Famous Domain: Patents.Com is On-Sale
CAFC Oral Arguments Available in MP3 Format
Noninfringement Opinions Excluded Based on Attorney Conflict of Interest
Unpublished Opinions Will Be Citable
Conflicts of Interest in Patent Prosecution
Movie Review: Envy — an inventor’s story
CAFC: Damage Recovery for Infringing Sales Precluded Later Recovery for Infringing Use
Patent Advisory Committee Nominations
Federal Circuit Immigration Appeal: A Modest Proposal
PATENT REFORM: Proposed Changes to Definition of Prior Art
This post is part of our continuing series discussing a US House of Representatives working draft of patent legislation by Marcus Thymian, Jennifer Swartz, and Dennis Crouch.
The legislation proposes to completely rewrite 35 U.S.C. Section 102 to change (expand) the definition of qualifying prior art. A major change is to substantially eliminate the one-year grace period except in the case where public access of the invention was disclosed (directly or indirectly) by the inventor.
Under the new Section 102, a patent would not be available if:
The claimed invention was (1)(A) patented, described in a printed publication, or otherwise known more than one year before the effective filing date of the claimed invention, (1)(B) patented, described in a printed publication, or otherwise known before the effective filing date of the claimed invention, other than through disclosures made by the inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published under section 122(b), in a case in which the application or the patent names another inventor and the application was effectively filed before the effective filing date of the claimed invention.
According to the proposed statute, an invention becomes “known” when it is “reasonably and effectively accessible” and can be “accessed and comprehended without resort to undue efforts.” The proposal would eliminate 102(c)-(g). The need for these sections seemingly eliminated by the switch to a First-to-File system (supra).
Over the next few weeks, Marcus Thymian, Jennifer Swartz, and Dennis Crouch will discuss the various sections of the proposal in a series of posts.
PATENT REFORM: House IP Subcommittee Prepares Sweeping Patent Law Changes
The attached legislative proposal was prepared by the House Subcommittee on Intellectual Property chaired by Congressman Lamar Smith (R Tex). Although the proposal is merely a discussion draft at this point, it is expected that a parallel Bill will be introduced within the next few days. The Senate’s newly formed Subcommittee on Intellectual Property is scheduled to hold a hearing on the patent system April [25th]. It is quite possible that this proposal will serve as an agenda for the Senate hearings.
The proposed legislation includes changes to:
- Creating a post-grant opposition procedures;
- Willfulness: Increased damages may not be awarded based merely on the knowledge of a patent or its contents;
- Taking away the clear right for an injunction for infringing activity;
- First-to-file (rather than first-to-invent) rights;
- Expanded definitions of prior art;
- Assignee may file for the application and be granted a patent (rather than the inventor);
- Elimination of the best mode requirement;
- Changes to the duty of candor and unenforceability;
- Damages: when invention is a portion of a larger product, royalties are only calculated for a portion of the product;
- Publication of all patent applications after 18 months;
- Prior user rights;
- Overruling Microsoft v. Eolas — component must be tangible;
- and more.
Over the past year, the AIPLA, IPO, Microsoft, and others have all been beating the patent reform drum — each with a separate agenda. This proposal appears to be an amalgamation of all the proposals — with enough controversial points to get most everyone up in arms.
Over the next few weeks, Marcus Thymian, Jennifer Swartz, and I will discuss the various sections of the proposal in a series of posts.
Case Questions CAFC’s Obviousness Jurisprudence
KSR International v. Teleflex (On Petition for Certiorari)
In January 2005, the CAFC decided Teleflex v. KSR — holding that when combining two or more references in an obviousness finding, there must be a suggestion or motivation to combine the teachings. This “teaching-suggestion-motivation test” has been a stalwart of Federal Circuit obviousness jurisprudence for twenty years. During that time, the Supreme Court has not heard a single obviousness case.
