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  • Honeywell Int’l v. Arkema Inc. (Fed. Cir. 2019)

    By Donald Zuhn —

    Federal Circuit SealToday, in Honeywell Int'l v. Arkema Inc., the Federal Circuit vacated a combined Final Written Decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board in two post-grant review proceedings finding that claims 1-20 of U.S. Patent No. 9,157,017 were unpatentable.  The Federal Circuit also remanded to the Board to authorize Honeywell International Inc. to file a motion seeking leave to petition the Director for a Certificate of Correction.

    The '017 patent, which is owned by Honeywell and which is directed to fluoroalkene compounds used in refrigeration systems and other applications, recites a chain of priority applications dating back to 2002, all of which were incorporated by reference into the '017 patent.  During prosecution of the application that issued as the '017 patent, Honeywell filed a preliminary amendment in which it cancelled all of the claims included in the original application and added new claims directed to different subject matter (i.e., automobile air conditioning systems), but failed to make corresponding amendments to the list of priority applications.

    Four months after the '017 patent issued, Arkema Inc. filed two petitions for post-grant review of the '017 patent, asserting in both petitions that the priority applications listed on the face of the '017 patent did not provide written description support for the issued claims.  Arkema argued that as a result, the claims of the '017 patent were only entitled to the March 26, 2014 filing date of the application from which the '017 patent issued (as opposed to a 2002 priority date), that the '017 patent was therefore eligible for PGR proceedings, and that several prior art references from 2002 to 2014 rendered the claims of the '017 patent unpatentable.  The Board instituted both PGR's.

    Honeywell, which asserted that it had first realized the priority chain mistake when preparing its Patent Owner Response, requested permission to file a motion for leave to request a Certificate of Correction to amend the priority claim of the '017 patent.  The Board rejected Honeywell's request for authorization to file a motion for leave, indicating that Honeywell had failed to meet the requirements of 35 U.S.C. § 255, and the proceedings before the Board continued until the Board issued a combined Final Written Decision finding claims 1-20 of the '017 patent to be unpatentable.  Honeywell appealed to the Federal Circuit.

    On appeal, the Federal Circuit wasted little time in "conclud[ing] that the Board abused its discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director:  to determine when a Certificate of Correction is appropriate."  The Court noted that pursuant to § 255, patentees may petition the Director to issue a Certificate of Correction to correct "a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office," and that the patentee must show that the mistake "occurred in good faith" and that "the correction does not involve such changes in the patent as would constitute new matter or would require re-examination."  The Court also noted that when a patentee seeks to correct a patent during a post-grant proceeding, the patentee must seek authorization from the Board to file a motion, and if authorization is granted, file a motion with the Board, asking the Board to cede its exclusive jurisdiction so that the patentee can seek a Certificate of Correction from the Director.

    The Court, however, explained that "Section 255 does not grant the Board authority to determine whether a mistake in an issued patent is of 'minor character' or 'occurred in good faith,'" adding that this "authority is expressly granted to the Director," and "[t]he Director has not delegated its Section 255 authority to the Board, but has instead promulgated procedures by which patentees may seek the Board's leave to petition the Director for a Certificate of Correction."  In the instant case, the Court noted that:

    [T]he Board did not review Honeywell's motion for leave to seek a Certificate of Correction from the Director to determine if Honeywell had demonstrated a "sufficient basis" that the mistake "may" be correctable.  Instead, the Board prohibited Honeywell from even filing a motion for leave.  The Board refused to authorize Honeywell to file a motion for leave because "at this juncture there has been a failure to show that [the] requirements of 255 have been met."

    The Court determined that by requiring Honeywell show that the requirements of § 255 had been met before authorizing Honeywell to file a motion for leave to seek a Certificate of Correction from the Director, the Board abused its discretion.  The Court also pointed out that the Board lacked the information necessary to make a reasoned decision, and failed to provide an explanation or a reasoned basis for its decision, which impeded meaningful review on appeal.  Moreover, the Court pointed out that it could "find nothing in the record, or in the Board's conclusory decision, that warrants denying Honeywell's request to file a motion for leave to petition the Director for a Certificate of Correction correcting the priority chain of the '017 patent."

    The Court therefore concluded that the Board had erred in rejecting Honeywell's request to file a motion for leave to petition the Director for a Certificate of Correction, and vacated the Board's Final Written Decision.  The Court also remanded to the Board, indicating that on remand the Board should authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction, and then review Honeywell's motion for leave to evaluate whether prejudice to Arkema requires accommodation.

    Honeywell Int'l v. Arkema Inc. (Fed. Cir. 2019)
    Panel: Circuit Judges Newman, Reyna, and Hughes
    Opinion by Circuit Judge Reyna

  • University of California/Berkeley et al. Authorized to File Motion Opposed to Broad Substantive Motion No. 1

    By Kevin E. Noonan —

    USPTO SealIn a brief Order issued September 25, 2019, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board authorized the Junior Party (the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier; collectively, "CVC") in Interference No. 106,115 to file a motion opposing Senior Party's (the Broad Institute, Harvard University and MIT, collectively, "the Broad") Substantive Motion No. 1 pursuant to 37 CFR §41.104(a).  As explained in an earlier post (see "Broad Institute Takes Its Turn in Interference Motion Practice"), the basis of this motion is 37 C.F.R. § 41.127(a)(1) and MPEP § 2308.03(b) (interference estoppel).  If granted, the motion would resolve the interference in the Broad's favor and could possibly preclude the Junior Party from pursuing priority of invention over eukaryotic cell embodiments of CRISPR technology.

