September 2010

Written Description: Description Must do more than Allow PHOSITA to “Envision” the Claimed Invention

Biotech, Enablement, Interference, Patent, Patent Cases 2010,

Goeddel v. Sugano (Fed. Cir. 2010)

When two inventors both claim rights to a single invention, the USPTO is charged with awarding rights to the “first applicant to conceive the invention, provided that [inter alia,] the invention is duly reduced to practice, actually or constructively.” A foreign-filed patent application can constitute constructive reduction to practice “provided that the requirements of §112 are met.”

Sugano filed its original human fibroblast interferon (hFIF) patent applications in Japan in 1979 and 1980 but did not file the claims for the US continuation-at-issue until the 1990s. Meanwhile, Goeddel filed its application in June 1989. In the interference, Goeddel argued that Sugano’s original filings did not provide sufficient disclosure to satisfy the written description requirement of 35 U.S.C. §112 (with respect to the claims being litigated in the interference).

The BPAI (Board) held that Sugano’s 1980 Japanese Application constituted constructive reduction-to-practice of the claims. On appeal, however, the Federal Circuit has reversed – holding that the disputed claims failed the written description test because claimed DNA sequence used to create an hFIF amino-acid sequence was not explicitly defined by the original application.

The Board erred in ruling that priority is established if a person of skill in the art could “envision” the invention of the counts. Sugano argues that this ruling is supported by Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) and University of Rochester v. G.D. Searle & Co., 358 F.3d 916, 923 (Fed. Cir. 2004), but these cases do not hold that envisioning an invention not yet made is a constructive reduction to practice of that invention. In Enzo Biochem the court confirmed that depositing an actual sample may meet the written description requirement when science is not capable of a complete written description. Enzo Biochem, 323 F.3d at 970. In University of Rochester the court held that the description of the COX-2 enzyme did not also serve to describe all unknown compounds capable of inhibiting the enzyme. University of Rochester, 358 F.3d at 926-27. Precedent in evolving science is attuned to the state of the science, but remains bound by the requirement of showing “that the inventor actually invented the invention claimed.” Bradford, 603 F.3d at 1269; see Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993).

Sugano had argued that the specific DNA sequence coding for the amino acids was not necessary because a person of skill in the art could have identified the sequence and therefore, it was “unnecessary to spell out every detail of the invention in the specification.” The appellate panel rejected that argument – holding that the DNA itself should have been identified since the DNA sequence was claimed.

Notes:

  • Genentech owns Goeddel’s rights while the Japanese Foundation for Cancer Research owns Sugano’s rights. (Schering is a licensee).

Board of Patent Appeals

Academic Studies, Articles and Publications, BPAI, Patent

Although the Board of Patent Appeals (BPAI) is working harder than ever, its backlog continues to rise. The first chart below shows the BPAI’s inventory of undecided appeals in ex parte cases. This only includes fully-briefed appeals whose dockets have been transferred to the BPAI and does not include the thousands of other applications where awaiting briefing. The average timing from notice-of-appeal to appellate decision is 29 months.

PatentLawPic1141

I spoke with BPAI officials who identified the jump in early 2009 as a one-time issue involving the bulk transfer of cases that had been previously delayed.

The next chart shows the number of Ex Parte cases decided each month. The average number of cases being decided each month continues to rise. However, the chart also reveals a high month-to-month variability. That variability is explained by the BPAI judge quota system. BPAI judge performance is primarily judged two times per year, and that process is reflected in a systematic incentive for the judges to do more work in Feburary and August and then less work in March and September.

PatentLawPic1142

Although the BPAI is deciding more cases than ever, inventory continues to rise because more appeals are being filed than ever.

Patently-O Bits and Bytes

Bits and Bytes, Law School, Patent

Upcoming Events:

