This document provides a summary of recent developments in patent law in 2012, including key Supreme Court and Federal Circuit cases. It discusses the Prometheus v. Mayo, Kappos v. Hyatt, Akamai v. Limelight / McKesson v. Epic Systems, and Marine Polymer Tech v. HemCon cases and their implications. The Prometheus case established that natural laws cannot be patented without significantly more, while Kappos v. Hyatt affirmed that new evidence can be introduced during a Section 145 appeal. Akamai expanded what can constitute induced infringement for method claims.

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
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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.
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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.”
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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]
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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.
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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.
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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.”
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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
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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
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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.
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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.
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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.
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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)
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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 ***
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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.
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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
applicant's 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.
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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
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• 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 provider's 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.
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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.
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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 Akamai's patent,
1. it knew of McKesson's 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.
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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.
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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.
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12. 11/8/2012
Marine v. HemCon Marine v. HemCon
Reexamination: 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.
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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.
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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
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Marine v. HemCon
Dissent:
• 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.
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14. 11/8/2012
America Invents Act-1 America Invents Act-2
Sept. 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.
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America Invents Act-3
March 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.
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