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.
Once again, the plain meaning controls.
| May 9, 2014
GE Lighting Solutions, LLC v. AgiLight, Inc.
May 2, 2014
Panel: Rader (Chief Judge), Moore (Author), and Reyna
Appeal from U.S. District Court for the Northern District of Ohio.
Summary
GE Lighting Solutions, LLC (GE) appealed the district court’s grant of summary judgment that AgiLight, Inc.’s (AgiLight) accused products and processes do not infringe asserted claims of GE’s U.S. Patent Nos. 7,160,140, 7,520,771, 7,832,896, and 7,633,055. The issues mostly involved claim construction. After resolving the claim construction issues, the CAFC reversed and remanded the grant of summary judgment with regard to the ’140, ’771 and ’896 patents and affirmed the grant of summary judgment with regard to the ’055 patent.
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Reexamined patent claims are assumed to be subset of original patent claims unless proven otherwise, for application of res judicata (claim preclusion).
| April 24, 2014
Senju Pharmaceutical Co., Ltd., Kyorin Pharmaceutical Co., Ltd., and Allergan, Inc. v. Apotex Inc. and Apotex Corp.
March 31, 2014
Panel: Newman, Plager (author) and O’Malley (dissent).
Background: Appeal from U.S. District Court for the District of Delaware.
Senju Pharmaceutical Co., Ltd. and Kyorin Pharmaceutical Co., Ltd. (collectively referred to as “Senju”) jointly own U.S. Patent No. 6,333,045 for aqueous pharmaceutical formulations of the antibiotic Gatifloxacin. Allergan is the exclusive licensee under this patent for ophthalmic uses, and produces under license eye drops for treating the “pink eye” infection. The eye drop formulation contains disodium edetate (EDTA) which improves passage of the antibiotic through the cornea of the eye.
Apotex Inc. is a Canadian generic drug manufacturer which plans to formulate an ophthalmic solution containing the antibiotic, to be marketed by Apotex Corp. which is based in the U.S. Following the procedure enacted under the Hatch-Waxman Act, Apotex (referring collectively to Apotex, Inc. and Apotex, Corp.) filed with the FDA in July 2007 an Abbreviated New Drug Application (ANDA) for a generic version of the ophthalmic drug containing the antibiotic. Also under this procedure, Apotex filed a patent certification with the FDA and notified Senju about the certification. [This notice is required when the ANDA applicant certifies that a patent named in the New Drug Application (NDA) for the original drug is “invalid, unenforceable, or will not be infringed by the manufacture, use, or sale” of the generic drug. After receiving the notice, the NDA holder may sue the ANDA applicant for patent infringement under the provisions of 35 USC §271(e)(2)(A).] As would be expected, Senju filed suit against Apotex, alleging infringement of claims 1-3 and 6-9 of the patent.
Reexamination Bites Another Patent Owner
| April 16, 2014
In Re Teles AG Informationstechnologien and Sigram Schindler Beteiligungsgesellschaft MBH
Decided April 4, 2014,
Before Dyk, Moore, and Wallach. Opinion by Dyk
Summary:
This precedential decision illustrates a number of strategies that a patent owner may need to consider when an unfavorable decision is rendered by the Board of Patent Appeals and Interferences (now Patent Trial and Appeal Board) during a reexamination proceeding. Although an appeal to the Federal Circuit is most commonly pursued by a patent applicant, why would a patent owner consider an appeal to the U.S. District Court for the District of Columbia? In addition, this decision illustrates that while a broad claim construction may be desirable to ensnare infringers, a broad claim construction can also come back to bite the patent owner in a way to render claims invalid over the prior art.
