August 2011

Classen Immunotherapies v. Biogen: The Broad, Broad Scope of Statutory Subject Matter

By Jason Rantanen

Classen Immunotherapies, Inc. v. Biogen Idec (Fed. Cir. 2011) Download 06-1634-1649
Panel: Rader (offering "additional views"), Newman (author), Moore (dissent)

There is no doubt that the Federal Circuit continues to struggle mightily with Section 101.  If Myriad were not enough evidence of this, Classen Immunotherapies – and Judge Rader's additional views in particular – should remove all doubt.

Classen Immunotherapies holds three patents that it contends are infringed by virtually everyone: Patent Nos. 6,638,739; 6,420,139; and 5,723,283.  According to the patents, their inventor, Dr. Classen, has discovered that "the schedule of infant immunization for infectious diseases can affect the later occurrence of chronic immune-mediated disorders…and that immunization should be conducted on the schedule that presents the lowest risk with respect to such disorders."  Slip Op. at 5. Claim 1 of the '739 patent is illustrative of Classen's broad claim scope:

1. A method of immunizing a mammalian subject which comprises:

(I) screening a plurality of immunization schedules, by

(a) identifying a first group of mammals and at least a second group of mammals, said mammals being of the same species, the first group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a first screened immunization schedule, and the second group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a second screened im-munization schedule, each group of mammals having been immunized according to a different immunization schedule, and

(b) comparing the effectiveness of said first and second screened immunization schedules in pro-tecting against or inducing a chronic immune-mediated disorder in said first and second groups, as a result of which one of said screened immuni-zation schedules may be identified as a lower risk screened immunization schedule and the other of said screened schedules as a higher risk screened immunization schedule with regard to the risk of developing said chronic immune mediated disorder(s),

(II) immunizing said subject according to a subject immunization schedule, according to which at least one of said infectious disease-causing organism-associated immunogens of said lower risk schedule is administered in accordance with said lower risk screened immunization schedule, which administration is associated with a lower risk of development of said chronic immune-mediated disorder(s) than when said immunogen was administered according to said higher risk screened immunization schedule.

Classen asserts that the '139 and '739 patents are infringed "when a health care provider reads the relevant literature and selects and uses an immunization schedule that is of lower risk for development of a chronic immune-mediated disorder."  Slip Op. at 7.  According to Classen, this includes "the act of reviewing the published information, whether or not any change in the immunization schedule is made upon such review."  Id. The '283 patent is similar, except that it does not include the subsequent step of selecting an immunization schedule.  Classen asserts that the '283 patent is infringed "when a person reviews relevant information, whether the person is a producer of vaccines, a health care provider, or a concerned parent."  Slip Op. at 8.  The three patents list several hundred preexisting references relating to immunization schedules, the occurrence of immune-mediated disorders, and studies and reports from the field.

The district court granted summary judgment of invalidity of the asserted claims on the ground that they claimed an abstract idea.  On initial appeal, the CAFC affirmed, with Judge Moore penning an extremely short affirmance.  Following Bilski, the Supreme Court grant-vacate-remanded the case to the Federal Circuit, where it was assigned to the panel of Rader, Newman, and Moore.

 The Majority: Writing for herself and Judge Rader, Judge Newman concluded that while the '283 patent failed to satisfy Section 101, the '139 and '739 patent did.  Although the '139/'739 patents included a mental step, "precedent has recognized that the presence of a mental step is not of itself fatal to § 101 eligibility."  Slip Op. at 15.  Because the claims of these patents include the physical step of immunization, the majority held, they were directed to a "specific, tangible application."  Slip Op. at 18.  This was sufficient to assure the majority, which declined to offer any additional reasoning, of their subject matter patentablity.    On the other hand, the majority held, the '283 patent attempted to claim an abstract idea unfettered to any physical steps.  Thus, it was invalid under Section 101.

The Dissent: Judge Moore disagreed entirely.  "While I confess the precise line to be drawn between patentable subject matter and abstract idea is quite elusive, at least for me, this case is not even close."  Dissent at 6.  All three claims simply constitute abstract subject matter: "Having discovered a principle – that changing the timing of immunization may change the incidence of chronic immune mediated disorders – Classen now seeks to keep it for himself."  Dissent at 8.  While Judge Moore reserves her harshest criticism for the '283 patent, her views on the '139/'739 reach the same conclusion.  "The immunization step of the '739 patent, like updating the alarm limit in Parker v. Flook, 437 U.S. 584 (1978), is nothing more than post-solution activity."  Id. at 9.  That post-solution activity "does not transform the unpatentable principle – that a correlation exists between vacination schedules and incidence of chronic immune disease – into a patentable process.'  Id. at 10.

Judge Rader's Additional Views:  In an unusual move, Judge Rader, joined by Judge Newman, wrote separately to express frustration with the constant use of Section 101 challenges by accused infringers. 

In the last several years, this court has confronted a rising number of challenges under 35 U.S.C. § 101. The language of § 101 is very broad. Nevertheless, litigants continue to urge this court to impose limitations not present in the statute.

For a variety of policy reasons, Judge Rader urges, "[t]his court should decline to accept invitations to restrict subject matter eligibility."  Rader additional views at 2.  Chief among these is the problem that "eligibility restrictions usually engender a health dose of claim-drafting ingenuity," evasions that "add to the cost and complexity of the patent system and may cause technology research to shift to countries where protection is not so difficult or expensive."  Id. at 3.  

Comments: I am troubled by several aspects of the court's opinions.  Particularly concerning is the majority's apparent desire to abdicate the subject matter inquiry altogether, a desire expressed both implicitly, in the majority opinion's unwillingness to offer any substantive reasoning to support its ruling on the '139/'739 patents, and explicitly in Judge Rader's policy statement.  This approach seems problematic on its own, but becomes even more so when coupled with the numerous Supreme Court opinions relating to the issue of subject matter patentability – an area of traditional significance in the patent sphere.  While the Court may have repeatedly suggested that broad categorical rules may be inpermissible, it has nowhere suggested that subject matter arguments lack merit as a class, or that subject matter arguments must fail as a matter of course.  In particular, I find it difficult to see how the '139/'739 patents possibly survive scrutiny under Parker v. Flook, 437 U.S. 584 (1978).  The mental step itself is not a patentable subject, so how can combining it with an act (or the lack of an act) that has previously been done without the mental step make it patentable?   

Nor does Section 101 seem to present such a unique problem that the Federal Circuit should adopt a policy of declining to address arguments relating to it.  Even as Judge Rader criticizes the case law limiting subject matter patentablity because it encourages costly legal design-arounds, he joins with an opinion that does precisely that by drawing the line between the two sets of claims.  Mental step claims are now clearly out; mental step plus claims are now in.  And since every process is simply a link in a longer process, claim drafters need only look one step forward to avoid the effects of the majority's ruling.  Nor should the effects of Judge Rader's parade of horribles be limited to Section 101 – they strike me as equally applicable to Section 102, Section 103, and especially Section 112. 

