11/8/2012                                             Topics                             1. patent eligibility: Prometheus...
11/8/2012            Bilski v. Kappos                                Subsequent Fed. Cir. Rule• 3 main points in majority ...
11/8/2012     Prometheus-case history                             Prometheus-case history  • D.Ct. granted SJ to defendant...
11/8/2012       Prometheus - S.Ct.                                Prometheus - S.Ct.• S.Ct.: line drawing issue:          ...
11/8/2012       Prometheus - S.Ct.                             Prometheus - S.Ct.• S.Ct. uses the prior art to show that  ...
11/8/2012      Prometheus - S.Ct.                               Prometheus - S.Ct.• Here, the “administering” step simply ...
11/8/2012        Prometheus - S.Ct.• Court recognizes the role of Congress  in making finely tailored rules where  necessa...
11/8/2012 • Hyatt filed a written declaration in court   • A divided Fed. Cir. panel affirmed   explaining the support in ...
11/8/2012                                                              Akamai-2012                                        ...
11/8/2012• McKesson patent: method of electronic  communication between healthcare                                        ...
11/8/2012              Akamai                              Developments re• Lengthy dissents by (1) Judge                 ...
11/8/2012        Marine v. HemCon                             Marine v. HemConReexamination:                              ...
11/8/2012        Marine v. HemCon                             Marine v. HemCon• Majority disagreed due to wording of      ...
11/8/2012        America Invents Act-1                              America Invents Act-2Sept. 16, 2011:                  ...
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Patent Year In Review 2012

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review of 2012 important cases in patent law

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Patent Year In Review 2012

  1. 1. 11/8/2012 Topics 1. patent eligibility: Prometheus (S.Ct.) 2. patent prosecution: Kappos v. Hyatt Patent Year 2012 in (S.Ct.) Review 3. Infringement: Akamai/McKesson (Fed. Cir.) en banc 4. Defenses: Marine Polymer v. Edward D. Manzo HemCon (Fed. Cir.) en banc November 2, 2012 5. AIA status © 2012 1 2 Historical Exclusions • 3 specific subject matter exclusions from S.Ct. precedent:Developments re Patent – Laws of nature Eligibility – Natural phenomena – Abstract ideas • In 2010, S.Ct. addressed abstract ideas in the Bilski case – invention for a method of managing costs associated with a commodity. 4 3 4 1
  2. 2. 11/8/2012 Bilski v. Kappos Subsequent Fed. Cir. Rule• 3 main points in majority opinion: • Research Corp. v. Microsoft, 627 F.3d – (1) Business methods are not per se 859 (12-8-10) (Rader, Newman, Plager) unpatentable. • No rigid formula for abstractness – (2) Bilski’s claims are for an abstract idea • To be “abstract,” a claim must “exhibit and hence ineligible. itself so manifestly as to override the – (3) “machine or transformation” is a broad statutory categories of eligible helpful clue but not an exclusive test. subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.” 5 5 6 Prometheus (S.Ct. 3-20-12) Prometheus -- claim• Concerns determining a drug dosage • Representative claim 1 of ‘623 patent: for a patient 1. A method of optimizing therapeutic efficacy for treatment of … [a] disorder, comprising:• Each patient metabolizes the drug • (a) administering a drug [containing a uniquely. substance]…; and• Inventors discovered that after • (b) determining the level of [the substance] administration: in said subject having said immune-mediated – if a level in blood of a certain metabolite is gastrointestinal disorder below [A], the dose is inefficatious; but – [wherein a level below A indicates need to – if the level is above [B], it is toxic. increase the drug and a level above B• want to get between A and B. indicates need to decrease the drug] 8 7 8 2
