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
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
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. Hotels.com, L.P., 2014 U.S. App. LEXIS 22902 at *1 (Fed. Cir. Dec. 5, 2014) (available at http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1505.Opinion.12-3-2014.1.PDF). 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
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
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
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.
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
Your patent application has been rejected – again. You are ready to file an appeal brief with the Patent Trial and Appeal Board (PTAB) and tell three Administrative Patent Judges that the examiner is wrong. The rules for filing an appeal brief are provided in 37 C.F.R. § 41.37, including the brief’s required content. Adhering to these rules is the first step in writing an appeal brief and will ensure that you avoid a notice of non-compliance requiring resubmission of the brief. As a second step, making your appeal brief as clear and persuasive as possible will move you toward PTAB victory. To this end, the U.S. Patent and Trademark Office (USPTO) provides “Practice Tips for Writing Effective Appeal Briefs” at their website. We elaborate on some of these tips – and more – below to help make your brief effective. Continue Reading
Good news for European patent applicants! On November 1, 2014, amended Rule 164 of the European Patent Convention (EPC), which was previously analyzed by Global IP Matters, finally went into effect. Rule 164 as amended offers applicants more flexibility because the European Patent Office (EPO) will now search multiple inventions regardless of the International Searching Authority (ISA) chosen for a Patent Cooperation Treaty (PCT) application having entered the regional phase in Europe. A brief overview of the practical effects of new Rule 164 follows.
Under old Rule 164, when the EPO was not the ISA for a PCT application having entered the European national phase, the EPO would only search the first invention in the claims. This practice would typically result in only claim 1 (and any claims united therewith) being examined in Europe, with any additional inventions identified by the EPO requiring pursuit in one or more divisional applications. When the EPO was the ISA for the PCT application, no search would be conducted by the EPO during the European regional phase, thereby limiting applicants to the invention previously searched by the EPO. Applicants were thus required to file divisional application(s) to pursue any inventions lacking unity with the searched invention.
Under new Rule 164, when the EPO is not the ISA for the PCT application and a unity of invention issue is identified, the EPO will issue a partial supplementary European search report based on the first invention in the claims. Applicants will be given two months from the issuance of the partial supplementary European search report to pay a fee to have additional claimed invention(s) searched. The supplementary search report will cover parts of the application relating to inventions for which search fees have been paid. When the EPO is the ISA for the PCT application, applicants will be invited to pay search fees for any claimed inventions not searched by the EPO in the international phase. The results of the search(es) will accompany the first communication from the EPO’s Examining Division, which is usually the first examination report. Regardless of whether or not the EPO is the ISA, if the fee is paid, a supplementary European search report is issued covering all paid-for inventions. Applicants can then select any one of the searched inventions to pursue in the European application.
Accordingly, under new Rule 164, rather than being required to file divisional application(s) because of a unity of invention issue, applicants are offered the opportunity (with an increased fee, of course) to pursue any one of multiple inventions.
Ten years ago, on September 21, 2004, the USPTO implemented the portion of the 21st Century Strategic Plan permitting the use of electronic or mechanical signatures, called “S-signatures,” on papers filed at the USPTO. Now a largely routine practice, the rule at 37 C.F.R. 1.4 governing the use of S-signatures deserves a revisit a decade later, even for seasoned patent professionals. For instance, do you know who must insert an S-signature on a paper? Or whether a random string of numbers can constitute an S-signature?
S-signatures are defined by 37 C.F.R. 1.4(d)(2) as “any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as provided for in paragraph (d)(1) of this section.” The statute, which is also discussed in MPEP § 502.02, provides five main requirements of S-signatures. Continue Reading