  • Professor Mark Janis of Indiana has put together a really interesting conference titled “Patent Scope Revisited: Merges & Nelson's ‘On the Complex Economics of Patent Scope,’ 20 Years After.”  Sept 23–24 in Bloomington. Speakers include Rob Merges, Don Chisum, Ed Kitch, John Duffy, Jay Kesan, Rochelle Dreyfuss, Kevin Collins, Chris Cotropia, etc. (I will also be speaking at the event and hope to see you there.) [LINK]. (FREE)
  • Catholic University (Columbus School of Law) is presenting a discussion of the “Ethical Ramifications of Therasense” on Sept 27 from 5pm – 6:30pm at the National Press Club.  Speakers include Professors Beth Winston and Megan La Belle from Catholic University along with ITC Chief Judge Paul Lukern, Professor Lisa Dolak (Syracuse), Jim Kulbaski (Oblon) and Ed Polk (Foley) [LINK]. (FREE).
  • Former Chief Judge Michel along with a host of professors and in-house counsel will discuss “Patentable Subject Matter” on Sept 20 9:30am – 12:45pm at GWU in DC. [LINK].
  • San Diego IP Law Association is holding a Discussion of Therasense on Sept 23 from 6pm – 10pm. Speakers include Chris Mammen, Hans Sauer (BIO), Larry Repress, and Fred Hadidi. [Link] ($70–$90).
  • 2010 APLF Annual Meeting is September 29 – October 1 in Chicago. [LINK].
  • IBC Legal has an interesting looking conference in London discussing IP Rights in China on the November 22–23. Patently-O readers should use code KW8070PO for a 10% discount. [Link] 
  • WAY OUT IN THE FUTURE: On Feb 25, 2011, The Missouri Law Review is hosting a conference that looks at the patent jurisprudence of the Court of Appeals for the Federal Circuit with a special focus on the impact of Chief Judge Michel. It will held right here in Columbia Missouri.

Patent Jobs:

  • Marjama Muldoon Blasiak & Sullivan LLP, a Central New York intellectual property law firm, has immediate openings for a Patent Attorney. [Link]
  • Lee & Hayes, a nationally known intellectual property (IP) law firm, is seeking a lateral experienced patent attorney. [Link]
  • International IP Law Group is seeking an Associate, Of Counsel to prepare and prosecute patent applications relating to complex electrical technology and software. [Link]
  • ResMed (Sydney) is seeking a Qualified US, European or Australian patent attorney with a number of years post registration experience. Experience within biomedical engineering and in-house will be looked upon favourably. [Link]
  • HP seeks a patent attorney. [Link]

New Hampshire Law School:

Franklin Pierce Law Center was founded by patent attorneys back in 1973.  For a time the law school was the clear national leader in the training of future patent attorneys. In the past 15–years, many law schools have added patent-focused faculty, but Franklin Pierce is still one of only a handful of schools that focuses on IP law training rather than legal theory. This week, the law school announced that it has formally merged with the University of New Hampshire and has become the University of New Hampshire School of Law. At the same time, the school created Franklin Pierce Center for Intellectual Property. Congratulations to my friends at UNH! [Link]

Patently-O Bits and Bytes

Bits and Bytes, Law School, Patent

Upcoming Events:

  • Professor Mark Janis of Indiana has put together a really interesting conference titled “Patent Scope Revisited: Merges & Nelson's ‘On the Complex Economics of Patent Scope,’ 20 Years After.”  Sept 23–24 in Bloomington. Speakers include Rob Merges, Don Chisum, Ed Kitch, John Duffy, Jay Kesan, Rochelle Dreyfuss, Kevin Collins, Chris Cotropia, etc. (I will also be speaking at the event and hope to see you there.) [LINK]. (FREE)
  • Catholic University (Columbus School of Law) is presenting a discussion of the “Ethical Ramifications of Therasense” on Sept 27 from 5pm – 6:30pm at the National Press Club.  Speakers include Professors Beth Winston and Megan La Belle from Catholic University along with ITC Chief Judge Paul Lukern, Professor Lisa Dolak (Syracuse), Jim Kulbaski (Oblon) and Ed Polk (Foley) [LINK]. (FREE).
  • Former Chief Judge Michel along with a host of professors and in-house counsel will discuss “Patentable Subject Matter” on Sept 20 9:30am – 12:45pm at GWU in DC. [LINK].
  • San Diego IP Law Association is holding a Discussion of Therasense on Sept 23 from 6pm – 10pm. Speakers include Chris Mammen, Hans Sauer (BIO), Larry Repress, and Fred Hadidi. [Link] ($70–$90).
  • 2010 APLF Annual Meeting is September 29 – October 1 in Chicago. [LINK].
  • IBC Legal has an interesting looking conference in London discussing IP Rights in China on the November 22–23. Patently-O readers should use code KW8070PO for a 10% discount. [Link] 
  • WAY OUT IN THE FUTURE: On Feb 25, 2011, The Missouri Law Review is hosting a conference that looks at the patent jurisprudence of the Court of Appeals for the Federal Circuit with a special focus on the impact of Chief Judge Michel. It will held right here in Columbia Missouri.

