Patent Docs

IPO Responds to USPTO Call for Case Study Topics

March 15, 2016

By Donald Zuhn —

In December, the U.S. Patent and Trademark Office invited stakeholders to submit patent quality-related topics that they believe should be the subject of a case study as part of a new Enhanced Patent Quality Initiative pilot program (see "USPTO Seeks Topics for Quality Case Study Pilot Program"). The Office noted that it regularly performs case studies to investigate specific quality-related issues and individual examiner work products, and that such case studies allow the Office to investigate how a particular issue is being treated or addressed across hundreds or thousands of applications, and where appropriate, to take action to remediate quality issues or to formulate best practices to further enhance quality.

Last month, the Intellectual Property Owners Association (IPO) accepted the Office's invitation by submitting five suggested topics that the IPO thought should be the subject of a case study. The five topics proposed by the IPO were:

1. Markush Grouping Rejections –- the IPO proposes that the Office study whether rejections made under the "judicially approved improper Markush grouping doctrine" are consistent with the treatment of Markush claims as guided by the case law, Office policy, and the MPEP. The IPO contends that a significant number of rejections for improper Markush groupings have been issued since 2011, when the Office issued supplemental examination guidelines and further guidance was provided at a Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting. The IPO suggests that the study focus on improper Markush group rejections as opposed to "garden variety" Markush rejections (e.g., minor formatting issues such as use of "consisting of" versus "comprising" or use of "and" versus "or"), as well as compare rejections issued for Technology Center 1600 (biotech & organic chemistry) and TC1700 (chemical and materials). The IPO requests that the Office examine whether any claim rejections made under the "judicially approved improper Markush grouping doctrine" are proper, because the current version of the MPEP does not expressly authorize rejections made on this basis.

2. Restriction Requirement vs. Unity of Invention –- the IPO also proposes that the Office study restriction practice in U.S. national stage applications and determine how frequently U.S. examiners find lack of unity when the PCT examiner did not, and how frequently U.S. examiners issue a restriction requirement that is significantly different from any lack of unity finding by the PCT examiner. The IPO also requests that the Office analyze whether in such cases, the U.S. examiner's different restriction requirement was proper under the unity of invention rules.

3. Helping Users Evaluate Usefulness of Patent Prosecution Highway Based on Differing Patentability Determinations in U.S. vs. Foreign Patent Applications –- the IPO also proposes that the Office study applications being examined under the Patent Prosecution Highway (PPH) to determine how frequently U.S. examiners reject claims over prior art that was considered in the foreign patent application on which the PPH request was based, and examine the bases for the different patentability determinations. The IPO also requests that in cases where differences are detected, the Office should determine whether the prior art rejection in the U.S. case was proper under U.S. law, and if so, whether the differences in treatment between the U.S. and foreign applications were due to:

(i) a "broadest reasonable interpretation" of the claim that was not applied in the foreign application; (ii) a different understanding of the claimed invention; (iii) a different understanding of the prior art; (iv) a difference between obviousness under U.S. law and the standard applied by the foreign patent office (e.g., inventive step); or (v) no apparent reason.

The IPO also suggests that the Office analyze differences across technology centers, and report the results by technology center.

4. Comparing Office Actions Before and After RCE –- the IPO also proposes that the Office study Office actions before and after an RCE has been filed to determine whether after final practice can be further improved. The IPO suggests that the Office conduct the study by determining whether an applicant filed an amendment in response to a final Office action, checking for the mailing of an advisory action refusing entry of the after final amendment, and then where an RCE was subsequently filed to have the identical claim amendment considered, comparing the first Office action after the RCE was filed with the final Office action. According to the IPO, the study should focus on distinguishing cases in which an examiner performed additional searching from those in which the examiner merely reissued the same Office action without any substantive changes.

5. Correlating Appeal Conference Data with Final Rejection Practice and PTAB Outcomes –- the IPO also proposes that the Office study pre-appeal brief conference data and compare that data with final rejections and PTAB outcomes. The IPO notes that the Office could conduct the study by reviewing appeal conference outcomes and tracking cases that are reopened or allowed at that stage to determine whether any particular art units or examiners have a disproportionate number of cases in those categories. According to the IPO, cases that are reopened or allowed at the appeal conference stage are an indicator that the final rejection was improper.
E-Loan, Inc. v. IMX, Inc. (PTAB 2016)

March 14, 2016

Typical "Business Method Patent" Struck Down by PTAB using CBM Review

By Joseph Herndon —

On February 16, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a final written decision in the Covered Business Method (CBM) patent review between E-Loan, Inc. and IMX, Inc. in which all challenged claims were found to be drawn to a patent ineligible abstract idea.

