Archive for the ‘Court Decisions’ Category

The Importance of Inventorship

January 23, 2012

In the US, patents must name the inventors of the claims of the patent.  Any individual who contributed to the conception of the invention recited in a single claim of the patent must be named as an inventor.  If the proper inventors are not named, the paent can be declared invalid.  In addition, if the improper addition or exclusion of a true inventor is done with deceptive intent, the patent can be unenforceable due to inequitable conduct.

What may be of greater significance, however, is the rights acquired by each true inventor.  Unless the inventors have assigned their rights to another entity, or are under and obligation to do so (such as as a condition of employment), each inventor of even one claim of the patent has an undivided ownership right in the patent.  As an owner, each true inventor has the right to assign, license, or otherwise dispose of his or her rights in the invention without the permission or consent of the other owners or inventors.

Falana v. Kent State University

Dr. Falana was hired by Prof. Seed of Kent State to synthesize chiral organic compounds for a research project.  The compounds were intended for use in LCD displays.  After developing some appropriate compounds, Dr. Falana left to take another position.  The University (and a related company) filed a patent application naming Prof. Seed and several others as inventors, but not naming Dr. Falana.  Prof. Seed, Dr. Falana, and the other inventors later published a journal article on the invention.

After the patent issued, Dr. Falana inquired as to why he was not named as an inventor in the application.  When he didn’t receive a satisfactory response, he filed suit against the owners and inventors of the patent asking the court to order the PTO to add his name to the patent as an inventor.  The district court determined that he did qualify as an inventor and issued the requested order.  The case then moved to the Federal Circuit.

The question before this court is whether a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound.

The defendants argued that that the conception of the method of making the compound was irrelevant to the question of inventorship of the compounds themselves.  The court disagreed.

Where the method requires more than the exercise of ordinary skill, however, the discovery of that method is as much a contribution to the compound as the discovery of the compound itself. This case is simply the application of the well-known principle that conception of a compound requires knowledge of both the chemical structure of the compound and an operative method of making it. Accord-ingly, this court holds that a putative inventor who envi-sioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus.

The defendants tried another tactic, arguing that the particular commercial compound that embodies the claimed invention was not synthesized until after Dr. Falana left the position so he could not have been an inventor of that compound.  The court found this argument to be inapposite.  The claims were broader than the particular commercial compound.  The relevant inquiry is whether Dr. Falana contributed to the conception of the broad genus recited in the claims, not the particular compound that is used commercially.

Perhaps if the claims had been narrowly directed to the commercial compound, Dr. Falana would not be a proper co-inventor.  This is another issue to ponder when preparing patent applications and strategies for drafting claims.

Cert. Petition in Gene Patent Case

December 8, 2011

As expected, the ACLU filed a petition asking the Supreme Court to review the Myriad case.  The petitioners raise two questions in their brief.

1. Are human genes patentable?

2. Did the court of appeals err in adopting a new and inflexible rule, contrary to normal standing rules and this Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), that petitioners who have been indisputably deterred by Myriad’s “active enforcement” of its patent rights nonetheless lack standing to challenge those patents absent evidence that they have been personally and directly threatened with an infringement action?

The strange things about the petition are that the first question is the ACLU’s attempt to get cute about the case. 

The second is that the petitioners won on the second question when they probably shouldn’t have.  The only plaintiff to have standing saw lost his standing while the case was on appeal.  The Supreme Court should probably dismiss the case as moot.

We now await Myriad’s response before seeing whether the Supreme Court will wade into this case.

A copy of the petition is available here.

Litigation Update

December 2, 2011

In the midst of all of the discussions about Patent Reform and changes at the Federal Circuit, there are a number of cases working their way through the courts that could have profound impact on patent law.

