IP Law Bulletin

In a decision likely to be lauded by patent applicants and owners, the Federal Circuit recently issued an opinion that affirms its staunch position that the bar to prove a patent owner made a disclaimer that impacts the claim scope is high. The opinion provides some useful quotes that prosecutors and litigators representing applicants and owners will likely be interested in calling upon when presenting argument against assertions that a previously taken position amounts to a disclaimer or disavowal by the applicant/owner.

Earlier last month, Director of the United States Patent and Trademark Office (USPTO) Michelle Lee announced the Enhanced Patent Quality Initiative to increase the clarity of issued patents so as to ensure that patent holders and potential users are better informed of the full scope of the patents’ rights when making important business decisions. The initial programs under this initiative will include:

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012.  One such change is the ability to incorporate an inventor’s required declaration statements into an assignment document, thereby reducing the number of documents that must be executed by an inventor in connection with filing a patent application.  If an applicant elects to go this route, a single combined declaration and assignment document can be recorded at the United States Patent and Trademark Office (USPTO) and a copy will be automatically placed in the application’s file wrapper.  It appears to be the case, however, that this automatic copying by the USPTO of the combined declaration and assignment into the file wrapper for an application triggers a Notice of Incomplete Reply if there is an outstanding Notice to File Missing Parts or Notice to File Corrected Application Papers that identifies a deficiency in addition to the lack of an oath/declaration—despite the fact that the applicant has not made any reply to such a notice.

Last week the Federal Circuit denied Sequenom’s petition for rehearing en banc to review patent eligibility of their cell-free fetal DNA patent, U.S. Pat. No 6,258,540 (the ’540 Patent).  The District Court found the ’540 Patent invalid under 35 U.S.C. § 101 for being directed to ineligible subject matter under the U.S. Supreme Court precedent in Mayo v. Prometheus Laboratories, 132 S. Ct. 1298 (2012). The Federal Circuit affirmed and Sequenom filed the petition for rehearing en banc.

Now that our readers have had their fill of turkey and all the fixings, they can gorge on an abundance of patent petitions data. Earlier this year, Director of the USPTO Michelle Lee announced a new public, user-friendly tool to obtain information about the abundance and success rate of petitions of every nature. The information generally includes:

• The average number of days a petition is pending before a decision is made;

• The grant rate for a petition; and

• The office within the USPTO that makes the decision on the petition.

Earlier this fall the United States Patent and Trademark Office (USPTO) announced the “Streamlined, Expedited Patent Appeal Pilot for Small Entities” program (the Streamlined, Expedited program), which allows small and micro entities to expedite a single ex parte patent appeal pending before the Patent Trial and Appeal Board (Board). In order to take advantage of this program, a patent applicant must:

• Be a small or micro entity appellant;

• Have only a single ex parte patent appeal pending before the Board as of September 18, 2015;

• Have no claim involved in the appeal that can be subject to a rejection under 35 U.S.C. § 112;

• For each ground of rejection that is applied to more than one claim, select a single claim as representative and only discuss that claim in the appeal for that ground;

• Agree to waive any requested oral hearing; and

• Acknowledge that any oral hearing fees paid in connection with the appeal will not be refunded.

Summary: While the Leahy-Smith America Invents Act (AIA) brought sweeping changes to the United States patent system, including moving to a first-to-file system and implementing and modifying a number of post-grant proceeding options, one less heralded change is the expansion of the third party preissuance submission process, by which a third party can submit prior art references in a pending U.S. patent application for consideration by the examiner. The revised preissuance submission process is significantly more robust and accessible than its pre-AIA counterpart. Key features of the process such as low cost, anonymity, and preclusion from estoppels make it a potentially attractive tool for challenging pending applications. However, a third party’s participation in the patent prosecution process is still limited and the submitted references may even inadvertently strengthen any patent that issues from the application in which the submission is filed. Accordingly, third parties should carefully consider the limitations and risks associated with the process before filing a preissuance submission.

On August 28 and September 15, 2015, certain asserted claims of Exergen’s United States Patent No. 7,787,938 (the "'938 patent") were found invalid under 35 U.S.C. § 101 on two separate summary judgment motions. See Exergen Corp. v. Brooklands Inc. ("Brooklands"), No. 12-cv-12243-DPW (August 28, 2015) and Exergen Corp. v. Thermomedics, Inc. ("Thermomedics"), No. 13-cv-11243-DJC (September 15, 2015). The claims of the '938 patent at issue are directed to diagnostic methods for measuring body temperature based upon radiation and temperature measurements taken at the temporal artery at the side of the forehead. Readers, particularly with children, will recognize the Exergen thermometer as a popular tool for taking kids’ temperatures.

The Supreme Judicial Court for the Commonwealth of Massachusetts (SJC) will decide an important legal malpractice case arising from an alleged conflict of interest that occurred during the prosecution of two patent applications. This decision will affect patent applicants and practitioners in Massachusetts, and courts in other states may look to this decision when analyzing alleged conflicts of interest in the patent prosecution context. Nutter recently filed an amicus brief on behalf of the Boston Patent Law Association (BPLA) on this issue. The BPLA argues that the adoption of a new conflict of interest rule that would prevent a patent practitioner from representing applications filed by competitors on “similar inventions” would create a great deal of uncertainty for both applicants and patent practitioners. Further, if this blanket rule were adopted, applicants might attempt to monopolize the marketplace for lawyers with specific expertise in order to gain a competitive advantage.

Summary: Two recent Federal Circuit cases serve as a reminder that the means-plus-function doctrine should be at the forefront of practitioners’ minds when drafting or evaluating patent claims, particularly in the case of computer-implemented inventions. These cases also demonstrate yet another weapon for invalidating functionally-claimed software patents.