Patent Jobs:

  • Marjama Muldoon Blasiak & Sullivan LLP, a Central New York intellectual property law firm, has immediate openings for a Patent Attorney. [Link]
  • Lee & Hayes, a nationally known intellectual property (IP) law firm, is seeking a lateral experienced patent attorney. [Link]
  • International IP Law Group is seeking an Associate, Of Counsel to prepare and prosecute patent applications relating to complex electrical technology and software. [Link]
  • ResMed (Sydney) is seeking a Qualified US, European or Australian patent attorney with a number of years post registration experience. Experience within biomedical engineering and in-house will be looked upon favourably. [Link]
  • HP seeks a patent attorney. [Link]

New Hampshire Law School:

Franklin Pierce Law Center was founded by patent attorneys back in 1973.  For a time the law school was the clear national leader in the training of future patent attorneys. In the past 15–years, many law schools have added patent-focused faculty, but Franklin Pierce is still one of only a handful of schools that focuses on IP law training rather than legal theory. This week, the law school announced that it has formally merged with the University of New Hampshire and has become the University of New Hampshire School of Law. At the same time, the school created Franklin Pierce Center for Intellectual Property. Congratulations to my friends at UNH! [Link]

Successor Corporation Held Liable for Default Infringement Judgment Against Predecessor

Doctrine of Equivalents, Patent, Patent Cases 2010

DaewooFunai Electric Company v. Daewoo Electronics Corp. (Fed. Cir. 2010)

In 2004, Funai Electric sued four Daewoo entities for infringement of its patents covering various improved video cassette recorders (VCRs). Funai is a Japanese manufacturer of AV equipment. Daewoo was a historic Korean chaebol that splintered after a financial collapse in the late 1990’s.

Successor Liability: Two of the Daewoo defendants are predecessor companies of the other two defendants. One predecessor-successor pair includes Korean companies and the other pair includes their American counterparts.  At the time of the lawsuit, the two predecessor companies had legally transferred assets to their successors but had not yet ceased operations.  About one-year into the lawsuit, the two predecessor companies stopped participating in the litigation. The district court ordered a default judgment and awarded $8 million in default damages.  Funai then asked that the successor companies be held liable for the liabilities of their predecessors. The district court applied Korean corporate and contract law to hold that there is no successor liability. 

On appeal, the Federal Circuit reversed that judgment — holding that US successor-liability law (actually, New Jersey law) should apply when determining whether the American successor company is liable for the actions of its predecessor. Under New Jersey law, a successor company is liable when the business transfer is simply a “new hat” for the business. Since that was the case here, the Federal Circuit determined that the successor is liable for the default judgment.

The 50–page opinion (including a concurrence by Judge Linn) discussed several other issues. Notably, the opinion provides another example of a prosecution amendment made for purposes “tangential to patentability” and that therefore avoids prosecution history estoppel.

Prosecution History Estoppel: Funai argued that one of its asserted claims was infringed under the doctrine of equivalents (DOE).  Daewoo countered that DOE should be limited under the doctrine of prosecution history of estoppel based on a narrowing amendment made during prosecution of the application. In particular, the patentee had cancelled claims 1 and 2 and then added limitations from those claims into a former dependant claim.  The original claim 1 did not spell-out how insulation would take place while the amended claim indicated that a bearing holder would be “made of an insulating material.”

Under the Supreme Court’s Festo decision, an amendment made during prosecution does not implicate a prosecution history estoppel bar if the “rationale underlying the amendment [bears] no more than a tangential relation to the equivalent in question.”  On appeal, the Federal Circuit recognized the amended claim set as being narrowed, but held that “no estoppel exists” because amendment relating to the insulating material was made for purposes merely tangential to the patentability of the claim. 

It is apparent that the nature of the insulating material was not a factor in the allowance of claim 4, for this aspect was not at issue during prosecution. This limitation is in the category that the Court called “merely tangential” to the prosecution, as discussed in Festo.

The court therefore affirmed the holding of infringement under the doctrine of equivalents.

Law Review Case Note Topics for 2010-2011

Academic Studies, Articles and Publications, Law School, Patent, , , , , , , ,

Dear Law Review Editors: Please send me a note (dcrouch@patentlyo.com) to let me know about patent law focused articles that you publish in your journal so that I can highlight them on Patently-O.

