied two petitions for certiorari filed by Trading Technologies and one by ChargePoint, Inc. asking the Court to review their cases related to the patent eligibility of their inventions. Trading Technologies’ inventions relate to graphical user interface tools, while ChargePoint’s invention is for a vehicle charging station. The denials are not surprising following the High Court’s refusal to allow a number of other petitions dealing with Section 101 earlier this month, including Athena Diagnostics v. Mayo Collaborative Services and HP Inc. v. Berkheimer. Athena was thought to have the best chance of being granted, especially after the United States Office of the Solicitor General (SG) in December weighed in on the petition in Hikma Pharmaceuticals v. Vanda Pharmaceuticals, recommending against granting cert in that case in favor of hearing one like Athena instead.

Generally speaking, the first section of a patent specification will be the Background. The Manual of Patent Examination and Procedure (MPEP) recommends that the Background be broken up into two sections: (1) Field of Use Statement; and (2) Background of the Prior Art. These sections are recommended, not mandatory. Indeed, the Background itself is recommended and not mandatory. If you are going to have a Background it needs to be short, sweet, completely self-serving, must never actually describe the invention and it cannot ever use the term “prior art.” One big mistake inexperienced patent practitioners and researchers tasked with creating a first draft will make is they will go on page after page in patent applications about the history of the invention and the prior art. Indeed, there are some popular books on the market that recommend that this material be filed in patent applications. Including that type of information in an application that is filed is simply inappropriate. You do not see the best lawyers at the best law firms who represent the largest patent acquiring companies write patents like that, so why should you?

When discussing patentable inventions with data scientists, I often hear them dismiss their inventions under arguments such as these: “We’re using the same tools as everyone else,” “Augmenting data for the training set is well known,” “A similar thing has been done for car-bumper design” (said by the designer of a churro-making machine), “Configuring the neural-network hyperparameters is trivial,” and worst of all, “It’s obvious.” Data scientists often believe that their accomplishments are not patentable, but in-depth exploration of their work often uncovers patentable ideas. I am referring to data scientists that use machine-learning (ML) tools to uncover intrinsic relationships within a large corpus of data. Other data scientists design and improve these ML tools, and their work may also result in patentable ideas, which is a topic for discussing another day.

Yesterday was a dark day for patent eligibility in America. The United States Supreme Court denied certiorari in five more petitions relating to patent eligibility challenges. Based on our count, this brings the total number of patent eligibility petitions denied by the Supreme Court to at least 48, since the Court issued its controversial, if not catastrophic, decision in Alice Corporation vs. CLS Bank, 134 S.Ct. 2347 (2014). Obviously, the Supreme Court is perfectly comfortable with the status quo as it pertains to the law of patent eligibility. This reality evokes myriad emotions, ranging from despair to outrage to resentment to cynicism to exasperation and finally to a begrudging acceptance. Even with Justice Gorsuch hiring clerks with an intellectual property background – an extreme rarity at the Supreme Court – there seems to be no willingness or desire to clean up the mess this Court created when it ignored the doctrine of stare decisis, several generations of well-established law, and the 1952 Patent Act itself, which had been interpreted by the Supreme Court based on the explicit language of 35 U.S.C. 101 and the legislative history to make “anything under the sun that is made by man” patent eligible. Diamond v. Chakrabarty, 447 U.S. 303 (1980) (citing S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952)).

To the surprise and sorrow of some, but the relief of others, the Supreme Court earlier today denied certiorari in some key cases on patent eligibility law, putting any hope of further clarity in this realm squarely in the hands of Congress. Many see this as a dereliction of the Court’s duty, while others are just thankful the Court will not cause further harm than it already has. Commenting on the development, IPWatchdog CEO and Founder Gene Quinn tweeted out his view that this was a “bad day for patent eligibility” and that the denial of Athena ultimately “means medical diagnostics are NOT patentable in America.”

The Supreme Court this morning released its orders list, in which it denied all pending petitions for certiorari on cases concerning patent eligibility. The Court has now made it fully clear that it does not plan to wade back into the Section 101 debate, leaving it up to Congress to clarify the law. Thus—with an impeachment trial and presidential election looming this year—a quick 101 fix seems increasingly unlikely. The Court considered a number of petitions concerning Section 101 on Friday. Of them, Athena Diagnostics v. Mayo Collaborative Services was thought to have the best chance of being granted. In December, the United States Office of the Solicitor General (SG) weighed in on the petition in Hikma Pharmaceuticals v. Vanda Pharmaceuticals, recommending against granting cert in that case in favor of hearing one like Athena instead.

On January 9, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. District Court for the Northern District of Illinois, holding claim 6 of U.S. Patent No. 8,648,106 (the ‘106 patent) invalid as obvious. The ‘106 patent, owned by Hospira, Inc. (Hospira), is one of many patents covering Hospira’s dexmedetomidine products under the brand Precedex, such as the ready-to-use Precedex Premix product. Hospira sued Fresenius Kabi USA LLC (Fresenius) for infringement of claim 6 of the ‘106 patent, over its filing of an Abbreviated New Drug Application (ANDA) regarding its ready-to-use generic dexmedetomidine product.