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In Actelion Pharm., Ltd. v. Matal (Fed. Cir. Feb. 6, 2018), the Federal Circuit affirmed the District Court’s holding that the PTO properly determined the patent term adjustment (PTA) for U.S. Patent No. 8,658,675 (“the ‘675 patent”).

This case relates to “A” delay, which is the adjustment to patent term based upon PTO delays,1 specifically PTO delay in issuing an office action or notice of allowance after filing of a national stage application.  This type of “A” delay is calculated as the number of days beginning on the day after the date that is fourteen months after the date the national stage commenced under 35 U.S.C. § 371(b) or (f) and ending on the date of mailing of either an office action or a notice of allowance, whichever occurs first.

Thus, the “A” delay clock for national stage commencement is triggered fourteen months after:

  1. the 30-month date2; or
  2. “[a]t the express request of the applicant … at any time at which the application is in order for such purpose and the applicable requirements of subsection (c) of this section have been complied with.”3

The ‘675 patent was filed as a national stage application on January 12, 2012, four days before its 30-month date of January 16, 2012.  Actelion filed a preliminary amendment stating that it “earnestly solicits early examination and allowance of these claims.”  However, Acetlion did not check box 1 on PTO Form 1390 indicating that the filing was “an express request to begin national examination procedures.”

According to the Federal Circuit, the language in Actelion’s preliminary amendment did not comply with the “express request” provision of § 371(f).  At best, the Federal Circuit characterized Actelion’s “casual ‘solicits early examination’ language” with no reference to § 371(f) and combined with the unchecked box in Form 1390 as “an inconsistent or ambivalent request.”  Thus, the Federal Circuit held that the PTO did not err in its PTA determination and Actelion was not entitled to an additional four days of PTA.

Note that the Federal Circuit did not indicate that checking the box on Form 1390 was the only way to comply with the “express request” requirement.  The court appeared to acknowledge that there were “other ways” besides checking the box to communicate an “express request” pursuant to § 371(f) to the PTO.

Practice Tips

  • If entering the national stage before the 30-month deadline, check the “Express Request” box on PTO Form 1390 to maximize PTA.
  • Remember to file the declaration when expressly requesting to enter the national stage before the 30-month date.4
  • In order to trigger the “A” delay clock if filing on a 30-month date that also falls on a federal holiday, check the box on PTO Form 1390 to make an “express request.”5

[1] 35 U.S.C. § 154(b)(1)(A)(i)-(iv)

[2] § 371(b)

[3] § 371(f)

[4] An early entry filing must also comply with § 371(c) requirements to trigger the “A” delay clock.

[5] If the 30-month date falls on a federal holiday, national stage commencement cannot occur on a federal holiday, but rather commences on the next business day. 

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February 12 is Abraham Lincoln’s birthday, which, not that long ago, warranted its own holiday.  Abraham Lincoln is the only president to earn a patent — U.S. Patent No. 6469 on Buoying Vessels of Shoals:

Lincoln was also the author of one of the pithier quotes about the patent system. By giving the inventor the exclusive right to use the invention for a limited time, the patent system “added the fuel of interest to the fire of genius, in the discovery and production of new and useful things.”

This was not Lincoln’s only brush with the patent system, however, and he has been celebrated in several patents that are worth dusting off on his 209th Birthday.

U.S. Patent No. D2983 protects this sculpture of Abraham Lincoln with General Grant and Secretary Stanton:

U.S. Patent No. 9403 protects an embroidery pattern featuring Lincoln:

U.S. Patent No. 22304 protects this spoon design featuring Lincoln’s home in Springfield, Illinois, and his tomb:

U.S. Patent No. D12634 protects the design of this drinking vessel, on which Lincoln shares the limelight with Garfield, the second president to be assassinated:

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In Polaris Industries, Inc. v. Arctic Cat, Inc., [2016-1807, 2016-2280] (February 9, 2018), the Federal Circuit affirmed in part, vacated in part, and remanded the PTAB’s determination in an IPR that claims of U.S. Patent No. 8,596,405 were invalid, and affirmed the PTAB’s determination is a separate IPR that the claims of the same patent were not invalid.

After being sued for infringing claims of the ’405 patent, Arctic Cat filed two petitions for Inter Partes Review, challenging the patentability of claims 1–38 as obvious in view of combinations of certain prior art references, including Denney, Furuhashi and Hickey.  In one petition, Arctic Cat argued that all relevant claims were obvious in view of the combination of Denney and Furuhashi, and in the other that all of the claims were obvious in view of Hickey and at least one other reference.