 

 

 

 

Obviousness in Chemical Formulations: (Unclaimed) Purpose of Limitation Leads to Nonobviousness Holding

ForticalUnigene Labs. and Upsher-Smith Labs v. Apotex (Fed. Cir. 2011)

One critical reading of this case is that the Federal Circuit intends to continue to take steps to ensure that important chemical formulation patents are considered valid. In particular, the court explicitly aligns the obviousness analysis of claims for formulations of known compounds with that of claims for novel compounds.  In doing so, the court seemingly ignores KSR’s negative outlook on combination claims.  The case is also important in the way that the (unclaimed) purpose of a particular element of a combination claim can be used to overcome an obviousness argument.

Background: Unigene’s reissued patent No. RE40,812 covers its Fortical calcitonin nasal spray. Unigene developed Fortical as a bioequivalent alternative to Novartis’s Miacalcin calcitonin nasal spray. Unigene relied on bioequivalence to the already approved formulation to speed its FDA approval process. The differences between the formulations are in the levels of non-pharmaceutically active components of the nasal spray.

In particular, the prior-art Miacalcin spray includes 2,200 I.U./mL of calcitonin and also sodium chloride, nitrogen, HCL, water, and benzalkonium chloride. Unigene’s Fortical contains the same amount of calcitonin, along with 20  mM  citric acid, polysorbate 80, phenylethyl alcohol and benzyl alcohol. These contents in their required ratios are claimed in Unigene’s patent.

In 2006, generic manufacturer Apotex filed an abbreviated new drug agreement (ANDA) to begin importing a generic version of Unigene’s Fortical nasal spray before the patent’s expected expiration date. Because that filing constitutes prima facie patent infringement under 35 U.S.C. § 271(e)(2), Unigene sued for infringement.

On summary judgment, the district court dismissed Apotex’s obviousness defense — holding that, as a matter of law, the asserted claims would not have been obvious at the time of invention.  35 U.S.C. 103(a).

On appeal, the Federal Circuit affirmed and provided a further analysis of how the Supreme Court’s KSR decision applies (or does not apply) in the chemical arts.

Begin with a “lead compound” or “reference composition”: In most chemical-compound cases, the obviousness analysis begins with the closest prior art compound — termed a “lead compound.”  In this type of composition claim, an ordinary approach is to begin with a “reference composition.” Here, that reference is the Miacalcin formulation.  Here, there was a strong market demand to identify a bioequivalent composition that avoids the Miacalcin patent since a bioequivalent would have the best chance of receiving FDA approval.

Although the prior art would point one of ordinary skill in the art toward a particular starting point and provide motivation to develop a bioequivalent, these factors to not indicate which bioequivalent among an infinite number of possible formulations is the best.

Here, Unigen focused on its use of 20  mM  of citric acid as a absorption enhancer and surfactant in Fortical.  The prior art Miacalcin uses BZK for that function.  A prior art reference showed experimental data that citric acid mixed with calcitonin in tablet form increased absorption. However, the court ruled that reference “would not cause a person of ordinary skill to replace BZK in Miacalcin  with  20  mM  of  citric  acid  in  the  normal  course  of research and development[, and therefore citric acid] would not be an obvious substitute for BZK’s functions.”

Unclaimed Function, Critical Importance: In making its decision, the court makes an important leap that is critical for its decision — namely that the role or function of citric acid in the claimed invention is as an absorption enhancer and surfactant.  The claims do not require that functionality.  However, the court determined that the citric acid actually serves as a substitute for BZK and therefore its addition will only be obvious if it would have been obvious as a substitute for BZK.

Once framed as a question of substitution, the court then looked to the prior art and found that the role of citric acid in the prior art was only vaguely known and therefore could support a decision that it would have been obvious to substitute citric acid for the BZK functionality. A separate prior art reference used citric acid in a nasal compound (like Fortical), but included a statement that the citric acid was “not used as an absorption enhancing agent” but instead only as a buffer.  That reference also suggests that citric acid would not be an acceptable absorption agent. 

In addition, the prior art used different concentration levels of citric acid and only non-human mammalian tests — factors that tend to disrupt any obviousness argument.

Summary Judgment of Nonobviousness Affirmed.

Notes from around the patently-o-sphere:

  • Kevin Noonan writes that “the decision provides a contrast between how the Court views chemical obviousness for pharmaceutical formulations today, and the views contained in the Court’s opinion in Pfizer, Inc. v. Apotex, Inc.”
  • Aaron Barkoff notes that the opinion aligns the obviousness analysis for formulation claims (for known compounds) with that of claims for novel compounds.
  • Ryan Alley writes that “I get the feeling the case is pushing the boundaries of nonobviousness a little too far.”
  • Patent Hawk writes that in this case, the “CAFC set its own formula for chemical obviousness”

Guest Post: An Empirical Exploration of First-to-Invent Versus First-to-File

Guest Post by Polk Wagner, Professor of Law, University of Pennsylvania Law School

One of the most-discussed and controversial provisions of the patent reform bill currently pending before Congress is the change to the United States' venerable first-to-invent patent priority rule.  Surprisingly, even as as we stand on the cusp of the broadest set of changes to the US Patent Law in two generations, virtually no empirical analysis has been conducted on the potential impact of this change, particularly on individual inventors.

In a new paper by my Penn colleague David Abrams and myself — Priority Rules:  An Empirical Exploration of First-to-Invent versus First-to-File — we seek to shed some light on this question by exploiting the same rule change in Canada as a natural experiment.  After collecting data on over a million patent grants in Canada and the US, we use a difference-in-difference empirical framework to estimate the impact of the priority rule change on small inventors.  Our main finding is a substantial drop in the fraction of patents granted to small inventors in Canada coincident with the implementation of first-to-file.  The overall policy implications depend on the relative value of inventions by small inventors, but the results do reveal that, contrary to the conventional wisdom, a change to first-to-file is not free — it is likely to result in reduced patenting behavior by individual inventors.

The complete paper is available on SSRN: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1919730

Flowchart Insuficient Structure to Define Sofware Means-Plus-Function Limitation

In re Aoyama (Fed. Cir. 2011)

Aoyama’s pending application claims a supply chain management system with two elements: “an order controller system” and “a warehouse system.” According to the claim, the order controller generates “transfer data” using “reverse logistic means” and the warehouse receives the transfer data.  The Examiner identified U.S. Patent Application Pub. 2001/0034673 (“Yang”) as fully anticipating and that rejection was affirmed by the Board of Patent Appeals and Interferences (“Board”).

On appeal to the Court of Appeals for the Federal Circuit, a split panel agreed that the claims lacked merit but found them impermissibly indefinite rather than anticipated.

The key to the decision focuses on the means-plus-function “reverse logistic means” limitation. 

Means-plus-function (MPF) claims are deceptive. MPF claims appear to be broadly drafted and without any structural limitations. However, the patent act requires that the actual scope of MPF claims be limited to structures disclosed within their specifications. 35 U.S.C. 112 p6. The court has also repeatedly held that an MPF limitation is considered impermissibly indefinite if the specification does not contain any structure that performs the claimed function.

