The USPTO cannot refuse registration of immoral or scandalous marks
| January 31, 2018
In re Erik Brunetti
December 15, 2017
Before: Dyk, Moore, Stoll. Opinion by Moore; Concurring opinion by Dyk
Summary:
The §2(a) bar on registration of immoral or scandalous marks violates First Amendment. While the CAFC opinion finds the use of immoral or scandalous marks in commerce to be discomforting, the First Amendment protects private expressions, including those that may be offensive. In this instance, the government does not have substantial interest that would justify its suppression of immoral or scandalous trademarks.
Matal v. Tam, 137 S. Ct. 1744 (2017)において、ランハム法第2(a)条に基づき、最高裁が誹謗的（disparagement）な商標を拒絶することは憲法違反であると判断したのと同様に、米国特許商標庁が、ランハム法第2(a)条に基づき、不道徳的又は中傷的（immoral or scandalous）な商標を拒絶することは、憲法修正第1条違反であるとCAFCは判決を下した。
Another “key” decision on joint/divided infringement
| January 16, 2018
Travel Sentry, Inc. v. Tropp (Precedential)
December 19, 2017
Before Lourie, O’Malley and Taranto. Opinion by O’Malley.
Summary:
Recent developments in the joint/divided infringement case law allow David Tropp to revive his patent infringement lawsuit against Travel Sentry and various other luggage manufacturers. Tropp’s patents claim a method for luggage inspection, where the luggage manufacturer supplies special locks on luggage and a master key, and TSA uses the master key to inspect the luggage.
The Broadest Reasonable Interpretation Must Be Consistent with the Specification
| December 7, 2017
Mexichem Amanco Holding S.A. de C.V., Appellant v. Honeywell International Inc., Appellee
November 17, 2017
Before Prost, Dyk and Chen. Opinion by Prost
Summary
This non-precedential opinion provides an important reminder that the broadest reasonable interpretation does not mean the broadest possible interpretation. The decision also highlights (indirectly through the decisions on appeal rendered by the PTAB) that a limitation contained in the preamble can carry weight. In unpredictable arts, an Examiner’s assertion of inherency may not necessarily shift the burden of proof to show otherwise.
Claims directed to an abstract idea without specifying an inventive concept would fail the Step Two of Alice
| December 6, 2017
Two-Way Media Ltd. v. Comcast Cable Communications, LLC
November 1, 2017
Before Lourie, Reyna and Hughes. Opinion by Reyna.
Summary
This is a case appealed from a decision of district court that asserted that the claims of the patent are directed to patent ineligible subject matter under 35 U.S.C. § 101.
United States Court of Appeals for the Federal Circuit (the “Court”) applied Alice’s two-step framework to analyze whether the claim in question is eligible subject matter. In the first step, the Court ruled that the claims are directed to an abstract idea of “gathering and analyzing information of a specified content, then displaying the result.” In the second step, the Court decided that the claims do not have an inventive concept sufficient enough to transform the nature of the claim into a patent eligible application. Therefore, the decision of district court is affirmed.
Chinese Summary
这是一个从地区法院上诉上来的案件，该地区法院判决本案涉及专利的权利要求不符合35 U.S.C. § 101中关于专利适格性的要求规定.
美国联邦巡回上诉法院（下称“法院”）运用了爱丽丝的两步法框架来分析本案涉及的权利要求是否为专利可授权主题。在爱丽丝第一步中，法院裁定，这些要求是针对“收集和分析指定内容的信息，然后显示结果”的抽象思想.而爱丽丝第二步时，法院裁定，这些权利要求没有足够的创造性概念使权利要求转化为符合专利可授权主题要求规定的权利要求。因此，法院肯定了地方法院的判决。
Details
The subject patent 5,778,187 describes “a system for streaming audio/visual data over a communications system like the internet.” The invention is described as “an improved scalable architecture for delivering real-time information.” It also provides for a control mechanism to manage and administrate users. Figure 1 below shows the architecture of the system provided by the patent.