E-Loan filed a Petition seeking CBM review of U.S. Patent No. 5,995,947, which describes a method and system for making loans, such as mortgages. Figure 1, reproduced below, shows that brokers use broker stations 120 to transmit loan profiles to a transaction server 110, thereby entering those loan profiles into system 100 for processing, to review the status of loan profiles as they are processed by system 100, to receive and review bids by lenders on loan profiles, and to accept or decline bids. Lenders use lender stations 130 to search database 111 for desired types of loans, to sort selected loans by particular desired criteria, bid on loan applications, and to receive notice when their bids are accepted. The transaction server 110 enters loan profiles into trading system database 111 in response to requests from broker stations 120, searches the trading system database in response to requests from lender stations 130, and modifies trading system database 111 in response to changes in status of loan profiles stored therein. The transaction server 110, broker station 120, and lending station 130 all comprise general purpose processors.

Claims 7, 8, 26, and 27 were challenged, and claims 1, 7, and 8 are illustrative and reproduced below.

1. A method for processing loan applications, said method including the steps of maintaining a database of pending loan applications and their statuses at a database server, wherein each party to a loan can search and modify that database consistent with their role in the transaction by requests to said server from a client device identified with their role.

7. A method as in claim 1, wherein
said roles include a lender and said client device includes a lender station associated with at least one said lender; and
said lender can search the database for particular desired types of loans, and can bid on loan applications.

8. A method as in claim 7, wherein said lender is notified when its bid is accepted.

CBM Patent?

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

To determine whether a patent is eligible for a covered business method patent review, the focus is on the claims. A patent need have only one claim directed to a covered business method to be eligible for review.

1. Financial Product or Service

The PTAB found that claims 1 and 7 meet the first part of the covered business method requirement because they cover a method of processing loan applications and data processing used in the practice, administration, or management of a financial product or service. Loans are clearly financial products because they are agreements between two parties stipulating the movement of money or other consideration.

2. Technological Invention Exception

The definition of a "covered business method patent" excludes patents for "technological inventions." When determining whether a patent is for a technological invention, the PTAB considers whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

The PTAB noted that the technological invention exception does not result from (a) mere recitation of known technologies, (b) reciting the use of known prior art technology to accomplish a process or method, or (c) combining prior art structures to achieve the normal, expected, or predictable result of that combination.

E-Loan contended that the challenged claims solve a commercial or business problem of making loan processing less expensive, rather than a technical problem and do so with known technologies. The PTAB noted that the purpose of the '947 patent was to eliminate the paper-intensive process through automation to provide widespread dissemination of loan applications and lending program information for automatic comparison in real time. Such automation using known computer technologies does not result in a technical solution to a technical problem.

Further, the challenged claims recite the use of known computer hardware and software technologies such as a "database," "database server," "transaction server," and "client device/lender station" to accomplish loan processing.

IMX did not oppose E-Loan's contentions that the claims lack a technological invention. Thus, claims 1 and 7 do not recite a technological invention, and therefore, the '947 patent is eligible for covered business method patent review.

3. Constitutionality of CBM Review

IMX challenged the CBM as being unconstitutional, and argued that issued patents are no longer under the jurisdiction of the U.S. Patent and Trademark Office ("USPTO") and may be set aside, annulled, or corrected only by the courts of the United States, not by the USPTO or PTAB. IMX argued that post-grant proceedings to invalidate patents deprive patent owners of due process and invade the province of Article III courts.

The PTAB noted the recent decision of the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091, 2015 WL 7755665 (Fed. Cir. Dec. 2, 2015), which held that Congress can grant authority to the USPTO to correct or cancel issued patents. Congress has done so by creating inter partes reexamination proceedings, ex parte reexamination proceedings, inter partes review, post-grant review, and covered business method patent review.

CBM Review

The sole ground of unpatentability asserted by E-Loan was under 35 U.S.C. § 101.

The PTAB followed the framework from the Alice decision for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, it must be determined whether the claims at issue are directed to a patent-ineligible concept. Second, the elements of each claim must be considered both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.

1. Abstract Idea

E-Loan argued that the challenged claims are directed to the abstract idea of managing a loan application, and that all limitations of the challenged claims can be and have been performed for years by humans using pen and paper, e.g., by placing a stack of loan applications in a drawer, searching and modifying the applications, sorting loan applications by lenders who bid on applications, and providing notice of bids. E-Loan asserted that the '947 patent describes this conventional loan process performed by hand and describes the invention as automating this process with computers.

The PTAB agreed with E-Loan and found that each of the challenged claims is directed to a fundamental economic or longstanding commercial practice of loan processing. The '947 patent describes the conventional loan processes as involving large amounts of information that must be collected, compared, evaluated, and disseminated among parties to a transaction so lenders can offer loans at competitive rates. Claim 1 automates this known method and system of processing loan applications by maintaining a database of pending loan applications and their statuses at a database server where each party to a loan can search and modify that database consistent with their role in the transaction by requests to the server from client devices.

