11 patent law randy canis class 14 case law update

11

PATENT LAW

Randy Canis

CLASS 14

Case Law Update

102(b)(pre-AIA) Public Use

2

Dey, L.P. v. Sunovion Pharmaceuticals, Inc.

• Case History

• S.D.NY– Some of Dey’s patents were invalid because of

Sunovian clinical trial constituted a prior public use under 102(b)

• Panel Fed. Cir. of Newman, Bryson, and O’Malley– Reverse the grant of summary judgment– Dissent filed by Newman

3


• Invention (for both parties)– Treatment of chronic obstructive

pulmonary disease (COPD)

4


• Background– Sunovion filed an Investigational New

Drug application in Feb 1998 and then began clinical tests

– Participants were given information about the study, were subject to controls, and signed a consent form

– Test administrators had to sign a confidentiality agreement

5


• Claim 1 from ‘362 [Dey]– A sterile unit dose, comprising: (a) about 0.1 mL to about 3.0 mL of

a pharmaceutical composition comprising formoterol or a salt thereof at a concentration of from about 0.08 .mu.g/mL to about 34 .mu.g/mL based on formoterol free base, in a pharmacologically suitable solution, wherein the composition further comprises water and a buffer selected from the group consisting of citric acid/phosphate buffer, acetate buffer, citrate buffer and phosphate buffer at a concentration of from about 1 mM to about 20 mM, said composition having a pH of between about 4.5 and about 5.5 and having an estimated shelf life of greater than 90% after 3 months storage at 25.degree. C. and after 3 years storage at 5.degree. C.; (b) packaged in pharmaceutical packaging material.

• Claim 1 from ‘344 [Sunovion]– Crystalline R,R-formoterol L-(+)-tartrate.

6


• “To decide whether a prior use constitutes an invalidating ‘public use,’ we ask ‘whether the purported use: (1) was accessible to the public; or (2) was commercially exploited.’”

7


• “[W]e have set forth factors that may be helpful in analyzing the question of public use, including “‘the nature of the activity that occurred in public; the public access to and knowledge of the public use; [and] whether there was any confidentiality obligation imposed on persons who observed the use.’”

8


• “[W]hether an invention is ‘accessible to the public’ or ‘reasonably . . . believe[d] [to be] freely available’ depends, at least in part, on the degree of confidentiality surrounding its use: ‘[A]n agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a ‘public use’ where there is not commercial exploitation.’”

9


• “[W]e have applied section 102(b) to invalidate a patent based on third-party use when the third party ‘made no attempt to maintain confidentiality or to deliberately evade disclosure,’ []; made no “discernible effort to maintain the [invention] as confidential,” [] or “made no efforts to conceal the device or keep anything about it secret,” []”

10


• “The degree of confidentiality necessary to avoid a finding of public use naturally depends on the circumstances.”

• “[W]e measure the adequacy of the confidentiality guarantees by looking to the party in control of the allegedly invalidating prior use. In third-party use cases, that is the third party.”

11


• “Because a finder of fact could conclude that the study was conducted with a reasonable expectation of confidentiality as to the nature of the formulations being tested, summary judgment on the public use issue was inappropriate.”

12

“On Sale” Bar - Suppliers

13

Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc.

• Case History

• E.D.VA– Summary judgment finding asserted claims as

anticipated

• Panel Fed. Cir. of O’Malley, Bryson, and Reyna– Affirmed the grant of summary judgment– Dissent filed by Reyna

14


• Invention– “’slow cookers,’ which are electrically

heated lidded pots that are used to cook food at low temperatures for long periods.”

15


• Background– Hamilton Beach claimed slow cooker includes clips to

seal– Sunbeam attempt to design around the ‘831 patent by

mounting sealing clips on the lid of the slow cooker instead of the body

– Hamilton Beach filed a continuation with the clips on the lid

– Hamilton Beach argued that a person of ordinary skill in the art would recognize that placing the clips on the lid was wholly consistent with the original disclosure in the ’222 application.