Polaris attacked the invalidation of the claims on three grounds: First, that the Board’s obvious analysis was predicated on an improper claim construction or was too cursory.  Second, that the Board relied on impermissible hindsight in combining the prior art, failing to articulate a valid motivation to combine these references and applying a “subjective preferences” analysis that finds no basis in this court’s precedents.  Third, that the Board erred in rejecting the undisputed evidence that Polaris introduced regarding the commercial success.

On the first grounds, the Federal Circuit rejected Polaris’ claim construction, noting that claims are given their broadest reasonable interpretation, and finding Polaris’ construction too restrictive.  Regarding Polaris’ argument about the cursory nature of the Board’s analysis, the Federal Circuit noted that although the Board’s reasoning could have been more thorough, it did not find fault in the Board’s arguably limited treatment of Polaris’s arguments where the Board’s treatment “was at least commensurate with Polaris’s presentation of this issue.

On the issue of hindsight, the Federal Circuit agreed with Polaris — the Board failed to analyze whether the prior art taught away from the claim limitations.  The Federal Circuit noted that the Board said that “one of ordinary skill has the ability to weigh the various benefits and disadvantages based on subjective preferences in an analysis largely unrelated to obviousness,” and said that it has never articulated a framework for analyzing whether claims would have been obvious that includes the phrase “subjective preference” or that permits a tribunal to wholly disregard the significance of prior art teachings based on such a characterization.

The Federal Circuit identified three problems with the Board’s “subjective preference” analysis: First, by completely disregarding certain teachings as ill defined “subjective preferences,” the Board’s approach invited the “distortion caused by hindsight bias” into the fold.  The Federal Circuit also noted that the Board improperly focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention.  Finally, the Federal Circuit found that the Board’s analysis encourages the fact-finder to outright discard evidence relevant both to “teaching away” and to whether skilled artisans would have been motivated to combine references.

Finally, the Federal Circuit agreed that the Board erred when it declined to accord substantive weight to Polaris’ undisputed evidence that its product is the invention disclosed in certain claims because it characterized Polaris’ evidence as “conclusory,” noting that Arctic Cat presented no contrary evidence.  The Federal Circuit said that the Board must assess the import of this evidence after presuming that a nexus between the claims and the commercial success exists, unless and until that presumption is adequately rebutted.

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In Xitronix Corp. v. Kla-Tencor Corp., [2016-2746] (February 9, 2018), the Federal Circuit transferred an appeal of a Walker Process claim to the United States Court of Appeals for the Fifth Circuit, which has appellate jurisdiction over cases from the District Court for the Western District of Texas.

Xitronix raised a Walker Process monopolization claim under § 2 of the Sherman Act and §§ 4 and 6 of the Clayton Act based on the alleged fraudulent prosecution of a patent.

Xitronix asserted that the Federal Circuit had jurisdiction over the appeal pursuant to 28 U.S.C. § 1295(a)(1), and KLA-Tencor did not dispute this assertion, although the Federal Circuit did.  The Federal Circuit said the question is whether the monopolization allegation necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.

Applying the well-pleaded complaint rule, in light of the Supreme Court’s guidance and rationale in Gunn, the Federal Circuit held that monopolization does not depend upon resolution of a substantial question of federal patent law.

The Federal Circuit said that there is nothing unique to patent law about allegations of false statements.  While a determination of the alleged misrepresentations to the PTO will almost certainly require some application of patent law, consistency with the federal question jurisdiction statute requires more than mere resolution of a patent issue in a “case within a case.”  They went on to say, “Something more is required to raise a substantial issue of patent law sufficient to invoke our jurisdiction under 28 U.S.C. § 1295(a)(1).”

The underlying patent issue in this case, while important to the parties and necessary for resolution of the claims, does not present a substantial issue of patent law.  The Federal Circuit noted that patent claims will not be invalidated or revived based on the result of this case.

Because Federal Circuit law applies to substantive questions involving its exclusive jurisdiction, the fact that at least some Walker Process claims may be appealed to the regional circuits will not undermine its uniform body of patent law.

The Federal Circuit noted that the fact that its law applies to Walker Process claims does not mean that it has exclusive jurisdiction over appeals of such claims.