    The Order sets a deadline date of October 18, 2019, for filing an opposition, and extends the page limit from 25 to 32 pages (equivalent to the extended page limit the PTAB permitted the Broad to file in its Substantive Motion No. 1.  This Order is neither unexpected nor particularly informative; any decision other than outright denial of the Broad's Substantive Motion No. 1 requires granting CVC the right to have their say (and the Broad's motion is too substantive for that to occur).  But these circumstances make possible a reprise of the outcome in the earlier interference between these parties (No. 106,048), wherein CVC will be prevented from having the opportunity to have the PTAB determine on the merits whether CVC's inventors (including recognized inventors of CRISPR, Jennifer Doudna and Emmanuelle Charpentier) or Feng Zhang et al. were the first to invent applications of CRISPR for use in eukaryotic cells.

    For additional information regarding this and other related topics, please see:

    • "Broad Institute Takes Its Turn in Interference Motion Practice," September 24, 2019
    • "CRISPR Interference: Motion Practice," September 11, 2019
    • "PTAB Redeclares CRISPR Interference and Grants Leave for Some (But Not All) of Parties' Proposed Motions," August 29, 2019
    • "University of California/Berkeley Granted Yet Another CRISPR Patent," August 25, 2019
    • "CRISPR Interference Parties Propose Motions," August 1, 2019
    • "Sigma-Aldrich Wants Its Piece of CRISPR Pie," July 21, 2019
    • "New CRISPR Interference: The Details," July 8, 2019
    • "CRISPR Battle Joined Again," July 1, 2019
    • "Another U.S. Patent Issued for CRISPR," April 28, 2019
    • "CRISPR Patent Watch," March 12, 2019
    • "Whither CRISPR? University of California/Berkeley Granted Another CRISPR Patent," October 30, 2018
    • "Regents of the University of California v. Broad Institute, Inc. (Fed. Cir. 2018)," September 10, 2018
    • "The CRISPR Chronicles — Broad Institute Wins One and Loses One," January 24, 2018
    • "Berkeley Files Opening Brief in CRISPR Appeal," July 31, 2017
    • "University of California/Berkeley Appeals Adverse CRISPR Decision by PTAB," April 13, 2017
    • "PTAB Decides CRISPR Interference in Favor of Broad Institute — Their Reasoning," February 16, 2017
    • "PTAB Decides CRISPR Interference — No interference-in-fact," February 15, 2017

  • IPO Webinar on Doctrine of Equivalents

    IPO #2The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Doctrine of Equivalents: Impact of Recent Federal Circuit Decisions on Prosecution and Litigation" on October 2, 2019 from 2:00 to 3:00 pm (ET).  John Livingstone of Finnegan, Sailesh Patel of Schiff Hardin, and Adam Perlman of Williams & Connoly will help practitioners understand the nuances of the Federal Circuit's recent doctrine of equivalents (DOE) jurisprudence, give practical tips both on how to build a case for infringement under the DOE and to defend against it, and offer tips for prosecution at the USPTO, particularly regarding how to narrow claims in the least damaging way.

    The registration fee for the webinar is $135 (IPO member) or $150 (non-member) (government and academic rates are available upon request).  Those interested in registering for the webinar can do so here.

  • Bereskin & Parr Webinar on Canadian Patent Law Changes

    Loeb & LoebLoeb & Loeb LLP will be offering a webinar entitled "Vive la différence — What you need to know to survive Canada's Patent Law changes" on October 2, 2019 from 12:00 to 1:00 pm (EST).  H. Samuel Frostand Patricia Folkins of Bereskin & Parr LLP will discuss the 2019 revisions to the Canadian Patent Rules to comply with the Patent Law Treaty (PLT).  The webinar will offer an overview of the upcoming changes in Canadian Patent Law coming into force on October 30, 2019, and specifically will answer the following questions:

    • What is the PLT and why does Canada need to comply?
    • What are the most significant changes to patent practice being brought in as a result of these changes?
    • How will these changes impact me?
    • What should I do to prepare?

    While there is no cost to participate in the program, advance registration is required.  Those interested in attending the webinar can register here.

  • Clyde & Co and MBHB Intellectual Property Law Educational Program

    MBHB Logo 2Clyde & Co and McDonnell Boehnen Hulbert & Berghoff LLP will be hosting an onsite program from 5:00 pm to 6:30 pm on October 14, 2019 at The Studio at White City Place in London, England.  The program will offer presentations on the following topics:

    • Patenting In the USA: Is There Anything Patent Eligible? — Paul Tully and Kevin Noonan of McDonnell Boehnen Hulbert & Berghoff LLP
    • Patent Eligibility — A UK Perspective / IP Enforcement Overview / Update on Brexit & IP — Ralph Cox

    A cocktail reception will follow the program.

    Clyde & CoThere is no registration fee for the program.  However, those interested in attending the program must register by contacting Susan Hall at hall@mbhb.com.  By registering for this event, attendees agree to Clyde & Co and MBHB processing their personal data for the purposes of facilitating the event.  Additional information abouth the event can be found here.

  • Conference & CLE Calendar

    CalendarOctober 2, 2019 – "Doctrine of Equivalents: Impact of Recent Federal Circuit Decisions on Prosecution and Litigation" (Intellectual Property Owners Association) – 2:00 to 3:00 pm (ET)

    October 2, 2019 – "Vive la différence — What you need to know to survive Canada's Patent Law changes" (Loeb & Loeb LLP) – 12:00 to 1:00 pm (EST)

    October 3-4, 2019 – Paragraph IV Disputes Master Symposium (American Conference Institute) – Chicago IL

    October 14, 2019 – Intellectual Property Law Educational Program (Clyde & Co and McDonnell Boehnen Hulbert & Berghoff LLP) – London, England

  • Intra-Cellular Therapies, Inc. v. Iancu (Fed. Cir. 2019)

    By Donald Zuhn —

    USPTO SealLast week, in Intra-Cellular Therapies, Inc. v. Iancu, the Federal Circuit affirmed a decision by the U.S. District Court for the Eastern District of Virginia affirming a determination by the U.S. Patent and Trademark Office of Patent Term Adjustment (PTA) for U.S. Patent No. 8,648,077.  In affirming the District Court's grant of summary judgment in favor of the USPTO, the Federal Circuit concluded that the USPTO's determination of applicant delay was based on a permissible interpretation of statute and proper reading of the regulations.

