Global IP Matters

Coordinated patent strategy for multi-national companies

RCEs and the New USPTO Patent Term Adjustment Rules

Posted in Patent Term Adjustment, United States Patent and Trademark Office (USPTO)

On January 9, 2015, the Federal Register published final rules implementing changes to patent term adjustment (PTA) in view of Novartis v. Lee, which the Federal Circuit decided last January.  The new rules affect patents where a request for continued examination (RCE) was filed during prosecution.  In general, the first new rule, effective January 9, 2015, provides that applicants are entitled to B-Delay between allowance and issuance, and the second new rule, effective March 10, 2015, creates a new type of applicant delay when an RCE is filed after allowance.

As previously discussed by Global IP Matters, Novartis focuses on B-Delay, which occurs, per 35 U.S.C. § 154(b)(1)(B), when the U.S. Patent and Trademark Office (USPTO) fails to issue a patent within three years of an application’s actual filing date.  Novartis held that the filing of an RCE tolls the running of the B-Delay clock whether or not the RCE was filed within three years of the application’s actual filing date.  Accordingly, the Federal Circuit concluded that once an RCE is filed, no B-Delay is available for any time in continued examination.  The Federal Circuit also held that, for cases where an RCE was filed during prosecution, applicants could be entitled to B-Delay for the time period between allowance and issuance.  The new rules reflect these holdings. Continue Reading

Highlights of the USPTO Patent Public Advisory Committee 2014 Annual Report

Posted in United States Patent and Trademark Office (USPTO)

The Patent Public Advisory Committee (PPAC) recently released its 2014 Annual Report evaluating a variety of programs at the U.S. Patent and Trademark Office (USPTO) and recommending that the USPTO take certain actions with respect to those programs.  The following aspects of the PPAC’s eighty-four page report are particularly relevant. Continue Reading

C.D. Cal. Swims Against the Tide of Software Patent Ineligibility in Caltech v Hughes

Posted in Uncategorized

Patent applicants from the software and business method fields took notice after the United States Supreme Court issued its opinion in Alice Corporation Pty. Ltd. V. CLS Bank International, et al. (“Alice,” 134 S. Ct. 2347 (2014)) on June 19, 2014, and the U.S. Patent and Trademark Office (“USPTO”) followed with preliminary guidelines (“Guidelines”) issued June 25, 2014 for examining subject matter eligibility under 35 U.S.C. § 101 of claims relating to a judicially created exception to patent eligibility. On December 15, 2014 the USPTO published a revised interim guidance on patent subject matter eligibility that supplements the Guidelines, providing a review of relevant case law and examples. One judicially created exception bars patent eligibility for “abstract ideas.”

The Guidelines provided illustrative examples of abstract ideas, including “fundamental economic practices, certain methods of organizing human activity, ‘an idea of itself’, and mathematical relationships/formulas.” The patent claims at issue in Alice were, in the Supreme Court’s view, presumptively directed to an abstract concept. Alice, 134 S. Ct. at 2352. Accordingly, the opinion did not discuss criteria for identifying whether a claimed invention is or is not directed to subject matter that is too abstract to be eligible for patent protection. In fact, the Alice opinion explicitly states that the justices did “not labor to delimit the precise contours of the ‘abstract ideas’ category.” Id. at 2357. Instead, the Alice decision and subsequent Guidelines articulated ‘abstract ideas’ in terms of examples taken from cases previously divided by the Supreme Court, including such as Bilski (Bilski v. Kappos, 561 U.S. 593 (2010)), Diehr (Diamond v. Diehr, 450 U.S. 175 (1981)), Benson (Gottschalk v. Benson, 409 U.S. 63 (1972)), Flook (Parker v. Flook, 437 U.S. (2010)), and Mayo (Mayo v. Prometheus, 132 S. Ct. 1289 (2012)).

In the wake of Alice, the Court of Appeals for the Federal Circuit and the District Courts have issued a tidal wave of decisions finding ineligible numerous patents relating to computer-implemented technologies.  Swimming against this tide of software patent ineligibility is the U.S. District Court for the Central District of California.  In an order signed November 3, 2014, in California Institute of Technology v. Hughes Communications Inc. (“Caltech”), Judge Mariana Pfaelzer ruled that “Caltech’s patents improve a computer’s functionality by applying concepts unique to computing to solve a problem unique to computing” and concluded that the asserted claims are therefore patentable under 35 USC § 101.  See Caltech, 156 C.D. Cal. 9095 (2014).  Continue Reading

Turning Your Research Into Something More: Patents Versus Papers

Posted in IP strategy, US patent prosecution

Scientific or technical journal writers like scientists, doctors, engineers, and academics are usually introduced early to the importance and strategy of writing and publishing papers, but patent applications having those same professionals as inventors are usually not so well explained and can be more of a mystery.  What is a patent?  Clearly, we do not have to go far to find the definition.  A quick online search returns numerous pages explaining it to the world.  In the U.S., a patent is an intellectual property right granted by the Government to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.  The same basic principles apply in Europe and most other places throughout the world.  This definition is familiar to a patent practitioner or any other patent savvy person.  But there are a lot of current and future inventors for whom the notion of a patent is not that intuitive.

