Supreme Court strikes down diagnostic method claims as non-patent-eligible subject matter
| March 20, 2012
Mayo Collaborative Services v. Prometheus Laboratories
March 20, 2012
Supreme Court, 9-0, opinion by Justice Breyer
Summary
Although we typically cover the CAFC in this blog, today we will be visiting the Supreme Court. The Supreme Court unanimously ruled that the diagnostic method claims in this highly-anticipated case were invalid as failing to comply with 35 U.S.C. §101. In short, the Court ruled that a claim reciting a diagnostic method (which is inherently based upon a law of nature) that applies only conventional, known steps is invalid.
Tags: §101 > bilski > biotech > diagnostics > law of nature > patent eligible subject matter > Supreme Court
Interpretation of statutory two-year time limit for enlarging the scope of claim in a continuing reissue application filed after the two-year window
| March 14, 2012
In re Erik P. Staats and Robin D. Lash
March 5, 2012
Panel: Dyk, O’Malley and Reyna. Opinion by Dyk. Concurrence by O’Malley.
Summary:
In 1999, a patent was issued to Staats (assigned to Apple Computer) based on an application for his invention regarding isochronous data transfer in a computer. The patent discloses two embodiments. Staats then filed a first reissue application within two years from the issue date of the patent, broadening the scope of claims related to a first embodiment. Outside the two-year window, he further filed other broadening reissue applications as continuations. In 2007, almost seven years after the original patent issued, the last broadening reissue application was filed, which is related to a second embodiment. The PTO’s board held that the last continuing reissue application was not filed within the two-year window because it was not related to the first embodiment which was timely presented within the two-year window. The CAFC reversed and remanded this case, affirming their precedent case which holds that the statutory two-year limit applies to only the filing date of a reissue application, not to the date that broadened claims are presented.
出願人は、コンピュータのデータトランスファーに関する発明を出願し、特許を取得した。その後、クレーム範囲を広げる再発行特許出願を行った。特許出願の明細書には、発明の2つの態様が開示されていた。最初の再発行特許は第1の態様に関するものであり、審査の結果、再発行特許として発行された。その第1の再発行特許が許可される前に出願人は、継続出願として、第2の再発行出願を行い、さらに第2の再発行出願が許可される前に、第3の再発行出願を行った。この第3の再発行出願には、最初の出願もしくは第1の再発行出願でクレームされていた第1の態様とは異なる第2の態様がクレームされていた。特許庁は、第3の再発行出願は最初の再発行出願とは関係のない発明のクレーム範囲を拡大しようとするものであるから、クレーム範囲の拡大は最初の特許発行日から2年以内にのみ可能であるという米国特許法251条の規定に違反するとして拒絶し、審判部もその拒絶を維持した。CAFCは、審判部の判断は誤りであり、クレームを拡大するための最初の再発行出願が2年以内に行われていたか否かが問題であり、その後の継続再発行出願のクレーム内容が最初の再発行出願のクレーム内容と関係があるか否かは問題ではないと判断した。
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Tags: broadening reissue > reissue > two-year window
CAFC invalidates claims directed to a method of creating a real estate investment instrument as unpatentable abstract idea
| March 7, 2012
Fort Properties, Inc. v. American Master Lease LLC
February 27, 2012
Panel: Prost, Schall and Moore. Opinion by Prost
Summary
American Master Lease (“AML”) threatened Fort Properties with an infringement lawsuit for infringement of U.S. Patent No. 6,292,788 (the ‘788 patent) and Fort Properties filed an action in the U.S. District Court for the Central District of California asking for a declaratory judgment of invalidity. In a decision prior to the Supreme Court’s Bilski v. Kappos decision, the district court granted summary judgment in favor of Fort Properties, finding all claims of the ‘788 patent invalid for failing the machine-or-transformation test. On appeal, the Federal Circuit affirmed – finding the claimed invention unpatentably abstract.
