Eligibility: Patent’s Claims of Inventive Concept Overcome Eligibility Dismissal

By Dennis Crouch

Cooperative Entertainment, Inc. v. Kollective Tech, Inc., — F.4th — (Fed. Cir. 2022)

This pro-patentee eligibility decision offers some ideas for patentees seeking to help ensure that their patents survive eligibility challenges. The district court dismissed the case for lack of eligibility. On appeal, the Federal Circuit has reversed.

We know that eligibility is a question of law, but the doctrine at times requires examination of underlying questions of fact. Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018) (J.Moore).  That distinction is important at the motion to dismiss stage.

An accused infringer’s motion to dismiss is only appropriate when “there are no plausible factual disputes after drawing all reasonable inferences from the intrinsic and Rule 12 record in favor of the” patentee. Slip Op. Here, that “intrinsic record” is the patent document and the “Rule 12 record” is the complaint.  In its amended complaint, the patentee alleged two “inventive concepts.” These include (1) a dynamic peer-to-peer network designed to “consume the same content within a predetermined time” and are controlled by a a content distribution network; and (2) the use of trace routs in content segmentation. 

Continue reading Eligibility: Patent’s Claims of Inventive Concept Overcome Eligibility Dismissal at Patently-O.

Judge Albright Identifies Outcome-Determinative Discrepancies in Federal Circuit Interpretations of Fifth Circuit Law Under 1404(a)

by David Hricik, Mercer Law School

Judge Albright granted Google’s motion to transfer venue under 28 U.S.C. 1404(a) from the Western District of Texas to the Northern District of California in an opinion in Motion Offense LLC v. Google, LLC (here).  Transfer is governed by regional circuit law, and so here, the law of the Fifth Circuit. What is interesting is the judge noting that the only reason transfer was granted is that the Federal Circuit had reached conclusions different from the Fifth Circuit on what Fifth Circuit law was.

First, one factor in determining whether the transferee venue is more convenient is whether process will be needed to compel testimony and so, if a witness is more than 100 miles from the courthouse, the witness is beyond subpoena power. Thus, if transfer makes it easier to compel more witnesses to testify, that indicates the transferee forum is more convenient.   Judge Albright noted that under Fifth Circuit precedent, the party seeking to transfer has the burden to show there are witnesses and they are unwilling and so transfer will aid in compelling testimony; but unpublished Federal Circuit cases “applying” Fifth Circuit law, say the opposite: unless there is a showing a witness is willing to testify, the court presumes they are not.

Continue reading Judge Albright Identifies Outcome-Determinative Discrepancies in Federal Circuit Interpretations of Fifth Circuit Law Under 1404(a) at Patently-O.

Supreme Court on Patent Law for October 2022

Supreme Court on Patent Law for October 2022

by Dennis Crouch

It is time to pick-up our consideration of Supreme Court patent cases for the 2022-2023 term. A quick recap: Despite dozens of interesting and important cases, the Supreme Court denied all petitions for writ of certiorari for the 2021-2022 term.  The most anticipated case last year was the 101 eligibility petition regarding automobile drive shaft manufacturing process.  American Axle (cert denied). Bottom line, no patent cases were decided by the Court in the 2021-2022 term and none were granted certiorari for the new term starting this week.

The court’s first order of business comes on September 28, 2022 when it meets for the “long conference” to consider a fairly large pile of petitions that have piled-up over summer break.  Of the 17 pending patent-focused petitions, 13 are set to be decided at the long conference.  I have subjectively ordered the cases with the most important or most likely cases toward the top.  Leading the pack are three cases focusing on “Full Scope” Enablement & Written Description. Topics:

  • Enablement / Written Description (All three are biotech / pharma): 3 Cases;
  • Infringement (FDA Labeling): 1 Case;
  • Anticipation (On Sale Bar): 1 Case;
  • Double Patenting (Still the law?): 1 Case;
  • Procedure / Standing: 6 Cases;
  • Eligibility (AmAxle Redux): 3 Cases; and
  • Randomness (don’t bother with these): 2 Cases

1.

Continue reading Supreme Court on Patent Law for October 2022 at Patently-O.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

  • Heather Landi: Judge Rules Apple Watch Infringed AliveCor’s ECG Patent, Setting Up Potential U.S. Import Ban (Source: Fierce Healthcare)
  • Blake Brittain: Apple Asks Appeals Court to Overturn $502 Million Verdict in VPN Patent Case (Source: Reuters)
  • Atty. Brandon Heard: Ontario Court of Appeal Affirms Dismissal of Apotex’s Statutes of Monopolies and Trademarks Act Claims Regarding Olanzapine (Source: JD Supra)
  • Samantha Handler: Apple Patent Victories Upheld by Tribunal After Arthrex Remand (Source: Bloomberg Law)
  • Blake Brittain: Ex-Patent Officials, U.S. Judges Join Lobbyist for IP Policy Push (Source: Reuters)
  • Ahmed Aboulenein: Consumer Group Says Drugmakers Abuse U.S. Patent System to Keep Prices High (Source: Yahoo Finance)

Commentary and Journal Articles:

  • Prof. David O. Taylor: Comment: On Patents And Appropriations—And Tragedies (Source: SSRN)
  • Prof. Øivind Anti Nilsen and Dr. Arvid Raknerud: Dynamics of First-Time Patenting Firms (Source: SSRN)
  • Atty. Dinis Cheian: I See Dead Patents: How Bugs in the Patent System Keep Expired Patents Alive (Source: SSRN)

New Job Postings on Patently-O:

