Patent Law Bits and Bytes No 61

  • Three Bits from the files of Hal Wegner:
    • BPAI Evidence: In a recent petition in Reexamination No. 90/006,707 (2008 Westlaw 2938366), the Commissioner of Patents barred an applicant from submitting a reply brief that contained new evidence. The proffered evidence was a citation to a dictionary definition. This should serve as a reminder to applicants that the evidence for a BPAI appeal should be laid prior to the appeal.
    • Classen v. Biogen: This case has been waiting an appellate decision since oral arguments one year ago. At least one patent is challenged under 35 U.S.C. 101 as it arguably covers the process of “thinking about” an immunization schedule and then immunizing.
    • Great upcoming conference in London, November 11: http://www.ucl.ac.uk/laws/ibil/index.shtml?events.

12 thoughts on “Patent Law Bits and Bytes No 61

  1. “BPAI Evidence: In a recent petition in Reexamination No. 90/006,707 (2008 Westlaw 2938366), the Commissioner of Patents barred an applicant from submitting a reply brief that contained new evidence. The proffered evidence was a citation to a dictionary definition.”

    In discussions I’ve seen of this case, there seems to be some underlying belief that the refusal of the evidence was especially harsh because the evidence was only “a dictionary definition.”

    Dictionary definitions are extrinsic evidence. If you are going to rely on a dictionary definition to obtain a patent via a reexam, it would seem to be of paramount importance to establish that fact up front and explain one’s reasons for doing so.

  2. “You would think patents of this type would be invalid based on the numerous Supreme Court opinions stating that mental processes are unpatentable under 35 USC 101.”

    Yes, but the “twist” in Metabolite and other cases is the inclusion of an “active” step in the claims. The 101 problem occurs when the active step is old and practioners of the old method suddenly become infringers because their brains have been tainted with the “discovery” disclosed in the patent specification.

  3. “I’ve seen the same phenomenon numerous times: (1) company practices method of doing X; (2) patentee obtains patent for doing X, wherein X (or a result of doing X) is “correlated” with Y or “determined” to be correlated with Y; then (3) patentee sues company for doing X, because X can be “correlated with Y” or “determined” to be correlated with Y.”

    Malcolm–

    Wasn’t this the exact fact pattern of Labcorp v. Metabolite, 548 U.S. 124, 126 S. Ct. 2921 (2006) (Breyer, J., dissenting from dismissal of grant of certiorari)?

    Link to Supreme Court slip opinion: link to supremecourtus.gov

    You would think patents of this type would be invalid based on the numerous Supreme Court opinions stating that mental processes are unpatentable under 35 USC 101.

  4. Dear Lowly,

    Thanks for the suggestion. I should have thought to be clearer — I use to be a teacher but that was a long time ago.

  5. “Classen v. Biogen: This case has been waiting an appellate decision since oral arguments one year ago. At least one patent is challenged under 35 U.S.C. 101 as it arguably covers the process of “thinking about” an immunization schedule and then immunizing.”

    I haven’t read the briefs, but judging from Wegner’s summaries the 101 argument is very good and should suffice. I’ve seen the same phenomenon numerous times: (1) company practices method of doing X; (2) patentee obtains patent for doing X, wherein X (or a result of doing X) is “correlated” with Y or “determined” to be correlated with Y; then (3) patentee sues company for doing X, because X can be “correlated with Y” or “determined” to be correlated with Y.

    In these situations, the patentee tends to come in with a lot of bluster about having “proven” infringement because the alleged infringer’s method “inherently” reads on the claims. The invalidity problem is obvious to clear-thinking people: either the claim fails under 101 because the only new “step” that could be practiced by the infringer is the mental acknowledgement of a natural fact, or it’s inherently anticipated.

    Personally I’d prefer to see the CAFC begin to articulate how the 101 sledgehammer is to be used. I think there are other art units besides biotech where it could come in very handy.

  6. “When using 14 pt. type, are you aware that “Double” in MS Word is 31.5 pts. from one baseline to the next baseline?
    You save about 11% of the pages by setting “Exactly” to 28 pt!

    A 50 page document at 31.5 pt. becomes less that 45 pages at 28 pt.

    Try it – you’ll thank me in the morning.”

    JAOI, I had to think about this for a moment. You’re talking about double spacing. Be a little more clear next time, but thanks for the tip. I have made a note of that.

  7. Incidentally, the limitation on new evidence and new arguments has been included in the new appeal rules that are proposed effective December 2008, there is also some talk that a 116 submission will be required prior to filing a NOA.

    “I’m confused is Mooney duckworth or Leopold Bloom”

    Yes. Both.

  8. Is that attempt at submitting the dictionary definition in response to a new basis for rejection that the Examiner raised in the Answer?

  9. BPAI Evidence: In a recent petition in Reexamination No. 90/006,707 (2008 Westlaw 2938366), the Commissioner of Patents barred an applicant from submitting a reply brief that contained new evidence. The proffered evidence was a citation to a dictionary definition. This should serve as a reminder to applicants that the evidence for a BPAI appeal should be laid prior to the appeal. <<<

    I’m confused… did this happen during an appeal or a reexam? Which?

  10. Hi Gang,

    I posted the Tips below the other day and was surprised that no one commented.
    These tips were critical in an appeal brief I’m preparing in order for me to make all my arguments – the brief is limited to 7,000 words and 35 pages with a specified typeface size, format, etc., similar to the types of requirements for briefs in the Federal Circuit and Supreme Court.

    (All the other stuff going on Just boggles my mind!, but I am focused on my brief.)
    ——————————–

    Jaoi™ Tipsly-O-The-Day:

    Word count requirements sometimes read like this:

    Word Count: The total number of words in the brief, inclusive of point headings, sub-point headings, and footnotes, and exclusive of pages containing the Table of Contents, Table of Authorities, Images, Proof of Service, Certificate of Compliance, or any authorized addendum containing statutes, rules, regulations, etc., is 6,957.

    When using MS Word, are you aware that “Tools”, “Word Count” DOES NOT INCLUDE footnotes? (Ooops!)

    * * * * *

    When using 14 pt. type, are you aware that “Double” in MS Word is 31.5 pts. from one baseline to the next baseline?
    You save about 11% of the pages by setting “Exactly” to 28 pt!

    A 50 page document at 31.5 pt. becomes less that 45 pages at 28 pt.

    Try it – you’ll thank me in the morning.

    Jaoi (©¿®)
    只是一個普通的發明(技術備忘錄)

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