The Specification itself discloses the invention as an advantageous method and system for automating loan applications.

2. Significantly More?

IMX argued that an online auction platform for brokers to solicit lender bids was revolutionary, and that the challenged claims do not preempt the concept of managing a loan process. Further, IMX contended that the Petition does not allege that "searching the database for particular desired types of loans" is a purely conventional function.

The PTAB noted that mere existence of a non-preempted use of an abstract idea does not prove that a claim recites patent-eligible subject matter, and that searching a database of pending loans and bidding on loan applications is conventional. Further, claiming a database server of pending loan applications that parties can search and modify, a transaction server, and a lender station does not transform this abstract idea into patent-eligible subject matter. The claimed computers merely automate conventional loan processes performed by hand using pen and paper forms, as discussed above.

Moreover, IMX's arguments that the challenged claims reverse the rate sheet technique of conventional loans by allowing brokers to solicit lenders to bid for borrowers' mortgages using the online auction platform was not found persuasive. In conventional processes, lenders bid on loan applications they received from brokers, and the challenged claims recite lenders bidding on loan applications.

Merely combining an abstract idea like a reverse auction with conventional loan processing does not create an inventive step by itself.

The PTAB also noted that claim 19's responsiveness in "real time" adds nothing significant. It is an attempt to capture the general nature of computer processing. The '947 patent discloses "real-time" processing involving receipt of "real time quotes for 10 year Treasury notes, 30 year Treasury bonds, DJIA (Dow Jones Industrial Average), and NSDQ (National Securities Dealers Quotes)." Claim 19 recites only that transaction server responds in real time to requests to search and modify the database. The challenged claims do not recite any "real-time trading" at the database.

Thus, the PTAB concluded that the challenged claims do not recite an inventive concept, and therefore, the claims are drawn to a patent ineligible abstract idea.

The PTAB noted that the challenged claims did not recite a method or system where brokers solicit bids from multiple lenders, but rather that a lender at a lender station "can search" a database of loan applications and bids on loan applications (claim 7). Had the claims recited more details distinguishable from conventional practices of lenders receiving loan applications from a broker, evaluating the applications, and responding to brokers with an offer of a loan, then the claims may have had a chance to survive the section 101 challenge.

This patent is representative of typical "business method" patents that were granted by the USPTO, say between 2000-2010. During that time period, as a patent applicant, you could expect to receive a patent on such arguably "new" business method services, or financial services, as automated by computers/Internet that provided additional functionality. Following the AIA legislation, these types of patents are all but dead, or at least subject to a high risk of being found invalid under the CBM review put in place for the purpose of killing these patents.

E-Loan, Inc. v. IMX, Inc. (PTAB 2016)
Before James P. Calve, Matthew R. Clements, and Brian P. Murphy, Administrative Patent Judges.
Final Written Decision by James P. Calve
Court Report

March 13, 2016

By Sherri Oslick —

About Court Report: Each week we will report briefly on recently filed biotech and pharma cases.

Unimed Pharmaceuticals LLC et al. v. Lupin Atlantis Holdings SA et al.
1:15-cv-00904; filed October 9, 2015 in the District Court of Delaware

• Plaintiffs: Unimed Pharmaceuticals LLC; Besins Healthcare Inc.; Besins Healthcare Luxenbourg SARL
• Defendants: Lupin Atlantis Holdings SA; Lupin Ltd.; Lupin Pharmaceuticals, Inc.

Infringement of U.S. Patent Nos. 6,503,894 ("Pharmaceutical Composition and Method for Treating Hypogonadism," issued January 7, 2003), 8,466,136 ("Testosterone Gel and Method of Use," issued June 18, 2013), 8,466,137 (same title, issued June 18, 2013), 8,466,138 (same title, issued June 18, 2013), 8,486,925 (same title, issued July 16, 2013), 8,729,057 (same title, issued May 20, 2014), 8,741,881 (same title, issued June 3, 2014), 8,754,070 (same title, issued June 17, 2014), and 8,759,329 (same title, issued June 24, 2014), 9,125,816 ("Pharmaceutical Composition and Method for Treating Hypogonadism," issued September 8, 2015), 9,132,089 (same title, issued September 15, 2015) following a Paragraph IV certification as part of Lupin's filing of an ANDA to manufacture a generic version of AbbVie's AndroGel® (testosterone gel, used to treat conditions associated with a deficiency or absence of endogenous testosterone). View the complaint here.