  3. 3. 11/8/2012 Prometheus-case history Prometheus-case history • D.Ct. granted SJ to defendant Mayo: • S.Ct. granted cert. petition of Mayo; – The patents effectively claim natural vacated and remanded to Fed. Cir. for laws or natural phenomena—namely the consideration in light of Bilski. correlations between thiopurine metabolite levels and the toxicity and efficacy of thiopurine drug dosages— • On remand, Fed. Cir. reaffirmed its prior and so are not patentable. decision, 628 F.3d 1347 (12-17-10) • Fed. Cir. reversed, 581 F.3d 1336 – (Reported on this Fed. Cir. Opinion in (2009), finding there was a November 2011 Symposium) transformation, so patent-eligible. 9 10 9 10 Prometheus-case history Prometheus, S.Ct.• Fed. Cir. ruling (2010): • S.Ct. ruling is difficult to grasp – claims are not for a law of nature but – brings prior art into §101 determination instead to a particular application of naturally occurring correlations • S.Ct. rejects Solicitor General – claims do not preempt all uses suggestion that §§102, 103, etc. – claims do not encompass laws of nature would be useful to address prior art – Methods of treatment are always transformative when one of a defined and reject claims. group of drugs is administered to the body • Is prior art relevant to §101? to ameliorate the effects of an undesired condition. 11 12 3
  4. 4. 11/8/2012 Prometheus - S.Ct. Prometheus - S.Ct.• S.Ct.: line drawing issue: • Precedents warn against eligibility – “… all inventions at some level embody, depending simply on patent drafting use, reflect, rest upon, or apply laws of skill. nature, natural phenomena, or abstract – (Does this mean State Street, Fed. Cir. ideas.” slip opin. at 2. 1998?) – “We must determine whether the • Fed. Cir. rule (2010): claimed processes have transformed – abstractness must be show itself “so these unpatentable natural laws into manifestly” that it overrides … patent-eligible applications of those (Research Corp.) laws.” 13 14 13 14 Prometheus - S.Ct. Prometheus - S.Ct.• S.Ct. rule (2012) seems opposite: • Prohibition against abstract ideas – Court must “insist that a process that cannot be overcome by: focuses upon the use of a natural law [will] – Limiting claims to particular technology, also contain other elements or a or combination of elements, sometimes – Adding insignificant post-solution referred to as an “inventive concept,” activity sufficient to ensure that the patent in – Cites Bilski, quoting Diehr, 450 U.S. practice amounts to significantly more 175, 191-192 (1981) than a patent upon the natural law itself. – Wasn’t Bilski a case about abstract – Cites Flook, 437 U.S. 584, 594 (1978); claims, not natural laws? Bilski slip op. at 10 15 16 15 16 4
  5. 5. 11/8/2012 Prometheus - S.Ct. Prometheus - S.Ct.• S.Ct. uses the prior art to show that • Also, Court wants to avoid tying the all that is being claimed here is a hands of others from using the natural law plus (1) field of use, and natural law to make further (2) well-known technology. discovery.• Combining a natural law with “well- • Necessary building blocks for the understood, routine, conventional future. activity…in the field” is not enough. – Slip op. at 4 17 18 17 18 Prometheus - S.Ct. Prometheus - S.Ct.• Court does not challenge the Fed. • Court requires SIGNIFICANTLY MORE Cir. ruling that this invention is than describing the natural relations. transformative. [Id. at 8]• Instead, S.Ct. says that machine-or- • Must have “additional features that transformation is merely an provide practical assurance that the “important clue,” not a definitive process is more than a drafting effort test. designed to monopolize the law of – slip op. at 7 nature itself.” Id. at 8-9. 19 20 19 20 5
  6. 6. 11/8/2012 Prometheus - S.Ct. Prometheus - S.Ct.• Here, the “administering” step simply • Purely conventional or obvious pre- identifies the relevant audience. Id. solution activity is normally not at 9. sufficient to make a law of nature a• The “wherein” clause simply tells the patent-eligible appln. of the law. Id. doctor about the relevant natural at 10. laws and suggesting that he account • Diehr (patent eligible) was very for them in treatment. Id. specific (making molded rubber• The “determining” step is well known products). Not obvious, already in in the art. use, or purely conventional. 21 22 21 22 Prometheus - S.Ct. Prometheus - S.Ct.• Flook (patent ineligible) adjusted • Claims here are weaker than Diehr and alarm limits in a catalytic conversion no better than Flook. process. • Court reinforced its concern that – Invention was an improved system for patent law must not inhibit further updating by measuring, using a novel discovery by improperly tying up the math formula, and adjusting the system furure use of laws of nature. Id. at 16. to reflect the new alarm values. – Flook’s process was unlike Diehr • “Machine-or-transformation” test does because Flook had no “inventive not trump the law of nature exclusion. concept” in the application of the Id. at 19. formula. 23 24 23 24 6
