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  • Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)

    By Andrew Williams —

    Federal Circuit SealIt is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the provisional.  Indeed, this is what 35 U.S.C. § 119(e)(1) requires:

    An application for patent filed under section 111 (a) or section 363 for an invention disclosed in the manner provided by section 112 (a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111 (b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111 (b) . . . .

    It has also been a commonly held belief that for a potentially invalidating prior art reference to be entitled to the filing date of a provisional application, the provisional application itself must contain the same invalidating disclosure.  In other words, it has been believed that if a provisional application contains an invalidating disclosure, any patent claiming priority and containing the same (although not necessarily verbatim) disclosure as that provisional would be prior art as of the provisional filing date.  However, last month, in Dynamic Drinkware, LLC v. National Graphics, Inc., the Federal Circuit explained that we were all doing it wrong.  Instead, just as with any other analysis ascertaining valid priority claims to provisional applications, it is the claims of the relevant patent that are important.  Or, as the Federal Circuit put it "[a] provisional application's effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional."  Of course, this can create the odd situation (as explained below) where a provisional application contains no disclosure whatsoever related to the patent whose validity is being challenged, but it nevertheless can be used to establish an earlier priority date — provided the disclosure does support the claims of the invalidating patent reference.

    This case arose in the context of an IPR appeal from the Patent Trial and Appeal Board ("Board").  The technology was not particularly important for the issues addressed, but National Graphics' patent (U.S. Patent No. 6,635,196) was directed to making molded plastic articles bearing "lenticular" images.  Lenticular imaging is described on National Graphics website.  Dynamic Drinkware filed an IPR petition asserting that U.S. Patent No. 7,153,555 ("the Raymond patent") anticipated this patent.  The Board ultimately concluded that Dynamic had not meet its burden of establishing by a preponderance of the evidence that two of the claims of the '196 patent were anticipated under § 102(e)(2) because, in part, it did not prove that the Raymond patent was entitled to the provisional application filing date to which it claimed priority ("the Raymond provisional").  Importantly, the Board found it significant that Dynamic only compared a claim of the '196 patent to the Raymond provisional rather than comparing the portions of the Raymond patent relied upon to invalidate the '196 patent to the Raymond provisional.  Then, because the '196 patent claims were found to be reduced to practice between the filing dates of the Raymond provisional and the Raymond patent, the Board concluded that it was not invalidating prior art.

    The Federal Circuit first dealt with the issue of who had the burden of establishing either that the Raymond patent was entitled to the prior date of the Raymond provisional, or that the Raymond patent was not entitled to the earlier priority date.  Unsurprisingly, the burden of persuasion in establishing the invalidity of the '196 patent never shifted from the petitioner, Dynamic.  Instead, the relevant issue was the burden of production.  In this case, Dynamic initially asserted that the Raymond patent anticipated certain claims of the '196 patent.  This shifted the burden of production to the patent owner.  National had two options for meeting this burden; either argue that the Raymond patent did not anticipate, or, what National did, that it reduced to practice before the Raymond patent.  Once again, the production burden shifted, this time to Dynamic to prove that the potentially invalidating Raymond patent was entitled to the Raymond provisional filing date.  It did not meet this burden, and therefore did not meet the ultimate burden of proof.

    The Federal Circuit pointed out that Dynamic was basically arguing that a patent is presumptively entitled to the priority date of its provisional application.  This cannot be the case because the Patent Office does not routinely examine priority claims made in a patent application.  Only when it is necessary to make such a determination will the patent office do so, such as when an applicant attempts to overcome a prior art reference or in an interference setting.  See M.P.E.P. § 211.05(I)(A).  Therefore, the Federal Circuit concluded, such a presumption is incorrect.

    For its part, in arguing this appeal, National argued that Dynamic had waived the argument of the provisional filing date because it was not made in the original petition.  However, the Court pointed out that Dynamic did not need to raise such an argument in the first place, because the Raymond patent was considered to be prior art to the '196 patent until Dynamic established an earlier reduction to practice date.  It was only when the burden of production shifted that Dynamic was required to come forward with the provisional priority date argument.

