The security code on your credit card seems pretty weak. Basically, it is a 3-4 digit number on opposite side of the card. Mr. Sarada Mohapatra’s innovation was to create a more dynamic security code using an internet-based account management approach.
The Examiner rejected the claims as obvious, indefinite, and failing to claim patent eligible subject matter. On appeal, the PTAB reversed the obviousness conclusions, but maintained the rejection on the other grounds. When Mohapatra raised the case to the Federal Circuit, the Solicitor’s office also dropped the indefiniteness challenge — leaving only the eligibility issue.
Mohapatra began his argument with a tradition-and-justice issue. He pointed to many patents issued over the past 20 years relating to the same subject matter. (note, Mohapatra represented himself pro se). The appellate court rejected this argument out-of-hand, concluding that “issuance of other patents in the same field of technology is not a ground for challenging the rejection of a subsequent application.” See In re Wertheim, 541 F.2d 257 (CCPA 1976) (“[I]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others.”).
On the merits of Section 101, the court found that the claims are directed to the abstract idea of facilitating “an individual to alter the identification code associated with a financial instrument, such as a credit card, to protect against fraud.” Mohapatra’s invention is limited in a number of ways and does not preempt all uses of this idea, but the court explained:
The fact that the claims are directed to a specific subset of that abstract idea—in this case, enabling a credit card user to change the security code on the card by using a web application—does not render the idea any less abstract.
Further, abstract-idea innovations may provide societal or personal benefits, but remain unpatentable: “The idea of changeable personal-identification numbers may be beneficial. But it is also abstract and therefore not patentable without more.”
At Alice Step 2, the court found no additional inventive concept beyond standard additions such as doing-it-on-the-web and storing the information on a computer.
[These functions] amount to no more than the implementation of an abstract idea on a computer operating in a conventional manner. That is not enough to convert an abstract idea into patent-eligible subject matter.
Rejection Affirmed.
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The following claim 18 was seen as representative for the appeal:
18. A method for countering credit card fraud arising from compromised credit card information by utilizing cardholder changeable card security code (CSC; also known as card verification value CVV2 or card verification data CVD or card identification code CID or card verification code CVC2) comprising:
a) A card issuer enabling change of card security code printed on the card, by
allowing cardholder to choose a new security code value as often as cardholder wishes,
facilitating recordation of chosen card security code by the cardholder by providing an internet connected card account management facility,
using most recently recorded card security code to verify subsequent transaction authorization requests without requiring any change in existing credit cards, terminals, equipment, computer software and communication protocols used in transaction authorization, and
denying transactions when card security code provided during authorization does not match card security code on record;
b) Cardholder changing card security code any time s/he deems it necessary to mitigate risk from possible card security code compromise, by
selecting a new security code value to be used as personal secret separate from the card without requiring assistance from any software program running on any device,
ensuring that selected new security code value is different from the printed code on first change and is different from last recorded code on subsequent changes,
recording the new card security code value using issuer provided internet connected card account management facility, and
remembering and providing the new card security code when prompted during subsequent credit card authorizations.
In 1966, the US Supreme Court decided Graham v. John Deere, and established the framework for adjudging obviousness under the 1952 Patent Act. In the processes Graham’s plow patent was deemed obvious. In this new case, Deere is looking to invalidate Richard Gramm’s patent. This time though the patentee prevails.
Gramm’s US Patent No. 6,202,395 covers a sensor and controller for the head-height of a combine harvester. The case is interesting because of its similarity to the spring-loaded shear in the 1966 case. Here, “a flexible sensor arm that engages the soil and is
dragged across the ground” as the giant tractor rolls along.
The particular novel aspects of the invention here appear to be related to what happens when the Combine is placed in reverse — we don’t want to bob to snap off. The solution is a spring (“biasing means”) for keeping the arm at an incline but allows for displacement when you reverse. The spring then uses Hooke’s Law to encourage the sensor arm to return to its original position.
Deere petitioned the USPTO for inter partes review (IPR). Although the Board granted the petition, it eventually sided with the patentee and found that none of the challenged claims had been proven obvious. The case has included some partial institution mix-up following SAS, and the CAFC has previously affirmed the holding with regard to some of the claims, this appeal is related to claims 12-26.
Claimed Biasing Means: That spring discussed above – the claims require a “biasing means for urging said arm to a selected inclined orientation relative to vertical …” The parties agree that the claim term is properly interpreted as means-plus-function because “biasing” is a functional limitation rather than structural. Further, the patent document discloses a “coiled spring” that performs the claimed function. Thus – as required by the text of 112p6, the claim limitation is interpreted as requiring a coiled spring “and equivalents thereof” that performs the same function.
In the IPR, this limited view of “biasing means” was helpful to the patentee because it narrowed the scope of prior art that read upon the invention. On appeal, the Federal Circuit confirmed that the prior art reference (US3611286) did not disclose the biasing means. An image from the prior-art patent is below. To be clear, the reference does disclose a coiled spring, but it did not operate in the same way — to urge the arm to move toward an “inclined orientation.”
The true key controversy of the appeal was really about whether this issue should be reviewed de novo as a claim construction dispute or instead with substantial deference as a factual finding regarding the scope of the prior art. As usual, the appellant wanted de novo review, but the Federal Circuit refused:
First and foremost, we reject Deere’s attempt to obtain de novo review of a factual finding by reframing it as though it presents a claim construction issue. . . . .
Here, after construing the biasing means limitation, the Board determined that [the prior art] did not teach the first function of the biasing means. That is a factual finding subject to appellate review for substantial evidence. . . . Deere attempts to contort the Board’s opinion by suggesting that the Board actually misconstrued the claim in such a way so as to not read on the teachings of Cleveland. We are not persuaded by that argument, which seeks to blur the clear delineation in the law between the two steps of the invalidity analysis.
Slip Op. Notably, the court does not actually do a very good job of explaining why this particular dispute is not a claim construction dispute except that the PTAB did not see it as claim construction either.
An expansive notion of “property” also allows for expansive criminal prosecution. As an example, the Federal Wire Fraud statute makes it a crime to use the “wires” to move forward with “any scheme or artifice to defraud, or for obtaining money or property by means of false or fraudulent pretenses, representations, or promises.” 18 U.S.C. § 1343.