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Tags: §101 > abstract idea > bilski > patent eligible subject matter
The Patent Court revisits IPXL doctrine regarding prohibition on hybrid claiming
| February 29, 2012
HTC Corporation v. IPCom GmbH & Co.
January 30, 2012
Panel: Bryson, Linn and O’Malley. Opinion by O’Malley.
Summary
HTC Corporation and HTC America, Inc. sued IPCom GmbH & Co., KG seeking a declaration that it did not infringe claims of IPCom patents. IPCom counterclaimed alleging infringement. HTC moved for summary judgment of invalidity on the ground that claims 1 and 18 of U.S. Patent No. 6,879,830 owned by IPCom were indefinite because (1) they claimed both an apparatus and method steps; and (2) the means-plus-function limitation “arrangement for reactivating,” found in the last paragraph of claims 1 and 18, was indefinite because the patent failed to disclose structure corresponding to the claimed function. On summary judgment, the district court agreed with HTC that claims 1 and 18 were indefinite based on the Federal Circuit’s precedent in IPXL Holdings, L.L.C. v. Amazon.com, Inc prohibiting hybrid claiming of apparatus and method steps in the same claim, but rejected HTC’s argument that the claims were indefinite for failing to disclose the structure corresponding to the means-plus-function limitation. On appeal, the Federal Circuit reversed the district court’s judgment of invalidity based on hybrid claiming, but did not disturb the district court’s finding regarding the means-plus-function limitation. The Federal Circuit held that the district court misconstrued the asserted claims and that the patent did not describe any improper hybrid claiming of apparatus and method steps in the same claim because the claims, when properly construed, were drawn to only an apparatus and the prohibition on hybrid claiming under IPXL was inapplicable to claims 1 and 18.
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Tags: claim construction > hybrid claiming > indefiniteness > means-plus-function > preamble-within-a-preamble
CAFC Allows Willful Infringer to Continue Infringements for an “Ongoing Royalty” Due to “the Public’s Interest to Allow Competition in the Medical Device Arena”
| February 16, 2012
Bard Peripheral Vascular, Inc., et al. v. W.L. Gore & Associates, Inc.
February 10, 2012
Panel: Gajarsa, Linn and Newman. Opinion by Gajarsa. Dissent by Newman.
Summary
This decision concludes a forty-year-long story that began in 1973 between two cooperating individuals that independently filed patent applications for vascular grafts in 1974. Those applications went to interference in 1983 and have been the subject of ongoing litigation since, concluding now in the current CAFC decision. The Arizona district court from which the present case was appealed expressed that this was “the most complicated case the district court has [ever] presided over.” In this case, the Gore inventor was the first to both 1) conceive of the invention and 2) file a patent application in 1974 (i.e., filing 6 months prior to the Bard inventor), but Gore lost in an interference before the Patent Office. Now, Gore is found to be willfully infringing the patent that was awarded to Bard, and is subjected to doubled damages (i.e., totaling $371 million) and attorney’s fees (i.e., totaling $19 million). However, despite these findings, the CAFC allows Gore to continue infringing, declining a permanent injunction and awarding reasonable royalties in the amount of between 12.5% to 20% for future infringements due to the weight of “the public interest to allow competition in the medical device arena.”
Tags: damages > first-to-file > inventorship > ongoing royalty > permanent injunction > willfulness
Joint Inventorship of a novel compound may exist even if co-inventor only developed method of making
| January 25, 2012
Falana v. Kent State University and Alexander J. Seed
January 23, 2012
Panel: Linn, Prost and Reyna. Opinion by Linn.
Summary
The CAFC held that a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound. One may be a joint inventor even if co-inventor’s contribution to conception is merely a method of making the claimed product and said co-inventor does not synthesize the claimed compound.
Tags: claim construction > damages > exceptional case > inventorship > joint inventorship
KSR Reigned In For A Preliminary Injunction
| January 18, 2012
Celsis in Vitro, Inc. v Cellzdirect, Inc. and Invitrogen Corp.