Here, the claimed “reverse logistic means” generate “transfer data.”  Aoyama pointed to a flow-chart (Figure 8) as providing the necessary structure.  (Shown below).   In reviewing the flow-chart, however, the Federal Circuit could not identify sufficient structure.  In particular, the court noted that the flow-chart identified a number of results, but did not identify any way that “a computer could be programmed to produce the results described in the boxes.”  Quoting both the Examiner and the Board, the Court wrote  that Figure 8 only “presents several results to be obtained, without describing how to achieve those results, and certainly not how to generate transfer data.”

Patent2011017

Importantly, the question of means-plus-function structure is much like that of written description. It does not matter whether one skilled in the art would be able to create a structure to perform the claimed function. Rather, the focus is on whether such structures were disclosed in the specification.

Because the means-plus-function limitation lacked sufficient disclosure of an accompanying structure and are therefore unpatenable.

In dissent, Judge Newman argued (1) that the federal circuit improperly raised the issue of indefiniteness and (2) that the figure and accompanying text should be considered sufficient structural disclosure.

Genetics Institute v. Novartis Vaccines

By Jason Rantanen

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc. (Fed. Cir. 2011)
Panel: Lourie (author), Plager, Dyk (dissenting in part)

The Science: In the 1980's, scientists raced to develop a truncated version of Factor VIII, an essential blood-clotting protein.  Two companies, Genetics and Novartis, successfully developed and patented truncated versions of this 2,332 amino acid protein.  Genetics' patent, with a 1985 priority date, included claims directed at a version of the protein that removed between 581 and 949 amino acids in the region between amino acid 740 and 1690, while Novartis's patents, with a 1986 priority date, retained amino acids 1 to 740 and 1649 to 2332.  The retention of amino acids 1649 to 1689 later turned out to be significant because this range binds to von Willebrand factor ("vWF"), an association that is critical for the optimal regulation of the blood coagulation.

Procedural Background: In 2008, Genetics sued Novartis to determine priority of invention under 35 U.S.C. § 291.  Novartis argued that the district court lacked subject matter jurisdiction because the PTO's extension of the patent term from 2006 to 2010 under 35 U.S.C. § 156 applied to fewer than all of the patent claims, and that there was no interference-in-fact.  The district court rejected Novartis's jurisdictional challenge but agreed there was no interference.

Appellate jurisdiction: Seeking to terminate the appeal at the outset, Novartis contended that the CAFC itself lacked subject matter jurisdiction because the Genetics patent expired three days after the district court's entry of judgment.  None of the judges were persuaded.  Distinguishing an earlier case in which the court held that it lacked subject matter jurisdiction because of a claim disclaimer, the CAFC held that the expiration of Genetics' patent "following the district court's final decision does not strip our court of jurisdiction over the present appeal." 

Section 156 extension applies to the entire patent: The panel likewise affirmed the district court's finding of subject matter jurisdiction, rejecting Novartis's argument regarding the scope of the patent term extension.  Although Section 156(b) limits the effect of the extension, it does not limit the extension to specific claims.  "A patent as a whole is extended even though its effect may be limited to certain of its claims."  Slip Op. at 17 (emphasis added).

No prima facie case of obviousness: To determine whether an interference-in-fact exists, courts apply a two-way validity test, i.e.: whether the claims of one patent invalidate the claims of the other and vice-versa.  Both directions must be established.  In this case, the court focused on whether the claims of Genetics' patent rendered obvious the claims of Novartis's patents. 

Judge Lourie, joined by Judge Plager, concluded that they did not, as the lack of any reason to create a truncated protein that incorporated the 1649-1689 region supported the district court's finding of no prima facie case of obviousness.  Any motivation, they reasoned, would have been in the opposite direction – to create a shorter protein and eliminate more amino acids, not to create a longer protein.  Nor was the mere existence of a cleavage site (a natural point for cutting proteins) sufficient to provide the requisite reason to cut the protein at that point to make the claimed truncated protein.

Judge Dyk disagreed, pointing to cases holding that structural relationships may provide the requisite reason to modify compounds and can give rise to a case of prima facie obviousness.  "[T]he truncated Factor VIII proteins of the Novartis patents are not merely homologs, analogs, or isomers – they are all variants of the exact same protein, exhibiting the exact same procoagulant functions."  Dissent at 5 (emphasis in original). 

The use of post-invention "unexpected results": The majority further supported their conclusion by citing to the unexpected result of the 1649-1689 region binding to vWF.  The problem, however, lay in the lack of appreciation of this role until well after the priority date of Novartis's patents.  Undisuaded, the majority pressed on, holding that such evidence was nonetheless relevant to nonobviousness: "[E]very property of a claimed compound need not be fully recognized as of hte filing date of a patent application to be relevant to nonobviousness."  Slip Op. at 29.  In other words, "evidence of unexpected results may be used to rebut a case of prima facie obviousness even if that evidence was obtained after the patent's filing or issue date."  Id.

Again, Judge Dyk disagreed.  "The majority's finding of nonobviousness is based entirely on hindsight and happenstance, and not on what the inventors knew at the time the Novartis patents were filed.  See 35 U.S.C. § 103(a) (stating that an invention cannot be patented if 'the subject matter as a whole would have been obvious at the time the invention was made')."  Dissent at 10 (emphasis in quotation).  In Judge Dyk's view, the "unexpected properties must either be set forth in the specification or contemporaneously known to the inventors, rather than being discovered long after the fact."  Id. at 12.

Judge Dyk's citation of Section 103 notwithstanding, it seems reasonable to look to post-filing or issuance evidence with respect to at least some secondary indicia of nonobviousness.  Commercial success, for instance, would be difficult to establish if only pre-filing evidence were able to be considered.  But I think he's right on the question of unexpected results.  In my mind, a valid distinction can be drawn between discoveries of unexpected results – which really go to the fundamental question of obviousness – and commercial success, which must necessarily rely on the invention's post-filing success in the marketplace.

Practice note: Infringement defense attorneys writing discovery requests may want to take note of the majority's holding on unexpected results to press for either post-filing/issuance discovery on this point or a stipulation that such evidence will not be relied upon by the patent holder.

  

Patently-O Bits & Bytes by Lawrence Higgins

No Software Patent When it Merely Implement's Mental Steps

  • The Federal Circuit affirmed the District Court's grant of summary judgment of invalidity of software patent claims asserted in CyberSource v. Retail Decisions. In its Decision, the Federal Circuit explains that a method that can be performed purely mentally is unpatentable under 35 U.S.C. § 101, even if the claim is tied to computer hardware. [Link] This decision cited Bilski, stating that the "application of [only] human intelligence to the solution of practical problems is no more than a claim to a fundamental principle." [Decision]

Italy and Spain launches legal challenge against 25 EU member countries

  • Italy applied to the European Court of Justice (ECJ) asking it to rescind an EU decision taken in March that allowed the 25 countries to press ahead with proposals to create a single mechanism for gaining patent protection across Europe. Italy claims that the agreement is unlawful and will distort competition with the EU. [Link]

100 Best Legal Blogs

  • The ABA is working on their annual list of the 100 best legal blogs and they would like your advice on which blogs to include. If you would like to tell the ABA about your favorite blog or blogs they are accepting Friend-of-the-blawg briefs, which are due no later than 9/9/2011. [Link]

New Blog!