Bayer Intellectual Property GmbH et al. v. Aurobindo Pharma Ltd. et al.
1:15-cv-00902; filed October 9, 2015 in the District Court of Delaware

• Plaintiffs: Bayer Intellectual Property GMBH; Bayer Pharma AG; Janssen Pharmaceuticals Inc.
• Defendants: Aurobindo Pharma Ltd.; Aurobindo Pharma USA Inc.; Breckenridge Pharmaceutical Inc.; Micro Labs Ltd.; Micro Labs USA Inc.; Mylan Pharmaceuticals Inc.; Mylan Inc.; Prinston Pharmaceutical Inc.; Sigmapharm Laboratories LLC; Torrent Pharmaceuticals Limited; Torrent Pharma Inc.; InvaGen Pharmaceuticals Inc.

Infringement of U.S. Patent Nos. 7,157,456 ("Substituted Oxazolidinones and Their Use in the Field of Blood Coagulation," issued January 2, 2007), 7,585,860 (same title, issued September 8, 2009), and 7,592,339 (same title, issued September 22, 2009) following a Paragraph IV certification as part of defendants' filing of an ANDA to manufacture a generic version of Bayer's Xarelto® (rivaroxaban, used to reduce the risk of stroke and systemic embolism in patients with nonvalvular atrial fibrillation, for the treatment of deep vein thrombosis (DVT), pulmonary embolism (PE), and for the reduction in the risk of recurrence of DVT and of PE, and for the prophylaxis of DVT, which may lead to PE in patients undergoing knee or hip replacement surgery). View the complaint here.

AstraZeneca AB v. Teva Pharmaceuticals USA, Inc.
1:15-cv-00909; filed October 9, 2015 in the District Court of Delaware

Infringement of U.S. Patent No. 8,628,799 ("Coated Tablet Formulation and Method," issued January 14, 2014) following a Paragraph IV certification as part of Teva's filing of an ANDA to manufacture a generic version of AstraZeneca's Kombiglyze XR (saxagliptin and metformin hydrochloride, extended-release, used as an adjunct to diet and exercise to improve glycemic control in adults with type 2 diabetes mellitus). View the complaint here.

Novartis Pharmaceuticals Corp. et al. v. Roxane Laboratories, Inc. et al.
1:15-cv-00908; filed October 9, 2015 in the District Court of Delaware et al.

• Plaintiffs: Novartis Pharmaceuticals Corp.; Novartis AG
• Defendants: Roxane Laboratories, Inc.; Boehringer Ingelheim Roxane, Inc.

Infringement of U.S. Patent Nos. 6,894,051 ("Crystal Modification of a N-phenyl-2-pyrimidineamine Derivative, Processes for Its Manufacture and Its Use," issued May 17, 2005) and RE43,932 ("Crystal Modification of a N-phenyl-2-pyrimidineamine Derivative, Processes for Its Manufacture and Its Use," issued January 15, 2013) following a Paragraph IV certification as part of Roxane's filing of an ANDA to manufacture a generic version of Novartis' Gleevec® (imatinib mesylate, used for various indications, including treatment of myeloid leukemia). View the complaint here.

Forest Laboratories LLC et al. v. Accord Healthcare Inc. et al.
1:15-cv-00903; filed October 9, 2015 in the District Court of Delaware

• Plaintiffs: Forest Laboratories LLC; Forest Laboratories Holdings Ltd.; Adamas Pharmaceuticals Inc.
• Defendants: Accord Healthcare Inc.; Intas Pharmaceuticals Ltd.

Infringement of U.S. Patent Nos. 8,039,009 ("Modified Release Formulations of Memantine Oral dosage Forms," issued October 18, 2011), 8,168,209 ("Method and Composition for Administering an NMDA Receptor Antagonist to a Subject," issued May 1, 2012), 8,173,708 (same title, issued May 8, 2012), 8,283,379 ("Method and Compositions for the Treatment of CNS-Related Conditions," issued October 9, 2012), 8,329,752 ("Composition for Administering an NMDA Receptor Antagonist to a Subject," issued December 11, 2012), 8,362,085 ("Method for Administering an NMDA Receptor Antagonist to a Subject," issued January 29, 2013), and 8,598,233 ("Method for Administering an NMDA Receptor Antagonist To A Subject," issued December 3, 2013) following a Paragraph IV certification as part of Accord's filing of an ANDA to manufacture a generic version of Forest's Namenda XR® (memantine hydrochloride, used for the treatment of moderate to severe dementia of the Alzheimer's type). View the complaint here.

AstraZeneca AB et al. v. Zydus Pharmaceuticals (USA) Inc. et al.
3:15-cv-07415; filed October 9, 2015 in the District Court of New Jersey

• Plaintiffs: AstraZeneca AB; Aktiebolaget Hassle; AstraZeneca LP; Zeneca Inc.
• Defendants: Zydus Pharmaceuticals (USA) Inc.; Cadila Healthcare Ltd.

