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.