June 2014
CIPA Journal
By Anthony C. Tridico, Ph.D.; Elizabeth D. Ferrill; Elizabeth D. Ferrill, Kaetochi Okemgbo, and Anthony C. Tridico, Ph.D.
Authored by Elizabeth D. Ferrill, Kaetochi Okemgbo*, and Anthony C. Tridico, Ph.D.
For the U.S. Court of Appeals for the Federal Circuit, 2014 has already been a busy year. Here is a quick summary of the major decisions we have seen so far.
Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, No. 13-1199 (Fed. Cir. Jan. 8, 2014)
In Pacific Coast Marine Windshields v. Malibu Boats, the Federal Circuit held that prosecution history estoppel applies to design patents. Prosecution history estoppel doctrine prevents the patentee from "recapturing" subject matter surrendered during prosecution as a condition of receiving the patent. The Court explained that when an applicant amends a claim in response to an examiner's restriction requirement, the applicant has surrendered such designs and limited the claim.
According to the Court, although the surrender resulted from a restriction requirement and not to avoid prior art, and thus not for reasons of patentability, the doctrine of prosecution history estoppel nonetheless "arises when an amendment is made to secure the patent and the amendment narrows the patent's scope." Id. at 14. The Court explained that because design patents may include only a single claim, and thus only one patentable design, "in design patents, unlike utility patents, restriction requirements cannot be a mere matter of administrative convenience." Id.
Amending a design patent claim in response to a restriction requirement invokes prosecution history estoppel. The exact scope of the surrender depends on the circumstances of the case.
Novartis v. Lee, Nos. 13-1160, -1179 (Fed. Cir. Jan. 15, 2014)
In Novartis v. Lee, the Federal Circuit amended the U.S. Patent and Trademark Office's (USPTO's) interpretation of 35 U.S.C. § 154(b)(1)(B) for calculating patent term adjustment (PTA). Under 35 U.S.C. § 154, the term of a U.S. patent begins on the date the patent issues and ends twenty years from the earlier of filing date of the application or the earliest date on which the application claims priority. Section 154(b)(1)(B) grants an extended patent term when the application takes more than three years to issue as a patent, commonly called "B delay." The USPTO had interpreted § 154(b)(1)(B)(i) to mean that filing an Request for Continued Examination (RCE) cuts off the B delay period. Thus, in practice, the USPTO calculated the B delay by determining the number of days from the filing date or national stage entry date of the application up to the issue date of the patent or, if an RCE was filed, up to the filing date of the first RCE. If those days totaled more than three years, then extra term would be awarded for each day over three years.
The Federal Circuit held that an RCE limits B delay regardless of when during prosecution it is filed. Id. at 13–14. However, the Court held that the time period from allowance to patent issuance is not part of the "continued examination" process referred to in the statute and, accordingly, may contribute to the B delay. Id. at 15–16. In short, the Court held that the B delay period for an application in which an RCE was filed equals the time that exceeds three years from filing or national stage entry date up to the filing of the first RCE, plus the time from allowance to issuance of the patent. Because there is almost always lag time between allowance and issuance, the B delay period will almost always be longer under the Court's determination than under the previous USPTO calculation method.
The B delay period includes the time between allowance and issuance of a patent. This will extend the terms of many future patents, typically by a few days to a few months.
Danisco US Inc. v. Novozymes A/S, No. 13-1214 (Fed. Cir. Mar. 11, 2014)
Article III of the U.S. Constitution prohibits U.S. federal courts from issuing advisory opinions. In other words, a case or controversy must exist for U.S. federal courts to have subject matter jurisdiction. In Danisco v. Novozymes, the Federal Circuit held that events which occur before patent issuance may establish a justiciable controversy under the U.S. Declaratory Judgment Act. Even if the patentee has not yet taken any post-issuance action to enforce its patent rights, there may still be a definite and concrete patent dispute between the parties sufficient to establish subject matter jurisdiction for a lawsuit. According to the Court, "Article III does not mandate that the declaratory judgment defendant have threatened litigation or otherwise taken action to enforce its rights before a justiciable controversy can arise." Id. at 7.
The Federal Circuit held that a history of patent litigation between the same parties involving related products, technologies, and patents may weigh in favor of subject matter jurisdiction. A pattern of administrative challenges regarding such patents may also be considered. The Court refused to establish a bright-line distinction between pre- and post-issuance conduct, explaining that such a distinction would be irreconcilable with the Supreme Court's flexible "totality of the circumstances" test and rejection of technical bright-line rules in the context of justiciability. The Court further noted that such a bright-line rule would be inconsistent with the Court's own precedent, which did not hold that pre-issuance conduct cannot be an affirmative act or that an affirmative act is required to create a justiciable controversy.