Supreme Court

Caraco Pharm. v. Novo Nordisk is scheduled for argument next week on Monday and concerns pharmaceutical litigation under the Hatch-Waxman Act.  The issue in the case is whether a generic manufacturer that is sued for infringement by a brand-name manufacturer may file a counterclaim that the information on the patent listed with the FDA does not accurately and precisely claim the method of use claimed in the patent.  The counterclaim would require the brand-name manufacturer to correct or delete the incorrectly listed information.

Mayo v. Prometheus is scheduled for argument next week on Wednesday and concerns patentable subject matter under § 101.  The Federal Circuit has twice confirmed the patentability of the claims; now the Supreme Court will weigh in.

Kappos v. Hyatt is scheduled for argument on January 9.  This case concerns an issue of civil procedure under the Patent Act.  When a patent applicant is finally rejected by the USPTO (through a decision of the Board of Appeals), he has a decision of whether to appeal the case to the Federal Circuit or to sue the PTO Director in district court.  The issue in this case is whether when the applicant choses district court, he is entitled to introduce new evidence that was not presented to the PTO and whether the district court can review the evidence de novo or whether it must give deference to PTO decisions.

Saint-Gobain v. Siemens Med.:  The Supreme Court has requested input from the Solictor General on whether it should hear the appeal in this case.  This case concerns the standards for infringement under the doctrine of equivalents and whether they present a conflict with the rule of obviousness.  Can a patent be granted by the PTO as non-obvious over particular prior art while the invention embodied in the patent infringes that prior art under the doctrine of equivalents because the differences are insubstantial?  The Federal Circuit issued a number of sharp opinions in its denial to rehear the case en banc.  These type of situations often cause the Supreme Court to review these cases.  The Solicitor’s opinion will also carry weight with the Court.

Association for Molecular Pathology v. USPTO (Myriad):  The ACLU has announced an intention to file a cert. petition in this case that concerns the patentability of isolated gene patents and associated methods.  The Federal Circuit denied rehearing in September, which sets a December 12 due date for the cert. petition, unless an extention is granted.

Federal Circuit

En banc arguments were held in Akamai Techs. v. Limelight Networks and McKesson Techs. v. Epic Sys. on November 18.  The issue in these cases that were consolidated for review by the court is the proper standard for infringement of a multi-step process when the steps are performed by different parties.  The court has made it extremely difficult to prove infringement in such cases, leading patent attorneys to carefully prepare patent claims directed at a single infringing entity.

Other Cases

The Supreme Court may have petitions regarding patentable subject matter in several other cases to consider as well, including Classen v. Biogen and CyberSource v. Retail Decisions.

Finally, several other cases will be decided by the Federal Circuit in the coming months that will determine proper PTO procedure for claim interpretation during examination, affirming rejections on appeal, procedures for reissue applications, and multiple reexaminations, among other things.

Thanks to Hal Wegner for his list of important cases.

DuMont Withdraws; Richard Taranto is Next Nominee

November 11, 2011

Edward DuMont requested that his nomination to the Federal Circuit be withdrawn.  It was clear that after 19 months of inactivity by the Senate Judiciary Committee that “opposition from one or more members of the Committee minority” prevents his nomination from moving forward.  Given that Democrats control the committee and the Senate, it seems unlikely that the simple opposition of one or more Republicans could prevent DuMont from even getting a hearing.

Critics will argue that the opposition results from the fact that DuMont would have been the first openly gay appeals court judge.  It seems more likely that there was a problem in his background check.  Committee member Sen. Charles Grassley (R-IA) intimated that there were “questions about his background.”  Given that the committee is chaired by Sen. Patrick Leahy (D-VT), it seems unlikely that simple political opposition is the reason that he has never scheduled a hearing.  It’s too bad that we’ll probably never know the real reason.

Richard Taranto

Pres. Obama has now nominated Richard Taranto as a replacement for the DuMont nomination.  Taranto is a partner at the Washington, D.C. law firm of Farr & Taranto.  He clerked for Judge Robert Bork on the DC Circuit and Justice Sandra O’Connor on the Supreme Court.  He spent several years in the Solicitor’s Office during the 1980s.

