• This is the second article in a series on advancements in microbiome research and development. This installment reviews US patents issued in 2015 in "Microbiomics."  Upcoming articles will continue to review important topics in this technology area, and patents of interest.

    By Jessica Miles* and Anthony D. Sabatelli** —

    Microbiome-related therapies typically involve compositions containing bacteria — often called probiotics — that treat disease or promote health.  Some therapies change the composition of the gut microbiome by providing desirable bacterial species, nutrients that promote the growth of desirable microbiome members, or bacterial species that displace bacterial pathogens.  Other therapies comprise bacteria or bacterial components that interact with the patient's own organs, tissues, and systems.  Many of these therapies stimulate the immune system, and therapies are being developed to treat various metabolic, inflammatory, and infectious diseases.

    There has been continuous patent activity in this field in 2015.  Each issued U.S. patent is listed in Table 1 (click on table to enlarge) and summarized in more detail below.  Notably, these patents relate to a variety of research areas within microbiomics.  Patent No. 8,927,242 relates to the "gut-brain axis," an emerging area of research that will be discussed more fully in a next installment.  The term describes the connection between the gastrointestinal tract and the brain, and research in this area seeks to identify how microbiota influence brain function.  Patent No. 8,951,512 relates to the relationship between the composition of the microbiome and diseases such as obesity and related metabolic syndromes.  The patent covers therapies for osteoporosis and other disorders of bone formation and mineralization.  Patent No. 9,005,603 describes treatments for autoimmune disease.

    Other patents focus on therapies for gastrointestinal disorders.  Patent 9,011,834 describes the use of bacterial spores for modulating the composition of the gut microbiota.  Patent 9,017,662 relates to a therapeutic, engineered strain for the treatment inflammatory bowel disease.  Patent 9,028,841 describes a method for treating Clostridium difficle infection.  Patent 9,040,036 relates to a probiotic combination of bacterial spores and non-pathogenic bacteria.  Patent 9,040,101 describes a method for treating metformin-induced diarrhea while improving insulin sensitivity in diabetic patients.  Patent 9,040,302 relates to the use of an engineered bacterial strain for targeted delivery of therapies to the gastrointestinal tract.  Patent 9,050,358 describes a probiotic combination of bacterial species for the treatment of irritable bowel syndrome and gastrointestinal distress.  Patent 9,057,070 relates to the use of an engineered strain for treatment of inflammatory bowel disease.

    There are both public and private assignees represented among these newly-granted patents.  New York University, North Carolina State University, the University of Virginia Patent Foundation, and CalTech are universities and university affiliates.  A non-profit medical practice and research center, the Mayo Clinic, and the Brigham and Women's Hospital, Inc., a teaching and research hospital, were also awarded patents.  Several of the companies profiled in the first installment of this series as leaders in microbiome R&D continue to develop their portfolios with these recent patents:  NuBiome, Inc., Actogenix, Seres Therapeutics, and MicroBiome Therapeutics LLC were all granted patents this year.  There are also two patents with the same sole inventor, Thomas Borody.  Dr. Borody is the founder and director of the Sydney-based Centre for Digestive Diseases, which researches, diagnoses, and treats gastrointestinal disorders.

    As this review of patent activity indicates, microbiome research and development is thriving.  The patents discussed here cover a wide range of applications of the microbiome, targeting gastrointestinal, autoimmune, bone, and psychiatric disorders.  Moreover, the patents come from a variety of institutions, including academia, industry, and non-profit research centers.  The diversity of subject matter and origin of these inventions speaks to the strength and importance of microbiome R&D, and it is likely that the remainder of 2015 will see more innovation in this field.

    Table 1: 2015 Patents in Microbiomics

    Table 1
    U.S. Patent No. 8,927,242
    generally relates to a bacterial therapy for treatment of a subset of psychiatric disorders in children. The patent covers administration of the bacteria Streptococcus oralis 89a to treat mental illness. Pediatric Autoimmune Neuropsychiatric Disorders Associated with Streptococcal Infections (PANDAS) include Obsessive Compulsive Disorder (OCD) and/or Tourette Syndrome, whose symptoms can worsen following infection. Autoimmunity from inappropriate immune responses to bacterial antigens is thought to impair function of the basal ganglia, which controls the brain structure involved in emotion and movement. Embodiments of this invention use a combination of therapeutic bacteria, which reduces populations of the antigen-inducing species, with supplemented enzymes (such as PepO, PepO2 and subtilisin), which break down the antigens that cause disease.