16


Claim 1 of the ‘928 patent• 1. A slow cooker for heating of food stuffs, the slow cooker comprising:• a housing having a base and a side wall extending therefrom to define a

heating cavity within the housing, the housing further having a housing rim at a first, free edge of the side wall defining an opening to the heating cavity;

• a heating element disposed within the housing sufficiently proximate the heating cavity to heat the heating cavity;

• a container rim defining an opening for accessing the interior thereof, the interior being capable of retaining the food stuffs therein, the container being shaped and sized to fit within the heating cavity of the housing for heating thereof by the heating element;

• a lid sized and shaped to at least partially cover the opening of the container when placed on the container rim, the lid having a gasket around an outer edge thereof for sealing engagement with the container rim; and

17


• at least one clip mounted between the lid and the side wall of the housing, the at least one clip being an over-the-center clip having a hook and a catch, one of the hook and catch being mounted on one of the lid and side wall of the housing and the other of the hook and catch being mounted on the other of the lid and side wall of the housing, the at least one clip being selectively engageable with the lid and side wall of the housing to selectively retain the lid in sealing engagement with the container rim to inhibit leakage of the food stuffs from the interior of the container, wherein the housing and lid have a vertical height, the at least one clip being disposed entirely within the vertical height of the housing and lid to facilitate storage and transport of the slow cooker when the at least one clip is engaged with the lid and side wall of the housing.

18


• “We agree with the district court that Hamilton Beach’s transaction with its foreign supplier in early 2005 was an offer for sale of a product that anticipated the asserted claims and that the invention was ready for patenting prior to the critical date. As discussed below, therefore, we hold the asserted claims of the ’928 patent invalid under § 102(b).”

19


• “The on-sale bar applies when two conditions are satisfied before the critical date:

• (1) the claimed invention must be the subject of a commercial offer for sale; and

• (2) the invention must be ready for patenting.

• Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).”

20


• “An actual sale is not required for the activity to be an invalidating commercial offer for sale. [] An attempt to sell is sufficient so long as it is “sufficiently definite that another party could make a binding contract by simple acceptance.” [].”

21


• “An invention is “ready for patenting” when prior to the critical date:

• (1) the invention is reduced to practice; or

• (2) the invention is depicted in drawings or described in writings of sufficient nature to enable a person of ordinary skill in the art to practice the invention. []

• The on-sale bar is a question of law based on underlying factual findings.”

22


• “Second, there is no ‘supplier exception’ to the on-sale bar. [] Thus, it is of no consequence that the ‘commercial offer for sale’ at issue in this case was made by Hamilton Beach’s own supplier and was made to Hamilton Beach itself.”

• “[A] commercial offer for sale made by a foreign entity that is directed to a United States customer at its place of business in the United States may serve as an invaliding activity.”

23


• “As this court has repeatedly stated, a commercial offer for sale under § 102(b) is ‘one which the other party could make into a binding contract by simple acceptance.’”

24


• “In other words, the supplier made an offer to sell the slow cookers to Hamilton Beach. At that point, the commercial offer for sale was made and, under the governing corporate purchase agreement, Hamilton Beach could accept the offer when it so pleased.”

25


• “As such, even if the parties had not entered into a binding contract when the supplier responded to the purchase order, the response, nevertheless, was a commercial offer for sale that Hamilton Beach could have made into a binding contract by simple acceptance. This was enough to satisfy Pfaff’s first prong without the need for a binding contract.”

26


• “A product is ‘ready for patenting’ for purposes of the on-sale bar under § 102(b) if the claimed invention is:

• (1) reduced to practice; or

• (2) depicted in drawings or other descriptions ‘that were sufficiently specific to enable a person skilled in the art to practice the invention.’”

27


• “Under the ‘ready for patenting’ prong, so long as the descriptions and depictions of the slow cooker are sufficiently precise to enable a person of ordinary skill to build the invention, the district court properly concluded that the invention was ‘ready for patenting.’”

28

Claim Construction Deference

29

Lighting Ballast v. Philips Electronics

• Case involves court de novo standard of review in claim construction cases

• Fed. Cir. is considering the issue en banc

• Oral arguments held Sept. 13, 2013• http://www.patentlyo.com/patent/

2013/09/oral-argument-recap-lighting-ballast-control-v-philips.html

30


• Questions before the court:– Should the Federal Circuit overrule Cybor Corp. v.

