On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing follow-on inter partes review (IPR) petitions. In response to five concurrent requests for rehearing, a panel of seven administrative patent judges reviewed the factors articulated in NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, Paper 9 (PTAB May 4, 2016) and, in doing so, denied all five requests. While acknowledging that multiple petitions challenging the same patent may be permitted based on specific facts of each case, the Board explained that follow-on petitions run the risk of undue inequities and prejudices to patent owners, and petitioner’s submission of multiple, staggered petitions constituted “an inefficient use of the inter partes review process and the Board’s resources.”
Inna Dahlin, PhD is an Associate based in the firm’s Boston office and represents clients on a broad range of intellectual property issues. Her clients are primarily engaged in consumer electronics, software, medical devices and systems, bioinformatics, imaging, networking technologies, semiconductors, biotechnology, speech recognition, and defense. Her practice includes patent preparation and prosecution, drafting infringement and validity opinions, conducting patentability and freedom to operate studies, and providing strategic portfolio counseling.
This post is a follow-up to our prior post To Seek Design Protection or Not, That is the Question! where we discuss situations where it is worth considering seeking a design patent. Here we highlight takeaways from a USPTO Inventor Info Webinar (the “Webinar”) held on September 21, 2017, that focused on design patent drawing requirements, as well as on other issues on design patents. The Webinar’s slides can be found here.
As a brief recap, 35 U.S.C. § 171 states that “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.” Thus, the statute requires that a design be for an article (i.e., rather than a disembodied design, a design per se) and that the article have one or both of some surface ornamentation and configuration that differs this article from others.
While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection. This blog discusses the benefits of design patent protection, and what is required to obtain a design patent.
There are two predominate types of patents: 1) utility patents that protect “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” and 2) design patents that protect “any new, original and ornamental design for an article of manufacture.” While both types of patents provide valuable IP protection, utility patent applications outnumber design patent applications by nearly 7 to 1 (e.g., 288,335 utility patent applications were filed in the U.S. in 2015 vs. 39,097 design patent applications).
When the Patent Trial and Appeal Board issues a final written decision finding against an IPR Petitioner, can that Petitioner necessarily appeal that adverse decision? In a case of first impression, the Federal Circuit recently answered “no.”
In Phigenix, Inc. v. ImmunoGen, Inc., the Federal Circuit held that Petitioner Phigenix lacked standing to appeal the PTAB’s final IPR decision in favor of Patent Owner ImmunoGen because Phigenix failed to prove that there was an actual “case or controversy” between it and ImmunoGen concerning the challenged patent. According to the Federal Circuit, although such a “case or controversy” may not be necessary for Phigenix to appear in an IPR proceeding before an administrative agency like PTAB, it remains a requirement for Phigenix to seek appellate review in a federal court.
The New Year brings excitement and anticipation of changes for the best. Some of the pending patent cases provide us with ample opportunity to expect something new and, if not always very desirable to everybody, at least different. In this post, we highlight several cases that present interesting issues and that we anticipate may provide for new and important developments in the patent law this year.
The Federal Circuit yesterday issued a decision that will make many patent owners and IP practitioners breathe easier. In Immersion Corp. v. HTC Corp. the Court reversed a district court holding that a continuation application filed on the same day that its parent application issued is not entitled to the parent priority date. It is now without question that waiting to file a continuation, continuation-in-part, or divisional application until the day that the parent application issues as a patent will still result in the continuing application being accorded the earlier priority date under 35 U.S.C. § 120.
In the instant case, Immersion Corporation (“Immersion”) filed a patent application related to touch control devices for a computer on January 19, 2000, which issued as U.S. Patent No. 6,429,846 on August 6, 2002. On that same day, August 6, 2002, Immersion filed another application having the same written description as the ‘846 patent, which ultimately issued as U.S. Patent No. 7,148,875. The parties do not dispute priority chain stemming from the ‘975 patent for several other patents asserted by Immersion against HTC. A disputed link in the priority chain was the one between the ‘846 patent and the application that matured into the ‘975 patent. If the ‘975 patent was not entitled to the earlier priority date of the ‘846 patent, the ‘975 patent would be invalid based on Immersion’s own international application publication.
Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. After an appellant’s filing of a PTAB appeal brief, an examiner may respond with an examiner’s answer. 37 C.F.R. §§ 41.37, 41.39. The appellant then has a choice to allow the appeal to proceed to the PTAB or to first respond to the examiner’s answer in a reply brief. 37 CFR § 41.41. The examiner is entitled to introduce new grounds of rejection in the examiner’s answer, which the appellant may rebut in the reply brief. The USPTO recently issued guidance, “Responding to New Grounds of Rejection in an Examiner’s Answer,” which we summarize below in addition to providing other related useful tips.
Continue Reading Tips for Responding to New Grounds of Rejection in an Examiner’s Answer
Last Friday the Patent Trial and Appeal Board (PTAB) denied four Sandoz Inc. petitions for instituting inter partes review (IPR) of U.S. 8,455,524 (IPR2015-00005), U.S. 7,612,102 (IPR2015-00006), U.S. 7,659,290 (IPR2015-00007), and U.S. 7,659,291 B2 (IPR2015-00008) (referred to herein as the “EKR Patents”). The EKR Patents are assigned to EKR Therapeutics, a wholly owned subsidiary of Chiesi USA, Inc. The PTAB concluded that the “Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim.” See, e.g., IPR2015-00005 at 2. The PTAB reached this conclusion based, in part, on Sandoz’s failure to “present sufficient evidence” in support of its arguments that the challenged claim elements in the four patents were inherent. Continue Reading Petitioners Must Present Sufficient Evidence to Establish Inherency
U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published. Thus, it is a good time for applicants to consider filing U.S. patent applications that can be patentable over applications that otherwise would be considered prior art. The AIA provides for such a prior art exception in 35 U.S.C. § 102, although it comes with drawbacks and risks that applicants may generally wish to avoid, as discussed further below.
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 C.D. Cal. Swims Against the Tide of Software Patent Ineligibility in Caltech v Hughes