Summary: Appellant appealed to the Patent Trial and Appeal Board (“Board”) an obviousness rejection to claims directed to a user interface that displays currency trading information. Appellant argued in the appeal that the references cited by the Examiner to form the obviousness rejection failed to teach all of the features recited in the claims, whether taken alone or in combination. The Board overturned the rejection earlier this year in Ex parte Breitenbach, concluding that the combining of the references cited by the Examiner was improper. No argument was presented by the Appellant to the Board relating to the improperness in combining the references. This case provides a reminder that such arguments are not futile on appeal.
A closer look at this case follows.
The independent claim on appeal recites (with emphasis added):
- A system comprising at least one computing device coupled to a plurality of other computing devices, the at least one computing device operable at least to:
retrieve market data for a plurality of risk reversals for a currency pair at a first time, at least one of the risk reversals having a first maturity and at least a second risk reversal having a second maturity different than the first;
determine a currency in which to quote skew for each of the risk reversals;
communicate to and therewith causing an interface screen to be displayed at least one of the other computing devices a listing comprising the first and second risk reversals, the market data, and an indication of the determined skew for each of the risk reversals;
retrieve market data for at least one of the first and second risk reversals at a later time;
determine that there has been a change in skew, based on the later retrieved market data, of the at least one of the first and second risk reversals; and
communicate to and therewith refresh the interface screen displayed at the at least one other computing device the later retrieved market data and an indication of the change in skew of the at least one of the first and second risk reversals.
On Tuesday, April 26, 2016, the Federal Circuit issued an order denying a petition filed by Merck & Cie for rehearing en banc of an Inter Partes Review (“IPR”) final written decision by the Patent Trial and Appeal Board holding several Merck patents invalid as obvious. Merck & Cie v. Gnosis S.P.A. et al., Case No. 2014-1779 (Fed. Cir., Apr. 26, 2016). While sympathetic to the challenge that a patentee faces in defending patent validity on appeal under the lower “substantial evidence” standard, the Court affirmed its December 2015 ruling in Merck & CIE v. Gnosis S.P.A. et al., Case No. 2014-1779 (Fed. Cir., Dec. 17, 2015) that the “substantial evidence” review standard applies to post-grant review decisions by the Board.
In reaching its decision, the Court found itself bound by its In re Gartside precedent requiring that agency factual findings are to be reviewed for “substantial evidence.” Writing for the Court majority, Judge O’Malley explained that applying the “substantial evidence” standard to Board decisions is dictated by 5 U.S.C. § 706 of the Administrative Procedure Act and the U.S. Supreme Court’s ruling in Dickinson v. Zurko, 527 U.S. 150 (1999) that a more searching review for “clear error” applies only to “court/court” review and not “court/agency” review. Under the “substantial evidence” standard, the Court only inquires whether the agency could have reasonably made its decision as opposed to correctly made the decision given relevant evidence.
On March 23, 2016, the Federal Circuit in MAG Aerospace Indus., Inc. v. B/E Aerospace, Inc., Nos. 2015-1370, -1426, upheld a decision concerning U.S. patents directed to vacuum toilets found on commercial aircraft. In its opinion, the Federal Circuit provided guidance on when assignor estoppel may prevent an accused infringer from challenging a patent’s validity and enforceability.
MAG Aerospace Industries, LLC (“MAG”) had sued B/E Aerospace (“B/E”) alleging infringement of patents for “technology that facilitates maintenance and service of vacuum toilets and minimizes vehicles downtime through the use of toilet components that are ‘line replaceable units.’” The inventor of the patents at issue, who currently works for B/E, had assigned the patents-in-suit to his previous employer, who had in turn assigned them to MAG. Based on these facts, the United States District Court for the Central District of California granted summary judgment that the inventor was in privity with B/E and that assignor estoppel thus barred B/E from attacking the validity of the patents. The district court also granted B/E’s motion for summary judgment of non-infringement on all patents.
MAG appealed the summary judgment finding, and B/E appealed the finding of assignor estoppel. After addressing (and affirming) the district court’s non-infringement judgment, the Federal Circuit provided a helpful summary and analysis of the doctrine of “assignor estoppel,” ultimately upholding the district court’s application of assignor estoppel to B/E’s invalidity defenses.
