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  • USPTO Announces Changes to EFS-Web Payments for Deposit Accounts and EFTs

    By Donald Zuhn –-

    USPTO SealIn a Patent Alert email distributed earlier today, the U.S. Patent and Trademark Office announced that beginning on Monday, October 17, 2016, EFS-Web users who wish to use a deposit account or electronic funds transfer account (EFT) to pay fees will be required to use Financial Manager to store and access those payment methods.  The Office noted that as of October 17, deposit accounts and EFTs that are not stored in Financial Manager will no longer be viable payment options for users.

    Financial Manager allows users to store and manage different payment methods (e.g., credit or debit cards, deposit accounts, or EFTs) and generate transaction history and monthly statements.  Additional information regarding Financial Manager can be found here.

    In announcing the change, the Office also noted that beginning on Monday, September 19, 2016, deposit account customers who are not assigned the Fee Payer permission on a deposit account being used to pay fees will no longer see their name appearing on the list of authorized users.  Users who notice that their name is missing from the list of authorized users for a given deposit account are encouraged to contact their deposit account administrator to have their name added as a Fee Payer before the October 17 deadline.

    To help users with the transition, the Office has also made available an "Introduction to the New USPTO Payment Page".

    For additional information regarding this topic, please see:

    • "USPTO Sets New Deadline for Migration to Financial Manager," July 28, 2016
    • "USPTO Extends Deadline for Migration to Financial Manager," July 1, 2016
    • "Deadline Approaching to Migrate USPTO Deposit Accounts to Financial Manager," June 28, 2016

  • USPTO News Briefs

    By Donald Zuhn —

    USPTO SealUSPTO Announces Interim Authentication Method for EFS-Web and Private PAIR

    On September 13, the U.S. Patent and Trademark Office announced via a Patent Alert e-mail that a new authentication option for EFS-Web and Private PAIR users will be made available next month.  The interim authentication solution will provide a plug-in-free option for users to authenticate when using the EFS-Web or Private PAIR.  By reducing the dependency on the Java Applet plug-in, the interim authentication method will provide users with more browser options until the Office can implement a permanent solution.  EFS-Web and Private PAIR users who wish to authenticate with the new authentication option, which relies on Java Web Start technology, must have version 8 of the Java Runtime Environment (JRE) software installed.


    USPTO to Offer New PAIR Download Features

    Earlier this summer, the U.S. Patent and Trademark Office announced via a Patent Alert e-mail that new download features will be offered within Private PAIR under the Image File Wrapper (IFW) tab, the View Outgoing Correspondence Search, and View e-Office Action Notifications.  The new download features, which are part of the Office's eMod Project, will provide stakeholders with XML and DOCX download options.  Additional information regarding the eMod Project can be found here.


    USPTO Provides PAIR Access to Global Dossier

    In June, the U.S. Patent and Trademark Office announced via a Patents Alert e-mail that stakeholders can now access the Global Dossier through Public and Private PAIR via a Global Dossier hyperlink.  The Office noted that the hyperlink will only be available when viewing a publicly available utility application filed under 35 U.S.C. § 111(a) or a publicly available national stage application submitted under 35 U.S.C. § 371.  Additional information regarding the Global Dossier can be found here.


    USPTO Sends Reminder Regarding Corrected Web-ADS and Enhanced Initial Web-ADS

    Earlier this summer, the U.S. Patent and Trademark Office distributed a Patents Alert e-mail reminding stakeholders about the Corrected Web-ADS and Enhanced Initial Web-ADS features that were implemented in December 2015.  Both features are available via the EFS-Web.  The Office noted that since the features were implemented, more than 8,000 ADS submissions have been submitted using the Enhanced Web-ADS feature and more than 5,000 Corrected ADS submissions have been submitted using the Corrected/Updated Web-ADS feature.

    The Corrected Web-based Application Data Sheet (Corrected Web ADS) feature allows registered eFilers to submit a corrected/updated ADS pursuant to 37 C.F.R. § 1.76(c)(2), in which changes will be identified with underlining for insertions and strike-through for deletions.  Using this feature, an eFiler can readily generate and attach a corrected/updated ADS PDF to an EFS-Web submission.  A Quick Start Guide for this feature can be found here.

    The Enhanced Initial Web-based Application Data Sheet (Web ADS) feature provides eFilers with the option to import Inventor information, Domestic Benefit/National Stage data, and/or Foreign Priority data from one or more parent applications when completing ar Web ADS submission.  A Quick Start Guide for this feature can be found here.

  • McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016)

    By Michael Borella —

    Federal Circuit SealPatentee McRO sued a number of video game developers and publishers in the Central District of California and the District of Delaware for alleged infringement of U.S. Patent Nos. 6,307,576 and 6,611,278.  Several of the Delaware suits were transferred to the Central District of California, and the defendants filed a Rule 12(c) motion therein to invalidate the claims as allegedly being directed to ineligible subject matter under 35 U.S.C. § 101.  The combined cases from that court are the subject of this appeal.

    But this decision is notable not only for its outcome (which we will get to shortly), but also for possibly being the most anticipated Federal Circuit § 101 decision since Ultramercial v. Hulu back in November of 2014.  Oral arguments were held on December 11 of last year, and the lag time between then and now suggests that the panel (consisting of Judges Reyna, Taranto, and Stoll) either struggled to reach consensus, or took the time to write a carefully-worded opinion.

    Claim 1 of the '576 patent was deemed representative.  It recites:

    A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
        obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;
        obtaining a timed data file of phonemes having a plurality of sub-sequences;
        generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;
        generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and
        applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

    The claimed invention relates to generating automated lip-synchronization and associated facial expression for 3D animated characters.  The prior art generally encompassed a "morph target" approach, where the 3D character's facial orientation would be represented by a vector of values ("morph weights") associated with various vertices disposed across the character's face.  The facial orientation would change based on differences in vertex values from those assigned to the face at rest.  To animate the character's speech, for example, one would manually insert the appropriate morph weights at critical times (in "keyframes") in the associated recording, and a computer program would interpolate between the facial expressions to provide a visual impression of different sounds being uttered.  This process, however, was inefficient and tedious, since many morph targets would need to be manually set in order to make the animated facial expression accurately match the recording.  "For each keyframe, the artist would look at the screen and, relying on her judgment, manipulate the character model until it looked right—a visual and subjective process."

    McRO's contribution automates this process by feeding time-aligned phonetic transcripts into a computer, and setting rules for how to apply various morph targets to manipulate the 3D character's facial expressions based on this input.  According to the Court, "these rule sets aim to produce more realistic speech by taking into consideration the differences in mouth positions for similar phonemes based on context."  For instance, in the prior art, a computer would interpolate a continuous transition between two points defined by keyframes, but this transition might have an unrealistic quality.  The animator would then manually correct the problem by inserting a keyframe between the two points.  The invention, on the other hand, "uses rules to automatically set a keyframe at the correct point to depict more realistic speech, achieving results similar to those previously achieved manually by animators."

    As set forth by the Supreme Court in Alice Corp. v. CLS Bank, compliance with § 101 requires use of a two-prong test.  First, one must first determine whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception.  But generic computer implementation of an otherwise abstract process does not qualify as "significantly more."  A goal of this test is to prevent one from patenting one of the judicial exclusions, and thereby preempting others from using this basic scientific tool.

    When the District Court applied this test, it stated that "while the patents do not preempt the field of automatic lip synchronization for computer-generated 3D animation, they do preempt the field of such lip synchronization using a rules-based morph target approach" and that "novel portions of [the] invention are claimed too broadly."  Thus, in the District Court's view, the claims failed to meet the requirements of the § 101 inquiry.

    On review, the Federal Circuit briefly conducted claim construction, noting that "the claims are limited to rules that evaluate subsequences consisting of multiple sequential phonemes," as "[t]his limitation is apparent on the face of the claims."  Moving on to the substantive § 101 analysis, the Court reiterated that "claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter" under prong one, and "we look to both the claim as a whole and the individual claim elements" under prong two.

    Notably, the Court disagreed with the District Court's conclusion that the claims are "drawn to the [abstract] idea of automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation."  The Court criticized this characterization as oversimplifying and "failing to account for the specific requirements of the claims."  To that point, the Court pointed out that the claims "define a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence" and "require applying said first set of rules to each sub-sequence . . . of timed phonemes."  The Court implied that the District Court had improperly ignored these elements.

    The Court went on to state that "the claimed improvement here is allowing computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators."  Unlike the inventions in Parker v. Flook, Bilski v. Kappos, and Alice, the computer automation and the prior human-performed methods are different.  Particularly, the "computer automation is realized by improving the prior art through the use of rules, rather than artists, to set the morph weights and transitions between phonemes."  The Court clarified further, stating "processes that automate tasks that humans are capable of performing are patent eligible if properly claimed."