    Finally, as referenced above, Dynamic's argument failed because it improperly made its priority claim to the Raymond patent.  The Court emphasized that "the relevance of the Raymond provisional application date here is not to give the Raymond patent any earlier priority over a competing application or patent, but to serve third party Dynamic's goal of creating earlier prior art against the '196 patent."  Therefore, because Dynamic did not compare the claims of the Raymond patent to the Raymond provisional, it could not prove that the patent was entitled to priority date.

    It goes without saying that as a practical consideration, any claim of priority to a provisional should focus of the claims of the patent for which priority is sought.  Of course, it might also be advisable to show where in the provisional the disclosure can be found that is relevant to the patent for which invalidation is sought.  The problem is that a scenario can be envisioned in which a provisional application contains disclosure "A," but a subsequent non-provisional application is filed adding disclosure "B."  This "B" disclosure could be identical to the claims of another patent with an earlier filing date than the non-provisional application.  The prior conventional wisdom was that this non-provisional application (or subsequent patent) could not invalidate this other patent, even if the provisional filing date was earlier, because the provisional did not contain the invalidating "B" disclosure.  According to Dynamic Drinkware, however, if this non-provisional application (or any resulting patent) only contained claims that were supported by disclosure "A," it would nevertheless be anticipatory with regard to the "B" disclosure.  While the potential for mischief on the part of patent applicants is probably minimal, because there is still a one-year deadline for claiming priority to the provisional, it will be interesting to see how this new way of analyzing priority claims will play out.

    Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)
    Panel: Circuit Judges Lourie, Bryson, and O'Malley
    Opinion by Circuit Judge Lourie

  • PTAB Issues Questionable 101 Decision

    Ex parte Nathan Victor Bak, Elizabeth Baruka Silberg, Yelena Bayeva, Sukadev Bhattiprolu, And Alexis Hope Bruemmer

    By Joseph Herndon —

    The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office has likely seen an increase in the number of appealed rejections under 35 U.S.C. § 101 due to the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014).  A review of a recent decision shows some inconsistencies in the application of the framework set forth in Alice.

    On October 19, 2015, the PTAB issued a Decision on Appeal for U.S. Application No. 12/822,772 (Appeal 2013-009289) in Ex parte Nathan Victor Bak, Elizabeth Baruka Silberg, Yelena Bayeva, Sukadev Bhattiprolu, and Alexis Hope Bruemmer.  The Appeal Brief identified the Real Party in Interest as International Business Machines Corporation, the assignee of the patent application.

    The invention described in the patent application "relates to the automated scheduling of meetings on calendars and the organization of such calendars of invitees based upon the importance of a set of predetermined attributes of such meetings."  Independent claim 1 is reproduced below.

    1.    In a network of computer controlled user interactive display stations, a method for the scheduling of meetings on the calendars of invitee users comprising:
        prompting an inviter, at a sending display station, to enter into an invitation a predetermined set of general attributes for the scheduled meeting;
        enabling each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and
        enabling each invitee to prioritize each predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee's calendar.

    The Examiner rejected claim 1 (and claims 2-8 dependent upon claim 1) under 35 U.S.C. § 101 as being directed to non-statutory subject matter.  Additionally, the Examiner rejected all pending claims 1-20 under 35 U.S.C. § 103(a).

    With respect to the § 101 rejection, the Examiner stated that "none of the recited steps in claim 1 are explicitly or inherently performed using a particular machine; thus, no particular machine imposes a meaningful limit on the scope of the claims."  The Examiner also determined that in claim 1 "no subject matter transforms into a different state or thing."  The Examiner determined that Appellants' method of scheduling meetings on calendars of invitee users is an abstract idea that is not eligible for patenting.

    After the mailing of the Examiner's Answer, the Supreme Court issued its decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014), and thus, the Board applied the framework set forth in Alice for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.

    Step 1: Are the claims at issue directed to a patent-ineligible concept?

    For the analysis of Step 1, the Board simply paraphrased claim 1, and then stated "[w]e determine that, when read as a whole, independent claim 1 constitutes a patent-ineligible abstract idea — i.e., the claim is directed to the abstract idea of scheduling a meeting."

