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Posts Tagged ‘ CAFC ’

Business Methods (and Software) are Still Patentable!

Posted: Tuesday, Aug 28, 2012 @ 7:25 am | Written by Raymond Millien | 4 comments
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Posted in: Business Methods, Guest Contributors, IP News, IPWatchdog.com Articles, Patentability, Patents, Raymond Millien, Software

For at least the past 15 years, the legal, technical and academic communities have been debating the patentability of business methods and software. Despite much negative press ink, talk, legislative activity and court opinions, the answer with respect to patent eligibility is still a resounding and categorical “yes.” That’s the easy part. What types of business methods and software exactly are patentable? That is the difficult question to answer.

What is Patentable?

U.S. Patent Law recognizes four broad categories of inventions eligible for patent protection: processes; machines; article of manufacture; and compositions of matter. 35 U.S.C. Section 101. Despite the oft-quoted recognition that the patent laws were made to cover “anything under the sun that is made by man,” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (quoting S. Rep. No. 1979, 82d Cong. 2d. Sess., 5 (1952)), the U.S. Supreme Court, has long recognized that there are three exceptions to these four broad patent-eligibility categories: laws of nature; physical phenomena; and abstract ideas. Id. These three exceptions are necessary because “[s]uch discoveries are manifestations of … nature, free to all men and reserved exclusively to none.” Id. (citations omitted). Yet, “a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm,” and “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).



Tafas v. Dudas/Doll – 5 Years Later But Still Very Pertinent

Posted: Tuesday, Aug 21, 2012 @ 7:20 am | Written by Steven Moore & Elizabeth Swedock | 1 Comment »
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Posted in: Guest Contributors, IP News, IPWatchdog.com Articles, Patents, USPTO

Dr. Triantafyllos Tafas at Jefferson Medal Award Dinner, June 4, 2010.

On April Fool’s day 2008 the entire patent field released a great sigh of relief (and wondered if the reports of success were only a joke).  On that day Dr. Triantafyllos Tafas and GlaxoSmithKline (“GSK”) succeeded in enjoining the U.S. Patent Office from implementing its proposed continuation and claim restriction rules, “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications” (the “Final Rules”), which sought to revise the rules of practice in patent cases relating, in part, to the filing of continuing applications and requests for continued examination.

Although such Final Rules were widely criticized by most companies in the United States, a sole individual, Dr. Triantafyllos Tafas, a co-inventor of a computerized automated microscope, stood alone against the Rules package for nearly three months against the might of the USPTO.  Dr. Tafas filed suit because he truly believed the U.S. patent system was being manipulated by a few large entities to the significant detriment of research-intensive entities such as emerging companies, universities, and research institutes, particularly those in the chemical, bioengineering, pharmaceutical, and biotech fields.  Dr. Tafas’ beliefs grew from his experience attempting to start his company in Europe where he found few investors willing to invest in small companies whose only major asset was a patent portfolio.  However, he found investors in the U.S. to be much more respectful of U.S. patents and willing to invest in companies with a good patent portfolio, irrespective of whether they were owned by a large multinational or the new kid on the block.  This cemented Dr. Tafas’ belief in the importance of the U.S. patent system.



Flashback Seagate: Indifference to Patent Rights of Innovators

Posted: Monday, Aug 20, 2012 @ 7:20 am | Written by Gene Quinn | 4 comments
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Posted in: Federal Circuit, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Litigation, Patents

Five years ago today, on Monday, August 20, 2007, while many of us were otherwise preoccupied with the impending doom of the claims and continuations rules promulgated by the Patent Office, the United States Court of Appeals for the Federal Circuit unceremoniously changed the law as it applies to the awarding of willful damages. Sitting en banc in In re Seagate Technology, LLC, the majority of the Court determined that the negligence standard for determining whether to award enhanced damages for willful infringement is not the appropriate standard, but rather that a reckless standard should be and now is the law of the land.

Curiously, the Federal Circuit announced this significant change to the law relating to willfulness in a case that related to a discovery dispute.  Seagate Technology, LLC petitioned the Federal Circuit for a writ of mandamus directing the United States District Court for the Southern District of New York to vacate Orders compelling disclosure of materials and testimony that Seagate claimed was covered by the attorney-client privilege and work product protection.  The Court, per Judge Mayer, would say that this case requires confrontation “the willfulness scheme and its functional relationship to the attorney-client privilege and work product protection.”