    During prosecution of the application that issued as the '077 patent, the USPTO issued a final Office action in which no claims were allowed, and the Examiner repeated the same § 103 rejections from the previous non-final Office action (and also presented new objections).  Intra-Cellular responded on the three-month deadline, continuing to dispute the § 103 rejection using the same arguments that were previously found unpersuasive by the Examiner, and amending the claims to address other objections and rejections (including adding a new claim).  The USPTO then issued an Advisory Action indicating that Intra-Cellular's after-final response failed to overcome the § 103 rejection for "reasons of the record" (despite overcoming certain other rejections and objections).  In the Advisory Action, the Examiner also suggested amending or cancelling certain claims to overcome the outstanding § 103 and § 112 rejections and new formality objection.  Twenty-one days after filing its unsuccessful first response to the final Office action, Intra-Cellular filed a second response in which it overcame all outstanding rejections and objections by adopting the Examiner's suggestions and cancelling or amending every rejected or objected to claim based on the Examiner's positions.  The USPTO issued a Notice of Allowance, and the '077 patent was issued.

    In calculating PTA for the '077 patent, the USPTO determined that the extra 21 days it took Intra-Cellular to file a successful response after the three-month deadline for responding to the final Office action constituted applicant delay.  In particular, the USPTO determined that even though Intra-Cellular filed a response to the final Office action on the three-month deadline, that response did not constitute a proper "reply" under § 1.704(b).  Intra-Cellular filed a complaint in the District Court for the Eastern District of Virginia seeking judicial review of the USPTO's PTA determination.  The District Court granted summary judgment in favor of the USPTO, pointing out that "nothing in the plain language of the statute indicates that 'reasonable efforts to conclude prosecution' should be read to include an incomplete submission which fails to place the application in condition for allowance, but in some manner advances it closer to allowance."  Intra-Cellular appealed the District Court's decision to the Federal Circuit.

    Judge Chen, writing for the Court, begins by noting that 37 C.F.R. § 1.704(b), which provides that "an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of three months that are taken to reply to any notice or action by the [Patent] Office making any rejection, objection, argument, or other request . . . " (emphasis in opinion), is relevant to the appeal.  Thus, according to § 1.704(b), if an applicant takes longer than three months to file a "reply" to an Office action, applicant delay will accrue.  Judge Chen notes, however, that § 1.704(b) does not define what constitutes a proper "reply" for cutting off applicant delay.  The opinion then looks to the "backdrop of long-existing regulations governing patent prosecution practices," including 37 C.F.R. §§ 1.113(a) and (c), 1.114(b) and (c), and § 116, which establish that a "final" Office action marks the end of normal prosecution as of right, that an examiner is not obligated to engage in further examination and review of a patent application or applicant arguments after a final Office action is issued, and that an applicant has restricted options for responding to a final Office action.

    With respect to the dispute before the Court, the opinion indicates that it concerns whether a particular period of 21 days, following the three-month deadline for responding to a final Office action, counts as applicant delay, and whether the District Court erred in upholding the agency's determination that Intra-Cellular's first response did not constitute a proper "reply."  This determination hinged in part on the USPTO's interpretation of statutory text, and in reviewing an agency's statutory interpretation, a court does so by applying the two-step framework established in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984).

    In Step 1 of its Chevron analysis, the Court asks whether a statute's plain terms directly address the precise question at issue.  Here, the opinion refers to 35 U.S.C. § 154(b)(2)(C)(i) and notes that:

    The precise question at issue is whether an applicant submission, filed after a final Office action, that continues to argue the merits of the examiner's rejection, without good cause, constitutes a "fail[ure] to engage in reasonable efforts to conclude prosecution" such that applicant delay would accrue under the PTA statute.

    Intra-Cellular argued that because its first after-final submission addressed each outstanding objection and rejection to the claims made in the final Office action, this submission constituted a bona fide attempt to advance prosecution, thus constituting "reasonable efforts to conclude prosecution" under a plain reading of the PTA statute.  However, the opinion points out that "Intra-Cellular's reading appears to be in tension with the fact that it no longer had the right to continue debating the merits of the rejection once the final Office action issued in this case."  Nevertheless, the Court concluded that "[w]hen read in the context of the overall statutory scheme, . . . the language of the PTA statute does not answer the question of what type of action by an applicant constitutes 'reasonable efforts to conclude prosecution' for purposes of responding to a final Office action" (emphasis in opinion).

    Moving to Step 2 of its Chevron analysis, the Court asks whether the USPTO's answer to the precise question at issue is based on a permissible construction of the statute.  With respect to this question, the Court concluded that "it is permissible to interpret an after-final submission that merely continues to argue the merits of an examiner's final rejection as a 'fai[lure] to engage in reasonable efforts to conclude prosecution' such that such an applicant submission would not stop the accrual of applicant delay under the PTA statute."  The opinion adds that "[w]hile § 1.704(b) does not explicitly define 'reply,' that does not mean that any type of submission by the applicant, no matter how flimsy or superficial, necessarily qualifies as a 'reply' for purposes of stopping accrual of applicant delay."  Moreover, the opinion explains that:

    Intra-Cellular's proposed interpretation of "reply" under § 1.704(b) as any bona fide attempt to address all rejections and objections in an Office action is impermissible because it incorrectly applies the standard for a compliant "reply" to a non-final Office action as set forth in § 1.111 to the reply to a final Office action at issue here [emphasis in opinion].