  • The "Bottom-Line Business Blog" deals with intellectual property business issues as they affect the intellectual property owner. The author of the "Bottom-Line Business Blog" is San Diego IP attorney Robert Cogan. [Link]

Patent Jobs:

  • The USPTO has openings for Administrative Patent Judges in several different specialties. [Link]
  • Sigma-Aldrich is seeking 2 patent attorneys, 1 with a background in material science/chemistry and the other with a background in molecular biology. [Link]
  • Squire, Sanders & Dempsey is seeking an experienced patent agent. [Link]
  • Proteostasis is searching for a patent attorney with 5+ years of experience and a chemical or biological background. [Link]
  • Pachira is looking for a principal technology advisor with at least 10 years of experience and an engineering background. [Link]
  • Edwards Angell Palmer & Dodge is seeking an IP associate with 3-4 years of experience and a mechanical engineering background. [Link]
  • Wenderoth, Lind & Ponack is searching for a patent attorney with at least 1 year of experience and a B.S. in chemistry. [Link]

Upcoming Events:

  • The D.C., Northern Virginia and Baltimore Sections of the Institute of Electrical and Electronics Engineers (IEEE) and National Small Business Association (NSBA) will be hosting the upcoming forum on "The Overhaul of U.S. Patent Law on August 29 in Washington D.C. The Forum will offer small-business owners, entrepreneurs, technical professionals and inventors the opportunity to hear from experienced entrepreneurs, investors and experts in the patent system including Paul Michel, Chief Judge (retired) of the U.S. Court of Appeals for the Federal Circuit, Dr. Pinchus Laufer from the U.S. Patent & Trademark Office and other high-level speakers. [Link]
  • Mizzou will be hosting its annual Missouri Technology Expo on September 8th. The event is held as a way of uniting innovators with those who can advance, develop and commercialize technologies. The guest speakers include, Christopher "Kit" Bond, Gregg Scheller, Suzanne Magee and many others. Several investment groups will be on hand, such as The Incubation Factory, DFJ Mercury, Allied Minds and many others. This will be a great event for patent attorneys and many others to network and build business relationships. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Riles, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

No Software Patent When it Merely Implement's Mental Steps

  • The Federal Circuit affirmed the District Court's grant of summary judgment of invalidity of software patent claims asserted in CyberSource v. Retail Decisions. In its Decision, the Federal Circuit explains that a method that can be performed purely mentally is unpatentable under 35 U.S.C. § 101, even if the claim is tied to computer hardware. [Link] This decision cited Bilski, stating that the "application of [only] human intelligence to the solution of practical problems is no more than a claim to a fundamental principle." [Decision]

Italy and Spain launches legal challenge against 25 EU member countries

  • Italy applied to the European Court of Justice (ECJ) asking it to rescind an EU decision taken in March that allowed the 25 countries to press ahead with proposals to create a single mechanism for gaining patent protection across Europe. Italy claims that the agreement is unlawful and will distort competition with the EU. [Link]

100 Best Legal Blogs

  • The ABA is working on their annual list of the 100 best legal blogs and they would like your advice on which blogs to include. If you would like to tell the ABA about your favorite blog or blogs they are accepting Friend-of-the-blawg briefs, which are due no later than 9/9/2011. [Link]

New Blog!

  • The "Bottom-Line Business Blog" deals with intellectual property business issues as they affect the intellectual property owner. The author of the "Bottom-Line Business Blog" is San Diego IP attorney Robert Cogan. [Link]

Patent Jobs:

  • The USPTO has openings for Administrative Patent Judges in several different specialties. [Link]
  • Sigma-Aldrich is seeking 2 patent attorneys, 1 with a background in material science/chemistry and the other with a background in molecular biology. [Link]
  • Squire, Sanders & Dempsey is seeking an experienced patent agent. [Link]
  • Proteostasis is searching for a patent attorney with 5+ years of experience and a chemical or biological background. [Link]
  • Pachira is looking for a principal technology advisor with at least 10 years of experience and an engineering background. [Link]
  • Edwards Angell Palmer & Dodge is seeking an IP associate with 3-4 years of experience and a mechanical engineering background. [Link]
  • Wenderoth, Lind & Ponack is searching for a patent attorney with at least 1 year of experience and a B.S. in chemistry. [Link]

Upcoming Events:

  • The D.C., Northern Virginia and Baltimore Sections of the Institute of Electrical and Electronics Engineers (IEEE) and National Small Business Association (NSBA) will be hosting the upcoming forum on "The Overhaul of U.S. Patent Law on August 29 in Washington D.C. The Forum will offer small-business owners, entrepreneurs, technical professionals and inventors the opportunity to hear from experienced entrepreneurs, investors and experts in the patent system including Paul Michel, Chief Judge (retired) of the U.S. Court of Appeals for the Federal Circuit, Dr. Pinchus Laufer from the U.S. Patent & Trademark Office and other high-level speakers. [Link]
  • Mizzou will be hosting its annual Missouri Technology Expo on September 8th. The event is held as a way of uniting innovators with those who can advance, develop and commercialize technologies. The guest speakers include, Christopher "Kit" Bond, Gregg Scheller, Suzanne Magee and many others. Several investment groups will be on hand, such as The Incubation Factory, DFJ Mercury, Allied Minds and many others. This will be a great event for patent attorneys and many others to network and build business relationships. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Riles, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

No Software Patent When it Merely Implement's Mental Steps

  • The Federal Circuit affirmed the District Court's grant of summary judgment of invalidity of software patent claims asserted in CyberSource v. Retail Decisions. In its Decision, the Federal Circuit explains that a method that can be performed purely mentally is unpatentable under 35 U.S.C. § 101, even if the claim is tied to computer hardware. [Link] This decision cited Bilski, stating that the "application of [only] human intelligence to the solution of practical problems is no more than a claim to a fundamental principle." [Decision]

Italy and Spain launches legal challenge against 25 EU member countries

  • Italy applied to the European Court of Justice (ECJ) asking it to rescind an EU decision taken in March that allowed the 25 countries to press ahead with proposals to create a single mechanism for gaining patent protection across Europe. Italy claims that the agreement is unlawful and will distort competition with the EU. [Link]

100 Best Legal Blogs

  • The ABA is working on their annual list of the 100 best legal blogs and they would like your advice on which blogs to include. If you would like to tell the ABA about your favorite blog or blogs they are accepting Friend-of-the-blawg briefs, which are due no later than 9/9/2011. [Link]

New Blog!