On April 22, 2016, a three judge panel of the United States Court of Appeals for the Federal Circuit, consisting of Judges Prost, Dyk and O’Malley, affirmed a district court’s decision to dismiss as moot a patent case involving only cancelled claims.
In Target Training Int’l, Ltd. v. Extended DISC North America, Inc., Case Nos. 2015-1873, 2015-1908, Plaintiff Target Training International, Ltd. (“TTI”) accused Extended DISC North America, Inc. (“EDNA”) of infringing U.S. Patent No. 7,249,372 (the “’372 Patent”) directed to processing and distributing reports over a network in response to receiving input from a user.
After the lawsuit commenced, EDNA’s franchisor, Extended DISC International Oy Ltd (“EDI”) requested ex parte reexamination of all the claims (1-11) of the ’372 Patent. The U.S. Patent and Trademark Office (“USPTO”) granted the request and the litigation was ultimately stayed pending the resolution of the reexamination. Before the stay was entered, however, TTI had served its preliminary infringement contentions asserting claims 1, 2 and 5-11 of the ’372 Patent against EDNA.
In almost every U.S. patent suit, the patentee’s counsel considers how the case could have been facilitated had the patent at issue been drafted and prosecuted differently. These considerations demonstrate that patents should be drafted and prosecuted with an eye toward the possibility of litigation. There have been several landmark decisions in patent cases that directly impact patent prosecution. This article analyzes some of those decisions in chronological order to provide suggestions for a patent prosecutor in drafting or prosecuting a patent application.
- The term “invention” should be cautiously used in the description section of the specification and during prosecution.
The implementation protected by a patent is set forth in the claims. Prosecutors have traditionally used the term “invention” in the specification and during prosecution to highlight aspects of the claimed implementation. In 2007, the Federal Circuit, however, noted in Verizon v. Vonage that “[w]hen a patent … describes the features of the present invention as a whole, this description limits the scope of the invention.”
As the scope of the patent is well understood to be defined by the claims, this Federal Circuit ruling indicates that the use of the term “invention,” even when used in the specification or during prosecution, can narrow the scope of the claims. To avoid the issue of whether each disclosed “invention” limits the claims during a possible infringement suit, prosecutors should typically avoid use of the tem “invention” throughout drafting and prosecution.
On March 31, 2016, in a blow to the software and entertainment industries, the Federal Circuit denied the International Trade Commission’s (“ITC”) request for a rehearing en banc of the Federal Circuit’s November 10, 2015 decision in ClearCorrect Operating, LLC v. ITC, in which the Federal Circuit found that the ITC’s jurisdiction was limited to “material things” and did not include the ability to bar digital imports. No. 2014-1527, Slip Op. at 3 (Fed. Cir. Nov. 10, 2015).
Align Technology instituted an ITC investigation in April 2012 claiming that Respondents ClearCorrect Pakistan and ClearCorrect Operating LLC infringed patents relating to technology for repositioning teeth. ClearCorrect made models of the U.S. patients’ teeth which were then scanned and converted into digital data sets, which were then transmitted to Pakistan. In Pakistan the data sets were manipulated and adjusted data sets were sent back to ClearCorrect in the United States. No physical articles were imported – only a digital data set. In April 2014, the ITC found that ClearCorrect infringed the patents, and issued exclusion and cease and desist orders barring ClearCorrect from importing the data sets.
The case was appealed to the Federal Circuit, and (as we previously discussed here) the panel overturned the Commission’s decision that it had jurisdiction to exclude digital transmissions and items imported digitally. The ITC then petitioned for an en banc rehearing of the case.
The U.S. Patent and Trademark Office (USPTO) allows a Request for Continued Examination (RCE) to be filed with a request to suspend processing of the RCE for up to 3 months, in accordance with 37 CFR 1.103(c). The suspension request is submitted merely by checking a box on the USPTO’s standard RCE form, indicating a desired delay of 1, 2, or 3 months, and paying the required processing fee. Prolonging prosecution is ordinarily undesirable, so why would an applicant want to purposely delay examination after the filing of an RCE? This article explores four possible reasons.