Taranto’s practice specializes in appellage litigation.  As reported by Patently-O, Taranto has significant experience in intellectual property cases, both at the Federal Circuit and the Supreme Court.

He has participated in dozens of Federal Circuit patent appeals, including several Rambus cases, Verizon v. Cox, Lucent v. Gateway, Syngenta v. Monsanto, and others. Mr. Taranto has argued three IP cases before the U.S. Supreme Court: MGM v. Grokster (contributory copyright infringement), Warner Jenkinson v. Hilton Davis (patent law doctrine of equivalents), and Two Pesos v. Taco Cabana (trade dress infringement). Westlaw lists Mr. Taranto as counsel in over 90 reported court decisions. He has taught a variety of classes as an adjunct professor, including patent law at Harvard in 2002.

Evan Wallach Unanimously Confirmed to Federal Circuit

November 8, 2011

The Senate voted 99-0 to confirm Judge Evan Wallach to the Federal Circuit.  Wallach becomes the 11th member of the court that still has a vacancy.  Judge Wallach does not have signficant intellectual property experience.  He does bring significant experience in international trade, having been a judge on the Court of International Trade since 1995.  He is a veteran of the Vietnam War and served as Judge Advocate General in the Army and National Guard.

Meanwhile, Edward Dumont’s nomination continues to languish in the Judiciary Committee where it has been for 19 months.  No hearing for Wallach is scheduled.  Until this nomination is considered by the Senate or withdrawn by Pres. Obama, the Federal Circuit will remain one seat short, a victim of partisan politics.

Patentable Subject Matter at the Supreme Court

October 18, 2011

We didn’t really think that the issue of patentable subject matter was settled after Bilski.  The Supreme Court will be hearing another appeal in a patentable subject matter case in the current term.  Several others could be added to the docket as the losing parties will probably file cert. petitions to the Court.

Mayo v. Prometheus

The Court will hear argument in Mayo v. Prometheus on December 7.  This case concerns patent claims directed to methods of calibrating drug dosages.  The original district court opinion found the patent claims to be invalid as not directed to patentable subject matter.  In 2009, a Federal Circuit panel reversed the decision.  After the Supreme Court’s decision in Bilski, the Court ordered the Federal Circuit to reconsider this case.  The Federal Circuit did so and again confirmed the patentability of the claims.  The Supreme Court has again agreed to hear the case, presumably because the Federal Circuit disregarded the district court’s and Mayo’s extreme reliance on Justice Breyer’s dissent from the dismissal order in LabCorp.

Classen v. Biogen

Classen is a case that is similar to Mayo in that the claims are directed to immunization methods.  The Federal Circuit originally held that the claims did not meet Bilski‘s machine-or-transformation test.  After the Supreme Court’s decision in that case, the Federal Circuit had to reconsider its earlier opinion.  The court that included a largely reconstituted panel changed its position, holding that the claims are patent eligible.  Judge Newman and Chief Judge Rader held the claims to be patent eligible, while Judge Moore wrote an extensive dissent.  The opinions totaled 57 pages, potentially signalling that the case may be headed back to the Supreme Court.

A cert. petition is due in late November.  The Supreme Court may hold the petition until it decides the Mayo case since the cases are similar.  It could then tell the Federal Circuit to reconsider its opinion again.

Association for Molecular Pathology v. Myriad

After the district court held that Myriad’s patent to isolated genes were not patent eligible, the Federal Circuit reversed.  The court did hold that several claims to methods of comparing and analyzing gene sequences were not eligible since they are directed to abstract mental processes.  Another big issue in this case, ignored by the Federal Circuit, is that none of the plaintiffs have standing in the case anymore.  This could be a problem for Supreme Court review.

A cert. petition is due in December.  The ACLU originally filed this case with the expectation of High Court review, so a petition is expected to be filed.

