IP Law Bulletin

It can sometimes be difficult to determine whether or not a certain term in a claim will be considered a means-plus-function claim element when the term is not in the typical “means for” format. The Federal Circuit recently provided some guidance related to making this determination in EnOcean GMBH v. Face Int’l Corp., where the term “receiver” was ruled to not constitute a means-plus-function claim element. 

In the recent case of Medtronic v. Mirowski, the Supreme Court held that “when a licensee seeks a declaratory judgment against a patentee to establish that there is no infringement, the burden of proving infringement remains with the patentee.” This decision extends the Court’s MedImmune ruling, which allows licensees to challenge the validity and/or infringement of a patent without repudiating the underlying license.

Importance of design patent applications is steadily increasing. Design patents have traditionally been considered not a particularly strong intellectual property (IP) protection tool. In its 2008 en banc decision in Egyptian Goddess v. Swisa, the Federal Circuit brought some clarity into determining design patent infringement by holding that that the ordinary observer test, in view of prior art, was the “sole test” for determining infringement. Additionally, the jury award of $290 million to Apple in the familiar Apple v. Samsung battle involving alleged infringement by Samsung of Apple’s iPhone design patents further increased public interest in the role of design patents in IP protection. In view of these decisions, and the relative ease and low cost of obtaining design patents, design patents have been gaining popularity among large and small companies alike.

The Federal Circuit’s recent decision in Medtronic v. Edwards Lifesciences highlights the importance of maintaining accurate priority claims in patent applications, particularly those with multiple generations of priority.

On March 4, 2014, the U.S. Patent and Trademark Office (USPTO) published the long-awaited Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products. The Guidance implements new examination procedures to address the recent Supreme Court decisions in Association for Molecular Pathology v. Myriad Genetics (holding that isolated natural DNA sequences are not patent eligible) and Mayo Collaborative Services v. Prometheus Laboratories (holding that application of a law of nature, using only known steps, is not patent eligible). Since those decisions issued in June 2013 and March 2012, respectively, the patent community has eagerly anticipated the USPTO guidelines.

The U.S. Court of Appeals for the Federal Circuit recently decided Ohio Willow Wood Co. v. Alps South, LLC (Fed. Cir. 2013), which involved various legal issues, including collateral estoppel, obviousness, and inequitable conduct. The collateral estoppel aspects of the case are of particular interest because the issue preclusion finding was based on a different, related patent.

Both the legislature and the judiciary are currently engaged in attempts to curb so-called “patent trolling” – the use of patents solely for litigation instead of innovation, development, and protection of marketed products. Rising concerns over this behavior led to the recent passage of H.R. 3309 (the “Innovation Act”) with overwhelming bipartisan support, only about a month after the bill was introduced to the House. The Innovation Act aims to encourage innovation by creating a number of alleged procedural safeguards against frivolous patent infringement claims, including heightening pleading requirements, limiting discovery, and shifting fees to the prevailing party. It also contains provisions for making post-grant review procedures before the Patent Trial and Appeal Board a more attractive alternative to challenging patents in court. The Innovation Act has generated its own set of concerns, however, particularly among small corporate or individual patent owners, who worry that the bill may unfairly limit the rights of all patent owners, and among certain members of the judiciary, who feel that the bill is an improper legislative encroachment on judicial authority.

Important changes to Patent Prosecution Highway (PPH) practice at the U.S. Patent and Trademark Office (USPTO) and other intellectual property offices around the world took effect on January 6, 2014. The world’s five largest IP offices – the USPTO, the European Patent Office (EPO), the Korean Intellectual Property Office, the Japan Patent Office, and the State Intellectual Property Office of the People’s Republic of China (collectively, the “IP5”) – launched a new PPH pilot program (referred to as the “IP5 PPH”). Simultaneously, and with the inclusion of three IP5 members, thirteen intellectual property offices launched a similar pilot program titled the “Global PPH” pilot program. The Global PPH pilot program includes the national offices of the United States, Japan, South Korea, Australia, Canada, Denmark, Finland, Norway, Portugal, Russia, Spain, United Kingdom, and the Nordic Patent Institute.

Six months ago, the United States Supreme Court shook up the biotechnology industry by ruling that genetic sequences are not patent eligible “simply because they have been isolated.” AMP v. Myriad Genetics, 569 U.S. 12-398 (June 13, 2013). While providing little practical guidance, the Court succeeded in raising many new questions at the core of biotechnology patenting. For example, what characteristics are required to make natural nucleic acids patent eligible? What about other natural products, such as stem cells, polypeptides, antibodies, purified enzymes, and hormones?

In our November issue, we highlighted some patent rule changes that have since taken effect as part of the Patent Law Treaties Implementation Act of 2012; the changes took effect on December 18, 2013. One effect of these rules not previously discussed in our earlier write-up is the additional amount of time now afforded to applicants to reply to: (1) Restriction Requirements; (2) Notices of Informal or Non-Responsive Amendments; (3) Notices of Informal or Non-Responsive RCE Amendment; (4) Notices of Required Fees Due; and (5) Letters Requiring Computer Readable Format because it was unreadable, non-compliant, or not submitted. Previously, applicants had one month to respond to the USPTO for these matters before extension fees began to accrue, but now applicants have two months to respond without paying a fee. This additional amount of allotted time harmonizes the United States laws with those set forth in the Patent Law Treaty adopted at Geneva, which require a time period for reply by applicants be at least two months. So, don’t be alarmed when your docketing department begins docketing restriction requirements for a response time of two months instead of one!