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  • TC Heartland LLC v. Kraft Foods Group Brands LLC (2017)

    By Andrew Williams —

    Supreme Court Building #2Today, in TC Heartland LLC v. Kraft Foods Group Brands LLC, the Supreme Court reversed the Federal Circuit and held that the word "resides" in the patent venue statute, 28 U.S.C. § 1400(b), "refers only to the State of incorporation" of the alleged infringer.  As simple as that pronouncement sounds, the Court's decision will likely have profound implications for all patent litigation.  If alleged infringers only "reside" in their state of incorporation, as opposed to anywhere they are subject to personal jurisdiction, patent holders will no longer necessarily get to choose the venue in which they may file a patent infringement lawsuit.  This could potentially result in the loss of "home court" advantage, and will likely make it more difficult to sue multiple infringers located in different states.  Accused infringers, on the other hand, will be less likely to be sued in remote locations that are otherwise unrelated to the case.  The so-called "patent trolls" should be particularly impacted by this decision.  The business model for these entities often entails suing alleged infringers in patent-friendly venues like the Eastern District of Texas in an attempt to extort settlements from accused infringers.  The outcome of this case should severely curtail such activity.  This will also hopefully be the final swing of the pendulum away from the rights of patent holders, and will hopefully diminish the recent enthusiasm for patent reform legislation in Congress.

    The TC Heartland case stemmed from a lawsuit brought by Kraft Foods Group Brands LLC against TC Heartland, LLC and Heartland Packaging Corp. in the U.S. District Court for the District of Delaware.  TC Heartland is incorporated in Indiana, and has its headquarters in Carmel, Indiana.  As a result, it moved to either dismiss the action on venue grounds (among others) or transfer venue to the Southern District of Indiana.  On August 13, 2015, Magistrate Judge Burke had recommended denying the motion, and Chief Judge Stark subsequently adopted the report in all respects.  TC Heartland petitioned the Federal Circuit for a writ of mandamus to either dismiss or transfer the case, which it denied.  As suggested above, the Federal Circuit's interpretation of 28 U.S.C. § 1400(b) provided that the venue of the District of Delaware was proper if that court could exercise personal jurisdiction over TC Heartland.  The Supreme Court subsequently granted certiorari.

    The reasoning of the Supreme Court was fairly straight forward and not very surprising.  The Court began by recounting the history of the patent venue statute.  Venue for patent litigation is controlled by 28 U.S.C. § 1400(b):

    Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.

    28 U.S.C. § 1400(b).  However, the general venue statute states:

    (2) an entity with the capacity to sue and be sued in its common name under applicable law, whether or not incorporated, shall be deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the court's personal jurisdiction with respect to the civil action in question and, if a plaintiff, only in the judicial district in which it maintains its principal place of business.

    28 U.S.C. § 1391(c).  In Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), the Supreme Court held that the general statute does not override the specific statute, and therefore the residence of an accused infringing corporation was its place of incorporation.  Importantly, the patent venue statute had not changed since that decision.  Nevertheless, in 1988, Congress amended the general venue statute to add the language "[f]or the purposes of venue under this chapter" before the beginning of the above-quoted language.  This was enough to convince the Federal Circuit that § 1391(c) now governs the definition of "resides" in 1400(b).  Thus, in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), that Court held that essentially any forum was available for a patent infringement action, provided the district court had personal jurisdiction over the defendant.  Congress did subsequently pass the Federal Courts Jurisdiction and Venue Clarification Act of 2011, which made two changes relevant to this statute.  First, the newly added language above was changed to remove "under this chapter," and second, § 1391(a) was amended to include the language:  "Applicability of section. — Except as otherwise provided by law."

    The Supreme Court narrowed the question it was deciding down to "whether Congress changed the meaning of §1400(b) when it amended §1391."  In answering the question in the negative, the Court pointed out that Congress ordinarily provides a clear indication of its intent in the text of the amended provision.  This clear indication was missing from § 1391, according to the Court.  The current version does provide a default rule, but so did the version back when Fourco was decided.  Moreover, the argument that "'all venue purposes' means 'all venue purposes' — not 'all venue purposes except for patent venue'" was advanced by both Kraft and the plaintiff in Fourco.  It was not successful then, and it was not successful today.  In fact, the argument was found to be even weaker today, because the current statute includes the language "otherwise provided by law."  Finally, even though Congress amended § 1391 after the Federal Circuit's VE Holding decision, there was no indication that it meant to ratify that decision.  To the contrary, Congress actually delated the phrase "under this chapter" in 2011; language that was heavily relied upon in the earlier Federal Circuit decision.

    In this decision, the Court did not consider a few related questions.  First, in footnote 2, the Court pointed out that it was not addressing the question of what venue was proper for foreign corporations.  Second, in footnote 1, the Court made clear that its analysis related to proper venue for corporations.  It was suggested during the briefing that TC Heartland might instead be an unincorporated entity, but the Court left this consideration to the courts below on remand.  Finally, the Court made no pronouncement related to the second prong for conferring proper venue under the statute.  Thus, even though it will still be possible to sue alleged infringers:  "where the defendant has committed acts of infringement and has a regular and established place of business," the Court did not comment on what that meant.  The contours of this provision should continue to take shape in the lower courts in the months and years to come.