When the relationship between parties makes it clear a patentee will likely sue for infringement, the potential infringer need not wait for the patentee to assert the patent before filing a lawsuit for declaratory judgment. Depending on the circumstances, a party may be able to file for declaratory judgment immediately after a patent issues.
Gilead Sciences, Inc. v. Natco Pharma Limited, No. 13-1418 (Fed. Cir. Apr. 22, 2014)
In Gilead Sciences v. Natco Pharma, the Federal Circuit held that a later-issued, earlier-expiring patent could serve as an obviousness-type double-patenting reference against the asserted patent. The Court first reviewed the obviousness-type double-patenting doctrine, explaining it "is based on the core principle that, in exchange for a patent, an inventor must fully disclose his invention and promise to permit free use of it at the end of his patent term." Id. at 6. The Court noted the addition of 35 U.S.C. § 253 in 1952, which in part permits a patentee to disclaim any terminal part of a patent term, as well as the Court's recognition in Application of Robeson, 331 F.2d 610, 614 (CCPA 1964), that § 253's terminal-disclaimer provision provides patent owners a remedy against a charge of obviousness-type double patenting.
The Federal Circuit then held that the principle protected by the obviousness-type double-patenting doctrine "is violated when a patent expires and the public is nevertheless barred from practicing obvious modifications of the invention claimed in that patent because the inventor holds another later-expiring patent with claims for obvious modifications of the invention." Id. at 11. According to the Court, the relevant date of comparison was the date of patent expiration, not the date of patent issuance. Allowing any earlier-expiring patent to serve as a double patenting reference "guarantees a stable benchmark that preserves the public's right to use the invention (and its obvious variants) that are claimed in a patent when that patent expires" and preserves the ability of inventors to use a terminal disclaimer of later-expiring patents to create one expiration date for their term of exclusivity. Id. at 15. The Court therefore held that a patentee's earlier-expiring patent could qualify as an obviousness-type double-patenting reference for the patentee's later-expiring patent.
Any earlier-expiring patent may qualify as an obvious-type double-patenting reference regardless of when it was filed or issued. An inventor or owner of multiple patents with related claims may preserve patent validity by using a terminal disclaimer.
St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., No. 2014-1183 (Fed. Cir. Apr. 24, 2014)
In re Dominion Dealer Solutions, LLC, No. 2014-109 (Fed. Cir. Apr. 24, 2014)
In re Proctor & Gamble Co., No. 2014-121 (Fed. Cir. Apr. 24, 2014)
In a trio of cases decided on the same day, the Federal Circuit held that a Patent Trial and Appeal Board (PTAB) institution decision on an inter partes review (IPR) may not be appealed to the Federal Circuit. In St. Jude, the Court explained, "Chapter 31 authorizes appeals to this court only from 'the final written decision of the [PTAB] under section 318(a).' [35 U.S.C.] § 319. Likewise, section 141(c) in relevant part authorizes appeal only by 'a party to an IPR . . . who is dissatisfied with the final written decision of the [PTAB] under section 318(a).'. Id. § 141(c)." St. Jude, slip op. at 4. Indeed, the Court explained, the statute "'declares that [t]he determination by the Director whether to institute an IPR under this section shall be final and nonappealable.'" Id. at 5 (quoting 38 U.S.C. § 314(d)). Accordingly, taking into consideration the chapter 31 provisions and section 141(c), the Court determined that it lacked jurisdiction to hear an appeal of the PTAB decision not to institute an IPR.
In In re Dominion, the Court reiterated its holding in St. Jude and denied a writ of mandamus asking the Court to vacate a Board decision not to institute an IPR. In In re Proctor & Gamble, the Court held that St. Jude's reasoning also applied to a Board decision to institute an IPR. According to the Court, such a decision is not immediately appealable to the Federal Circuit.
A PTAB decision to institute or not to institute an IPR may not be appealed to the Federal Circuit.
In re Packard, No. 13-1204 (Fed. Cir. May 6, 2014)
In In re Packard, the Federal Circuit clarified that the "insolubly ambiguous" standard courts apply to review definiteness of patented claims does not apply to claims pending before the USPTO. Instead, when examining a pending application, the Court held, the USPTO may properly reject as indefinite any claim that is not "as reasonably precise as the circumstances permit[]." Id. at 12.