    The opinion also points out that "under Intra-Cellular's interpretation, an applicant would be allowed to continue to liberally argue and make amendments without accruing applicant delay as long as it addressed all outstanding issues in the final Office action," which "would give the applicant the benefits of an RCE (which re-opens prosecution) without the concomitant PTA reduction that comes with an RCE."

    The opinion concludes by rejecting Intra-Cellular's arguments against the permissibility of the Patent Office's PTA determination, including that the USPTO's PTA determination violates the Court's holdings in Gilead Scis., Inc. v. Lee, 778 F.3d 1341 (Fed. Cir. 2015), and Pfizer, Inc. v. Lee, 811 F.3d 466 (Fed. Cir. 2016); that the USPTO's reading of the generic recitation of "reply" in § 1.704(b) to mean a "reply in compliance with § 1.113(c)" constituted "unfair surprise"; and that the USPTO's interpretation conflicts with the USPTO's promotion of various after-final "pilot" programs that encourage applicants to engage in further prosecution after a final Office action.  The Federal Circuit therefore determined that the USPTO's determination of applicant delay was supported by a permissible reading of the PTA statute, and found that the District Court did not err in granting summary judgment in favor of the USPTO.

    Intra-Cellular Therapies, Inc. v. Iancu (Fed. Cir. 2019)
    Panel: Circuit Judges Wallach, Chen, and Hughes
    Opinion by Circuit Judge Chen

  • Jaguar Land Rover Ltd. v. Bentley Motors Ltd. (E.D. Va. 2019)

    Land Rover's Patented "Terrain Response Technology" Found Patent Eligible

    By Joseph Herndon —

    District Court for the Eastern District of VirginiaIn 2016, Bentley Motors Ltd. and Bentley Motors, Inc. launched their first SUV, the Bentayga, which is a direct competitor to Jaguar Land Rover Ltd.'s (JLR) Range Rover model.  JLR's patented Terrain Response technology is included on certain vehicles, and the Bentayga has a Drive Dynamics system, which can be equipped with an "All Terrain Specification" that provides four off-road settings:  Snow, Ice & Wet Grass, Dirt & Gravel, Mud & Trail, and Sand.

    JLR filed a complaint, in the U.S. District Court for the Eastern District of Virginia, alleging that Bentley knowingly copied the Terrain Response system installed on JLR's Range Rover, and which is covered by U.S. Patent No. 7,349,776 that was later reissued as U.S. Patent No. RE46,828.  Specifically, JLR asserted that Bentley infringed at least claims 21, 41, and 46 of the '828 patent.

    Defendants Bentley Motors Ltd. and Bentley Motors, Inc. filed a Motion to Dismiss.  The Court denied Defendant's Motion to Dismiss, instead finding that the technology embodied in the '828 patent claims improves computer functionality and is directed to "a particular way of performing that function," rather than merely being directed to performing a function in a computerized manner.

    The Patent

    U.S. Patent No. RE46,828, titled "Vehicle Control" is a reissue of U.S. Patent No. 7,349,776.  The '828 patent generally relates to coordinated control of a number of subsystems of a vehicle in different configuration modes so as to suit different conditions.  The '828 patent operates as follows:  "the control of a number of the vehicle subsystems is coordinated by a central vehicle controller, which can be switched between a number of modes thereby controlling all of the subsystems in a coordinated way which is simple for the driver to control."  Other systems, however, do not provide the driver with the ability to provide direct input regarding the surface terrain in an attempt to better select the appropriate subsystem configuration modes.  The invention of the '828 patent offers a Terrain Response technology that electronically controls various vehicle subsystems, including the engine, the transmission, the brakes, the traction control, the suspension and the steering, to operate in a manner that is suitable for driving on a particular off-road surface (see Figure 4 block diagram below).  The driver of the vehicle uses an input panel to select from several off-road driving surfaces including Grass/Gravel/Snow, Mud and Ruts, Sand, and Rocks.

    Figure 4The technology also allows the driver to further adjust the operation of the subsystems.  The claimed elements in combination are alleged to be implemented in an unconventional and non-trivial manner, and are not generic vehicle components, but a control system that is not standard and cannot be purchased off-the-shelf.

    Representative claim 21 recites:

    A vehicle control system having a driver input device for selecting a driving surface, the vehicle control system arranged to control a plurality of vehicle subsystems each of which is operable in a plurality of subsystem configuration modes, wherein the vehicle control system is operable in a plurality of driving modes in each of which it is arranged to select the subsystem configuration modes in a manner suitable for a respective driving surface, and further wherein the plurality of driving modes includes at least two off-road modes in which the subsystem configurations are controlled in a manner suitable for driving on respective off-road driving surfaces, and an on-road mode in which the subsystem configurations are controlled in a manner suitable for driving on-road and still further wherein one of the off-road modes is a sand mode in which the vehicle subsystems are controlled in a manner suitable for driving on sand.

    That is, claim 21 and its dependents are directed to a vehicle control system that optimizes control of the vehicle on a sand surface.  The '828  patent describes that when a vehicle is driven on sand, the build up of matter in front of the wheels under braking can improve braking performance.  Low wheel spin at low speeds prevents the wheel from digging into the sand but high wheel spin at high speeds is less of a problem and can even improve traction.