Case-in-point is Kelly v. U.S., 140 S. Ct. 1565 (2020). Kelly case involves George Washington Bridge lane closing scandal known lovingly as “Bridgegate.” In 2013, Chris Christie was Governor of New Jersey seeking reelection (he won). His deputy Chief of Staff Bridget Kelly (and others) had caused the bridge lanes to be closed (via text messages) “for a political reason—to punish the mayor of Fort Lee for refusing to support [Christie’s] reelection bid.” Kelly was prosecuted and criminally convicted for property fraud — both wire fraud as well as fraud on a federally funded program. The Second Circuit affirmed.
These statutes require the use of fraud for the purpose of obtaining “property.” The Supreme Court took up the case and reversed the convictions — holding that Kelly’s actions were not designed to obtain money or property and thus do not violate the statutes. The court recognized the abuse-of-power: “Butnot every corrupt act by state or local officials is a federal crime.” (Unanimous opinion authored by Justice Kagan).
The evidence the jury heard no doubt shows wrongdoing—deception, corruption, abuse of power. But the federal fraud statutes at issue do not criminalize all such conduct. Under settled precedent, the officials could violate those laws only if an object of their dishonesty was to obtain the Port Authority’s money or property.
The Government pointed to the following property frauds: commandeering of bridge lane access; diverting the “wage labor” of federal employees. While the bridge itself can be considered Property, the actions here, according to the court, were a “quintessential exercise of regulatory power” rather than a scheme to “appropriate the government’s property. The court noted that a “public employee’s paid time” is also the property of the government. According to the court, the use of employee time was “incidental to” the lane-closure purpose — the use of that portion of the government’s property was not the “object of the fraud” as required under Cleveland v. U.S., 531 U.S. 12, (2000) (the statute “requires the object of the fraud to be ‘property'”).
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The decision here offers an interesting dichotomy regarding property and property rights. On the one hand, the Court offers a broad conception of what counts as property — including a conclusion that an employer “owns” the time employees are spending working (this seems like a pre-civil war conclusion). On the other hand, the Court weakens property rights by reinforcing its prior conclusions that major regulatory actions that shift the owner’s ability to use its property do not count as property rights violations. This same dichotomy is seen in patent law with the advent of inter partes review; and is a longstanding element of zoning law.
In January 2011, the Supreme Court vacated and remanded (GVR) a parallel case in Blaszczak v. U.S., 20-5649, 2021 WL 78043 (U.S. Jan. 11, 2021) “for further consideration in light of Kelly v. United States, 590 U.S. –––– (2020).” In that case, the Second Circuit held that “confidential information” about an upcoming regulatory action was a property right whose “embezzlement” could serve as a basis for property fraud under the statute. In its decision, the Second Circuit did not use the term “trade secret” but rather suggested that the information was property because it was a “thing of value.” quoting U.S. v. Girard, 601 F.2d 69 (2d Cir. 1979). The outcome of Blaszczak will end up giving us a lot more information about the meaning of property in the US.
The claimants in the case are heirs to German Jewish art dealers who purchased a set of medieval Christian relics known as the Guelph Treasure (Welfenschatz) from the Duke of Brunswick in 1929 (although by then the Duke had already abdicated).
As the Nazi government rose to power, the dealers were coerced to sell the collection back to the State (Prussia), allegedly for for 1/3 of their value. After WWII, the US took possession of the collection but then later handed the collection back to Germany and the art is on display in a Berlin museum.
The heirs perused claims in Germany, but the special German Advisory Commission for the Return of Cultural Property Seized as a Result of Nazi Persecution, Especially Jewish Property found that the sale had not been taken under duress.
Later, the heirs sued Germany in the US, asserting a set of common law replevin, conversion, declaration of ownership, unjust enrichment, fraud, breach of good faith, etc.
Normally a Sovereign Nation such as Germany is granted sovereign immunity in U.S. Federal Court. Although the core of Sovereign Immunity stems from international tradition, US also has a statute on point — the Foreign Sovereign Immunities Act (“FSIA”). FSIA has a number of express exclusions from the general rule of immunity. The salient exception here allows US courts to hear lawsuits against foreign states where the claim is for “property taken in violation of international law.”
The D.C. Circuit court found no immunity-holding that the plaintiffs had properly alleged that the coerced sale was “an act of genocide because the confiscation of property was one of the conditions the Third Reich inflicted on the Jewish population to bring about their destruction.”
In its unanimous opinion, the Supreme Court has vacated and remanded — holding that the FSIA exceptions do not extend to protect human rights. And, in particular, the law does not open the door to allowing US courts decide whether a particular country violated the human rights of its own citizens. Further, when a country unlawfully takes the property of its citizens, that taking is a purely domestic matter that does not implicate international law.
We need not decide whether the sale of the consortium’s property was an act of genocide, because the expropriation exception is best read as referencing the international law of expropriation rather than of human rights. We do not look to the law of genocide to determine if we have jurisdiction over the heirs’ common law property claims. We look to the law of property.
And in 1976 [the year FSIA was passed], the state of that body of law was clear: A “taking of property” could be “wrongful under international law” only where a state deprived “an alien” of property.
Slip Op. This outcome follows the international norm that gives countries a free-pass under international law for violations of the human rights of its citizens.
As the International Court of Justice recently ruled when considering claims brought by descendants of citizens of Nazi-occupied countries, “a State is not deprived of immunity by reason of the fact that it is accused of serious violations of international human rights law.”
Slip Op. quoting Jurisdictional Immunities of the State (Germany v. Italy), 2012 I. C. J. 99, 139 (Judgt. of Feb. 3).
On remand, there will likely be more arguments. In particular, the plaintiffs will likely argue that their ancestors were not German nationals at the time of the sale – thus prompting an international taking. Germany will also respond with a comity argument — even if it lacks sovereign immunity, the court should use its discretion to not hear the case.
Columbia University v. Illumina, Inc. (Fed. Cir. 2021) (nonprecedential opinion)
In this IPR decision, the PTAB cancelled claims from five patents owned by Columbia — finding them obvious. US Patent Nos. 9,718,852 (clm 1); 9,719,139 (clm 1); 9,708,358 (clm 1); 9,725,480 (clm 1); and 9,868,985 (clms 1-2). The patents are all related to methods of sequencing DNA using “sequencing-by-synthesis.” Illumina believes that it owns the process. Columbia felt otherwise and sued Illumina for patent infringement in D.Del. That lawsuit has been stayed since July 2018 as the court awaits these IPR decisions. On appeal, the Federal Circuit has affirmed.
