In In Re Bimeda Research & Development Ltd., the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (PTAB) that found that a claim that excluded the presence of a specific compound was not supported by a description that excluded a genus of compounds. This case illustrates the challenges of establishing written description for exclusion of specific embodiments.Continue reading this entry
In In re Adler, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (PTAB) that upheld the Examiner’s determination that the claims at issue were obvious. In so doing, the court rejected Adler’s arguments that the PTAB decision was based on a new ground of rejection that would have entitled Adler to reopen prosecution or obtain a rehearing.Continue reading this entry
On June 11, 2013, the USPTO Patent Trial and Appeal Board (PTAB) issued its first final decision in a covered business method patent (CBM) proceeding, in SAP America, Inc. v. Versata Development Group, Inc. (CBM2012-00001). Although this case is not in the field of pharmaceuticals or biotechnology, a few aspects of this decision will be of interest to stakeholders across all industries.
The Patent At Issue
The patent at issue was Versata’s U.S. Patent 6,553,350, directed to methods of pricing products for different purchasers.
Versata sued SAP for patent infringement in 2007. After a jury trial, SAP was found liable for infringement, but the court ordered a second jury trial on damages. Both parties appealed to the Federal Circuit in 2011, and the court affirmed the finding of infringement in a decision issued in 2013, after the PTAB proceeding was commenced. Of note to this review, “SAP did not appeal the district court’s claim construction, and the validity of the ’350 patent was not an issue on appeal.”
The CBM Proceedings
CBM proceedings became available on September 16, 2012, the effective date of Section 18 of the America Invents Act (AIA). A party who has been sued for or charged with infringement of a covered business method patent can petition for Post Grant Review of the patent to challenge the validity of the patent “on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim).”
SAP filed its petition for CBM review of the ’350 patent on September 16, 2012, asserting that certain claims were invalid under 35 USC §§ 101, 102, and 112. The PTAB granted the petition with regard to §§ 101 and 102, and SAP agreed to proceed only with relation to § 101 to obtain expedited review.
Points Of Interest
At least the following aspects of the PTAB decision will be of interest to stakeholders across all industries.
- The CBM proceeding was brought after two jury trials that found SAP liable for infringement, and while an appeal was pending at the Federal Circuit.
Did Congress intend CBM proceedings to permit a collateral attack on a patent already found to be infringed in a district court proceeding?
The estoppel provisions of the statute provide that a petitioner in a CBM proceeding “may not assert, either in a civil action … or in a proceeding before the International Trade Commission … that the claim is invalid on any ground that the petitioner raised during [the CBM] proceeding.” However, estoppel may run only one way, from a CBM proceeding to a district court/ITC proceeding, and not from a pending district court/ITC proceeding to a CBM proceeding. A similar issue just was addressed by the Federal Circuit in Fresenius USA, Inc. v. Baxter International, Inc. (July 2, 2013), where the court found that estoppel did not arise from a district court proceeding that still was pending.
- The PTAB construed the claims according to its “broadest reasonable interpretation” (BRI) paradigm, even though its claim construction was different from that of the district court.
Did Congress intend the PTAB to apply a BRI claim construction? Even when a district court already has construed the claims? Even when the parties did not appeal the district court’s claim construction?
At least Congressman Goodlatte (R-Va.) thinks otherwise. The “discussion draft“ of patent reform legislation he released in May would amend the Post Grant Review and Inter Partes Review statutes to require the USPTO to construe a claim in such a proceeding as it “has been or would be in a civil action to invalidate a patent under section 282, including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art, the prosecution history pertaining to the patent, and prior judicial determinations and stipulations relating to the patent.”
Now that new patent trials are being conducted at the USPTO Patent Trial and Appeal Board (PTAB), questions are arising as to who can best represent the parties in such proceedings. Should it be patent attorneys, who have experience with Patent Office practice, or should it be litigators, who may have more experience taking depositions of opposing witnesses? The USPTO rules governing practice before the PTAB require designation of “lead counsel” who must be a “registered practitioner” (e.g., a patent attorney or patent agent registered to practice before the USPTO). But, 37 CFR § 42.10(c) permits appearance by a non-patent attorney with a showing that the attorney “is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.” A recent Board opinion outlines the requirements for such a motion to appear pro hac vice in an Inter Partes Review proceeding.Continue reading this entry
While we struggle to understand the ramifications of difficult patent eligibility cases like Prometheus and Myriad, it can be helpful to examine an application that plainly fails to satisfy 35 USC § 101. When the USPTO Board of Patent Appeals and Interferences affirmed the Examiner’s rejections in Ex parte Nerenberg, it may not have added much to § 101 jurisprudence, but its holding of non-patent eligibility means that we all are free to practice the self-improvement methods described in Nerenberg’s patent application.Continue reading this entry
Last week, Dennis Crouch highlighted recent decisions from the Patent Office Board of Appeals and Interferences that evaluated the patent-eligibility of claims under 35 USC § 101. One case with relevance to biotech and pharmaceutical applicants upheld the § 101 rejection of IBM claims directed to methods for clustering genes having potential functional similarity by comparing gene expression profiles based on both the time and intensity of gene expression. In that case, In re Kelkar, the Board found that the claims failed the “machine or transformation test” (MOT) and were directed to an abstract idea, despite language that invoked the use of a computer.