Posts in Federal Circuit

Life Sciences Patents After American Axle — Grave Danger or Temporary Uncertainty?

The Federal Circuit’s denial of en banc rehearing and the Supreme Court’s denial of certiorari review mean the decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020), is the latest word on subject-matter eligibility under 35 U.S.C. § 101. In American Axle, the Federal Circuit applied the Supreme Court’s two-part Alice/Mayo test to hold a method for manufacturing driveline propeller shafts with liners designed to attenuate vibrations invalid as directed to a use of a natural law. The Federal Circuit characterized the claims as simply “[c]laiming a result” without “limiting the claim to particular methods of achieving the result. . . .”  Id. at 1295. The method claims were directed to nonpatentable subject matter because, even though neither the claims nor the specification explicitly referenced a natural law, the method steps required the application of a natural law, “and nothing more.”  Id. at 1297. Although the panel in American Axle stressed its decision was consistent with Supreme Court and Federal Circuit precedent, see 967 F.3d 1295, 1296 (“Our cases as well have consistently rejected such claims as unpatentable.”), its rationale, literally applied, jeopardizes broad categories of patent claims that have traditionally been considered patent-eligible subject matter.

CAFC Affirms Merck’s Win at PTAB over Mylan Challenge to Diabetes Treatment Claims

In its third precedential patent opinion this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) earlier today upheld a Patent Trial and Appeal Board (PTAB) decision finding that Mylan Pharmaceuticals, Inc. failed to show that certain claims of Merck Sharp & Dohme Corp.’s patent for a Type 2 Diabetes treatment were anticipated or would have been obvious over the cited prior art. Judge Lourie authored the opinion.

Federal Circuit Clarifies Alice Step Two Analysis in Reversal of District Court’s Rule 12 Dismissal

The U.S. Court of Appeals for the Federal Circuit (CAFC), with Chief Judge Moore writing, today reversed and remanded a district court’s dismissal of an amended complaint in a case where the district court found a patent directed to a method of distributing large video files via a peer-to-peer (P2P) network patent ineligible under Section 101. While the CAFC did not rule on whether the claims are patent eligible, it held that “there are plausible factual allegations that the claims include inventive concepts, and that is enough to preclude dismissal” on a Rule 12(b)(6) motion.

CAFC Says PTAB Got it Wrong in Mixed Ruling on Food Slicer Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday issued a precedential decision, in part holding that the Patent Trial and Appeal Board (PTAB) violated the Administrative Procedure Act (APA) by failing to “fully and particularly set out the bases upon which it reached its decision” to render obvious certain claims of Provisur Technologies’ patent. The CAFC also said the Board erred in its analysis finding two of the claims not unpatentable. The opinion was authored by Judge Prost. The case relates to claims 1-14 of Provisur’s U.S. Patent No. 6,997,089 for “a method and system for ‘classifying slices or a portion cut from a food product according to an optical image of the slice,’” according to the CAFC opinion. The PTAB held that Weber, Inc. had proved unpatentable as obvious claims 1–10, 13, and 14 but not claims 11 or 12. Provisur appealed the unpatentability determinations and Weber cross-appealed the finding that claims 11 and 12 were not unpatentable.

Jump Rope Company Asks High Court to Weigh in on CAFC Approach to Collateral Estoppel for PTAB Invalidations

The inventor of a novel jump rope system (the Revolution Rope), Molly Metz, is petitioning the U.S. Supreme Court through her company, Jump Rope Systems, LLC, to seek clarification of the collateral estoppel doctrine as applied by the U.S. Court of Appeals for the Federal Circuit (CAFC) to bar a patent infringement suit in district court where the CAFC has affirmed a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Jump Rope Systems is arguing that the CAFC’s decision in  XY, LLC v. Trans Ova Genetics, L.C. (2018) conflicts with the Supreme Court decisions in B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138 (2015); Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014); and Grogan v. Garner, 498 U.S. 279 (1991).

Review Not Warranted: SG Tells SCOTUS to Scrap Amgen’s Case on Enablement Test for Biotech Patents

The United States Solicitor General (SG) on Wednesday accepted the U.S. Supreme Court’s invitation to file an amicus brief regarding Amgen’s petition for certiorari in its case against Sanofi. Amgen is seeking review of the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) decision invalidating antibody patent claims based on a lack of enablement for genus claims. The High Court invited the SG to file a brief in April and, on September 21, the SG recommended that the Court deny the petition and said Amgen’s argument that the CAFC “erred by treating enablement as a question of law and by examining the full scope of the claims in assessing whether they are fully enabled…. lack merit.”

Exploring the CAFC’s Ridiculous Written Description Standard for Life Sciences Patents

The written description requirement is really the backbone of the quid pro quo between the public and the patent applicant. In exchange for information about an invention, society is willing to grant the applicant a patent, which conveys exclusive rights for a limited period of time to what is claimed, not described. But the description provided in the specification must demonstration that the applicant really has an invention in the first place and what the boundaries of that invention are—this is the written description requirement in lay terms.

Novartis to Appeal CAFC’s ‘Unprecedented’ U-Turn in Ruling on Multiple Sclerosis Drug Claims to SCOTUS

Novartis Pharmaceuticals announced today that it will appeal the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) June decision invalidating its patent for a dosing regimen for its multiple sclerosis drug Gilenya to the U.S. Supreme Court, after the CAFC denied its request to rehear the case. The CAFC in June vacated a different three-judge panel’s January opinion upholding Novartis’ U.S. Patent No. 9,187,405. In the original ruling, Chief Judge Moore had dissented from the majority; in the rehearing, Moore authored the opinion vacating the January decision, with Judge Linn dissenting.