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In Merck Sharp & Dohme Corp. v. Amneal Pharmaceuticals LLC, [2017-1560] (February 9, 2018), the Federal Circuit affirmed the district court finding that it did not abuse its discretion in denying Merck’s request for additional samples and a new trial; that it did not err in finding that Merck failed to demonstrate that Amneal’s ANDA product, which formed the basis for the district court’s noninfringement finding, was not representative of Amneal’s final commercial product; and that district court did not clearly err in finding that three Raman peaks were required to prove infringement.

On the denial of additional discovery issue, the Federal Circuit reviews a district court’s denial of additional discovery under regional circuit law, and the Third Circuit will not disturb a denial of additional discovery absent an abuse of discretion and “a showing of actual and substantial prejudice.”  The Federal Circuit found the question “a close one.”

The Federal Circuit noted that Amneal’s failure to abide by the standing discovery order resulted in a trial situation that was “less than ideal.”  However, the Federal Circuit concluded that the district court did not abuse its discretion in denying the additional discovery, noting that the district court took adequate steps to ensure that proceeding with trial would not prejudice Merck.

The Federal Circuit said that the ultimate determination of infringement is a question of fact, which is reviewed for clear error.  The Federal Circuit rejected Merck’s argument that the district court improperly determined infringement of an intermediate product, rather than the final product, as imposing a heightened evidentiary standard in ANDA cases not supported by case law.  The Federal Circuit said that regardless of the type of sample (e.g., commercial or batch), the critical inquiry is whether it is representative of what is likely to be approved and marketed.

Finally, the Federal Circuit discerned no clear error in the district court’s fact-finding of noninfringement.  The district court found Amneal’s expert evidence “at least as consistent and credible” as Merck’s expert and concluded that Merck failed to prove infringement by preponderant evidence.

Amneal’s expert testified that although a single peak can be used at times, three Raman peaks are typically used to absolutely confirm the presence of molecules in complex mixtures like MFM.  Because the noninfringement finding was supported by this evidence in the record, the Federal Circuit concluded that the district court did not clearly err in its noninfringement finding.

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Tonight is the start of the 23rd Winter Olympic Games in Pyeongchang, South Korea. For the next month, people will cheer and support their country’s athletes as they engage in physical feats that seem to defy human limitations.  Many children watching in wonderment will imagine that someday they too could be Olympians. In all of this excitement, it is natural to engage in commentary about the Olympics on social media.

Any social media campaigns should be mindful of the relevant intellectual property rights of the organizers, the International Olympic Committee, United States Olympic Committee (“USOC”), the broadcast networks, reporters, athletes and others. For example, media clips, photographs and news articles are subject to copyright protection.  The athletes themselves likely have right of publicity regarding use of their image (think Michael Jordan v. Jewel-Osco case). Moreover, several logos, words and phrases are subject to trademark protection.

The USOC is one entity that vigorously enforces its intellectual property portfolio.  USOC owns a substantial number federally registered trademarks (e.g., logos, words and phases) including but not limited to OLYMPIC, LET THE GAMES BEGIN and TEAM USA.  See www.teamusa.org/brand-usage-guidelines.

The USOC does not take kindly to infringement of its trademarks.  In fact, the USOC has filed approximately 40 trademark infringement lawsuits since 1994.

To prevent unauthorized abuse, the USOC has developed brand usage guidelines that set forth the acceptable usage of the USOC trademarks.  Regarding social media, according to the guidelines, the USOC supports individuals rights to:

  • “Cheer for, send good luck to, or congratulate Team USA or other Olympic and Paralympic athletes on your personal social media accounts”
  • “Talk about Team USA, the Games, or Games-related sports performances on your personal social media accounts”
  • “Use hashtags that include USOC IP such as #OLYMPICS, #PYEONGCHANG2018, #TeamUSA, #GoForTheGold, or #GoTeamUSA on your personal social media accounts”
  • “Post news and information about Team USA, the Games or Games-related sports performances from journalistic outlets’ social media accounts per the Editorial Use Guidelines below [See link above]”

Nevertheless, commercial uses, including using the above identified hashtags on corporate social media accounts, is not permitted.  At first glance this policy might seem to date from Roman times. However, it is important to remember that trademarks are source identifiers.  Use of the USOC trademarks implies a formal sponsorship or relationship between the USOC and the commercial user.  The USOC earns a significant amount of revenue through corporate sponsorships, so, it is not hard to imagine why the USOC takes a hard line against unauthorized uses.

Thus, show your pride in your Olympians, but, avoid infringing the intellectual property rights of others.

