Cascades Projection LLC v. Epson America, Inc

On June 19th, 2017 patent holder, Cascades Projection LLC, urged a Federal Circuit panel to decide whether the America Invents Act’s inter partes reviews are constitutional.  An Inter partes review is an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents. Cascades Projection LLC argued that the United States Supreme Court’s decision in June 2017 to decide the question means that the panel can decide the question as well. The Supreme Court granted writ of certiorari last week for the separate case of Oil States Energy Services v. Greene’s Energy Group, on whether inter partes review violates the United States Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cascades states that the America Invents Act is in violation of separation of powers under the United States Constitution by granting the Patent Trial and Appeal Board the authority to find patents invalid. Back in February of 2017, Cascades attempted to appeal to the Federal Circuit in hopes they would reconsider the precedent ruling in MCM Portfolio v. Hewlett-Packard, which states patents are public rights. Three months later, the court denied to hear the case. In response to denying the case, three United States Circuit Judges agreed that the ruling in MCM Portfolio v. Hewlett-Packard was valid.

Oil States Energy Services v. Greene’s Energy Group is arguing that federal courts only, and not executive branch tribunals, can decide whether a patent is valid or not. They continue to argue that patents are private property rights and not public rights, which under Article III of the United States Constitution, can only be revoked by a federal court. We will post an update when the case is decided by the United States Supreme Court.

Patent Venue Rules Tested

The U.S. Supreme Court has made a ruling in May 2017 limiting the places a U.S. company can be sued. This could generate a myriad of legal conflicts in the future, while creating various limitations for patent owners. According to federal law, patent venue laws state that lawsuits can be filed at either the location where the defendant lives or where the defendant performs business at. In TC Heartland v. Kraft Food Brands Group, the Supreme Court determined in May 2017, deciding the word “resides” means the place of incorporation. Supreme Court justices also announced that their finding is only applicable to domestic corporations.

Nothing should change for foreign defendants as of now, but in the long run, challenges may arise for venue rules concerning foreign defendants. Experts are speculating that plaintiffs may attempt to target only the foreign parent of a company when a foreign potential defendant has a subsidiary in the United States.

Due to venue controversies, impacts on company decisions are highly anticipated. It is recommended that all growing businesses in the U.S. have a set place of business. The Federal law pertaining to patent venue says that wherever a defendant resides, a lawsuit can be filed. As well as anywhere an infringement has taken place, and a business has an established and regular place of operation. Now that U.S. companies are limited on where they can be sued, there may be many challenges to come for non- U.S. defendants.

The Supreme Court Delivers Opinion in TC Heartland LLC v. Kraft Foods Group Brands LLC

In an 8-0 opinion regarding the case TC Heartland LLC v. Kraft Foods Group Brands LLC, on May 22, 2017 Justice Thomas delivered the opinion of the Supreme Court. The judgment was reversed and the case was remanded. All members joined, except Justice Gorsuch, who took no part in the decision of this case. The Supreme Court issued this highly-anticipated decision and reversed the Federal Circuit. The Supreme Court ruled that 28 U.S.C. 1400(b) remains the only applicable patent venue statute. Secondly, that 28 U.S.C. 1391(c) did not modify or amend 1400(b) or the Court’s 1957 ruling in Fourco Glass Co. V. Transmirra Products Corp. The Supreme Court also ruled that the term “residence” in 28 U.S.C. 1400(b) means only the state in which a company is incorporated.

Patent owners will no longer be able to sue an infringing defendant in a district court where the defendant is subject to personal jurisdiction. Patent infringement lawsuits will only be able to be filed in districts within states where the infringing defendant is incorporated. As well as in districts where there has been an act of infringement and the defendant has an established place of business.

The Supreme Court also determined In TC Heartland, that Congress did not intend to change the meaning of 1400(b), or to overrule the decision in Fourco Glass. The Supreme Court relied and referred to the 2011 changes that added “otherwise provided by law” as some evidence that Congress must have wanted 1400(b) to apply.

Foreign corporations and other types of domestic entities can still presumably be sued mostly anywhere. The Supreme Court’s decision did not directly address this, but it was clearly stated in footnotes 1 and 2. While this decision is not favorable to patent owners, patent venue has been the target of patent reform debates in Congress for many years. This ruling is expected to increase cost, complexity and continue to create uncertainty for small entities.

A Karaoke Publisher’s _“Trademark”_ Claim Dismissed By Texas Judge destroyed

A karaoke music publisher brought a suit against several Houston bars that played its karaoke tracks without permission, but a Texas federal judge tossed part of the trademark suit. The infringement suit of Phoenix Entertainment Partners LLC’s is one of several hundred the company has filed around the country over its Sound Choice brand of karaoke tracks. The court admonished Phoenix’s repeated attempts to argue that the unauthorized copying and performance of its karaoke files constitutes a form of trademark infringement. U.S. District Judge Lee H. Rosenthal ruled, that this argument could not stand because allegation should properly be styled as a copyright claim, a differentiation that several appellate courts recently established in “well-reasoned opinions.” “Phoenix alleged that the defendants infringe its goods marks when they illicitly download and play Sound Choice-branded karaoke tracks,” the judge noted. “That is trademark lipstick on a copyright pig.”

The Texas Judge ruled claims as to the company’s “goods” trademark for the songs themselves are dismissed. However the karaoke music publisher may still proceed with claims that the Houston bars infringed its service marks by displaying Sound Choice name and logo during the performance of the tracks at their establishments. The ruling of Judge Rosenthal comes three month after the Ninth Circuit shot down a similar suit filed by Step-Tone (now Phoenix) against an Arizona karaoke provider. Phoenix’s primary argument is that the accused offenders played those tracks for their patrons without paying for a license and that the accused offenders have ripped the popular Sound Choice lyric-accompanied tracks to their own digital hard drives. Phoenix selected to go with a trademark infringement, instead of suing for copyright infringement under the theory that the consumers are misled into thinking they are getting a song off a Step-stone/Phoenix CD when in actual fact they are really getting it from a karaoke bar’s hard drive, the publisher contends.

But the argument of the publisher hasn’t held up well in the appellate courts. The Seventh Circuit similarly held last July that the company couldn’t sue under the Lanham Act, because the claims dealt with intangible expressive content, not actual market goods that might confuse consumers Both the Seventh and Ninth Circuit decisions heavily cited the U.S. Supreme Court’s 2003 Dastar v. Fox ruling, which provides clear limits between the source-designating scope of trademark law and the expression-protecting scope copyright law. Every one of those decisions came into play by the Texas court decision. Consumers cannot possibly be confused by the Sound Choice goods marks, Judge Rosenthal said, because bar patrons don’t actually see the digital files, only the performance of the digital files, which, for all they know, may have been derived from any number of sources, be it a hard drive or internet streaming source, she said. Indeed virtually identical attempts to assert a trademark-infringement claim based on the goods marks, the Supreme Court and two appellate courts has these firmly rebuffed. However on Phoenix’s trademark claims regarding the display of the Sound Choice name and logo during the performance of the karaoke songs, the judge eased up. “Unauthorized use of Sound Choice’s service marks in karaoke shows could plausibly confuse the bar patrons by unfairly trading on Sound Choice Entertainment’s brand identity and impairing Sound Choice Entertainment’s ability to differentiate its services from the competition,” she wrote, allowing those claims to move forward.