Here is a fairly easy to understand video about how this work:
The likelihood of winning an appeal certainly depends upon the merits of your case. The second most important factor is the level of deference afforded to the lower-tribunal. The Federal Circuit gives deference to any factual findings made by the PTAB in its IPR decisions. In particular, a PTAB finding of fact will be affirmed if it is based upon “substantial evidence.” The words “substantial evidence” might sound like a lot of evidence, it is actually a quite easy threshold. A decision is based upon “substantial evidence” if it is supported by “more than an iota” of evidence or if “a reasonable mind might accept the evidence to support the finding.” On the other hand, questions of law are reviewed without deference — de novo.
Obviousness is a question of law reviewed de novo. However, the ultimate conclusion of obviousness is always based upon a large number of factual findings, “including the scope and content of the prior art, differences between the prior art and the claims at issue, the level of ordinary skill, and relevant evidence of secondary considerations.” See my simple tip-of-the-mountain drawing below.
Here, the patentee challenged three factual findings by the Board, and the Federal Circuit found that each finding was supported by enough evidence to pass muster. The three topics: motivation-to-combine; and two reasonable-expectation-of-success arguments.
The patentee argued someone skilled in the art would not have been motivated to combine an allyl capping group into a sequencing-by-synthesis approach. Their particular argument, was that a prior art reference indicated some problems with use of the capping group and thus discouraged its use. As supporting evidence, Columbia pointed to the fact that other researchers ceased related experiments after the reference was published. On appeal, however, the Federal Circuit noted that this “teaching away” argument requires “clear discouragement” which was not proven. Although the reference did not show the experiment to be a smashing success, it also was not a failure. Thus, while researchers might have considered better alternatives based upon the reference, it did not actually teach-away.
While it may be true that … scientists ultimately chose to research alternative capping groups, “just because better alternatives exist in the prior art” does not mean that an inferior alternative “is inapt for obviousness purposes.” Quoting In re Mouttet (Fed. Cir. 2012).
Thus, the PTAB’s finding of motivation to combine was supported by substantial evidence.
Not huge, but is it time to amend Section 145 to allow patent applicants to file their civil action in any venue that houses one of the National or Regional Patent Offices? (E.D.Va.; N.D.Cal.; N.D.Tex.; E.D.Mich.; D.Col.). Here is the current law:
35 U.S. Code § 145 – Civil action to obtain patent
An applicant dissatisfied with the decision of the Patent Trial and Appeal Board … may, unless appeal has been taken to the … Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia. . .
Chicago patent attorney Kevin Keener recently filed the following action in N.D. Ill. Federal Court. You’ll note that the name of the patentee was filed under seal as was any identifying information about the asserted patent. The infringers are unknown but likely “foreign” individuals and unincorporated businesses who are selling infringing items to US customers via Amazon.com and other “infringing webstores.” Amazon has not been named as a defendant.
The patentee argues that the secrecy is important because of the “risk that Defendants will transfer assets or destroy evidence upon learning of Plaintiff’s identity and patent.” The case has been assigned to Judge Matthew Kennelly as part of the Patent Pilot.
The complaint twice refers to its “design” and never to an “invention.” This makes me think it is likely a design patent case.
Although the defendants are unknown and are believed to be foreign, the patentee alleges that the N.D.Ill. “Court has personal jurisdiction over Defendants in that they transact business in the State of Illinois and in the Northern District of Illinois.” Regarding venue, the complaint alleges lots of potential connections, but fails to cite the statement in 28 U.S.C. § 1391(c)(3) that a foreign defendant “may be sued in any judicial district.”
Presumably, the plaintiff may be seeking an immediate temporary restraining order under R.65. However, the rules limit the court’s ability to act and at least require an “affidavit or a verified complaint” stating particular facts which “clearly show that immediate and irreparable injury, loss, or damage will result to the movant before the adverse party can be heard in opposition.” Id. It is possible that such a document was filed under seal.
M&K Holdings, Inc. v. Samsung Electronics Co., LTD. (Fed. Cir. 2021)
M&K’s U.S. Patent No. 9,113,163 covers a “method of decoding moving picture.” There is some history between Samsung and M&K’s family of companies, whose patents also originate in Korea. This appeal stems from an IPR final written decision finding the challenged claims invalid.
Decide only the Issues Raised: The first bit here is easy but quirky. The petition challenged claim 3 of the ‘163 patent as obvious. The PTAB found the claim unpatentable as anticipated, but did not perform an obviousness analysis. On appeal, the Federal Circuit vacated — holding that the PTAB “deviated impermissibly from the invalidity theory set forth in Samsung’s petition.” For its part, Samsung argued that the anticipation holding was no-problem. Just like the vast-majority-of-cases, the anticipation here is inherent in the obviousness theory. In particular, we have the same prior art — its just that the PTAB only needed the primary reference. In its petition, Samsung suggested a second reference showing the “predetermined block” claim limitation.
On appeal, the Federal Circuit found notice lacking since Samsung’s original petition stated that the primary reference did not disclose the “predetermined block.” According to the court, if M&K had known about the anticipation argument, it might have shifted its argument about the scope of claim 3. The cynicism here is relevant – the Federal Circuit is recognizing and even encouraging parties to shift their patent claim meaning arguments depending upon the circumstances. This outcome can be linked with the court’s conclusion in Egenera, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2020). In that case, the court permitted the patentee to shift its arguments regarding claim meaning and patent scope as the case moved through various tribunals.
In the end, the difference here between anticipation & obviousness was sufficient enough for the court to find an APA violation by the PTAB in finding the claim anticipated.
Printed Publication: The patentee also challenged the decision by arguing that some of the references relied upon were not actually prior art. We have three references at issue that were all uploaded to a website controlled by the Joint Collaborative Team on Video Coding (“JCT-VC”):
Bross et al., WD4: Working Draft 4 of High-Efficiency Video Coding, JCTVC-F803 (version 3) (uploaded Sept. 8, 2011).
Park et al., Modifications of Temporal MV Memory Compression and Temporal MV Predictor, JCTVC-E059 (version 4) (uploaded Mar. 19, 2011).
Zhou, Non-CEP9: Modified H Position for Memory Bandwidth Reduction in TMVP Derivation, JCTVC-G082 (version 1) (uploaded Nov. 9, 2011).