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In In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018), the Federal Circuit rejected the Board’s claim construction of “injection molded” as a process limitation with no patentable weight, vacated the Board’s finding of anticipation, and remanded.

The application was directed to an elastic knee brace.  The claims required “an injection molded strut component and injection molded first and second arm components” and “an elastically stretchable framework injection molded about the strut and arm components of the hinge mechanism.”  The Examiner rejected the claims as anticipated, which the Board affirmed after finding that the applicant did not persuasively explain what structural limitation is imparted by “injection molded.”

The Federal Circuit said that when considering the patentability of product claims that contain process limitations, claim scope is generally based on the product itself, not the process.  The Federal Circuit noted that if the process limitation connotes specific structure and may be considered a structural limitation, however, that structure should be considered.

Nordt argued that the Board erred in presuming that “injection molded” was a product-by-process limitation, and the Federal Circuit agreed, stating that in presuming “injection molded” to be a process limitation, the Board confounded two somewhat distinct inquiries — the first being whether “injection molded” is a process or structural limitation, the second being the precise meaning of the limitation if structural.

As to the first inquiry, the Federal Circuit found that “injection molded” connotes structure.  Although the application describes “injection molded” as a process of manufacture, neither the Board nor the examiner disputed Nordt’s assertion that “there are clear structural differences” between a knee brace made with fabric components and a knee brace made with injection-molded components.  The Federal Circuit examined the specification and concluded that, at a minimum, the specification demonstrates that “injection molded” connotes an integral structure.

The Federal Circuit also noted a default rule where words of limitation that can connote with equal force a structural characteristic of the product or of a process of manufacture are commonly (and by default) interpreted in their structural sense — unless the patentee has demonstrated otherwise.  The Federal Circuit then cited numerous examples where limitations convey structure even when they also describe a process of manufacture.  The Federal Circuit asserted that not only does the specification itself convey a structural meaning to “injection molded,” but the applicant has repeatedly represented that it does.

Acknowledging that Nordt failed to persuasively or precisely explain what structural limitation is imparted by “injection molded,” the Federal Circuit nonetheless said that the failure to identify that structure does not affect the conclusion as the structural nature of “injection molded” can be gleaned from the plain claim language and the specification itself.

The Federal Circuit remanded so that the Board could construe the “injection molded” limitation, noting that the specification supports an interpretation that requires an integral structure, and saying it is up to the Board to determine whether this claim language requires any additional structure.

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There was a lot of discussion recently about the episode of NBC’s This Is Us, which implicated a faulty switch on a Crockpot® in the death of the family’s beloved patriarch, Jack Pearson.  The manufacturers opened a Twitter account to respond to angry fans, and it issued a lengthy statement defending its product and asking NBC for some help to correct the record.

This is probably as good as the manufacturer could do.  This unfavorable depiction is not trademark infringement or even dilution.  The use, while unfortunate from the trademark owner’s standpoint, is protected by the story tellers’ First Amendment rights.  While a disclaimer would be a nice gesture, it is not a legal requirement.

Other trademark owners facing abuse or misuse of their products have similarly found that there is not much legally that the brand owner can do.  Several years ago, Emerson Electric, the manufacturer of InSinkErator waste disposers was upset when the heroine of the TV series Heroes (also by NBC) deliberately put her hand in their waste disposal to demonstrate her recuperative power.  Emerson sued to mixed public reaction, and while it did get a concession by NBC to edit the depiction going forward, it eventually dismissed the case.

Many years ago, Caterpillar, upset with the villains’ use of its bulldozers to destroy the jungle in the movie George of the Jungle II, sued Disney.  The suit did not get far, however.  See, Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003).  Around that same time, Wham-O, maker of the iconic Slip ‘n’ Slide, sued Paramount Pictures for the misuse of the toy by the title character in the film Dickie Roberts: Former Child Star.  They did not get very far, either.  See, Wham-O, Inc. v. Paramount Pictures Corp., 2003 WL 2300526 (N.D. Cal. 9/29/03).

Trademark protection offers scant protection when bad things happen to good brands.  Trademark owners are better off fighting bad perception in the court of public opinion rather than in a court of law.

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In DCT Move, Inc. v. Real Estate Alliance, the CAFC affirmed the district court’s holding of invalidity of claims under 101. Here is the representative claim.