  • The "Bottom-Line Business Blog" deals with intellectual property business issues as they affect the intellectual property owner. The author of the "Bottom-Line Business Blog" is San Diego IP attorney Robert Cogan. [Link]

Patent Jobs:

  • The USPTO has openings for Administrative Patent Judges in several different specialties. [Link]
  • Sigma-Aldrich is seeking 2 patent attorneys, 1 with a background in material science/chemistry and the other with a background in molecular biology. [Link]
  • Squire, Sanders & Dempsey is seeking an experienced patent agent. [Link]
  • Proteostasis is searching for a patent attorney with 5+ years of experience and a chemical or biological background. [Link]
  • Pachira is looking for a principal technology advisor with at least 10 years of experience and an engineering background. [Link]
  • Edwards Angell Palmer & Dodge is seeking an IP associate with 3-4 years of experience and a mechanical engineering background. [Link]
  • Wenderoth, Lind & Ponack is searching for a patent attorney with at least 1 year of experience and a B.S. in chemistry. [Link]

Upcoming Events:

  • The D.C., Northern Virginia and Baltimore Sections of the Institute of Electrical and Electronics Engineers (IEEE) and National Small Business Association (NSBA) will be hosting the upcoming forum on "The Overhaul of U.S. Patent Law on August 29 in Washington D.C. The Forum will offer small-business owners, entrepreneurs, technical professionals and inventors the opportunity to hear from experienced entrepreneurs, investors and experts in the patent system including Paul Michel, Chief Judge (retired) of the U.S. Court of Appeals for the Federal Circuit, Dr. Pinchus Laufer from the U.S. Patent & Trademark Office and other high-level speakers. [Link]
  • Mizzou will be hosting its annual Missouri Technology Expo on September 8th. The event is held as a way of uniting innovators with those who can advance, develop and commercialize technologies. The guest speakers include, Christopher "Kit" Bond, Gregg Scheller, Suzanne Magee and many others. Several investment groups will be on hand, such as The Incubation Factory, DFJ Mercury, Allied Minds and many others. This will be a great event for patent attorneys and many others to network and build business relationships. [Link]
  • The 2nd European Pharmaceutical Regulatory Law Forum will be held in Brussels, Belgium September 21-22nd. The forum will focus on recent developments affecting the pharma industry in Europe and will discuss the impact of US developments on European companies. (Patently-O readers can register with code PO 10 for a 10% discount) [Link]
  • American Conference Institute's Life Sciences Business Development & Acquisitions in Emerging Markets conference is scheduled for September 26-27 in New York, NY. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Boston University School of Law and the Kauffman Foundation will be holding a Workshop on Innovation and Patent Harmonization at Boston University School of Management on September 30-October 1. The workshop will cover the effect of harmonization in both advanced countries, such as the US, and in developing nations, with a particular focus on China. Anyone interested in attending, please RSVP to Elizabeth Aggot at eaa@bu.edu. [Link]
  • American Conference Institute's 12th Annual Maximizing Pharmaceutical Patent Life Cycles will take place in New York on October 4th-5th. The conference is one of the leading sources of information and analysis on the patent life cycle management. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • C5 will be holding the 21st annual Forum on Biotech Patenting in London on October 5th-6th. The 2011 London Biotech Patenting Forum will focus on the latest legal developments affecting biotech companies and how to implement successful methods and strategies for drafting and filing patent applications in multiple jurisdictions. (Patently-O readers can save 100 pounds by using discount code PO 100) [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Riles, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. (Register by 8/31 to receive a $100 discount) [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

The APA Waives Federal Sovereign Immunity to Declaratory Judgment Challenges against Federally Owned Patents

CalGrapesDelano v. California Table Grape Commission and US Dep't of Agriculture (USDA) (Fed. Cir. 2011)

[This summary has been temporally edited while I think about this decision a bit more - DC]

The USDA is title holder of the three patents being litigated here.  Each patent relates to a separate variety of grape: Sweet Scarlet (U.S. Patent No. PP15,891), Scarlet Royal (U.S. Patent No. PP16,229), and Autumn King (U.S. Patent No. PP16,284).  The California Table Grape Commission is a branch of the California state government that operates with the mission of promoting the California table grape industry and is funded by a tax on grape production.  The USDA granted the Grape Commission an exclusive license to practice and sublicense the varieties. The Grape Commission then began selling plants, but only to nurseries that contractually agreed to (1) pay ongoing royalties and (2) not propagate the plants.

In 2007, a collection of nursery-licensees filed a declaratory judgment lawsuit challenging the validity of the patents and arguing that the Grape Commission's licensing activities were illegal under antitrust law.

The DJ plaintiffs quickly ran into trouble based on federal sovereign immunity claims: The USDA claimed sovereign immunity from suit in the district court.  The district court dismissed the lawsuit after concluded that the USDA was immune and (as patent holder) was also an indispensable party.

On appeal, the Federal Circuit agreed that the USDA was an indispensable party but held that the agency's sovereign immunity to a DJ invalidity and unenforceability action was waived by the Administrative Procedures Act.

Patent-Holder as Necessary Party: Normally, a patent holder is a necessary and indispensable party to a declaratory judgment lawsuit arguing that patents are invalid or unenforceable.  There is, however, a narrow exception that occurs when the patent holder has transferred “all substantial rights” to an exclusive licensee.  Here, the appellate court found that the USDA retained substantial rights because the exclusive license did not give the Grape Commission unilateral rights to enforce the patents and the USDA retained a right to practice the invention.

US Government is Not Immune from a Declaratory Judgment Patent Invalidity Lawsuit in Federal Court: As a general background rule, US government agencies are immune from suit unless that immunity has been waived. Here, the plaintiffs found such a waiver in Section 10(a) of the Administrative Procedures Act as codified in 5 U.S.C. § 702 (“Right of Review”).  That section indicates that “a person suffering legal wrong because of agency action … is entitled to judicial review thereof.”  The statute particularly authorizes a lawsuit to remedy the wrong in Federal Courts — so long as the remedy being sought is something “other than money damages.”  As interpreted by the Federal Circuit, this provision (as amended in 1976) “consists of a broad waiver of sovereign immunity for actions seeking relief other than money damages against federal agencies, officers, or employees.” 

Here, because the DJ plaintiffs are only seeking non-monetary equitable relief — a holding that the PVPA patents are invalid and unenforceable – their claim is wholly within the APA Section 10(a) waiver and wholly outside the jurisdiction of the Court of Federal Claims.

On remand, the government will now be forced to defend the validity of its patent.

Note –  Based upon assignment records, a US Government entity holds title to about 0.4% of patents issued 2005–2011.

Wonky Claim Construction; Wonky On-Sale Bar

August Technology Corp. v. CamTek Ltd. (Fed. Cir. 2011)

A Minnesota jury awarded $6.8 million in lost profit damages to August Tech – holding that the defendant CamTek’s “Falcon” silicon wafer inspection device infringes claims 1 and 3 of the asserted patent and that those claims are not invalid. (See U.S. Patent No. 6,826,298).

Six Year Background: The infringement litigation was originally filed in July of 2005, a Markman hearing was held in September 2007, and a claim construction order issued in 2008. The trial concluded in 2009 and a final judgment issued in 2010. The appeal was then timely filed resulting in this 2011 opinion. On appeal, the Federal Circuit have pushed “rewind” – ordering the District Court to reverse its claim construction decision and vacating all of the subsequent decisions on infringement, validity, damages, and injunctive relief.

Can a “plurality of wafers” all come from the same wafer?: In semiconductor chip manufacturing, individual chips (AKA dies) are usually manufactured as part of a large silicon wafers that is then divided into a number of identical dies. The patent specification in this case continually refers to operation on wafers “in whole or in part.” And, in construing the claim term “wafer” the district court concluded that a wafer might be only a portion of the large round so long as it contains multiple dies. The claims also include a step that involves inputting a “plurality of wafers” into the inspection device in order to train the device. Apparently the accused device is usually trained with multiple sections of a single large wafer. And therefore, the contested claim construction issue was whether the “plurality of wafers” limited could be construed to include a plurality of sections of a single wafer.