Figure 1
Claim 1 of the patent which is agreed by both parties as the representative claim of the patent recites:
1. A method for transmitting message packets over a communications network comprising the steps of:
converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol,
for each stream, routing such stream to one or more users,
controlling the routing of the stream of packets in response to selection signals received from the users, and
monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.
(emphasis added).
The Court reviewed de novo whether claim 1 contains patent eligible subject matter by applying the two-step frame work. The Court held that claim 1 is directed to an abstract idea and does not contain an “inventive concept” sufficient to “transform the nature of the claim into a patent-eligible application.”
Alice Step One
Although Two-Way Media argued that claim 1 is tied to particular scalable network architecture, the Court ruled that claim 1 only recites conventional computer components to manipulate data in an abstract way.
For example, the Court adopted Two-Way Media’s proposed claim construction. The proposed construction construes “controlling the routing of the stream of packets in response to selection signals received from the users” as “directing a portion of the routing path taken by the stream of packets from one of a designated group of intermediate computers to the user in response to one or more signals from the user selecting the streams.” The Court held that this construction did not indicate how the claim is directed to the particular scalable network architecture. The Court also noted that, the construction did not provide “any parameters for the “signals” purportedly dictating how the information is being routed.”
Overall, the Court held that claim 1 is “directed to the abstract idea of gathering and analyzing information of a specified content, then displaying the result, and not any particular asserted inventive technology for performing those functions.”
Alice Step Two
The Court held that the claim as opposed to something purportedly described in the specification is missing an inventive concept, thus it cannot save the claim in Alice Step Two. The Court agreed with what is found by district court that although the specification described a system architecture as a technological innovation, the claim itself is missing an inventive concept.
For example, the Court noted that claim 1 refers to certain data “complying with the specification of a network communication protocol” and the data being routed in response to one or more signals from a user. However, claim 1 does not contain details of the “rules forming the communication protocol or specifying parameters for the user signals” which preclude their contribution to the inventive concept determination.
Two-Way Media argued that the claim solves technical problems including excessive loads on a source server, network congestion, variation in delivery times etc. However, the Court notes that the claim “only uses generic function language to achieve these purported solutions.”
Two-Way Media also argued that the district court did not include its proffered evidence to the purported technological innovation. Whereas, the Court held that the proffered material is relevant to a novelty and obviousness analysis which is not relevant to eligible subject matter.
Takeaways
- A claim uses functions of gathering and analyzing information of a specified content, then displaying the result will be directed to an abstract idea when there is no any particular asserted inventive technology for performing those functions specified in the claim
- When a claim is directly an abstract idea, it needs to contain details of the inventive concept of the invention in the claim in order to be qualified as a patentable subject matter under 35 U.S.C. § 101
- More particularly, when the technological invention is an improvement of communication system architecture, it would be helpful to contain details of the inventive concept of the invention such as the rules forming the communication protocol used in the system architecture, specifying parameters for the user signals etc.
Bayer left hard up when CAFC reversed district courts final judgment with some stiff words for the lower court.
| November 9, 2017
Bayer Pharma AG, Bayer Intellectural Property GMBH, Bayer Heathcare Pharaceuticals, inc., v. Watson Laboratories Inc., Activis Pharma, Inc.
November 1, 2017
Before Lourie, Moore and O’Malley. Opinion by Moore
Summary:
The CAFC held that the district court clearly erred in finding that a skilled artisan would not have been motivated to arrive at claims 9 and 11 of the patent-in-suit.
The patent at issue is directed to a formulation of vardenafil and at least two sugar alcohols in the form of an uncoated oral disintegrating table (ODT). It was agreed by both parties that the claim covered an immediate-release formulation. Bayer markets a commercial embodiment of the patent under the name Staxyn, and its utility is erectile dysfunction.