    U.S. Patent No. 8,951,512 generallyrelates to a bacterial therapy for treatment of osteoporosis or related bone disorders. The gut microbiota modulates metabolism and immunity. Changes to the composition of the gut microbiota can disrupt these critical functions and lead to changes in bone mass. The patent claims bacterial strains, including Helicobacter pylori, which restore gut microbiome composition; prebiotics that stimulate the growth of therapeutic bacterial strains or improve gut microbiome composition; and methods for administering these compositions to patients.

    U.S. Patent No. 9,005,603 generally relates to a bacterial therapy containing Prevotella histicola for treatment of autoimmune diseases such as arthritis and multiple sclerosis. This species reduces inflammation, a hallmark of autoimmune disease.

    U.S. Patent 9,011,834 generally relates to a bacterial therapy for treatment or prevention changes to the composition of the gut microbiota, such as those that accompany Clostridium difficile infection, irritable bowel syndrome, and Crohn's. The patent claims the production, isolation, and administration of germination-competent bacterial spores. These spores are intended to modulate the gut microbiota.

    U.S. Patent 9,017,662 generally relates to a bacterial therapy for treatment of inflammatory bowel disease (IBD). The patent claims oral administration of a strain of Lactococcus lactis engineered to produce antibodies that neutralize tumor necrosis factor-α (TNF).

    U.S. Patent 9,028,841 generally relates to a bacterial therapy for treatment or prevention of changes to the composition of the gut microbiota, such as those that accompany C. difficile infection. The patent claims a composition containing a combination of Collinsella aerofaciens and Clostridiaceae family members. These bacteria are intended to inhibit the growth of pathogenic species and populate the gut.

    U.S. Patent 9,040,036 generally relates to a bacterial therapy for treatment or prevention of changes to the composition of the gut microbiota. The patent claims a composition containing a combination of bacterial spores from anaerobic cocci, non-pathogenic Clostridiaceae family members, members of the genus Bacteroides, Collinsella, Fusobacteria, Propionibacteria, Lactobacillus, Gemmiger, Desulfomonas, Peptostreptococcus; and a non-pathogenic Escherichia coli species.

    U.S. Patent 9,040,101 generally relates to the treatment of diarrhea in diabetic patients taking metformin, a treatment for type II diabetes. Metformin treatment causes diarrhea in some patients and has been shown to change the composition of the gut microbiome in mice. The patent claims a treatment containing inulin, beta-glucan, and polyphenolic compounds from blueberries. Inulin is an undigestible carbohydrate that can be utilized by Bacteriodetes species, promoting their growth and function. Beta-glucan is intended not only to protect members of the gut microbiome from the antimicrobial action of bile, but also to provide polysaccharide-derived nutrients for the members of the gut microbiota.Polyphenolic compounds have been shown to improve insulin sensitivity in diabetic patients.

    U.S. Patent 9,040,302 generally relates to the use of an engineered strain of Streptococcus thermophiles as a drug delivery vehicle. The patent claims a composition containing the engineered strain that expresses an alanine-glutamine or alanine-glutamine-arginine rich bioagent after being exposed to bile in the intestine. Glutamine helps promote intestinal integrity. The addition of alanine is intended to improve stability of the peptide, while arginine may increase glutamine's effects.