Avoiding Superfluous Terms: On appeal, the Federal Circuit (Moore, J) concluded that “most logical reading of these claim limitations” is that the claimed “wafer” is a single object and that a “plurality of wafers” must be more than one of those objects. Otherwise, the word “plurality” is “superfluous.” On remand, the district court must consider whether the accused device infringes the more narrowly construed claims.

On-Sale Bar and Obviousness: Prior to the conception of its patented invention (and more than one year before its application filing date), August Tech had sold a different machine (the customized NSX-80). Apparently CamTek did not have sufficient published material regarding the prior machine, and instead argued that the on-sale bar of 102(b) treats the NSX-80 as prior art. Although not identical to the invention, CamTek posited that the patent was obvious in the face of the NSX-80 combined with other prior art available at the time of the invention. The district court rejected this argument – holding that, under Pfaff, the on-sale bar does not apply because the claimed invention was not “ready for patenting” at the point of the prior offers for sale.

In six pages of dicta, the Federal Circuit rejected a narrow view of 102(b)/103(a) prior art – writing instead that the “ready for patenting” prong of Pfaff is triggered if the invention is conceived of at least by the 102(b) critical date of one-year prior to the application filing date. For the on-sale bar to be triggered, the “offer for sale” needs to still “remain open” at the time of the conception.

While the invention need not be ready for patenting at the time of the offer, consistent with our cases, we hold that there is no offer for sale until such time as the invention is conceived. Pfaff states that the “word ‘invention’ in the Patent Act unquestionably refers to the inventor’s conception.” Therefore, we conclude that an invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.

The ruling is clearly dicta because the court held that the addition of the machine to the prior would not, as a matter of law, render the claimed invention obvious.

Finally, the court noted an additional quirk of the lower court’s injunction where it enjoined the adjudged infringer “from communicating with third parties in the United States for the purpose of offering to sell accused devices for use outside the United States.” That ruling may be implicated by Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1309 (Fed. Cir. 2010).

Predicting Patent Litigation

Patent litigation is expensive.  As a result, many firms often engage in broad, costly searches in order to avoid suit.  Other firms apply the opposite strategy, ignoring patents entirely. 

In her new paper entitled Predicting Patent Litigation, Professor Colleen Chien addresses this systematic problem by examining the factors that lead patents to be litigated.  Professor Chien focuses not on patents' intrinsic characteristics, which have been previously studied, but rather on characteristics acquired after the patent is born, such as changes of ownership, continued investment in the patent, and citations to the patent. 

The results of her empirical assessment are striking: patents that end up in litigation possess markedly different acquired characteristics from patents that remain unlitigated.  Professor Chien uses these differences to offer a model for assessing which patents are more likely to end up in litigation based on the use of both intrinsic and acquired characteristics.

The complete paper is available here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1911579

Recent Scholarship: Do Patents Disclose Useful Information?

By Jason Rantanen

There is a significant body of recent scholarly literature questioning whether patents are effective at disclosing technological information about new inventions.  This debate is important because one of the principal justifications for the patent system – especially as viewed by the courts – is that it encourages inventors to disclose the technological underpinnings of their inventions through the incentive of a patent.  Criticisms of the disclosure function of patents generally fall into two categories: arguments that patents are not effective mechanisms for conveying technical information and arguments that follow-on inventors do not read patents for their technical content.

In her recent article Do Patents Disclose Useful Information?, Lisa Larrimore Ouellette tackles this issue head-on, offering empirical support for the position that patents do convey useful information.  Ouellette, herself a former nanotech scientist, provides the results of a survey conducted of nanotechnology researchers that suggests that, at least in that industry, researchers look to patents for their technical teachings, and that they believe that patents provide useful information that is not available elsewhere – with one notable exception, the problem of reproducibility.  Based on these findings, Ouellete argues that we do not grant patents because of disclosure; rather, we require disclosure because we grant patents.

The complete paper is available on ssrn: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1762793.   

GametimeIP by Patrick Anderson

I just started (again) to read Patrick Anderson’s great blog – GametimeIP. Anderson is president of PatentCalls, and his blog focuses on the business of patents and intellectual property management issues. Recent posts include a comparison of RPX versus ICAP’s Covenant-Not-to-Sue Auction; a rip on a “patently clueless law firm“; a discussion of the most recent patent lawsuits stemming from Intellectual Ventures; and the post “Did A Banking Lobbyist Just Admit To Buying Its Own Section Of Patent Reform?

Guest Post: Google is Packing Heat (With Sights on Apple)

By Allen Wan. Mr. Wan is a 3L at Northwestern University School of Law. Prior to law school, Wan was a patent litigation analyst at Weil, Gotshal & Manges and Fish & Richardson. I asked Wan to provide some insight on the set of 1000+ patents that Google recently purchased from IBM. He wrote this piece just as news broke regarding Google’s acquisition of Motorola Mobility – DC

* * *

A wise man once said, “Don’t bring a knife to a gunfight.” Well, it looks like Google has been doing some shopping at the armory and it’s ready to make some apple sauce at the local range.

The recently recorded assignment of 1029 patents from IBM to Google – which more than doubles the number of U.S. patents assigned to Google – has been widely viewed as an attempt by Google to bolster its patent portfolio for a potential patent war among the technology giants. A closer examination of the patents confirms this view.

A review of the patents suggests that they were carefully chosen from among IBM’s tens of thousands of patents in order to be most effective in a patent fight against the other technology giants. The broad topic coverage of the patents substantially enhances Google’s position against all of its potential foes. Nonetheless, the patents appear to have been chosen for one adversary in particular – Apple.

There are several characteristics of these patents that each suggest a defensive intent by Google, and together as a whole, they paint a very clear picture of what Google is trying to do. The one that stands out initially is the unusually broad topics that are covered. A quick look through the patents shows that there is no one area of focus. These patents were not merely all of the IBM patents pertaining to a particular subject matter, but instead cover huge swaths of modern technology. Additionally, this breadth is not random. The topics covered are not indicative of a random subset of IBM patents. There appears to be a tilt towards consumer and network applications and an absence of patents pertaining to the record breaking supercomputers that IBM is known for. (e.g. Watson)

The remaining terms of the patents are also indicative of a careful selection process. There appears to have been a concerted effort to choose patents with substantial life remaining in order to provide long term protection. The earliest expiration date is in late 2012 (U.S. Pat. 5,751,286) and the average patent term ends in July of 2022. The patent term distribution is actually skewed towards the longer terms with a quarter of the set expiring in 2025.

The preference for long term patents does not appear to have come at the expense of quality. Generally, the patents appear to be strong, covering topics that would be difficult to work around, and having priority dates that are at least sufficiently early so as not to be obviously invalid.

These generalized characteristics can suggest an intent on the part of Google, but the most telling aspect is the patents themselves. I estimate that three quarters could be asserted against an Apple product. All major Apple products are targeted. Moreover, the potential accused aspects are sufficiently innate to the various products that it would be challenging to design around the patents.

