Patent Prospector

Copycat

Apple tried to get a preliminary injunction against Samsung over design and utility patents, accusing Samsung of infringing its "distinctive design." The district court was unpersuaded, finding, among other faults, that "Apple had failed to show a likelihood of success on the merits." The legal team at Quinn Emmanual, representing Samsung, outmaneuvered MoFo. With the exception of a quibble over legal error for one patent, remanding back for reevaluation, a CAFC panel affirmed, even as it did not often agree with the district court. (CAFC 2012-1105)

]]> Judge O'Malley, who has become quite an avid dissenter, did so again, with impeccable logic: pointing out the the majority disagreement with the district court over validity gives every reason to think that Apple will prevail, and thus deserves the injunction. In essence, O'Malley highlighted that Judges Bryson & Prost are not the sharpest tacks in the CAFC box. Litigation as a crapshoot continues.

No Breiner

Sheldon Breiner tried to get a patent on networked data collation from far-flung places. With Obzilla riding shotgun, the examiner combined three far-flung references, supplying motivation to combine as "obvious to one of ordinary skill in the art." Rejection affirmed at the BPAI. Breiner took it to the CAFC, which reminded of the now high bar to overturning the PTO: "this court will not overturn the Board's decision if a reasonable mind might accept the evidence as adequate to support a conclusion." (CAFC 2011-1387).

]]> On down the line to the origin of the situation: patent prosecution in this country is a huge scam, as prosecutors happily take client fees and file applications that have no chance whatsoever of ever being worth anything. If you think you have a patentable idea, call the Sales Prevention Department at Platinum Patents, where we don't take cash and hand out wooden nickels. A solid patentability search is the only cure for being taken by the hustlers at your local patent law office.

Lead Compound

In a close-call case, Otsuka v. Sandoz et al (CAFC 2011-1126, 1127, precedential), generic drug makers couldn't invalidate 5,006,528, for lack of identifying a prior art lead compound to derive the patented drug, even under the highly subjective standard of Obzilla. "In keeping with the flexible nature of the obviousness inquiry, the reason or motivation for modifying a lead compound may come from any number of sources and need not necessarily be explicit in the prior art." The ruling also gives a nuanced reading of nonstatutory double patenting. Here too, the subjectivity of "unpredictability" plays a lead role. The contours of obviousness continue to be a case-by-case guessing game.

Misplaced

It should come as no surprise, for those who are worldly wise, that most patent prosecutors are not adept. Take it as gospel from Patent Hawk, who reads dozens of patents a day. But that doesn't mean you can successfully sue prospecutors for malpractice. Bad for business. Case in point: Minkin v. Gibbons (CAFC 2011-1178), a state patent prosecution malpractice matter that ended up at the CAFC, because the federal courts now take any case concerning patents. Judge O'Malley objects, but she appears in a vast minority.

Zapped

In Zapmedia v. Apple, Zapmedia tried to backpedal from prosecution estoppel (to overcome prior art) in the family of the asserted patent: 7,343,414. Apple's law firm set up solid arugments of claim construction and non-infringment that the courts easily agreed with. (CAFC 2011-1546): See TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1371 (Fed. Cir. 2008) ("[P]rosecution history of a related patent application may inform construction of a claim term, when the two applications are directed to the same subject matter and a clear disavowal or disclaimer is made during prosecution of the related application.").

Aggrandizement

Landmark Screens v. Morgan, Lewis & Bockius and Thomas D. Kohler tells of a sorry tale of alleged negligence, malpractice and fraud in a patent prosecution. The California state court was biased against Landmark, the company which had its patent filing ruined. Case dismissed. Landmark then sought recourse in federal district court, which tossed the case under pretext of statute of limitations. On appeal, the CAFC decided they had subject matter jurisdiction, even though admittedly "a fraud action, governed by state law, not patent law or patent practice."

Redox

In re Mousa, a chemical compound prosecution, the CAFC affirmed anticipation by inherency. "[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citations omitted). Applicant failed to prove what could not be proven - that the PTO's unsubstantiated conjecture was wrong. Rejection without direct evidence was copasetic (inherent redox reaction), but "appellant's unsupported statements... are not sufficient evidence to rebut the examiner's contention." In re Hoke, 560 F.2d 436, 438 (C.C.P.A. 1977).

Drug Abuse

In Caraco v. Novo, a unanimous Supreme Court reversed the CAFC on abuse of patent: "A generic manufacturer may employ the counterclaim provision to force correction of a use code that inaccurately describes the brand's patent as covering a particular method of using a drug. The brand submits misleading patent information to the FDA, delaying or blocking approval of a generic drug that infringes no patent and thus, under the statute,should go to market." The CAFC had found "that Caraco lacked 'a statutory basis to assert a counterclaim.'"