Infringement of U.S. Patent Nos. 6,369,085 ("Form of S-omeprazole," issued April 9, 2002), 7,411,070 (same title, issued August 12, 2008), and 8,466,175 (same title, issued June 18, 2013) following a Paragraph IV certification as part of Zydus' filing of an ANDA to manufacture a generic version of AstraZeneca's Nexium® (esomeprazole magnesium, used for the treatment of gastroesophageal reflux disease). View the complaint here.

Salix Pharmaceuticals, Inc et al. v. Taro Pharmaceutical U.S.A., Inc. et al.
1:15-cv-07980; filed October 9, 2015 in the District Court of New York

• Plaintiffs: Salix Pharmaceuticals, Inc; Norgine B.V.
• Defendants: Taro Pharmaceutical U.S.A., Inc.; Taro Pharmaceuticals Industries Ltd.

Infringement of U.S. Patent Nos. 7,169,381 ("Colon Cleansing Compositions and Methods," issued January 30, 2007) and 7,658,914 ("Colon Cleansing Compositions," issued February 9, 2010) following a paragraph IV certification as part of Taro's filing of an ANDA to manufacture a generic version of Salix's MoviPrep® (PEG 3350, sodium sulfate, sodium chloride, potassium chloride, sodium ascorbate and ascorbic acid oral solution, used for cleansing of the colon as a preparation for colonoscopy). View the complaint here. [NB: The complaint was later voluntarily dismissed.]

Flamel Ireland, Ltd. v. Mylan Pharmaceuticals Inc. et al.
1:15-cv-00178; filed October 9, 2015 in the Northern District of West Virginia

• Plaintiff: Flamel Ireland, Ltd.
• Defendants: Mylan Pharmaceuticals Inc.; Mylan, Inc.; SmithKline Beecham (Cork) Ltd.

Infringement of U.S. Patent No. 8,101,209 ("Microparticulate Oral Galenical Form for the Delayed and Controlled Release of Pharmaceutical Active Principles," issued January 24, 2012) following a paragraph IV certification as part of Mylan's filing of an ANDA to manufacture a generic version of GSK's Coreg CR® (carvedilol phosphate extended release capsules , used to treat congestive heart failure). View the complaint here.
Conference & CLE Calendar

March 13, 2016

March 15, 2016 – Patent Bar & Office Dialog Summit (Intellectual Property Owners Association) – Washington, D.C.

March 16, 2016 – "Preparing for the European Unified Patent Court (UPC)" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

March 16, 2016 – "Trade Secrets in Biotech, Biosimilars & Medical Devices" (American Intellectual Property Law Association) – 12:30 – 2:00 pm (Eastern)

March 18, 2016 - American Intellectual Property Law Association Quarterly Journal (AIPLA QJ) Symposium – George Washington University Law School

March 24, 2016 – "Structuring Patent Licensing Agreements: Avoiding Litigation, Allocating Risk and Maximizing Patent Value" (Strafford) – 1:00 to 2:30 pm (EDT)

March 30, 2016 – "Patent Prosecution from a Litigator's Viewpoint: Position Your Patent to Succeed in Litigation & Post-Grant Procedures" (American Intellectual Property Law Association) – 12:30 – 2:00 pm (Eastern)

March 31, 2016 – "Conducting and Analyzing Patent Searches — Strategies for Validity, Patentability, Infringement, FTO and State-of-the-Art Searches" (Strafford) – 1:00 to 2:30 pm (EDT)

April 5-7, 2016 – IP Strategy, Patent Portfolio Development and Innovation*** (Fleming) – Boston, MA

April 12, 2016 – "A Federal Trade Secrets Act? The Defend Trade Secrets Act of 2016" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CDT)

***Patent Docs is a media partner of this conference or CLE
Webinar on Defend Trade Secrets Act of 2016

March 12, 2016

McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar on "A Federal Trade Secrets Act? The Defend Trade Secrets Act of 2016" on April 12, 2016 from 10:00 am to 11:15 am (CDT). In this presentation, MBHB attorney Joshua Rich will cover:

• The background of existing trade secrets laws;
• The provisions of the Defend Trade Secrets Act of 2016;
• The status of the Defend Trade Secrets Act in Congress and chances for passage; and
• Other important trade secrets developments.

