CAFC reminds applicants to be wary of functionally defined genus claims
| July 22, 2014
AbbVie Deutschland GMBH & CO., KG et al., v. Janssen Biotech, Inc.
July 1, 2014
Panel: Lourie, O’Malley, and Chen. Opinion by Lourie. Concurring opinion by O’Malley.
Summary
Functionally defined genus claims can be inherently vulnerable to invalidity challenge for lack of written description, especially in technology fields that are highly unpredictable, where it is difficult to establish a correlation between structure and function for the whole genus or to predict what would be covered by the functionally claimed genus. Functionally defined claims can meet the written description requirement if a reasonable structure-function correlation is established, whether by the inventor as described in the specification or known in the art at the time of the filing date.
KSR does not do away with the requirement that the Patent Office provide documentary evidence to show that structural elements of a claim were known in the art
| July 22, 2014
K/S HIMPP v. Hear-Wear Technologies, LLC
May 27, 2014
Panel: Lourie, Dyk and Wallach. Opinion by Lourie. Dissent by Dyk.
Summary
The Federal Circuit found that the Board of Patent Appeals and Interferences (“Board”) and the Examiner did not err during an inter partes reexamination of U.S. Patent No. 7,016,512 in refusing to accept a conclusory assertion from the third party requester that particular structural elements of claims 3 and 9 were known prior art elements in the absence of documentary evidence on the record because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support. The Federal Circuit also found that the decision of the Board was not contrary to the holding in KSR.
Details
This is an appeal from a decision of the Board in an inter partes reexamination affirming the reexamination Examiner’s decision not to reject claims 3 and 9 of U.S. Patent No. 7,016,512 (“’512 patent”) as obvious.
Claims 3 and 9 recite:
3. The at least partially in-the-canal module for a hearing aid of claim 2 wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection to an audio processing module.
9. The hearing aid of claim 8 wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection to said behind-the-ear module.
Hear-Wear is owner of the ‘512 patent. During prosecution of the application, the Examiner rejected claims 3 and 9 as obvious by concluding that “providing a plurality of prongs for the electrical connections or for the plugs is known in the art.” The Examiner did not take an Official Notice. Hear-Wear did not dispute the Examiner’s assertion of “known in the art”; instead, Hear-Wear amended independent claims and all claims were allowed.
The PTO granted a third party request by HIMPP for inter partes reexamination of the ‘512 patent. In its request for the inter partes reexamination, HIMPP did not submit documentary evidence to show that the features of claims 3 and 9 were “known in the art.” Relying on the statement by the Examiner during the prosecution of the application, HIMPP argued that claims 3 and 9 would have been obvious because “such detachable connections were known at the time of the alleged invention as concluded by the Examiner during prosecution” and the modification of the primary reference to include detachable connections for a signal cable “would have been no more than the predictable use of prior art elements according to their established functions.”
The reexamination Examiner did not agree with HIMPP’s position because HIMPP failed to provide documentary evidence in support of their position. The Examiner maintained the patentability of claims 3 and 9. Hear-Wear appealed to the Board. The Board also disagreed with the HIMPP position that the limitations of claims 3 and 9 were “well known” as HIMPP failed to point “to any portion of the record for underlying factual support for the assertion. The Board stated that it was ‘not persuaded that the record before [it] adequately conveys that the particular distinct connection structures set forth in those claims are disclosed.’”
“The Board also found that during the original prosecution the Examiner never took official notice with respect to the ‘plurality of prongs’ feature of claims 3 and 9, and that there was no further indication that Hear-Wear acquiesced to the alleged position of official notice so as to qualify the limitations of the claims as admitted prior art.” Accordingly, the Board affirmed the Examiner. HIMPP timely appealed to the Federal Circuit.
The issue on appeal was whether the Board’s refusal to accept a conclusory assertion from HIMPP that particular structural elements of claims 3 and 9 were known prior art elements in the absence of documentary evidence on the record was contrary to the holding in KSR.
In KSR International Co. v. Teleflex Inc., “the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references that were already on the record, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.”
The majority found that KSR was distinguishable from the instant case because the instant “case involves the lack of evidence of a specific claim limitation, whereas KSR related to the combinability of references where the claim limitations were in evidence.”
In view of the majority’s interpretation of the KSR, the majority found that “[t]he Board’s decision was correct because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support.” Also, the majority found that “the Board’s holding is not inconsistent with KSR’s caution against the overemphasis on publications and patents for combining or modifying prior art that are already on the record.”
Also, the majority stated that the Board’s position is supported by the USPTO examination procedure as neither the Board nor the Examiner determined that the facts at issue met the standard justifying official notice.
“Although a patent examiner may rely on common knowledge to support a rejection, that is appropriate only in narrow circumstances. See M.P.E.P. § 2144.03 (“It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known.”)”
“If an examiner chooses to rely on personal knowledge to support the finding of what is known in the art, and the applicant adequately traverses that assertion, then the examiner must provide an affidavit or declaration setting forth specific factual statements and explanations to support that finding. 37 C.F.R. § 1.104(d)(2); M.P.E.P. § 2144.03(c).”