French Fried

5,750,561 owner Aventis sued Hospira and Apotex for infringing the cancer drug concoction. Co-inventor Jean-Louis Fabre withheld references from the PTO during prosecution, and it caught up with him, and Aventis. "There simply is no justification for telling the [PTO] about the prior art disclosing the problem [Fabre] examined while concealing key prior art disclosing the solution he chose." Overcoming the high hurdle of inequitable conduct set in Therasense, '561 had terminal cancer before it was shot in the heart. The claims were also found obvious. Affirmed on appeal (CAFC 2011-1018).

No Access

5,875,435 claims an automated accounting system. '435 owner Noah Systems sued Intuit for infringement. Intuit got the litigation stayed pending reexam. Reexam by "the PTO confirmed the patentability of the original claims of the '435 patent and determined that new claims 19-56 were patentable." With litigation restarted, Intuit sold the district court on the illicit idea that the claimed "access means" were indefinite under §112 ¶2 "because the specification disclosed no algorithm by which the computer was programmed to perform the function asserted in the claims." By law, that failing would be written description, §112 ¶1. But the fix was in, and that was all that mattered. The district court ignored that the claimed "access means" referred to entering a passcode, which was well-documented in a figure and written description, as court documents showed. Affirmed on appeal. (CAFC 2011-1390). One more chip on a mountainous pile showing blatant patent court corruption favoring well-regarded companies over patent holders.

Foolish Fiber

In Advanced Fiber Technologies v. J&L Fiber Services, NY Senior Judge Lawrence E. Kahn had some senior moments during claim construction. Further innaity ensued on appeal. The CAFC went along with construing a term that was not in the claims, but in the district court's claim construction. "In those cases in which the correct construction of a claim term necessitates a derivative construction of a non-claim term, a court may perform the derivative construction in order to elucidate the claim's meaning." There was no such necessity, as the non-claim term in dispute inappropriately introduced a claim limitation that was not in the claims. Hal Wegner commented: "the court has once again demonstrated the difficulty if not impossibility of correctly predicting claim construction."

Applying Natural Laws

The Supreme Court ruling in Mayo v. Prometheus was not a ruling based in law. To the contrary. By admission of the practicality of the claims, there was scant legal precedent to reach as far as SCOTUS did. The decision was instead a social policy decision - that society was better off not allowing monopolization of heath care treatments. From a legal standpoint, the CAFC got it right in following §101 that one "may obtain a patent," except for what has been prohibited. The Supreme Court expanding the scope of prohibition, that "a patent could not simply recite a law of nature and then add the instruction 'apply the law,'" is exactly what many patents do. All gene patents do that, as do plant patents, for that matter. By SCOTUS reasoning, any biological patent simply applies one or more laws to nature to achieve its effect. Even chemistry patents simply apply the law of nature regarding covalent or ionic bonds.

]]> The real concern of SCOTUS was social implication, not legality per se; a concern repeatedly stated.

The laws of nature at issue here are narrow laws that may have limited applications, but the patent claims that embody them nonetheless implicate this concern. They tell a treating doctor to measure metabolite levels and to consider the resulting measurements in light of the statistical relationships they describe. In doing so, they tie up the doctor's subsequent treatment decision whether that treatment does, or does not, change in light of the inference he has drawn using the correlations. And they threaten to inhibit the development of more refined treatment recommendations (like that embodied in Mayo's test), that combine Prometheus' correlations with later discovered features of metabolites, human physiology or individual patient characteristics. The "determining" step too is set forth in highly general language covering all processes that make use of the correlations after measuring metabolites, including later discovered processes that measure metabolite levels in new ways.

The presence here of the basic underlying concern that these patents tie up too much future use of laws of nature simply reinforces our conclusion that the processes described in the patents are not patent eligible.

Patent protection is, after all, a two-edged sword. On the one hand, the promise of exclusive rights provides monetary incentives that lead to creation, invention, and discovery. On the other hand, that very exclusivity canimpede the flow of information that might permit, indeed spur, invention, by, for example, raising the price of using the patented ideas once created, requiring potential users to conduct costly and time-consuming searches of existing patents and pending patent applications, and requiring the negotiation of complex licensing arrangements. At the same time, patent law's general rules must govern inventive activity in many different fields of human endeavor, with the result that the practical effects of rules that reflect a general effort to balance these considerations may differ from one field to another.

In consequence, we must hesitate before departing fromestablished general legal rules lest a new protective rule that seems to suit the needs of one field produce unforeseen results in another. And we must recognize the role of Congress in crafting more finely tailored rules where necessary. Cf. 35 U. S. C. §§161-164 (special rules for plant patents). We need not determine here whether, from a policy perspective, increased protection for discoveries of diagnostic laws of nature is desirable.

