Posts Tagged: "prior art"

Patentability of Blockchain is a hot topic primarily because of the tremendous expectations around this emerging, disruptive and promising technology. On December 5, 2018, the European Patent Office (EPO) held an International Conference on Patenting Blockchain at The Hague to explore this topic in detail.

Practitioners who work on patent applications or clearance advice in this field should be careful in the choice of keywords for prior art searches and should be aware of what kind of patent they are seeking: core technology (with possible risks of a pure algorithm objection), applied technology, and virtual currency claim (which is excluded in China).

In AC Techs., S.A. v. Amazon.com, Inc. the Federal Circuit found the PTAB did not exceed its statutory authority by addressing a non-instituted ground on reconsideration; in fact, it would have violated the statutory scheme for the PTAB not to consider the previously non-instituted ground… The claims at issue related to data access and management, namely, storing copies of data across a network to improve data integrity and reduce network lag. Amazon and Blizzard challenged the ’680 patent based on a single prior art reference. They presented three grounds in their petition, all centered on the construction of the term “computer unit.”

Congress created Inter Partes Review (IPR) to weed out clearly invalid patents that would not have been issued had the United States Patent and Trademark Office (USPTO) known about certain prior art. However, USPTO Director Iancu should consider limiting his delegated authority in 35 U.S.C. § 325(d) to prior art that was not presented to the USPTO during examination. As such, all references in the prosecution record would be presumed to have been fully considered by the examiner and could not form any part of a post grant petition. This change would exercise the discretion provided by Congress to its fullest, preserve USPTO resources by not reconsidering the Office’s prior decisions, and restore some predictability to the U.S. patent system.

The resurrection of the ‘814 patent claims was of great importance to Fitness Anywhere because it covered a modification to the company’s fitness equipment that helped it achieve great success in the marketplace. The invention essentially consisted of taking a handle accessory that was attachable to the fitness equipment via velcro and making it a permanent fixture of the equipment. Although Fitness Anywhere had told the court that it wouldn’t pursue further infringement damages against Woss based on the reinstated ‘814 patent claims, in large part because of Woss’ bankruptcy status, Judge Freeman’s granting the motion for reconsideration restores an important asset that can now again be asserted against many of the at least 100 companies that are allegedly infringing the patent behind TRX fitness equipment.

According to statistics provided by the USPTO, since the beginning of fiscal year 2012, the Office has received a total of only 1,584 third-party submissions of prior art for consideration by patent examiners. The high water mark occurred in 2016, when the office received a total of 329 third-party prior art submissions. This declined to 266 submissions in 2017 and in fiscal year 2018, the USPTO received a total of only 141 prior art submissions.

The Federal Circuit recently issued a nonprecedential decision in BASF Corporation v. Enthone, Inc. which vacated an earlier decision stemming from an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) which had upheld a patent owned by Enthone as valid over an obviousness challenge asserted by BASF. The Federal Circuit panel of Circuit Judges Timothy Dyk, Evan Wallach and Richard Taranto remanded the case to the PTAB after holding that certain findings made by the PTAB were inadequately supported or explained.

Perhaps Rovi will take the opportunity to test the waters with the newly created Precedential Opinion Panel (POP), which is intended to bring uniformity between examination procedures and the PTAB at the USPTO. USPTO Director Andrei Iancu has promulgated new Standard Operating Procedures (SOPs), and new claim interpretations rules will soon be in effect at the PTAB. A patent litigator by training, Director Iancu seems very interested in the PTAB giving other tribunals that have previously considered validity matters due consideration, something the PTAB has rarely, if ever, done. With the creation of the POP, and new SOPs that give the Director the authority to make decisions of the PTAB precedential at his discretion, this string of Rovi cases could present a very interesting test case on whether the PTAB actually will provide deference to tribunals that have previously considered validity issues, or whether the PTAB with its lower threshold for invalidity will continue to be the court of last resort for infringers who have lost elsewhere. 

Since Merck & Co. v. Teva Pharmaceuticals, blocking patent arguments have arisen in the Federal Circuit primarily in the pharmaceutical patent context, and until now have largely been limited to undermining evidence of commercial success. But just like gremlins fed after midnight, this doctrine inevitably spawned unwanted offspring that are now wreaking havoc… Assuming that no one would ever develop a product that might infringe a patent is inconsistent with numerous Federal Circuit realities. It’s right up there with the Tooth Fairy (sorry, kids).