  • Alpha-9
  • Jones Robb PLLC
  • Choate, Hall & Stewart LLP – Intellectual Property- Staff Scientist (Chemistry)
  • Choate, Hall & Stewart LLP – Intellectual Property- Staff Scientist, Patent Agent, or Junior/Mid-Level Associate (Biology)
  • Fellows and Associates
  • Duane Morris LLP – Intellectual Property Associate
  • Duane Morris LLP – Intellectual Property Senior Associate or Counsel
  • Blank Rome LLP
  • NPDS Design Services, LLC

Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

The Difficulty with Prior Art Sales

The Difficulty with Prior Art Sales

by Dennis Crouch

Today’s decision in Cap Export, LLC v. Zinus, Inc., 21-2159 (Fed. Cir. 2022) (non-precedential) offers some insight into the difficulty of proving an anticipation case with something other than a prior patent or printed publication.  Cap Export particularly focuses on a prior sale.  The problem is that the item sold way-back-when typically no longer exists in its original form.  And, although you might have product manuals, those documents themselves are not on-sale prior art.  They may still be admissible to help show what the prior art looked like, but only as a proxy for the real thing.

Zinus’ U.S. Patent No. 8,931,123 covers a bed-in-a-box system.  All the parts for the bed frame fit neatly within the headboard.  A zipper on the backside allows the purchaser to unpack them at home for assembly. Zinus did not invent this general concept, but rather offered an improvement with various limitations regarding how the parts are packaged and then connect together on assembly.  The particular claim limitation at issue requires a connector on a longitudinal bar (running down the center of the bed); that is configured to attach to a connector on the footboard. 

Continue reading The Difficulty with Prior Art Sales at Patently-O.

Gov’t Brief on Full Scope Enablement: Specification Must Enable the Entire Genus

by Dennis Crouch

The Solicitor General’s new brief in Amgen v. Sanofi shrugs off the case–identifying petitioner’s arguments as meritless:

Petitioners contend that the court of appeals erred by treating enablement as a question of law and by examining the full scope of the claims in assessing whether they are fully enabled. Those arguments lack merit and further review is not warranted.

Gov’t CVSG Brief in Amgen Inc. v. Sanofi, 21-757 (Supreme Court 2022).

The petition argued that genus claims–especially those functionally claimed–are being asked to comply with a heightened enablement standard.  The Gov’t agreed that at times it may be difficult to enable an entire genus, but not because of any heightened standard.  Rather, “broad claims naturally require more extensive enablement” since the patent’s disclosure “must be commensurate with the scope of its claims. . . . When, as here, a patent claims an entire genus based on its function, the patent must enable that entire genus.” The brief cites to Consolidated Electric Light Co. v. McKeesport Light Co., 159 U.S. 465 (1895) and Holland Furniture Co. v. Perkins Glue Co.

Continue reading Gov’t Brief on Full Scope Enablement: Specification Must Enable the Entire Genus at Patently-O.

Trademark filing for ‘Mountain Men: Ultimate Marksman’ indicates a New Show

IPNews® – A&E Television Networks, the parent company of the History Channel, recently filed a trademark application revealing a new planned show. The application is for “Mountain Men: Ultimate Marksman” which appears to build on the network’s existing Mountain Men series.   The application was filed on an Intent to Use basis so it is unclear… Continue Reading

Trademark filing for ‘Mountain Men: Ultimate Marksman’ indicates a New Show

IPNews® – A&E Television Networks, the parent company of the History Channel, recently filed a trademark application revealing a new planned show. The application is for “Mountain Men: Ultimate Marksman” which appears to build on the network’s existing Mountain Men series.   The application was filed on an Intent to Use basis so it is unclear… Continue Reading

Novartis: Inherency in Written Description

by Dennis Crouch

Novartis Pharms Corp. v. Accord Healthcare, Inc. (Fed. Cir. 2022)

Without any fanfare or dissent, the Federal Circuit has denied the Novartis en banc petition.  The court used a questionable procedure flip its own prior decision by replacing Judge O’Malley with a more defendant-friendly Judge Hughes for the rehearing.

The merits decision appears to further tighten-up on the written description requirement — especially with regard to ‘negative’ claim limitations.  The basic holding is that the written description must either expressly or inherently disclose the invention.  Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022) (rehearing majority decision).  Here, ‘inherently’ is a term of art in patent law and has much stricter definition than its cousin ‘impliedly.’  Inherency in patent law indicates unstated certainty.

The patent at issue in Novartis claims a drug treatment method.  Sometimes in drug treatment, you start a patient off with a high ‘loading dose’ to get the blood-levels up to an operational state.  The patent application does not discuss a loading dose one way or the other. 

Continue reading Novartis: Inherency in Written Description at Patently-O.

Novartis: Inherency in Written Description

by Dennis Crouch

Novartis Pharms Corp. v. Accord Healthcare, Inc. (Fed. Cir. 2022)

Without any fanfare or dissent, the Federal Circuit has denied the Novartis en banc petition.  The court used a questionable procedure flip its own prior decision by replacing Judge O’Malley with a more defendant-friendly Judge Hughes for the rehearing.

The merits decision appears to further tighten-up on the written description requirement — especially with regard to ‘negative’ claim limitations.  The basic holding is that the written description must either expressly or inherently disclose the invention.  Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022) (rehearing majority decision).  Here, ‘inherently’ is a term of art in patent law and has much stricter definition than its cousin ‘impliedly.’  Inherency in patent law indicates unstated certainty.

The patent at issue in Novartis claims a drug treatment method.  Sometimes in drug treatment, you start a patient off with a high ‘loading dose’ to get the blood-levels up to an operational state.  The patent application does not discuss a loading dose one way or the other. 

Continue reading Novartis: Inherency in Written Description at Patently-O.