All three were uploaded to the server, and the patentee argued that a person of ordinary skill in the art could not have found Park or Zhou using reasonable diligence before the patentee’s priority date of December 13, 2011. Here, the references were each discussed at a JCT-VC development meeting of ~200 people prior to that date, and those meetings were not subject to “any expectation of confidentiality.” The documents were hosted in downloadable form, and could be searchable by title. Further, JCT-VC was a “prominent” group within those skilled in video-coding technology and those outside the group would have found the website. In reviewing the relevance of these facts, the Federal Circuit asked “whether the channel through which the references were publicized is prominent or well-known among persons of ordinary skill in the art.” These facts came together to allow the Federal Circuit to affirm the “Board’s finding that persons of ordinary skill in video-coding technology could have accessed Park and Zhou with reasonable diligence through the JCT-VC organization. None of M&K’s arguments undermine the Board’s finding that Park and Zhou were publicly accessible and its conclusion that those references constitute printed publications within the meaning of 35 U.S.C. § 102.”
Note here that this decision is in some serious tension with Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363 (Fed. Cir. 2019) (Version 4 of the same working draft not prior art). That decision involved a patent from the same inventor, Soo Mi Oh.
= = =
One oddity of this case is the priority dates. The patent application at issue was actually filed in September of 2012 but claims priority back to two Korean applications filed in 2010 and early 2011 and then a PCT application filed in Korea on December 13, 2011. The PCT application includes additional matter that is found in the claims. The patentee did not attempt to prove an earlier invention date. So, the December 13, 2011 date was used as the critical-date for 102(a) prior art.
Can we eliminate the anticipation doctrine and still have a fully-operational patent system with 99.99% identical outcomes? (Add additional comment below).
Jeff Berkowitz is a Miami real estate developer, lawyer, and now inventor. Berkowitz, along with architect Bernardo Fort Brescia and civil engineer Ronald Klemencic were recently awarded a design patent on their design for SkyRise Miami. D908917 (“The ornamental design for a building as shown and described.”). The building is apparently now under construction, although at a somewhat delayed pace.
The design patent took-up 3 1/2 years of prosecution. That is an unusually long time for a design patent. The examiner initially issued a restriction requirement because two sets of drawings had been submitted. Subsequently, the examiner identified inconsistencies in the various views that required repeated correct.
One additional trick in the case is that the tower was originally proposed back in 2013. The image below comes from around then and is certainly prior-art.
Ed. Note: Prof. Sapna Kumar has been working on international intellectual property law issues for decades. In fact, I believe we were students in the same international IP course at the University of Chicago way back when, along with Prof. Rantanen. I asked Prof. Kumar to provide some of her thoughts on how our international IP system is responding to the COVID-19 Pandemic. A draft of her recent on-point article is available online: Compulsory Licensing of Patents During the Pandemic.
By Sapna Kumar, Law Foundation Professor of Law at the University of Houston Law Center
Due to the global nature of the COVID-19 pandemic, vaccines and treatments are in short supply and prohibitively expensive for many countries. For this reason, some scholars and foreign governments have argued that all IP rights should be suspended for such drugs for the duration of the pandemic. Others have made the more modest recommendation that countries be permitted to use compulsory licensing under TRIPS Article 31 to produce generic versions of needed drugs, in exchange for paying “adequate remuneration in the circumstances of each case” to the patent holder. This raises the question of whether patent rights are creating an impediment to getting people needed drugs during the pandemic.
The United States has not been particularly consistent in its attitude towards non-permissive government use of patented inventions and compulsory licensing. In the 1950s and 60s, it imported patented drugs from generic manufacturers to cut costs. During the anthrax scare in the early 2000s, after Canada licensed Bayer’s patented Cipro drug to a generic manufacturer, the U.S. government threatened to do the same to help negotiate a better price. Since 2010, there have been at least three cases of patent holders seeking compensation for the government’s unauthorized use of their defense-related inventions.
Notwithstanding the U.S. government’s regular unauthorized use of patented inventions, it has been quick to punish countries that use compulsory licensing to provide life-saving drugs to its citizens. When South Africa was suffering from the worst of the AIDS epidemic and seeking to import generic antiretroviral drugs, the Clinton administration placed South Africa on the Special 301 Report Watch List. Subsequent Democratic and Republican administrations have punished other countries seeking to utilize Article 31 to provide drugs to people who would otherwise go without treatment.
This brings us back to the current shortage of COVID-19 vaccines and treatments. Whether IP rights are harming patients and whether compulsory licensing can help depends, at least in part, on the type of drug at issue. Consider Gilead’s small-molecule drug remdesivir, which can be used as a COVID-19 treatment and was scarce during 2020. The Bangladeshi company Beximco was able to independently recreate remdesivir in just a few months. It began selling its generic equivalent in May, more than a month before any of the Gilead-licensed facilities began production. Other Bangladeshi companies soon began producing the generic, leading to a growing surplus that allowed Bangladesh to export to at least 21 other countries. As a Least-Developed Nation, Bangladesh is exempt from various TRIPS requirements, which allowed it to recreate the patented drug without retaliation.
Consequently, in the Summer of 2020, remdesivir was not scarce in Bangladesh, nor was it scarce in low- and middle-income countries that were able to buy from Gilead-licensed generic manufacturers beginning in late June. Yet during the same time period, the United States was facing an acute shortage and had to ration the drug. This tells us that the U.S. shortage was likely based on patent rights—Gilead failed to maximize all available production facilities and failed to grant countries like the United States access to drugs produced under license in countries like India. Had the government issued a compulsory license, it would have lessened the shortage.
Compulsory licensing, however, is not a cure-all for drug shortages. Biologics, including vaccines, can be difficult to recreate without know-how that is protected by trade secrecy. Issuing a compulsory license won’t force companies to divulge the optimal manufacturing conditions for producing the drug. Moreover, compulsory licensing won’t increase a supply of a needed drug if there is a shortage of raw materials or manufacturing capability—as is currently the case with various COVID-19 vaccines.
Consequently, for the current pandemic, compulsory licenses or other mechanisms for circumventing patent rights are only going to be useful for countries that will not be receiving an adequate vaccine supply in the near future and that have access to needed raw materials and manufacturing facilities. For countries like the United States that have pre-purchase agreements and the means to buy more vaccines, a compulsory license may not be helpful in the near term, given the amount of time it would take to recreate the drug. But for at least some low- and middle-income countries, compulsory licensing could make it possible to save lives, especially if revaccination is periodically required.
