Federal Circuit looks to provisional patent application in determining claim scope

Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ Tech v. Ricoh.[1] In MPHJ Tech, the Federal Circuit affirmed an inter partes review decision in which the Patent and Trademark Appeal Board (PTAB) found claims of a patent held by MPHJ invalid on grounds of anticipation and obviousness.[2] The patent at issue, U.S. Patent No. 8,488,173, describes a “virtual copier” that replicates an image into other devices, applications or the internet with the press of a “Go” button.[3]

On appeal, MPHJ argued that the PTAB erred in adopting an overly broad construction of the claims, leading to a finding of anticipation and obviousness. Specifically, MPHJ asserted that the claims should be more narrowly construed as requiring a one-step operation without human intervention, effectively distinguishing the claims from the prior art.[4] MPHJ drew support for the narrower construction from statements in its provisional application that allegedly “expressly limited the scope of the invention to a one-step copying and sending process.”[5] However, the identified statements in the provisional application were omitted from the nonprovisional application. Continue Reading

When Obvious Isn’t Obvious: Personal Web Technologies

On Valentine’s Day 2017, the Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeal Board’s conclusions of obviousness in Personal Web Technologies, LLC due to insufficient analysis in the board’s decision. Judge Taranto, joined by Judge Chen and Judge Stoll, explicitly asserted the court’s role in enforcing the principles of administrative law to ensure the agency is not acting in an arbitrary or capricious manner.[1] The decision serves to sharpen the teeth of the oft-repeated requirement that analysis supporting a conclusion of obviousness be made explicit.[2]

This case arrived at the Federal Circuit following the board’s final written decision in an inter partes review (IPR) of Personal Web Technologies’ (PersonalWeb) U.S. Patent No. 7,802,310 (the ’310 Patent) finding six of its claims invalid for obviousness. PersonalWeb appealed the adequacy of the board’s conclusions, submitting that the board decision provided little detail explaining why it would have been obvious to a relevant skilled artisan to combine the two references on which the validity challenge rested. Continue Reading

Licensees Stymied by Sovereign Immunity Both in Federal Court and at PTAB

 

Licensees Covidien LP, Medtronic PLC, and Medtronic, Inc., failed to obtain any relief, at least so far, in federal court or at the Patent Trial and Appeal Board (PTAB) because of parallel holdings that patent owner University of Florida Research Foundation, Inc. (UFRF), is entitled to Eleventh Amendment immunity. University of Florida Research Foundation, Inc. v. Medtronic PLC, Case No. 1:16-cv-00183-MW/GRJ, 2016 WL 3869877 (N.D. Fla. Jul. 15, 2016); Covidien LP v. University of Florida Research Foundation, Inc., IPRs 2016-01274, 2016-01275, and 2016-01276 (PTAB Jan. 25, 2017).

The proceedings began when UFRF filed an action in a Florida state court for breach of a patent license contract against the licensees. The license contract required the licensees to permit UFRF to audit the licensees’ books to verify the licensees’ accounting. After the licensees refused to permit UFRF to audit records related to products that the licensees claimed fell outside the scope of the licensed patents (disputed products), UFRF filed its state action for breach of contract and breach of the implied duty of good faith and fair dealing and for a declaratory judgment on its right to an accounting. The licensees counterclaimed for declaratory judgments of noninfringement and invalidity and for a declaratory judgment that the disputed products are not “Licensed P roducts” because they do not infringe valid patents. Based on the counterclaims, the licensees removed the state action to the United States District Court for the Northern District of Florida. The licensees also filed petitions in the three IPRs identified above.

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The Continuing “Evolution” of Alice: a GUI Example

On January 18, 2017, the Federal Circuit, in Trading Technologies International, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. Jan. 18, 2017) (NEWMAN, J.), issued a non-precedential decision affirming the district court’s holding that claims directed to “[a] method for displaying market information relating to and facilitating trading of a commodity being traded in an electronic exchange” are patent-eligible subject matter.[1]  Although the decision is non-precedential, it clarifies an emerging framework for overcoming Section 101 challenges to patents directed to graphical user interfaces (GUIs) specifically, and, more generally to all patents subject to possible invalidity arguments under Alice.[2] Continue Reading

Federal Circuit Provides Guidance on Divided Infringement, Inducement of Infringement, and Indefiniteness

Patent owners will applaud the Federal Circuit’s latest pronouncement on divided infringement, inducement of infringement, and claim definiteness under 35 U.S.C. § 112. Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., Appeal No. 2015-2067 (Fed. Cir. Jan. 12, 2017). On all three issues, the opinion, authored by Chief Judge Prost and joined by Circuit Judges Newman and Dyk, explains in language that patent owners will celebrate why several generic pharmaceutical manufacturers are liable to the innovator manufacturer, Eli Lilly, for infringement.

