The Patent-Ineligibility trend continues to be infectious…
| October 29, 2018
Roche Molecular Systems, Inc. v. Cepheid
October 9, 2018
Before O’Malley, Reyna and Hughes. Opinion by Reyna. Concurring opinion by O’Malley.
Summary:
The contended patent, U.S. Patent No. 5,643,723 (‘723 patent), owned by Roche is directed to methods for detecting the pathogenic bacterium Mycobacterium tuberculosis (MTB). Prior to the priority date, the general methods of detection were slow (could take three to eight weeks), and they had limitations in that they could not identify if a patient has an antibiotic-resistant strain. The standard of care at the time was treatment with the antibiotic rifampin. However, outbreaks resulted due to delays in diagnosing and reporting of the rifampin-resistant tuberculosis. In 1994, rpoB became a prime candidate for studying rifampin resistance in MTB.
The inventors of the ‘723 patent sequenced the rpoB gene in MTB and discovered that that the rpoB gene in MTB contains eleven “position-specific” “signature nucleotides” (i.e., naturally occurring single nucleotide mutations) that are only present in MTB but not in other bacteria. Based on these eleven MTB-specific signature nucleotides, the Roche inventors devised a diagnostic test that could (1) identify whether or not a biological sample contains MTB, and (2) if MTB is present, predict whether that MTB is a strain that is resistant to rifampin treatment.
Non-Prior Art Evidence Helps Sink Three Patents in IPR Proceeding
| October 18, 2018
Yeda Research and Development v. Mylan Pharmaceuticals Inc.
October 12, 2018
Before Reyna, Bryson and Stoll. Opinion by Reyna.
Summary
This precedential opinion highlights that use of non-prior art in an inter partes review (IPR) does not violate 35 U.S.C. § 311(b) (A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.)
An Evidentiary Ruling and a Finding of Likelihood of Confusion Against a Pro Se Litigant’s Trademark
| October 15, 2018
Zheng Cai, DBA Tai Chi Green Tea Inc., v. Diamond Hong, Inc.
August 27, 2018
Before Prost, Wallach and Hughes. Opinion by Wallach.
Summary
The United States Court of Appeals for the Federal Circuit (“CAFC”) reviewed the U.S. Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board’s (“TTAB”) opinion of the cancellation of Zheng Cai, doing business as Tai Chi Green Tea Inc.’s (“Mr. Cai”, pro se appellant) trademark, petitioned by Diamond Hong, Inc. (“Diamond Hong”). The court reviewed the three prongs of “DuPont factor” test and found the TTAB’s opinion regarding likelihood of confusion was correct. Mr. Cai did not rebut the argument and the CAFC affirmed the TTAB’s opinion.
Japanese Summary
連邦巡回区控訴裁判所(CAFC)における本判決は、米国特許庁商標部審判部(TTAB)による商標登録取り消し決定に対する控訴判決である。
TTABでは、Diamond Hong社がTai Chi Green Tea Inc.社としてビジネスを行っているCai Zheng氏の所有する商標登録の取り消しを申立てた。TTABは申立てを認め、商標取り消し決定を下した。Cai氏は本人訴訟で取り消し決定を不服とし、CAFCに控訴した。Cai氏は当該商標はDiamond Hong社の商標との混同のおそれはないと反論したが、CAFCはDuPont factorsテストの3項目について再検討し、TTABの決定を支持した。
Tags: “DuPont Factors” Test > Likelihood of Confusion under 15 U.S.C. § 1052(d)
NAI torpedoes own patent with faulty §120 priority
| October 9, 2018
Natural Alternatives v. Iancu
October 1, 2018
Before Prost, Moore and Reyna. Opinion by Prost.
Summary:
Natural Alternatives International (“NAI”) asserted USP 8,067,381 (“the ‘381 patent” against Woodbolt Distributers, LLC (“Woodbolt”). The ‘381 patent asserted priority back to a parent, USP 5,965,596 (“the ‘596 patent”) filed in 1997. Woodbolt filed a request for inter partes reexamination asserting that the §120 priority chain was broken by an intermediate patents assertion of priority only to a provisional application filed in 2003. The Examiner and Patent Board agreed and rejected the claims of the ‘381 patent in view of the ‘596 patent as prior art. NAI appealed the Board’s decision. The CAFC affirmed the Examiner and Board on the basis of faulty §120 priority.