    Addressing the defendants' position that the claims "are abstract because they do not claim specific rules," the Court stated that claims to the genus of an invention (as opposed to a species thereof) are patentable so long as they do not improperly preempt a judicial exception to § 101.  Putting it more concretely, the Court contrasted a claim drafted to only a particular outcome rather than specific steps carried out to achieve that outcome.  "A patent is not good for an effect, or the result of a certain process because such patents would prohibit all other persons from making the same thing by any means whatsoever."  But "[a] patent may issue for the means or method of producing a certain result, or effect, and not for the result or effect produced."  Thus, the question was whether McRO's claims are focused on a specific method to improve animation technology, not just the result of a generic process operated by generic machinery.  To be eligible, such a specific method should not be mere automation of a known manual process.

    To answer, the Court noted that the "[d]efendants provided no evidence that the process previously used by animators is the same as the process required by the claims."  Particularly, the "animator's process was driven by subjective determinations rather than specific, limited mathematical rules."  The prior art activity of setting keyframes at the point that phonemes were pronounced was not "within the scope of the claims because it does not evaluate sub-sequences, generate transition parameters or apply transition parameters to create a final morph weight set."  As a result, claim 1 does not preempt "all processes for achieving automated lip-synchronization of 3-D characters."  For instance, "motion capture animation provides an alternative process for automatically animating lip synchronization and facial expressions."

    Digging further, the Court addressed the concern of "whether the claimed genus of rules preempts all techniques for automating 3-D animation that rely on rules."  But due to the fact that the claims require the rules to reflect "a relationship between subsequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing," such broad preemption is avoided.  Indeed, the Court pointed to academic literature indicating that other types of rules could be developed.  Thus, future discoveries in the field are not foreclosed.  The Court also noted that "[w]hile the result may not be tangible, there is nothing that requires a method be tied to a machine or transform an article to be patentable."

    As a consequence, claim 1 and the other claims under review were found to be non-abstract under prong one of Alice.  The Court did not have to address prong two to find the claims patent-eligible.

    This case provides ample fodder for rebutting § 101 challenges, and there are a handful of observations to be made:

    • Preemption played a large role in the Court's reasoning.  Here, it was a deciding factor in whether the invention was abstract vis-à-vis prong one.  The USPTO has downplayed preemption in its § 101 guidance, and has provided little advice to examiners on how to respond to non-preemption arguments.  Perhaps that will change?

    • Here, as well as in Enfish v. Microsoft, the Court has reiterated that the § 101 analysis must not be divorced from the specific language of the claims.  This is a promising turn of events, as doing so adds objectivity to the § 101 inquiry, and prevents claims from being viewed as abstract by ignoring critical details therein.

    • The open issue of whether an invention that automates a manual process is patent-eligible may have been answered.  In the past, the Court has addressed this concern in view of claims there were quite broad and vague (see, e.g., OIP Technologies v. Amazon.com), and has found such claims ineligible even if they render results more rapidly and accurately than those performed by humans.  Here, the Court clarifies that there is a difference between merely automating a known manual process and automating a process that is not known to have been previously performed manually.  The latter can be patent-eligible.  Thus, a critical eligibility distinction has been made between processes that have been performed manually and processes that could be performed manually.

    In any event, today has brought some extent of clarification to the § 101 morass.

    McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016)
    Panel:  Circuit Judges Reyna, Taranto, and Stoll
    Opinion by Circuit Judge Reyna

  • USPTO Issues Notice of Roundtable and Request for Comments on Importing Prior Art Automatically and Streamlining Patent Issuance

    By Donald Zuhn –-

    USPTO SealLast month, the U.S. Patent and Trademark Office published a notice in the Federal Register (81 Fed. Reg. 59197) requesting written comments regarding two issues:  (1) how the Office can better leverage other applications having the same or substantially the same disclosure as a U.S. application under examination to provide examiners with relevant information as early as possible, and (2) what information to include on the face of the patent now that processing and examination is conducted in an electronic environment.  The notice also indicates that Office will be holding a roundtable to address these issues from 1:00 to 4:00 pm (EDT) on September 28, 2016 in the Madison Auditorium at the USPTO Headquarters in Alexandria, VA.