On Parking Meter Patent The Patent Trial And Appeal Board Arrives At An ‘Unusual’ Decision

In a decision the Patent Trial and Appeal Board acknowledged was ‘unusual’ the PTAB upheld several claims of an IPS Group Inc. electronic parking meter patent while at the same time invalidated a couple of the patent’s other claims. The final decision in inter parts review found that petitioner Duncan Parking Technologies had shown that two of the patent’s claims were anticipated by an earlier IPS Group patent, while seven other claims had not been shown to be invalid. A mixed conclusion it not unusual for the board, when a number of claims in a patent are challenged.

But the parts of the patent that was held to be invalid, compared to the parts that were not made for a strange situation. Some of the claims upheld by the board are what are known as independent claims, broader claims that are able to stand alone. The two claims held to be invalid however, are known as dependent claims, which depend upon another claim and are therefore a more narrow claim. “We are cognized that, at first glance, it is logically difficult to reconcile a simultaneous determination that while an independent claim is patentable, a claim dependent therefrom is not, “the board wrote. “Nevertheless, after reviewing the relevant facts and law, we determine that this outcome, while admittedly unusual, is correct for the reasons set forth herein.” wrote the PTAB

Duncan’s invalidity position at trial were based entirely on an earlier IPS Group patent, which Duncan argued described the exact same parking meter. The key question, was whether the earlier patent could be considered prior art. There are several Inventors on both IP Group patents, but David King, who is the founder and CEO of the San Diego-based company is named as an inventor on both patents. The IPS Group argued that David King’s own invention could not be used against him. However, Duncan countered, in part, that another man helped conceive of aspects in the earlier patent – U.S. Patent No. 8,595,054 – that anticipated much of the newer one. The more recent patent is U.S. Patent No. 7,854,310. The [King’054] anticipatory disclosure is ‘by another’… and thus invalidates claims 1-5 and 7-10 of the ‘310 patent,” said the PTAB. As to all seven of the challenged claims however, the board was not convinced. The PTAB found little reason to disbelieves that Mr. King was the sole inventor of the applied portions of King ‘054 patent on which Duncan are relied on to argue that claims 1 – 5, 7, and 9 of the ‘310 patent were allegedly anticipated. However, the PTAB found that the parking meter patent’s two invalidated claims relate to aspects of the face of the parking meter. With respect to those claims, the PTAB said it had a “clearer picture” of who was responsible for the invention. And it was “unquestionably different than the inventive entity of all portions” of the earlier patent, the board said. “In that respect, King’ 054 is clearly ‘by another’ when it comes to claims 8 and 10, the board wrote. “As such after considering the record at hand, we are persuaded by DPT that claims 8 and 10 are considered appropriately as unpatentable.

‘Big Bang Theory’ Wins Lawsuit Against ‘Warm Kitty’ Lyrics

A federal court in New York ruled, that the daughters of a writer whose nursery-rhyme appeared in the TV sitcom “The Big Bang Theory” won’t be able to bring copyright infringement claims against the show over its use of the ditty “Warm Kitty”. The court held that Ellen Newlin Chase and Margaret Chase Perry can’t prove their late mother held the copyright to the song, which TV character Sheldon taught a friend to sing when he was ill in an episode of the sitcom.

In December 2015 Chase and Perry brought an action against Warner Bros. Entertainment Inc., CBS Corp., Fox Television Stations Inc. and other associated companies, alleging “the show used their mother’s work without proper permission”. Edith Newlin, a nursery school teacher and writer, had penned “Warm Kitty” for a 1930 s song book that was covered by a blanket copyright notice, according to the opinion. The defendants used the lyrics in a little modified form, including on the television show ‘The Big Bang Theory’, the opinion said.

The court held it is governed by the Copyright Act of 1909, because of of the song’s publication date. And under the Copyright Act of 1909, authors were granted an initial 28-year copyright term, and if the owner dis not renew the term, the work become public domain. There is not any evidence that Newlin did renewed the owner term. After the 28-year copyright term the work went in into the public domain. Still, the opinion said, the owner of the songbook, “Songs for the nursery School”, had renewed the copyright for the book in 1964.However, Copyright Law “granted the owner the right to renew composite elements and the individual author the right to renew his contributions,” said the opinion. Meaning the holder of a collective work could only renew the rights to the contributed parts he or she had collected from the individual contributors, said the court. And the court found that Chase and Perry couldn’t prove that Newlin had assigned the song rights to the book owner and that it was covered by the copyright renewal. Furthermore they could not prove they had a valid claim to the work, according to the opinion. The court shot down the arguments that Newlin had assigned the songbook a “common law copyright” while retaining a personal “copyright” and “other rights”

In Unified Patent Court The United Kingdom Has A Uncertain Post-Brexit Role

 

As the process to leaving the European Union starts for the United Kingdom, attorneys expect Britain to be part of the EU’s new Unified Patent Court, while the separation is finalized. However, questions linger regarding whether the United Kingdom can participate in the court after leaving the EU. The British Prime Minister’s signaling of its intention to leave the EU officially begins two years of negotiations over the terms of the departure, which will include the U.K.’s role in the patent court. In November the British government said, it still plans to ratify the agreement establishing the long-planned Unified Patent Court, the court should adjudicate about patent disputes across the EU in the future. Attorneys expect the British Parliament will approve ratification in the coming weeks.

The United Kingdom will still be a member of the EU and will participate in the court, when the agreement is ratified and the court gets up and running as planned later this year. The U.K. might be able to remain a part of the court once it is no longer part of the EU but attorneys say both political and legal considerations make that far from certain. Under these premises the issues that will remain unresolved include whether British politicians will accept being part of a court made up of EU members that makes decisions outside the U.K., whether the other countries will want a non-EU country to participate in the court, and whether it will be even legally permissible for the U.K. to be involved.

Right now, Patent owners can get either a national patent that the offers protection in only one country, or a European patent, which is essentially a bundle of national patents that must be enforced with individual litigation in each country. After ratification, the EU unitary patent will offer protections in more than 25 EU countries and infringement disputes regarding a EU unitary patent can be adjudicated at the Unified Patent Court, in one case and the system was expected to take effect last year, but the Brexit election outcome slowed the process. The agreement establishing the Unified Patent Court requires ratification by 13 EU members, including the U.K. although it had been unclear if the UK would ratify the agreement after its Brexit vote. But the government of the U.K. said last year that it would do so and would “play a full and active role” for as long as it is part of the EU. John Pegram of Fish & Richardson PC’s New York office said” There have been no indications that Parliament won’t ratify the agreement. Once the U.K. does ratify the next step will be for Germany the final required country to ratify the agreement. After the approval would be begin the process for the UPC to begin operations in December.