    This case should have a profound impact on the so-called "patent trolls."  These entities will no longer be able to take advantage of patent-friendly courts, such as the Eastern District of Texas, that otherwise have no significant connection to the lawsuit.  In fact, because any lawsuit will likely need to be filed in a venue in which the accused infringed has the advantage, patent trolls may find it more difficult to extort settlements from their victims.

    So what will be the likely outcome of this case?  Clearly, the number of lawsuits being filed in the Eastern District of Texas should fall precipitously.  But will those cases be evenly distributed across the country?  According to one of the amicus briefs, filed on behalf of 22 law, economics, and business professors, the distribution might not change dramatically.  Currently, around 60% of lawsuits are filed in five districts — the Eastern District of Texas, the District of Delaware, the Central District of California, the Northern District of California, and the District of New Jersey.  This case would still likely leave approximately 60% of patent cases in these same five districts.  The main difference is that most cases would shift out of the Eastern District of Texas, but two other districts would see a potentially commensurate uptick in filings — the Northern District of California and the District of Delaware.  This shift, as the amici pointed out, would unfortunately not result in a meaningful distribution of cases.  Only time will tell.

    On a final note, it is somewhat ironic that the TC Heartland case was initially filed in the District of Delaware, even though the alleged infringer was incorporated in Indiana.  With today's outcome, the Delaware court may have gotten rid of this one case.  However, that Court will now will likely face a deluge of patent infringement filings.  So much for "winning" at the Supreme Court.

    TC Heartland LLC v. Kraft Foods Group Brands LLC (2017)
    Opinion of the Court by Justice Thomas, joined by all Members of the Court, except for Justice Gorsuch, who took no part in the consideration or decision of the case

  • Biscotti Inc. v. Microsoft Corp. (E.D. Tex. 2017)

    Magistrate Recommends Narrow Interpretation of Inter Partes Review Estoppel Provision

    By Donald Zuhn —

    District Court for the Eastern District of TexasEarlier this month, in Biscotti Inc. v. Microsoft Corp., U.S. Magistrate Judge Roy S. Payne of the U.S. District Court for the Eastern District of Texas issued a Report and Recommendation on two motions related to Microsoft's invalidity defenses to Biscotti's infringement action.  In particular, Magistrate Judge Payne recommended that Plaintiff's Motion for Summary Judgment of Improper Incorporation by Reference be denied and that Plaintiff Biscotti Inc.'s Motion For Summary Judgment of Estoppel of Defendant Microsoft's Invalidity Art and Theories Based on a Final Written Decision in Microsoft's Inter Partes Review Petitions be granted-in-part.  This post addresses the recommendation regarding Biscotti's second motion ("IPR Estoppel Motion"), which concerns the extent to which Microsoft's IPR challenge of the patent at issue in the district court litigation should estop Microsoft from raising certain invalidity defenses at trial.

    Magistrate Judge Payne's Recommendation is related to a patent dispute initiated by Biscotti, which filed suit against Microsoft, alleging that Microsoft's Xbox One and related services, including Xbox Live, infringed Biscotti's U.S. Patent No. 8,144,182.  After Biscotti filed suit against Microsoft, Microsoft petitioned the Patent Trial and Appeal Board for inter partes review of the '182 patent.  The District Court stayed the infringement action pending the IPR, and the PTAB instituted IPR on 31 of the 53 claims in the '182 patent, declining to institute IPR on the remaining 22 claims.  Microsoft responded to the denial of IPR on the 22 remaining claims by filing three additional IPR petitions (bringing the total of Microsoft's IPR petitions challenging the '182 patent to six), but the PTAB refused to join the latter three petitions to the first three petitions, finding the latter three petitions to be time-barred.  The PTAB ultimately upheld the patentability of the 31 claims for which IPR was instituted, and the District Court lifted its stay and scheduled trial to begin next month.  Biscotti moved for partial summary judgment on the two matters related to Microsoft's invalidity defenses.

    Citing 35 U.S.C. § 315(e)(2), Magistrate Judge Payne notes that "[a]fter a final IPR decision from the PTAB, 'the real party in interest or privy of the petitioner' is barred from later asserting in district court that a claim challenged in IPR is 'invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.'"  Magistrate Judge Payne also notes that "[t]he legislative history of this provision suggests that Congress intended to prevent the same party from challenging the validity of the same patent twice, at least based on patents or printed publications that the PTAB considered."