    With respect to the first issue, the notice indicates that the Office has begun exploring how to best utilize available electronic resources to provide examiners with information — such as prior art and search reports — from an applicant's other applications as soon as possible in the examination process in order to increase patent examination quality and efficiency.  According to the notice, "other applications" would include, for example, domestic parent and counterpart foreign applications.  The notice states that automating the process "will reduce applicant's burden to provide this information to the USPTO."

    The notice explains that the Office's work sharing efforts have resulted in the development of additional sources of information from foreign counterpart applications that are likely to be highly relevant to the examination of corresponding U.S. applications.  One example of such a work sharing program is the Global Dossier, an initiative developed by the IP5 offices (USPTO, European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and State Intellectual Property Office of the People's Republic of China (SIPO)), which provides U.S. examiners and the public with access to the official file contents of counterpart foreign applications.  However, the notice expresses concern that "too many applications, like too many items of information, might present large amounts of information that has no relevance to the application being examined," suggesting that "[t]he right balance of the scope of applications and information therein is critical to ensure examiners are provided with the most relevant information without overburdening them with immaterial and marginally relevant information."  The notice also points out that while some applicants might prefer a fully automated system in which the Office monitors a set of applications that have been predefined by the Office, other applicants might prefer to define the set of applications themselves, and still other applicants might prefer to define both the set of applications and particular information to be imported from those applications.

    With respect to the second issue, the notice seeks to eliminate potentially unnecessary information from the front page of the patent (besides the specification and drawings required by statute).  The notice points out that any information that is eliminated from the face of the patent would still be accessible to the public via the Patent Application Information Retrieval (PAIR) system.

    The notice sets forth five questions to be addressed at the roundtable and by those submitting written comments.  Those questions are as follows:

    1. In balancing the goals of examination quality and efficiency, should the USPTO monitor other applications, besides domestic parent and counterpart foreign applications, for relevant information located therein for consideration in the instant U.S. application?  If so, which other applications should be monitored (e.g., siblings, applications involving the same or related technology, etc.)?

    2. What is the most convenient way to bring an application to the USPTO's attention that should be monitored for information during the examination of a U.S. application (e.g., automated system, applicant notifies the USPTO, etc.)?

    3. How should the USPTO determine which information from the monitored applications to provide examiners while ensuring they are not overburdened with immaterial and marginally relevant information?

    4. If the USPTO were to import information from applicant's other applications, how should the USPTO document the information imported into the image file wrapper of the instant U.S. application?  For example, should the record reflect which domestic parent or counterpart foreign application the information was imported from, the date that the information was imported, and whether the examiner considered the imported information?

    5. Taking into consideration the information that is publicly available in PAIR, what information should be part of a patent?  For example, should prior art references and classification information still be listed on the front page of a patent?

    Written comments regarding the issues and questions presented in the notice must be submitted by October 28, 2016.  Comments can be submitted by e-mail to PriorArtAccess@uspto.gov, or by regular mail addressed to:  Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Michael Neas, Deputy Director, International Patent Legal Administration.

    Registration information for those wishing to attend or present at the roundtable can be found in the notice.  Those wishing to attend the roundtable must register by September 21, 2016, and those wishing to present at the roundtable must register by September 14, 2016.  The roundtable will also be webcast; instructions for viewing the webcast can be found here.

  • News from Abroad: Canada’s Federal Court Questions No File Wrapper Estoppel on Claim Construction

    By Junyi Chen —

    Canadian FlagThe Supreme Court of Canada in Free World Trust v Électro Santé Inc, 2000 SCC 66 rejected the use of extrinsic documents such as file wrappers (patent prosecution histories) for claim construction, on the basis that allowing such evidence would undermine the public notice function of the claims and increase uncertainty.  Hence, there is no equivalent of U.S. file wrapper estoppel in Canada.

    Recently, in Pollard Banknote Limited v Scientific Games Products (Canada) ULC, 2016 FC 883, Justice Locke of the Federal Court questioned whether it was time to revisit the principle of no file wrapper estoppel for claim construction, as file wrappers, like claims, are now publicly available and hence give public notice of the contents of the prosecution history.  Nevertheless, Justice Locke re-affirmed that, at present, it is settled in Canada that file wrappers are irrelevant to claim construction and therefore, in the present case, the patentee (Scientific Games) was not estopped from presenting a claim construction that contradicted its previous submissions to the Canadian Patent Office during prosecution.  In obiter, Justice Locke noted that had this case been tried in the U.S. where the principles of file wrapper estoppel apply, Scientific Games would unlikely have been allowed to argue a claim construction that attempted to recapture grounds conceded during prosecution of the application to avoid prior art.