FAS Techs. Inc., 138 F.3d 1448 (Fed. Cir. 1998) (in which the Federal Circuit held that “as a purely legal question, we review claim construction de novo on appeal including any allegedly fact-based questions relating to claim construction.”)?

– Should the Federal Circuit afford deference to any aspect of a district court’s claim interpretation?

– If so, which aspects should be afforded deference?

31


• Case History

• N.D.TX– Infringement and validity of claims 2 and 5

• Panel Fed. Cir. of Rader, O’Malley, and Reyna– Claims invalid for indefiniteness– District court reversed

• En Banc Fed. Cir. Rehearing

32


• En Banc Fed. Cir. Rehearing– Opinion by Newman joined by Lourie, Dyk, Prost,

Moore, and Taranto

– Concurrence by Lourie

– Dissent by Rader, Reyna, and Wallach

33


• “[T]his court in Cybor held that patent claim construction receives de novo determination on appeal”.

• The “review is conducted on the administrative record and any additional information in the record of the district court, and is determined without deference to the ruling of the district court.”

34


• “[W]e apply the principles of stare decisis, and confirm the Cybor standard of de novo review of claim construction, whereby the scope of the patent grant is reviewed as a matter of law. After fifteen years of experience with Cybor, we conclude that the court should retain plenary review of claim construction, thereby providing national uniformity, consistency, and finality to the meaning and scope of patent claims.”

35

Indefiniteness Standard

36

Nautilus v. Biosig Instruments

• Case History

• S.D.NY– Summary judgment of invalidity for

indefiniteness

• Panel Fed. Cir. of Newman, Schall, and Wallach– Reversed district court’s invalidity

determination

• Supreme Court

37

Nautilus v. Biosig Instruments

“[W]e hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

38

Interval Licensing LLC v. AOL, Inc

• Case History

• W.D.WA– Judgment of invalidity for indefiniteness

• Panel Fed. Cir. of Taranto and Chen (Rader)– Affirmed district court’s judgment of invalidity

39


Claim 1 of ‘314

A method for engaging the peripheral attention of a person in the vicinity of a display device,

comprising the steps of:

providing one or more sets of content data to a content display system associated with the

display device and located entirely in the same physical location as the display device;

providing to the content display system a set of instructions for enabling the content display

system to selectively display, in an unobtrusive manner that does not distract a

user of the display device or an apparatus associated with the display device

from a primary interaction with the display device or apparatus, an image

or images generated from a set of content data; and

auditing the display of sets of content data by the content display system;

40


• “Interval’s suit alleged that the Defendants infringe the patents through products and software that use ‘pop-up’ notifications to present information to users.”

41


• “A claim fails to satisfy this statutory requirement and is thus invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’”

42


• “The definiteness standard ‘must allow for a modicum of uncertainty’ to provide incentives for innovation, but must also require “clear notice of what is claimed, thereby appris[ing] the public of what is still open to them.’”

43


• “Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.”

44


• “The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.”

45


• “The patents’ ‘unobtrusive manner’ phrase is highly subjective and, on its face, provides little guidance to one of skill in the art.”

• “[A] term of degree fails to provide sufficient notice of its scope if it depends ‘on the unpredictable vagaries of any one person’s opinion.’”

46

Means Plus Function

47

Robert Bosch, LLC v. Snap-On Inc.

• Case History

• E.D.MI– Judgment of invalidity for indefiniteness

• Panel Fed. Cir. of Prost, Taranto, and Hughes– Affirmed district court’s judgment of invalidity

48


• Invention

• A diagnostic tester that determines whether the computerized control unit in a motor vehicle needs to be reprogrammed.

49


• Claim 1• An external diagnostic tester for motor vehicles, the motor vehicles having

programmable control units with self-diagnostic means, • wherein the control units can be connected to the external diagnostic tester via

a diagnostic/test plug in the motor vehicle, the external diagnostic tester comprising,

• a program recognition and program loading device, wherein a program version contained in a connected control unit is queried and recognized by means of the program recognition device, and, if the program available in the motor vehicle and recognized via the diagnostic/test plug is not stored there in a latest and most current version, a respective most current version is loaded by the program loading device into a program storage device of the pertinent control unit of the motor vehicle,

• wherein the external diagnostic tester automatically establishes communication with a central dat[a] base in order to check the program version and, if necessary, to obtain the current program version that applies for the control unit connected to the diagnostic tester and to store it there.