The patented invention, a method for treating certain types of lung cancer and mesothelioma, in practice is performed by both a physician and a patient. Specifically, to prevent serious side effects of the chemotherapy drug pemetrexed, the method requires pretreatment with two common vitamins: folic acid and vitamin B12. The defendants filed abbreviated new drug applications (ANDAs) with the FDA, including the required labeling mimicking the approved drug’s labeling with instructions for physicians, and Paragraph IV certifications alleging that Lilly’s patent is invalid and would not be infringed. Although the physician administers the vitamin B12 and pemetrexed, the physician, in accordance with the labeling, instructs the patient to administer the folic acid before the physician administers the pemetrexed.  Continue Reading

Biotech Patent Dispute Between Academics That Is Far From Academic

On December 6, 2016, the parties to the complex and soon-to-be departed world of patent interferences orally argued their positions on motions in what has been described as the “biotech trial of the century” and as “the biggest biotech patent case in memory.”[1] The parties’ oral arguments mirrored their motions, the most important of which rest on whether the senior party’s invention of the gene-editing system CRISPR-Cas9 in bacteria (i.e. prokaryotic cells) rendered obvious the use of the system in higher organisms (i.e. eukaryotic cells), such as those of humans. The groundbreaking system “has the potential to treat serious human genetic disorders and create designer crops that resist drought and pathogens”[2] and to reap billions for the victor. The PTAB’s decisions on motions might terminate the interference without a priority phase. In any event, absent a settlement between the academic contestants like that between the Pasteur Institute and the National Cancer Institute over who first discovered the cause of AIDS,[3] a higher authority than the PTAB will probably provide the final decision in this monumental dispute.
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Patent Invalidity Offense: When Is District Court Action the Better Option Over IPR, PGR or CBM?

It’s Monday morning after the Thanksgiving holiday. Easing back into the workweek with the lingering effects of turkey, stuffing and a miraculous Ohio State victory still sapping my brain, I open the court docket report. Ordinarily, there is not much in these reports to catch my eye under these conditions, but today I saw a series of strange entries. Reich & Tang Deposit Solutions sued Island Intellectual Property to declare 60 patents invalid. Continue Reading

Post Grant Review: § 112 and Eligibility Issues in Chemical and Life Sciences

Post Grant Review (PGR) petitions are on the rise, and nearly half of all petitions to date have challenged patents in Biotechnology and Organic Chemistry, or Chemical and Materials Engineering technology centers.[1] We have reviewed PGR petitions filed against patents in these technology categories.[2] One final written decision issued on Nov. 14, 2016,[3] and more are expected in the coming weeks and months. We see this moment as an opportunity to summarize some of the key trends and likely impacts of PGRs in the chemical and life sciences.

To date, 12 PGR petitions have been filed against chemical and life sciences patents. Of these, five petitions were denied and seven were instituted. Among instituted cases, four included successful institutions based on anticipation (one of which was based on public use), five included successful institutions based on obviousness, and four included successful institutions based on written description, enablement, or indefiniteness. One case asserted subject matter eligibility as a grounds of invalidity, but that lone § 101 challenge was not instituted. Continue Reading

Amdocs Highlights Panel Dependency of §101 Decisions at Federal Circuit

In Amdocs v. Openet Telecom, the Federal Circuit reversed a district court ruling that the claims of several patents were invalid under 35 USC § 101.[1] Judge Plager authored the opinion for the court, and he was joined by Judge Newman. Judge Reyna authored a lengthy dissent objecting to the overall approach taken by the majority. This decision is notable because it includes claims very close to the line of eligibility and a strong reliance on claim construction, and because the majority and dissent offer quite different analytical approaches to section 101. The majority suggests a common law, analogy-driven approach, but the dissent seeks to put sharper focus on the Alice two-part abstract idea test. [2] Continue Reading

Patent Exhaustion Case Could Have Enormous Impact on Multinational Businesses

Earlier this year, the Federal Circuit ruled en banc in Lexmark v. Impression,[1] the most significant exhaustion ruling since the Supreme Court’s Quanta decision.[2] In response to Impression’s cert. petition, the Supreme Court called for the views of the Solicitor General. The U.S. has now filed its brief, recommending cert. be granted on both questions. Consistent with its views before the en banc Federal Circuit, the U.S. agrees with Judge Dyk’s dissent, and recommends strengthening the exhaustion doctrine, effectively overruling the Federal Circuit’s long-standing decisions in Mallinckrodt and Jazz Photo.[3] The two issues at stake relate to post-sale limits on use and resale, and whether foreign sales exhaust a patentee’s U.S. rights.

The Solicitor General’s recommendations make a cert. grant highly likely in this important case, which goes to the heart of two of the Supreme Court’s favorite patent topics: the scope of the patent right and the extraterritorial effect of U.S. patents. The strategic impact on large multinational businesses, complex licensing deals and so on is potentially enormous. Continue Reading

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