    Such analysis is troubling since there is no reasoning given for why this concept of "scheduling a meeting" is an abstract idea.  Presumably, following such absence of reasoning, any idea whatsoever can be considered to fall within the "abstract idea" prong of patent-ineligible concepts, and it is only whether the claim is found to satisfy step 2 that section 101 will be satisfied.  The Board must give some rationally based reasoning for why this claim's features for scheduling a meeting are directed to an abstract idea, or why even the act of scheduling a meeting itself is directed to an abstract idea.  Not much is required, but some reasoning is needed to hold the Board accountable.

    For example, even if the claims can be considered to be directed to an abstract idea as asserted by Board, the Board has not shown that the claims would preempt all applications of the alleged abstract idea, and failed to provide any reasoning to show that the specific combination of features recited by the claims will "disproportionately [tie] up the use of the underlying idea," thereby pre-empting all applications of the abstract idea, which the Supreme Court stated is the "concern that undergirds our § 101 jurisprudence" (Alice Corporation Pty. Ltd. v. CLS Bank Int'l, slip op. at 13).  In particular, the Board did not identify a single previously known application that would be preempted by the presently claimed combination of features.  Rather, the Board offered mere conclusory statements without identifying any particular facts in the record of this application that support the stated conclusion.

    Step 2: Is there something else in the claim which ensures that the claim is directed to "significantly more" than a patent-ineligible concept?

    The analysis of Step 2 should have been more cursory than the analysis of Step 1, since here, the recitation of a network of computer controlled user interactive display stations and a sending display station in claim 1 amounts to nothing more than generic components insufficient to transform the claim into a patent-eligible application.

    However, the Board provided further reasoning here and stated that "[t]aking the elements of claim 1 separately, for example, the function performed by the computer display at the claimed step of the process is purely conventional."  This reasoning, of course, contradicts the requirements of considering the claim as a whole, and so, such reasoning is further flawed.

    Perhaps equally troubling is that of the pending claims 1-20, only claims 1-8 stand rejected under 35 U.S.C. § 101.  However, assuming the § 101 analysis by the Board is correct (despite flawed or non-existent reasoning), then the other two independent claims 9 and 13 must fall as well with claim 1.  Independent claims 9 and 13 are reproduced below.

    9.    A computer controlled system, for the scheduling of meetings on the calendars of invitee users in a network of computer controlled user interactive display stations, comprising:
        a processor; and
        a computer memory holding computer program instructions which when executed by the processor perform the method comprising:
        prompting an inviter, at a sending display station, to enter into an invitation an predetermined general set of attributes for the scheduled meeting;
        enabling each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and
        enabling each invitee to prioritize each predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee's calendar.

    13.    A computer usable storage medium having stored thereon a non-transitory computer readable program for the scheduling of meetings on the calendars of invitee users in a network of computer controlled user interactive display stations, wherein the computer readable program when executed on a computer causes the computer to:
        prompt an inviter, at a sending display station, to enter into an invitation a predetermined set of general attributes for the scheduled meeting;
        enable each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and
        enable each invitee to prioritize each inviter-predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee's calendar.

    Independent claim 9 recites a traditional "computer" claim with functions that mirror the functions of the method claim 1, and independent claim 13 recites a traditional computer-readable medium (CRM) claim with functions that also mirror claim 1.  Alice was clear that a statutory category of a claim does not impact the analysis of patent-eligibility of the claim.  Thus, it would appear that all claims should be rejected under section 101.

    Since the rejection of claims 1-8 under 35 U.S.C. § 101 was affirmed, the Board designated the rejection as a new ground of rejection, to the extent the rationale differed from that set forth by the Examiner, and Section 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review."  Thus, the Applicant has two months from the date of the decision to (1) Reopen prosecution and submit an appropriate response, or (2) Request rehearing.

    As a note, with respect to the § 103 rejections, the Board reversed the Examiner's rejections since the cited art failed to describe all features of the independent claims.

    As a take-away from this Decision, with the increase of § 101 rejections being levied upon Applicants by Examiners and the Board at the USPTO, Applicants must be diligent in forcing strict application of the framework set forth by Alice to avoid rejections unsupported by rationale reasoning.  Otherwise, literally any claim can be called into question as directed to some kind of "abstract idea".