In the absence of any evidence on the record to support the HIMPP’s position that claims 3 and 9 were known prior art elements, the Federal Circuit affirmed the Board’s decision to refuse to adopt HIMPP’s obviousness contention.
In the dissent’s view the majority’s holding is inconsistent with the Supreme Court’s decision in KSR. In the dissent’s view precluding the Patent Office from relying on their own common knowledge and common sense would significantly impair the agency’s ability to review applications adequately and undermines the purpose of the post-grant agency review.
Takeaway
As a general rule, the use of an Official Notice regarding structural elements to reject claims is improper. This is because the substantial evidence requires the Patent Office to provide a record that includes sufficient documentary evidence to enable judicial review; otherwise, as noted in this case by Judge Lourie, “‘basic knowledge” or ‘common sense’ as a replacement for documentary evidence for core factual findings in a determination of patentability” would “render the process of appellate review for substantial evidence on the record a meaningless exercise.” Notwithstanding, an Official Notice based on personal knowledge regarding structural features of a claim if not adequately traversed may render the noticed facts as admitted prior art. Therefore, always adequately traverse the Official Notice and ask the Examiner to produce documentary evidence or an affidavit. Also, in the absence of an Official Notice, the rejection based on the Examiner’s assertion that certain structural features are “know in the art” should also be traversed on the premise that a prima facie case is absent as necessary structural element is not shown.
Tags: basic knowledge > common knowledge > common sense > General Knowledge > known in the art > Official Notice
Practical Points From The Supreme Court’s Alice Decision
| June 26, 2014
Alice Corp. v. CLS Bank Int’l
June 19, 2014
Summary:
The Supreme Court’s Alice decision does not eliminate software patents as per se ineligible subject matter under 35 USC §101. The Court confirms the application of Mayo’s two step §101 analysis and provides some new considerations for addressing patent eligibility issues for computer-implemented inventions. Unfortunately, the Supreme Court’s admonition that the mere addition of “conventional” computer functionality to an abstract idea does not transform the claim into patent eligible subject matter conflates the §101 analysis with patentability issues under 35 USC §§102 and 103.
Tags: abstract idea > Alice Corp. > CLS Bank > computer > processor > software
The Effect of an Expiration Date on Obviousness-Type Double Patenting
| June 25, 2014
Gilead Sciences, Inc. v. Natco Pharma Ltd.
April 22, 2014
Panel: Rader, Prost and Chen. Opinion by Chen. Dissent by Rader.
Summary:
An objective of the obviousness-type double patenting doctrine is to preserve the public’s right to use not only the exact invention claimed by an inventor when his patent expires, but also obvious modifications of that invention that are not patentably distinct improvements. Thus, a patent that issues after but expires before another patent may qualify as a double patenting reference for that other patent.
PTAB Finally Considers “Processor” As Clearly Structure
| June 19, 2014
Ex Parte Cutlip
June 2, 2014
Panel: Lorin, Mohanty and Hoffman.
Summary:
After the debacle of three March 2013 PTAB decisions by a five judge PTAB panel relying on a strange American Heritage dictionary definition of “processor” as being software, this PTAB decision sets the record straight about a “processor” as clearly being structure.
Tags: §101 > 112 sixth paragraph > 112(f) > abstract idea > algorithm > Alice Corp. > CLS Bank > computer > CPU > indefiniteness > MPF > patent eligible subject matter > processor > software
BEWARE OF A SURPRISE CO-OWNER OF A PATENT WHO DOES NOT WANT TO ENFORCE ITS PATENT
| June 12, 2014
STC.UNM v. Intel Corp.
June 6, 2014
Panel: Rader, Dyk, and Newman. Opinion by Rader. Dissent by Newman
Summary:
The ‘998 patent was a CIP of the ‘312 patent, which was jointly owned by STC.UNM and Sandia. Because a terminal disclaimer (which required a common ownership of both patents) was filed during prosecution of the ‘998 patent, STC.UNM and Sandia are co-owners of the ‘998 patent even if Sandia did not make any contribution to the ‘998 patent. STC.UNM filed an infringement suit concerning the ‘998 patent against Intel, and Sandia refused to join the lawsuit. The district court dismissed the case for a lack of standing, and the CAFC affirmed by holding that all co-owners must ordinarily consent to join as plaintiffs in an infringement suit. Furthermore, both the district court and the CAFC refused to involuntarily join Sandia to the case as a necessary party (FRCP Rule 19).
본사건은연방지방법원뉴멕시코지원의판결에불복하여 STC/UNM이연방순회항소법원 (CAFC)에항소한사건이다. CAFC는연방지방법원과같이‘312 특허를바탕으로일부계속출원된특허 (continuation-in-part)인‘998 특허심사도중원고STC/UNM가존속기간포기서 (terminal disclaimer)를제출함으로써특허심사거절을극복하였으므로, STC/UNM과 Sandia는‘998 특허의공동소유자(co-owners)라고판단하였다 (Sandia는‘998 특허발명에공헌을하지않았다). 또한CAFC는 Sandia의소송참여의사에상관없이 STC/UNM이인텔을상대로‘998 특허침해소송을제기한것에대해STC/UNM은원고적격(standing)이없다고판단하여소송을기각하였다. 왜냐하면특허침해소송에서는특허의모든공동소유자가원고로참여해야하지만Sandia는소송참여를하지않기로결정하였기때문이다. 마지막으로CAFC는연방지방법원과마찬가지로본사건은연방민사소송규칙 19조의involuntary joinder rule이적용되지않아Sandia를원고로강제참여시킬수없다고판단하였다.