  7. 7. 11/8/2012 Prometheus - S.Ct.• Court recognizes the role of Congress in making finely tailored rules where necessary. Developments re Patent – Cites special rules for plant patents Prosecution – Slip op. at 24 (last page) Kappos v. Hyatt, 132 S.Ct. 1690 (2012) 25 25 26 Kappos v. Hyatt • 35 USC §145: An applicant dissatisfied with the decision of the Board … in an• Hyatt filed patent appln; 117 claims appeal under §134(a) may, unless appeal• Examiner denied all claims – lack of has been taken to the … Federal Circuit, written description have remedy by civil action against the Director in the [U.S.] District Court … The• On appeal, Board approved 38 claims; court may adjudge that such applicant is denied the rest entitled to receive a patent for his• Hyatt filed a §145 civil action in U.S. invention, as specified in any of his District Court against USPTO Director claims involved in the decision of the Board …, as the facts in the case may appear *** 27 28 27 28 7
  8. 8. 11/8/2012 • Hyatt filed a written declaration in court • A divided Fed. Cir. panel affirmed explaining the support in spec’n. – Said APA restricts the admission of new evidence in a §145 action • D.Ct. ruling: Hyatt was precluded from – D.Ct. review is “wholly de novo” raising new issues absent “some reason of justice … for [the] failure to present • En banc Fed. Cir. reversed the issue to the Patent Office.” – Vacated D.Ct. grant of SJ – Applicants are free to add new evidence in • Only other evidence was the PTO record. §145 proceedings, subject to F.R.Evid., “even • D.Ct. reviewed the fact findings under if the applicant had no justification for failing the APA deferential “substantial to present the evidence to the PTO.” evidence” standard. – De novo review by D.Ct. • Summary judgment to USPTO Director. 29 30 29 30 Kappos v. Hyatt Kappos v. Hyatt:S. Ct. ruling• S.Ct. affirmed the Federal Circuit. • Q2: What standard of review should the D.Ct. apply when considering new• 2 questions: evidence?• Q1: Are there any limitations on the • A2: The D.Ct. must make de novo applicants ability to introduce new findings when new evidence is evidence before the district court? presented on a disputed fact• A1: There are no evidentiary question. restrictions beyond those already – In deciding the weight to give that evidence, imposed by the Federal Rules of the D.Ct. may consider whether the applicant Evidence and the Federal Rules of had an opportunity to present the evidence Civil Procedure. to the PTO. 31 32 31 32 8
  9. 9. 11/8/2012 Akamai-2012 • 35 U.S.C. 271 (b): “Whoever Developments re actively induces infringement of a Infringement patent shall be liable as an infringer.” Akamai v. Limelight / • Issue: for a method claim, to induce McKesson v. Epic Sys. under §271(b), must there be direct 692 F.3d 1301 (Fed. Cir. infringement by a single entity? 2012) en banc 33 34 • Akamai patent: method to deliver web content Akamai – Method places some of the content provider’s• Inducement does not require direct content on a set of replicated servers; infringement by a single entity. – modify the content providers web page to instruct web browsers to retrieve that content from those• Sufficient that: servers. – Defendant had knowledge of the patent; • ∆ Limelight maintains a network of servers. – Defendant induced others to perform the • ∆ allows for efficient content delivery by method steps; and placing some content elements on its servers. – All the method steps were performed • ∆ does not modify the content providers web as a result of the inducement. pages itself.• Defendant may have performed one or • Instead, ∆ instructs its customers on the steps more of the steps. needed to do that modification. 35 36 9
  10. 10. 11/8/2012• McKesson patent: method of electronic communication between healthcare Akamai providers and patients. • A defendant may be liable for induced infringement of a method patent:• ∆ Epic licenses software app “MyChart” to – if the defendant performed some of the steps healthcare organizations: of a claimed method and induced other – MyChart permits healthcare providers to parties to commit the remaining steps, or communicate electronically with patients. – if the defendant induced other parties – Epic performs NO steps of the patent. collectively to perform all the steps of the – Instead, method steps are divided: claimed method, but no single party – patients initiate communications; performed all of the steps itself. – healthcare providers do the remaining steps. • BMC Res. v. Paymentech, 498 F.3d 1373 (2007) is overruled. 37 38 37 38 On remand re Limelight: On remand re Epic: “Limelight would be liable for inducing “Epic can be held liable for inducing infringement if the patentee could show… infringement if it can be shown that 1. Limelight knew of Akamais patent, 1. it knew of McKessons patent, 2. it performed all but one of the steps of 2. it induced the performance of the the method claimed in the patent, steps of the method claimed in the 3. it induced the content providers to patent, and perform the final step of the claimed 3. those steps were performed.” method, and – 692 F.3d 1301, 1318 4. the content providers in fact performed that final step.” Id. 39 40 39 40 10
