Patent Law Updates - Commentaries Only - from Lawupdates.com

In re Kubin: Extending “Obvious to Try” to cDNA Sequence Patents

2009-06-17T17:38:57+00:00

Patent Law || The Federal Circuit court applied the “obvious to try” test from KSR International v. Teleflex Inc. to biotechnology patent applications, and essentially eviscerated the obviousness standard once applied to biotech patents by the Federal Circuit in In re Deuel. While the decision in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009), will likely make it more difficult for some biotech inventors to secure patents, it does acknowledge that advances in technology and the field of biotechnology knowledge make more inventions “obvious” in light of those advances.

In re Ferguson: Affirming Bilski’s Machine-or-Transformation Test

2009-05-26T18:17:06+00:00

Patent Law || In one of the first post-Bilski decisions by a Federal Circuit panel, the court confirmed the Bilski holding that business methods do not constitute patentable processes if they fail the machine-or-transformation test. Specifically, in In re Ferguson, 558 F.3d 1359 (Fed Cir. 2009), the Court held that the applicant’s marketing method and paradigm did not constitute patentable subject matter under 35 U.S.C. section 101 because it was too abstract and neither tied to a machine nor transformative.

Tafas v. Doll: Limits on Continuations Invalid; Other Claim Limits May Be OK

2009-05-18T16:58:16+00:00

Patent Law || The Federal Circuit largely upheld rules promulgated by the PTO to help relieve its enormous backlog of patent applications. The district court had determined that the rules were substantive and therefore beyond the PTO’s legal authority. In Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009), a split Federal Circuit panel disagreed, finding the rules to be procedural in nature, though it did not reverse the district court. Instead, it affirmed the district court ruling as to one of the four rules in question because it conflicted with the statute, and remanded the case for further inquiry into the legality of method and manner in which the other rules were promulgated. The PTO’s rules have been the subject of much debate in the patent community, and most expect the case to proceed to an en banc rehearing.

Rothman v. Target: Deferring to Jury Finding of Obviousness, But Not of Inequitable Conduct

2009-05-12T20:33:35+00:00

Patent Law || In Rothman v. Target Corp., 556 F.3d 1310 (Fed. Cir. 2009), the Federal Circuit upheld a district court’s refusal to set aside a jury finding that the plaintiff’s patent was invalid due to obviousness, but reversed the trial court on its finding of inequitable conduct by the prosecuting attorney. The court showed high deference to the jury on the former issue, but determined that “no reasonable jury” could have found inequitable conduct on the latter issue. Arguably, the court’s holding could be construed as inappropriately broadening the concept of obviousness, though it does make a point of protecting the good faith efforts of prosecuting attorneys.

Boston Scientific v. Cordis: Obviousness from Two Separate Embodiments

2009-04-2T21:30:51+00:00

Patent Law || In Boston Scientific v. Cordis, 554 F.3d 982 (Fed. Cir. 2009), the Court of Appeals for the Federal Circuit overturned both the PTO Examiner and the district court trial jury in invalidating Boston Scientific’s patent claims due to invalidity. Specifically, the appellate court determined that prior art disclosed all elements of Boston Scientific’s claims, albeit across two embodiments. In reaching the opinion the court ignored the longstanding Graham v. John Deere obvious analysis and used language more akin to that found in KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1740 (2007), perhaps helping to clarify the court’s approach post-KSR.

Recent Decisions Alter Venue Strategy In Eastern District of Texas Patent Litigation

2009-03-24T19:11:00+00:00

Patent Law || In the wake of two recent federal appeals cases -- In re Volkswagen of America Inc., 545 F.3d 304 (5th Cir. 2008) and In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) – the Eastern District of Texas has lost some of its steam as the most notable “rocket docket” of patent infringement litigation. However, even though the Eastern District of Texas is likely to grant more transfer motions than before, it continues to show a determination to hang on to patent cases when possible.

Egyptian Goddess v. Swisa: No more Point of Novelty Test for Design Patent Infringement

2009-01-13T11:09:25+00:00

Patent Law || In its highly anticipated en banc opinion in Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008), the Court of Appeals for the Federal Circuit rejected the point of novelty test for design patent infringement. The Court held that the “ordinary observer” test set forth in Gorham v. White is the only appropriate test for assessing claims of design patent infringement. When properly applied, the “ordinary observer” test takes into account prior art; therefore, the point of novelty test was an unnecessary and inconsistent departure from precedent and common sense.

In re Bilski: Business Method Patents Take a Hit; State Street Bank Is Out

2009-01-7T22:38:09+00:00

Patent Law || The eagerly-awaited decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) -- issued by the U.S. Court of Appeals for the Federal Circuit sitting en banc -- significantly narrowed the scope of patentability for business method and process patents. The Court essentially discounted the applicability of State Street Bank v. SIgnature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998), the decision that sparked the business method patent debate. Instead, the court announced that the “machine-or-transformation” test exclusively would determine the eligibility of a process for patenting. However, the court – and the three dissenting opinions - left numerous open questions, leaving the business method patent debate to continue, albeit with some limitations.

Cohesive Technologies v. Waters: Anticipated Though Non-Obvious?

