Brief mentions of IP stories floating around in the past few weeks that might be of interest.
-The Supreme Court continues to offer the last word on many patent issues, already issuing two patent decisions this term, with AMP v. Myriad soon to be added to that list, and showing interest in several other patent issues. [PatentlyO]
-The surge in application filings in March associated with changes brought about by the AIA has caused the USPTO backlog to increase to levels last seen six months ago. [USPTO Data Visualization Center]
-Until September 30, the USPTO has brought its After Final Consideration Pilot back to life. Will it bring many applications back to life after final? [USPTO AF Consideration Pilot]
-This. This is what an indefinite claim looks like. [In re Hartman]
-EFF tries to kill patents on 3-D printing, but will 3-D printing try to kill patents? [TechDirt]
-Speaking of which, if a 3-D printer prints another 3-D printer, is this self-replication not subject to patent exhaustion? [SCOTUS Bowman v. Monsanto opinion]
Case No. 2011-1547 (Newman, O’Malley, Wallach)
Federal common law is alive and well in patent jurisprudence. The courts have created several patent doctrines without any statutory basis, and those that do have statutory backing often require thousands of words in judicial opinions to understand and revise (“any new and useful process” comes to mind). This second post on managing patent families (first post here) deals with a doctrine from the former category, the appropriately-named nonstatutory double patenting doctrine. The issue is a common one amongst related applications, as seen in the recent In re Hubbell.
The history in Hubbell was Greek-tragedy-level complex. Put simply, two application families – one to a genus and the other to a species – had overlapping inventorship but different ownership. The first family, owned by CalTech, included the application on appeal, 10/650,509, and had priority to a provisional application filed in 1997. The ‘509 application claimed a genus of “[a] bidomain protein or peptide comprising a transglutaminase substrate domain and a polypeptide growth factor.” While the ‘509 application family was in prosecution, two of its inventors left CalTech for ETHZ, where they filed the other family in 1998, ultimately yielding US Patent 7,601,685 in 2009, which claimed a species of the ‘509 application’s transglutaminase substrate domain, “crosslinking Factor XIIIa substrate domain.” Although the ‘685 patent was not valid prior art against the ‘509 application due to its later priority date, the USPTO rejected the ‘509 application genus claims under nonstatutory obviousness-type double patenting over the ‘685 patent species claims because of the overlapping inventorship. An appeal to the Federal Circuit ensued. . . Read more …
Case Nos. 2010-1360 (Rader, Newman, Moore)
Happy patent families are all alike; every unhappy patent family is unhappy in its own way. (I’m sure this is how Tolstoy really meant it.) Properly managing a portfolio of related applications is difficult. The incremental nature of invention, vagrant inventors, and constraints in IP harvesting often make for tough decisions in dividing up subject matter between related applications, determining proper priority chains, and providing correct inventorship for each application in a family. Complex and occasionally inconsistent Federal Circuit caselaw does not make these jobs easier. This series looks at two cases dealing with problems in patent families: this post will look at last fall’s Santarus v. Par Pharma for issues in priority claiming; the next post will deal with the more recent In re Hubbell for double patenting troubles.
Santarus owned a family of patents covering the drug Zegrid, including US Pats. 6,489,346; 7,399,772; 6,780,882; 6,699,885; and 6,645,988, each of which sprang from an ancestor patent 5,840,737 as continuations or continuations-in-part. Par Pharma filed an ANDA, creating a Paragraph IV challenge to the validity and enforceability of the patents. The challenge was successful; the district court found several claims of the ‘346, ‘885, and ‘998 patent obvious over the ancestor ‘737 patent itself, to which the invalidated patents claimed priority. Santarus appealed these findings. . . Read more …
Case No. 2012-1120 (Dyk, Plager, Reyna)
Gotcha! Prosecution history disclaimer can feel like an unfair trap for practitioners; statements made years earlier in prosecution are exhumed and reanimated in litigation to show that the patentee surrendered patent rights before the USPTO. It thus behooves prosecutors to watch for fact patterns that courts associate with disclaimer and avoid repeating those patterns in their practices. The Federal Circuit, however, does not always speak consistently as to what type of arguments made in prosecution can later be used to narrow claim constructions in litigation. Witness Biogen Idec v. GlaxoSmithKline. . .
Biogen Idec owned US Patent 7,682,612 directed to use of anti-CD20 antibodies as a cancer treatment. CD20 is an antigen that is well-expressed on white blood cells called B cells. Anti-CD20 antibodies bind to the CD20 antigens, starting a cascade that kills the B cell. This is a useful therapy for disorders that cause a patient to have too many B cells, like leukemia. Several different types of antibodies have anti-CD20 activity, including human, humanized, and chimeric antibodies, and the ‘612 patent claimed them all, generically reciting “administering an anti-CD20 antibody . . . in an amount effective to treat the . . . leukemia.” A dependent claim narrowed the anti-CD20 antibody to a “chimeric, human, or humanized antibody.” Biogen’s actual product, Rituxan, used only a chimeric antibody that had affinity for only a particular type (epitope) of CD20 antigen.