- Waiting for data: Clinical or other testing data may not be available when an RCE is due for filing but may be expected to become available within 3 months of the due date. Suspending RCE processing can buy time for the data to be gathered and submitted to the USPTO in a supplemental response or Rule 132 Declaration to traverse a claim rejection or objection. Without a request to suspend processing, the examiner may proceed with examination in the meantime without the benefit of the applicant’s data.
- Updates to the law: If a court decision or USPTO guidelines may be issued shortly after the due date for filing an RCE, requesting a delay in examination may improve the quality of prosecution by allowing enough time for the decision or guidelines to be available to the examiner and applicant. This strategy may be particularly useful when faced with a rejection dealing with an evolving or uncertain area of law, such as the current state of 101 statutory subject matter law.
This week, in Samsung Electronics Co. v. Apple Inc., No. 15-777, the Supreme Court granted Samsung’s petition for certiorari and agreed to hear the case about Apple’s smartphone design patents in its upcoming term. This will be the first time in over a century that the Supreme Court will hear a design patent case, the most recent case being Dunlap v. Schofield, 152 U.S. 244 (1894), involving certain rugs bearing a patented design. The Supreme Court’s decision in Samsung v. Apple has the potential to cause a significant shift in the law of damages, reigning in the potential amount of damages for successful patent-owners. The only question on which the Court granted review is:
Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?
On Friday, March 18, the Court of Appeals for the Federal Circuit affirmed two District of Delaware rulings that non-resident defendant generic ANDA filer, Mylan, is subject to personal jurisdiction in two Hatch-Waxman suits filed in the state. (See Acorda Therapeutics Inc. v. Mylan Pharmaceuticals Inc., No. 14‐935‐LPS (D. Del. Jan. 14, 2015); AstraZeneca AB v. Mylan Pharmaceuticals Inc., No. 14‐696‐GMS (D. Del. Nov. 5, 2014). For coverage of the oral argument in these appeals, see our prior blog post.) The Federal Circuit found that specific personal jurisdiction exists over Mylan in Delaware because Mylan’s ANDA filings reliably indicate its intent to engage in actions that will harm plaintiffs’ patent rights in the jurisdiction. The court did not reach the issue on appeal of whether Mylan’s compliance with Delaware’s registration statute established consent to general personal jurisdiction in the state, an issue on which the lower court opinions split. However, Judge Kathleen M. O’Malley, concurring in the majority’s judgement, would also have found Mylan consented to general personal jurisdiction in light of Delaware’s interpretation of its registration statute.
Filing an ANDA Satisfies the Minimum Contacts Requirement of Specific Personal Jurisdiction
The court held that “the particular actions Mylan has already taken–its ANDA filings–for the purpose of engaging in that injury-causing and allegedly wrongful marketing conduct in Delaware” satisfy the minimum contacts with Delaware required to establish specific personal jurisdiction. The court began by observing that, if Mylan had already begun the generic drug marketing activities for which it seeks permission by filing an ANDA, “there is no doubt that it could be sued for infringement in Delaware,” and elsewhere that it seeks to market the generic ANDA products. Mylan’s ANDA filings, in turn, are “formal acts that reliably indicate plans to engage in” that same infringing activity. Thus, the ANDA filings, like the contemplated marketing acts they seek approval for, establish personal jurisdiction over Mylan in Delaware.
The Federal Circuit rejected an attempt by accused infringers of U.S. intellectual property rights to have claims litigated in a foreign country in Halo Creative & Design Ltd. v. Comptoir Des Indes, Inc., No. 15-1375 (Fed. Cir. Mar. 14, 2016). The unanimous panel decision expressed a strong preference for U.S. courts over foreign courts to resolve disputes over U.S. IP infringement, particularly where the alleged infringing acts occurred in the United States.
Plaintiff Halo, a Hong Kong company, sued a Canadian company and a Canadian resident in federal district court for infringement of U.S. design patents, U.S. trademark rights, and U.S. copyrights, all related to Halo’s furniture designs. The district court dismissed the case on forum non conveniens grounds, finding the defendants’ home country of Canada a “superior forum” to resolve the dispute.