Masterminding functional claiming of an apparatus, but too soft on intrinsic evidence for claim construction.
| November 3, 2017
MasterMine Software, Inc. v. Microsoft Corp.
October 30, 2017
Before Newman, O’Malley and Stoll. Opinion by Stoll.
Summary
MasterMine appealed from a stipulated judgment of noninfringement and invalidity following adverse claim construction and indefiniteness rulings from the United States District Court for the District of Minnesota. The CAFC found that the District Court had correctly interpreted the term “pivot table” based on the intrinsic evidence. However, the Circuit reversed the District’s indefiniteness determination finding the claim language sufficiently directed to an apparatus and noting that functional language is appropriate when it is describing what the apparatus is capable of while not describing the actions of a user.
Discussion
I. Background
MasterMine sued Microsoft Corporation for infringement of its two related patents, U.S. Patent Nos. 7,945,850 and 8,429,518. MasterMine asserted claims 1, 8, 10, and 12 of the ’850 patent and claims 1, 2, and 3 of the ’518 patent.
The District Court entered a claim construction order, construing the term “pivot table” to mean “an interactive set of data displayed in rows and columns that can be rotated and filtered to summarize or view the data in different ways”. In the same order, the District agreed with Microsoft that claims 8 and 10 of the ’850 patent and claims 1, 2, and 3 of the ’518 patent were indefinite for improperly claiming two different subject-matter classes.
II. Opinion
a. Claim Construction
MasterMine argues that the district court improperly construed the term “pivot table,” which it proposed should be construed as a “computer software object [or structure] defining an interactive table that can show the same data from a list or a database in more than one arrangement” so as to include tables that do not display data. The Circuit detailed the intrinsic record including review of the specification and prosecution history of the patent family. They found no evidence supporting a “pivot table” that did not display data outside of the specification containing excerpts of computer code that would generate a pivot table with an empty data display area. With no compelling evidence to support doing otherwise, the CAFC upheld the District’s ruling.
b. Indefiniteness
The Circuit focused on claim 8 of the ‘850 patent which the district court had used as the basis for the indefiniteness ruling. The parts of the claim in issue were:
“[a] system comprising”:
. . . .
a reporting module installed within the CRM software application . . . ;
. . . .
wherein the reporting module installed within the CRM software application presents a set of user selectable database fields as a function of the selected report template, receives from the user a selection of one or more of the user-selectable database fields, and generates a database query as a function of the user selected database fields;
After a thorough review of precedent regarding a claim directed to both a method and an apparatus being indefinite, the Court found that despite the hefty amount of functional language, the claims at issue were clearly directed to an apparatus. Specifically, the Court noted that although claim 8 includes active verbs (“presents” “receives” and “generates”) these verbs represent permissible functional language used to describe capabilities of the “reporting module.” The claims were clearly describing that the system possesses the recited structure which is capable of performing the recited functions. Differentiating the current claims from those found invalid in preceding opinions, the Court noted that the claims at issue do not claim activities performed by the user. The claims only “make reference to user selection, they do not explicitly claim the user’s act of selection, but rather, claim the system’s capability to receive and respond to user selection.” Further, the functional language does not appear in isolation, but is specifically tied to the claimed structure. The CAFC concluded:
Because the claims merely use permissible functional language to describe the capabilities of the claimed system, it is clear that infringement occurs when one makes, uses, offers to sell, or sells the claimed system. Accordingly, because these claims inform those skilled in the art about the scope of the invention with reasonable certainty, we reverse the district court’s determination…
Take Away
- Claim construction should be supported by clear recitations in the intrinsic record. Unclear extrapolations from the specification, such as interpreting fragments of code to reach the construction, will not suffice.
- Functional language which describes what the recited structure is capable of doing or is configured to do will not render a claim indefinite even if active verbs are used. Using language which describes the user interaction rather that how an apparatus is capable of being acted upon should be avoided.