These patents also provide effective protection against the other technology giants. Around a quarter could be asserted against any one of the other large technology companies – offering 250+ relevant patents that available for counterclaims and countersuits. These patents provide much better protection than the existing 700 native patents that Google has, which are mostly focused on Google’s search business and largely inapplicable against anyone other than Yahoo and Bing.

A significant minority of the patents pertain to IC design, structure and manufacturing. It is unsurprising that IBM would have many of these available, and the ones dealing with IC design and structure could potentially be used against any IC manufactured with a modern IC manufacturing process or containing modern design elements. The IC manufacturing patents, in contrast, seem like they would have to be asserted against an actual IC manufacturer such as Intel or Samsung. These are notable only because it suggests that some patents were chosen to specifically target companies other than Apple. In contrast, the coverage against companies like Microsoft appears to be more a result of the sheer breadth of what is covered while the coverage against Intel appears to have been a directed effort.

What is clear through this acquisition is that Google has ended its previous unilateral patent disarmament policy. Although, Google had previously shied away from building a patent arsenal, receiving orders of magnitude fewer patents than other large technology companies, it has apparently decided to abandon this policy and build a patent portfolio of its own. The number of new patents that Google is receiving each year is increasing at an exponential rate. This rapidly increasing number of native Google patents, combined with the large number of relevant technology patents that Google is acquiring from other companies, together provide a formidable arsenal for Google in this modern era of litigiousness among the technology giants. With Google’s recently announced acquisition of Motorola Mobility, the potential patent duel with Apple has now inched closer. Motorola is actively engaged in several patent suits with Apple.

N.B.: Just because a patent can be asserted against a company or product does not imply that the patent is infringed by the company. Determining infringement is a complicated legal process which depends on a myriad of facts that can only be uncovered during discovery, is subject to the vagaries of claim construction, and is a question of fact ultimately answered by the jury. My use of the language that a patent could be asserted against a product should not be taken to mean anything more than it is my opinion that a suit alleging infringement of the patent against the product would likely survive a Rule 11 challenge for being frivolous.

Two-Minute Survey: The Impact of Patent Reform

Please take a couple of minutes to complete this survey on the impact of the proposed patent reform measures:

Background: Patent reform measures have been passed in both the House and Senate that would, inter alia:

  • eliminate a patent applicant’s ability to swear-behind prior art based upon prior invention;
  • grant rights to the first-inventor-to-file a patent application;
  • create an additional post-grant opposition program;
  • eliminate the one-year grace period for third-party disclosures;
  • provide the PTO with some additional ability to set its own fees and to spend the fees collected;
  • make it easier for corporate patent owners to file applications associated with non-cooperative inventors;
  • eliminate best mode failure as a litigation defense; and
  • eliminate the incentive to sue for false patent marking.

Supporters of the reforms have made various announcements regarding the impact of the patent reform measure as proposed. These statements include: “Through patent reform, we can cut the red tape that stops too many inventors and entrepreneurs from quickly turning new ideas into thriving businesses.” And that the reforms “are expected to create 200,000 new jobs;” “will simplify patent law;” “will streamline the patent system;” and “represent the first major overhaul of the U.S. patent system in 60 years.”

Link to the Survey: http://www.surveymonkey.com/s/YGP3JR9

If the software method is not patentable, then neither is the “computer readable medium”

CyberSource Corp. v. Retail Decisions, Inc. — F.3d — (Fed. Cir. 2011)

In an important decision, the Court of Appeals for the Federal Circuit has rendered many broadly written software patents invalid under 35 U.S.C. § 101 as interpreted by Bilski v. Kappos, 130 S. Ct. 3218 (2010). Most patent decisions involve questions of whether an invention is obvious under 35 U.S.C. § 103(a) or sufficiently described under 35 U.S.C. § 112. Section 101 asks a slightly different question – whether the patented invention is the type of innovation that properly fits within our patent system. In language virtually unchanged for over 200 years, Section 101 indicates that a patent should be awarded to the inventor of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Over the years, courts have repeatedly held that Section 101 bars the patenting of ‘laws of nature, physical phenomena, and abstract ideas.’

CyberSource’s patented invention is simple: when validating online credit card purchases, use IP address information (such as IP addresses) as a check against fraud. Thus, the patented method might raise a red flag if someone attempts to make a large internet purchase through an IP address that had previously been used for a fraudulent transaction.

In the lawsuit, CyberSource only asserted two claims: Claim 3 is the method of fraud detection roughly described above and Claim 2 is directed to a “computer readable medium containing program instructions” for causing a computer to perform the method. Claim 2 is written in “Beauregard” form. See In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

The claimed method is written as follows:

3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:

a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

b) constructing a map of credit card numbers based upon the other transactions and;

c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Machine-or-Transformation: As written, the claim does not require the use of any machine and it does not require the transformation of any article into a different state or thing. Here, the court repeated its stance that mere data gathering steps such as “obtaining information” cannot be sufficient to “make an otherwise nonstatutory claim statutory.” And, although the patent is designed to facilitate transactions over the internet, nothing in the claim actually requires that the internet be used. Finally, data structures such as the claimed “information” and “map of credit card numbers” will not be considered technical because they could be simply written down using pencil and paper. Thus, at the outset the claim fails the Machine-or-Transformation test that the Supreme Court identified as an important clue of patentability under 35 U.S.C. § 101.

Because the machine-or-transformation test offers only a legal clue to patentability, the court went on to consider additional indicia that led to the conclusion that the claim does not qualify for patenting under Section 101. In particular, the court focused on prior case law holding that mental processes standing alone are not patentable. CyberSource’s claimed method is such a mental process because it can be “performed … by a human using a pen and paper.” Thus, the claim is invalid.

Beauregard Claims: CyberSource’s claim 2 comes in a different form. However, the court interpreted it as “nothing more than a computer readable medium containing program instructions for executing the method of claim 3.” The most natural implementation of the invention is using software and the claimed “computer readable medium” is the storage device that holds the software.

The claim:

2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:

a) obtaining credit card information relating to the transactions from the consumer; and

b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,

wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;

[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

[b] constructing a map of credit card numbers based upon the other transactions; and

[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Claim Form Versus the Underlying Invention: CyberSource argued that the claim is patent eligible per se because it is directed to a man-made article of manufacture – “a computer readable medium.” The court rejected that technical distinction. Instead, for patent eligibility purposes, the court directed focus away from the claim’s literal statutory category and instead focus on the “underlying invention.”

Regardless of what statutory category (“process, ma-chine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes. Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information. This case is thus similar to In re Abele, 684 F.2d 902 (CCPA 1982). In Abele, claim 5 of the patent at issue recited “[a] method of displaying data” comprising the steps of “calculating the difference” between two numbers and “displaying the value.” Id. at 908. The court concluded that claim 5 was not directed to patent-eligible subject matter because it claimed an abstract idea. Id. However, claim 7 was argued to be different because it recited an “[a]pparatus for displaying data” comprising “means for calculating the differences” between two numbers and “means for displaying the value.” Id. at 909 (emphases added). Though claim 7 literally invoked an “[a]pparatus,” the court treated it as a method claim for the purpose of its § 101 analysis. Due to its “broad” and “functionally-defined” nature, the court found that treating claim 7 as an apparatus claim would “exalt form over substance since the claim is really to the method or series of functions itself.” Id. (citation omitted). Accordingly, the court placed “the burden . . . on the applicant to demonstrate that the claims [were] truly drawn to [a] specific apparatus distinct from other apparatus[es] capable of performing the identical functions.” Id. (citation omitted).