50


• “The framework under which we determine if a claim limitation invokes § 112, ¶ 6 is a two-step process. First, we must determine if the claim limitation is drafted in the means-plus-function format. The use of the term “means” triggers a rebuttable presumption that § 112, ¶ 6 governs the construction of the claim term.”

51


• “When a claim term lacks the word ‘means,’ the presumption can be overcome if the challenger demonstrates that ‘the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.”’”

52


• “If we conclude that a claim term invokes § 112, ¶ 6, we proceed to the second step and attempt to construe the disputed claim term by identifying the ‘corresponding structure, material, or acts described in the specification’ to which the claim term will be limited. … If we are unable to identify any ‘corresponding structure, material, or acts described in the specification,’ the claim term is indefinite.”

53


• “We are unaware of any precedent stating that the presumption is triggered by a claim’s use of the expression ‘by means of.’ In the past we have applied the presumption when a claim uses the word ‘means’ as a noun in the claim: a ‘means’ for doing something.”

54


• “[W]e ask if the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6. … The question is whether the claim language names particular structures or, instead, refers only to a general category of whatever may perform specified functions.”

55


• “[T]his court has found the word ‘device’ to be a non-structural, ‘nonce’ word. … And the other words do nothing more than identify functions for the ‘device’ to perform.”

56


• “[D]oes not contain a single reference to the structure of the ‘program recognition device’ itself; all of the proffered citations from the specification merely explain its function. … the specification does not teach how the ‘program recognition device’ receives and processes signals…”

57


• Contrast with Inventio• “[T]he specification and drawings of the patent-in-

suit not only described in detail how the ‘modernizing device’ was ‘connected to an elevator control and a computing unit’ but also showed the internal components of the ‘modernizing device,’ including a processor, a signal generator, a converter, memory, and signal receiver elements. … Dependent claims further referred to ‘input, output, and signal receiver aspects’ of the ‘modernizing device.’”

58


• “’If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite.’”

59

Doctrine of Equivalents

60

Ring & Pinion Service Inc. v. ARB Corp. Ltd.

• Case History

• W.D.WA– Summary judgment of noninfringement

• Panel Fed. Cir. of Moore, Clevenger, and Reyna– Reverse and remand with instructions to enter

judgment of infringement

61


• Claim 1• A locking differential comprising• a differential carrier . . . ,• a locking means . . .• cylinder means formed in said differential

carrier and housing an actuator position[ed] to cause movement of said locking means relative to said carrier . . . .

62


• Issue – “whether an equivalent is barred under the doctrine of equivalents because it was foreseeable at the time of the patent application.”

• “All-Limitations Rule”

63


• “There is not, nor has there ever been, a foreseeability limitation on the application of the doctrine of equivalents. It has long been clear that known interchangeability weighs in favor of finding infringement under the doctrine of equivalents.”

64


• “Excluding equivalents that were foreseeable at the time of patenting would directly conflict with these holdings that ‘known interchangeability’ supports infringement under the doctrine of equivalents. We conclude that the foreseeability of an equivalent at the time of patenting is not a bar to a finding of infringement under the doctrine of equivalents.”

65


• “Equivalence under section 112(f) is evaluated at the time of issuance. … Equivalence under the doctrine of equivalents, in contrast, is evaluated at the time of infringement. [] Hence, an after-arising technology, a technology that did not exist at the time of patenting, can be found to be an equivalent under the doctrine of equivalents even though it cannot be an equivalent under the literal infringement analysis of § 112(f).”

66


• “For literal infringement, the accused structures must perform the function recited in the claim (identical function). … The doctrine of equivalents thus covers structures with equivalent, but not identical, functions.”

67


• “Where a finding of non-infringement under §112(f) is based solely on the lack of identical function, it does not preclude a finding of equivalence under the doctrine of equivalents.”

68

Covered Business Methods

69

What is a CBM?