    U.S. Patent 9,050,358 generally relates toa bacterial therapy for treatment of gastrointestinal disorders associated with changes to the composition of the gut microbiome. The patent claims a composition containing bacterial spores from Clostridium bifermentans, Clostridium butyricum, Clostridium difficile, Clostridium ramosum, Clostridium innocuum and a Collinsella species. This composition can also be combined with a number of other Clostridia and Bacteroides, members of the genus, Bifidobacterium Pseudoflavonifractor capillosus, Odoribacter splanchnicus, anaerobic cocci, Fusobacteria, Propionibacteria, Lactobacillus, Gemmiger, Desulfomonas, Peptostreptococcus, Escherichia coli, Peptostreptococcus productus II, Parabacteroides distasonis Fusobacterium prausnitzii, Coprococcus eutactus, , Peptostreptococcus productus I, Ruminococcus bromii, Eubacterium siraeum, Ruminococcus torques, Eubacterium rectale, Eubacterium eligens, Eubacterium biforme, Eubacterium rectale III-F, Coprococcus comes, Ruminococcus albus, Dorea formicigenerans, Eubacterium haffii, Eubacterium ventriosum I, Ruminococcus obeum, Eubacterium rectale, , Ruminococcus callidus, Butyrivibrio crossotus, Acidaminococcus fermentans, Eubacterium ventriosum, Coprococcus catus, Aerostipes hadrus, Eubacterium cylindroides, Eubacterium ruminantium, Eubacterium CH-1, Staphylococcus epidermidis, Peptostreptococcus BL, Eubacterium limosum, Tissirella praeacuta, Fusobacterium mortiferum I, Fusobacterium naviforme, Ruminococcus flavefaciens, Ruminococcus AT, Peptococcus AU-1, Fusobacterium nucleatum, Fusobacterium mortiferum, Gemella morbillorum, Finegoldia magnus, Peptococcus G, -AU-2; Streptococcus intermedius, Ruminococcus lactaris, Ruminococcus CO Gemmiger X, Coprococcus BH, –CC; Eubacterium tenue, Eubacterium ramulus, , Prevotella oralis, Prevotella ruminicola, Odoribacter splanchnicus, Desuifomonas pigra, Succinivibrio A, and a non-pathogenic fungi.

    U.S. Patent 9,057,070 generally relates to a bacterial therapy for treatment of inflammatory bowel disease. The patent claims administration of a strain of Bacillus fragilis engineered to lack all but one of its native capsular polysaccharides (capsular polysaccharide A, or PSA). The inventors have shown that PSA reduces intestinal inflammation in mouse models of multiple sclerosis and inflammatory bowel disease. This invention is intended to facilitate the purification of PSA, but not other polysaccharides, from B. fragilis.

    * Jessica Miles is a Technology Specialist at Dilworth IP
    ** Dr. Sabatelli is a Partner with Dilworth IP

  • Editor's note: This is the first part in a series that will explore the current and potential developments of microbiome research, and how those developments interface with intellectual property protection.

    By Jessica Miles* and Anthony D. Sabatelli** —

    This is the first installment in a series on advancements in microbiome research and development.  Our goal with this series is to inform readers about developments in this important and growing field and to highlight, where possible, Connecticut's role in fostering this research.  This first article will provide a brief overview of this technology area, featuring both prominent pharmaceutical companies and research labs.  Future articles will discuss progress in commercializing this research, review new and relevant patents, and explore issues of law and policy in microbiome R&D.

    Research into the microbiome seeks to characterize the microorganisms that live in and on different environments.  Although these environments can be broadly terrestrial, extraterrestrial aquatic, and biological, we often use the term specifically to describe the bacteria living in and on different sites of the human body.  The word "microbiome" refers either to the organisms themselves (also called "microbiota") or their collective genomes.  Within the human gut, the most bacteria-rich organ, these genes outnumber those in the human genome 100: 1, providing attractive candidates for pharmaceutical intervention.  Inflammatory bowel disease (IBD), childhood-onset asthma, diabetes, obesity, cardiovascular disease, colorectal cancer, and antibiotic-associated diarrhea are some of the diseases that involve changes in the composition or loss of the function of the microbiome.

    Microbiomics Companies

    2015 is shaping up to be a banner year for microbiome-based drug development, or "microbiomics."  This year, Google Ventures President Bill Maris named microbiomics one of eight technologies with the potential to revolutionize life sciences, comparing its potential for impact to that of stem cells research, artificial intelligence, and gene editing.  In late June, Seres Therapeutics became the first microbiomics company to go public, with a $134 million IPO.  Table 1 provides more information about Seres and other leading companies in the microbiomics space (click on table to enlarge).

    Table I
    Several local startups seek to enter this market.  Mark Driscoll and Thomas Jarvie, formerly of 454 Life Sciences in Branford, have founded Shoreline Biome to develop diagnostics and therapeutics targeting the human microbiome.  Azitra, the brainchild of Yale students in medicine and public health, is building a platform that combines microbiomics and synthetic biology for the treatment of skin disease.