Any move that is taken with regard to IP rights during pandemics must be done with an eye towards not threatening drug development for future pandemic responses. Suspending all IP rights for the duration of the pandemic will give pharmaceutical companies little incentive to develop new drugs when the next pandemic arises, absent a change in how we incentivize drug development. But the same is not true for compulsory licensing and government use of patents. There is scant empirical evidence that the practice harms innovation, given that adequate remuneration must be paid under TRIPS. This is particularly true for licenses issued by low-income countries, which spend little on drugs compared to high-income countries.
One lesson from the pandemic is clear: the United States needs to reassess its inconsistent approach towards government use and compulsory licensing of drugs and should reassess the lack of concessions that it asks for when it pours billions of dollars into private pharmaceutical companies. Current U.S. law does not make it easy enough for a willing third-party manufacturer to petition for a license to a scarce drug, as several prior drug shortages have illustrated. U.S. agencies also need to expressly address know-how in their contracts when providing funding for research. Federal funding recipients that develop a drug or treatment should be required to utilize out-licensing to generic manufacturers to keep pace with demand after an initial grace period, in exchange for fair compensation.
Finally, the United States needs to join the European Union in revisiting its ugly practice of punishing low- and middle-income countries that utilize compulsory licensing to provide life-saving drugs to its citizens. If South Africa or other countries are forced to utilize compulsory licensing to produce COVID-19 drugs, will we repeat the mistakes we made during the AIDS epidemic? Or will we recognize that a global pandemic represents the kind of extenuating circumstance that TRIPS Article 31 was meant to address?
This is a super interesting patent-as-property case. In 2018, Christy filed a class-action lawsuit asserting that the cancellation of its patent via Inter Partes Review was taking subject to the due process requirements of the Constitution as well as the Fifth Amendment requirement of “Just Compensation.”
… nor shall private property be taken for public use, without just compensation.
Christy also argued that the payment of USPTO maintenance fees, without refund, constitutes an “illegal exaction.” The Court of Federal Claims rejected Christy’s argument as did the Court of Appeals for the Federal Circuit.
Christy, Inc. v. United States, 141 Fed. Cl. 641 (Ct. Fed. Clm. 2019);
Christy, Inc. v. United States, 971 F.3d 1332 (Fed. Cir. 2020).
Now, Christy has the case up to the Supreme Court with the following two questions:
Petitioner Christy, Inc. obtained a patent after following all the steps and rules and paying all of the fees demanded of it. Upon trying to assert its property rights embodied in the patent against an accused infringer, the Government invalidated the patent during Inter Partes Review (“IPR”) initiated by the accused infringer because it had allegedly been mistakenly issued. Christy, Inc. received no compensation for its property nor return of the fees it paid. In that context, the Questions Presented are:
1) When a duly-issued patent is invalidated through a post-grant review process (such as an IPR), must compensation be paid under the Takings Clause?
2) When a duly-issued patent is invalidated through a post-grant review process (such as an IPR), should the issuance and maintenance fees that were demanded by the government by mistake be returned?
The Federal Circuit offered a very low quality opinion on the issues here. In particular, the Federal Circuit simply stated that it was bound by a prior decision holding that “cancellation of patent claims in [an] inter partes review cannot be a taking under the Fifth Amendment.” The prior decision is Golden v. U.S., 955 F.3d 981 (Fed. Cir. 2020) where Larry Golden represented himself pro se. In that decision, the court also did not explain its decision but rather simply cited to another prior case, Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019). In Celgene, the court likewise did not examine the issue of takings, but rather cited to its older decision of Joy Technologies, Inc. v. Manbeck, 959 F.2d 226 (Fed. Cir. 1992) and Patlex Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985). However, neither of these cases addressed the takings clause they focused instead on alleged violation of due process. So, as is often the case, the trail Federal Circuit self-citation leads nowhere.
I don’t expect the patentee to prevail in this case, but that will only be based upon the Supreme Court’s rejection of its own prior statements.
A patent for an invention is as much property as a patent for land. The right rests on the same foundation and is surrounded and protected by the same sanctions. Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92, 96 (1877).
Briefing in the case will continue through the spring.
New PatentlyO Patent Law Journal article by Thomas F. Cotter, Taft Stettinius & Hollister Professor of Law, University of Minnesota Law School, and Innovators Network Foundation Intellectual Property Fellow. Professor Cotter is also the author of the Comparative Patent Remedies blog.
Abstract: It has often been observed that, while patent rights are territorial in scope, commerce is global and, increasingly, interconnected. Indeed, with the advent of 5G and the Internet of Things (IoT), technical standards soon will enable not only devices such as smartphones and tablets, but also automobiles, medical devices, and even home appliances to receive and transmit data within and across national borders. To achieve these ends, firms participate in standard-setting organizations (SSOs) to hammer out the technical standards that enable communication and interoperability among devices. Moreover, because the implementation of these standards requires the use of many different, typically proprietary, technologies, SSOs generally encourage or require their members both to declare their ownership of patents that may be essential to the practice of the relevant standard, and to commit to licensing these standard-essential patents (SEPs) on fair, reasonable and nondiscriminatory (FRAND) terms. The FRAND commitments themselves, in turn, often are interpreted as binding contracts for the benefit of third parties (that is, for the benefit of implementers). In principle, these requirements work to ensure both that implementers are able to access essential technologies, and that owners are fairly compensated for their inventive contributions.
Two problems nevertheless can impede the smooth working of such a system. The first is that SSO rules typically do not define the term “FRAND,” for a variety of reasons. Disputes over the meaning of FRAND therefore are inevitable. The second is that, because patents are territorial, courts often have been reluctant to adjudicate foreign patent rights. This understanding of patent rights, however, might appear, to some observers at least, to collide with commercial realities, when parties are unable to reach agreement and opt for adjudication by national courts. Current responses to these problems are likely to prove unsatisfactory for both owners and implementers; a comprehensive solution nonetheless remains, for now, elusive.