During the Grace Hopper Celebration of Women in Computing conference that one of the authors, Inna Dahlin, spoke at, a question of differences between a patent and a scientific or technical paper arose. To a patent practitioner, the two documents and their purposes are so different that any comparison can seem superfluous.  But the question was asked more than once, which gave pause for thought. There were a large number of attendees (over 8,000) who all were highly accomplished women – undergraduate and graduate students, and more senior professionals from industry and academics.  That numerous people who are interested and experienced in technology, and are passionate about research and their careers, had questions about patents versus papers helped shine a spotlight on differences between the two. Continue Reading

For the First Time PTAB Upholds Validity of Pharma Patents

Posted in Patent Trial and Appeal Board (PTAB), United States Patent and Trademark Office (USPTO)

On December 9, 2014, the Patent Trial and Appeal Board (“PTAB”) upheld the validity of three Supernus Pharmaceutical’s patents relating to once-daily formulations of doxycycline. The trio of decisions is significant because one of the three patents had been at issue in a Hatch Waxman litigation. The PTAB’s decision with respect to this patent marks the first time the Board has reached a final decision regarding the validity of a patent first put at issue in litigation filed under the Hatch-Waxman Act.

The patents at issue in the three decisions – U.S. Patent Nos. 8,206,740 (“the ‘740 patent”), 8,394,405 (“the ‘405 patent”), and 8,394,406 (“the ‘406 patent”) – all related to Oracea®, an antibiotic used to treat the chronic skin disease rosacea.  The ‘740 patent was originally asserted in a Hatch Waxman proceeding in the U.S. District Court for the District of Delaware (Case No. 1:11-cv-01106-LPS).  Eleven months after plaintiffs in that action amended their complaint to assert infringement of the ‘740 patent (which issued subsequent to the filing of the initial action), Amneal filed a petition seeking inter partes review (“IPR”) of the ‘740 patent, thus challenging the validity of that patent simultaneously before the district court and before the PTAB. Continue Reading

CAFC Finds Patent Claiming Software-Related Invention is Patentable

Posted in Court of Appeals for the Federal Circuit, Patent litigation

For the first time since the Supreme Court’s Alice Corp.  v. CLS Bank Int’l decision this past summer, the United States Court of Appeals for the Federal Circuit has found that a patent claiming a software-related invention was patentable subject matter under 35 U.S.C. § 101 (with Judge Chen writing the majority opinion).  DDR Holdings, LLC v., L.P., 2014 U.S. App. LEXIS 22902 at *1 (Fed. Cir. Dec. 5, 2014) (available at  The Federal Circuit affirmed the Eastern District of Texas’s denial of defendant-appellant’s motion for JMOL on invalidity of  United States Patent No. 7,818,399 (the ‘399 patent).

The ‘399 patent is directed to systems and methods of generating a new composite web page that combines certain visual elements of a host website, along with content of various third-party merchants.  Id. at *2.  For example, as the Court explained, the new generated web page may combine the logo, background color, and fonts of the host website with certain product information from a third-party merchant.  Id.  This invention thus allows a website visitor to “be in two places at the same time,” taking the visitor to the merchant’s website while retaining the host site’s “look and feel.”  Id. at *3. Continue Reading

Fed. Circuit: No “Bright Line Rules” For Determining RAND Royalties; Rejects District Court Method of Computing RAND Royalty Rates

Posted in Court of Appeals for the Federal Circuit, Patent litigation

Courts in the last two years have grappled with what methodology to apply to determine a reasonable royalty rate for infringed patents subject to “Reasonable and Non-Discriminatory,” or “RAND,” encumbrances.  On December 4, 2014, the Court of Appeals for the Federal Circuit weighed in on the subject.  Rather than enumerating a list of criteria to consider in all instances, the Federal Circuit held that the inquiry is necessarily case-specific.  The Federal Circuit also gave additional guidance on appropriate jury instructions on RAND royalties. See Ericsson, Inc. v. D-Link Systems, Inc., 2014 U.S. App. LEXIS 22778 (Fed. Cir. 2014).