    Microbiome Research: Connecticut and Beyond

    Connecticut boasts several outstanding leaders in microbiome research.  George Weinstock, a Professor and Director for Microbial Genomics at The Jackson Laboratory for Genomic Medicine (JGM) in Farmington led the Human Microbiome Project, a five-year, $115 million initiative to characterize the microbiome and its contribution to disease.  Recent hire Julia Oh is bringing her innovative work on the skin microbiome to the JGM as an Assistant Professor.  Her arrival adds to a growing community of microbiome scientists in the state, including Andrew Goodman, an Associate Professor of microbial pathogenesis at Yale University whose work was recently honored by the Burroughs Wellcome Trust.  Yale is also home to metagenomics pioneer Jo Handelsman (currently on leave as Associate Director for Science at the White House Office of Science and Technology Policy), immunobiologists Richard Flavell and Ruslan Medzhitov, and physician-scientist Martin Kriegel.  At University of Connecticut (UConn), Joerg Graf and Xiaomei Cong are collaborating to investigate whether early life stress exposure, microbiome disruption, and psychological dysfunction are linked in preterm infants.

    The studies of CT-based scientists complement the work of other outstanding researchers in this field.  These include Jeffrey Gordon at Washington University in St. Louis (WashU), Martin Blaser at New York University (NYU), Wendy Garrett at Harvard University, Michael Fischbach at University of California San Francisco (UCSF), Lora Hooper at University of Texas Southwestern Medical Center (UT Southwestern), Sarkis Mazmanian at California Institute of Technology (Caltech), Justin Sonnenburg at Stanford University, Peter Turnbaugh at UCSF, and many others.  Several of these scientists also hold key patents in microbiomics and some have also started or advise microbiome-based pharmaceutical companies.  Table 2 reviews these key researchers and their contributions (click on table to enlarge).

    Table 2
    Closing

    The microbiome represents a new frontier in health and disease.  A number of microbiome-based therapies are now in the early stages of development.  This recent flurry of commercialization would not be possible without basic research from labs both in CT and around the world.  These trends will surely continue as R&D in this field progresses.  Stay tuned for the next installment of this series, which will review the patent landscape in microbiome research, with a focus on applications and grants issued this year.

    * Jessica Miles is a Technology Specialist at Dilworth IP
    ** Dr. Sabatelli is a Partner with Dilworth IP

    Note: Shoreline Biome and Azitra, both mentioned in this article, are clients of Dilworth IP.

  • By Donald Zuhn

    USPTO to Replace EFS-Web and PAIR

    EFS-WebIn an article posted on the Director's Forum blog, U.S. Patent and Trademark Office Deputy Director Russ Slifer announced that the Office would begin implementing a new system that will eventually replace the EFS-Web, Public PAIR, and Private PAIR.  The new initiative, eCommerce Modernization (eMod), which is intended to improve the electronic patent application process by modernizing the filing and viewing systems, will be implemented in phases over the next few years, with an initial pilot program expected to start in the summer of 2016.  According to the announcement, eMod will help provide a simpler authentication process, improved functionality, and a more user friendly interface and documents for applicants, and will streamline patent submission, review, and management processes, and increase accuracy of application processing and publication for examiners.

    The Office is seeking feedback regarding the new system.  Those in the patent community can review ideas that have already been submitted and vote or comment on those ideas here.  Comments can also be submitted at the Office's eMod webpage or by e-maling comments to eMod@USPTO.gov.


    U.S. and Brazil Announce Work Sharing Program

    INPILast month, the U.S. Patent and Trademark Office and Brazilian National Institute of Industrial Property (INPI) announced that U.S. Secretary of Commerce Penny Pritzker and Brazilian Minister of Development, Industry & Foreign Trade (MDIC) Armando Monteiro had signed a Joint Statement on Patent Work Sharing.  Pursuant to the Joint Statement, the USPTO and INPI "intend to commence cooperative activities, on or after the date of signature of this Joint Statement, including the implementation of a mutually beneficial work-sharing pilot program that facilitates the examination of patent applications that are commonly filed in the United States and Brazil."  The agreement between the two offices is part of broader government-wide efforts to expand trade and investment with Brazil.  According to the announcement regarding the Joint Statement, the USPTO's Office of Policy and International Affairs (OPIA) is now working closely with counterpart officials in the INPI to establish a technical framework for a future patent work-sharing program between the two offices, which is expected to be finalized by the end of summer.