    Claim 41 recites:

    A vehicle control system having a driver input device for selecting a driving surface, the vehicle control system arranged to control a plurality of vehicle subsystems each of which is operable in a plurality of subsystem configuration modes, wherein the vehicle control system is operable in a plurality of driving modes in each of which it is arranged to select the subsystem configuration modes in a manner suitable for a respective driving surface, and further wherein the plurality of driving modes includes at least two off-road modes in which the subsystem configurations are controlled in a manner suitable for driving on respective off-road driving surfaces, and an on-road mode in which the subsystem configurations are controlled in a manner suitable for driving on-road and still further wherein one of the subsystems is a suspension subsystem and, in a second off-road mode, the suspension system is arranged to provide a higher ride height than in a first off-road mode.

    That is, claim 41 is directed to a vehicle control system that optimizes control through adjustment of the suspension system based on the particular driving surface.  The '828 patent describes that when traveling at high speeds on flat surfaces with good levels of friction, a suspension ride height that is set at low for low wind resistance and good stability is optimal.

    Claim 46 recites:

    A vehicle control system having a driver input device for selecting a driving surface, the vehicle control system arranged to control a plurality of vehicle subsystems each of which is operable in a plurality of subsystem configuration modes, wherein the vehicle control system is operable in a plurality of driving modes in each of which it is arranged to select the subsystem configuration modes in a manner suitable for a respective driving surface, and further wherein the plurality of driving modes includes at least two off-road modes in which the subsystem configurations are controlled in a manner suitable for driving on respective off-road driving surfaces, and an on-road mode in which the subsystem configurations are controlled in a manner suitable for driving on-road, and still further wherein one of the subsystems is a speed control system arranged to control the speed of the vehicle when descending a hill, and wherein the peed control system is arranged to be switched on in at least one of the off-road modes and switched off in the on-road mode.

    That is, claim 46 is directed to a vehicle control system that optimizes control through adjustment of the speed control system.  The '828 patent describes that to provide maximum control on hills, a vehicle has the standard default target speed of 6 kph.  Claim 46 recites limitations that would capture this benefit through a specific implementation that requires a speed control system "arranged to control the speed of the vehicle when descending a hill" and "arranged to be switched on in at least one of the off-road modes and switched off in the on-road mode."

    Motion to Dismiss

    Defendants argued that Plaintiff's patent infringement claim should be dismissed because Plaintiff's patents are invalid for failure to claim patent-eligible subject matter under 35 U.S.C. § 101.

    Abstract Idea

    First, the Court addressed Alice Step 1 — whether the claims are directed to an abstract idea.

    The Federal Circuit has distinguished between claims directed towards merely performing a function and claims directed to "a particular way of performing that function."  The former generally fall into the abstract-idea category, while the latter generally do not.  Claims that improve the functioning of a computer provide a particular means to perform a function, and therefore, fall in the latter category and are not directed towards an abstract idea.

    Plaintiff argued that the claims are directed to an improvement in computer functionality because the technology permits the manipulation of multiple vehicle subsystems at once.  In particular, Plaintiff alleged that the Terrain Response technology is a technological improvement to vehicle control systems.  Prior to the '828 patent, drivers had to know the appropriate configurations of various subsystems when driving off-road on particular driving surfaces, the subsystems had to be manually changed one at a time, and a limited number of subsystems could be manipulated at one time.  The '828 patent allegedly improves vehicle control technology by permitting a driver to control multiple subsystems at once and provides preset configurations of various subsystems for particular surfaces.

    On the other hand, Defendants characterized the claims as mere computerization of what drivers already do in their mind — for instance, by slowing down while going downhill.  Courts have found that merely using computers to perform what people can otherwise do is patent-ineligible.

    Here, the Court found that the claims of the '828 patent are "directed to" manipulating multiple vehicle subsystems to allow a vehicle to better adapt to driving on various types of on-road and off-road surfaces.  The claims asserted (claims 21, 41, 46) recite different components of the overall technology.  For instance, claim 41 controls the suspension subsystem and claim 46 controls the vehicle's speed.

    Applying these principles and construing the pleadings in the light most favorable to Plaintiff, the Court found that the claims are not directed to an abstract concept.  The Court found that the most analogous technology to that embodied by the '828 patent is cruise control technology, which commonly exists in vehicles.  Courts have found that such systems, which allow a driver to set and maintain a steady speed, are patentable and not directed at an abstract idea.

    Plaintiff alleged that the technology embodied in the '828 patent claims improves computer functionality by allowing a driver to select one configuration on an input panel and then control multiple subsystems, which is an improvement to existing vehicle control technology.  However, more fundamentally than that, the technology physically changes the subsystems of the vehicle.  For instance, claim 21 and its dependents "allow lower levels of wheel spin when the vehicle is travelling at lower speeds than when the vehicle is travelling at higher speeds," (claim 23), and "allow a relatively high degree of wheel slip under braking," (claim 24).

    Claim 41 adjusts the suspension subsystem, and changes the actual height of the vehicle.  Claim 46 controls the speed of the vehicle in certain conditions, for instance, when the vehicle is going downhill, which is nearly identical to the claims made by cruise control systems.  These claims do more than just perform a function, which Defendants characterized as driving differently in different conditions, but rather provide "a particular way of performing that function."

    Similarly, in this case, drivers may engage in various mental processes while driving, for instance, driving slower while going downhill, avoiding sharp accelerations or braking while driving on certain surfaces.  The Court found that the technology embodied in the '828 patent, however, physically changes the vehicle's subsystems — wheel spin changes while driving on certain surfaces (claim 21), the suspension changes the height of the vehicle (claim 41), and speed controls are engaged while going downhill (claim 46).  It does not computerize what humans would otherwise do by replacing the mental process entirely.

    Drivers may continue to engage in the same mental processes, but the vehicle itself has adapted to optimize and make driving on different surfaces more efficient.

