IP Law Bulletin

Courts and litigants alike have struggled to make sense of claim vitiation, the idea that reading a claim element to encompass an accused product would so stretch the claim language as to “vitiate” (i.e., make ineffective) that claim element. Claim vitiation has been invoked as an exception to the judicially created doctrine of equivalents, which allows courts to find infringement even though a claim element is not literally present in the accused product. Over the past year, however, the Federal Circuit has emphasized that claim vitiation is not an exception to the doctrine of equivalents, but merely a finding under the doctrine of equivalents test.

The Federal Circuit rendered a decision in Novo Nordisk A/S v. Caraco Pharmaceutical Laboratories, Ltd. on June 18, 2013, finding that a Novo Nordisk diabetes treatment patent involving the combination of the drugs metformin and repaglinide was an obvious combination of known diabetes treatment drugs, despite certain factual findings of the combination’s unexpected results. Combination drugs, such as Novo Nordisk’s metformin-repaglinide treatment for diabetes, have been increasingly found to be effective for treating a variety of ailments, but their development is typically incredibly expensive and time-consuming. This Federal Circuit decision could adversely affect investment in developing combination drugs, which in turn would affect the availability of these often very effective treatments. The decision also highlights the deference (or lack thereof) given to patent examiner findings during prosecution.

Hiring patent agents—persons who do not hold a license to practice law but are licensed to practice in front of the United States Patent and Trademark Office (USPTO)—can be an attractive alternative to more costly patent attorneys. Typically, patent agents can have all of the experience and skills necessary to prosecute patents at the USPTO, but often work at discounted rates in comparison to their attorney brethren. Thus, as companies continue to strive toward lean operation, patent agent hiring may increase. This practice, however, is not without risk. Notably, and as addressed in this article, attorney-client privilege may not attach to patent agent work, even when that work is solely related to representation at the USPTO.

Like everything else related to copyright in The Digital Millennium—which, let’s face it, we should start calling The Digital Eternity—the publishing concept of “out of print” (OOP) has been turned inside out (or maybe upside down, it is hard to say, maybe both).

In response to concerns about the stringency of unity of invention requirements, the Japanese Patent Office (JPO) released new examination guidelines on July 1, 2013, which expand the scope of claims that meet the unity of invention requirement and are therefore eligible for examination. The new guidelines provide for a less formalistic approach to assessing unity of invention and focus instead on the relation of a claim to the novel features of the invention. The guidelines will apply to applications filed on or after January 1, 2004, and will also affect examination of claims of an application filed on or after April 1, 2007, that have been amended in response to an Office Action.

While most of the changes resulting from the Leahy-Smith America Invents Act (AIA) have been implemented, a few provisions that will save applicants money do not go into effect until January 1, 2014. These cost savings relate to post-issuance fees and electronically filed assignment fees for all patent applicants, and Patent Cooperation Treaty (PCT) patent applications for small entities and micro-entities. Patent applicants may want to consider delaying the payment of certain fees in order to take advantage of these cost savings. For example, patent applicants who can pay an issue fee for a utility patent on or after January 1, 2014 will save $1120 because the issue fee will be reduced from $1780 to $960 and the $300 publication fee will be eliminated. Small entities and micro-entities will also pay lower issue fees as of January 1, 2014, with the issue fee for small entities being $480 (previously $890) and the issue fee for micro-entities being $240 (previously $445). Further, any size applicant can electronically file an assignment on January 1, 2014 or later for free, rather than paying the current $40 fee. Finally, beginning January 1, 2014, certain PCT application fees, including transmittal and search fees, will be reduced for small and micro-entities. For example, while any applicant used to have to pay a search fee of $2080, small entities will only have to pay a search fee of $1040 and micro-entities will only have to pay a search fee of $520.

In June, the Federal Circuit decided Ultramercial, Inc. v. Hulu, LLC, where a three judge panel held that a claim for an internet and computer-based method was patent eligible subject matter. Chief Judge Rader authored the majority opinion, which provides valuable insight into his approach to patent eligible subject matter and highlights key factors considered for computer-implemented inventions. Judge Rader’s opinion makes clear that he views 35 U.S.C. § 101 as a “course filter” meant to provide only rare exceptions to patentable subject matter. Judge Rader’s analysis focused on the question of whether a claim is directed to a particular application of an idea (patentable) or the idea itself (not patentable). Despite this decision’s insight, questions remain regarding where the line is drawn between claiming an idea or an application thereof, and uncertainty still exists regarding the rest of the court, especially given the fractured nature of the recent CLS Bank Int’l v. Alice Corp. ruling.

In March 2013, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) issued three informative opinions in Ex parte Erol, Ex parte Lakkala, and Ex parte Smith. In each opinion, the same PTAB panel of five administrative patent judges construed a “processor” as a means-plus-function claim limitation despite both the presumption against such an interpretation when the term “means” is not explicitly used and the U.S. Patent and Trademark Office’s historical treatment of “processor” claims. Specifically, the Board found that the “processor” elements overcame the presumption against means-plus-function treatment and that the claims were indefinite pursuant to 35 U.S.C. §112, second paragraph, (pre-AIA) because the specifications disclosed insufficient structure for the processors to perform the recited functions. The Board’s designation of these opinions as “informative” sends a signal regarding the Board’s intent to provide guidance on how “processor” claims will be interpreted by the U.S. Patent and Trademark Office (USPTO) going forward.

In a highly anticipated decision issued on June 13, 2013 in Ass’n for Molecular Pathology v. Myriad, the U.S. Supreme Court unanimously ruled that isolated DNA sequences are not eligible for patent protection. The Court simultaneously held that cDNA can be patent eligible subject matter – as long as it is distinguishable from natural DNA. Justice Thomas, writing for the Court, clarified that the mixed ruling did not implicate methods, applications of knowledge about genes or alteration of sequences. The Court’s holding affects composition claims for patent owners and applicants, but both patent owners and applicants can take various actions to best protect their interests in view of Myriad.

In early July 2013, the International Corporation for Assigned Names and Numbers (ICANN) passed one of the last checkpoints on the path to introducing new generic Top-Level Domains (gTLD) by promulgating a registry agreement that will be entered into by successful gTLD applicants prior to delegation of the new domain space. This means that ICANN could delegate the first of the approved gTLDs (of which there are over 1000!) very soon, consistent with its earlier estimation that the first of the new domains would be operational by the end of July, 2013. Applicants interested in registering their marks in any of the new gTLDs, or those concerned about defending against cyber-squatting or other misappropriation of their marks, should consider submitting their marks to the recently created Trademark Clearinghouse as soon as possible.