Read: Thomas F. Cotter, Is Global FRAND Litigation Spinning Out of Control, 2021 PatentlyO Law Journal 1 (2021) (Cotter.2021.GlobalFRANDLitigation)
Prior Patently-O Patent L.J. Articles:
Colleen V. Chien, Nicholas Halkowski, Maria He, and Rodney Swartz, Parsing the Impact of Alice and the PEG, 2020 Patently-O Law Journal 20 (2020) (Chien.2020.ImpactOfAlice)
Paul R. Michel and John T. Battaglia, eBay, the Right to Exclude, and the Two Classes of Patent Owners, 2020 Patently-O Law Journal 11 (2020) (Michel.2020.RightToExclude)
Thomas F. Cotter, Two Errors in the Ninth Circuit’s Qualcomm Opinion, 2020 Patently-O Patent Law Journal 1 (2020). (Cotter.2020.TwoErrors.pdf)
Jasper L. Tran & J. Sean Benevento, Alice at Five, 2019 PatentlyO L.J. 25 (2019) (Tran.2019.AliceatFive.pdf)
Jeremy C. Doerre, Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?, 2019 PatentlyO L.J. 10. (2019.Doerre.AnyNeed)
Colleen V. Chien, Piloting Applicant-Initiated 101 Deferral Through A Randomized Controlled Trial, 2019 Patently-O Patent Law Journal 1. (2019.Chien.DeferringPSM)
David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
Paul M. Janicke, Patent Venue: Half Christmas Pie, And Half Crow, 2017 Patently-O Patent Law Journal 13. (Janicke.2017.ChristmasPie.pdf)
Paul M. Janicke, The Imminent Outpouring from the Eastern District of Texas, 2017 Patently-O Patent Law Journal 1 (2017) (Janicke.2017.Venue)
Mark A. Lemley, Erik Oliver, Kent Richardson, James Yoon, & Michael Costa, Patent Purchases and Litigation Outcomes, 2016 Patently-O Patent Law Journal 15 (Lemley.2016.PatentMarket)
Bernard Chao and Amy Mapes, An Early Look at Mayo’s Impact on Personalized Medicine, 2016 Patently-O Patent Law Journal 10 (Chao.2016.PersonalizedMedicine)
James E. Daily, An Empirical Analysis of Some Proponents and Opponents of Patent Reform, 2016 Patently-O Patent Law Journal 1. (Daily.2016.Professors)
Tristan Gray–Le Coz and Charles Duan, Apply It to the USPTO: Review of the Implementation of Alice v. CLS Bank in Patent Examination, 2014 Patently-O Patent Law Journal 1. (GrayLeCozDuan)
Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint, 2012 Patently-O Patent Law Journal 1 (Stoll.2012.estoppel.pdf)
Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29. (Morgan.2011.AIAAmbiguities)
Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Journal 12 (sarnoff.2011.derivation.pdf)
Bernard Chao, Not So Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent Patent Law Journal 6 (chao.sealedrecords.pdf)
Benjamin Levi and Rodney R. Sweetland, The Federal Trade Commission’s (FTC) Recommendations to the International Trade Commission (ITC): Unsound, Unmeasured, and Unauthoritative, 2011 Patently-O Patent Law Journal 1 (levi.ftcunsound.pdf)
Kevin Emerson Collins, An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories, 2010 Patently-O Patent Law Journal 111 (Collins.KingPharma.pdf)
Robert A. Matthews, Jr., When Multiple Plaintiffs/Relators Sue for the Same Act of Patent False Marking, 2010 Patently-O Patent Law Journal 95 (matthews.falsemarking.pdf)
Kristen Osenga, The Patent Office’s Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89 (Osenga.pdf)
Michael Kasdan and Joseph Casino, Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards, 2010 Patently-O Patent L.J. 24 (Kasdan.Casino.Damages)
Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II, 2010 Patently‐O Patent L.J. 7 (2010) (Reines.2010)
Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010) (Nominee Diversity)
Paul Cole, Patentability of Computer Software As Such, 2008 Patently-O Patent L.J. 1. (Cole.pdf)
John F. Duffy, The Death of Google’s Patents, 2008 Patently O-Pat. L.J. ___ (googlepatents101.pdf)
Mark R. Patterson, Reestablishing the Doctrine of Patent Exhaustion, 2007 Patently-O Patent L.J. 38
Arti K. Rai, The GSK Case: An Administrative Perspective, 2007 Patently-O Patent L.J. 36
Joshua D. Sarnoff, BIO v. DC and the New Need to Eliminate Federal Patent Law Preemption of State and Local Price and Product Regulation, 2007 Patently-O Patent L.J. 30 (Download Sarnoff.BIO.pdf)
John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. (Duffy.BPAI.pdf)
Joseph Casino and Michael Kasdan, In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal, 2007 Patently-O Patent L.J. 1 (Casino-Seagate)
Normally, a notice of appeal filed in federal appellate court does not include details on what particular issues are being appealed. That comes later in the appellant’s opening brief.
One exception is found in R. 44 of the Federal Rules of Appellate Procedure (FRAP). R. 44 requires notice of any Constitutional Challenge of a Federal or State statute. This must be provided “immediately upon the filing of the record or as soon as the question is raised in the court of appeals.” That constitutional challenge notice is then sent over to the US Attorney General (or respective state counterpart) who may want to intervene to defend the statute. Depending upon a few factors, the constitutional challenge notice may be due prior to the opening brief. This type of certification was provided in all the Arthrex-style challenges of PTAB appointments.
A second exception that is patent-law-specific is found in within the set of rules and regulations promulgated by the USPTO. 37 C.F.R. 90.2(a)(3)(ii). The rules require that the notice of appeal of any IPR, CBM, or Post-Grant Review “provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal pursuant to 35 U.S.C. 143, and it must be served as provided in § 42.6(e) of this title.” An example of this type of notice can be seen in the following notice of appeal. [ExampleNoticetoPTO].
My thought: It seems to me that the USPTO does not possess authority to require an applicant include certain elements within its notice of appeal. The contents of the notice of appeal are governed by statutory law along with the rules of appellate procedure and the Federal Circuit’s own local rules of procedure. None of those authorities require or suggest that the notice-of-appeal include the substantive elements required by the USPTO. The US Courts are generally in control of determining their own procedures, and the PTO has no authority to amend those procedures for its own convenience.
Does this matter? In general, this is a rather small point, and the PTO’s approach is a practical and efficient solution. The key issues though are timing and strategy. The PTO rule forces the appellant to figure out its appellate position 30-days early and also to disclose that position to the opposing party 30-days early.