In order to establish that the commercial success factor supports a non-obviousness finding, the patentee must establish that a connection (or nexus) exists between the novel aspects of the patent claim(s) and the alleged commercial success. Id.; WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1330 (Fed. Cir. 2018). In other words, the patentee must show that the novel aspects of the claim(s) are driving sales and not aspects of the claim(s) that were known in the prior art. In re Huai-Hung Kao, 639 F.3d 1057, 1069 (Fed. Cir. 2011); WesternGeco, 889 F.3d at 1330. In cases brought pursuant to the Hatch-Waxman Act, while there are exceptions, it is most common that patent challengers’ arguments focus predominantly or entirely on an alleged lack of nexus given the substantial sales typically enjoyed by the brand-name drug products that are the subject of such litigation. Though it bears noting that the mere fact that a company is pursuing a generic version of a brand-name drug, by itself, does not support a “commercial success” finding. Galderma Labs., Inc. v. Tolmar, Inc., 737 F.3d 737, 740 (Fed. Cir. 2013).

The suit, filed in the District of Colorado, involves the assertion of cannabis patent claims covering liquid formulations of highly enriched extracts of plant cannabinoids… United Cannabis alleges that Pure Hemp has engaged in willful infringement of the ‘911 patent. Pure Hemp’s Vina Bell 5000mg product, which was purchased and tested for chemical composition by United Cannabis, contains a cannabinoid formulation which allegedly infringe upon at least claim 10 of the ‘911 patent, which claims a cannabinoid formulation wherein at least 95 percent of the cannabinoids is cannabidiol (CBD). United Cannabis attempted to engage Pure Hemp in licensing discussions in early May of this year but Pure Hemp continues to sell the allegedly infringing products without a license.

In Zup v. Nash Manufacturing, ZUP filed suit, alleging contributory infringement and induced infringement of the patent-at-issue, trade secret misappropriation under Virginia law, and breach of contract.  Nash counterclaimed, seeking declaratory judgment as to non-infringement and invalidity… Prior art references aiming to overcome problems similar to those addressed by a patent can support a motivation to combine invalidating references, and for evidence of a long-felt but unresolved need to be considered, the need must be solved by an invention that is more than minimally different from the prior art… Judge Newman dissented, finding that the majority applied an incorrect analysis of the obviousness factors. In her view, the prior art provides no suggestion to make the specific modifications made by the patent-at-issue, and the only source of those modifications is judicial hindsight.

At the time, many thought this change in law would significantly assist patentees in avoiding full-blown cancellation of their claims. However, our review suggests a case-by-case analysis without overwhelming success on a motion to amend… Although the industry expected Aqua Products to cause a sea change for motions to amend, there has been little, if any, substantive effect. Since Aqua Products, the Board has considered the opinion’s impact in 92 cases, referring to the memorandum guidance in 38. Of those 92 cases, the Board has rendered decisions in 43 cases, denying 32 motions to amend, granting in whole or in part 7 motions, and denying as moot 4 motions.

The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? …  PGRs are estimated to cost more because of their broader discovery rules.  If cost is a major factor, IPRs are a less-expensive option due to restricted allowance of discovery, the most expensive aspect of patent litigation… If the invalidating arguments or art are not strong, an IPR may be a better option due to its lower threshold for institution.  The same prior art arguments that failed in a petition for a PGR may have succeeded in an IPR petition due to the lower standard.

On Monday, June 25, 2018, the United States Supreme Court granted cert. in Helsinn Healthcare S.A., v. Teva Pharmaceuticals USA, Inc. The single question presented by Helsinn in the petition accepted by the Supreme Court read: Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.

On Friday, June 1st, the Court of Appeals for the Federal Circuit issued a decision in In re: Durance striking down a decision by the Patent Trial and Appeal Board (PTAB) that affirmed a patent examiner’s obviousness rejection of a microwave vacuum-drying apparatus and associated method. The Federal Circuit panel consisting of Judges Alan Lourie, Jimmie Reyna and Raymond Chen…