  • Natera Responds to Sequenom’s Petition for Rehearing En Banc

    By Donald Zuhn –-

    NateraLast week, Appellee Natera, Inc. filed its response to the petition for rehearing en banc filed by Appellants Sequenom, Inc. and Sequenom Center for Molecular Medicine, LLC in August (see "Sequenom Requests Rehearing En Banc") (a summary of the response filed by Appellee Ariosa Diagnostics, Inc. can be found here).  In its response, Natera argues that in affirming a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted claims of U.S. Patent No. 6,258,540 (see "Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Fed. Cir. 2015)"), the Ariosa panel "faithfully applied Mayo, Myriad, and Alice to conclude that the asserted claims are ineligible for patenting."  Natera suggests that "[a]t bottom, Sequenom and its amici disagree with the Supreme Court's jurisprudence on patent-eligibility," but contends that the Federal Circuit is "constrained to follow precedent" and therefore asserts that Sequenom's petition should be denied.

    Arguing that the Federal Circuit panel correctly found the asserted claims to be patent ineligible, Natera explains that:

    The asserted claims are drawn to the discovery that cell-free fetal DNA (cffDNA) circulates organically in maternal plasma, which is an ineligible natural phenomenon under Myriad, 133 S. Ct. at 2111.  The claims apply only routine analytical methods (such as amplification and detection) to that natural phenomenon, which is insufficient to confer patent-eligibility under Mayo, 132 S. Ct. at 1297–98.

    As for the doctrinal and policy objections raised by Sequenom and its amici, Natera contends that:

    The very same arguments were presented, often by the same amici, to the Supreme Court in the Mayo–Myriad–Alice trilogy.  The Supreme Court rejected those arguments, expressly or implicitly, in adopting its eligibility framework.  Since this Court does not sit to check the Supreme Court's work, the recycled objections to that framework now presented by Sequenom and its amici cannot support review or revision, much less reversal, of the panel decision.

    Natera points out that "[n]ovelty and non-obviousness are necessary, but not sufficient, preconditions to patentability," adding that these requirements "do not substitute for the independent (and antecedent) requirement of patent-eligibility."  According to Natera, "[i]f novelty and non-obviousness were all that is required, patentees would be able to monopolize natural phenomena where, as here, the existence or utility of the phenomenon was not known or obvious before the discovery."  Natera argues, however, that "[t]he proper Section 101 eligibility inquiry, by contrast, assumes that knowledge of the phenomenon is in the public domain, where it rightfully belongs," and suggests that the instant case "illustrate[s] the wisdom of this dichotomy," because "[o]nce it was discovered that maternal plasma contains cffDNA, the application of routine analytical methods to that plasma and its contents was a simple step."

    As for the argument made by Sequenom and its amici that the asserted claims recite an eligible application of the natural phenomenon that fetal DNA exists in maternal plasma, Natera counters that the asserted claims "amount to prototypical 'apply it' instructions, which Mayo squarely forecloses."

    With respect to the issue of complete preemption, Natera states that:

    Contrary to amici's suggestion, . . . complete preemption has never been required to hold claims ineligible.  See Flook, 437 U.S. at 597; Diehr, 450 U.S. at 204; Mayo, 132 S. Ct. at 1303.  Rather, "the underlying functional concern here is a relative one: how much future innovation is foreclosed relative to the contribution of the inventor."  Mayo, 132 S. Ct. at 1303.  In this case, the patent contributes no invention: the newly discovered natural phenomenon is in the public domain, and the asserted methods were well-known in the prior art.  Thus, any preemption would be too much preemption. [emphasis in response]

    Natera also argues that the instant case "would be a particularly bad vehicle for rethinking preemption analysis, even if that path were not foreclosed by Mayo and Alice, because the claims asserted here, in fact, broadly preempt all known methods for detecting cffDNA in maternal plasma and making diagnoses therefrom."

    In response to the concerns expressed by Sequenom and its amici that the panel decision will deter investment and innovation in the biotechnology industry, Natera counters that "they do not address the deleterious effects of over-expansive patent monopolies covering natural phenomena, including the economic and social costs to the health care system in general, and pregnant women and their families in particular."