Now, KSR has petitioned the Supreme Court for a writ of certiorari. In its petition, the company makes a couple of interesting points that may push the High Court to accept the case:
- In Anderson’s-Black Rock (1969) and Sakraida (1976), the Supreme Court held that “a combination which only unites old elements with no change in their respective functions” is precluded from patentability under 103(a). Under the Sakraida standard, which remains law, the Teleflex patent is arguably obvious.
- With the emergence of Holmes Group, circuit splits will become more of a possibility in patent law. On this issue, the Federal Circuit has acknowledged the existence of a circuit split between itself and the Fifth Circuit. KSR points out that the split extends to other circuits as well. The other circuits have followed the Sakraisa standard while the CAFC sticks to its requirement of an explicit motivation to combine.
A consortium of five major corporations, including Microsoft, Cisco, and Hallmark have filed as amicus supporting the petition. Their brief argues that the current structured test for obviousness is too easy a hurdle for patentees and that the formalities of the test undermines courts ability to truly determine whether an invention is obvious to one skilled in the art.
In addition, Teleflex has filed its opposition to the petition — arguing that (1) obviousness is well settled law and need not be revisited; (2) the CAFC’s test is consistent with Graham; and perhaps most importantly (3) this case does not hinge on the obviousness issue.
Eli Lilly wins patent ruling on Zyprexa
Eli Lilly v. Zenith Goldline (N.D. Ill. 2005).
In a much anticipated decision, Judge Richard Young of the Southern District of Indiana has ruled that Eli Lilly’s patent covering the drug Zyprexa is valid, enforceable and infringed. The patent is not scheduled to expire until 2011.
The well-written 224 page opinion reads like a biography of Patent No. 5,229,382, the Zyprexa patent. In particular, the court details the prosecution history of the patent and provides a full analysis of the prior art references that the generic manufacturers cited against the patent. In the end, court determined that the generics could not prove invalidity or unenforceability:
Defendants have failed to prove by clear and convincing evidence that claims 1, 2, 3, 7, 8, and 15 of the ’382 patent are invalid as anticipated under 35 U.S.C. § 102, as obvious under 35 U.S.C. § 103, under the double patenting doctrine, or as barred by prior public use under 35 U.S.C. § 102. Defendants have further failed to prove by clear and convincing evidence that the ’382 patent is unenforceable for inequitable conduct.
The defendant generic manufacturers had stipulated that if the ’382 patent is valid and enforceable, then their actions constitute infringement. Thus, the court found that their ANDA submissions constituted an act of infringement.
TechnoLawyer
For years, the TechnoLawyer community has provided insightful e-newsletters with interesting and helpful content. Each week, I receive the TechnoLawyer intellectual property newsletter, known as “IP Memes,” that is written by intellectual property attorney Stephen Nipper. IP Memes is continually filled with important discussions that were often missed by mainstream news organizations.
Now, TechnoLawyer has started its own blog: http://blog.technolawyer.com/.
Links:
- TechnoLawyer.
- Stephen Nipper.
- Dennis Kennedy’s Report on the Tablet PC (Published by TechnoLawyer).
Statements by Patent Examiner to FBI Deemed Frivolous and Not Protected Whistleblowing Activity
Jack v. Department of Commerce (Fed. Cir. 2005) (05–3023) (NONPRECEDENTIAL).
Todd Jack is an Examiner at the US Patent Office (PTO). In 2000 Mr. Jack alleged to the FBI that he had been approached by employees of the PTO who “proposed that he join them in a scheme to sell patents and perform patent searches for persons outside the PTO for cash payments.” Mr. Jack made several other allegations regarding identity theft and bribe-taking by PTO employees and he brought his case to several agencies, including a congressional office, the Secret Service, Department of Commerce security officers, and the Office of Inspector General.
Later, in 2002, Mr. Jack’s supervisor gave him a written and oral warning that his performance was “unacceptable.” Another supervisor proposed that Mr. Jack be removed for “(1) Harassing and threatening behavior exhibited toward your supervisor and co-workers; (2) Making false statements concerning another employee; (3) Creating a hostile work environment; and (4) Inappropriate behavior in the workplace.”
In January 2003, the PTO sustained all the charges against Mr. Jack, but reduced the proposed removal to a 120–day suspension.
