Photo of Monique Winters Macek

Monique Macek is an Associate based in the firm’s San Diego office. Her practice focuses on medical devices, systems, and methods. She has participated in all aspects of patent applications and has collaborated on patent strategy development and analysis. Earlier in her career, as a bio-mechanical engineer, Monique focused on medical devices such as cardiac ablation catheters, eye sensor technology, insulin pumps, and orthopedic surgical tools and implants. She is registered to practice before the US Patent Trademark Office.

When trying to overcome an obviousness rejection of a patent claim, an argument that two or more cited references cannot be combined may be used.  For example, it can be argued that the combination is improper because the modification of a reference completely changes its “fundamental principle of operation.”  However, it can be difficult to overcome obviousness rejections using this argument, which is highlighted in a recent Federal Circuit decision in University of Maryland v. Presens.  In this case, the court affirmed an inter partes reexamination (IPR) decision of the Patent Trial and Appeal Board (PTAB) that affirmed the examiner’s rejection of claims in U.S. Patent 6,673,532 (“’532 patent) as obvious despite the plaintiff’s “changes the principle of operation” argument. Although the decision is non-precedential, it provides helpful information to patent practitioners and litigators for arguing obviousness based on changes to a reference’s fundamental principle of operation.

The ’532 patent discloses an optical method of monitoring various cell culture parameters. Claim 1 of the ’532 patent, deemed as representative, reads as follows: Continue Reading Overcoming Obviousness Rejections: Arguing Changes to Fundamental Principle of Operation

USPTO SealOn April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings.  The effort includes analyzing five years’ worth of historical data covering PTAB proceedings and user experiences.  The USPTO hopes to use this data analysis to ensure the proceedings are as “effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of patentability of patent claims after they issue.”

Continue Reading USPTO Launches PTAB Procedural Reform Initiative

On January 16, 2017, the European Unified Patent Court (UPC) announced that a Preparatory Committee is currently working under an assumption that the Provisional Application Phase (PAP) of the UPC will presumably begin in May 2017, and the UPC can become operational in December 2017.  Commencement of the PAP will establish an organization that will include the start of operation of the UPC’s formal governing bodies. It will also allow judicial interviews to begin and appointments to be eventually confirmed. For an in-depth explanation of the UPC, please consult Mintz’s 2016 alert on the UPC and the Agreement on the Unified Patent Court (UPCA).

Continue Reading European Unified Patent Court Roll-Out Planned For 2017

The Patent Trial and Appeal Board (PTAB) recently designated Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016), as precedential.  In this decision the Board clarified how to interpret method and system claims that include conditional language.  Importantly, this decision highlights that these two claim types are not necessarily interpreted the same way.

The Board indicated that if a condition precedent in a method claim is not met, the conditional steps recited in the claim are not required to be performed.  As such, the broadest reasonable interpretation of such a method claim does not include the conditional steps.  Therefore, the conditional steps in a method need not be found in the prior art in order to deny patentability of a method claim.  In contrast, if the same steps are part of a system claim having a programmed processor performing the steps, the system claim is interpreted more narrowly to include all of the steps.  The Board reasoned that since there is a structure (i.e., a processor) tied to the steps in a system claim, the structure is present in the system regardless of whether the condition is met and the conditional function is actually performed.

Continue Reading Analyzing Patent Claims Having Conditional Language – the PTAB Provides Clarity

shutterstock_225669484An invention cannot be patented if it was ready for patenting and was subject to a commercial offer for sale more than one year before the application was filed. This so-called “on-sale bar” can also be used to invalidate a patent. On July 11, 2016, the Federal Circuit in The Medicines Co. v. Hospira Inc. addressed what types of sales constitute an on-sale bar and ruled specifically that a barring sale must include a transaction that “bears the general hallmarks of a sale.”

The Court found that The Medicines Co.’s patent covering methods of making a drug, Angiomax, was not invalid due to The Medicines Co.’s transactions with a supplier, Ben Venue Laboratories, more than a year before filing for the patent. The transactions included The Medicines Co. hiring Ben Venue Laboratories more than one year before it filed its patent applications to prepare three batches of Angiomax using the patented method to ensure it met requirements set by the FDA. The Medicines Co. did not actually sell Angiomax to the public until some time later.

Continue Reading What Type of Sale Constitutes an On-Sale Bar?

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):

  1.  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.

Continue Reading Not Obvious to Combine for a Person of Ordinary Skill in the Art (POSITA)

On June 23, 2015, the Federal Circuit affirmed the finding of the U.S. District Court for the Northern District of California (“District Court”) dismissing the complaints in four related actions for infringement of U.S. Patent No. 7,707,505 (the ‘505 Patent) on the ground of patent ineligibility under 35 U.S.C. §101.  See Internet Patents Corp. v. Gen. Auto. Ins. Servs., Inc., 29 F. Supp. 3d 1264 (N.D. Cal. 2013) (“Dist. Ct. Op.”). Continue Reading Federal Circuit Affirms Dismissal on Grounds of Patent Ineligibility