In LifeScan Scotland, Ltd. V. Shasta Technologies, LLC, the Federal Circuit found that LifeScan’s distribution of its One-Touch Ultra glucose meters exhausted its patent rights such that it could not prevent Shasta from selling disposable test strips for use in the meters. In so doing, the court reversed the district court’s grant of a preliminary injunction that was based in part on the fact that LifeScan gave away at least 60% of its glucose meters and on its determination that the glucose meters likely did not embody the methods claimed in the patent at issue, which required both the meters and the test strips. Several aspects of this case are troubling, including the court’s emphasis on LifeScan’s failure to obtain a patent on its test strips when determining that the glucose meters alone substantially embody the claimed methods.
As Congress continues to propose new legislation to “improve” the Leahy-Smith America Invents Act (AIA), practitioners and stakeholders must not forget that significant law and rule changes implementing the Patent Law Treaty of 2000 (PLT) take effect December 18, 2013. The Patent Law Treaties Implementation Act of 2012 (PLTIA) was enacted on December 18, 2012, and the USPTO published its final rules on October 21, 2013. As I wrote previously, some of the most significant changes relax the requirements for securing an application filing date, provide for restoration of a priority claim if an application is unintentionally filed beyond the priority term, and eliminate the “unavoidable” standard for reviving abandoned applications and obtaining acceptance of delayed fee payments. The USPTO’s final rules also make other changes to miscellaneous application filing and processing rules.
In Sanofi-Aventis v. Pfizer, Inc., the Federal Circuit affirmed the USPTO’s determination that Pfizer had proven an earlier date of invention of the DNA sequence at issue, even though it did not have the full, correct nucleotide sequence at the time. Because the subject matter at issue relates to cDNA, it remains patent-eligible under the Supreme Court’s Myriad decision. While the America Invents Act will phase out interference proceedings, new interferences still can arise between first-inventor-to-file patents and applications, and similar issues will remain relevant to questions of inventorship.
Many thanks to my colleague Andrew Baluch for his contributions to this article.
One of the provisions of the Innovation Act introduced by Congressman Goodlatte (R-VA) on October 23, 2014, purports to codify the doctrine of obviousness-type double patenting for applications and patents examined under the first-inventor-to-file regime. However, the proposed statutory language appears to both go too far (including possibly making double patenting a basis for inter partes review) and not far enough in its attempt to carry forward the judicially-created doctrine.
On October 15, 2013, Dominion Dealer Solutions, LLC filed a complaint in the U.S. District Court for the Eastern District of Virginia seeking review of the USPTO’s decisions denying petitions to institute inter partes review of five patents granted to Autoalert, Inc. Dominion faces an uphill battle in view of the discretion granted to the USPTO under 35 USC § 324 and the court’s previous decision dismissing Versata’s challenge of the USPTO’s decision to institute post grant review of its patent .
The Petitions For Inter Partes Review
According to Dominion’s complaint, on October 1, 2012, Autoalert, Inc. sued Dominion for infringement of patents directed to “systems and methods for assessing and managing financial transactions.” On March 28, 2013, Dominion filed petitions for inter partes review of the five patents in suit. Dominion also sought a stay of the district court proceedings, which was granted on May 22, 2013.
On August 12 and 15, 2013, the USPTO denied the petitions. According to the complaint, the USPTO Patent Trial and Appeal Board (PTAB) improperly substituted its own judgment and its own understanding of the cited references for that provided by Dominion’s expert in the declarations submitted in support of the petitions.
Dominion asserts that the USPTO violated the Administrative Procedures Act (5 USC § 706(2)(A) and (C)) by denying the petitions in the face of “unrebutted evidence.”
The Statutory Hurdle
The inter partes review statue includes the following provision, in 35 USC § 314(d):
(d) No Appeal.—The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.
(In the Versata case, the district court rejected Versata’s arguments that a parallel provision in the post grant review statute refers only to the non-availability of direct appeal to the Federal Circuit and not to an interlocutory appeal to a district court.)
The AIA Hurdle
In the Versata case, the district court found that the AIA as a whole precluded judicial review of the USPTO’s decision to institute a post grant review proceeding, because the AIA’s express language, detailed structure and scheme for administrative and judicial review, legislative purpose, and nature of the administrative action evince Congress’s clear intent to preclude subject matter jurisdiction over the PTAB’s decision to institute patent reexamination proceedings.” In particular, the court cited:
- The express language of the statute: 35 USC § 324(e) states, “[t]he determination by the Director whether to institute a post-grant review under this section shall be final and nonappealable.”
- The structure of the Post Grant Review statutes. The statutes set forth “detailed procedures for post-grant review and a detailed scheme for administrative and judicial review of those post-grant review proceedings,” none of which include district court review.
- The statute provides for appeal to the Federal Circuit. 35 USC § 329 provides that “A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 328(a) may appeal the decision pursuant to sections 141 through 144 [to the Federal Circuit.”
Dominion will face an uphill battle establishing that these same factors and parallel provisions of the inter partes review statute do not preclude the court’s jurisdiction over its case.
A unanimous panel of the Federal Circuit has found that yet another decision by the USPTO Patent Trial and Appeal Board (PTAB) improperly made a new ground of rejection in “affirming” the examiner’s rejections. The court’s decision in In re Biedermann follows similar rulings in Rambus, Stepham, and Leithem, and raises questions as to whether the USPTO’s focus on reducing the appeal and examination backlogs has caused it to lose regard for applicants’ due process rights.Continue reading this entry
On October 23, 2014, Congressman Goodlatte (R-VA) introduced the “Innovation Act,” which is intended “to make improvements and technical corrections” to the Leahy-Smith America Invents Act (AIA) “and for other purposes.” Although the bulk of the Act focuses on patent litigation, Section 9 includes significant changes to a variety of substantive provisions of U.S. patent law that will impact an applicant’s ability to obtain a patent in the first place. A hearing before the House Judiciary Committee is scheduled for Tuesday, October 29, 2013.
In Keurig, Inc. v. Sturm Foods, Inc., the Federal Circuit upheld the district court’s decision that Keurig’s patent rights were exhausted by the sale of its machines, and so not infringed by the defendant’s sale of replacement coffee cartridges. Foley &Lardner LLP represented the appellee in this appeal, but this summary is based only on the public record, as reflected in the Federal Circuit decision.Continue reading this entry
Certain USPTO fees are set to decrease on January 1, 2014, including issue fees and the publication fees for utility applications. Also, as of January 1, 2014, certain PCT International Stage fees will have Small Entity and Micro Entity rates. Additionally, the USPTO no longer will charge a recordation fee to record a patent assignment document submitted electronically. Applicants may want to consider whether they can delay taking certain actions (such as paying issue fees) until on or after January 1, 2014, in order to take advantage of these reduced fee structures. Continue reading this entry
The EPO has announced that it is changing the EPO divisional application deadline rules to eliminate the current 24-month deadline for filing divisional applications, and permit the filing of a divisional application as long as the parent application still is pending. The change will apply to divisional applications filed on or after April 1, 2014.Continue reading this entry