While there is no fee to participate, attendees must register in advance. Those wishing to register can do so here. CLE credit is pending for the states of California, Illinois, New Jersey, New York, North Carolina, and Virginia.
Webinar on Patent Licensing Agreements

March 12, 2016

Strafford will be offering a webinar/teleconference entitled "Structuring Patent Licensing Agreements: Avoiding Litigation, Allocating Risk and Maximizing Patent Value" on March 24, 2016 from 1:00 to 2:30 pm (EDT). John M. Augustyn of Leydig Voit & Mayer and Peter J. Toren of Weisbrod Matteis & Copley will prepare IP counsel to craft effective patent licenses by reviewing key clauses and licensing in joint development projects, and outline best practices for structuring the agreement to avoid litigation, allocate risk and maximize patent value. The webinar will review the following issues:

• What are the key contract terms to include in patent licensing agreements?
• What steps should be taken when structuring a licensing agreement in the context of a joint development project?
• What factors must be considered to structure a patent license to avoid or minimize litigation?

The registration fee for the webinar is $297. Those interested in registering for the webinar, can do so here.
Webinar on Conducting and Analyzing Patent Searches

March 12, 2016

Strafford will be offering a webinar/teleconference entitled "Conducting and Analyzing Patent Searches — Strategies for Validity, Patentability, Infringement, FTO and State-of-the-Art Searches" on March 31, 2016 from 1:00 to 2:30 pm (EDT). Thomas L. Irving of Finnegan Henderson Farabow Garrett & Dunner, Jonathan E. Grant of Grant Patent Services, and Cory C. Bell of Finnegan Henderson Farabow Garrett & Dunner will provide guidance to patent counsel on structuring and conducting patent searches, and discuss reporting of search results and offer best practices for analyzing patent searches to maximize patent protection. The webinar will review the following issues:

• What are the benefits and pitfalls of classification searching and keyword searching?
• What are the critical considerations when determining what, when and where to search?
• What are the key components of an effective search strategy, analytical process and follow-up steps to ensure a successful patent application?

The registration fee for the webinar is $297. Those interested in registering for the webinar, can do so here.
Conference on IP Strategy, Patent Portfolio Development and Innovation

March 12, 2016

Fleming will be holding a conference on IP Strategy, Patent Portfolio Development and Innovation from April 5-7, 2016 in Boston, MA. The conference will offer sessions covering the following topics:

• Enhanced Patent Quality Initiative: Moving Forward
• Synchronizing IP Strategy with Corporate Innovation Strategy
• Navigating Patent Portfolio Development in 2016: Keeping Abreast of the Ever-Changing Landscape
• Commercialization of Intellectual Property and Integrating it to your IP Strategy
• Streamlining Tactics for Partnering with External Counsel
• Global Patent Portfolio Protection and Prosecution

A full program for this conference, including an agenda, detailed descriptions of conference sessions, list of speakers here. The registration fee for the conference is $2,496 (practitioner) or $3,099 (non practitioner). Those interested in registering for the conference can do so here.

Patent Docs is a media partner of the IP Strategy, Patent Portfolio Development and Innovation conference.
Supreme Court Preview — Cuozzo Speed Technologies, LLC v. Lee — Question 2

March 9, 2016

By Andrew Williams —

On March 4, the Supreme Court announced that the Cuozzo Speed Technologies, LLC v. Lee appeal would be argued on April 25, 2016 (the last week of oral hearings for the October Term 2015). As we reported previously, the Supreme Court granted certiorari in this case to address two questions:

1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board's decision whether to institute an IPR proceeding is judicially unreviewable.

Petitioner Cuozzo filed its merits brief on February 22, 2016, followed by fifteen amicus/amici briefs filed by February 29, 2016 in support of petitioner or neither party. At least three amicus/amici briefs were subsequently filed on Monday, March 7 (including by the IPO and the AIPLA). Respondent's merits brief is due later this month, with the possibility of amicus briefs in support of respondent to follow. Interestingly, of the first fifteen filed amicus/amici briefs, only five addressed the second question (and only two solely addressed the second question). This post will examine the second question, and the positions expressed in these five amicus briefs.

As a review, Congress established the new post-grant review proceedings in the Leahy-Smith America Invents Act ("AIA), at least partially in response to the concerns that the Patent Office was issuing too many invalid patents. The AIA conferred authority on the Director to institute IPR proceedings at 35 U.S.C. § 314(a):

Threshold. – The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

The Director has delegated this responsibility to the Patent Trial and Appeal Board (PTAB or Board). Once instituted, the proceedings progress, culminating in a final written decision in which either some or all of the claims are cancelled or the patent emerges unscathed. Congress provided that any party dissatisfied with the final result could appeal the decision directly to the Federal Circuit. 35 U.S.C. § 319. At the same time, the AIA explicitly precluded review of decisions to institute: "No appeal. – The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable." 35 U.S.C. § 314(d). It is the scope of this unreviewability provision that is at issue in Question 2.