    In concluding that Sequenom's petition for rehearing en banc should be denied, Natera suggests that:

    Congress struck a delicate balance in Section 101, and the Supreme Court has maintained that balance in its recent trilogy of eligibility decisions.  As with their doctrinal arguments, the policy arguments advanced by Sequenom and its amici reflect no more than their disagreement with the Supreme Court's precedents in this area.  They are free to take up their differences (once again) with the Supreme Court, or they may use these arguments to urge legislative change, but under the extant statute as authoritatively construed by the Supreme Court, the panel could not — and this Court cannot — adopt their policy agenda.

  • Conference & CLE Calendar

    CalendarOctober 29, 2015 – "Provisional Patent Applications: Preserving IP Rights — Assessing Whether to Use and Strategies to Leverage Provisional Applications Under the First-to-File System" (Strafford) – 1:00 to 2:30 pm (EST)

    October 29, 2015 – "Patent Prosecution After Akamai: Exploring the Contours of 'Control and Direction'" (Intellectual Property Owners Association) – 2:00 to 3:00 pm (ET)

    November 5, 2015 – "Objective Evidence in IPRs: Demonstrating Sufficient Nexus — Linking Evidence and Merits of Claimed Invention, Leveraging Prosecution Declarations" (Strafford) – 1:00 to 2:30 pm (EST)

    November 12, 2015 – "Leveraging Experts for USPTO Prosecution and PTAB — Developing Strong Patentability Records to Strengthen Claims Against IPR and PGR Challenges" (Strafford) – 1:00 to 2:30 pm (EST)

    November 16-17, 2015 – Patent Litigation 2015 (Practising Law Institute) – New York, NY

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

  • Webinar on Use of Provisional Patent Applications under First-to-File System

    Strafford #1Strafford will be offering a webinar/teleconference entitled "Provisional Patent Applications: Preserving IP Rights — Assessing Whether to Use and Strategies to Leverage Provisional Applications Under the First-to-File System" on October 29, 2015 from 1:00 to 2:30 pm (EST).  Dale S. Lazar and Timothy W. Lohse of DLA Piper LLP (US) will discuss provisional patent applications, their benefits and limitations, and best practices for leveraging the applications. The panel will examine when and why provisional applications should be used and the issue of tying non-provisional patent applications to provisional applications.  The webinar will review the following questions:

    • Under what circumstances will a patent claimant get the most out of a provisional patent application?
    • What are the benefits and limitations of using a provisional patent application?
    • What are the important considerations when determining whether and when to use a provisional application?

    The registration fee for the webinar is $297 ($362 for registration and CLE processing).  Those interested in registering for the webinar, can do so here.

  • Webinar on Leveraging Experts During Prosecution and at PTAB

    Strafford #1Strafford will be offering a webinar/teleconference entitled "Leveraging Experts for USPTO Prosecution and PTAB — Developing Strong Patentability Records to Strengthen Claims Against IPR and PGR Challenges" on November 12, 2015 from 1:00 to 2:30 pm (EST).  Thomas L. Irving of Finnegan Henderson Farabow Garrett & Dunner; Jonathan R.K. Stroud, Chief Patent Counsel, Unified Patents; and Wen Li, Ph.D. of Finnegan Henderson Farabow Garrett & Dunner will provide guidance for patent counsel on leveraging the use of experts in patent prosecution and at the PTAB to develop and strengthen patentability records, and offer best practices on how and when to use experts in patent prosecution to strengthen claims against inter partes review (IPR) and post-grant review (PGR) challenges.  The webinar will review the following questions:

    • How can practitioners use experts during prosecution to strengthen the patent application against the threat of post-grant challenges?
    • How can practitioners leverage expert declarations in the POPR (Patent Owner Preliminary Response)?
    • How can practitioners introduce strong grounds for patentability under §§ 103 and 112 in the prosecution history so that IPRs and PGRs are either denied or ineffective against the challenged claims?

    The registration fee for the webinar is $297 ($362 for registration and CLE processing).  Those interested in registering for the webinar, can do so here.