Mr. Jack filed an appeal at the PTO Board. The administrative judge assigned to the appeal held that the Board lacked jurisdiction and that Mr. Jack had failed to make a non-frivolous allegation that would be protected whistle-blowing activity.
On appeal again, the Court of Appeals for the Federal Circuit (CAFC) did not touch the issue of “whistle-blowing activity.” Rather, the appellate panel found that Mr. Jack’s claims regarding improper procedure at the Board were without merit, and thus, upheld the Board’s decision denying his appeal.
How (not) to file a Motion for Summary Judgment
Tel-Lock v. Jasco (N.D. Ill. 2005).
In her most recent patent opinion, Northern District of Illinois Judge Joan Lefkow took both parties to task for their failure to comply with “the straightforward Local Rules of the U.S. District Court for the Northern District of Illinois.”
Before determining whether a genuine issue of material fact exists with regard to either Tel-Lock’s claims or Jasco’s counterclaims, the court must wade through the parties’ Local Rule 56.1 filings. [Motion for Summary Judgment]. It is apparent to the court that both parties, Tel-Lock in particular, require instruction.
Judge Lefkow proceeded to detail the improper legal conclusions submitted, the failure to cite to supporting evidence, and the submission of affidavits filled with conclusory allegations.
In the end, the court granted partial summary judgment to the defendant, Jasco on the issue of price erosion, but denied its invalidity motion. In addition, the Court granted Tel-Lock’s motion to dismiss Jasco’s trademark counterclaim.
Links:
Merck KGaA v. Integra: Supreme Court Set to Hear FDA Safe Harbor Case
On April 20, 2005, the Supreme Court will hear Merck KGaA v. Integra to determine boundaries of the statutory safe harbor created by 35 USC 271(e)(1). The safe harbor immunizes would-be infringing activity when the activity is done while preparing an FDA application for drug approval. Attorneys for both Merck and Integra as well as for the U.S. Government are expected to present oral arguments.
Merck KGaA has now filed its reply brief that focuses on picking-apart Integra’s answer. In particular, Merck begins its argument with the statement that “everyone agrees” that “preclinical experiments reasonably related to an IND application are immune from patent infringement claims as clinical trials.”
Importantly, Merck challenged Integra’s procedural argument that the is “no present controversy.” This issue is one that could allow the High Court to completely avoid deciding the important statutory issues.
The SCOTUS Blog provides an excellent preview of the case here.
Briefs on the Merits:
- In Support of Merck:
- Brief by Petitioner Merck KGaA
- Reply Brief by Petitioner Merck KGaA
- NY Intellectual Property Law Association’s Brief
- EON Labs Brief
- AARP Brief
- Amicus Brief for the Consumer Project and the Electronic Frontier Foundation (EFF)
- PhRMA Amicus Brief
- Amicus Brief for Sepracor
- Brief of Genentech and Biogen Idec
- Brief for the United States Government
- Brief of Amici Curiae Eli Lilly, Wyeth, and Pfizer
- Professors’ Amicus Brief
- AIPLA Amicus Brief
- Bar Association of the District of Columbia (BADC) Brief
- San Diego Intellectual Property Law Association (SDIPLA) Brief
- Biotechnology Industry Organization (BIO) Brief
- Brief by Respondent Integra
- Benitec Amicus Brief
- Vaccinex Amicus Brief
- Applera and Isis Amicus Brief
- Invitrogen Amicus Brief
- WARF Amicus Brief
CAFC: District Court Improperly Dismissed Infringement Suit for Failure to Serve Defendant
Bowling v. Hasbro (Fed. Cir. 2005) (04–1364).
Michael Bowling’s infringement case against Hasbro was dismissed with prejudice by th Arizona district court after Bowling failed to properly serve Hasbro, basing its decision on FRCP 4(m) and 41(b). The district court then denied Bowling’s motion for reconsideration.
On appeal, the CAFC applied 9th Circuit law and reversed.