    According to the Recommendation, two Federal Circuit decisions have more narrowly interpreted the IPR estoppel provisions:  Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), and HP Inc. v. MPHJ Technology Inv., LLC, 817 F.3d 1339 (Fed. Cir. 2016).  In Shaw, the Federal Circuit denied a petition for writ of mandamus to instruct the PTAB to reevaluate a redundancy decision, but indicated that the PTAB's redundancy decision would not have resulted in estoppel because the petitioner could not have raised a redundant ground during the IPR.  In HP, the Federal Circuit determined that grounds that are not instituted for redundancy do not become a part of the IPR.  The Recommendation observes that:

    Shaw and HP can be read in different ways.  The broad interpretation suggests that any ground not raised during post-institution IPR proceedings—regardless of whether that ground was included in the petition or not—is exempt from estoppel.  This interpretation follows from the Federal Circuit's discussion of the text of the estoppel provisions.  Namely, the phrase "during that inter partes review" in § 315(e), according to Shaw, suggests that if a ground of unpatentability was not raised in the post-institution phase of the IPR proceeding, estoppel does not apply . . . .  Although it is not clear from § 315(e)'s text that "inter partes review" necessarily includes only the post-institution portion of the IPR, as opposed to also including the petition phase, some courts appear to have literally applied the Federal Circuit's discussion in Shaw and exempted any ground from § 315(e) not raised during the post-institution phase of the IPR.

    However, the Recommendation cites a Western District of Wisconsin case, Douglas Dynamics, LLC v. Meyer Prod. LLC, which also observes that "Shaw’s narrow view of § 315(e) estoppel undermines the purported efficiency of IPR, [and that u]nder this approach, IPR is not an alternative to litigating validity in the district court, it is an additional step in the process."  The Wisconsin court notes that the Douglas Dynamics case had been filed in December 2014, set for trial in September 2016, and then returned to court in April 2017, and "it is not at all clear that the issues have been meaningfully narrowed [as a result of inter partes review]."  According to the Recommendation, "[t]he same could be said of this case, which was filed in 2013, and after Microsoft's entirely unsuccessful IPR campaign involving six different IPR petitions, Microsoft has returned to the Court in 2017 hoping to continue litigating invalidity arguments similar to those that it litigated (and lost) at the PTAB."

    Returning to the ways in which Shaw and HP can be read, the Recommendation notes that a "narrower interpretation is that only grounds raised in a petition but not instituted for procedural reasons (such as redundancy) are exempt from estoppel," which the Recommendation states would be "consistent with due process—if the petitioner tries to raise a ground but is precluded from further pursuing that ground during subsequent IPR proceedings solely because of PTAB procedures, then the petitioner should not be barred from asserting the merits of that same ground in a later PTAB or district court proceeding."  The Recommendation indicates, however, that "[i]f . . . the petitioner simply does not include a prior art reference in the petition that reasonably could have been included, the petitioner should be estopped from asserting that reference in a subsequent proceeding" (citing Douglas Dynamics, which states that "[i]f the defendant pursues the IPR option, it cannot expect to hold a second-string invalidity case in reserve in case the IPR does not go defendant's way").  Magistrate Judge Payne therefore recommends that the narrow view of Shaw and HP be adopted, noting that "the Court reads Shaw and HP to exempt an IPR petitioner from § 315(e)'s estoppel provision only if the PTAB precludes the petitioner from raising a ground during the IPR proceeding for purely procedural reasons, such as redundancy."

    In the context of the instant case, Magistrate Judge Payne recommends that because the PTAB instituted IPR of claim 36 of the '182 patent under § 103(a) based on the combination of Kenoyer, Briere, and Hurley, Microsoft should be estopped from asserting the combination of Kenoyer and Briere as a basis for obviousness at trial because Microsoft raised or could have raised that combination during IPR proceedings.  Magistrate Judge Payne also recommends that Microsoft should be estopped from asserting Kenoyer alone as a basis for finding claim 36 obvious because Kenoyer is a subset of Kenoyer, Briere, and Hurley.  With respect to Microsoft's use of certain systems as prior art to the asserted claims, the Recommendation notes that IPR is limited to invalidity grounds "that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications," and therefore, suggests that it is possible that Microsoft could not have raised a prior art "system" during IPR proceedings.  However, if it turns out that "Microsoft's purported system prior art relies on or is based on patents or printed publications that Microsoft would otherwise be estopped from pursuing at trial, e.g., patents or printed publications that a 'skilled searcher conducting a diligent search reasonably could have been expected to discover,' then Microsoft should be estopped from presenting those patents and printed publications at trial."