Complicating matters are issues such as the Brexit proponents argument that the U.K. should not be subject to rulings by European courts like Luxemburg-based Court of Justices of the European Union, which will have a role in reviewing some aspects of the UPC’s. In other words, the U.K.’s continued participation after it departs the EU will be subject to negotiation over the next two years. Especially what the U.K.’s role would be in a European court with judges from countries all over the continent making decision’s on patent matters in the U.K. An agreement to give the British the possibility the participation in the UPC could be reached between the U.K. and the EU. However, the current agreement would require a modification, as it currently refers to all the participants as EU members states.

Questions remain on whether UPC participation could be used as a bargaining chip by the EU during Brexit negotiations, and whether British politicians who promised to end the CJEU’s, jurisdiction over the U.K. will be on board with a patent system where decisions can still be reviewed by that court, although only on narrow issues.

However even if a deal could be made for Britain to be part of the UPC post-Brexit, the CJEU could still potentially pose a legal hurdle to the U.K.’s participation. The court could rule that only EU members can be participate in the court, as it held in an earlier case over the formation of the court.

The Unified Patent Court will hear disputes over traditional European patents as well as the new unitary patent, but there is also a question of whether unitary patents would be enforceable in the U.K. post-Brexit. Still, despite all the potential complications for patents that could arise once the U.K. leaves the EU, attorneys said it appears that the Brexit vote has not derailed the new system and that it should be able to roll out in the coming months.

The Judge Reconsiders Alice Order, Saves Part Of Security Patents

In a previous order by a federal judge invalidated all of the claims of two security system patents for claiming abstract ideas. However in a following decision, judge concluded that she only had jurisdiction to rule on the claims asserted by plaintiff Joao Control & Monitoring Systems.

Judge Rebecca R. Pallmeyer of the Northern District of Illinois granted some parts of Joao Control & Monitoring Systems LLC’s motion to reconsider her March ruling in a suit against Telular Corporation where Judge Pallmeyer found all 200 claims of the patents were invalid under the Supreme Court’s Alice decision. She held under the revised order that she could only rule that the 12 claims Joao asserted were invalid. The infringement allegations were by Joao narrowed to cover those 12 claims under the district’s local patent rules. The Judge held that the company “effectively withdrew the portion of its complaint addressing the unasserted claims.”

Joao alleged in its complaint that Telular infringed two patents on security systems that monitor vehicles and buildings through a network connected to the internet, asserted Joao in the filed suit from 2014. Telular infringed one or more claims of the patent, one of which has 112 claims, the other of which has 88 claims, the complaint initially alleged. The numbers of asserted claims was later to 12.

Previously, the judge granted Telular’s motion for judgement on the pleadings. There the judge ruled that the judge patents cover only the abstract idea of monitoring and controlling property using generic computer functions like the internet. “Law enforcement officials have used several forms of electronic video and audio recording devices to monitor potential criminal activity on or around property since the mid-20 th century,” she noted. In the judge’s subsequent decision on reconsideration the judge rejected Joao’s argument that the invalidity findings should be limited to only the single claim. The other claims a very similar and “it benefits no one to have the court simply repeat its analysis 12 times,” the judge noted.

American Bar Association Proposal To Change Patent-Eligibility Law

Proposed legislation to clarify what is and is not patent-eligible has been advanced by the American Bar Association Section of Intellectual Property Law. This is now the second major IP group sent to the U.S. Patent and Trademark Office Director Michelle Lee such a proposal. The proposal includes revisions to Section 101 of the Patent Act. The Patent Act Section 101, includes provisions regarding eligibility. The proposed revisions emphasize that claims should be patent-eligible so long as they not preempt the use by others of laws of nature, natural phenomena, or abstract ideas. The proposed revisions also recite that in determining whether an invention is patent-eligible, the issues like novelty and obviousness should not be considered.

The Group said it believes its proposal “is an important first step toward a politically palatable solution to the unworkable and detrimental state of current 101 jurisprudence.”

Another group, the intellectual Property Owners Association released a different proposed legislation earlier this year. The USPTO has received comments from several industry groups for a legislative revision of Section 101.

Many are concerned that the, high-profile Supreme court decisions on patent eligibility, including Prometheus and Alice have made it unclear what is eligible for a patent. The ABA and IPO suggest the best way to solve the issue is for Congress to revise the patent eligibility statue.

The ABA argues that the high court’s rulings “have injected ambiguity into the eligibility determination” by requiring courts and the USPTO to determine if the claimed invention is “well-known” or “routine”, issues the ABA says should only be relevant when determining if an invention is anticipated or obvious.

The ABA further maintains that in the past, the main concern from the Supreme Court’s, in its patent-eligibility decisions has been avoiding patent that “preempt” others from using basic building blocks like abstract ideas. The ABA said that cases such as Alice has “led the lower courts to lose sight of the fundamental preemption concern that has driven patent eligibility jurisprudence”.

The ABA stated that an example of that was, the Federal Circuit’s 2015 Sequenom decision in which the court found that Sequenom Inc.’s fetal DNA test is not patent-eligible, because it is directed to a natural phenomenon, despite the fact that the court also said it was a groundbreaking innovation that did not preempt the use of a scientific discovery.

The ABA argues that is proposed legislation “directly applies the long-standing fundamental concern of Supreme Court precedent” and “at least substantially mitigates if not resolves newly injected ambiguity and confusion into the eligibility determination” by the use of factors relevant only to anticipation and obviousness.

The proposal specifies conditions under which inventions would not be patent-eligible. And under this section patent eligibility will not be negated when a practical application of a law of nature, natural phenomenon or abstract idea is the subject matter of the claims upon consideration of those claims as a whole, whereby each and every limitation of the claims shall be fully considered and none ignored.

The proposal further states that patent eligibility shall not be negated based on considerations of patentability like novelty and obviousness.

The released proposed legislation from IPO’s in January is similar to the ABA’s in some ways. Where the ABA’s proposal focuses on prohibiting patents that preempt the use of natural phenomena and abstract ideas, the IPO’s seeks to define what types of inventions are not patent-eligible.

 

Justice returns patent Laches to Federal Circuit

In March the U.S. Supreme Court remanded to the Federal Circuits multiple appeals, including ones over Johnson & Johnson stent patents and Fossil watch parts, in light of the recent Supreme Court decision last week that laches is not a defense for many patent infringement cases.

In three cases the Supreme Court vacated the Federal Circuit judgements and directed the lower appellate court to reconsider the matters given the justices’ 7-1 judgements in SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al, that barred laches in many patent cases.

IN SCA Hygiene the Court ruled that, because the Patent Act only allows recovery of damages for infringement that transpired less than six year before the complaint was filed, laches cannot be a defense against damages where the infringement occurred within the period allowed by the statute.

In a copyright opinion from 2014 the Supreme Court in Petrella v. Metro-Goldwyn-Meyer Inc. decided, that because the Copyright Act sets a three-year statute of limitations during which claims must be bought, laches cannot be used to bar claims filed within that period. The high court had held that since the Copyright Act sets a three-year statute of limitations during which claims must be bought. A Patent Act of 1952 includes a similar, provision setting a six-year limit on past damages. And in SCA Hygiene, the high court held that the Petrella holding applies to patent law.

In the three cases the U.S. Supreme Court sent back to the Federal Circuit one involved Medinol Ltd. who in March 2013 sued Johnson & Johnson and its affiliate, Cordis Corp. alleging that two coronary stents sold by Cordis infringed four of its patents covering coronary stents that are used in balloon angioplasty procedures.