    Google Chrome Browser to End Support for Java Plug-Ins — Impact on Use of EFS-Web and Private PAIR

    ChromeThe U.S. Patent and Trademark Office issued an e-mail Patents Alert notice last month noting that Google removed the default ability to use the Java plug-in from Chrome version 42.  The Office indicated that the modification will impact the ability of Chrome users to access EFS-Web and Private PAIR because Java is required for authentication into these systems.  However, the Office pointed out that there is a temporary workaround that will allow Chrome users to use the Java plug-in through September 2015 when Google plans to end support for Java plug-ins in its newest browser, Chrome version 45.  Information about that workaround can be found here.  The Office notes that Chrome users using version 45 and above will no longer be able to use the workaround after September 2015 and will therefore not be able to log into EFS-Web or Private PAIR.  According to the Office's announcement, "Oracle is recommending the use of alternative browsers such as Firefox, Internet Explorer, and Safari."  The Office also indicated that it is investigating any possible strategies to mitigate the impact of changes in the Chrome browser.  Additional information can be found on the Office's EFS-Web Announcements webpage.


    EFS-Web and Private PAIR Inaccessible with Microsoft Edge Browser

    Windows EdgeIn an advisory on the U.S. Patent and Trademark Office's EFS-Web Announcements webpage, the Office noted that EFS-Web and Private PAIR users updating to Windows 10 should be aware that the browser included with the new operating system, Microsoft Edge, does not support plug-ins and will not run Java.  As a result, the EFS-Web and Private PAIR cannot be accessed via Microsoft Edge.  The Office noted that to access the EFS-Web and Private PAIR using Windows 10, Oracle is recommending the use of alternative browsers such as Firefox and Internet Explorer.

  • CalendarAugust 10-11, 2015 – "Advanced Patent Prosecution Seminar 2015: Claim Drafting & Amendment Writing" (Practising Law Institute) – San Francisco, CA

    August 11, 2015 – Patent Quality Chat webinar series – Measuring Patent Quality – noon to 1:00 pm (EDT)

    August 12-14, 2015 – Advanced Patent Law Seminar (Chisum Patent Academy) – Seattle, WA

    August 13, 2015 – "Defending Patents in IPR Proceedings — Leveraging Motions to Amend and Preliminary Responses, Weighing Secondary Considerations" (Strafford) – 1:00 to 2:30 pm (EDT)

    August 20, 2015 – "Inducement to Infringe in Patent Litigation: Protecting IP Rights — Lessons from Commil USA v. Cisco Sys. Inc. and Leveraging Opinions of Counsel" (Strafford) – 1:00 to 2:30 pm (EDT)

    August 24, 2015 – Roadshow on Patent Quality and AIA Trials (American Intellectual Property Law Association and U.S. Patent and Trademark Office) – Santa Clara, CA

    August 26, 2015 – Roadshow on Patent Quality and AIA Trials (American Intellectual Property Law Association and U.S. Patent and Trademark Office) – Dallas, TX

    August 27, 2015 – "Meet the New Boss. Same as the Old Boss? Not Even Close under New Mayo/Alice Regime for § 101" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    August 27, 2015 – "Biosimilars: Regulation, Litigation and New Developments Patent Practitioners and Regulatory Attorneys Should Know" (American Intellectual Property Law Association) – 12:30 – 2:00 pm (Eastern)

    August 28, 2015 – Roadshow on Patent Quality and AIA Trials (American Intellectual Property Law Association and U.S. Patent and Trademark Office) – Alexandria, VA

    September 10, 2015 – Biotech Patent Law Road Show (American Intellectual Property Law Association) – Boston, MA

    September 10-11, 2015 - "Advanced Patent Prosecution Seminar 2015: Claim Drafting & Amendment Writing" (Practising Law Institute) – Chicago, IL

    September 17, 2015 – "Professional Negligence: Real-Life Case Studies in IP Malpractice & How to Avoid Them" (American Intellectual Property Law Association) – 12:30 – 2:00 pm (Eastern)

    September 18, 2015 – Developments in Pharmaceutical and Biotech Patent Law 2015 (Practising Law Institute) – San Francisco, CA

    September 22, 2015 – "The Evolving World of Biosimilars Litigation" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    September 24-25, 2015 - Advanced Patent Law Seminar (Chisum Patent Academy) – Washington, DC

    September 27-29, 2015 – 43rd Annual Meeting (Intellectual Property Owners Association) – Chicago, IL

    October 2, 2015 – Developments in Pharmaceutical and Biotech Patent Law 2015 (Practising Law Institute) – New York, NY

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

  • MBHB Logo 2McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar on "The Evolving World of Biosimilars Litigation" on September 22, 2015 from 10:00 am to 11:15 am (CT).  In this presentation, MBHB attorneys and Patent Docs authors Dr. Kevin E. Noonan and Dr. Andrew W. Williams will review the history of the BPCIA and the Amgen v. Sandoz case, including the potential implications of the Federal Circuit’s recent decision.  Topics to be addressed the webinar include:

    • The statutory framework of the BPCIA
    • The Sandoz application and subsequent litigation
    • Statutory construction at the district court and Federal Circuit
    • Prospects for Supreme Court review
    • Consequences of the Federal Circuit decision

    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.