  • Webinar on Objective Evidence in IPRs

    Strafford #1Strafford will be offering a webinar/teleconference entitled "Objective Evidence in IPRs: Demonstrating Sufficient Nexus — Linking Evidence and Merits of Claimed Invention, Leveraging Prosecution Declarations" on November 5, 2015 from 1:00 to 2:30 pm (EST).  Michael J. Flibbert and Thomas L. Irving of Finnegan Henderson Farabow Garrett & Dunner will provide guidance to patent counsel on demonstrating nexus between objective evidence of non-obviousness and the claimed invention, and offer best practices using analysis and explanation to link objective evidence to the merits of the claimed invention.  The webinar will review the following questions:

    • How can patent counsel strategically use prosecution declarations supporting positions of non-obviousness in the POPR (Patent Owner Preliminary Response)?
    • What advantage can be gained from understanding how the courts and the examiners are applying the nexus test?
    • What steps should patent owners and their counsel take to link through analysis and explanation objective evidence to the merits of the claimed invention?

    The registration fee for the webinar is $297 ($362 for registration and CLE processing).  Those interested in registering for the webinar, can do so here.

  • IPO Webinar on Patent Prosecution After Akamai

    IPO #2The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Patent Prosecution After Akamai: Exploring the Contours of 'Control and Direction'" on October 29, 2015 from 2:00 to 3:00 pm (ET).  Stephen Durant of Schwegman, Lundberg & Woessner; Ken Hobday, Vice President and Assistant General Counsel, Fiserv; and Michelle Holoubek of Sterne Kessler Goldstein & Fox will investigate the new environment for patent prosecution in software, Internet, and IT technologies in the aftermath of this summer’s Federal Circuit decision in Akamai v. Limelight.  The webinar will review the following questions:

    • Which inventions call for taking advantage of the new more liberal standard under which multiple defendants can together practice all the claims of a patent and be found guilty of direct infringement? Or should patent prosecutors stick to a conservative approach and continue to draft claims so that a single actor can perform all steps?
    • Will including more implementation details in a patent application, such as system protocols, potentially ensnare infringers that would otherwise be seen as separate parties? How will that interact with Alice issues?
    • How to approach opinion work — and design around advice regarding non-infringement — when there is no developed case law on the new standard?

    The registration fee for the webinar is $130 (government and academic rates are available upon request).  Those interested in registering for the webinar can do so here.

  • Ariosa Diagnostics Responds to Sequenom’s Petition for Rehearing En Banc

    By Donald Zuhn —

    Ariosa DiagnosticsOn Monday, Appellee Ariosa Diagnostics, Inc. filed its response to the petition for rehearing en banc filed by Appellants Sequenom, Inc. and Sequenom Center for Molecular Medicine, LLC in August (see "Sequenom Requests Rehearing En Banc").  In its response, Ariosa argues that in affirming a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted claims of U.S. Patent No. 6,258,540 (see "Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Fed. Cir. 2015)"), the Federal Circuit "faithfully applied Supreme Court precedent."

    Characterizing claim 1 of the '540 patent as "purport[ing] to broadly cover using routine laboratory methods to detect naturally-occurring paternally-inherited nucleic acid of fetal origin in maternal serum or plasma," Ariosa argues that the panel's analysis of this claim "is exactly what the Supreme Court has mandated and its conclusion is controlled by the Supreme Court's directive that a 'process that focuses upon the use of a natural law' must 'also contain other elements or a combination of elements, sometimes referred to as an 'inventive concept,' sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself,'" quoting Mayo Collaborative Services v. Prometheus Laboratories, Inc.  Ariosa also criticizes the language of claim 1 as being "circular and devoid of content," explaining that:

    The claim recites a method for detecting naturally-occurring paternally inherited nucleic acid whose only step (aside from making more copies of the nucleic acid) is detecting the naturally-occurring paternally inherited nucleic acid.  This is little more than a claim to the natural phenomenon itself — and thus it is hardly surprising that the panel found this claim fails to recite anything "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself" [quoting Mayo].

    In particular, Ariosa points out that claim 1 recites:  "A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises . . . detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample" (emphasis in brief).

    Noting that Sequenom argued in its petition that the panel misinterpreted Mayo and that the panel decision is contrary to the Supreme Court's decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. and Diamond v. Diehr, Ariosa counters that "[t]o the contrary, it is Appellants — not the panel — that misinterpret Mayo, misapply Myriad, and misread Diehr."  In support of this position, Ariosa argues that:

    Appellants' only legal argument (as opposed to their dire policy-based prognostications) in favor of rehearing en banc is that Mayo, Myriad and Diehr must be read as teaching that "a combination of known steps that incorporates or is motivated by an unpatentable natural phenomenon is nonetheless patentable if that combination 'considered as a whole' was not routine before the patent disclosed it."  Yet Appellants' misreading of those precedents amounts to nothing short of a wholesale revision of the Supreme Court's two-part test for determining whether a claim recites patent-eligible subject matter [cite omitted].