    Justice Locke found however that Scientific Games' Canadian Patent No. 2,752,551, relating to a two-dimensional authentication barcode hidden under a scratch-off area on print instant lottery tickets, was invalid for ambiguity and obviousness; in the alternative, Pollard did not infringe the patent.  This is the first time in forty years that a claim was held invalid for ambiguity in Canada.

    With respect to obviousness, Justice Locke held that a patent should not be granted to a skilled person simply making an obvious change to what was known in the art, even if that art would probably not have been located in a diligent search.  He noted that concerns regarding a diligent search may be more relevant where the obviousness allegation combines two references, neither of which is part of the common general knowledge.

    In light of Justice Locke's comments on revisiting the principle of no file wrapper estoppel, applicants would be advised to limit their representations and amendments before the Canadian Patent Office only to the extent necessary to overcome examiners' objections.  It would also be advisable for a party assessing the merits of a Canadian patent, to review the file wrapper for potentially problematic representations and amendments made during prosecution.

    Dr. Chen is an associate with Deeth Williams Wall.

  • Conference & CLE Calendar

    CalendarSeptember 11-13, 2016 - 44th Annual Meeting (Intellectual Property Owners Association) – New York, NY

    September 13, 2016 – Patent Quality Chat webinar on "Future Information Disclosure Practice in a Global Dossier Environment" (U.S. Patent and Trademark Office) – 12:00 to 1:00 pm (ET) on 

    September 14-15, 2016 - Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing (Practising Law Institute) – Chicago, IL

    September 15, 2016 – "On Sale and Public Use Bars to Patentability: Leveraging Recent Developments — Minimizing Risk of Patent Ineligibility or Invalidation" (Strafford) – 1:00 to 2:30 pm (EDT)

    September 20, 2016 – "The Shifting Landscape of Bio/Pharma Litigation: The Influence of PTAB Proceedings" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    September 20, 2016 – "Defending Patents in IPR Proceedings: Best Practices to Mitigate Risks of Claim Cancellation — Leveraging Preliminary Responses, Using Experts, Filing Motions to Amend and Substitute Claims, Evaluating Secondary Considerations" (Strafford) – 1:00 to 2:30 pm (EDT)

    September 21, 2016 – "Structuring Freedom-to-Operate Opinions: Reducing Risk of Patent Infringement — Combating Troubling FTO Results, Overcoming Potential Roadblocks, Addressing Impact of Post-Grant Process on FTO Opinions" (Strafford) – 1:00 to 2:30 pm (EDT)

    September 22, 2016 – Supreme Court IP Review (IIT Chicago-Kent College of Law) – Chicago, IL

    September 22-23, 2016 - Seminar on European Patent Law (Grünecker) – Munich, Germany

    September 23, 2016 - Current State of the Law under 35 U.S.C. 101? & Use of Fact and Expert Witnesses at the PTAB: Costs, Strategies, and Pitfalls (Patent Litigation Committee and Patent Trial and Appeal Board/Trademark Trial and Appeal Board Committees of the Federal Circuit Bar Association (FCBA) & Virginia Bar Association) – 12:00 to 2:30 pm (ET)

    September 29, 2016 - IP & Diagnostics Symposium (Biotechnology Innovation Organization) – Alexandria, VA

    September 29, 2016 – "Patent Inventorship: Best Practices for Determination and Correction — Distinguishing Between Inventor and Contributor; Navigating Joint Inventorship, Disclosure of Ownership, and Real Party in Interest" (Strafford)

    September 29, 2016 – "Trade Secrets: Strategies for Understanding & Litigating a DTSA Cause of Action" (Wolters Kluwer) – 12:00 pm (ET)

    September 29-30, 2016 – Advanced Patent Law Seminar (Chisum Patent Academy) – Washington, DC

    October 3-4, 2016 – Advanced Patent Law Seminar (Chisum Patent Academy) – Washington, DC

