USPTO's Proposed New Limits on Claims and Continuations are void per district court ruling- April 1, 2008
The eastern district court of Virgina granted GSK motion for summary judgment stating that the USPTO's new proposed rules exceeded its authority and declaring the proposed final rules to be null and void. The court further enjoined the USPTO from implementing the rules.
On p. 10 of the opinion the court states:
[T]he Court finds that the Final Rules are substantive in nature and exceed the scope of the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2). Consequently, the Court will grant summary judgment to GSK and Tafas and void the Final Rules as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.” 5 U.S.C. § 706(2).
The court found that the limits on continuations were substantive and therefore exceed the PTO's authority.
Final Rule 78 and the hard limit it imposes changes existing law and deprives applicants of their valuable rights under 35 U.S.C. § 120 to an unlimited number of continuation and continuation-in-part applications as a matter of right. By so doing, it may also impact applicants’ rights under Sections 102 and 103 and result in the denial of otherwise meritorious patents. For these reasons, the Court finds that Final Rule 78 is a substantive rule.
The court gave analysis for findING the 5/25 rule on cliam limitations and the ESD requirements were also substantive.
Under 35 U.S.C. § 112 ¶ 6, a means-plus-function term in a computer implement claim must be supported by an example algorithm
Aristocrat Technologies Australia (ATA) v. International Gaming Technology (IGT) (2007-1419) (Fed. Cir. 2008) --- March 31, 2008
The CFAC held that to satisfy 35 U.S.C. § 112 ¶ 6, for a means-plus-function term in a computer implement claim, the specification must disclose an example ( "structure") algorithm for that means-plus-function term.
The court stated that the patentee "was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a “special purpose computer programmed to perform the disclosed algorithm.” WMS Gaming, 184 F.3d at 1349.
Practice tip: include example algorithms for computer means-plus-function terms. Also write additional claim types without means plus function terms.
District court discretion for declaratory judgment jurisdiction should consider "convenience factors"
Micron Technology, Inc. v. Mosaid Technologies, Inc., Fed. Cir., No. 2007-1080, Feb. 29, 2008.
The CAFC held that a district court should take into account the "convenience factors" in the analysis under 28 U.S.C. § 1404(a) in determining declaratory judgment jurisdiction .
Micron Technology, Inc. v. Mosaid Technologies, Inc., Fed. Cir., No. 2007-1080, 2/29/08.
http://www.cafc.uscourts.gov/opinions/07-1080.pdf
Micron filed a declaratory judgment in Northern California against MOSAID, a day prior to MOSAID filing in East Texas. The Northern CA Court threw out the case because it found that Micron did not show jurisdiction. Micron appealed. The CAFC remanded the case back to Northern CA.
New trademark rules to require a description of the mark in TM applications where the mark is not in standard characters.
See 73 Fed. Reg. 13780. March 14, 2008
Senate Patent Reform Leaders Release Amendments
- March 12, 2008
3/12/2008, Senator Leahy issued a press release detailing more than a dozen dozen possible amendments to important patent reform legislation awaiting consideration in the Senate.