Editor’s Note: Avery Welker is a 1L at Mizzou and likely a future patent attorney. He is starting a new series linking law school canonical cases with intellectual property counterparts. You can email ideas for future posts to avery@patentlyo.com. – Dennis Crouch
By Avery Welker
“That doesn’t look too bad,” I thought to myself while scanning through my Civil Procedure reading assignment over Rule 56, Summary Judgment. Fed R. Civ. P. 56 (2020). Then I had the pleasure of reading Celotex Corp. v. Catrett and discovered that if you don’t pay attention to which party bears the burden of proof, you could be in trouble. Celotex Corp. v. Catrett, 477 U.S. 317 (1986). This is where Exigent Technology, Inc. (Exigent) found themselves in 2006 in the process of pursuing an infringement action against Atrana Solutions, Inc. (Atrana). Exigent Tech., Inc. v. Atrana Sols., Inc., 442 F.3d 1301 (Fed. Cir. 2006).
Exigent owned U.S. Patent No. 6,651,885, a “multi-function transaction processing system,” which includes a transaction processing system with the ability to attach a payment to a user account, among other functions, and alleged infringement literally or through the doctrine of equivalents. U.S. Patent No. 6,651,885 (filed Jun. 8, 2000; issued Nov. 25, 2003); Exigent Tech., Inc., 442 F.3d at 1303-04. The general idea was to expand the traditional debit/credit card transactions by issuing “authorization codes” to purchasers on a card, which could have other purchases attributed and stored on it. U.S. Patent No. 6,651,885. The system was designed to rid merchants of the cost of selling multiple cards that only contained singular access codes, like a pre-paid minutes card for calling long-distance, and put them all on one larger card assembly (shown below). Id. The above illustration shows a familiar looking terminal (20) but includes a large card printer (where the purchased information is stored) (37). Id. at fig.1.
The below figure is where the magic happens: The entire “card assembly,” (50) is a large sheet that contains a detachable physical card (e.g., for pre-paid phone minutes) (52), any merchant promotions, or other purchases (e.g., (55), (56)). Id. at fig.2. All in the name of efficiency.
In the lawsuit, the defendant Atrana moved for summary judgment, arguing that the patentee Exigent would not be able to prove infringement. Exigent Tech., Inc., 442 F.3d at 1303. The trial court agreed and granted summary judgment stating that there was no evidence on the record that Atrana infringed the patent. Id. at 1305. Upon a motion from Atrana, the trial court amended the summary judgment order to clarify that Exigent had the burden of proving infringement on every element of the claims. Id. at 1305. Exigent appealed, claiming that Atrana’s summary judgment motion of non-infringement was not sufficiently supported by the evidence. Id. at 1305-06.
Enter Celotex. If summary judgment is the treasure you seek, Celotex is your treasure map. It is the Supreme Court’s definitive guide to supporting a summary judgment motion when the non-moving party holds the burden of proving its case at trial. Celotex arose out of a wrongful-death complaint brought by the respondent, Catrett, who alleged that her husband’s exposure to asbestos-containing products (including those manufactured by Celotex) caused his death. Celotex Corp., 477 U.S. 317 at 319.
Celotex moved for summary judgment asserting that Catrett produced no evidence that any Celotex product was the proximate cause of her husband’s death, and that Catrett could not identify any witnesses that could testify to her husband’s exposure to Celotex’s asbestos-containing products, thus there was no genuine issue of material fact. Id. at 319-320. The trial court granted the motion, but the D.C. Circuit reversed, holding that since Celotex did not try to produce evidence in support of their motion (i.e., prove that Catrett’s husband was not exposed to Celotex’s products), they were not entitled to summary judgment. Id. at 321-22. The Supreme Court then reversed again, holding that summary judgment was proper in that instance. Id. at 328. The Court reasoned that where the nonmoving party has the burden of proof of a dispositive issue at trial, the moving party need only point out to the trial court that there is no evidence supporting the nonmoving party’s case, which discharges the moving party’s usual burden to show an absence of genuine dispute of material fact. Id. at 325.
The Court noted the spirit of Rule 56 in the holding of Celotex:
Rule 56 must be construed with due regard not only for the rights of persons asserting claims and defenses that are adequately based in fact to have those claims and defenses tried to a jury, but also for the rights of persons opposing such claims and defenses to demonstrate in the manner provided by the Rule, prior to trial, that the claims and defenses have no factual basis.
Id. at 327.
Celotex turned out to be bad news for Exigent, who argued in the Federal Circuit that Atrana did not properly support their summary judgment motion with admissible evidence showing non-infringement. Exigent Tech., Inc., 442 F.3d at 1308. This was in reference to an arguably inadmissible declaration from Atrana’s CEO. Id. The Federal Circuit noted that it ultimately did not matter whether the declaration was admissible as evidence because Atrana, the moving party, successfully discharged their burden of proof on the dispositive issue of non-infringement, by pointing out that Exigent had no evidence of infringement. Id. at 1309. The Federal Circuit held that Exigent did not advance any argument or bring any evidence of infringement, and therefore summary judgment was proper. Id.
Summary judgment is a remedy that arguably helps the courts “secure the just, speedy, and inexpensive determination of every action and proceeding.” Fed. R. Civ. P. 1 (2020). The irony is not lost on me that a remedy that can speed up an action resulted in further litigation, stringing out the action for both parties.
In its October 2020 decision in EcoServices v. Certified Aviation, the Federal Circuit issued a somewhat muddled nonprecedential opinion. The en banc petition has now been briefed and awaiting action from the court.
The patents at issue cover methods and systems for washing a jet engine. A jury sided with the patentee and the district court awarded $2 million in back-damages, and $400 per infringing wash in ongoing royalties.
[Federal Circuit Decision] On appeal, the Federal Circuit affirmed on validity — rejecting the defendant’s eligibility and obviousness argument — as well as infringement. The appellate court did find problems with the ongoing royalty (as well as the award of supplemental damages for ongoing infringement during the course of the lawsuit). However, the appellate found problem’s with the ongoing royalty because one of the two-infringed patents has now expired. “Here, the record does not support that a later jury would have calculated a royalty of $400 per wash as a royalty award for infringement of the ’262 patent alone.” The majority opinion was penned by Judge Schall and joined by Judge O’Malley. Judge Dyk wrote in dissent — arguing that the claims should be deemed invalid as directed toward an unpatentable abstract idea.