In the Federal Circuit Cuozzo case, the Court held that the statute barred any review related to institution, even when it is contrary to the requirements outlined by the statute. Specifically, in this case, the Board instituted review of a patent on grounds not specifically identified in the petition. Instead of adopting the grounds presented in the petition, the Board recombined art found therein to craft its own obviousness ground of unpatentability. The Federal Circuit held that § 314(d) prevented its review of this action by the PTAB. However, the Court did not stop there, indicating that even if the Board went beyond its statutory authority in its institution decision, such action would not be appealable. This has been borne out by subsequent cases, in which issue such as whether a petition is time barred or whether all real parties in interest have been identified have been deemed unreviewable by the Federal Circuit. In fact, the only situation in which the Court has reviewed decisions outside of the merits of the case has been in the CBM context. In Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015), the Federal Circuit reviewed the decision whether a patent is properly a covered business method patent, or whether it claims a "technological invention," because (according to the Court) these issues go to the Board's ultimate authority to invalidate.

The Biotechnology Innovation Organization (BIO) and the Association of University Technology Managers (AUTM) Brief

The BIO and AUTM brief alleged that the Federal Circuit had "abdicated its judicial-review responsibilities" in the Cuozzo decision and its progeny. They referred to these ancillary questions as the "who," "what," and "when" of IPRs. A decision on any of these issues, the argument goes, is not a determination whether to institute, and therefore review should not be barred by § 314(d). Instead, the amici asserted that there is a reading of the provision that fulfills the statutory purpose while preserving meaningful judicial review — that the only bar on challenges should be on the question whether there is or is not a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged in the petition. As support, they point to the language "under this section" in the statutory provision — and if looking "under" § 314, the only issue that cannot be reviewed is the threshold determination as found in § 314(a). The other questions are found outside this section.

The ultimate problem with this abdication by the Federal Circuit, according to BIO and AUTM, is that "[t]he absence of review has left PTAB decision-making arbitrary, ad hoc, panel-dependent, and unpredictable." This is exacerbated by the fact that there are very few precedential decisions, and the informative papers from the Board are not considered to be binding authority. The ultimate problem is that "because of the PTAB's erratic, unpredictable, and unreviewed application of that provision, innovators lack any reasonable certainty about whether their valuable intellectual property remains exposed to PTAB proceedings."

The New York Intellectual Property Law Association Brief

One of the themes that flowed through almost all of the briefs on this issue was that the Supreme Court "applies a 'strong presumption' favoring judicial review of administrative action," citing a Supreme Court case from last year, Mach Mining, LLC v. E.E.O.C., 135 S.Ct. 1645 (2015). That case continued, stating that an "agency bears a 'heavy burden' in attempting to show that Congress 'prohibited all judicial review' of the agency's compliance with the legislative mandate." The New York Intellectual Property Law Association's brief also cited Lindahl v. OPM, 470 U.S. 768 (1985), for the proposition that "[e]ven statutory language that 'plausibly can be read as imposing an absolute bar to judicial review' does not overcome the 'usual presumption favoring judicial review of administrative action' if there is another natural reading of the statute that permits some level of review." Therefore, according to the argument, the only issue that should be unreviewable is the decision to institute itself, not the ancillary issues that might need to be decided at the institution stage.

The Intellectual Ventures Management LLC Brief

The section of the Intellectual Ventures amicus brief dealing with Question 2 framed the issue as the Federal Circuit rule foreclosing judicial review undermines Congress's careful and balanced design. This rule, according to amicus, "undermines the integrity of the statutory scheme and threatens to distort the IPR process into an inefficient, unpredictable free-for-all." The brief identifies a laundry list of statutory requirements that this rule allows the PTAB to ignore: (1) earliest possible timing (because IPRs can only be filed nine months after grant of a post-AIA patent), (2) petition requirements, (3) time bar for earlier-filed civil action, (4) time bar for infringement defendants, (5) joinder limitation, and (6) estoppel. In other words, "[t]hey become guidelines for the agency to follow only when it feels like it." The end result is the encouragement of gamesmanship, "turning IPRs into a kind of Wild West system of patent invalidation where no patent or district court victory is ever truly safe."

The Sightsound Technologies, LLC Brief and the Medtronic, Inc. Brief

Finally, the two briefs that deal solely with Question 2 have something else in common. They both have cases pending at different stages that have been impacted by the outcome in the Cuozzo case. Therefore, these briefs serve to highlight the real-world implications of the Federal Circuit's decision.

The case involving Sightsound is very similar to the Cuozzo case itself. The petitioner, in this case Apple, filed a CBM patent review against one of Sightsound's important patents. The PTAB rejected all but one anticipation ground found in the petition, but devised its own obviousness rejection, combining the main reference with "twelve disparate references relating to CompuSonics." According to the brief, "the Board claimed 'discretion' to posit, initiate, and conduct this review sua sponte — a discretion that the Board has explicitly claimed not to have in other proceedings." The ultimate problem, according to Sightsound, was that in the limited time for the CMB to proceed, they never fully understood the position of the Board until the Final Written Decision. And, to add insult to injury, the Board rejected the anticipation challenge. Therefore, all of the grounds found in the original petition were rejected, but the ground put together by the Board sua sponte invalidated the patent. The Federal Circuit relied on Cuozzo to refuse to hear the appeal.