Beware of an Interpretation of a Reference that is Based Upon a Hypothetical Embodiment
| October 27, 2017
Merck Sharp & Dohme B.V. v. Warner Chlilcott Company, LLC
October 19, 2017
Before Dyk, Linn, and Hughes. Opinion by Hughes.
Summary:
The CAFC reversed the finding by the District Court of Delaware that U.S. Patent
No. 5,989,581 was invalid as being obvious in view of International Patent Application
WO 97/02015 (hereinafter PCT ‘015). In reviewing the findings by the District Court, the CAFC highlighted the breadth of the disclosure of PCT ‘015, the teaching away by PCT ‘015 of a one compartment ring system and noted that the finding was based upon impermissible hindsight.
Details:
Merck appeals the District Court of Delaware’s determination that claims 4 and 11 of U.S. Patent No. 5,989,581 (hereinafter ‘581) are invalid as obvious in view of International Patent Application WO 97/02015 (hereinafter PCT ‘015). The commercial embodiment of ‘581 is the NuvaRing®, which is a ring shaped drug-delivery device. Warner argues that ‘581 is invalid but concedes that its generic product would infringe ‘581 if the claims were valid. Id. at 2.
The ‘581 patent achieves a stable release of both progestin, etonogestrel (ETO), and estrogen, ethinyl estradiol (EE), in a single compartment ring system. The ‘581 patent overcomes the problems in the prior art by providing a ring made of a polymer that is supersaturated with ETO. Claims 4 and 11 of ‘581 require a single compartment ring system comprising both progestin and estrogen.
1. A drug delivery system comprising at least one compartment which comprises
a thermoplastic polymer core . . . said core comprising a mixture of a steroidal progestogenic compound and a steroidal estrogenic compound in a ratio by weight that allows a direct release of both said progestogenic compound and said estrogenic compound in physiologically required amounts,
said progestogenic compound being initially dissolved in said polymer core material in a degree of supersaturation of 1 to about 6 times of the amount by weight necessary for obtaining saturation concentration of said progestogenic compound in said polymer core material at 25° C,
said estrogenic compound being dissolved in said polymer core material in a concentration lower than that of said progestogenic compound . . . .
4. A drug delivery system according to claim 1, wherein the amount of progestogenic compound dissolved in the thermoplastic core material is 2 to 5 times the amount necessary for obtaining saturation concentration.
5. A drug delivery system in a substantially ring-shaped form and suitable for vaginal administration comprising at least one compartment which comprises
a thermoplastic polymer core . . . said core comprising a mixture of a progestogenic steroidal compound and an estrogenic steroidal compound in a ratio by weight of 10 parts of the progestogenic compound to 1.5–5 parts of the estrogenic compound. . . .
11. A drug delivery system according to claim 5, wherein the core material comprises 0.55 to 0.8% by weight of etonogestrel and 0.12 to 0.18% by weight of ethinyl estradiol.
Warner argued that claims 4 and 11 of ‘581 are anticipated by or rendered obvious by PCT ‘015, which discloses a ring shaped drug delivery device releasing progestin, etonogestrel (ETO), and estrogen, ethinyl estradiol (EE). However, the device of PCT ‘015 is a two compartment ring system. PCT ‘015 explicitly criticizes one compartment ring systems, stating that such systems “show suboptimum release patterns for the difference substances…” Id. at 5.
The District Court found that the ‘581 patent is obvious in view of PCT ‘015. The judgment of the District Court was based upon the finding that PCT ‘015 discloses:
- A two-compartment ring;
- The second compartment is loaded with both ETO and EE;
- The concentration of ETO is higher than EE ; and
- The second compartment comprises 97% of the ring.
The District Court held that it would have been obvious to a skilled artisan at the time of invention “to modify the two-compartment ring so that pharmaceutically required amounts of both ETO and EE are delivered from one compartment.” Id. at 7.