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

  • Webinar on Determining and Correcting Patent Inventorship

    Strafford #1Strafford will be offering a webinar/teleconference entitled "Patent Inventorship: Best Practices for Determination and Correction — Distinguishing Between Inventor and Contributor; Navigating Joint Inventorship, Disclosure of Ownership, and Real Party in Interest" on September 29, 2016 from 1:00 to 2:30 pm (EDT).  Jill K. MacAlpine, Ph.D.,and Amanda K. Murphy, Ph.D. of Finnegan Henderson Farabow Garrett & Dunner will provide guidance for patent counsel on identifying and determining inventorship, offer best practices for correcting errors regarding inventorship, offer perspectives gained from working with the AIA since it was passed, and outline lessons from recent court decisions.  The webinar will review the following issues:

    • What key information does counsel need to determine inventorship?
    • What are the steps for counsel when inventorship must be corrected?
    • What is the AIA's impact on an inventorship determination?

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

  • Webinar on Defend Trade Secrets Act

    Wolters KluwerWolters Kluwer and Managing IP will be offering a free webinar on "Trade Secrets: Strategies for Understanding & Litigating a DTSA Cause of Action," on September 29, 2016 at 12:00 pm (ET).  R. Mark Halligan of FisherBroyles, Mark L. Krotoski of Morgan Lewis & Bockius, Linda K. Stevens of Schiff Hardin, and Peter J. Toren of Weisbrod, Matteis & Copley will provide an in-depth discussion and update on the federal Defend Trade Secrets Act of 2016, and review the key provisions of the DTSA and the nexus to the Uniform Trade Secrets Act (UTSA) and the Economic Espionage Act of 1996 (EEA).

    Those interested in registering for the webinar can do so here.

  • Supreme Court IP Review

    Chicago-Kent College of LawThe IIT Chicago-Kent College of Law will be holding a Supreme Court IP Review conference on September 22, 2016 from 8:30 am to 5:00 pm (Central) at IIT Chicago-Kent College of Law in Chicago, IL.  The conference will provide intellectual property practitioners, jurists, legal academics, and law students with a review of IP cases from the U.S. Supreme Court's previous Term, a preview of cases on the docket for the upcoming Term, and a discussion of cert. petitions to watch.  Among the sessions being offered at the conference are:

    • Patent I Panel — Stryker Corp. v. Zimmer, Inc. and Halo Electronics, Inc. v. Pulse Electronics, Inc.

    • Patent II Panel — Cuozzo Speed Technologies, LLC. v. Lee

    • The Supreme Court IP Review Address: "Some Thoughts on the Relationship Between the Supreme Court and the Federal Circuit" – presentation by the Honorable Timothy B. Dyk, Circuit Judge, U.S. Court of Appeals for the Federal Circuit

    • Remembering Justice Scalia in IP Cases

    • Supreme Court Analytics on the Past Term

    • Preview of the Upcoming Term: IP cert. grants and cert. petitions to watch

    A complete agenda for the conference, including a list of sessions and speakers can be found here.

    The registration fee for the program is $35 (general admission) and $15 (outside academics).  There is no fee for Chicago-Kent faculty, current Chicago-Kent students, and current students of other law schools.  Those interested in registering for event can do so here.

  • UCB, Inc. v. Yeda Research and Development Co. (Fed. Cir. 2016)

    By Donald Zuhn —

    UCBToday, in UCB, Inc. v. Yeda Research and Development Co., the Federal Circuit affirmed the determination by the District Court for the Eastern District of Virginia that UCB's Cimzia® brand antibody does not infringe Yeda's U.S. Patent No. 6,090,923.  In affirming the District Court's grant of summary judgment of non-infringement, the Federal Circuit concluded that Yeda was estopped from including chimeric and humanized antibodies within the scope of the monoclonal antibodies claimed in the '923 patent.

    The '923 patent is directed to a monoclonal antibody that binds a defined human cytotoxin.  Claim 1 is representative:

    1.  A monoclonal antibody which specifically binds a human cytotoxin having a molecular weight of about 17,500 as determined by polyacrylamide gel electrophoresis, said cytotoxin being obtainable from stimulated human monocytes, said cytotoxin being further characterized by exhibiting a cytotoxic effect on cycloheximide-sensitized SV-80 cells and by being obtainable in a state of enhanced purity by adsorption of the cytotoxin from an impure preparation onto controlled pore glass beads, and subsequent desorption of the cytotoxin in a state of enhanced purity.