In another case, Acacia Research Corp. subsidiary Endotach LLC sued Cook Medical LLC in June 2012, alleging that Cook’s products violated two patents covering stent grafts used in the treatment of damaged heart arteries.

And in the last case, Romag Fasteners Inc. sued Fossil Inc. in 2010, claiming Fossil violated its trademarks and patents by using fake Romag magnetic snap fasteners on wallets and watches.

In all three cases the defendants invoked laches as a defense and the defendants were successful.

The Supreme Court did not address a second question posed by Romag in its August petition for certiorari, regarding whether, a trademark owner can be awarded an infringer’s profits in the situation where the defendant has not willfully infringed.
A federal jury found Fossil liable for both trademark and patent infringement in year 2014 after a seven-day trial. Though the jurors determined that Fossil had acted with “callous disregard” of Romag’s intellectual property rights, the jury did not find that the infringement was willful. Thereafter the judge refused to award the company Fossil’s profits. Last March the Federal Circuit affirmed the decision. The Federal Circuit had jurisdiction because of the patent issues but applied Second circuit trademark law.

The Trademark Beef over ‘Landmark’ has been settled between NYC celebrated Chefs

New York, 03.23.2017 The Owner Marc Murphy of Manhatten restaurant Landmarc, has attained resolution to a trademark lawsuit over plans for an eatery named “Landmark” at the nearby site of the old Four Seasons restaurant.

The lawsuit, which was filed less than a month ago, claimed that the planned name for the new restaurant by chefs Mario Carbone and Rich Torrisi and their Major Food Group LLC, was confusingly similar to that of Murphy’s restaurant, just one mile away.

The new restaurant was to open this month in the same in the location that was occupied by the four Seasons for more than six decades. The four Season left that spot last year and have plans to reopen on Park Avenue in the future.

The first use of the name ‘Landmarc’ by Marc Murphy, was in 2004 when he opened the first Landmarc restaurant in Tribeca. His second location in midtown’s Time Warner Center it’s only a stone’s throw then planned Landmark. The Major Food Group LLC runs other Manhattan restaurants on the same upscale level.

In the lawsuit filed on March 7th, Murphy claims consumer confusing between the names “Landmark” and “Landmarc”.

“When pronounced, the words “Landmark” and “Landmarc” are phonetically identical,” Murphy wrote. “It is a generally accepted practice in the restaurant industry, that, when reservations are made for high-quality dining, they are often using a telephone, wherein the name of the restaurant spoken by an employee answering the phone and/or the patron seeking the reservation.”

This case over the previous Four Seasons site was the latest in a rash of trademark lawsuits over the New York City landmarks. The operator of the century-old venue Webster Hall sued its landlord over the rights to that name earlier this month and the city sued last month over Central Park fixture Tavern on the Green.

Murphy, suing through his Anvil NY LLC. Is represented by Ernest Edward Badway of Fox Rothschild LLP.

 

Major Food Group is represented by Andrew Bennett Kratenstein of Mc Dermott Will & Emry LLP.

USPTO Seeks Ideas For Speeding Up Patent Applications

The United States Patent and Trademark Office (USPTO) is 
continuing its efforts to expedite and improve the overall patent 
process. Accordingly, the USPTO is exploring how to best utilize 
available electronic resources to provide examiners with information 
(e.g., prior art, search reports, etc.) from applicant's other 
applications as early as possible to increase patent examination 
quality and efficiency. These other applications, for example, could 
have the same or substantially the same disclosure (e.g., domestic 
parent and counterpart foreign applications) as the U.S. application 
being examined. In addition to improving patent examination quality and 
efficiency, providing the examiner with this information from 
applicant's other applications will reduce applicant's burden to 
provide this information to the USPTO.
    Further, the USPTO is seeking to reduce the issuance time of a 
patent by eliminating potentially unnecessary information from the 
front page of the patent. In particular, the USPTO is seeking public 
comment on what information, beyond a copy of the specification and 
drawing that is required by statute, should be part of the patent 
considering that complete information concerning U.S. patents and U.S. 
patent application publications are accessible to the public via the 
Patent Application Information Retrieval (PAIR) system.
    To assist the USPTO in determining the best way to address these 
two topics, the USPTO is hosting a roundtable event to obtain public 
input. The roundtable will be open for any member of the public and 
will provide a forum for a discussion of the questions identified in 
this notice. Written comments in response to these questions set forth 
in this Notice also are requested.

USPTO Kicks Off Post-Prosecution Pilot Program

The United States Patent and Trademark Office (Office) is initiating a Post-Prosecution Pilot Program (P3) to test its impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of appeal. This Pilot Program responds to stakeholder input gathered during public forums held in support of the Enhanced Patent Quality Initiative.

Under the P3, a panel of examiners, including the examiner of record, will hold a conference with the applicant to review the applicant’s response to the final rejection of record. In order to participate in the P3, the applicant will be required to file a request for consideration under the P3 within two months from the mailing date of a final rejection and prior to filing a notice of appeal, together with a response to the final rejection and a statement that the applicant is willing and available to participate in the conference.

The applicant will have the option of including in the response a proposed non-broadening amendment to a claim(s). The Office designed the P3 to increase the value of after final practice by (1) leveraging applicant input obtained through an oral presentation during a conference with a panel of examiners, and (2) also providing written explanation for the panel decision. The P3 is also designed to reduce the number of appeals and issues to be taken up on appeal to the Patent Trial and Appeal Board (PTAB), and reduce the number of Requests for Continued Examination (RCE), and simplify the after final landscape.

The P3 program implemented through this notice combines effective features from the Pre-Appeal and AFCP 2.0 programs with new features. For example, the P3 provides for (i) an after final response to be considered by a panel of examiners (Pre-Appeal), (ii) an after final response to include an optional proposed amendment (AFCP 2.0), and (iii) an opportunity for the applicant to make an oral presentation to the panel of examiners (new). Finally, the panel decision will be communicated in the form of a brief written summary. Section II of this notice provides a more complete identification of the requirements and procedures of the P3. This notice does not discontinue either the Pre-Appeal or AFCP 2.0 pilot programs.

Duration: The P3 will accept requests beginning July 11, 2016, until either January 12, 2017, or the date the Office accepts a total (collectively across all technology centers) of 1,600 compliant requests to participate under the P3, whichever occurs first. Each individual technology center will accept no more than 200 compliant requests, meaning that the P3 may close with respect to an individual technology center that has accepted 200 compliant requests, even as it continues to run in other technology centers that have yet to accept 200 compliant requests.

Comments should be sent by electronic mail message over the Internet addressed to: afterfinalpractice@uspto.gov. Comments may also be submitted by postal mail addressed to: United States Patent and Trademark Office, Mail Stop Comments—Patents, Office of Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Raul Tamayo. Although comments may be submitted by postal mail, the Office prefers to receive comments by electronic mail message over the Internet in order to facilitate posting on the Office’s Internet Web site.