    With respect to Mayo and Myriad, Ariosa argues that "Appellants propose a rule under which the first person to claim a process in which any steps are added to a newly discovered natural phenomenon can obtain a patent because, 'considered as a whole,' combining the new discovery with those steps was not 'routine' — because no one had done it before."  Ariosa suggests, however, that:

    Appellants fail to recognize that the patentability of the claims in Mayo did not turn on whether the natural phenomenon recited in the claims was newly discovered.  Rather, Mayo held that the prohibition on patenting a natural phenomenon cannot be overcome by combining that phenomenon with additional steps that "consist of well-understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately." [quoting Mayo].  Nowhere did Mayo suggest, let alone hold, that this rule does not apply to a newly discovered natural phenomenon.

    As for Myriad, Ariosa notes that in relying on "Myriad's statement that 'the first person with knowledge' of a natural phenomenon is in a better position to claim applications of that knowledge," Sequenom cites no other language from that opinion.  Moreover, according to Ariosa:

    [T]he language adds nothing to their argument.  Even if Drs. Lo and Wainscoat were "in an excellent position" to claim an application of their discovery of cffDNA in maternal serum and plasma, they did not do so.  Instead, they procured broad claims that merely point to that discovery and instruct one to "copy" the DNA and "detect" the DNA.

    Ariosa concludes its response by asserting that Sequenom's argument is also contrary to Diehr.  Although "Diehr . . . lies at the heart of Appellants' contention that simply adding any method steps to a newly discovered natural phenomenon renders that discovery patentable," Ariosa contends that "Diehr says no such thing."  According to Ariosa, "[t]he asserted claims of the '540 patent are fundamentally different [from those in Diehr].  They 'start and end with a naturally occurring phenomenon' and the method steps between those end points are 'conventional, routine, and well understood applications in the art.'"

    Asserting that "there is no reason for this appeal to be reheard en banc and, moreover, no basis on which this Court should disturb the panel's conclusion," Ariosa concludes that Sequenom's petition should be denied.

  • USPTO Announces Change in Practice for Correcting Foreign Priority Claims

    By Donald Zuhn –-

    USPTO SealIn a Federal Register notice published earlier this month (80 Fed. Reg. 60367), the U.S. Patent and Trademark Office announced a change in practice for the correction of errors in foreign priority claims.  Under the change in practice, applicants wishing to correct errors in a foreign priority claim after the time periods set forth in 37 C.F.R. § 1.55 will have to file a petition under 37 C.F.R. § 1.55(e) and pay the petition fee under 37 C.F.R. § 1.17(m) (currently $1,700 for large entities) in order to do so.  Pursuant to 37 C.F.R. § 1.55, foreign priority claims are to be corrected by the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.

    Prior to the change in practice, the USPTO handled the correction of domestic and foreign priority claims differently.  For domestic priority claims, applicants had to file a petition for an unintentionally delayed benefit claim under 37 C.F.R. § 1.78 and pay the petition fee, and once the petition was granted, the Office would publish a corrected patent application publication.  For foreign priority claims, the Office did not previously require the petition and fee, and would not publish a corrected patent application publication.  According to the notice, the Office's rationale for the dissimilar treatment was that prior to enactment of the Leahy-Smith America Invents Act (AIA) the prior foreign patent application did not affect the effective prior art date of a U.S. patent application publication.  However, under the AIA, a U.S. patent or patent application publication may be effective as prior art as of the filing date of an earlier foreign application.  The Office has therefore concluded that "the rationale for not requiring a petition to correct an error in the application number of a foreign priority claim is no longer appropriate."

    The Office's notice indicates that the change in practice with respect to correction of foreign priority claims takes effect on November 5, 2015.  The notice also indicates that any corrections to the foreign application number in a foreign priority claim that were previously accepted will not affected by the change in practice.