Tags: Continuation-in-part-application > Joinder > Rule 19 > Standing > terminal disclaimer
A mark found to be disparaging.
| May 28, 2014
In re Geller
May 13, 2014
Panel: Newman, O’Malley, Wallach. Opinion by Wallach
Summary
The CAFC affirmed the Trademark Trial and Appeal Board’s refusal to register the mark STOP THE ISLAMISATION OF AMERICA in connection with the services of “understanding and preventing terrorism” because the mark may be disparaging to American Muslims pursuant to § 2(a) of the Trademark Act.
米国連邦巡回裁判所（CAFC）は、STOP THE ISLAMISATION OF AMERICA商標の出願は、米国商標法第2条(a)に基き、米国のイスラム教徒に対して中傷的（disparaging）であるとして、登録を却下した商標審判部（TTAB）の判断を支持した。
“Exceptional” Case for Attorney Fees under §285 is Determined with Simple Equitable Discretion by District Court Applying Preponderance of Evidence Standard.
| May 23, 2014
Octane Fitness, LLC v. Icon Health & Fitness (S. Ct. 2014)
April 29, 2014
Justice Sotomayor
Summary
Regarding “exceptional” cases under §285 to award attorney fees, CAFC previously followed the Brooks Furniture standard that a case is “exceptional” under §285 only “when there has been some material inappropriate conduct in litigation, such as willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation, conduct that violates FRCP 11” etc. and that absent misconduct in litigation or in securing the patent, fees “may be imposed only if both (1) the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless.”
The Supreme Court held that the Brooks Furniture standard is unduly rigid, and it impermissibly encumbers the statutory grant of discretion to district courts. The Supreme Court held that the “exceptional” case for attorney fees in §285 simply means that the case stands out from others with respect to the substantive strength of a party’s position or the unreasonable manner in which the litigation was conducted and district courts may determine whether a case is “exceptional” with their equitable discretion, considering the totality of the circumstances. The Supreme Court rejected the Federal Circuit’s requirement of “clear and convincing evidence” for the entitlement to fees under §285, and held that the standard is a preponderance of the evidence standard.
米国特許法285条の弁護士費用賠償が認められる「例外的」事件に関して、CAFCはBrooks Furniture判決において、「故意侵害、フロード、不公正行為、訴訟中の不正行為などの不適正行為があったか、そのような不適正行為がない場合は、(1)訴訟が悪意で提訴され、(2)客観的に見て訴訟の根拠のないものである場合に限るとしていた。
米国最高裁は、Brooks Furniture基準は不当に限定的であり、地裁の裁量を制限しているとした。そして、285条の「例外的」事件とは、単純に、訴訟当事者の立場の強さまたは、訴訟での非常識な振舞いなどにより他の事件から際立っているということであり、地裁は全体的な状況を考慮して裁量で決定すべきであるとした。また、最高裁は、「例外的」事件の立証基準も、CAFCのいう「明白で説得力のある証拠」ではなく、一般の民事事件の基準と同じ「証拠の優越」であるとした。
CAFC holds “Dolly the Sheep” claims ineligible, but leaves door open to claims reciting clones “markedly different” from nature
| May 21, 2014
In Re Roslin Institute (Edinburgh)
May 8, 2014
Panel: Dyk, Moore, Wallach. Opinion by Dyk.
Summary
Although the method of creating a cloned animal was patent eligible, the CAFC held that claims directed to the clone itself were not patent-eligible. The court further holds that simply because something is made by man is insufficient to render it patent-eligible, absent a showing that the claimed composition is markedly different from that found in nature. Although a cloned animal may have some differences from the DNA donor animal, unless these differences are claimed, the CAFC will not consider them.
CAFC Makes Sure Pre- And Post-Issuance §112 Indefiniteness Are Distinct In Anticipation Of Nautilus, Inc. V. Biosig Instruments, Inc. Decision By SCOTUS.
| May 14, 2014
In Re Thomas G. Packard (2013-1204)
May 6, 2014
Panel: O’MALLEY, PLAGER, and TARANTO, Per Curiam. Concurrance by PLAGER.
Summary:
Packard appealed an affirmed 35 U.S.C. §112 (b) rejection by PTAB on the basis that the Board had used an inappropriately strict standard of “unclear” in finding the claims indefinite. Packard argued that an “insolubly ambiguous” judicial standard should have been applied. The CAFC affirmed the PTAB with plenty of dicta that pre-issuance indefiniteness at the USPTO is distinct from post-issuance indefiniteness at the judicial level.