    Biscotti Inc. v. Microsoft Corp. (E.D. Tex. 2017)
    Report and Recommendation Magistrate Judge Payne

  • Conference & CLE Calendar

    CalendarMay 24, 2017 – "Antitrust Issues in ANDA Patent Litigation" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    May 25, 2017 – "Evolving PTAB Trial Practice: Navigating Complex Procedural Rules — Strategically Using Routine and Additional Discovery, Requests for Joinder, and Motions to Amend" (Strafford) – 1:00 to 2:30 pm (EDT)

    May 25, 2017 – "Double Patenting: Defeating Double Patenting Rejections and Avoiding Terminal Disclaimers" (Strafford) – 1:00 to 2:30 pm (EDT)

    June 1, 2017 – "Obviousness Standard: Leveraging Latest PTO and Court Guidance — Overcoming Challenges of Obviousness and Attacks on Patent Validity" (Strafford) – 1:00 to 2:30 pm (EDT)

    June 1, 2017 – "Post-Grant Patent Office Proceedings After the AIA: Lessons from the First Five Years" (West LegalEdcenter) – 12:00 to 1:00 pm (EDT)

    June 6, 2017 – "Patent Prosecution: FTO Opinions, Examiner Interactions, Patent Drafting and More" (Strafford) – 8:30 am to 5:30 pm (EDT)

    June 8, 2017 – "Biotech Patents and Section 101 Rejections: Meeting Patent Eligibility Requirements — Leveraging Recent Decisions and USPTO Guidance to Overcome Rejections" (Strafford) – 1:00 to 2:30 pm (EDT)

    June 12-14, 2017 – Summit on Biosimilars*** (American Conference Institute) – New York, NY

    June 13, 2017 – European biotech patent law update (D Young & Co) – 4:00 am, 7:00 am, and 12:00 pm (ET)

    ***Patent Docs is a media partner of this conference or CLE

  • Webinar on Obviousness Standard

    Strafford #1Strafford will be offering a webinar/teleconference entitled "Obviousness Standard: Leveraging Latest PTO and Court Guidance — Overcoming Challenges of Obviousness and Attacks on Patent Validity" on June 1, 2017 from 1:00 to 2:30 pm (EDT).  Barry J. Herman of Womble Carlyle Sandridge & Rice and Jon L. Schuchardt of Dilworth IP will provide patent counsel with guidance on the evolving obviousness standard, including how the Federal Circuit's treatment of obviousness issues is changing, how the Patent Trial and Appeal Board (PTAB) handles obviousness in the increasingly popular inter partes review (IPR) proceedings, and whether the standard for patentees to prevail on non-obviousness under Section 103 is more confusing than ever.  The webinar will review the following topics:

    • How have recent Federal Circuit decisions affected application of the obviousness standard?
    • What level of "unexpected results" is needed to demonstrate patentability in light of recent decisions?
    • How can practitioners leverage recent decisions in which the Federal Circuit has insisted upon more thorough, reasoned explanations of the PTO’s obviousness conclusions?
    • What are the most effective strategies for both patentees and petitioners in prevailing on obviousness assertions in an IPR proceeding, and how will that strategy play out at the Federal Circuit?

    The registration fee for the webinar is $297.  Those interested in registering for the webinar, can do so here.

  • Webcast on Post-Grant Patent Proceedings

    West LegalEdcenterWest LegalEdcenter will be offering a live webcast entitled "Post-Grant Patent Office Proceedings After the AIA: Lessons from the First Five Years" on June 1, 2017 from 12:00 to 1:00 pm (EDT).  Amol Parikh and Brian A. Jones of McDermott Will & Emery LLP will focus on the evolution of Post-Grant Patent Office proceedings, recent reforms, current trends, and potential changes that may occur in the near future.

    The registration fee for the webcast is $195.  Those interested in registering for the webinar, can do so here.

  • Seminar on Patent Prosecution

    Strafford #1Strafford will be offering a full day seminar on "Patent Prosecution: FTO Opinions, Examiner Interactions, Patent Drafting and More" on June 6, 2017 from 8:30 am to 5:30 pm (EDT).  The seminar will offer presentations on the following topics:

    • Freedom-to-Operate Opinions
    • USPTO Examiner Count System and Examiner Interview Strategies
    • Reflections on PTAB and Where is Patent Law Heading
    • Overcoming 101 Rejections
    • Drafting Patent Applications to Withstand PTAB Scrutiny
    • Conflicts in Patent Prosecution (Ethics)

    A live webcast of the seminar is also being offered.  The seminar will be rebroadcast on June 8, 2017 from 8:30 am to 5:10 pm PDT.

    The registration fee for the seminar is $1,497.  Those interested in registering for the webinar, can do so here.

  • Webinar on Biotech Patents and Section 101 Rejections

    Strafford #1Strafford will be offering a webinar/teleconference entitled "Biotech Patents and Section 101 Rejections: Meeting Patent Eligibility Requirements — Leveraging Recent Decisions and USPTO Guidance to Overcome Rejections" on June 8, 2017 from 1:00 to 2:30 pm (EDT).  Denise M. Kettelberger of Patterson Thuente Pedersen and Katherine M. Kowalchyk of Merchant & Gould will provide guidance for patent counsel for overcoming § 101 rejections for biotech patents, review recent case law and USPTO guidance on § 101 patent eligibility, and offer strategies to address § 101 rejections.  The webinar will review the following topics:

    • The impact of the Mayo, Myriad, and Ariosa decisions on recent USPTO and Federal Circuit decisions addressing §101 rejections for biotech and other technological patents;
    • Problems with the USPTO guidance documents and Examiner Training;
    • Potential strategies to overcome §101 rejections;
    • Robust patent specification and claim drafting tips.