Law regarding Obviousness
- “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
- Even if all elements of the claim were known, we still must resolve whether a person of ordinary skill in the art would have found it obvious to combine these elements or modify them in a way that meets the claim.
- It is improper to combine references “like separate pieces of a simple jigsaw puzzle” without “explain[ing] what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place these pieces together.” InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1349 (Fed. Cir. 2014).
Id. at 6.
The CAFC noted that “PCT ‘015 does not actually disclose a ring with a second compartment that comprises 97% of the ring, and includes a higher concentration of ETO than EE in the second compartment.” Id. at 7. Rather, PCT ‘015 discloses a “broad range of values for the relative size of each compartment as well as concentrations of each compound.” Id. at 7. The CAFC highlighted the breadth of the disclosure of PCT ‘015 by illustrating that “the second compartment can occupy anywhere from 3% to 97% of the ring. Elsewhere, PCT ’015 explains that ‘the second compartment is loaded with 0.05-3% w/w” of ETO and “0.05-5% w/w’ of EE.” Id. at 7.
To arrive at the hypothetical ring that the district court relied on for obviousness, the person of ordinary skill must make the second compartment 97% of the total ring, which is outside of the usual or preferred range disclosed in
PCT ’015. And the person of ordinary skill must also pick a concentration of ETO from the high end of the disclosed range, but conversely select a concentration of EE from the low end of the range. Nothing in PCT ’015 suggests picking these values out of the innumerable possible combinations of ETO concentrations, EE concentrations, and compartment length ratios. Instead, the only way to arrive at the hypothetical ring is by using the ’581 patent as a roadmap to piece together various elements of PCT ’015. That represents an improper reliance on hindsight.
(emphasis added) Id. at 7 and 8. Further, it was noted that the PCT ‘015 was critical of an one compartment ring system, which the CAFC stated establishes that the District Court’s judgment was based upon impermissible hindsight. A “person of ordinary skill in the art would pursue ‘identified, predictable solutions,’ not designs that were seemingly inoperable.” Id. at 8.
Claim 11 recites a one compartment ring system having specific concentrations of each ETO and EE. Warner had argued that “it would have been obvious to calculate the relative concentrations for each compound based on those release rates.” Id. at 9. The CAFC held that this argument is unpersuasive because the disclosure of dosage rate in PCT ‘015 is based upon a two compartment ring system. Warner’s argument and the District Court judgment would require a skilled artisan to calculate the relative concentrations for a two compartment ring, and apply those concentrations to a single compartment, despite PCT ‘015 stating that a single compartment system is difficult to control while a two compartment system achieves consistent release rates. Id. at 9.
The CAFC reverses the District Court’s judgment of invalidity and remanded the case.
Take away:
- One should review an obviousness rejection to determine if it is based upon a hypothetical embodiment of the cited reference.
- One should review the breadth of the disclosure of a cited reference. The breadth of the disclosure of a cited reference may provide arguments of non-obviousness.
Ambiguity in specific definition of claim terms
| October 25, 2017
ORGANIK KIMYA AS, v. ROHM AND HAAS COMPANY
October 11, 2017
Before Prost, Newman, and Taranto. Opinion by Newman.
Summary:
In the inter partes review (“IPR”) proceedings, the Patent Trial and Appeal Board (“PTAB”) made claim interpretation about claimed “swelling agent” by relying on patentee’s specific definition provided in the specification and decided that the alleged prior arts fail to disclose such “swelling agent.” Appellant, Organik Kimya AS argues that the specific definition includes ambiguity due to open-ended definition and the claims cannot be reasonably interpreted to exclude those prior arts. The court affirmed the decision of PTAB. The specification contained many definitions of technical terms. Careful wording would be more desired in drafting functional definition for claim terms, which provides specific meaning different from ordinary and customary one.