AMP v. USPTO Remand: Déjà Vu as Federal Circuit Majority Reaffirms Myriad’s Isolated DNA Sequences Are Patent-Eligible*

Posted: Friday, Aug 17, 2012 @ 3:03 pm | Written by Eric Guttag | 11 comments
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Posted in: Biotechnology, Eric Guttag, Federal Circuit, Guest Contributors, IP News, IPWatchdog.com Articles, Patentability, Patents

When the Supreme Court remanded the Federal Circuit’s original panel decision in AMP v. USPTO for reconsideration in view of Mayo Collaborative Services v. Prometheus Laboratories, Inc., I said that nothing would change in that remand.  In particular, I predicted that the same two-to-one majority from that Federal Circuit panel (Judges Lourie and Moore in the majority, Judge Bryson in dissent) would again rule that the claimed isolated DNA sequences were patent-eligible under 35 U.S.C. § 101.  My primary reason for my confidence in that prediction was that the Supreme Court’s 1980 decision in Diamond v. Chakrabarty (man-made living organism is patent-eligible) would control on that claimed subject matter, not Mayo Collaborative Services.  See Chakrabarty Controls on Isolated DNA Sequences, not Mayo*.

So guess what happened in the AMP remand of?  As I predicted, simply “déjà vu”:  the same two-to-one majority ruling for essentially the same reasons, as well as confirming that Chakrabarty (not Mayo Collaborative Services) controlled on the patent-eligibility of the claimed isolated DNA sequences.  For the full decision see AMP v. USPTO II (August 16, 2012).



Momenta Pharmaceuticals: The Hatch-Waxman “Safe Harbor” Widens to Include Post-FDA Approval Activity*

Posted: Tuesday, Aug 7, 2012 @ 10:27 am | Written by Eric Guttag | 5 comments
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Posted in: Eric Guttag, Federal Circuit, Guest Contributors, IP News, IPWatchdog.com Articles, Patents, Pharmaceutical

A key provision of the Hatch-Waxman Act resides in 35 U.S.C. § 271(e)(1) which provides immunity from a patent infringement suit where the testing of the patented invention is for the purpose of securing regulatory approval from the FDA.  Or to use the specific language of 35 U.S.C. § 271(e)(1), there is no patent infringement if the use of the patented invention is “solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs.”

This Hatch-Waxman provision, commonly known as the “safe harbor,” has been construed twice by the Supreme Court, and in an expansive manner to immunize alleged infringing activity.  First, in the 1990 case of Eli Lilly & Co. v. Medtronic, Inc., the Supreme Court ruled that this “safe harbor” applied to medical devices, not just drugs as was originally believed (including by the respective House and Senate floor managers for the Hatch-Waxman Act).  In fact, the basis for the holding in the Medtronic case makes this “safe harbor” essentially applicable to the testing of any patented invention that is for the purpose of securing regulatory approval from the FDA (e.g., food additives, cosmetics, etc.).  See Guttag, “The Ever Expanding ‘Safe Harbor’ of Hatch-Waxman:  The Merck v. Integra Lifesciences Case,” Cincinnati Bar Association Report, page 16 (August 2005).



UK Perspective: Bancorp Services v. Sun Life Assurance

Posted: Friday, Jul 27, 2012 @ 11:28 am | Written by Paul Cole | 2 comments
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Posted in: Business Methods, Federal Circuit, Guest Contributors, IP News, IPWatchdog.com Articles, Patentability, Patents

A new decision of the Federal Circuit (Lourie, Prost and Wallach) concerning a business-method invention — Bancorp Services LLC v. Sun Life Assurance of Canada — was handed down on 26th July and provides a companion case to CLS Bank v Alice.

The inventions described in Bancorp’s US Patents 5,926,792 and 7,249,037 concerned methods, media and systems for administering and tracking the value of life insurance policies. A representative claim reads:

A life insurance policy management system comprising:

a policy generator for generating a life insurance policy including a stable value protected investment with an initial value based on a value of underlying securities of the stable value protected investment;

a fee calculator for calculating fees for members of a management group which manage the life insurance policy;

a credit calculator for calculating credits for the stable value protected investment of the life insurance policy;

an investment calculator for determining an investment value and a value of the underlying securities of the stable value protected investment for the current day;

a policy calculator for calculating a policy value and a policy unit value for the current day;

digital storage for storing the policy unit value for the current day; and

a debitor for removing a value of the fees for members of the management group which manages the life insurance policy.



Bancorp Services: Further Fracturing of the Patent Eligibility Landscape for Business Methods and Systems*

Posted: Friday, Jul 27, 2012 @ 11:15 am | Written by Eric Guttag | 4 comments
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Posted in: Business Methods, Eric Guttag, Federal Circuit, Guest Contributors, IP News, IPWatchdog.com Articles, Patents

Two weeks ago, I wrote about how fractured the Federal Circuit’s patent-eligibility landscape has now become for business methods and systems, as evidenced by the split decision in CLS Bank International v. Alice Corp. Pty. Ltd. See CLS Bank International: A Fractured Landscape of Patent Eligibility for Business Methods and Systems*. In CLS Bank International, I observed that each decision by the Federal Circuit on patent-eligibility under 35 U.S.C. § 101 “appears to hinge completely on the ‘luck of the draw’ as to which Federal Circuit judges make up the respective panel.” The latest ruling by a Federal Circuit panel in Bancorp Services, L.L.C. v. Sun Life Assurance Company of Canada (U.S.) reinforces that view and is yet more evidence of the further fracturing of the patent-eligibility landscape for business methods and systems.