  11. 11. 11/8/2012 Akamai Developments re• Lengthy dissents by (1) Judge Defenses Newman, and (2) Judge Linn, who was joined by Judges Dyk, Prost, and O’Malley. Marine Polymer Tech., Inc. v. HemCon, Inc., 672 F.3d 1350• Many practitioners expect the (Fed Cir. 2012) (en banc) Supreme Court to grant certiorari. 41 41 42 Marine v. HemCon Marine v. HemCon • Patent -- medical treatment field• Q: can intervening rights apply • Claims for biocompatible compositions. without a change to a claim or by • Unclear what biocompatible means. adding a new claim? • D.Ct. ruled that it means “low• A: No variability, high purity, and no• BUT, this was a sharply divided court detectable biological reactivity as determined by biocompatibility tests. • Verdict for plaintiff-patentee. 43 44 43 44 11
  12. 12. 11/8/2012 Marine v. HemCon Marine v. HemConReexamination: Reexamination, ctd.:• Exmr. Rejected D.Ct. interpretation • Marine then canceled all of the because dependent claims allowed for a dependent claims that allowed non- small amount of biological reactivity. zero reactivity.• Exmr. construction: “… little or no • Exmr. then agreed with D.Ct. detectable reactivity” construction and confirmed all• Exmr. rejected all claims under this remaining claims. broader construction over prior art cited • This was not cited to the D.Ct. but by HemCon. was relied upon by Fed. Cir. panel. 45 46 45 46 Marine v. HemCon Marine v. HemCon • Fed. Cir. en banc affirmed the D.Ct. claim construction by an equally • Fed. Cir. panel reversed the D.Ct. divided court. judgment • Then turned to intervening rights • Basis: HemCon acquired intervening • Argument by HemCon was that the rights during the reexamination. scope of the claims changed during • En banc rehearing granted. reexam when Marine canceled dependent claims, thus allowing the surviving claims to be given a narrower scope. 47 48 47 48 12
  13. 13. 11/8/2012 Marine v. HemCon Marine v. HemCon• Majority disagreed due to wording of • Whether the argument and reexam statute: cancellation of other claims led to a• “Any proposed amended or new change in effective scope of claim determined to be patentable remaining claims is not the point. and incorporated into a patent • Under the statute, the surviving following a reexamination proceeding claims were not “amended” or “new” will have the same effect as that • Therefore no intervening rights. specified in section 252 ***” – Emphasis by the Court 49 50 49 50 Marine v. HemConDissent:• intervening rights discussion is dictum: D.Ct. ruling was affirmed• For intervening rights, starting point is Developments re the the meaning of the claims. Patent Statute• Claim differentiation raises a presumption. America Invents Act• “amended” should not require a change 2011-2013 in language. 51 51 52 13
  14. 14. 11/8/2012 America Invents Act-1 America Invents Act-2Sept. 16, 2011: Sept. 16, 2012:• qui tam suits ended • Inter partes review (IPR)• Virtual patent marking • No new inter partes reexaminations.• Prioritized exam • Post-grant review (PGR) of covered• Enlarged prior user defense: new patents business method (CBM) patents• best mode defense in new cases • Supplemental examinations• inter partes reexams: threshold changed –inequitable conduct “washing from SNQ to reasonable probability that machine” petitioner will succeed as to 1 claim. 53 54 America Invents Act-3March 16, 2013: Thank you!• First-inventor-to-file – Plan now for pending applns and • Edward D. Manzo disclosures ready to support new applns. Partner• New definitions of prior art Husch Blackwell LLP• Modified grace period Chicago, IL• Post-grant review of FITF patents 312-526-1535 – Plan now re attacking adverse published applications when they issue www.huschblackwell.com – After issuance, only 9 months to file PGR. Edward.Manzo@huschblackwell.com• AIA fully in effect. 55 56 14

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