    Finally, the Court noted that it is not clear that people could do what the '828 patent claims to do.  Although Defendants provided the example of driving slower downhill or applying the brakes in a different manner, drivers are generally not able to change the wheel spin of their vehicles or change the suspension while the vehicle is moving.  Therefore, unlike tabulating a vote or performing basic economic principles, the technology here is more than mere computerization of functions that people can already do.

    Because the claims of the patent are directed at both improvements in computer functionality and providing concrete, physical means of implementing the functionality, the Court concluded that the '828 patent is not directed at an abstract idea.

    Thus, for these reasons, the Court denied Defendants' Motion to Dismiss.

    Opinion and Order by Chief District Judge Mark S. Davis

  • Broad Institute Takes Its Turn in Interference Motion Practice

    By Kevin E. Noonan —

    Broad InstituteFriday, the Broad Institute (and its partners as Senior Party, Harvard University and MIT) filed its opposition to an authorized motion for protective order by the Junior Party (the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier; collectively, "CVC") as well as its Substantive Motion No. 1 that CVC was barred from the interference by interference estoppel.  The arguments in each brief were related by several themes repeated (sometimes exhaustively) both between the briefs and throughout each one.

    The Opposition

    The Broad's opposition bases its argument on three principles.  The first is that interferences are public proceedings, and the PTAB has enunciated clearly (by statute, rule, and in the PTAB's statements in this interference) that disclosure Is the default unless CVC can bear the burden of showing necessity for nondisclosure.  Second, CVC should be precluded in this interference from concealing its priority Statement because it did not do so in the prior interference (No. 106,048) between these parties.  Third, the Broad will be prejudiced by nondisclosure, because it would prevent third parties (including current and potential licensees) from appreciating the "weakness" of CVC's position in the interference.

    The Broad's opposition motion cites the PTAB's "well-established and firm policy" of keeping both its judgments and the bases for them subject to "public scrutiny," citing Fletcher v. Leibu, 72 U.S.P.Q.2d 1701, 1703 (B.P.A.I. 2004), and the language of the Board's Order authorizing CVC to file its motion for protective order (which suggested redactions would be permitted only to shield "personal information on exhibits" and the like).  The Broad's brief further asserts that CVC has not shown in its Motion that there is "confidential information [that] is so sensitive that it qualifies as the truly exceptional circumstance where a Protective Order is warranted"; indeed, according to the brief, the only information CVC wishes to keep hidden are "the facts on which CVC intends to establish its invention dates," and that "this is not competitively sensitive information of the sort that might otherwise warrant protection."  The purpose of a priority statement in an interference is to provide "an honest statement of the essential facts and dates, and the Broad asserts that "[i]t defies logic that CVC's priority statement for this second interference on the same eukaryotic subject matter is more sensitive or requires any treatment different than the prior one."  Under these circumstances, the Broad contends that CVC's argument in favor of the protective order "is built on layers of speculation rather than any concrete harm."  It is the Broad that risks prejudice, should the Board grant CVC's motion, because "CVC has actively and intentionally attempted to create a cloud of uncertainty for Broad's patents in a public forum, but seeks to hide the facts showing the weakness of its position."  The Broad cites as evidence thereof a press release from Berkeley announcing the interference and stating that the declaration of interference puts at risk "essentially all" the Broad's patents directed at using CRISPR in eukaryotic cells.  Granting CVC its protective order would hide from the public the facts the Broad needs to rebut CVC's public "attacks" on the Broad's patents.

    The Broad's arguments in support of its position include that denial of CVC's motion is in the public interest, based on the PTAB's policy of disclosure as embodied in 37 C.F.R. § 41.6(b)(1).  Moreover, in view of the importance of CRISPR technology to the public, any such "gap" in the public's knowledge of the facts surrounding how (and by whom) CRISPR was invented would be detrimental.  The Broad argues that this interference is not merely a private dispute between the parties because its resolution "will have a significant impact on the public, by the very nature and importance of the patent rights involved."  Nor has CVC shown that the information it wishes the protective order to conceal is actually confidential, being information either disclosed in the prior '048 interference or that properly should not be confidential under Rule 6(b)(1).  CVC's arguments in favor of the Board granting a protective order are "premised on layers of speculation," according to the Broad, being based on possible future interferences against additional parties.  Similar concerns could arise in any interference in the Broad's view (a seeming stretch on credibility), which would be counter to the Board's preference for public disclosure.  And after all, if a priority statement is supposed to be "'an honest statement of the essential facts and dates," supported with corroborating evidence," as CVC's motion asserts, then it should not be "subject to change for strategic gain" (which is the gist of CVC's argument in support of nondisclosure).  Finally the Broad argues that nondisclosure will prejudice the Broad from being able to counter with facts CVC's behavior of "actively and intentionally promoted [a] cloud of uncertainty in the public mind" regarding proper ownership of CRISPR technology using eukaryotic cells, which the Broad contends CVC has tried to create about its patents since provoking the '048 interference.