To be eligible to participate in the P3, an application must contain an outstanding final rejection and be (i) an original utility non-provisional application filed under 35 U.S.C. 111(a), or (ii) an international utility application that has entered the national stage in compliance with 35 U.S.C. 371 (see 37 CFR 1.491). A continuing application (e.g., a continuation or divisional application) is filed under 35 U.S.C. 111(a) and is thus eligible to participate in the P3. Reissue, design, and plant applications, as well as reexamination proceedings, are not eligible to participate in the P3.

A request for a response under 37 CFR 1.116 to be considered under the P3 must include the following items: (1) A transmittal form, such as form PTO/SB/444, that identifies the submission as a P3 submission and requests consideration under the P3; (2) a response under 37 CFR 1.116 comprising no more than five pages of argument; and (3) a statement that the applicant is willing and available to participate in the conference with the panel of examiners. Optionally, a P3 request may include a proposed non-broadening amendment to a claim(s).

Only one P3 request will be accepted in response to an outstanding final rejection. If prosecution is reopened and the Office subsequently issues a new final rejection, the filing of a P3 request in response to the new final rejection is permitted. Once a P3 request has been accepted in response to a final rejection, no additional response under 37 CFR 1.116 to the same final rejection will be entered, unless the examiner has requested the additional response because the examiner agrees that it would place the application in condition for allowance.

There is no fee required to request consideration under the P3. All papers associated with a P3 request must be filed via the USPTO’s Electronic Filing System-Web (EFS-Web).

To be eligible to participate in the P3, an applicant cannot have previously filed a proper request to participate in the Pre-Appeal program or a proper request under AFCP 2.0 in response to the same outstanding final rejection, and once a P3 request is accepted, neither a request to participate in the Pre-Appeal program nor a request for consideration under AFCP 2.0 will be accepted for the same outstanding final rejection.

Timing of the P3 Request

A P3 request must be filed within two months from the mailing date of a final rejection and prior to filing a notice of appeal. A P3 request will be deemed untimely if it is filed (i) more than two months from the mailing date of the final rejection, (ii) in an application that does not contain an outstanding final rejection (e.g., a P3 request will not be accepted in response to a second action non-final rejection), (iii) in response to a final rejection for which a proper AFCP 2.0 request has been filed, (iv) on or after the date a RCE or notice of appeal is filed in response to the same outstanding rejection, or (v) on or after the date an express abandonment is filed. For information on how the Office will process an untimely P3 request, refer to Section II.B.1 of this notice. For information on how a P3 request will be treated if a RCE, notice of appeal, or express abandonment is filed subsequent to the filing of the P3 request, but prior to a decision on the P3 request, refer to Section II.B.4 of this notice.

Transmittal Form

A P3 request must include a transmittal form. The Office advises the use of form PTO/SB/444, which is available at http://www.uspto.gov/forms/index.jsp, as the transmittal form. Use of form PTO/SB/444 will help the Office to quickly identify P3 requests and facilitate timely processing. In addition, form PTO/SB/444 will help applicants understand and comply with the requirements and procedures of the P3. Under 5 CFR 1320.3(h), form PTO/SB/444 does not collect “information” within the meaning of the Paperwork Reduction Act of 1995.

Response Under 37 CFR 1.116

A P3 request must include a response under 37 CFR 1.116. The response must be a separate paper from the transmittal form, and must comprise no more than five pages of arguments. Arguments are limited to appealable, not petitionable, matters (e.g., an argument that the final rejection was premature is a petitionable matter—see MPEP § 706.07(c)). The Office considers arguments as encompassing, e.g.,conclusions, definitions, claim charts, and diagrams. If the applicant opts to include a proposed amendment in the response under 37 CFR 1.116, as further discussed at Section II.A.5 of this notice, arguments presented in the response may be directed to the patentability of the proposed amended claim(s). The sheet(s) of the response containing a proposed amendment will not count towards the five-page limit. If the applicant opts to include an affidavit or other evidence as part of the response, entry of the affidavit or other evidence will be governed by 37 CFR 1.116. See MPEP 714.12. In addition, the affidavit or other evidence will count towards the limit of no more than five pages of arguments.

Form PTO/SB/444, or an equivalent transmittal that does not include arguments, will not count towards the five-page limit. Additionally, a page of the response that consists solely of, for example, a signature will not be counted toward the five-page limit. Thus, for example, a response that includes five pages of arguments and a sixth page that includes conclusions and/or definitions would be treated as exceeding the five-page limit. Furthermore, an applicant may not circumvent the five-page limit by filing arguments in multiple separate documents. For example, if an applicant files one document containing five pages of arguments and an additional document containing arguments, the two documents will be considered together to ascertain whether the five-page limit has been exceeded.

The response may be single spaced, but must comply with the requirements of 37 CFR 1.52(a). Additionally, the response may refer to an argument already of record rather than repeat the argument. This should be done by referring to the location of the argument in a prior submission and identifying the prior submission by title and/or date (e.g., see the argument at pages 4-6 of the paper titled “Applicant’s Response to Final Office Action” filed on October 1, 2015). A reference to “the arguments of record” or “the paper dated X” without a pinpoint citation will not be considered under the P3.

Conference Participation Statement

The P3 request must include a statement by the applicant that the applicant is willing and available to participate in the conference with the panel of examiners. Form PTO/SB/444 includes the required conference participation statement.

After the Office initially verifies that a P3 request is timely and compliant, as further discussed at Section II.B.1 of this notice, the Office will contact the applicant to schedule the conference. If within ten calendar days from the date the Office first contacts the applicant, the Office and the applicant are unable to agree on a time to hold the conference, or the applicant declines to participate in the conference, the request will be deemed improper and treated in accordance with the discussion at Section II.B.1 of this notice.

The applicant may participate in the conference in-person, by telephone, or by a video conferencing tool set up by the Office, such as WebEx®. The conference will permit the applicant to present to the panel of examiners in a manner similar to how an applicant presents an argument in an ex parte appeal before the PTAB. The applicant’s participation in the conference will be limited to 20 minutes.

The applicant should advise the Office of any special needs as soon as possible before participating in a conference. Examples of such needs include an easel for posters or a projector. The applicant should not make assumptions about the equipment the Office may have on hand for the conference. Section II.B.2 of this notice provides more information regarding the applicant’s participation in the conference.

Option To Propose Amendment

The response under 37 CFR 1.116 included with a P3 request optionally may include a proposed amendment to a claim(s). Entry of any proposed amendment after a final Office action is governed by 37 CFR 1.116. See MPEP 714.12. In addition, a proposed amendment under the P3 may not broaden the scope of a claim in any aspect. For the purposes of the P3, the analysis of whether a proposed amendment to a claim impermissibly would broaden the scope of the claim will be analogous to the guidance set forth in section 1412.03 of the MPEP for determining whether a reissue claim has been broadened.

A proposed amendment that focuses the issues with respect to a single independent claim is the type of proposed amendment that provides the best opportunity for leading to the application being placed into condition for allowance. A proposed amendment that contains extensive amendments (either in terms of the nature of the amendment or number of claims to be amended) probably will require extensive further consideration and thus likely would not be effective to place the application in condition for allowance. Extensive amendments will be considered only to the extent possible under the time allotted to the examiner under the P3.