  1. A method using a computer for locating available real estate properties comprising the steps of:

a) creating a database of the available real estate properties;

b) displaying a map of a desired geographic area;

c) selecting a first area having boundaries within the geographic area;

d) zooming in on the first area of the displayed map to about the boundaries of the first area to display a higher level of detail than the displayed map;

e) displaying the zoomed first area;

f) selecting a second area having boundaries within the zoomed first area;

g) displaying the second area and a plurality of points within the second area, each point representing the appropriate geographic location of an available real estate property; and

h) identifying available real estate properties within the database which are located within the second area.

Abstract idea

The CAFC analogized the above claim with the claims held to be directed to an abstract idea in Electric Power Group, Intellectual Ventures I, and Content Extraction & Transmission and said that the claim is simply directed to the use of a computer to serve a conventional business purpose. The CAFC did, however, provide one quote that may be helpful to overcome the summary type 101 rejections over Electric Power Group that we have all likely seen — “we do not suggest that every claim involving the collection, organization, manipulation, or display of data is necessarily directed to an abstract idea …”

Inventive concept

The CAFC said “Claim 1 recites only generic computer components and features: a ‘computer’ and the creation of a ‘database.’” To support the conclusion of “generic computer components,” the CAFC pointed to the specification which states “the present invention may be implemented on an IBM or compatible personal computer system.” The CAFC also found it fatal that the specification didn’t provide any implementation details for how to performed the allegedly inventive zoom feature.

There are a few points to take away that may help patent drafters to better position a patent application to survive 101.  First, include as much detail as possible as to how the claim limitations are actually performed.  Second, avoid characterizing “the invention” and avoid using phrases like “the invention may be implemented on an IBM or compatible personal computer system.”

Owners of patents directed to computer-related inventions should take care to assess whether their patents will survive 101 challenges.

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In Paice LLC v. Ford Motor Company, [2017-1387, 2017-1388, 2017-1390, 2017-1457, 2017-1458, 2017-1406] (February 1, 2018), the Federal Circuit affirmed in part, reversed in part, and remanded Final Written decisions of the PTAB in six IPR’s involving U.S. Patent Nos. 7,237,634 and 8,214,097.

In particular, the Federal Circuit vacated the Board’s obviousness determinations as they relate to the ’634 patent’s “electrical” claims and remanded for the Board to determine whether those claims find written description support in the priority applications and the references incorporated therein, but otherwise affirmed the Board’s obviousness determinations as to all other claims.

Paice raised two principal arguments on appeal — first that the prior art did not disclose the claim limitations, and second that one of the references was not prior art to the claims.  The Federal Circuit made quick work of the first argument, finding that the Board correctly determined that the reference met the claim limitation.

Paice’s second argument, however, met with more success.  Paice argued that one of the references, the ’455 PCT publication, was not prior art to some of the electrical claims because they claim priority to an application (U.S. Patent Application No. 09/264,817) that predates the ’455 PCT publication.

The Federal Circuit noted that the priority date for later-added patent claims depends on when the claimed subject matter first appeared in the chain of patent applications from which the claims arose.  The Federal Circuit said that for claims to be entitled to a priority date of an earlier-filed application, the application must provide adequate written description support for the later-claimed limitations.  Paice argued that the application incorporated by reference a prior application that provided the requisite written description support.  The Board disagreed, holding that the application did not adequately incorporate the prior application, and that the claim limitations lack written description support in the prior application.

The Federal Circuit said that incorporation by reference provides a method for integrating material from various documents into a host document by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.  The Federal Circuit said that to incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the cited document, which the Federal Circuit found Paice did with this language:

This application discloses a number of improvements over and enhancements to the hybrid vehicles disclosed in the inventor’s U.S. Pat. No. 5,343,970 (the “’970 patent”) [Severinsky], which is incorporated herein by this reference. Where differences are not mentioned, it is to be understood that the specifics of the vehicle design shown in the ’970 patent are applicable to the vehicles shown herein as well.

The Federal Circuit rejected the Board’s interpretation of the last sentence of incorporation phrase limited the scope of the incorporation.  The Federal Circuit said this sentence had no bearing on the extent of incorporation, finding that it only refers to the applicability of certain features of the disclosure, instructing that: “The applicability of a document’s disclosed features and the incorporation of the document itself are distinct concepts, and one does not imply the other.”

This did not put an end to the saga for Paice, though.  The Federal Circuit said that to prevail on its argument that the ’455 PCT publication is not prior art to the claims, Paice must show that its ’817 application, with the incorporated material, provides sufficient written description support for those claims.  Because the Board improperly excluded the incorporated material, the Federal Circuit remanded the case for an initial Board determination.

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