CyberSource v. Retail Decisions

In CyberSource, the Federal Circuit repudiated tens of thousands of patents in holding that Beauregard-type claims may be considered as methods directed to abstract ideas.  Beuregard-type claims are claims that are directed to computer-readable media that include program instructions for performing a particular method.  The Patent Office has been granting such patents for years with the understanding that a computer-readable medium is a tangible object and not an abstract method.

If no rehearing petitions are filed in this case, a cert. petition would be due in December.

Judiciary Committee Approves Judge Wallach

October 10, 2011

Last week, the Senate Judiciary Committee voted to recommend confirmation of the nomination of Court of International Trade Judge Evan Wallach fill Judge Arthur Gajarsa’s seet on the Federal Circuit.  The nomination was approved by voice vote without significant discussion and now moves to the Senate floor for confirmation by the entire Senate.

The Federal Circuit is currently short by two active judges.  Edward DuMont was nominated by President Obama to fill Judge Paul Michel’s seat, but DuMont’s nomination appears to be stalled.  In the 18 months since the nomination, the Judiciary Committee has yet to schedule a hearing on his nomination.

Discussion of Supreme Court’s Patent Jurisprudence at SCOTUSblog

October 6, 2011

I am participating in a discussion on SCOTUSblog regarding the Supreme Court’s patent jurisprudence.  Many other distinguished patent and intellectual property scholars are also participating.

Check it out.

Federal Circuit Holds Internet Monetization Method is Patent-Eligible

September 15, 2011

The Federal Circuit ruled today that the claimed method of monetizing and distributing copyrighted products over the Internet is a patent eligible process in Ultramercial, LLC v. Hulu, LLC.

At issue in the case was claim 1 of U.S. Patent No. 7,346,545:

A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of receiving, from a content provider, media products that are covered by intellectual property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

The district court had dismissed the infringement action holding that the claim was not directed to patent-eligible subject matter.  The Federal Circuit acknowledged that it has not provided a definitive rule that a claim be construed by the court prior to the patent eligibility determination, but strongly suggested that it may be helpful for courts to do so.

After once again reviewing the case law on patent eligibility from the Federal Circuit and Supreme Court, Chief Judge Rader, writing for the panel, easily found the claim to be a “process” within the meaning of the Patent Act and thus falls within a § 101 eligibility category.  The only issue is whether the claim falls within the abstract idea exception.

In its analysis of whether the claim is directed to an abstract idea, the court gave weight to the patent’s purported improvement of existing technology and that it invokes computers and applications of computer technology.  The claim does not merely recite the abstract idea that advertisement can be used as a form of currency, but relates to a practical application of this idea.  The various steps likely require intricate and complex computer programming, and specific application of the Internet and cyber-market environment.

Although the claim may not meet the other requirements for patentability under the Patent Act (novelty, non-obviousness, enablement, written description, etc.), it is not ineligible for patenting under § 101.

Evan Wallach Confirmation Hearing

September 12, 2011

Lost amid last week’s news surrounding passage of patent reform was the Senate Judiciary Committee’s confirmation hearing of Evan Wallach.  In July, Judge Wallach was nominated to a seat on the Federal Circuit to replace Judge Gajarsa who assumed senior status.

Judge Wallach’s hearing last week was described as a “welcoming reception” by the Committee.  He was introduced to the panel by Senate Majority Leader Harry Reid (D-NV), for whom Judge Wallach served as general counsel and advisor in 1987-88.  The Committee appeared inclined to advance his nomination, but there is still a backlog with bringing such nominations to the full Senate for a vote.  Sen. Reid said he will work to get Judge Wallach confirmed by the end of the year.

Meanwhile, the Federal Circuit works with only 10 of its 12 seats filled.  Edward DuMont has now been waiting 17 months for his hearing before the Judiciary Committee.  DuMont was nominted to the court in April 2010 to replace retiring Chief Judge Michel.


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