The amendments released include:
· “Best Mode” – eliminates ‘best mode’ as a ground for invalidating a patent, but maintains it as a requirement to obtain a patent
· Ex Parte Provision – restores third party ex-parte reexamination
· Federal Circuit Judges – ensures that any Federal Circuit judge who does not reside within a 50-mile radius of Washington, DC, must use the chambers of an existing courthouse in the district where they reside
· Interference – technical amendment to allow for appeal to the Federal Circuit of USPTO board interference decisions commenced prior to the date of the Act
· Interference – amends the bill to delete interference-related provisions and replace with new derivation-related provisions
· Interlocutory Appeals – limits interlocutory appeals of claim construction orders to those for which the District Court determines there is a reasonable basis for disagreement and the appeal may advance the ultimate termination of the litigation
· Marking Provision – deletes the marking provision in the bill and maintains the current law
· “Objective Recklessness” – codifies the Federal Circuit court’s ruling in Seagate, holding that infringement is only willful if the infringer acts with objective recklessness of the patent
· Patent and Trademark Board Judges – ensures that the appointment of patent and trademark judges is consistent with the Appointments Clause
· Patent Board Judges – technical amendment to clarify that the Patent Board’s duties include the conduction of derivation proceedings
· Post-Grant Review – technical amendment to delete a redundancy in sec. 338 as created in S 1145
· Post-Grant Review – corrects an inconsistency between S 337 (1) and (2), to preclude requesting or maintaining a post-grant review proceeding after a final decision in litigation on the same patent, based on any issue that was raised or could have been raised, in the litigation
· Post-Grant Review – defines “final decision” in the estoppel provision
· Post-Grant Review – technical amendment to delete a redundancy
· Severability – establishes a severability clause in the bill
To download all of the above amendments, click here
Related links
http://leahy.senate.gov/press/200803/031208e.html
Feb. 2, 2008 - CAFC case rulings relate to obviousness jury instructions, prosecution history estoppel and adding claims in re-examination -
Cordis Corp. v. Medtronic AVE, Inc. and Boston Scientific Corp., Case Nos. 06-1393, -1394, -1395, -1396, -1415, -1416 (Fed. Cir., Jan. 7, 2008) 
The CAFC affirmed a pre-KSR jury instruction that a modification is not obvious unless the prior art suggests the desirability of the modification. The court also refined the scope of argument-based estoppel under the doctrine of equivalents. The court also held that during re-examination the patentee can add additional claims for the purpose of covering a competitor’s device as long as the claim were added to distinguish over prior art.
January 31, 2008 - USPTO and Japan Patent Office (JPO) Launch the Patent Prosecution Highway Program - For more information about the program with the USPTO and JPO, please go to: http://www.uspto.gov/web/patents/pph/pph_jpo.html.
See links for more info on the pilot program with the UK IPO, CIPO, or KIPO,
Oatey v. IPS (CAFC 07-1214)(Fed. Cir. 2008) decided Jan. 30, 2008 - Claims Should be Interpreted to Include Disclosed Embodiments -
Oatey’s Claims 1,2,3 5 and 15 in patent US 6,148,850 include a was
hing machine drain with “first and second juxtaposed drain ports.”
The district court rules for a summary judgment of noninfringement by construed that claims to require “two separate identifiable physical elements". "The district court construed the clause "first and second juxtaposed drain ports in said bottom wall" as "two separate identifiable physical elements that are adjacent or near each other." The court further determined that this clause requires that there be two separate physical openings in the bottom wall of the outlet box, as shown in Figure 2, and not a single opening divided by a wall in the attached tailpiece, as shown in Figure 3. "
On appeal, the CAFC reversed. The court held that absent disclaimer or estoppel, claims should normally be interpreted to include disclosed embodiments.
"We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification. "
The court further stated "There is no issue in this case of disclaimer or estoppel during prosecution, as would preclude recovery of such lost scope, and IPS offers no support for its contrary suggestion."
January 15, 2008- Baldwin Graphics v. Siebert (Fed. Cir. 2008) - The CAFC reversed the district court’s claim construction and remanded.
The CAFC applied the general rule in claim interpretation that “a” or “an” are interpreted as “one or more.” The court noted that "exceptions to this rule are extremely limited: a patentee must “evince[ ] a clear intent” to limit “a” or “an” to “one”".
Furthermore, the CAFC also held that it is improper to interpret system and method claims together and found that the district court improperly imported a limitation form the method claims into the system claim.
January 8, 2008 - SRI Int’l v. Internet Security Systems (Fed. Cir. 2008). - In a split decision, CAFC found that a prior art paper on a FTP server may not necessarily be prior art under 35 U.S.C. 102(b). The paper on the FTP server was accessible by the public thru the internet. But that paper was uncataloged and therefore was difficult to search. The court remanded the case finding genuine issues of material fact as to whether the paper was "publicly accessible" as required by 35 USC. § 102(b).
October 31, 2007 - The US District Court for the Eastern District Court of Virginia issued a Preliminary Injunction enjoining the USPTO from implementing the changes in the New Rules (e.g., Claims and Continuations Final Rule). Therefore, the changes to the rules of practice in the Claims and Continuations Final Rule will not go into effect on November 1, 2007.