A jury in the Eastern District of Texas awarded Ericsson, Inc. & Telefonaktiebolaget LM Ericsson (together, “Ericsson”) approximately $10 million, about 15 cents per accused device, in past damages from defendant D-Link Systems, Inc. (“D-Link”) for infringement of patents that were essential to the IEEE 802.11 standard and therefore RAND-encumbered.  Based on this verdict, Judge Davis found that 15 cents per infringing unit was a reasonable running royalty.  D-Link appealed on multiple grounds. Continue Reading

CAFC to Rehear Suprema: Disposition Could Have Significant Repercussions for ITC Jurisdiction

Posted in Court of Appeals for the Federal Circuit, International Trade Commission (ITC) litigation, Patent litigation

On February 5, 2015 the en banc Federal Circuit will hear oral argument in the matter of Suprema, Inc. v. ITC., Case No. 2012-1170 (Fed. Cir.). This rehearing reviews the controversial Federal Circuit opinion holding that “an exclusion order based on a violation of 19 U.S.C. § 1337(a)(1)(B)(i) may not be predicated on a theory of induced infringement where no direct infringement occurs until post-importation.” Suprema, Inc. v. ITC, 742 F.3d 1350, 1353 (Fed. Cir. 2013). This holding by a Federal Circuit panel essentially precludes the International Trade Commission from finding induced infringement of method claims in most cases.  Thus, the disposition of the en banc court will have significant repercussions for how litigants in the ITC frame future complaints of patent infringement, because it will largely determine the viability of claims of inducement of infringement at the ITC. Mintz Levin attorneys authored an analysis of the underlying Federal Circuit panel opinion in Suprema, Inc. v. ITC, and the parties’ and United States’ en banc briefs – click here to access that advisory. Continue Reading

ALJ Lord Amends Ground Rules to Permit Reply Briefs

Posted in International Trade Commission (ITC) litigation, Patent litigation

On November 17, 2014, Administrative Law Judge Dee Lord amended her Ground Rules to permit parties filing motions to file a reply brief without first seeking leave from the ALJ. This presents a significant change in motions practice before ALJ Lord that differentiates her motions practice from the procedures used by the other Administrative Law Judges at the U.S. International Trade Commission (USITC).

By way of background, under the Commission’s rules, “[t]he moving party shall have no right to reply, except as permitted by the administrative law judge or the Commission.” 19 C.F.R. § 210.15. The practice at the ITC before the other ALJs is that a party seeking to file a reply brief must file a separate motion seek permission to file a reply brief. The moving party must show good cause for the granting of the right to file a reply brief, and attach the proposed reply brief to the motion for permission to reply. The non-moving party to the underlying motion then has the opportunity to oppose the motion for a reply brief,

The amendment to ALJ Lord’s ground rules in Investigation Nos. 925 and 935 provides that “the moving party is permitted to file a reply brief within three (3) days of the filing of a response to the motion without seeking leave from the Administrative Law Judge.” In the Matter of Certain Personal Transporters, Components Thereof, and Manuals Therefor, No. 337-TA-935, Order No. 3 (Nov. 17, 2014). The order also states sur-reply briefs will “not be permitted absent extraordinary circumstances.” As a result, ALJ Lord breaks from her colleagues at the USITC, though this change brings her motions practice more in line with district court practice, and simplify procedures for parties appearing before her.

Indefiniteness: Are You Reasonably Certain?

Posted in Court of Appeals for the Federal Circuit, Patent litigation, United States Patent and Trademark Office (USPTO)

The indefiniteness standard has, until recently, been very high—only an “insolubly ambiguous claim” was considered indefinite (see, e.g., Honeywell Intern., Inc. v. International Trade, 341 F. 3d 1332, 1338–9 (Fed. Cir. 2003))—but recent events have made it easier to invalidate a claim as being indefinite.  In Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court instituted potentially drastic changes to the jurisprudence of indefiniteness by eliminating the “insolubly ambiguous standard” and instead requiring that claims must inform a person of skill in the art as to their scope “with reasonable certainty.”  134 S. Ct. 2120, 2129 (2014).  Questions immediately arose as to how courts were going to apply this new test, as the Supreme Court provided no substantive discussion when laying it out.  The Federal Circuit has given  insight into its interpretation of this new standard with its first post-Nautilus indefiniteness decision, Interval Licensing LLC v. AOL.  2014 U.S. App. LEXIS 17459 (Fed. Cir. Sept. 10, 2014).  An examination of these two cases reveals important lessons for the wary patent prosecutor. Continue Reading