Posts Tagged: "Patentability"

On January 6, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board’s (PTAB) decision that Google failed to prove Koninklijke Philips’ (Philips) U.S. Patent No. RE44,913 (the ‘913 patent) obvious. The patent describes a method for entering primary and secondary characters on the keypad of a device such as a handheld mobile device. After Philips sued Acer, Inc. and other companies for infringement based on devices that use Google operating systems, Google petitioned the PTAB for inter partes review (IPR) of the ‘913 patent and the board found for Philips. Google appealed the Board’s decision to the CAFC, which held that the Philips invention would have been obvious in light of the prior art.

In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the United States Supreme Court discussed legal principles of obviousness in the patent context. Justice Anthony Kennedy wrote for the Court: “Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” This simile, comparing obviousness analysis to the fitting together of pieces of a puzzle, has been referenced and quoted by a number of trial and appellate courts. Expert witnesses have used it in their testimonies. It also appears twice in the current Manual of Patent Examining Procedure (MPEP). With due respect to former Justice Kennedy, may we dispense with this terrible analogy? Although it has at least one redeeming aspect, the puzzle simile does more to confuse than to enlighten.

On December 27, U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Jimmie Reyna authored an opinion affirming the U.S. District Court for the District of Delaware’s finding that the asserted claims of U.S. Patent Nos. 9,265,760 (‘760) and 9,339,499 (‘499), both titled “Treating Pain in Patients with Hepatic Impairment,” held by Persion Pharmaceuticals LLC,  were invalid due to obviousness. The CAFC found no reversible error in the district court’s decision and therefore affirmed.

As the year winds down, IPWatchdog is running a series of articles on the top stories of 2019 and what’s ahead for the year to come. In Europe, all eyes will be on Brexit and its effect on IP rights, the Unwired Planet case, and the Skykick trademark decision, among others. Overall, IP law developments across the EU have offered decidedly more clarity for IP owners than in the United States this year. Here are the highlights:  

Five years after the last of the four decisions in patent eligibility doctrine by the Supreme Court—creating what is now referred to as the Alice-Mayo framework—the impact of this upheaval in the patent system has become even more clear. Ongoing court decisions and new data confirm that the Alice-Mayo framework has wrought an unsettling revolution and sowed uncertainty in what former U.S. Patent and Trademark Office (USPTO) Director David Kappos has referred to as the “the greatest innovation engine the world has ever known.” As policy debates on subject matter eligibility ramped up this past year, it is time to return back to the original dataset created by Robert Sachs and David Kappos that we presented in Turning Gold to Lead and provide an update.

In November, the Federal Circuit issued an opinion reversing the Patent Trial and Appeal Board’s (the PTAB or the Board) decision that claim 8 of IPR Licensing Inc.’s (IPRL) wireless communications patent—U.S. Patent No. 8,380,244 (the ‘244 Patent)—was unpatentable as obvious. The Board’s obviousness finding as to claim 8 was erroneous as it relied on a prior art reference that IPRL could neither anticipate nor rebut. Furthermore, its finding was, for the second time, unsupported by substantial evidence. See In re IPR Licensing, Inc. (Fed Cir. Nov. 22, 2019) (Before Newman, O’Malley, and Taranto, Circuit Judges) (Opinion for the Court, O’Malley, Circuit Judge).

The United States Office of the Solicitor General has filed its brief in response to the Supreme Court’s March request for views in Hikma Pharmaceuticals v. Vanda Pharmaceuticals. The December 6 brief says that the Federal Circuit correctly held the relevant claims of Vanda’s patent-in-suit eligible, and that the case “is not an optimal vehicle for bringing greater clarity” on the topic of Section 101 law since the CAFC arrived at the correct result. Instead, the High Court should grant certiorari in a case like Athena Diagnostics v. Mayo Collaborative Services, in which the order denying en banc rehearing “was accompanied by multiple separate opinions articulating different understandings of Mayo and seeking clarification from this Court.”

Earlier this month, Mallinckrodt succeeded in its inter partes review (IPR) challenge against patent owner Biovie, Inc. (Biovie). The Patent Trial and Appeal Board’s (PTAB’s) final determination held that all claims of Biovie’s U.S. Patent No. 9,655,945 (the ‘945 patent) were unpatentable. The claims of Biovie’s ‘945 patent, directed to administering terlipressin to ascites (abnormal buildup of fluid in the abdomen) patients, were deemed anticipated and/or obvious over the prior art. During the IPR, Biovie attempted to use the recent Federal Circuit decision from OSI Pharmaceuticals v. Apotex (OSI) as a shield to patentability, but the shield was unsuccessful. As such, OSI is unlikely to be a cure-all for pharmaceutical method of treatment claims, in IPR proceedings or otherwise.

During this turbulent era in the history of the U.S. patent system, many enterprises have pursued new models for IP strategy and execution. Others have taken a wait-and-see, business-as-usual tack. Change certainly is no stranger to patent systems around the world. Yet, some principles remain timeless and unassailable no matter how winds may shift. For example, we all can agree that patent filing and maintenance decisions should be sound, protecting the right technologies in the right places for the right reasons. Technology companies face patent-related decision points around seemingly every corner. The consequences of suboptimal decision-making are troubling, including wasteful expenditures, missed strategic opportunities, and diminished shareholder value. Therefore, enterprises should not hesitate to continually reflect on the quality of their patent filing and maintenance decisions, and on the framework that supports them. Cognitive bias—defined as “the collection of faulty ways of thinking … hardwired into the human brain”—can hijack patent decision processes just as it does every other area of human endeavor. As such, it can lead to suboptimal outcomes despite IP stakeholders’ sincere, dedicated participation.