In the Medtronic case, amicus requests that the Supreme Court not include broad language in its decision (regardless of which way it decides) that would suggest that the Federal Circuit lacks jurisdiction to review post-institution decisions related to the termination of IPR proceedings. In this case, Medtronic had acquired another party (Cardiocom) as a wholly-owned subsidiary, which itself had been sued by Bosch. Medtronic was also independently concerned about Bosch's patents, so it filed IPR petitions against the patents, but also identified Cardiocom and their relationship. However, based on previous guidance from the Board, Medtronic did not list Cardiocom as a real-party-in-interest. The Board instituted over Bosch's objections on this issue, but on the eve of the oral hearing, that decision was reversed. The PTAB decided that Cardiocom was a real-party-in-interest, and since it wasn't classified as such in the petition, it terminated the proceedings. And, because Cardiocom was not time-barred, Medtronic could not refile. Medtonic is currently seeking relief from the Federal Circuit and a district court, but so far has been unsuccessful, in part because the Federal Circuit views this issue as tied to institution (even though it occurred after institution).

We will continue to preview the Supreme Court Cuozzo case leading up to its April 25 oral hearing date.
USPTO News Briefs

March 8, 2016

By Donald Zuhn —

USPTO Seeks Sample Applications for eMod Project

The U.S. Patent and Trademark Office distributed a Patents Alert USPTO News e-mail last week requesting that stakeholders provide .docx sample applications for testing and validating text submissions as part of the USPTO eMod Patent Center Project. The USPTO eMod (eCommerce Modernization) Patent Center project is an effort by the Office to improve the electronic patent application process by modernizing the Office's eCommerce systems (EFS-Web and Private PAIR). Additional information regarding the USPTO eMod Patent Center Project can be found here.

At this stage of the eMod project, the Office is looking to obtain as many issued or published utility, design, and PCT (U.S. Receiving Office) patent applications, covering various technologies, as it can. Sample applications should include the specification, claims, abstract, and drawings, and be authored in Microsoft Word 2007 and above in .docx format. The Office is also requesting sample applications containing the following formatting characteristics or items:

• Indentation levels
• Bold
• Italic
• Underscore
• Superscript
• Subscript
• Special characters/symbols
• Ordered lists
• Unordered lists
• Tables
• Embedded images or drawings
• Embedded math and chemical formulas
• Sequence listings
• Computer code

The Office is requesting sample applications as part of its efforts to expand the types of file formats the USPTO will accept for patent application submissions. Stakeholders wishing to submit sample applications should send such applications to emod@uspto.gov. The Office has requested that stakeholders submitting applications also provide the application number of any samples that are provided so that the Office can compare the sample to the as-filed application in the Image File Wrapper (IFW).

USPTO Promotes Video Conferencing Interviews

In a Patents Alert USPTO News e-mail sent out in December, the U.S. Patent and Trademark Office reminded stakeholders about the use of video conferencing for conducting examiner interviews. The Office noted that video conferencing gives applicants and their representatives the ability to conduct face-to-face meetings with examiners regardless of the location of the examiner, applicant, or representative. The Office has posted a one-minute video, that can be found here, in which patent practitioners share some of the advantages of conducting video conferencing interviews. Additional information and resources on how to schedule and join a USPTO-hosted video conference can be found here. Readers may recall that at Office's May 2014 forum on the Mayo-Myriad subject matter eligibility guidance, an Office representative encouraged attendees to seek video interviews with examiners, noting that such interviews had been gaining popularity at the Office (see "USPTO Holds Forum on Subject Matter Eligibility — Part IV").

USPTO Provides Update Regarding EFS-Web and Private PAIR Authentication

In January, Oracle announced that plugin support was being removed from many browsers, thereby eliminating the ability to embed Flash, Silverlight, Java and other plugin-based technologies in those browsers. Oracle noted that application developers relying on the Java browser plugin would need to consider alternatives, such as migrating from Java Applets to the plugin-free Java Web Start technology.

In view of Oracle's announcement, the U.S. Patent and Trademark Office distributed a Patents Alert USPTO News e-mail last month pointing out that Java 9, which will be released in March 2017, will still have Java plugin functionality. As a result, the Office indicated that users will be able to authenticate in the EFS-Web and Private PAIR until Oracle removes the Java plugin in a future release. The Office also noted that is actively pursuing an alternative authentication technology that does not use the Java plugin.

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