The defendant subsequently petitioned for en banc rehearing on eligibility grounds, asking “whether the bare idea of automating a known, manual process using a generic machine is a patent-eligible invention.” Here is claim 1 of Certified Aviation’s US9162262.
1. A system for washing turbine engines comprising:
a washing unit for providing a washing liquid to the turbine engines;
an information detector configured to gather information related to engine type; and
a control unit configured to accept the information related to engine type from the information detector and to determine a washing program to be used as a function of the information relating to engine type from a set of preprogrammed washing programs, and further configured to regulate the washing unit according to washing parameters associated with the washing program used.
Reading this claim, you can see that it includes three elements: a “washing unit” that delivers soapy-water to the turbine; an “information detector” such as an RFID or Bar Code reader; and a “control unit.” The information detector detects the engine type and then the control unit runs a particular “washing program.”
The improvement here is the automation of the of the washing-process by automatically detecting the engine-type and then selecting parameters depending upon the engine type. But, the particular detection scheme was a very well known approach (RFID or Bar Codes); and the particular wash parameters for any given turbine are not specified in the patent document. The patent explains that this type of activity was already being done in the field — but was using humans to identify/select rather than an automaton. This had the added benefit of “completely eliminating subjectivity” and thus avoiding user-error in the wash approach. (Quoting the inventor’s testimony at trial). Before this invention, the “human operator would consult a card for the type of engine to be washed, and [manually] enter the established flow parameters for the engine type.” Quoting Judge Dyk’s dissent.
In his dissent, Judge Dyk cites prior precedent to the point that “mere automation of manual processes using generic computer components” is an abstract idea, even if the automation provides substantial advantages. The majority disagreed and found instead that the claims “are directed to an improved system for washing jet engines and not to an abstract idea.”
In other words, the claims … do not recite the mere desired result of automated jet engine washing, but rather, recite a specific solution for accomplishing that goal.
Slip Op. The court released its decision as non-precedential. That means that its outcome will have little impact on the overall jurisprudence of this area, it also means that the decision was not (likely) distributed to the other Federal Circuit judges prior to release.
The en banc petition largely follows Judge Dyk’s dissent, but offers an interesting bit of analysis regarding the point-of-novelty link to eligibility.
This Court has held that the eligibility inquiry begins by “understand[ing] the problem facing the inventor and, ultimately, what the patent describes as the invention.” ChargePoint. This point-of-novelty inquiry guards against drafting efforts to patent abstract ideas by hiding them among prior art or otherwise insignificant elements.
Here, the defendant argues is that the point of novelty is the automation, and automation is an abstract idea. The Federal Circuit asked for a response from the patentee, and that has now been filed as well.
PhRMA has filed an interesting brief arguing that proper-venue in ANDA patent-infringement cases under §271(e)(2) should be determined under the general venue statute (28 U.S.C. §1391) rather than the patent-specific venue statute (28 U.S.C. §1400(b)).
Section 1400(b) is an exception to the general venue statute, 28 U.S.C. §1391. It should be construed narrowly and extended to §271(e)(2) actions only if doing so is consistent with the text and purpose of both statutes. But the text of §1400(b) cannot be reconciled with §271(e)(2); the enacting Congress in 1897 did not contemplate hypothetical acts of infringement; and extending §1400(b) to §271(e)(2) actions would conflict with the Hatch-Waxman Act’s purpose. Maxims of statutory interpretation therefore indicate that the general venue statute should govern §271(e)(2) actions.
PhRMA Brief on Venue. Section 1400(b) offers much narrower venue choices than that available under §1391, and PhRMA members are arguing for a broader forum selection choices for suing generic oncomers. Valeant Pharmaceuticals v. Mylan Pharmaceuticals. In its original decision, the Federal Circuit applied the narrow venue of 1400(b), but an en banc petition is pending before the court.
The new petition for certiorari in Samaranayake v. Iancu (Supreme Court 2021) has little chance of being granted, but it does offer some insight on USPTO procedure. I mentioned 35 U.S.C. § 144 in a prior post this week. This case also focuses on Section 144 and asks whether the Federal Circuit exceeded its statutory jurisdiction by creating its own record rather than relying solely on the record before the USPTO. The statute:
[T]he Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. . . .
35 U.S.C. § 144. The question presented to the Supreme Court stems directly from the statute:
Whether, in creating the required evidentiary record de novo rather than merely reviewing the agency Record below, … the Federal Circuit exceeded its statutory jurisdiction under 35 U.S.C. § 144.
Haritha Samaranayake is the first listed inventor on U.S. Patent Application No. 13/877,246 along with several other Finland-based inventors who were apparently working under Prof. Seppo Ylä-Herttuala. The application claims a 2011 UKIPO priority filing date and is now owned by a Gliotherapy Limited. As the company-name suggests, the patent here claims a method for treating malignant gliomas.
1. A method of treating cancer in a human patient, said method comprising:
diagnosing a cancer in a human patient,
administering to said human patient a viral gene therapy vector having a transgene, and
within about 30 days of said administration of said viral gene therapy vector, administering to said human patient a cytotoxic agent other than gancylovir.
The basic procedural setup in the case:
Examiner twice rejected claims as obvious and Applicant appealed to PTAB.
In her Answering Brief, Examiner conceded that the Evidence of Record did not support the rejection, but offered a new rejection based upon new prior art (not previously of record in the case). Of note, the Examiner provided a citation to the cited non-patent-literature, but did not actually provide a copy of the references in the record.
The PTAB agreed with the examiner and found the claims obvious.
On appeal to the Federal Circuit, and now before the Supreme Court, the Applicant argued/argues that those references were never made of-record, and thus cannot serve as the basis for Affirmance on Appeal. For its part, the Federal Circuit affirmed the rejection without opinion (R.36); and denied the en banc rehearing petition without opinion.
This case comes down to the basic question of what counts as the USPTO’s “record” when handling an appeal. Although we lack a decision from the Federal Circuit, the USPTO Solicitor’s Office makes the simple argument that prior art becomes “of record” if the full scientific citation is provided by the examiner and the reference is reasonably (or actually) available to the applicant. Likewise, the PTAB concluded in its rehearing decision that the reference “was made of record in the Examiner’s Answer because the Examiner provided a full citation to it.”
Not mentioned here, the patentee did not properly raise the full record issue until after-the-fact and also clearly had the references in-hand when drafting its reply brief.