70

Experian Marketing Solutions, Inc. v. RPost Communications Limited

• Case History

• Experian and Epislon filed a petition to institute a CBM with the PTAB

• PTAB denies the petition

71


• 1. A method of transmitting a message from a sender to a recipient through a server acting as a Mail Transport Agent, including the steps at the server of:

• transmitting the message to the recipient’s Mail Transport Agent in a protocol dialog selected from a group consisting of the selected one of the SMTP and ESMTP protocols; and

• recording at the server some portion of the selected one of the SMTP and ESMTP protocol dialog between the server and the recipient through the server including those portions of the selected one of the SMTP and ESMTP protocol dialog between the server and the recipient in which the receiving Mail Transport Agent accepts or declines delivery of the transmitted message.

72


• “A ‘covered business method patent’ is a patent that ‘claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.’”

73


• Focus is on the claims

• “A patent need have only one claim directed to a covered business method to be eligible for review.”

74


• “The ‘legislative history explains that the definition of covered business method patent was drafted to encompass patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.”’ … The legislative history indicates that ‘financial product or service’ should be interpreted broadly.”

75


• “To determine whether a patent is for a technological invention, we consider ‘whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.’”

76


• “Lastly, merely because an invention’s claims recite a method, and such a method is applicable to a financial process, which does not obviate the need to determine whether the invention is directed to a technical invention.”

77

Last Topic of Semester is…

78

101 (again, and again, and again)

79

Ultramercial v. Hulu

• Case History

• C.D.CA– No patent eligible subject matter

• Panel Fed. Cir. of Lourie, Mayer, and O’Malley– Affirm district court motion to dismiss as ‘545

patent does not claim eligible subject matter

• NOTE – case bounced around between courts before this decision

80


• Invention

• “distributing copyrighted media products over the Internet where the consumer receives a copyrighted media product at no cost in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content.”

81


• Claim 1

• A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

• a first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

• a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

82


• a third step of providing the media product for sale at an Internet website;

• a fourth step of restricting general public access to said media product;

• a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

• a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

83


• a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

• an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

• a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

• a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

• an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

84


• “A § 101 analysis begins by identifying whether an invention fits within one of the four statutorily provided categories of patent-eligible subject matter: processes, machines, manufactures, and compositions of matter. 35 U.S.C. § 101. Section 101 ‘contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.’”

85


• “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” … If not, the claims pass muster under § 101.”

• Laws of nature, natural phenomena, and abstract ideas

86


• “[I]n the second step, if we determine that the claims at issue are directed to one of those patent-ineligible concepts, we must determine whether the claims contain ‘an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”’”

87


• “[W]e first ‘determine whether the claims at issue are directed to one of those patent-ineligible concepts.’ … The district court found that the abstract idea at the heart of the ’545 patent was ‘that one can use [an] advertisement as an exchange or currency.’ … We agree.”

88


• “[C]laim 1 includes eleven steps for displaying an advertisement in exchange for access to copyrighted media. … This ordered combination of steps recites an abstraction—an idea, having no particular concrete or tangible form. The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application.”

89


• “We acknowledge this reality, and we do not purport to state that all claims in all software-based patents will necessarily be directed to an abstract idea. Future cases may turn out differently.”

90


• “We conclude that the limitations of the ’545 claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity.”

91


• “Narrowing the abstract idea of using advertising as a currency to the Internet is an ‘attempt[] to limit the use’ of the abstract idea “to a particular technological environment,’ which is insufficient to save a claim.”

92


• Machine or transformation test? YES

• “[T]he machine or- transformation test … can provide a ‘useful clue’ in the second step of the Alice framework”.

93


• “These manipulations of ‘public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.’”

94


• Mayer’s concurrence

• “Alice Corporation v. CLS Bank International, 134 S. Ct. 2347, 2356–59 (2014), for all intents and purposes, set out a technological arts test for patent eligibility.”

95

Questions on the Final Exam?

96

THANKS FOR A GREAT YEAR!!!

97

9898

Program

Completed

All course materials - Copyright 2002-14 Randy L. Canis, Esq.

11 patent law randy canis class 14 case law update

Documents