January 9, 2012
Panel: Rader, Gajarsa, and Prost. Opinion by Rader; Dissent by Gajarsa.
Summary:
While Rader’s majority opinion affirmed the district court’s grant of a preliminary injunction despite defendant’s obviousness challenge, Gajarsa’s dissenting opinion asserts that the majority’s decision disregards the Supreme Court’s KSR flexible guidelines regarding the finding of obviousness in the mere repetition of well-known techniques to achieve a desired result, and in the application of “obvious to try.” Gajarsa’s dissent also notes that this is a preliminary injunction, and the standard is not whether defendant has shown obviousness by clear and convincing evidence, but rather, whether defendant has shown a “substantial question of invalidity” to defeat a preliminary injunction. Perhaps, the strongest position for the majority opinion is its consideration of the showing of a “teaching away” in the record, as well as deference given to the district court’s determinations of credibility of the parties’ expert witnesses.
Tags: common sense > injunction > KSR > obvious to try > obviousness > preliminary injunction > teaching away
More on Typhoon: Knowledge in the Art as a Factor in Determining Sufficiency of Corresponding Algorithm
| January 4, 2012
Since the CAFC was relatively quiet last week due to the holidays, this week we revisit Typhoon, which we discussed in our post last week. In the second half of this case, the CAFC continued their review of the district court’s claim interpretation. The CAFC reviewed the MPF claim term “means for cross-referencing responses to said inquiries with possible responses from one of said libraries.” The CAFC chose to emphasize a 1985 case, Shatterproof Glass, in indicating that the amount of detail required in the specification is related to the existing knowledge in the field of endeavor.
Means-Plus-Function Claims – “Algorithm” can be expressed in any understandable terms including in prose
| December 28, 2011
Typhoon Touch Technologies, Inc. v. Dell, Inc. et al.
CAFC, November 4, 2011
Panel: Rader, Newman, Prost. Opinion by Newman
Summary
The United States District Court for the Eastern District of Texas held the patents in suit invalid and not infringed. On appeal, the CAFC affirmed the district court’s rulings concerning the claim terms “memory for storing,” “processor for executing,” “operating in conjunction,” and “keyboardless.” However, CAFC reversed the district court’s ruling that the claim term “means for cross-referencing” is indefinite for failing to satisfy the requirements of 35 U.S.C. Section 112 ¶ 2. CAFC disagreed with the district court and held that the term “means for cross-referencing” is supported by the “structure, materials, or acts” in the specification.
地裁は、MPFのクレームにおいて、機能に対応する構造が明細書に記載されていないと判示し、特許法第112条2項に基づき、クレーム用語は不明瞭であり、クレームは無効であると判断した。CAFCは地裁に同意せず、本件では、明細書に十分な構造の開示があったと判示した。まず、コンピューターにより実施するために必要な構造（アルゴリズム（algorithm））が明細書に開示されているか否かを判断するにあたって、アルゴリズムは、数式、文章、フローチャート等、当業者が理解できるのであれば、どのような方法で開示されていても良いと示した。CAFCは、本件において必要なアルゴリズムは、文章により明細書に十分に開示されていたため、MPFの記載は不明瞭でないと判示した。
Under unusual circumstances, CAFC re-affirms that conception does not require understanding how or why an invention works
| December 21, 2011
Teva Pharmaceutical Industries v. AstraZeneca Pharmaceuticals and IPR Pharmaceuticals
CAFC, December 1, 2011
Panel: Rader, Linn and Dyk. Opinion by Linn.
Summary
The CAFC has re-affirmed that in order to establish conception of one’s invention, it is only necessary for the inventor to appreciate what the invention is, not how or why the invention works. In this case, it was only required that the inventor understand the contents of a drug formulation, and it was not necessary to understand the stabilizing function of one compound of the formulation. This principle is relatively non-controversial, but is presented in the context of the unusual strategy of conceding infringement even though the accused product did not meet one claim limitation, in order to attack the patent on §102(g) grounds.
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