In recognizing "the role of Congress in crafting more finely tailored rules where necessary," the SCOTUS ruling in Mayo turns §101 on its head, basically stating that whatever Congress does not explicitly allow, the Supreme Court can deny patentability to. So, plant patents, at least, are planted in solid ground by legislative fiat, while chemistry seems sufficiently constrained by (§103) Obzilla's subjective "obvious to try" dicta, as a matter of public policy.

But gene patents have no such legislative fallback to patentability. Nor, for the same reasoning as in Mayo, should they.

As something of a slippery eel, the CAFC has been shy to rule under §101 if another avenue was available. SCOTUS advised no such hesitation.

These considerations lead us to decline the Government's invitation to substitute §§102, 103, and 112 inquiries for the better established inquiry under §101.

Not Infused

5,507,412 claims a system to deliver fluids from multiple sources into a patient's body. An adjusting means is claimed to influence the fluid flow from each source. There is a claimed programmable control means coupled with the adjusting means. In the disclosure, the functions of what the control device does are variously mentioned, but how the control device functions is never described. '412 owner Ergo sued CareFusion for infringement. Under the influence of 112 ¶ 2 by way of § 112 ¶ 6, the "district court held that the 'control means' terms are indefinite for failure to disclose corresponding structure." The CAFC affirmed. (CAFC 2011-1229). Should have been euthanized by 112 ¶ 1. The claim was definite enough, but lacked written description.

Treatment

Prometheus Labs sued Mayo for infringing drug treatment patents - which simply claim monitoring treatment and adjusting dosage. The district court ruled the patents not eligible subject matter (§101). The CAFC reversed. Now the Supreme Court has once again reversed the CAFC. "The steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field."

]]> Mayo Collaborative Services v. Prometheus Laboratories (SCOTUS 2010-1150) Justice Breyer (author)

"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Gottschalk v. Benson, 409 U. S. 63, 67 (1972). And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.

The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.

Still, as the Court has also made clear, to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words "apply it." See, e.g., Benson, supra, at 71-72.

The case before us lies at the intersection of these basic principles. It concerns patent claims covering processes that help doctors who use thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage level is too low or too high. The claims purport to apply natural laws describing the relationships between the concentration in the blood of certain thiopurine metabolites and the likelihood that the drug dosage will be ineffective or induce harmful side-effects. We must determine whether the claimed processes have transformed these unpatentable natural laws into patent eligible applications of those laws. We conclude that they have not done so and that therefore the processes are not patentable.

In particular, the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field. At the same time, upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.

[A] process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an "inventive concept," sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.

If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself. A patent, for example,could not simply recite a law of nature and then add the instruction "apply the law."

What else is there in the claims before us? The process that each claim recites tells doctors interested in the subject about the correlations that the researchers discovered. In doing so, it recites an "administering" step, a"determining" step, and a "wherein" step. These additional steps are not themselves natural laws but neither are they sufficient to transform the nature of the claim.

These instructions add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously engaged in by those in the field. And since they are steps that must be taken in order to apply the laws in question,the effect is simply to tell doctors to apply the law somehow when treating their patients.

Patent protection is, after all, a two-edged sword. On the one hand, the promise of exclusive rights provides monetary incentives that lead to creation, invention, and discovery. On the other hand, that very exclusivity can impede the flow of information that might permit, indeed spur, invention, by, for example, raising the price of using the patented ideas once created, requiring potential users to conduct costly and time-consuming searches of existing patents and pending patent applications, and requiring the negotiation of complex licensing arrangements. At the same time, patent law's general rules must govern inventive activity in many different fields of human endeavor, with the result that the practical effects of rules that reflect a general effort to balance these considerations may differ from one field to another.

[W]e must recognize the role of Congress in crafting more finely tailored rules where necessary. Cf. 35 U. S. C. §§161-164 (special rules for plant patents). We need not determine here whether, from a policy perspective, increased protection for discoveries of diagnostic laws of nature is desirable.we must recognize the role of Congress in crafting more finely tailored rules where necessary. Cf. 35 U. S. C. §§161-164 (special rules for plant patents). We need not determine here whether, from a policy perspective, increased protection for discoveries of diagnostic laws of nature is desirable.

Reversed.

No Reexam Revival

Competitors Aspex Eyewear and Marchon Eyewear myopically pummeled each other with patent suits for over a decade. They eventually settled. Aspex navigated a reexam with new and amended claims of a patent subject to the settlement. Aspex nonetheless started a new spat, claiming it had newly loaded dice. Citing res judicata, the courts would have none of it. "Claims that emerge from reexamination do not create a new cause of action that did not exist before." (CAFC 2011-1147)