Later, GSK developed and began marketing Arzerra, also an anti-CD20 antibody to treat the same disease classes as Rituxan. But Arzerra used a human antibody that had affinity for a different epitope of the CD20 antigen. Biogen asserted the ‘612 patent against GSK, based on claim language that was generic to antibody type. The district court, however, construed the claims of the ‘612 patent narrowly, based on this supposed disclaimer in the file wrapper: Read more …
Case No. 2012-1609 (Rader, Lourie, O’Malley)
While mere attorney argument cannot take the place of evidence before the USPTO, evidence does not always have a mandatory place in traversing factual matters before the Office. The Federal Circuit in In re Morsa finds attorney argument alone sufficient to traverse a rejection on the rather factual question of enablement, requiring substantive consideration and response from the Office. The case thus provides at least one set of facts where an Applicant should push back against a summary dismissal of a traverse as “mere attorney argument.” Morsa is also a nice companion to last year’s In re Antor Media Corp opinion; these cases trace opposite edges of the enablement requirement for anticipation.
Inventor Steve Morsa applied for a patent on a computerized system and method for benefits matching in US application 09/832,440. The claimed invention basically provided a database of benefits – government assistance programs, discounts and special offers from private providers, and other freebies – and queried the database for benefits that matched the parameters of individual benefit-seekers. The claims dressed it up like this: Read more …
Case No. 2010-1426 (O’Malley, Bryson, Linn)
Appealing claim constructions to the Federal Circuit is something like gambling. Infringement damages typically dwarf costs of an appeal, so a 24% reversal rate on appealed claim constructions probably looks like a smart bet to would-be appellants. It is telling that parties familiar with gambling probabilities, like Aristocrat and IGT, are frequently on the court’s docket. The Aristocrat Tech. v. Int’l Game Tech. II opinion pays out with some good discussion of plain language treatment of claims and the role of extrinsic evidence like dictionaries and expert testimony. There are also lessons here for the relative value of apparatus and method claims based on one’s infringement target.
Aristocrat held US Patents 7,056,215 and 7,108,603, directed to methods of operating and playing networked slot machines. IGT had been internally testing Aristocrat-like machines, perhaps for functionality or design-around purposes, which Aristocrat alleged infringed the ‘215 and ‘603 methods. Merely testing the machines, however, fell outside the district court’s construction of the following claims, resulting in summary judgment of non-infringement: Read more …
Case No. 2012-1265 (Lourie, Clevenger, Wallach) (nonprecedential)
Was it something I said? Statements made during prosecution are one of the scarier means by which a claim can later be narrowed in litigation. While courts typically rely on claim language and specification disclosure first in limiting claims, prosecution statements seem like both the most directly tied to the prosecutor and yet most subjective part of the intrinsic record. Smith & Nephew v. Arthrex is an illustration of safer distinguishing approach in prosecution that may avoid unduly narrow claim constructions in litigation. The case also shows why it is a good strategy to present at least one claim to the smallest aspect of a disclosure, despite a lower potential to rack up big infringement damages.
Smith & Nephew asserted US Patent 5,601,557 against Arthrex, accusing Arthrex of direct and induced infringement of the ‘557 patent with several of their bone anchors. Following a previous trip to the Federal Circuit, the district court granted judgment as a matter of law to Arthrex based on a narrow construction of the common connection term “lodging,” overturning a jury verdict of infringement. Particularly, the district court found that “lodging” as recited in the following claim required nearly permanent joining and stability for the lodged anchor so that it would withstand all forces of surgery: Read more …
Case No. 2012-1255 (Prost, Moore, O’Malley) (nonprecedential)
Breadth in claims can be achieved in a number of ways, both with the claim language itself and external tactics like claim differentiation or redefining a claim term more broadly in the specification. When trying to narrow a claim to avoid prior art, however, the primary approach is to simply focus on changing the claim language. In re Sutton includes a short discussion reminding that all sources of broadening, both within and outside of the specific claim language, should be taken into account when trying to narrow around the prior art. In Sutton, claim differentiation supported a broad construction of several claims in prosecution.
Sutton filed application 12/190,101 on a vinyl coating that did not require a plasticizer to preserve color and flexibility. All claims in the application were eventually rejected as obvious over a four-reference combination, which the Board twice affirmed. The structure and relationship among the claims was important, as paraphrased in the opinion: Read more …