The sheet(s) of the response containing a proposed amendment will not count towards the five-page limit discussed at Section II.A.3 of this notice. In accordance with 37 CFR 1.121(c)(1), the sheet(s) of the response containing the proposed amendment may not contain arguments.

Technology Center Review

After receipt of a P3 request, the relevant technology center will review the request to verify that it is timely, includes a transmittal form, a response under 37 CFR 1.116 comprising no more than five pages of arguments (exclusive of any proposed amendment), and the conference participation statement, and otherwise complies with the requirements of the P3 set forth at Section II.A of this notice. If the request is timely and compliant, the technology center will contact the applicant to schedule the conference.

If the review finds that the request is untimely or otherwise fails to comply with the requirements of the P3, a conference will not be held. The response and any proposed amendment filed with the request will be treated under 37 CFR 1.116 in the same manner as any non-P3 response to a final rejection (except that if the request fails to comply because a P3 request previously has been accepted in response to the same final rejection, the response and any proposed amendment will be entered only if the examiner requests them, as mentioned earlier at Section II.A of this notice). The next communication issued by the Office will indicate the reason that the request was found to be untimely or otherwise non-compliant, the result of the treatment under 37 CFR 1.116 of the response and any proposed amendment filed with the request, and the time period for the applicant to take any further action that may be required as dictated by the facts. For example, if the response and any proposed amendment filed together with an untimely or otherwise non-compliant P3 request fails to place the application in condition for allowance, the next Office communication will be an advisory action. On the other hand, if the response and any proposed amendment is enterable under 37 CFR 1.116and places the application in condition for allowance, the next Office communication will be a notice of allowability.

If the review of a P3 request finds that the request is timely and complies with the requirements of the P3, but the technology center reviewing the request has reached its limit of 200 compliant requests accepted, a conference will not be held. In this situation, the response and any proposed amendment filed with the request will be treated under 37 CFR 1.116 in the same manner as any non-P3 response to a final rejection. The Office may need to take appropriate measures to adjust an examiner’s workload if the volume of requests for a P3 conference with any particular examiner becomes excessive.

It is critical for P3 participants to understand that the filing of a P3 request will not toll the six-month statutory period for reply to the final rejection. To avoid abandonment, further action, such as the filing of a notice of appeal or RCE, will need to be taken within the six-month statutory period for responding to the final rejection, unless the applicant receives written notice from the Office that the application has been allowed or that prosecution is being reopened.

The Post-Prosecution Pilot Conference

After the Office initially verifies that a P3 request is timely and compliant as discussed at Section II.B.1 of this notice, a Supervisory Patent Examiner (SPE) (preferably the SPE of the examiner of record) will coordinate a panel experienced in the relevant field of technology to review the response under 37 CFR 1.116 filed with the P3 request. The panel may include the examiner of record, the SPE, and a primary examiner (preferably the signing primary examiner for the examiner of record, if the examiner of record is a junior examiner). Every reasonable attempt will be made to select panel members with the most expertise in the relevant technological and legal issues raised by the application under consideration.

Concurrently, the Office will contact the applicant to schedule the conference. The applicant may arrange to participate in-person, by telephone, or by a video conferencing tool, such as WebEx®. Although the Office will make every reasonable attempt to accommodate the applicant and timely schedule the conference, scheduling of the conference lies within the full discretion of the Office. If within ten calendar days from when the Office first contacts the applicant, the Office and the applicant are unable to agree on a time to hold the conference, or if the applicant declines to participate in the conference, the request will be deemed improper and treated in accordance with the discussion at Section II.B.1 of this notice. If the examiner of record is unable to participate on the scheduled date of the conference and rescheduling is not possible, the conference will proceed and the other conferees will gather input from the examiner prior to the conference if possible. The remaining conferees may, at their discretion, opt to include in the panel another examiner from the pertinent art.

The conference will begin with the applicant’s presentation, which is limited to 20 minutes. The applicant will be excused from the conference at the end of the presentation. Any materials used by the applicant during the presentation, e.g., a PowerPoint® or exhibit, will be placed in the file and will not count against the five-page limit on arguments. Entry of an affidavit or other evidence included as part of the presentation materials is governed by 37 CFR 1.116. See MPEP 714.12.

The applicant may present on appealable, not petitionable, matters (e.g., applicant may not present an argument that the final rejection was premature). The applicant may present arguments directed to the outstanding record, and, if the response filed with the P3 request includes a proposed amendment, the applicant also may present arguments directed to the patentability of the amended claim(s).

The Notice of Decision From Post-Prosecution Pilot Conference

The applicant will be informed of the panel’s decision in writing via the mailing of a Notice of Decision from Post-Prosecution Pilot Conference (form PTO-2324). For an accepted P3 request (refer to Section II.B.1 of this notice for the procedure that will be followed for an untimely or non-compliant P3 request), the notice of decision will indicate one of the following: (a) Final rejection upheld; (b) allowable application; or (c) reopen prosecution. In appropriate circumstances, a proposed amendment may accompany the notice of decision proposing changes that, if accepted, may result in an indication of allowability.

Final Rejection Upheld

If the notice of decision indicates “final rejection upheld,” the notice of decision will not contain any additional grounds of rejection or any restatement of a previously made rejection. Instead, the notice of decision will summarize the status of the pending claims (allowed, objected to, rejected, or withdrawn from consideration) and the reasons for maintaining any rejection, and include an indication of any rejection that has been withdrawn as a result of the conference.

For a P3 request that includes a proposed amendment as part of the response under 37 CFR 1.116, a notice of decision indicating “final rejection upheld” also will communicate the status of the proposed amendment for purposes of appeal (entered/not entered). If the proposed amendment is entered for purposes of appeal, and the notice of decision indicates which individual rejection(s) set forth in the final Office action would be used to reject the amended claim(s), then any subsequent examiner’s answer may include the rejection(s) of the amended claim(s), and such rejection(s) made in the examiner’s answer would not be considered a new ground of rejection.

If a notice of decision indicates “final rejection upheld,” the time period for taking further action in response to the final rejection expires on (1) the mailing date of the notice of decision; or (2) the date set forth in the final rejection, whichever is later. As discussed previously, to avoid abandonment, the applicant must file a notice of appeal or RCE within the statutory period for response to the final rejection. Extensions of time may be obtained under 37 CFR 1.136(a), but the period for response may not be extended beyond the six-month statutory period for response.

A notice of decision indicating “final rejection upheld” is not petitionable. A decision to maintain a rejection is subject to appeal. Accordingly, the Office will not grant a petition seeking reconsideration of a panel decision upholding the final rejection. The applicant maintains the right of appeal under 35 U.S.C. 134 by filing a notice of appeal and an appeal brief and having the appeal considered by the PTAB.

Allowable Application

If the notice of decision indicates “allowable application,” the notice of decision will be mailed concurrently with a Notice of Allowance, and the notice of decision will state that the rejection(s) is/are withdrawn

Reopen Prosecution

If the notice of decision indicates “reopen prosecution,” the notice of decision will state that the rejection(s) is/are withdrawn and a new Office action will be mailed. The notice of decision also will state that no further action is required by the applicant until further notice.

