IP Law Bulletin

In Ariosa Diagnostics, Inc., et al. v. Sequenom, Inc. et al., Nos. 2014-1139 and 2014-1144 (Fed. Cir. June 12, 2015), the Federal Circuit affirmed a district court’s finding on summary judgment that certain method claims of Sequenom’s U.S. Patent No. 6,258,540 (the ’540 patent) are invalid as being directed to patent ineligible subject matter under 35 U.S.C. § 101, finding that using conventional methods of detecting a naturally occurring phenomenon did not transform the natural phenomenon into a patentable invention. Judge Reyna wrote the opinion for the panel which included Judges Linn and Wallach. Judge Linn concurred.

In Commil USA, LLC v. Cisco Systems, Inc. (No. 13-896, May 26, 2015), the United States Supreme Court held that a good faith belief in the invalidity of a patent is not a shield to liability for active inducement of infringement. In so holding, the Court eliminated a defense which the Federal Circuit established just two years ago. Justice Kennedy, writing for the majority in this 6-2 decision, however, made clear that the removal of this quiver from an alleged infringer’s arsenal of defenses is not an endorsement of patent trolls.

The Patent Trial and Appeal Board (the Board) at the U.S. Patent and Trademark Office (USPTO) recently issued a decision interpreting the estoppel provisions of 35 U.S.C. §315(e)(1) in inter partes review (IPR) proceedings. See Dell Inc. v. Electronics and Telecommunications Research Institute, IPR2015-00549 (PTAB, Paper 10, March 26, 2015).

The decision is one of only a handful of institution decisions that have been designated as “representative” by the Board. Under the Board’s standard operating procedures, the “representative” designation is used to bring a decision to the attention of the public from among the numerous “routine” decisions issued by the Board.

On May 13, 2015, the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs will go into effect in the United States. The Hague system will, in effect, introduce a design patent analog to the current Patent Cooperation Treaty (PCT) international patent application and Madrid Protocol international trademark registration systems. Rather than filing for design patent protection in foreign jurisdictions individually, applicants will be able to file a single application at the USPTO to pursue protection in multiple jurisdictions. Other participating countries at the time of writing include the European Union and South Korea. Japan will adopt the agreement on the same date as the U.S., and Canada, China, and Russia are all said to be exploring the possibility of participation.

On February 4, 2015, in In re Cuozzo Speed Technologies, LLC the Federal Circuit decided the first appeal from the Patent Trial and Appeal Board (PTAB) regarding an Inter Partes Review (IPR). Inter Partes Review is a United States Patent and Trademark Office (USPTO) proceeding created by the America Invents Act (AIA) meant to offer a more expeditious and less expensive alternative to district court litigations on validity.

Giles Rich, the former Chief Judge of the Federal Circuit, once famously stated that “the name of the game is the claim.” Meaning, the patent claims themselves define the scope of the property right held by a patent owner. However, three recent Federal Circuit decisions may be shifting the spotlight away from the claims alone and shining a light onto the patent as a whole. The cases, Lexington Luminance v. Amazon.com, Fenner Invs., Ltd. V. Cello P’ship, and Pacing Tech. LLC, v. Garmin Int’l, Inc., place a stronger focus on the specification in the first instance—above even the plain meaning of the claims.

The general proposition that the courts should look to the intrinsic evidence (i.e., the specification, the figures, and the prosecution history) is not new. For example, in Phillips v. AWH Corp. the CAFC stated that the claims “are generally given their ordinary and customary meaning” as understood by persons skilled in the field of invention. The Phillips decision also stated that, in addition to looking at the plain meaning of the claims, the specification and the prosecution history may be consulted to ascertain the meaning of the claims. In Lexington Luminance, Fenner, and Pacing Tech., however, the CAFC appears to take this one step further.

On January 20, 2015, the United States Supreme Court decided the case of Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., which presented the question of the proper standard of review for factual findings by district courts during patent claim construction. The CAFC has long held that claim construction rulings, including underlying factual findings, are reviewed de novo (that is, without deference to the district court). The Supreme Court has now partly upended that rule, holding that determinations of fact made by district courts must be reviewed for abuse of discretion, which is more deferential to the district court. The Court left alone, however, the existing de novo standard of review for the ultimate legal determination of patent claims' meanings.

In mid-January, the USPTO published a notice that its Extended Missing Parts Pilot Program would continue through the end of 2015. Originally introduced in 2010, the Extended Missing Parts Pilot Program allows applicants to delay the payment of fees required for examination (i.e., the search fee, examination fee, any excess claims fees, and surcharges for late fee payment) by up to 12 months, allowing a sort of “extension” to the term of a provisional patent application. To take advantage of the program, applicants must submit a certification and request to participate when filing a nonprovisional or plant application that validly claims the benefit of a provisional application (applicants also must not have filed a nonpublication request). The Extended Missing Parts Pilot Program can be an effective tool to further delay costs associated with filing and prosecuting a patent application, thereby allowing funds to be put toward commercial development. However, the program does not affect the 12-month priority period for foreign filing under the Paris Convention, so applicants should be careful to complete any desired foreign filings within 12 months of their provisional application filing date.

Click here to read the Federal Register notice regarding the Extended Missing Parts Pilot Program.

Following on the heels of the Supreme Court’s decision in Alice v. CLS Bank, the United States Patent and Trademark Office (USPTO) issued subject matter eligibility guidelines for determining whether a patent claim amounts to “significantly more” than an abstract idea. The agency has now issued follow-on guidance in the form of eight fact patterns intended to demonstrate the abstract idea analysis in further detail. The fact patterns highlight some familiar themes that have emerged in the case law both pre- and post-Alice.

Today the United States Supreme Court decided the case of Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U. S.____ (2015), which presented the question of the proper standard of review for factual findings by district courts during patent claim construction. The Court of Appeals for the Federal Circuit (CAFC), the Nation's sole appellate court for cases arising under the patent statute (Chapter 35 of the United States Code), has long held that claim construction rulings, including underlying factual findings, are reviewed de novo (that is, without deference to the district court). The Supreme Court has now partly upended that rule, holding that determinations of fact made by district courts must be reviewed for abuse of discretion, which is more deferential to the district court. The Court left alone, however, the existing de novo standard of review for the ultimate legal determination of patent claims' meanings.

While the Court noted that "[i]n some instances, a factual finding will play only a small role in a judge's ultimate legal conclusion about the meaning of [a term in a patent claim]," in other cases "a factual finding may be close to dispositive of the ultimate legal question of the proper meaning of the term in the context of the patent." In either case, "the ultimate question of construction will remain a legal question."

Because the case before it presented a potentially dispositive factual dispute regarding the meaning of a particular term to persons skilled in the art, and because the CAFC overturned the district court's determination of that dispute under the de novo standard, the Court has remanded the case back to the CAFC with the instruction to apply the less stringent abuse of discretion standard to the district court's factual findings. Thus, while the Court was careful to note that "subsidiary factfinding is unlikely to loom large in the universe of litigated claim construction," there are sure to be litigants, like those in Teva Pharmaceuticals, who will be affected by this decision.

This advisory was prepared by the Intellectual Property practice group at Nutter McClennen & Fish LLP. For more information, please contact your Nutter attorney at 617.439.2000.

This advisory is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.