2008-12-11T20:56:00+00:00

Patent Law || In Cohesive Technologies, Inc. v. Waters Corporation, 543 F.3d 1351 (Fed. Cir. 2008), the U.S. Court of Appeals for the Federal Circuit held that an invention may be anticipated, even though it is proven non-obvious. The Court drew a clear separating line between the novelty analysis of 35 U.S.C. section 102 and the non-obviousness analysis of 35 U.S.C. section 103(a). While the general holding is perhaps well-founded, in a case such as this where the references cited under §102 and §103 were identical, the decision to remand seems wasteful and inappropriate.

Quanta Computer v. LG Electronics: Reviving Exhaustion, Applying It to Method Patents

2008-08-15T16:07:00+00:00

Patent Law || In the case Quanta Computer v. LG Electronics, ___ U.S. ____, 128 S.Ct. 2109 (2008), the United States Supreme Court clarifies and expands upon its holding in United States v. Univis Lens Co. In Univis, the court held that a patent is exhausted upon the sale of unfinished components that substantially embody the patent and which have no use except to practice the patent. In Quanta, the court clarified that the same analysis applies to process or method patents, not just product patents: When a component substantially embodies the process and cannot be used for any purpose other than to practice the patent, the process patent is exhausted upon sale of that component. The decision makes it more difficult for patentees to extract royalties from multiple parties for the same device. However, it revitalizes the integrity of the exhaustion doctrine and provides more certainty for downstream purchasers.

Acumed II Addresses the Issue of Claim Preclusion and When a Patent Claim Could Have Been Brought

2008-05-20T18:27:00+00:00

Patent Law || In the recent case of Acumed, LLC v. Stryker Corp.,et al., (No. 2007-1115) (Fed. Cir., May 13, 2008) (“Acumed II”), the Federal Circuit addressed the meaning and application of language barring re-litigation of claims that “could have been brought” in a prior patent infringement case.

Agrizap and Ortho-McNeil: Two Sides of Post-KSR Obviousness

2008-05-16T15:47:00+00:00

Patent Law || In KSR v. Teleflex, 550 U.S. ____, 127 S. Ct. 1727 (2007), the U.S. Supreme Court broadened the applicable test in determining whether an invention is “obvious.” As predicted by patent law pundits, the KSR decision was followed by a number of cases in which infringers defended their actions – and won – by having the patent in question declared invalid for obviousness under this new standard. The Court of Appeals for the Federal Circuit (the CAFC) recently heard and decided two separate cases that addressed the issue of obviousness post-KSR. These cases shed further light on the new standard for determining obviousness. While the results are quite different, the lessons for practitioners are, ultimately, the same.

Judkins v. HT Window Fashion: Can’t Stop a Patent Holder from Contacting Your Clients About Possible Infringement

2008-05-13T21:57:00+00:00

Patent Law || When a patent-holder discovers infringement, it’s not unreasonable for him to want to notify the alleged infringer’s clients of the infringement. Of course the alleged infringer would prefer that this communication with its clients not take place. But, as the Judkins case instructs, it will be nearly impossible for an alleged infringer to stop a patent holder from contacting its clients.

Tafas v. Dudas: USPTO’s Efforts to Limit Patent Applicant Rights Are Void

2008-05-12T22:59:00+00:00

Patent Law || In an effort to attack its notorious backlog, the USPTO enacted a group of rule changes that placed limits on, among other things, the number of claims a patent applicant could include and the number of times an applicant could amend and continue his application. Traditionally, patent applicants could take unlimited bites at the apple in their pursuit of their patent. In Tafas, the court struck down the rule changes as null and void, and exceeding the scope of the USPTO’s authority. While the Office has the power to enact procedural rules regarding the process, it cannot enact substantive rules – these rules are substantive since they dramatically alter existing policy and the rights and obligations of patent applicants.

McKesson v. Bridge Medical: Inequitable Conduct Due to Lack of Full Disclosure in Patent Prosecutions

2008-01-18T17:24:00+00:00

Patent Law || The decision in McKesson Information Solutions Inc. v. Bridge Medical Inc., 487 F.3d 897 (Fed. Cir. 2007), has been referred to by many as “frightening,” “burdensome,” and “a whopper.” Indeed, the decision places a high burden on patent prosecutors to disclose essentially every action in any related co-pending application. The failure to do so may result in a declaration that the patent is unenforceable due to inequitable conduct.

Voda v. Cordis Undermines Court's Authority to Take Cognizance of Foreign Patent Infringement Claims

2007-07-13T20:39:00+00:00

Patent Law || Despite what it called a "harmonizing trend" among the world's patent courts, the Federal Circuit chose not to create a more unified global system of enforcing patents worldwide. Instead, the court effectively eliminated a district court's ability to assert supplemental jurisdiction over claims of foreign patent infringement, forcing patent holders to seek enforcement in parallel suits in courts all over the world.

In KSR v. Teleflex, Supreme Court Emphasizes Flexibility in Determining Obviousness Via TSM Test

2007-05-16T03:07:00+00:00

Patent Law || The central issue that faced this court is how to determine if an invention is truly innovative or is just the result of linking together prior inventions in a way that was inevitable or an apparent next step. The Supreme Court emphasized flexibility in making that determination, whereas the Federal Circuit had been choosing predictability instead. The Court held that the Federal Circuit had too rigidly applied its “teaching, suggestion, motivation” test, under which a patent claim is only invalidated for obviousness if prior art contains some motivation or suggestion to combine the prior art teaching. This application resulted in erroneously finding that the patent at issue was not invalid for obviousness.