Actions That Will Terminate a Post-Prosecution Pilot Conference

If the applicant files any of the following after the date of filing a P3 request, but prior to a notice of decision from the panel of examiners, processing of the P3 request will end without a decision on the merits of the P3 request: a notice of appeal; a RCE; an express abandonment under 37 CFR 1.138; a request for the declaration of interference; or a petition requesting the institution of a derivation proceeding. The response and any proposed amendment filed with the request will be treated under 37 CFR 1.116 in the same manner as any non-P3 response to a final rejection. The next communication issued by the Office will indicate the reason that processing of the P3 request was terminated, the result of the treatment under 37 CFR 1.116 of the response and any proposed amendment filed with the request, and the time period for the applicant to take any further action that may be required as dictated by the facts.

In addition, as stated earlier, once a P3 request has been accepted in response to a final rejection, no additional response under 37 CFR 1.116to the same final rejection will be entered, other than one that the examiner has requested because the examiner agrees it would place the application in condition for allowance. This condition of the P3 holds true regardless of whether the additional response is filed prior to, on the same day as, or after a notice of decision from the panel of examiners.

Finally, at any point during the processing of a P3 request, the examiner may enter an Examiner’s Amendment placing the application in condition for allowance.

Federal Circuit Revives Liver Cell Patent – Decision Related to Section 101

The inventors of the ‘929 patent discovered that some cells could be frozen and thawed multiple times. They used a process called density gradient fractionation to isolate those cells, finding that 70 percent of them could be refrozen and used again.

U.S. Patent 7,604,929 is focused on hepatocytes, liver cells that are useful for testing, diagnostic and treatment purposes. The cells have a short life span, and freezing them repeatedly can cause damage, according to Prost’s opinion. To study a drug’s impact on the general population, researchers previously had to pull together pools of liver tissue from multiple donors, then unfreeze them all at once for a single use.

U.S. District Judge Milton Shadur ruled that the patent is “directed to an ineligible law of nature: the discovery that hepatocytes are capable of surviving multiple freeze-thaw cycles.”

But, Prost said Tuesday, “that is not where [the inventors] stopped, nor is it what they patented.” Rather, the inventors “employed their natural discovery to create a new and improved way of preserving hepatocyte cells for later use.”

Plus, she wrote, while freezing and thawing hepatocytes was conventional at the time, the process of doing it twice “was itself far from routine and conventional.” Prost’s reliance on that “ordered combination” of steps echoed Judge Raymond Chen’s reasoning turning back a software patent eligibility challenge just last week.

Judges Kimberly Moore and Kara Stoll concurred in Prost’s opinion.

Inter-Partes Review – CUOZZO SPEED TECHNOLOGIES V. LEE

Last week, Supreme Court rendered a decision regarding the inter partes review procedure.

Cuozzo Speed Technologies is the owner of a patent that covers a speedometer, indicating when the speed limit is exceeded. During the course of 2012, Cuozzo filed patent infringement lawsuits. Garmin was one of the defendants, which in return filed an inter partes review of the patent. This request aimed at invalidating the patent as obvious. PTAB, using the “broadest reasonable construction” standard, invalidated 3 different claims, even though only one of them was challenged.

In return, Cuozzo appealed before Court of Appeals for the Federal Circuit. The two main arguments were:

  • PTAB decision was unlawful, since Garmin did not challenge the two other claims “with particularity” to which the challenged claim was dependent on.
  • PTAB should have applied the Phillips standard in inter partes review, which is the standard used by federal courts. Phillips standard uses “ordinary meaning … as understood by a person skilled in the art”

The first argument was rejected in the light of 35 U.S.C. Section 314(d), which states that PTAB’s decision “whether to institute an inter partes review … shall be final and non-appealable.” Federal Circuit also rejected the second argument in the light of 35 U.S.C. Section 316(a), which grants the Patent Office the authority to issue “regulations … establishing and governing inter partes review”. By applying the BRC standard, more prior art will be taken into consideration.

Both issues were granted certiorari by the Supreme Court. For the first argument, the Court stated that PTAB decisions are generally not appealable; however, in cases where the decision implicates constitutional rights, judicial review may be available. For the issue regarding the standard of review, the Court unanimously held that the Patent Office has authority to implement the BRC standard.

This decision, along with Alice, Bilski, and Mayo, contributes to the ease of invalidating a patent.

Obviousness Analysis – PROMETHEUS LABORATORIES, INC. v. ROXANE LABORATORIES, INC.

The ‘770 patent which is owned by Prometheus Laboratories Inc., claims a method of treatment for IBS-D utilizing alosetron. Prometheus also has the ‘800 patent which covers the use of ‘770 patent.

In 2009, Roxane filed an abbreviated new drug application (ANDA) with FDA seeking approval of a version of Lotronex, since the ‘770 patent expired. In 2010, reexamined ‘770 patent was relisted in the Orange Book and Roxane submitted a paragraph 4 certification to the FDA.

In 2011, Prometheus sued all the defendants alleging infringement of ‘770 patent. Prometheus alleged that Roxane’s label would encourage doctors to prescribe alosetron in a sense that infringes the claims.

The district court held that “the elements of the ’770 patent were present in the prior art, and the differences between the prior art and the claims of the ’770 patent are insubstantial . . . [as] some of the prior art is virtually identical to the claimed inventions”. In addition, the district court also held that “the claims were invalid for obviousness-type double patenting in light of the claims of the ’800 patent”. So, the district court did not agree with Prometheus, saying that there is no issue of infringement. Then, Prometheus appealed.

According to the Federal Circuit, obviousness is based on “underlying factual findings, including: (1) the level of ordinary skill in the art; (2) the scope and content of the prior art; (3) the differences between the claims and the prior art; and (4) secondary considerations of nonobviousness, such as commercial success, long-felt but unmet needs, failure of others, and unexpected results”. And, also states that a patent would have been obvious if the differnces between the calimed invention and prior art are such certain that a person having ordinary skill in the art will distinguish them. The Federal Circuit held that “even treating the limitations of the ’770 claims as exclusions, we conclude that before October 7, 1997, it would have been obvious to a person of ordinary skill to treat those sub-species claimed here”. Prometheus objected.

The Federal Circuit noted that “if the later expiring patent is merely an obvious variation of an invention disclosed and claimed in the reference patent, the later expiring patent is invalid”. The court also stated that in this case, it would have been obvious to a person who has ordinary skill in art to read the ‘800 patent and treat patients with IBS-D. Therefore, the Federal Circuit affirmed the district court’s decision noting that “the challenged claims of the ’770 patent would have been obvious over the ’800 patent and other prior art”.

Subject-Matter Analysis – ARIOSA DIAGNOSTICS, INC., et al. v. SEQUENOM, INC., et al.

In 1996, Drs. Dennis Lo and James Wainscoat discovered cell-free fetal DNA (“cffDNA”) which is a kind of DNA that circulates freely in the blood stream of pregnant women. In 2001, Drs. Lo and Wainscoat obtained the ’540 patent, which relates to this discovery. The invention, commercialized by Sequenom as its MaterniT21 test, created an alternative for prenatal diagnosis of fetal DNA. However, the patent does not claim cffDNA. Instead, the ’540 patent claims certain methods of using cffDNA.