Student Note Topics: Here are some suggestions for patent law focused law review topics for 2010-11 that I would like to see for my own edification. Please send me an e-mail if you choose one of these.

Tags:

Fundraiser — Race for the Cure

Bits and Bytes, Patent

Kv_komen_logo_COUI recently agreed to help raise funds to support efforts to fight breast cancer.  The funds that we are raising go toward educational, treatment, and screening programs.  As part of the effort, I will be running in the 2010 “Race for the Cure” — a 5K race here in Columbia Missouri on September 19. Please use the link listed below to join me as a sponsor of the run.

Thank you!

Dennis Crouch
dcrouch@patentlyo.com

False Marking Claims: Standing

False Marking, Patent, Rantanen, Standing

By Jason Rantanen

Stauffer v. Brooks Brothers, Inc. v. United States (Fed. Cir. 2010)

Raymond Stauffer brought an action against Brooks Brothers claiming that bow ties sold by the defendant were falsely marked with patents that expired in 1954 and 1955.  Stauffer is a patent attorney who purchased some of the marked bow ties.  The district court granted Brooks Brothers' motion to dismiss for lack of standing, and subsequently denied the United States' motion to intervene.  Stauffer and the United States appealed.

Section 292 states:

(a) . . .
Whoever marks upon, or affixes to . . . any unpatented article, the word “patent” or any word or number importing that the same is patented, for the purpose of deceiving the public
. . .
Shall be fined not more than $500 for every such offense.
(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.

(emphasis added).  This type of language is called a "qui tam" provision, by which the government  essentially asigns its rights to a private party (the qui tam "relator").  Because the relator is standing in the place of the United States, he or she must prove that the government, as opposed to the relator, satisfies the requirements for standing.  Central to this case was the district court's determination that Stauffer failed to sufficiently allege that the United States suffered an injury in fact from Brooks Brothers' alleged false marking. 

On appeal, the Federal Circuit concluded that the district court had erred on this point:

Congress has, by enacting section 292, defined an injury in fact to the United States. In other words, a violation of that statute inherently constitutes an injury to the United States. In passing the statute prohibiting deceptive patent mismarking, Congress determined that such conduct is harmful and should be prohibited. The parties have not cited any case in which the government has been denied standing to enforce its own law. Because the government would have standing to enforce its own law, Stauffer, as the government’s assignee, also has standing to enforce section 292.

Slip Op. at 9.

The panel rejected Brooks Brothers' reliance on Lujan v. Defenders of Wildlife, 504 U.S. 555, 560–61 (1992), which denied plaintiffs standing under a citizen-suit provision, as relating only to suits against the government itself.  It also rejected the argument that Stauffer's standing depends on whether the alleged injury is proprietary or sovereign, concluding that both types of injury are sufficient to confer standing on the government, and therefore on the relator. 

With respect to the Government's request to intervene, the Federal Circuit determined that the district court  erred in concluding that the government lacked an interest sufficient to intervene as a matter of right under Rule 24(a)(2).  The panel stated that:

Contrary to Brooks Brothers’ position, the government has an interest in enforcement of its laws and in one half the fine that Stauffer claims, disposing of the action would “as a practical matter impair or impede the [gov-ernment’s] ability to protect its interest,” and Stauffer may not adequately represent that interest….As an initial matter, Brooks Brothers does not contest the government’s assertion that Stauffer does not adequately represent the United States’ interest in this case.

Furthermore, the government would not be able to recover a fine from Brooks Brothers if Stauffer loses, as res judicata would attach to claims against Brooks Brothers for the particular markings at issue….Thus, even though, as the district court noted, “the issue of the government’s ability to bring an action pursuant to section 292” in general was not presented,[] the United States’ ability to protect its interest in this particular case would be impaired by disposing of this action without the government’s intervention. We there-ore reverse the district court’s decision denying the government’s motion to intervene.

Slip Op. at 15-16 (internal citations omitted).

Note: The Federal Circuit expressly declined to address several issues, including  the constitutionality of Section 292(b) (an issue that was raised by amicus Ciba Vision Corporation), whether section 292 addresses a proprietary or a sovereign injury, or both, and whether Stauffers alleged injuries to himself, or his asserted injuries to competition, give him standing.  In addition, in its remand the panel explicitly instructed the district court to consider Brooks Brothers' motion to dismiss pursuant to Rule 12(b)(6), which argued that the complaint fails to allege an intent to deceive the public with sufficient specificity.