    The registration fee for the webinar is $297.  Those interested in registering for the webinar, can do so here.

  • PTAB Life Sciences Report — Part II

    By John Cravero —

    USPTO SealAbout the PTAB Life Sciences Report:  Each month we will report on developments at the PTAB involving life sciences patents.

    Argentum Pharmaceuticals LLC. v. Alcon Research, Ltd.

    PTAB Petition:  IPR2017-01053; filed March 10, 2017.

    Patent at Issue:  U.S. Patent No. 8,268,299 ("Self preserved aqueous pharmaceutical compositions," issued May 1, 2012) claims a multi-dose, self-preserved ophthalmic composition, comprising: zinc ions at a concentration of 0.04 to 0.4 mM; and borate and polyol, the borate being present in the composition at a concentration of 0.1 to 2.0% w/v and the polyol being present in the composition at a concentration of 0.25 to 2.5% w/v, the polyol comprising propylene glycol in the composition at a concentration of 0.25 to 1.25% w/v and sorbitol in the composition at a concentration of 0.05 to 0.5% w/v; wherein: (i) the composition has a concentration of anionic species less than 15 mM; and (ii) the composition exhibits sufficient antimicrobial activity to allow the composition to satisfy USP 27 preservative efficacy requirements.

    Petitioners Argentum Pharmaceuticals LLC; Intelligent Pharma Research LLC; APS GP LLC; APS GP Investors LLC; and KVK-Tech, Inc. are challenging the '299 patent on four grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, the '299 patent is involved in the following litigations:  Alcon Research Ltd. v. Mylan Pharmacuticals, Inc., 1:13-cv-01332 (D. Del.); Alcon Research Ltd. v.Wockhardt Ltd., 1:13-cv-02040 (D. Del.); Alcon Research Ltd. v. Micro Labs Ltd., 1:14-cv-00014 (D. Del.); Alcon Research Ltd. v. Watson Laboratories, Inc., 1:14-cv-00647 (D. Del.); Alcon Research Ltd. v. Akorn, Inc., 1:15-cv-00479 (D. Del.); and Alcon Research Ltd. v. Lupin Ltd., 1:15-cv-00621 (D. Del.); Apotex Corp. v. Alcon Research, Ltd.  According to the petition, the '299 patent was involved in inter partes review IPR2013-00428 (Apotex Corp.; filed 07/15/2013; instituted 01/02/2014; terminated through settlement 7/21/2014).


    Argentum Pharmaceuticals LLC. v. Novartis AG.

    PTAB Petition:  IPR2017-01063; filed March 10, 2017.

    Patent at Issue:  U.S. Patent No. 9,006,224 ("Neuroendocrine tumor treatment," issued May 1, 2012) claims a method for treating pancreatic neuroendocrine tumors, comprising administering to a human subject in need thereof a therapeutically effective amount of 40-O-(2-hydroxyethyl)-rapamycin as a monotherapy and wherein the tumors are advanced tumors after failure of cytotoxic chemotherapy.

    Petitioners Argentum Pharmaceuticals LLC; Intelligent Pharma Research LLC; APS GP LLC; APS GP Investors LLC; and KVK-Tech, Inc. are challenging the '224 patent on four grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, the '224 patent is involved in the following litigations:  Novartis Pharm. Corp. et al. v. Par Pharm., Inc., 1:14-cv-1289-RGA (D. Del.); Novartis Pharm. Corp. et al. v. Par Pharm., Inc., 1:14-cv-1494-RGA (D. Del.); Novartis Pharm. Corp. et al. v. Par Pharm., Inc., 1:15-cv-78-RGA (D. Del.); Novartis Pharm. Corp. et al. v. Par Pharm., Inc., 1:15-cv-475-RGA (D. Del.); Novartis Pharm. Corp. et al. v. Par Pharm., Inc., 1:15-cv-1050-RGA (D. Del.).  According to the petition, the '224 patent is involved in inter partes review Roxane Labs., Inc. v. Novartis AG, IPR2016-1461 (Roxane Laboratories, Inc.; filed 07/19/2016; institution denied 02/13/2017).


    Abiomed, Inc. v. Maquet Cardiovascular, LLC

    PTAB Petition:  IPR2017-01025; filed March 11, 2017.

    Patent at Issue:  U.S. Patent No. 7,022,100 ("Guidable intravascular blood pump and related methods," issued April 4, 2006) claims an intravascular blood pump system comprising an intravascular blood pump having a cannula coupled thereto, the intravascular blood pump including a rotor and a guide mechanism adapted to guide the intravascular blood pump and cannula to a predetermined location within the circulatory system of a patient.