    The Substantive Motion

    The Broad's own Substantive Motion No. 1 reiterates some of these themes, but its affirmative assertion in favor of prevailing in the Motion (and the interference) is that CVC is estopped from getting a "second bite at the apple" in this interference by the provisions of 37 C.F.R. § 41.127(a)(1) and MPEP § 2308.03(b) (interference estoppel).  The Broad applies this principle in two ways.  The first is that this interference is directed to the same subject matter as the previous '048 patent (using the inclusion of the same Broad patents in this interference and the correspondence between the count in the '048 interference and claim 1 in involve U.S. Patent No. 8,697,359 in support).  Second, the Broad asserts judgment estoppel regarding issues that were raised or could have been raised in the earlier interference in support of its contention that CVC is estopped from pursuing this interference.  The basis for this contention is that CVC had the opportunity in the '048 interference to file a responsive motion to the Broad's motion of no interference-in-fact to add claims directed to eukaryotic applications of CRISPR technology but did not.  The Broad argues that this was a strategic decision by CVC to have only its "environment-free" claims in the interference.  Furthermore, the Broad contends that it was intentional, citing to CVC's colloquy before the Board when the parties discussed which motion the Board would authorize, where CVC expressly "reserved" the ability to file such responsive motions.  The Broad continues its theme that the Board should not permit CVC to maintain the "cloud of uncertainty" regarding its patents, in its public statements and by pursuing "serial" interferences against the same Broad patents.

    The brief sets forth the factual background of the issues before the Board and the timeline for discovery of CRISPR and development (by itself) of eukaryotic applications of the technology; not surprisingly, in the Broad's telling of the tale its scientists developed these applications far in advance of CVC's scientists, while the CVC scientists were bogged down with in vitro applications of the technology and unable to use CRISPR in eukaryotic cells.  The Broad also characterizes CVC's interference strategy in the '048 interference to be intentionally environment-free, by deleting claims relating to practicing CRISPR in eukaryotic cells, starting with the suggestion for the '048 interference CVC submitted to the PTO.  The Broad also uses this recitation of the factual background to reprise it legal argument that CVC had, and assured that it would have, the ability to file a responsive motion to add claims directed to eukaryotic applications of CRISPR to counter the Broad's motion that there was no interference-in-fact, but that CVC failed to submit such a motion.  The Broad once again characterizes this failure to file a responsive motion as an intentional, strategic "gamble," saying that CVC "knowingly chose not to request authorization for a responsive motion," and that:

    By declining to seek authorization to file this responsive motion, CVC prevented the PTAB from having the option, upon its finding of no interference-in-fact, of adding in a CVC eukaryotic claim to the 048 Interference and proceeding with a eukaryotic-claim-to-eukaryotic claim interference to timely resolve all issues.  Instead, CVC made its strategic choice, believing that it was maximizing the chances of going forward with its preferred interference.

    In support of its legal arguments regarding estoppel, the Broad's motion parses the language of 37 C.F.R. § 41.127(a)(1):

    Judgment. (a) Effect within Office—(1) Estoppel.  A judgment disposes of all issues that were, or by motion could have properly been, raised and decided.  A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party's failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment.

    (emphasis in brief).  The Broad uses the first sentence to counter CVC's (presumed) argument that judgment estoppel requires a judgment (i.e., a losing party) and that under conditions where the Board (and the Federal Circuit) find no interference-in-fact there is no losing party and thus no estoppel.  On the contrary, the Broad argues that the first sentence of the rule applies in such cases and raises an estoppel because (as argued throughout) CVC did not avail itself of its right to file a responsive motion to the Broad's motion for no interference-in-fact in the '048 interference.  The Broad finds support for its position in the Notice in the Official Gazette (1277 OG 51 TRDRULE, 2003 WL 25967289, Off. Gaz. Pat. & Trademark Office, Vol. 1277, No. 4 at *30 (December 23, 2003), regarding the rule, and further notes that "[t]he PTAB commonly relies on its own notices of rulemaking to interpret the intent of its rules," citing Garner v. Quate, 2006 WL 3939187, at 22 *6-7 (B.P.A.I. Dec. 14, 2006).  This interpretation of the rule is also consistent with the purpose of estoppel, to promote "finality, certainty, and efficiency," according to the Broad, as well as preventing "serial" interferences (as the Broad alleges CVC is attempting to pursue in this interference).  To rebut a reading of the provisions of the MPEP (Section 2308.03(b)) that could be interpreted as being contrary to their own reading, the Broad cites Racing Strollers, Inc. v. TRI Indus., Inc., 878 F.2d 1418, 1422 (Fed. Cir.1989) (en banc), for the principle that "to the extent any portion of the MPEP conflicts with the federal regulations, of course, the federal regulation controls (provided that the Board interprets Rule 127(a) as the Broad does).

    The brief then sets forth substantially the same arguments in a more rigorous "Legal Argument" section reciting the same principles and their application to the present circumstances in more formal brief form but to the same conclusion (albeit giving a little more attention to the distinctions raised by CVC regarding the single molecule, "fused" guide and tracer RNA molecules comprising the CRISPR system at issue in this interference).  The Broad's legal position (with important policy overtones) is summarized in this section of the legal argument portion of their brief:

    Permitting CVC to provoke an interference on the exact same set of Broad claims based on ex parte maneuvering after a judgment of no interference-in-fact would destroy any finality that the 048 Judgment might have.  And, if there is no estoppel here, then under that faulty reasoning, there would be nothing stopping CVC from serially seeking interferences against Broad's same eukaryotic claims by presenting only mere variations on them again and again.  That is not allowed.  CVC is estopped based on the PTAB's Final Judgment.

    Clearly wishing to be done with CVC and their claims to priority for eukaryotic applications of CRISPR once and for all, the Broad's brief closes with their argument that CVC's claims to such embodiments should not only be precluded from a determination of priority in this interference but should be finally rejected when the interference is concluded in the Broad's favor based on estoppel:

    Under application of the long-standing rule that only one patent may be granted for an invention, CVC's Involved Claims should be finally refused.  35 U.S.C. § 101.  Here, Broad has been awarded claims as to the eukaryotic invention.  CVC cannot obtain claims to that subject matter absent an interference with Broad, which CVC is estopped from pursuing as set out above.  Accordingly, CVC is not able to obtain eukaryotic claims and Broad's issued claims stand.