My company, Chestnut Hill Sound Inc. (ChillSound), has been victimized by a U.S. patent system that for nearly a decade has been in a sorry state. Changes wrought by the America Invents Act (AIA) in 2011 and other recent developments cost my company, its investors and inventors millions of dollars. These changes have allowed a large company to reap great profits at our expense. Even more unfortunately, our story is too typical of many other inventors and small companies. Small businesses are the backbone of our economy and need to be cultivated, as they are the most dynamic source of new jobs and competitive products and technologies. There have always been reports of large corporations stealing inventions from small businesses, but it used to be possible via the courts to vindicate the patent rights of owners and obtain ultimate redress.  The AIA—sold by the “efficient infringers” lobby as a measure to protect big business from the expense and nuisance of so-called “patent trolls”—has turned into a weapon of deep-pocketed big businesses that enables them to steal with impunity inventions from small businesses and independent inventors. The AIA brought with it the Patent Trial and Appeal Board (PTAB) and Inter Partes Review (IPRs), a post-grant adversarial proceeding at the United States Patent and Trademark Office (USPTO). As has been amply discussed here on IPWatchdog, the Court of Appeals for the Federal Circuit (CAFC) recently opined that the so-called Administrative Patent Judges (APJs) were unconstitutionally appointed from the beginning. Yet these unconstitutionally appointed APJs continue to kill patents, especially when the patent owner is a small company that has sued a large company for infringement, as was the case with ChillSound.

It is not unusual for there to be unintended consequences in the law or life. A loved one gives you something you don’t really like, but you do such a good job of feigning happiness that it becomes a regular gift. Who knew you could ever have too many “lovely” ties or too much single malt Scotch? Congress is in the process of giving the patent bar some welcome relief on some important issues, but may be throwing in that unwanted gift along with it. The STRONGER Patents Act intends to address the potential for inconsistent rulings between district court cases and inter partes reviews (IPRs). The Act achieves this by expressing a preference for district court rulings and by requiring IPRs to apply the same standards for validity determinations that are used in the district court. This is already the case by USPTO regulation with respect to claim construction, but the Act would make it statutory for both claim construction and validity, and thus not subject to change by the USPTO. While the use of the same standard for validity in both forums will make the rulings more consistent, the statutory preference for the district court over the IPR may have an unintended consequence.

Since the issuance by the United States Supreme Court of its opinion in Alice Corporation Pty Ltd. v. CLS Bank International, 573 U.S. 208, 134 S. Ct. 2347 (2014), the United States Patent and Trademark Office (USPTO) has increased its focus on patent eligibility. As a consequence, patent applicants now receive more claim rejections under 35 U.S.C. § 101, leading to protracted prosecution. While rejections under 35 U.S.C. § 101 are likely unavoidable, patent attorneys and agents can take steps during application preparation and prosecution to minimize the likelihood of such rejections and to successfully rebut such rejections when they do arise.

This week in Other Barks & Bites: the Federal Circuit issues precedential decisions regarding its authority to remand to the PTAB, patent prosecution history estoppel and expert testimony on motivation to combine for obviousness findings; China nominates its choice for WIPO Director while pledging to reach “social satisfaction” on IP protections by 2025; INTA announces Ayala Deutsch as the organization’s new president; the USPTO seeks public comments on information collection related to national security concerns; the TTAB applies Federal Rules of Civil Procedure to discovery requests; Hewlett Packard shares drop after quarterly revenues fall short of analyst expectations; and the PTAB allows additional briefing in a case after the possibility of Administrative Procedure Act violations were raised by a patent owner.

On November 23, the Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board’s (PTAB) ruling in a pair of inter partes review (IPR), which had invalidated all claims of two related patents, U.S. Patent Nos. 9,014,243 and 8,718,158. TQ Delta, the patent owner, appealed the PTAB’s holding that all claims of the challenged patents would have been obvious when viewed in light of the prior art references, including U.S. Patent Nos. 6,144,696 (Shively) and 6,625,219 (Stopler), asserted by Cisco System Inc. and the other appellees (collectively, “Cisco”). Admissibility of evidence, claim construction, and due process were among several other challenges raised by TQ Delta on appeal. Because the PTAB’s determination of obviousness was not supported by substantial evidence, the CAFC reversed.

In Airbus S.A.S v. Firepass Corporation, Appeal 2019-1803 (November 8, 2019), Airbus appealed the Patent Trial and Appeal Board’s (PTAB’s) reversal of the examiner’s rejection of new claims presented by Firepass in an inter partes reexamination of U.S. Patent No. 6,418,752 (“the ‘752 patent”). In particular, the inter partes reexam returned to the Court from a prior appeal (Airbus SAS v. Firepass Corp., 793 F.3d 1376 [Fed. Cir. 2015]) in which the Court vacated and remanded to the Board to consider Airbus’s challenge to the newly presented claims. Airbus disputes the Board’s finding that an asserted prior art reference, which just so happens to be a patent issued to the same inventor as the ‘752 patent, is nonanalogous art.