Posts in Courts

Yesterday the Federal Circuit in an en banc decision held that the portion of Section 2(a) of the Trademark Act, which bars federal registration for trademarks that are disparaging, is unconstitutional under the First Amendment. The government advanced three principal arguments for why §2(a) did not violate the First Amendment: (1) because §2(a) does not “prohibit” or suppress speech at all; (2) because trademark registration is government speech; and (3) because §2(a) merely withholds a government subsidy. The Court rejected all three of the government’s arguments, and in doing so issued holdings on three separate issues that have divided other tribunals.

The Federal Circuit affirmed a patentee’s burden included showing patentability over prior art from the patent’s original prosecution history. Prolitec failed to show that its amended claim would still be patentable (non-obvious) over the combination of an original prior art reference and Benalikhoudja. Accordingly, the Court affirmed the Board’s finding of anticipation and obviousness. In her dissent, Judge Newman argued that the PTAB erred in denying Prolitec’s motion to amend, explaining the motion should have been granted because refusing to enter a proposed amendment that would resolve a dispositive aspect of claim breadth contradicted the America Invents Act.

Section 1071(b)(3) does not expressly or implicitly permit the award of “attorney fees” to the PTO. Specifically, Section 1071(b)(3) states simply that all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not. By its express terms, the statute merely allows for the award of “expenses,” and not “attorney fees.”

On remand, the Federal Circuit used the de novo standard. Teva’s deferential “clear error” standard did not apply, because the district court did not make any factual findings based on extrinsic evidence in connection with its claim construction. Although extrinsic evidence may be used at trial, a district court must rely on subsidiary factual findings from that evidence to reach its claim construction, in order for any deference to arise on appeal. In this case, the Federal Circuit held that the intrinsic evidence led to a de novo conclusion that the district court conflated the claimed virtual machine with applications written to run on the virtual machine.

The Patent Trial and Appeal Board (Board) cancelled the claims of the patent, finding them anticipated or obvious over several references. The Board construed “is connected” to mean that the computer be “active and online at registration,” even if the connection server’s database record was inaccurate, and the computer was no longer online. The Court reversed this construction, holding that the plain and ordinary meaning of the term “is connected” requires that the computer be connected to the network at the time the query is sent. The term “is” has a plain meaning, which requires concurrency. Where the claim language has a plain meaning that leaves no uncertainty, the specification generally cannot be used to infer a different meaning, absent clear redefinition or disavowal.

On July 8, in In re Cuozzo, the CAFC denied en banc review of a prior panel decision that confirms the PTAB can use a different standard for interpreting claims than a district court. The patent owner in In re Cuozzo filed a Petition for a Writ of Certiorari to the Supreme Court on October 6, 2015. The response was due on November 9, 2015. If the Supreme Court takes up the issue, it could decide contrary to the current Federal Circuit precedent. It is also possible that Congress could change the standard for claim construction that applies to post-grant proceedings through legislation.

On appeal, Ariosa challenged the Board’s refusal to consider the background reference because it was not identified as a piece of prior art “defining a combination for obviousness.” The Federal Circuit agreed with Ariosa’s position that the background reference should have been considered by the Board, stating that background art must be considered even though such art is not true “prior art” presented as the basis of obviousness grounds for review. While the Court did agree that Ariosa’s articulation of the background reference’s impact on motivation to combine prior art references was lacking, the Court found the Board’s explanation for its failure to consider the reference equally lacking and thus warranting remand.

The Federal Circuit held that the written description requirement is met for negative claim limitations where the specification simply describes alternatives. In other words, the “reason to exclude” required by Santarus can be met without discussion of advantages of exclusion or disadvantages of inclusion. Further, alternative elements need not be explicitly described as alternatives, so long as the specification conveys to a person of skill in the art that those elements are, in fact, alternative or optional. Negative limitations are only unsupported where the specification provides no examples or suggestions that such limitations are alternative or optional.

The law of patent eligibility is created by the nine least qualified people to make such a determination; the Justices of Supreme Court of the United States. The Supreme Court arbitrarily chooses which of its own prior decisions to follow and ignore, refuses to read and enforce the laws passed by Congress even when the statue is but a single sentence (as is 101), and they openly legislates from the bench by creating judicial exceptions to patent eligibility where no such statutory prerogative exists. If the Federal Circuit will not step up and do the right thing and limit the lawless Mayo decision, which instructs lower courts to ignore the patent statute and drive 100% of the analysis into 101, the U.S. will forfeit our lead in the biotechnology and medical device industries. That will be bad for the economy, but far worse for public health.

In a November 10 ruling, the Federal Circuit held that routine quality control testing of each batch of a generic drug as part of the commercial production process, after FDA approval, is not protected by the Hatch-Waxman safe harbor provision of 35 U.S.C. § 271(e)(1). However, infringement only occurs under 35 U.S.C. § 271(g), as a result of “making” a product, which does not include quality control testing.

According to Limelight, the district court’s construction of “tagging” was limited to using a “pointer” or “hook” to prepend or insert a virtual server hostname into a URL. The Court rejected “prepending” as a claim limitation because even though the ‘703 patent described prepending as a preference, there was no indication from the claims or prosecution history that tagging was limited to this preferred embodiment. The Court found no error in the jury instructions and held that Limelight was bound to the stipulated construction of “tagging” originally read to the jury.

The sole modification in the figure amended was to change one of the 13 amino acids in the structure of daptomycin from an L-stereoisomer to a D-stereoisomer of asparagine. At the time of the invention, it was universally believed that daptomycin included the L-stereoisomer. Not until years later did Eli Lilly discover the error. In any case, the certificate of correction did not affect the validity of the patent, because daptomycin had been described in numerous ways in the application, including by referencing another application that described how to make daptomycin, which would have inherently included the D-stereoisomer.

Imaginal appealed, arguing that the district court improperly construed the disputed claim language, because: because it: (1) ignored the written description and claim language; (2) relied too heavily on general purpose dictionary definitions; and (3) improperly excluded a preferred embodiment. The Federal Circuit disagreed. It held that nothing in the patent claims or specification restricted the vision guidance system to only one particular system that is excluded from the claims (“without”). Accordingly, the Federal Circuit affirmed.

Advanced Steel sued X-Body Equipment for infringement of a method of loading shipping containers with bulk material. The “proximate end” of the claimed transfer base, for moving loaded material, was disputed by the parties. X-Body successfully argued on summary judgment that the piston-and-cylinder for its container packer was not connected to the proximate end of its transfer base, but instead was connected at a point on the bottom of the container packer. Under the district court’s construction of “proximate end” (which means “the extreme or last part lengthwise”), there was no literal infringement or infringement under the doctrine of equivalents.

Since the start of the Supreme Court’s term in October, the Court has already agreed to hear two patent cases, Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc. Both cases address the issue of willful infringement and when it is appropriate for a court to award enhanced damages under 35 U.S.C. § 284. The only question that remains is whether the Court will continue its recent trend of taking three or more patent cases a term, or whether it will revert to its longer term average of accepting only one to two patent cases. Against the wider backdrop of the Supreme Court’s shrinking merits docket, it is notable that patent law consistently draws the attention of the Court under Chief Justice Roberts. Here we take a look at four cert petitions raising patent law issues, and handicap the odds of being granted.