    For the absence of doubt, the brief then recites its own patents and application that should be maintained and CVC's applications having claims (substantially all of them) that should be finally rejected.

    The Board did not grant CVC authorization to file a brief in opposition to the Broad's Substantive Motion No. 1 but in view of the dispositive nature of this motion it is unlikely not to give CVC the opportunity to respond.

  • Phigenix, Inc. v. Genentech, Inc. (Fed. Cir. 2019)

    By Donald Zuhn —

    Federal Circuit SealEarlier this month, in Phigenix, Inc. v. Genentech, Inc., the Federal Circuit affirmed a decision by the U.S. District Court for the Northern District of California striking the infringement opinion of Phigenix's expert and granting summary judgment of noninfringement based on a lack of evidence of both direct infringement and intent to induce infringement.  The District Court also denied summary judgment of invalidity of Phigenix's U.S. Patent No. 8,080,534.

    The '534 patent, which is entitled "Targeting PAX2 for the Treatment of Breast Cancer," describes preventing or treating breast conditions (including breast cancer) by administering a composition that inhibits and/or enhances the expression of certain genes (PAX2 and DEFB1, respectively).  Claim 1 recites "[a] method for treating a breast condition" by administering a composition that inhibits PAX2 expression or activity, and/or expresses DEFB1.

    Phigenix filed suit against Genentech for infringement of the '534 patent based on Genentech's product Kadcyla, alleging that Genentech induced infringement of the '534 patent by encouraging health care professionals to prescribe and administer Kadcyla to breast cancer patients who had previously received the chemotherapy drugs "trastuzumab and a taxane, separately or in combination."  After the District Court issued an order holding that the asserted claims of the '534 patent are not entitled to the priority date of a 2005 provisional application, Phigenix narrowed the relevant population to Kadcyla patients who were pretreated exclusively with trastuzumab and a taxane (i.e., trastuzumab, a taxane, and "and nothing else"), which Phigenix conceded comprise only about 4% of the total population of Kadcyla patients.  However, Phigenix did not move to amend its infringement contentions to reflect this narrower population (Genentech learned of Phigenix's narrowed population definition during its deposition of Phigenix's expert after the close of fact discovery and months after the District Court's order regarding priority to the 2005 provisional application).

    Genentech responded to the narrowed patient population by moving to strike the infringement opinion of Phigenix's expert.  The District Court, agreeing with Genentech that Phigenix had failed to provide adequate notice of its narrowed infringement theory, struck Phigenix's expert infringement opinion and granted summary judgment of noninfringement based on the lack of direct infringement evidence.  The District Court also granted summary judgment of noninfringement based on a lack of evidence of specific intent to induce infringement under Phigenix's narrowed theory.  Phigenix appealed the District Court's decision to strike its expert's noninfringement opinion and grant of summary judgment of noninfringement.

    In an opinion by Judge Stoll, joined by Judges Reyna and Bryson, the Federal Circuit determined that the District Court was within its discretion to exclude the infringement opinion of Phigenix's expert in response to Phigenix's failure to timely disclose its narrowed infringement theory.  The panel noted that Phigenix narrowed the relevant patient population from "Kadcyla patients who were pretreated with trastuzumab and a taxane" to "Kadcyla patients who were pretreated with trastuzumab and a taxane and nothing else," and did so not in response to new evidence or a claim construction.  More importantly, the opinion notes that "it is clear that Phigenix did not take any deliberate action to proactively put Genentech on notice that it had [narrowed the relevant patient population]."  The panel also noted that it agreed with the District Court "that such a dramatic narrowing at such a late stage in the litigation prejudiced Genentech because it 'markedly transformed the nature of the infringement theory, and consequently, impacted Genentech's ability to prepare a defense.'"

    In affirming the District Court's decision to strike the noninfringement opinion of Phigenix's expert and grant of summary judgment of noninfringement, the Federal Circuit found unpersuasive Phigenix's arguments that the District Court had abused its discretion.  The panel first disagreed with Phigenix's argument that its revised infringement theory was not newly propounded because it fell wholly within the scope of its original infringement contentions.  The panel, however, agreed with the District Court "that the broader theory disclosed in Phigenix's infringement contentions is not sufficiently specific to disclose its narrowed theory."  The panel also disagreed with Phigenix that it had put Genentech on notice of its narrowed infringement theory during a challenge to the prior art status of a particular clinical trial.  The panel was also not persuaded by a number of district court decisions cited by Phigenix, which Phigenix argued allowed plaintiffs to narrow their infringement theories after propounding broader infringement contentions.  In response, the Court noted that "on the merits, these cases are readily distinguishable because the moving party in each demonstrated early notice, diligence, new evidence, and/or leave obtained from the district court—none of which apply here."  Finally, the Court disagreed with Phigenix's argument that the District Court's decision to strike the entirety of Phigenix's expert's opinion was "heavy-handed," that Genentech had not adequately explained how it was prejudiced by the revised infringement theory, that Genentech had failed to explain why a less severe sanction would not address the District Court's concerns, and that Genentech had not sought clarification of Phigenix's infringement contentions.  The Court countered that "Genentech adequately explained how it was prejudiced by Phigenix's untimely narrowing of its infringement theory."

    Rejecting Phigenix's arguments that the District Court had abused its discretion in striking the noninfringement opinion of Phigenix's expert, and without its expert report, the panel determined that Phigenix's direct infringement case must fail, and therefore affirmed the District Court's grant of summary judgment of noninfringement.

    Phigenix, Inc. v. Genentech, Inc. (Fed. Cir. 2019)
    Nonprecedential disposition
    Panel: Circuit Judges Reyna, Bryson, and Stoll
    Opinion by Circuit Judge Stoll