When is Evidence of Written Description Too Late?
| October 24, 2017
Amgen v. Sanofi
October 5, 2017
Before Prost, Taranto and Hughes. Opinion by Judge Prost.
Procedural History:
The two patents-in-suit disclose and claim a set of antibodies. The following claim is representative:
An isolated monoclonal antibody,
wherein, when bound to PCSK9, the monoclonal antibody binds to at least one of the following residues: S153, I154, P155, R194, D238, A239, I369, S372, D374, C375, T377, C378, F379, V380, or S381 of SEQ ID NO:3, and
wherein the monoclonal antibody blocks binding of PCSK9 to LDL[-]R.
The technical background of the invention involves statins that are administered to patients to reduce high levels of LDL-C in the blood. When these statins do not work, doctors sometimes administer PCSF9 inhibitor as well – PCSK9 being a naturally occurring protein that binds to and destroys liver cell LDL-receptors that take LDL-C from the blood.
The claim recites a genus of antibodies that bind to PCSK9 at the recited residue sites, thereby preventing PCSK9 from interfering with LDL-C removal from the blood.
The specification, common to both patents, discloses “85 antibodies that blocked interaction between the PCSK9 . . . and the LDLR [at] greater than 90%,” It also discloses the three-dimensional structures, obtained via x-ray crystallography, of two antibodies known to bind to residues recited in the claims—21B12 (Repatha) and 31H4.
Appellant/Defendant Sanofi markets an antibody named Praluent® alirocumab. Appellee/Patentee sued Sanofi for patent infringement. Sanofi replied, inter alia, that the claims did not comply with the written description and enablement requirements.
In a jury trial, the judge excluded from the evidentiary record all post-priority-date information that Sanofi proffered to show that the written description and enablement requirements were not met. Specifically, Sanofi’s proffered evidence that included its own later-developed Praluent product that was developed after the priority date of Amgen’s patents.
Ultimately, the jury issued a verdict that the patents were valid and infringed.
The CAFC reversed the trial judge’s exclusionary ruling and vacated the jury’s verdict. It first set forth the legal background, specifically, that a patentee must convey in its disclosure that it “had possession of the claimed subject matter as of the filing date” and that to provide this “precise definition” for a claim to a genus, a patentee must disclose “a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” (Emphasis added).
Here, Sanofi’s evidence regarding Praluent was relevant to the material issue of whether the two patents disclosed a representative number of species within the claimed genus. The CAFC therefore held that the trial judge erred in excluding Sanofi’s evidence and ordered a new trial on written description. It also ordered a new trial on enablement for the same reasons.
The CAFC summarized the legal basis for its holding: evidence that explains the state of the art after the priority date is not relevant to written description. On the other hand, where a patent claims a genus, it must disclose “a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Accordingly, evidence showing that a claimed genus does not disclose a representative number of species may include evidence of species that fall within the claimed genus but are not disclosed by the patent, and evidence of such species is likely to postdate the priority date.
Take Away
The lesson is that the purpose for which post-priority date evidence is proffered determines whether it is admissible.
The Federal Circuit finally provided guidance on patent venue rules and struck down Judge Gilstrap’s patent venue rules
| October 23, 2017
In Re: Cray Inc.
September 21, 2017
Before Lourie, Reyna, and Stoll. Opinion by Lourie.
Summary:
Cray petitioned for a writ of mandamus directing reversal of the order of the U.S. District Court for the Eastern District of Texas denying its motion to transfer venue and directing the district court to transfer the case to the Western District of Wisconsin. The Federal Circuit found that the EX of TX misinterpreted the scope and effect of the precedent in determining that Cray maintained “a regular and established place of business” in the ED of TX within the meaning of §1400(b). Therefore, the Federal Circuit held that the ED of TX’s decision to refuse transfer of the case was an abuse of discretion and granted Cray’s petition.
Tags: patent venue > regular and established place of business > section 1400(b) > writ of mandamus