    UCB filed suit against Yeda, seeking a declaration that its Cimzia® brand antibody does not infringe the '923 patent and a declaration that the '923 patent is invalid.  Yeda counterclaimed for infringement.  In support of its claim of infringement, Yeda argued that the claims of the '923 priority application should be construed to cover chimeric antibodies since chimeric monoclonal antibodies were known at the time the '923 priority application was filed.  UCB, however, argued that the prosecution history of the '923 patent prohibited coverage of chimeric antibodies.

    YedaDuring prosecution of the '923 patent, Yeda had argued that the term "monoclonal antibody" should encompass chimeric monoclonal antibodies, stating that "[w]e do not believe that the term necessitates that the monoclonal antibody be produced by the original hybridoma cell; the term should encompass chimeric monoclonal antibodies produced by a genetically engineered cell line," and noting that "Applicants are particularly interested in protecting chimeric forms of their anti-cytotoxin mouse monoclonal antibodies."  In support of its argument, Yeda filed a Declaration from Dr. Hartmut Engelmann, in which Dr. Engelmann cited two references that preceded the effective filing date of the '923 priority application and described mouse-human chimeric antibodies.  Yeda also presented new claims 45-48, which were directed to "rat, hamster and human antibodies and chimeras thereof" and to "chimeras of" mouse monoclonal antibodies.  The Examiner rejected the new claims for adding new matter, and Yeda cancelled all of the claims reciting chimeric antibodies.  Claim 41, which issued as claim 1 in the '923 patent, did not mention chimeric antibodies and had not been amended during prosecution to recite chimeric antibodies.

    At trial, the District Court construed "monoclonal antibody," as used in the claims of the '923 patent, to mean "a homogenous population of a single type of antibody produced via hybridoma and not including chimeric or humanized antibodies."  In view of this construction, the District Court granted summary judgment of non-infringement to UCB, determining that the prosecution history of the '923 patent prohibited construction of claim 1 to cover humanized and mouse-human chimeric antibodies.

    On appeal, Yeda argued that claim 1 had never been rejected on the ground of new matter, and that only the specific species claims (i.e., claims 45-48) had been rejected by the Examiner for containing new matter.  Yeda also argued that claim 1 does not recite any particular monoclonal antibody or species of chimera, and that the claim should not be limited to the examples in the specification.  While acknowledging that "Yeda is correct in that generic terms in claims are construed in light of that which is already known," the Federal Circuit noted that "the content of the specification and actions and arguments during prosecution must also be considered, in defining the scope of a generic term in a claim," and cited Advance Transformer Co. v. Levinson, 837 F.2d 1081, 1083 (Fed. Cir. 1988), for the proposition that "[p]ositions taken in order to obtain allowance of an applicant's claims are pertinent to an understanding and interpretation of the claims that are granted by the PTO . . . and may work an estoppel as against a subsequent different or broader interpretation."  The Court explained that (citations omitted):

    During prosecution, Yeda submitted new claims specific to "rat, hamster and human antibodies and chimeras thereof" as well as claims specifically encompassing "chimeras of" mouse monoclonal antibodies and "nonmurine" monoclonal antibodies.  Yeda argued that its invention is not limited to murine antibodies to human cytotoxin, and "should encompass chimeric monoclonal antibodies produced by a genetically engineered cell line."  The Examiner rejected the proposed claims on the ground of new matter not supported in the specification.  Yeda then withdrew the proposed specific claims, and the application was passed to issuance.  The district court held that Yeda cannot now obtain a claim construction that recovers claim scope that was yielded in order to obtain issuance of the patent, and construed the claims as excluding chimeric and humanized antibodies.

    In response to Yeda's argument that there could be no prosecution estoppel with respect to the scope of claim 1 absent a narrowing amendment to the claim 1, the Court noted that this "is not a correct general principle," stating that "[a]lthough each claim in a patent warrants independent consideration in light of its particular facts and history, the general rule is that a patent applicant cannot later obtain scope that was requested during prosecution, rejected by the Examiner, and then withdrawn by the applicant."  The Federal Circuit determined that "[s]uch estoppel was reasonably applied to claim 1 by the district court, although claim 1 had not been amended," and therefore affirmed the District Court's holding that Yeda was estopped from including chimeric and humanized antibodies within the scope of the monoclonal antibodies claimed in the '923 patent.

    UCB, Inc. v. Yeda Research and Development Co. (Fed. Cir. 2016)
    Panel: Circuit Judges Newman, Lourie, and Chen
    Opinion by Circuit Judge Newman