Brief mentions of IP stories floating around in the past few weeks that might be of interest.
-Supreme Court grants cert in CLS Bank. I would say that this will only further muddle patentable subject matter doctrine, but I’m not sure the area can get any less clear. [SCOTUSBlog]
-The House has passed Rep. Goodlatte’s Innovation Act with slight modification since its introduction. Its prospects in the Senate, where competing legislation is already pending, is less certain. [PatentlyO]
-Based on the oral arguments and Judge Plager’s presence on the panel, the Federal Circuit looks poised to reach the merits of the USPTO’s unique indefiniteness standard from Ex Parte Miyazaki. [In re Packard oral argument]
-CNNMoney ranks “Patent Attorney” the 49th best job in America for 2013. Where does one sign up for the $175,000 median annual salary? [CNNMoney]
-Looking for more even ways to get an appeal designated as a new ground of rejection after Rambus v. Rea? The Federal Circuit also offers up In re Biedermann for your consideration. [PharmaPatents]
-If algorithms aren’t patentable subject matter, perhaps they’ll still find IP usefulness in creating copyrightable subject matter. [Huffington Post]
Case No. 2013-1104 (Rader, Lourie, Moore) (nonprecedential)
Sticking with the theme of obviousness (and psoriasis) as it has recently come up before the Federal Circuit, the nonprecedential In re Eaton provides some further insight into reference incompatibility under § 103. The previous post was skeptical of Leo Pharm. v. Rea’s finding that references could not be combined because of conflicting embodiments, but Eaton provides more palatable facts for overcoming obviousness along these lines. The case also serves as a recent example of the court’s approach on negative claim terms, redefinition of claim terms, and functional claim terms – all in the same claim limitation!
Applicant Eaton came up with a B-vitamin regime to treat psoriasis in US application 11/145,716. Counter to the prevailing supplement trends, Eaton’s formulation did not use anti-oxidants; indeed, anti-oxidants like Vitamin C were excluded from the ‘716 application’s mixtures. The ‘716 application claimed the psoriasis treatment as a method with a negative limitation for the anti-oxidants, as such: Read more …
Case No. 2012-1520 (Rader, O’Malley, Reyna)
After the last post on Broadcom v. Emulex looking at problem-solution treatment under § 103, I wanted to circle back to two other recent Federal Circuit cases on similar topics – Leo Pharm. Prods. v. Rea and Randall Mfg. v. Rea. This post addresses the former case, which is another illustration of the pro-patentability nature of a new problem solved by claims over the prior art. Leo Pharm. Prods. v. Rea further develops the concept that the age of the prior art relative to the claimed invention should be considered in some aspects of the obviousness analysis.
Galderma R&D successfully requested the USPTO to institute inter partes reexam on US Patent 6,753,013 owned by Leo Pharmaceutical. The ‘013 patent disclosed and claimed a psoriasis treatment using vitamin D and a corticosteroid. This combination treatment was well-known in the art, but the ‘013 patent had a new take on the treatment. After discovering that vitamin D and corticosteroids did not keep well in a combined formulation because of different pH values at which they were stable, the inventors of the ‘013 patent discovered some compatible solvents that would work with the two ingredients, including polyoxypropylene 15 stearyl ether (POP-15-SE). That three-way solution was claimed as such: Read more …
Case No. 2013-1335 (Lourie, Schall, Reyna)
Using relative or subjective terms in claims is not per se indefinite, but the practice strongly recommends that the disclosure do a good job of fencing in such terms. As an additional caveat, relative and subjective terms may be more susceptible to limiting through prosecution disclaimer. Sunovion v. Teva shows how a relative and subjective term – “essentially free of” – can be given a narrower construction in litigation based on peripheral prosecution statements if broader guidance in the specification is lacking.
Sunovion owned US Patent 6,444,673 directed to the sleep medication Lunesta. Generic makers Teva and Dr. Reddy’s (collectively called “Reddy” in the opinion) filed a Paragraph IV certification with the FDA to sell generic versions of Lunesta, arguing that they could do so without infringing the claims of the ‘673 patent, which Reddy argued were narrower than the full scope of the Orange Book listing for Lunesta. The claim looked like this, more or less: Read more …
Case No. 2012-1452 (Lourie, Plager, Wallach)
Restriction practice and patent family management can require a lot of behind-the-scenes consideration and due diligence, reminds St. Jude v. ACI. The case is one of several recently to highlight potential complications when electing claim groups and species for examination and presenting withdrawn claimsets in children applications. The facts here offer good lessons on minding restriction boundaries throughout prosecution of a patent family and timing for presenting generic claims.
St. Jude owned US Patent 7,008,439 directed to devices and methods of repairing punctures to artery walls with an inserted plug. The ‘439 patent was a member of a larger family, headed up by grandparent patent 5,391,183, which had several divisional children spawned from restriction and election requirements during prosecution. Among them was patent 5,830,130, from which the ‘439 patent and its sibling patent 5,725,498 were both continuations. (Family tree upper right) When St. Jude sued ACI for infringement of the ‘439 patent, ACI asserted double patenting between the ‘439 patent and its sibling ‘498 patent. The district court found the ‘439 patent was protected under § 121 from double patenting over its sibling, because of restriction and election of species requirements in the grandparent ‘183 patent that gave rise to the invalidated claims. ACI appealed this ruling to the Federal Circuit. Read more …
Case No. 2012-1338 (Moore, Linn, Reyna)
Bringing this look at Apple’s recent win before the Federal Circuit to a close, part II of this post breaks out the obviousness discussions from the majority and dissent in Apple v. ITC, as well as the “common” anticipation issue, i.e., whether all elements are found within a single reference (as opposed to whether such elements are properly incorporated, entitled to priority, or enabled, as discussed in Part I of the post). The case offers lessons as to the anticipatory power of a merely suggestive reference as well as the ascendant role of objective indicia in the obviousness inquiry.
The ‘607 patent addressed in the first post also included claims that were held obvious at the ITC over an article on a product called SmartSkin and a Japanese application to Rekimoto, SmartSkin’s creator. The ITC, however, declined to find the following claim anticipated by a suggestion of future work in SmartSkin alone: Read more …