The Bancorp Services case involved two patents, U.S. Pat No. 5,926,792 (the ‘792 patent) and U.S. Pat No. 7,249,037 (the ‘037 patent), relating to methods, systems, and computer-readable media for administering and tracking the value of life insurance policies in separate accounts. Both the ‘792 patent and ‘037 patent share a common patent specification having a priority date going back almost 16 years (September , 1996). Also, this is not the first time the Federal Circuit has grappled with ‘792 patent. There was an earlier 2004 Federal Circuit decision which reversed a grant of summary judgment of invalidity of the ‘792 patent based on “indefiniteness,” as well as a 2008 Federal Circuit decision which vacated a judgment of noninfringement of the ‘792 patent.



The U.S. Government’s Position in ACLU v. Myriad Genetics: Observations on a ‘Waste of Time and Space’

Posted: Monday, Jul 23, 2012 @ 10:33 am | Written by Hans Sauer | 6 comments
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Posted in: Biotechnology, Federal Circuit, Gene Patents, Guest Contributors, IP News, IPWatchdog.com Articles, Patentability, Patents

On Friday, July 20, the Federal Circuit heard oral arguments in the remand of the AMP et al. v. USPTO et al. appeal – the case better known as the Myriad Genetics “gene patent” case. The supplemental briefing in this case, and the oral argument itself, continue to reveal how those with diverse perspectives on DNA patents misunderstand each other. Scientists are making dubious assumptions about the operation of patent law. Patent lawyers are making inaccurate assumptions about how the science works. And those who are neither patent lawyers nor scientists just go by what they’ve been told. The Department of Justice’s (DOJ) supplemental amicus brief and oral argument in this case are a good example of the widening disconnect.

“Kitschy, Not Catchy”

Readers will recall that this is not the first time DOJ appears in this case. Two years ago when the Myriad case first reached the Federal Circuit, DOJ filed an unsolicited brief, replete with hypothetical examples of elemental lithium, cotton, coal, isolated electrons, and other things having nothing to do with molecular biology, siding in part with the American Civil Liberties Union (ACLU), and arguing that Myriad’s claims to BRCA-encoding DNA molecules are patent-ineligible under Section 101.



Federal Circuit Panel Rehears ACLU, Myriad Gene Patent Case

Posted: Sunday, Jul 22, 2012 @ 12:47 pm | Written by Ryan Chirnomas | 8 comments
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Posted in: Federal Circuit, Gene Patents, Guest Contributors, IP News, IPWatchdog.com Articles, Patents

In the immortal words of baseball great Yogi Berra, “It’s déjà vu all over again”.  A little more than a year after they previously heard AMP v. USPTO, the CAFC panel of Judges Lourie, Bryson and Moore have once again taken up the question of whether isolated DNA and related methods are patent eligible subject matter under 35 U.S.C. §101.

To recap, last year, the same panel ruled that the composition claims reciting isolated DNA were patent eligible, with Judges Lourie and Moore supporting patent eligibility and Judge Bryson dissenting.  All three Judges also agreed method claims involving “analyzing” or “comparing” DNA were not patent eligible.  Lastly, all three Judges agreed that a screening claim (claim 20 of the ‘282 patent) was patent eligible.  For a full discussion of last year’s decision (in English and Japanese), please click here.  After the decision, AMP appealed to the Supreme Court, who later vacated the CAFC decision and remanded the case to the CAFC for further consideration in view of their Mayo decision (English summary;Japanese summary).



Obviousness When All Elements Not Present in Prior Art?

Posted: Monday, Jul 16, 2012 @ 3:12 pm | Written by Gene Quinn | 3 comments
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Posted in: Federal Circuit, Gene Quinn, IP News, IPWatchdog.com Articles, Patentability, Patents

Last week I wrote about the petition for en banc rehearing that I recently filed in Plasmart v. Kappos.  See Petition for Rehearing en banc filed in Plasmart v. Kappos and How Much Deference Should the CAFC Give the USPTO?  The case arose from what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. In the reexamination proceeding the patent examiner found claims 20-33 to be patentable.  The Board agreed that claims 20-33 were patentable as not being obvious, but also found claim 1 patentable as well.  Then the Federal Circuit, in a nonprecedential decision, determined that none of the claims were patentable.  That was when I became involved in the case.

The Board recognized multiple characteristics that differentiate the claimed invention in the “674 patent from the prior art combination of Song and Handong.  Among these, the Board specifically determined that the claimed invention possessed a “supporting arm” and that the safety wheels of a resultant combination of Song and Handong would be raised off the ground, unlike what is depicted in the ‘674 patent and recited in the claims.  Still, the panel determined that the claims were invalid.  How is it possible to find an invention obvious when not all of the elements are within the prior art?  This is unfortunately a disturbing trend that has been brought about by a misreading of KSR.