October 15, 2007 - USPTO - The 8th edition, revision 6 of the Manual of Patent Examining Procedure is now available on USPTO website.- Manual of Patent Examining Procedure" Edition 8 (E8), August 2001, Last Revision September 2007
October 10, 2007 - USPTO Publishes Examination Guidelines for Determining Obviousness in Light of the Supreme Court’s KSR v Teleflex Decision - -The Department of Commerce’s United States Patent and Trademark Office (USPTO) has published Examination Guidelines (Guidelines) to help USPTO examiners make appropriate decisions regarding the obviousness of claimed inventions in light of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. __, 82 USPQ2d 1385 (2007) (KSR).
August 21 2007- Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, Final rule
August 20, 2007 - In Re Seagate Technology, LLC (misc. docket no. 830), the CAFC overruled the "affirmative duty of care" from Underwood Devices . The court, In re Seagate Technology, LLC, Slip op. at 11 Gives a two prong willfulness standard.
- To establish willful infringement, first. a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." ... "The state of mind of the accused infringer is not relevant to this objective inquiry."
- Second, "If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer. " In re Seagate , Slip op. at 11
Related to waiver of attorney-client privilege, the court also held " that asserting the advice of counsel defense and disclosing opinions of opinion counsel do not constitute waiver of the attorney-client privilege for communications with trial counsel." id. at 18
May 3, 2007 - USPTO Deputy Commissioner Peggy Focarino issued a memo to the technology center directors with preliminary guidance in view of the KSR v. Teleflex Supreme court decision.
USPTO - Begins New Electronic Priority Document Exchange Program - allows for the electronic transfer of certified copies of foreign patent applications See 72 Fed. Reg. 1664 - January 2007.
see announcement on USPTO site and notices
January 7, 2007, the Supreme Court, in MEDIMMUNE, INC. v. GENENTECH, INC. (No. 05-608), 427 F. 3d 958, held that a patent licensee in good standing does not have to reject the license in order to file a declaratory judgment action that challenges the validity of the underlying patent. Prior to this, patent licensees in good standing could not bring declaratory judgment actions challenging the validity of the underlying patents. Prior rulings held that, as long as the license is in effect, the licensee is not at risk of patent infringement charges, thus eliminating the case or controversy prerequisite for filing a declaratory judgment action.
USPTO Proposal to Give Patent Filers Accelerated Review Option - Proposal would guarantee final decision in 12 months - June 2006
The CAFC in Honeywell International v ITT Industries, (Fed. Cir. 2006) 05-1407 found the the phase "the invention" in the specification limited the claims. Patent Practitioners should use phases other than "The invention" in the specification.
USPTO announced e-FOIA May 2006. Through this page you can search for publicly available final decisions rendered by the Board of Patent Appeals and Interferences.
Note that most decisions are not precedential. The last precedential decision was Ex Parte Lundgren in 2005. This case eliminated the "Technological Arts" requirement for business method patents.
Feburary 23, 2006 USPTO Announces Enhancements for Private Pairs - Enhancements include: web base digital certificate security, "first office action" estimation, and new layout.
See http://webex.client.ninesystems.com/uspto for a recording of the PTO announcement.
USPTO Extends the Pilot Pre-Appeal Conference Program - 11 Jan 2006 - The program is extended until further notice.
MPEP 8th edition - incorporates the final rules: from the "CREATE Act of 2004,” which became effective on September 14, 2005. Also, Chapter 2300 incorporate the new Board of Patent Appeals and Interferences rules that became effective on September 13, 2004.
USPTO- Issued new interim guidelines for the examination of business method patents - Oct. 28,2005
In view of the Ex parte Lundgren, Appeal No. 2003-2088 (BPAI 2005), the USPTO issued new guidelines. The Lundgren case held that the "technical arts" requirement is not valid. In response the USPTO issued the above guidelines.
Oct. 18, 2005 - USPTO- Revised Procedure for Preliminary Amendments requiring a Substitute Specification - - The USPTO restated the rules for situations when a substitute specification is required when filing a preliminary amendment. These rules are meant to facilitate the publication of applications. The USPTO has encouraged applicants to file continuations and divisional applications without preliminary amendments by including the desired changes as part of the specification and drawings of the new application. Click here for a link to the USPTO notice.
CREATE ACT - Final Rules issued - effective Sept. 14, 2005 - allows parties to a Joint research agreement to remove some prior art.