The CAFC first determined that FRCP 4(m) does not permit dismissal with prejudice:
Thus, Bowling is correct that the district court’s dismissal with prejudice could not be based on Rule 4(m).
Regarding FRCP 41(b), the CAFC found that the 9th Circuit “places strong emphasis on warning and consideration of less drastic alternatives.” Because the district court had only warned as to a Rule 4(m) dismissal, the appellate court determined that the warnings were insufficient to warrant a dismissal with prejudice.
As an aside, do not attempt to obtain attorney’s fees by citing a non-existent rule:
Hasbro argues that it is entitled to attorney’s fees and expenses incurred in this appeal under Federal Circuit Rule 47.7(1), even though it chose not to submit any substantive argument in support of the district court’s dismissal. Because no such rule exists, we assume that Hasbro is asserting an entitlement to attorney’s fees under Federal Circuit Rule 47.7(a)(1). In view of our disposition of this case, we see no reason to award Hasbro its attorney’s fees and expenses for this appeal. (Emphasis added).
Links:
It is proper to limit the scope of the claims according to the specification
Rhodia Chimie v. PPG Industries Inc., (Fed. Cir. 2005)
By Baltazar Gomez, Ph.D.
Rhodia is an international chemical company and the assignee of U.S. Pat. No. 6,013,234 (“the ‘234 patent”). The patent discloses and claims certain essentially spheroidal precipitated silica particulates. Rhodia markets “Micropearl” which is a silica particulate covered by the patent. PPG also makes three silica products, namely, Hi-Sil SC60M, SC72 and SC72C. Rhodia alleges that these products infringe claim 1 of the ‘234 patent.
The district court granted summary judgment for noninfringement in favor of PPG. On appeal, Rhodia argued that the district court erred in interpreting claim 1. The CAFC, however, affirmed the district court’s construction.
Claim 1 of the ‘234 patent partly reads as follows: Dry, dust-free and non-dusting, solid and homogeneous atomized precipitated silica particulates essentially spheroidal in geometrical configuration… (emphasis added)
In addition, the specification included examples tested both for flowability and dusting properties. Flowablity tests were performed by a pour test which compared the flowability of Micropearl with the prior art. The dusting tests were measured by the German DIN 53 583 standard (the “DIN test”).
During the district court’s claim construction hearing, PPG asserted that the phrase “dust-free and non-dusting” should be interpreted literally to mean “no dust cloud whatsoever.” Conversely, Rhodia argued that such a meaning was improper in view of the results of the pour test that showed production of some dust. Accordingly, Rhodia advocated construing “dust-free and non-dusting” to mean “very low dust.”
The district court was concerned, however, that Rhodia’s proposed definition of the phrase was relative and that such a definition would not meet the statutory requirement that the claims particularly point out and distinctly claim the invention. Thus, to resolve the perceived ambiguity of the phrase, the district court adopted a construction based upon the only meaningful guidance provided in the patent, namely the DIN test.
On appeal, Rhodia argued that the DIN test was not the only means by which to assess the amount of dust produced by the invention. Rhodia asserted that the pour test could also be used to determine the level of dustiness, and therefore, it is inappropriate for the district court to limit the phrase “dust-free and non-dusting” to the DIN test. Further, Rhodia cited statements made during prosecution of the ‘234 patent explaining that the pour test could be used to show the non-dusting and free-flowing properties of the ‘234 patent.
In affirming the district court’s construing of “dust-free and non-dusting”, CAFC noted that although the pour test may also provide evidence of dustiness, the results of the pour tests presented in the ‘234 patent were only identified as evidence of the products’ flowability. The CAFC further noted that there is no language in either the claims or the written description that taught the application of the pour test to determine the level of dustiness. Finally, CAFC stated that Rhodia’s statements made during prosecution cannot serve to fill such a gap. Thus, the CAFC concluded that the district court did not erred in limiting the scope of the claims by defining the phrase “dust-free and non-dusting” to the only disclosure in the patent.
Note: Dr. Baltazar Gomez is a scientific advisor at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched retrovirology as a PostDoc at Cornell University.