    Petitioners Abiomed, Inc., Abiomed R&D, Inc., and Abiomed Europe GmbH are challenging the '100 patent on two grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, the '100 patent is the subject of a declaratory judgment action for non-infringement captioned Abiomed, Inc. v. Maquet Cardiovascular, LLC, 1-16-cv-10914 (MA.D.).  According to the petition, the Petitioners are concurrently filing inter partes reviews against two U.S. patents related to the '100 patent, U.S. Patent Nos. 8,888,728 (IPR2017-1026; Abiomed, Inc.; filed 03/11/2017; pending) and 9,327,068 (IPR2017-1028; Abiomed, Inc.; filed 03/11/2017; pending, and IPR2017-01029; Abiomed, Inc.; filed 03/11/2017; pending).


    Abiomed, Inc. v. Maquet Cardiovascular, LLC

    PTAB Petition:  IPR2017-01026; filed March 11, 2017.

    Patent at Issue:  U.S. Patent No. 8,888,728 ("Guidable intravascular blood pump and related methods," issued November 18, 2014) claims an intravascular blood pump system comprising a rotor having a rotor hub tapering in the distal direction, at least one blade extending radially outward from the rotor hub, the hub has a distal end extending distally beyond the most distal portion of the blade and a shroud within which the rotor is rotatably disposed; a cannula extending from the shroud and comprising an outer cannula surface, the outer cannula surface having a substantially circular cross-section along a portion of its length; a first lumen in fluid communication with the intravascular blood pump and operatively arranged to deliver purge fluid to the intravascular blood pump; and a guide mechanism configured as a second lumen having a proximal end and a distal end, the guide mechanism adapted to guide a distal portion of said intravascular blood pump system to a predetermined location within the circulatory system of a patient.

    Petitioners Abiomed, Inc., Abiomed R&D, Inc., and Abiomed Europe GmbH are challenging the '728 patent on three grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, the '728 patent is the subject of a declaratory judgment action for non-infringement captioned Abiomed, Inc. v. Maquet Cardiovascular, LLC, 1-16-cv-10914 (MA.D.).  According to the petition, the Petitioners are concurrently filing a second inter partes review against the '728 patent (IPR2017-1027; Abiomed, Inc.; filed 03/11/2017; pending) and inter partes reviews against two U.S. patents related to the '728 patent, U.S. Patent Nos. 7,022,100 (IPR2017-1025; Abiomed, Inc.; filed 03/11/2017; pending, and 9,327,068 IPR2017-1027; Abiomed, Inc.; filed 03/11/2017; pending).


    Abiomed, Inc. v. Maquet Cardiovascular, LLC

    PTAB Petition:  IPR2017-01027; filed March 11, 2017.

    Patent at Issue:  U.S. Patent No. 8,888,728 ("Guidable intravascular blood pump and related methods," issued November 18, 2014) claims an intravascular blood pump system comprising a rotor having a rotor hub tapering in the distal direction, at least one blade extending radially outward from the rotor hub, the hub has a distal end extending distally beyond the most distal portion of the blade and a shroud within which the rotor is rotatably disposed; a cannula extending from the shroud and comprising an outer cannula surface, the outer cannula surface having a substantially circular cross-section along a portion of its length; a first lumen in fluid communication with the intravascular blood pump and operatively arranged to deliver purge fluid to the intravascular blood pump; and a guide mechanism configured as a second lumen having a proximal end and a distal end, the guide mechanism adapted to guide a distal portion of said intravascular blood pump system to a predetermined location within the circulatory system of a patient.

    Petitioners Abiomed, Inc., Abiomed R&D, Inc., and Abiomed Europe GmbH are challenging the '728 patent on three grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, the '728 patent is the subject of a declaratory judgment action for non-infringement captioned Abiomed, Inc. v. Maquet Cardiovascular, LLC, 1-16-cv-10914 (MA.D.).  According to the petition, the Petitioners are concurrently filing a second inter partes review against the '728 patent (IPR2017-01026; Abiomed, Inc.; filed 03/11/2017; pending) and inter partes reviews against two U.S. patents related to the '728 patent, U.S. Patent Nos. 7,022,100 (IPR2017-01025; Abiomed, Inc.; filed 03/11/2017; pending) and 9,327,068 (IPR2017-01028; Abiomed, Inc.; filed 03/11/2017; pending, and IPR2017-01029; Abiomed, Inc.; filed 03/11/2017; pending).


    Abiomed, Inc. v. Maquet Cardiovascular, LLC

    PTAB Petition:  IPR2017-01028; filed March 11, 2017.

    Patent at Issue:  U.S. Patent No. 9,327,068 ("Guidable intravascular blood pump and related methods," issued May 3, 2016) claims method for perfusing a patient with an intravascular blood pump system, the intravascular blood pump system.

    Petitioners Abiomed, Inc., Abiomed R&D, Inc., and Abiomed Europe GmbH are challenging the '068 patent on three grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, the '068 patent is the subject of a declaratory judgment action for non-infringement captioned Abiomed, Inc. v. Maquet Cardiovascular, LLC, 1-16-cv-10914 (MA.D.).  According to the petition, the Petitioners are concurrently filing a second inter partes review against the '068 patent (IPR2017-1028; Abiomed, Inc.; filed 03/11/2017; pending) and inter partes reviews against two U.S. patents related to the '068 patent, U.S. Patent Nos. 7,022,100 (IPR2017-1025; Abiomed, Inc.; filed 03/11/2017; pending) and 8,888,728 (IPR2017-01026; Abiomed, Inc.; filed 03/11/2017; pending).