Amicus Backs Request for CAFC to Nix TTAB Refusal, Invalidate USPTO Domicile Address Requirement

In an amicus brief filed with the U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, September 16, David E. Boundy is backing Chestek PLLC’s appeal asking the CAFC to vacate a Trademark Trial and Appeal Board (TTAB) judgment that upheld an examiner’s refusal of the mark CHESTEK LEGAL for failure to comply with the U.S. Patent and Trademark Office’s (USPTO’s) “domicile address requirement.” This requirement originates from the USPTO’s proposed rule issued on February 15, 2019, and subsequent final rule published on July 2, 2019. The changes were ostensibly intended to crack down on fraudulent trademark filings, which have posed a significant problem for the Office in recent years, by requiring that foreign applicants engage U.S. counsel.

Federal Circuit: PTAB Denial of Motion to Terminate in Arthrex Remand Where SCOTUS Vacated CAFC is Proper

Following a remand on Appointments Clause issues under United States v. Arthrex, Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a Patent Trial and Appeal Board (PTAB) ruling finding all challenged claims of Polaris Innovations Limited’s patents unpatentable and denying Polaris’ motions to terminate. The decision is precedential and authored by Judge Stoll. Polaris’ U.S. Patent Nos. 6,532,505 and 7,405,993 are directed to computer memory. In May 2016, Polaris filed suit against NVIDIA Corporation for infringement of certain claims of the two patents. NVIDIA then filed inter partes review (IPR) petitions challenging some claims as invalid. A final written decision on the petition involving the ‘993 patent issued on December 19, 2018, finding all challenged claims unpatentable. A final written decision on the petition involving the ‘505 patent issued on December 4, 2018, likewise finding all challenged claims unpatentable.

CAFC Affirms District Court Analysis of Standard for Granting Patent Term Adjustment

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued a precedential decision affirming a Virginia district court’s grant of summary judgment for the U.S. Patent and Trademark Office (USPTO) with respect to SawStop Holding LLC’s challenge of the denial of patent term adjustment (PTA) for two of its patents. The CAFC agreed with the district court that PTA was not warranted because the claim at hand did not issue under a decision that reversed an adverse determination of patentability. Instead, “‘the claim remain[ed] under rejection after the Board decision’ and ‘the patent only issue[d] after further prosecution’ and amendment.”

Amici Cite Relevance of GAO Report, Empirical Data, to Back New Vision’s Claim that AIA Review Structure Violates Due Process

Inventor organization US Inventor (USI) and Ron Katznelson—the author of a widely cited study detailing the link between Patent Trial and Appeal Board (PTAB) judges’ decisions and their compensation—have filed separate amicus briefs supporting New Vision Gaming and Development, Inc. in its most recent appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC). New Vision is arguing that America Invents Act (AIA) trials violate the Due Process Clause and that the recent Government Accountability Office (GAO) Report documenting how U.S. Patent and Trademark Office (USPTO) and PTAB management control influences Administrative Patent Judges’ (APJ) decision making bolsters its previous arguments and warrants a new appeal. While USI’s brief expands upon this argument, Katznelson’s provides both old and new data that he says proves a “structural bias” exists.

The Path Forward from American Axle: Discussing Legislative and Agency Rulemaking Fixes to Section 101

Last year, there was a great amount of confidence among those in intellectual property circles that the U.S. Supreme Court might finally provide some much-needed clarity to Section 101 subject matter patentability after a petition for writ of certiorari was filed in American Axle v. Neapco Holdings. On the second day of IPWatchdog LIVE 2022, panelists at the breakout session titled “Where Do We Go From Here on Patent Eligibility After American Axle” discussed what opportunities were left for fixing patent eligibility law after the Supreme Court denied cert in that case.

New Vision Gaming Cites GAO Report to Bolster PTAB Bias Arguments

On September 6, New Vision Gaming and Development Inc. (New Vision) filed a brief with the U.S. Court of Appeals for the Federal Circuit (CAFC) on return from remand after the U.S. Patent and Trademark Office (USPTO) denied its request for Director Review. The case relates to a Patent Trial and Appeal Board (PTAB) decision canceling all claims of U.S. Patent No. 7,325,806 (‘806 patent) and was previously appealed to the CAFC. But since the last appeal, a report demonstrating evidence that PTAB judges are influenced by U.S. Patent and Trademark Office (USPTO) leadership gives new weight to New Vision’s arguments, says the brief.

CAFC Tells Gil Hyatt ‘GATT Bubble’ Application Properly Subject to Restriction Requirement

Inventor Gilbert Hyatt, who has been embroiled in litigation with the United States Patent and Trademark Office (USPTO) for decades, lost his latest case at the U.S. Court of Appeals for the Federal Circuit (CAFC) when the court ruled today that an examiner’s restriction requirement was permitted under 37 C.F.R. § 1.129 (“Rule 129”). The case relates to Hyatt’s U.S. Patent Application No. 08/435,938, which was filed on May 5, 1995, and falls within the so-called “GATT Bubble.” The GATT Bubble is the term applied to patent applications filed but not yet granted before the Uruguay Round Agreements Act (URAA), which amended the U.S. patent term to 20 years from the effective filing date, took effect on June 8, 1995.