First, the Court recognized that Congress structured an interactive process between the USPTO examiner and the applicant to ensure that issued patents comply with 35 U.S.C. § 112(b). Id. at 7–8. Thus, the Court reasoned, it makes good sense for definiteness and clarity of the claims, for the USPTO initially to issue a well-founded prima facie case of lack of clarity. And, if the applicant does not adequately respond to that prima facie case, for the USPTO to confirm the rejection on the substantive basis of failing to meet the requirements of § 112(b). Next, the Court addressed the requirements of a well-founded prima facie case of lack of clarity. The Court cited the statutory language of § 112(b) calling for "particular[ity]" and "distinct[ness]" of claim language, and the function of claims as providing notice to the public of what the patent protects. Id. at 10. Thus, the Court reasoned, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms. Id. The Court concluded the USPTO is obliged to test whether the claims utilize language as reasonably precise as the subject matter permits to apprise one skilled in the art of the utilization and scope of the invention. Id.
Shortly after In re Packard was decided, the U.S. Supreme Court discarded the "insolubly ambiguous" standard altogether, holding that a patent is indefinite if its claims, read in light of the specification and prosecution history, "fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. BioSig Instruments, Inc., No. 13-369, slip op. at 1 (June 2, 2014, S. Ct.).
The USPTO may reject for indefiniteness any claim that is not as reasonably precise as the circumstances permit.
In re Roslin Institute (Edinburgh), No. 2013-1407 (Fed. Cir. May 8, 2014)
In In re Roslin, the Federal Circuit held that cloned animals are unpatentable subject matter under 35 U.S.C. § 101. This case focused on a claim to "a live-born clone of a pre-existing, non-embryonic donor mammal . . . ." The Federal Circuit called a clone "an identical genetic copy of . . . [an] organism." Id. at 2. In re Roslin applies the Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, 133 S.Ct. 2107 (2013). The Federal Circuit stated that "[h]ere, as in Myriad, Roslin 'did not create or alter any of the genetic information' of its claimed clones, '[n]or did [Roslin] create or alter the genetic structure of [the] DNA' used to make its clones.'" Id. at 7. The Federal Circuit interpreted the claims to cover "exact genetic copies of patent ineligible subject matter," and "[s]uch a copy is not eligible for patent protection." Id. at 8.
Because the clones are "defined in terms of the identity of their nuclear DNA to that of the donor mammals," the Federal Circuit held that they were not markedly different from what is found in nature, as required by Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) and Diamond v. Chakrabarty, 447 U.S. 303 (1980). Any differences between the donor and clone were rejected as "unclaimed." The Court noted that "[t]here is nothing in the claims, or even in the specification, that suggests that the clones are distinct in any relevant way from the donor animals of which they are copies." Id. Thus, the Court held a clone is ineligible for patent protection because "it constituted a natural phenomenon that did not possess 'markedly different characteristics than any found in nature.'" Id. at 4.
A live animal clone is a natural phenomenon and thus cannot be patented in the United States.
Oracle America, Inc. v. Google Inc, No. 2013-1021, -1022 (Fed. Cir. May 9, 2014)
In Oracle v. Google, the Federal Circuit held that functional aspects of software are entitled to copyright protection so long as they meet the threshold of originality and creative expression required by copyright law. The Court began by explaining that "copyrightability and the scope of protectable activity are to be evaluated at the time of creation, not at the time of infringement." Id. at 31. Therefore, a district court should not consider an accused infringer's desire for interoperability when determining the scope of copyright protection. The Court rejected the idea that copyright could not extend to functional elements of software, holding that "an original work—even one that serves a function—is entitled to copyright protection as long as the author had multiple ways to express the underlying idea." Id. at 43. Therefore, "a set of commands to instruct a computer to carry out desired operations may contain expression that is eligible for copyright protection." Id. at 42–43.
If the code created by a programmer contains original, creative expression, the fact that it is also functional will not preclude copyright protection.
For many of these cases, the losing side may petition for en banc review by the entire Federal Circuit or may ask the U.S. Supreme Court to consider these issues. So stay tuned for further developments!
*Kaetochi Okemgbo is a Law Clerk at Finnegan.
Originally printed in CIPA Journal. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
Hybrid Conference
2024 California Intellectual Property Law Institute
October 21-22,2024
San Francisco
Conference
2024 Licensing Executives Society USA – Canada Annual Meeting
October 20-23, 2024
New Orleans
Conference
4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA
October 8-24, 2024
Virtual
Conference
2024 Corporate Counsel Women of Color: Career Strategies Conference
October 2-5, 2024
Las Vegas
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.