    Abiomed, Inc. v. Maquet Cardiovascular, LLC

    PTAB Petition:  IPR2017-01029; filed March 11, 2017.

    Patent at Issue:  U.S. Patent No. 9,327,068 ("Guidable intravascular blood pump and related methods," issued May 3, 2016) claims method for perfusing a patient with an intravascular blood pump system, the intravascular blood pump system.

    Petitioners Abiomed, Inc., Abiomed R&D, Inc., and Abiomed Europe GmbH are challenging the '068 patent on two grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

    Related Matters:  According to the petition, the '068 patent is the subject of a declaratory judgment action for non-infringement captioned Abiomed, Inc. v. Maquet Cardiovascular, LLC, 1-16-cv-10914 (MA.D.).  According to the petition, the Petitioners are concurrently filing a second inter partes review against the '068 patent (IPR2017-1028; Abiomed, Inc.; filed 03/11/2017; pending) and inter partes reviews against two U.S. patents related to the '068 patent, U.S. Patent Nos. 7,022,100 (IPR2017-1025; Abiomed, Inc.; filed 03/11/2017; pending) and 8,888,728 (IPR2017-01026; Abiomed, Inc.; filed 03/11/2017; pending).

  • EasyWeb Innovations, LLC v. Twitter, Inc. (Fed. Cir. 2017)

    Message Publishing Patents Found Invalid under 35 U.S.C. § 101

    By Joseph Herndon —

    In a recent decision by the U.S. Court of Appeals for the Federal Circuit, the Court held all asserted claims of five U.S. patents to be invalid under 35 U.S.C. § 101 because the claims recite patent-ineligible subject matter.

    TwitterEasyWeb sued Twitter for infringement of the following five patents directed to a message publishing system:  U.S. Patent Nos. 7,032,030; 7,596,606; 7,685,247; 7,689,658; and 7,698,372.  The patents are generally directed to allowing any person or organization to easily publish a message on the Internet.  According to the specification of the '247 patent, at the time of the invention (priority filing date of March 11, 1999), publishing a message on the Internet was a daunting task because of cost, limitations in existing software, and a lack of technical knowledge.  The patents sought to address this problem by inventing a message publishing system that accepts messages in multiple ways, such as by fax, telephone, or email, verifies the message was sent by an authorized sender, and converts and publishes the message on the Internet.

    Namely, the message is received and converted from a first format (e.g., fax) to a second format, with the second format preferably being one or more webpages.  The message is stored within an Internet web server, and is retrieved from the storage area when a request for the message has been received from a requester.  The message is then transmitted to the requester over the Internet.

    The parties agreed that claim 1 of the '247 patent is representative:

    1.  A message publishing system (MPS) operative to process a message from a sender in a first format, comprising:
        a central processor;
        at least one sender account;
        at least one storage area configured to store at least a first portion of the message; and
        software executing in the central processor to configure the processor so as to:
            identify the sender of the message as an authorized sender based on information associated with the message in     comparison to data in the sender account, wherein the identification is dependent upon the first format;
            convert at least a second portion of the message from the first format to a second format; and
            publish the converted second portion of the message so as to be viewable in the second format only if the sender has     been identified as an authorized sender.

    EasyWeb sued Twitter for patent infringement in the U.S. District Court for the Eastern District of New York.  At the District Court, Twitter moved for summary judgment of non-infringement and ineligibility under 35 U.S.C. § 101.  The District Court granted the motion, finding that the patents are directed towards ineligible subject matter, or in the alternative that Twitter did not infringe any of the patents.

    On appeal, the Federal Circuit followed the Supreme Court's two-step framework for determining patent-eligibility under § 101.  First, a determination is made as to whether the claims at issue are directed to a patent-ineligible concept.  Second, if the claims are directed to patent-ineligible subject matter, the court considers the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.

    Beginning with the first step, the Federal Circuit concluded that claim 1 is directed to an abstract idea.  The Federal Circuit summarily noted that claim 1 merely recites "familiar concepts of receiving, authenticating, and publishing data", and as explained in a number of prior cases, claims involving data collection, analysis, and publication are directed to an abstract idea.  The Federal Circuit referred to Elec. Power Grp. v. Alstom S.A. (Fed. Cir. 2016), which held that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent-ineligible concept."

    In addition, because Claim 1 simply recites use of generic computer technology to perform data collection, analysis, and publication rather than reciting an improvement to a particular computer technology, the Federal Circuit easily found claim 1 to be directed to the abstract idea of receiving, authenticating, and publishing data.