Here, the patentee was unable to provide suitable reasoning why the computer readable medium invention was fundamentally different from the method claim.

Pen, Paper, Computer: Following precedent set by Benson and Abele, the court here held that an unpatentable mental process remains unpatentable even when restricted to use on a computer.

Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium. Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.

That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.

Holding: Invalidity affirmed. Neither the method nor the computer readable medium qualify as patentable subject matter.

Can You Believe: U.S. Patent No. 8,000,000

Second Sight Medical Products is receiving some publicity for being awarded U.S. Patent No. 8,000,000. The patent claims a “visual prosthesis” that uses a camera that then sends a stimulating impulse to neural tissue in a subject’s eye.  Although Second Sight gets the patent, the research was at least partially paid by the U.S. Government. 

Patent2011001

Patent No. 7,000,000 issued in 2006; 6,000,000 in 1999; 5,000,000 in 1991; 4,000,000 in 1976; 3,000,000 in 1961; 2,000,000 in 1935; and 1,000,000 in 1911.

 

Recent Scholarship: Did Phillips Change Anything?

By Jason Rantanen

In a recent post discussing Retractable Technologies v. Becton, Dickinson and Company, Dennis commented that the court continues to struggle with claim construction – a seemingly surprising observation given that the Federal Circuit "clarified" its claim construction jurisprudence just over six years ago in Phillips v. AWH Corp

A new study by R. Polk Wagner and Lee Petherbridge confirms what many suspected: that Phillips did not lead to a new world of simple, straightforward, and predictable claim construction.  In Did Phillips Change Anything?: Empirical Analysis of the Federal Circuit’s Claim Construction Jurisprudence, Wagner and Petherbridge report the results of an empirical study that indicates that the court has made little jurisprudential progress since Phillips.  More importantly, they suggest, the same split in judicial methodological approach to claim construction that forced the Phillips opinion survived the court’s decision and likely still persists.  These findings and others lead them to their normative conclusion: that "Phillips stands forth as an unfortunate example of poor decision-making by the court, and one that negatively impacts its overall role in the patent system." Wagner and Petherbridge, abstract.

The paper is forthcoming in Intellectual Property and the Common Law (Cambridge U. Press, 2012, S. Balganesh, ed.), and a copy of the draft is available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1909028.

Google’s Purchase of Motorola Mobility

Although much more than just a patent deal, Google’s purchase of Motorola Mobility is also clearly driven by Google’s perceived need to establish a strong portfolio of patent rights in an attempt to ward-off patent attacks by competitors in the fiercely competitive and growing smart-phone market.

Motorola Mobility was formerly the famous Mobile Devices division of Motorola, Inc. In January 2011, the company was spun-off from its parent. The company’s devices have been lagging in the market, but its patent rights have always been strong and plentiful. Recently, Motorola Mobility has become deeply involved in patent infringement litigation with suits pending versus competitors such as Microsoft, Apple, and TiVo in addition to more than two-dozen pending suits as defendants against non-practising patent holders.

Motorola Mobility holds over 24,000 patents and pending patent applications worldwide. In the US market alone, the company holds around 5,000 patents and 1,500 pending patent applications. The bulk of these patents were assigned to Mobility during the split from Motorola. However, the unit has continued to apply-for and obtain patents since the split. Motorola Mobility also owns a number of subsidiary companies that also hold their own patents, such as General Instrument, Inc.

Some pending US litigation:

  • Motorola Mobility v. TiVo (E.D. Tex.): Mobility asserts that TiVo is infringing a number of “fundamental” DVR patents that General Instrument obtained when it purchased Imedia. These include U.S. Patent Nos. 5,949,948, 6,304,714, and 6,356,708.
  • Motorola Mobility v. Microsoft (W.D. Wisc. and ITC): In three separate lawsuits, Mobility asserts that Microsoft’s XBox infringes a number of its patents, including U.S. Patents Nos. 6,980,596; 7,162,094; 5,319,712; 5,357,571; 6,686,931; 5,311,516; 6,069,896; 6,992,580; 7,106,358; 6,686,931; 7,088,220; and 5,738,583.
  • Motorola Mobility v. Apple (S.D. Florida): Mobility asserts that Apple’s iPhone 4 infringes a number of its wireless device and software patents, including U.S. Patents Nos. 5,710,987; 5,754,119; 5,958,006; 6,008,737; 6,101,531; 6,377,161; and 5,455,599. In a separate lawsuit, Apple accuses Mobility of infringing its patent Nos. 5,481,721; 5,566,337; 5,915,131; 5,929,852; 5,946,647; 5,969,705; 6,275,983; 6,343,263; and 6,424,354.

Interpreting the Scope of Patent Assignments Beyond Family Members

MHL TEK v. Nissan, Hyundai, KIA, Porsche, Subaru, Audi, Volkswagen and BMW (Fed. Cir. 2011)

MHL purported to obtain its patents from Animatronics and the inventors who themselves own MHL.  However, Animatronics had already assigned a number of patent rights to a third-party, McLaughlin Electronics. The basic standing question for the case is whether the McLaughlin assignment encompassed the patents-in-suit.  If so, then the later assignment to MHL was ineffective and the plaintiff had no standing to sue.

The McLaughlin assignment purported to assign “the inventions and discoveries set forth in [a different patent] application.”  The parties all admitted that the assignment language was broad enough to encompass more than just the single application listed in the assignment.  In considering the language of the assignment, the appellate court broadly held that the assignment was also not limited to “family member” applications linked by a priority claim.  Rather, the test given by the assignment is simply whether the patent “claims inventions and discoveries set forth in the [original] application.”  Here, the court focused on the claims of the patent-in-suit (the ’516 patent) because “the claims of the patent define the invention” and basically conducted a written-description analysis to determine whether at least one of those claims were described in the specification of the original application.  The court considered claim 1 of the ’516 patent and found that its subject matter was fully disclosed by the originally assigned patent.  Without explanation, the court then held that this single claim relationship was sufficient to render the entire patent within the assignment agreement. Thus, the functional interpretation of the assignment language was that the assignment encompassed any patent that included at least one claim that was reasonably described by the original specification.

The court also held that two continuations of the originally assigned application had also been transferred to McLaughlin through the assignment.

Finally, the court walked through a “carve-out” in the assignment that retained ownership for Animatronics for patents that “concern” certain identified “proprietary inventions.”  Taking a technical view of the carve-out provision, the Federal Circuit looked at each patent claim of the asserted patents to determine whether any patent claims covered a proprietary invention as defined in the assignment. Although the court identified some similarity, the court could not find any claims whose scope could be said to cover one of the defined proprietary inventions.  And therefore, the appellate panel affirmed that rights to those patents had been previously assigned by Animatronics and that MHL had no standing to sue on those patents.