Natera, Inc. manufactures and sells the Non-Invasive Paternity Test, which is intended to confirm the paternity or non-paternity of a gestating fetus from genetic information in fetal DNA available in the blood of the pregnant female. Diagnostics Center, Inc. is a licensee of Natera.

Each of these firms filed separate declaratory judgment actions alleging that they did not infringe upon the ’540 patent.

The district court found that “there was a substantial question over whether the subject matter of the asserted claims was directed to eligible subject matter.” Sequenom appealed and the Federal Circuit remanded and held that the district court erred in certain respects.

Parties then filed for motions for summary judgment regarding invalidility under section 101. The district court held that “the claims of the ’540 patent were directed to the natural phenomenon of paternally inherited cffDNA, and that the claims did not add enough to the natural phenomenon to make the claims patent eligible under § 101.” Sequenom appealed.

Federal Circuit followed these steps in order to determine whether claims of ‘540 patent is patent-ineliginle concept:

1) if subject matter is patent eligible, and

2) whether the claim contains an inventive concept sufficient to “transform” the claimed naturally occurring phenomenon into a patent eligible application.

In the first step, the court stated that the claims of the ’540 patent are method claims and methods are patent eligible subject matter. In the second step, the court held that “the practice of the method claims does not result in an inventive concept that transforms the natural phenomenon of cffDNA into a patentable invention.”

Because the method steps were well-understood, and easy to follow, the court specified that “the method of detecting paternally inherited cffDNA is not new and useful, the only subject matter new and useful as of the date of the application was the discovery of the presence of cffDNA in maternal plasma or serum.” The court also concluded that appending well-understood, routine steps to a “natural phenomenon” which is specified generally is not enough to be an “inventive concept”.

In addition, Federal Circuit indicated that “while preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. In this case, Sequenom’s attempt to limit the breadth of the claims by showing alternative uses of cffDNA outside of the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter.”

Federal Circuit, then remarked that “detecting cffDNA in maternal plasma or serum that before was discarded as waste material is a positive and valuable contribution to science. But even such valuable contributions can fall short of statutory patentable subject matter, as it does here.”

For the above reasons, the court affirmed the district court’s decision, stating that the patent is invalid under Section 101.

Indefiniteness Analysis – BIOSIG INSTRUMENTS, INC. v. NAUTILUS, INC.

Biosig Instruments was granted a patent for a heart rate monitor that reduces noise during the detection of heart rate. Upon being sued for patent infringement, Nautilius filed a motion for summary judgment to have the patent invalidated for indefiniteness.

The district court found that the claimed invention “is not a description of any invention but a desired outcome, therefore, violates the requirement of specificity in Section 112”. The district court also found that, “a person of ordinary skill in the art at the time of the invention, after reading this patent would not have known how to design the claimed invention”. Biosig appealed the district court’s decision granting Nautilus’s motion.

On appeal, the Federal Circuit reversed and noted that when “a claim limitation is defined in functional terms, determining whether the limitation is sufficiently definite depends on the disclosure in the specification and the knowledge of a person of ordinary skill in the art.” The Federal Circuit also cited the precedent that “a claim is indefinite only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’”

The Federal Circuit held that under the rule of U.S.C.§ 112, a patent is invalid for indefiniteness when those of ordinary skill in the art, having read the patent specifications and see into the prosecution history, would not be able to identify the scope of protection.

Using this standard, Federal Circuit determined that the patent survived indefiniteness review. Supreme Court granted certiorari, rejecting this standard and vacated and remanded the case.

Nexus Analysis – SOUTH ALABAMA MEDICAL SCIENCE V GNOSIS S.P.A.

Certain claims of Appellant’s (“SAMSF”) three patents were reviewed by the Board at the request of Appellee (“Gnosis”). The Board found all contested claims to be obvious due to two prior art references; a European patent application and a US patent. Due to similarity in purpose and disclosure of references, a person having ordinary skill in the art would be “motivated to combine them to arrive at the claimed use.” The Board concluded that SAMSF was unable to “demonstrate an adequate nexus between that evidence and the novel features of the contested claims.” SAMSF appealed.

The first discussion the Federal Circuit made was regarding obviousness. The Federal Circuit stated that underlying findings of fact for obviousness “include the motivation to combine multiple prior art references and any objective indicia of non-obviousness.”

The Federal Circuit concluded that substantial evidence supported the Board’s finding that the commercial success of products listed by the appellant “was inadequately linked to the claimed methods and composition” and agreed with the Board’s finding that appellant was unable to provide an “adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner.” Thus, it was found that the novel features of the invention were not adequately tied to the evidence. In the light of these findings, the relevant claims of the patent were invalidated.

Infringement Analysis – AKAMAI TECHNOLOGIES, INC., THE MASSACHUSETTS INSTITUTE OF TECHNOLOGY v. LIMELIGHT NETWORKS, INC.

In 2006, Akamai Technologies, Inc. filed a patent infringement action against Limelight alleging infringement of several patents, including the ’703 patent, which claims methods for delivering content over the Internet. The jury found that Limelight infringed certain claims of the subject-matter patent. United States Court of Appeals for the Federal Circuit reversed and reinstated the jury verdict.

The issue at hand in this case is whether or not there is the ability for the concept of divided infringment  can still hold a single entity liable for the infringement.

The Federal Circuit explains  that direct infringement “occurs where all steps of a claimed method are performed by or attributable to a single entity”. However when more than one actor is involved in practicing the steps, a question of divided infringement arises.

When looking at divided infringement, the Court must looking to see if the acts of one actor is attributable to one single entity. In order to determine whether an entity is responsbile for others’ performance of methods, the court looks at two factors: “(1) where the entity directs or controls others’ performance, and (2) where the actors form a joint enterprise.

The Court further elaborated that, liability of an entity for others’ performance occurs under two circumstances: “(1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise”

Previously, courts have held actors liable under §271 (a) if it acts through an agent or contract with others to peform steps of a claimed method. However, the Federal Circuit now is stating that under § 271(a),  liability “can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” In the event this occurs, the third party’s actions are attributed to the alleged infringer and becomes the single actor of direct infringement. This determination of control of acts of other parties is a question of fact.

In terms of a joint enterprise, all actors can be charged with the acts of the other as if they are a single actor. In determining if a joint enterprise exists, the Court looks to see if there is: “(1) an agreement, express or implied, among the members of the group; (2) a common purpose to be carried out by the group; (3) a community of pecuniary interest in that purpose, among the members; and (4) an equal right to a voice in the direction of the enterprise, which gives an equal right of control.”

The court states that Section 271(a) is not limited solely to principal-agent relationships, contractual arrangements, and joint enterprise, as the vacated panel decision held. Rather, to determine direct infringement, whether all method steps can be attributed to a single entity should be considered.

In this case, it was agreed by the parties that  Limelight’s customers performed the “tagging” and “serving” steps in the claimed methods. However, there was substantial evidence that Limelight controlled it’s customers performance in every  other remaining method step, making all steps attributable to Limelight..customer use of its content delivery network upon its customers’ performance of the tagging and serving steps, and that Limelight establishes the manner or timing of its customers’ performance.