    Turning to the second step, the Federal Circuit found that claim 1 did not contain an inventive concept sufficient to transform the nature of the claim into a patent-eligible application.  Again, the Federal Circuit summarily stated that the "elements of claim 1 simply recite an abstract idea or an abstract idea executed using computer technology" with no explanation.

    EasyWeb argued that an inventive concept arises from the ordered combination of steps in claim 1, but the Federal Circuit disagreed.  The Federal Circuit stated that Claim 1 "recites the most basic of steps in data collection, analysis, and publication and they are recited in the ordinary order."  The Federal Circuit concluded by finding that "all the claims are directed to the abstract idea of receiving, authenticating, and publishing data, and fail to recite any inventive concepts sufficient to transform the abstract idea into a patent eligible invention."

    It's easy to understand the Federal Circuit's opinion with respect to the first and last functions in claim 1 (e.g., to identify the sender of the message and publish the converted second portion of the message), but the Federal Circuit did not comment at all on the middle step to "convert at least a second portion of the message from the first format to a second format."  At least in that step, some data processing occurs that is not encompassed by the alleged abstract idea of receiving, authenticating, and publishing data as characterized by the Court.  That is not to say that the broad feature of "converting data" from a first format to a second format is new in any way, but it at least recites more than found in the prior cases where claims were held to be abstract because the claims only recited "collecting information, analyzing it, and displaying certain results of the collection and analysis."  It would seem that converting data is distinguished over the more generic "analyzing" data.  Clearly, though, if claim 1 recited more details for how the conversion was performed, the claim would be stronger and more likely to withstand § 101 challenges.  But the fact that the Federal Circuit ignored this feature and summarily rejected all claims is disappointing.

    EasyWeb Innovations, LLC v. Twitter, Inc. (Fed. Cir. 2017)
    Nonprecedential disposition
    Panel:  Circuit Judges Lourie, Moore, and Hughes
    Opinion by Circuit Judge Hughes

  • AIPLA Proposes Legislative Changes to 35 U.S.C. § 101

    By Kevin E. Noonan —

    AIPLA #1Like the Intellectual Property Owners (see "What to Do about Section 101? IPO Provides Its Answer") and the IP Law Section of the American Bar Association (see "ABA IP Law Section Sends Section 101 Revision Proposal to USPTO Director Lee") have done earlier this year, the American Intellectual Property Lawyers Association (AIPLA) has announced its proposal to amend Section 101 of the Patent Act to adapt, revise, and correct how the law has been changed by a series of U.S. Supreme Court cases of recent vintage (and a certain degree of infamy).  The AIPLA's proposal is as follows:

    35 U.S.C. § 101—Inventions Patentable

    (a) Eligible Subject Matter.—Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain shall be entitled to a patent therefor, subject only to the conditions and requirements of set forth in this title.

    (b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

    (c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

    Like the earlier proposals, the AIPLA's proposed revision establishes an affirmative right ("shall be entitled to") rather than merely the possibility ("may obtain") to a patent should the statutory requirements be met; this may merely reflect the embattled state of patenting that members of the AIPLA perceive in the face of persistent criticism of patents from many sources.

    The second and new subparagraph (b) reflects the desire to cabin by statutory specificity what the implicit judicial exceptions involve, here either things that can be accomplished by solely mental steps or that are found in nature absent the "hand of man" (which, no doubt, can be supplied in ways that would vindicate Justice Breyer's apprehension about misapplication of the draftman's art).

    Finally, new subparagraph (c) is directed to an attempt to recreate the doctrinal wall between patent eligibility under Section 101 and patentability under the substantive statutory sections (§§ 102, 103, and 112).

    The AIPLA's proposal is embedded in an eighteen page "position paper" reviewing the historical and legislative provenance of patent eligibility and how the Supreme Court has "distorted" the inquiry (and its own precedent, e.g., Diamond v. Diehr) to impose its own views of what subject matter is beyond Congress's Article I power to grant a patent.  The document also sets forth evidence of the uncertainty that these decisions have engendered and how its proposal is intended to rectify the situation.  Specifically:

    The Legislative Proposal is intended to eliminate the current two-part test for eligibility.  It introduces an objective and evidence-based approach to the limited question of eligibility, and commits any policy concerns about overbreadth in patent claims to the conditions of patentability.  In particular, the Legislative Proposal recognizes that concerns for the existence of a so-called "inventive concept" were eliminated with the creation of the nonobviousness requirement in Section 103 by the 1952 Patent Act.  In sum, the Legislative Proposal is intended to provide a clear test that will result in appropriately broad eligibility and that will minimize the uncertainty and unpredictability discouraging investment in research and development.

    The proposal and supporting document is yet another example of dedicated patent professionals addressing what is widely viewed as an error in how patent eligibility is being applied in the USPTO and the courts (see Judge Linn's "concurrence" in Ariosa v. Sequenom and Judge Lourie's and Judge Dyk's (joined by Judge Moore) concurrences and Judge Newman's dissent in the Federal Circuit's denial of Sequenom's petition for rehearing en banc).  We will all have to see what good it does.