  • Chicago #5The Intellectual Property Owners Association (IPO) will be holding its 43rd Annual Meeting on September 27-29, 2015 in Chicago, IL.  Among the presentations being offered at the annual meeting are:

    • U.S. Supreme Court Cases That Every IP Attorney Should Know About
    • Corporate IP Management Best Practices
    • Invalid IP: I Know It When I See It
    • The Nagoya Protocol: Conserving Biodiversity or Withering the Fruits of Innovation?
    • Patent Issues in Latin America — Special Focus in Brazil, Mexico, and Colombia
    • Best Practices in Patent Litigation: What Practitioners Need to Know Given Recent Procedural Changes
    • Double the Opportunity: Patent and Copyright Protection for Software after Alice and Oracle
    • Drafting an International Application
    • Utility & Patent Eligibility Standards
    • Post Grant Proceedings at the USPTO
    • How to Recover Your Attorney Fees from Your (by Definition) Bad Faith Litigation Adversary?

    IPO #2In addition, Hon. Sharon Prost, Chief Judge, U.S. Court of Appeals for the Federal Circuit, will present the luncheon keynote on September 28, and Herbert Wamsley, Executive Director, Intellectual Property Owners Association, will present the luncheon keynote on September 29.

    A program for the meeting, including an agenda, descriptions of the scheduled sessions, and list of speakers, can be obtained here.

    The registration fee for the meeting is $500 (government/academic), $975 (IPO members), or $1,475 (non-members).  Those interested in registering for the meeting can do so here.

  • AIPLA #1The American Intellectual Property Law Association (AIPLA) will be holding a Biotech Patent Law Road Show in Boston, MA on September 10, 2015.  The roadshow will focus on hot-button issues in biotech, providing in-depth discussions on:

    • Claim Drafting in a Post-Myriad/Mayo/Akamai/Ariosa World
    • Section 112 Challenges: The Balance Between Broad Claims and Enforcement
    • Thinking Forward: Life Sciences Patents in IPRs
    • Conflict Issues in a 21st Century Life Sciences Practice (Ethics Session)

    The registration fee for the program is $395 (AIPLA member rate), $545 (non-member rate), $150 (AIPLE government/student rate), or $225 (non-member government rate).  Those interested in registering for the program, can do so here.

  • AIPLA #1The American Intellectual Property Law Association (AIPLA) will be offering a webinar on "Professional Negligence: Real-Life Case Studies in IP Malpractice & How to Avoid Them" on September 17, 2015 from 12:30 – 2:00 pm (Eastern).  David Kramer and Theodore Nittis of Oswald Companies will address IP specific risk management strategies and will use actual malpractice claim scenarios experienced by their clients to demonstrate how employment of those strategies would have prevented such claims.

    The registration fee for the program is $145 (AIPLA member rate) or $195 (non-member rate).  Those interested in registering for the program, can do so here.

  • By Donald Zuhn

    Washington - Capitol #6Last month, in a letter to Congressional leadership, 79 Members of Congress expressed their support for the Innovation Act (H.R. 9) but sought inclusion of language in the bill "to preserve the integrity of the Drug Price Competition and Patent Term Restoration Act (commonly known as Hatch-Waxman), and the Biologics Price Competition and Innovation Act (BPCIA)."  Stating that "any patent litigation legislation must represent the views of the full spectrum of different industries and sectors reliant on a well-functioning U.S. patent system," the letter asserted that at least one additional change to the legislation was needed to address concerns of the life sciences community.

    According to the letter's signatories, "the patent challenge system created under the America Invents Act, specifically the IPR system, threatens to undermine the[] specialized patent resolution frameworks [i.e., Hatch-Waxman and the BPCIA] in a way that was not intended when Congress created it."  Explaining that "[p]atents are critically important for developing FDA-approved biopharmaceutical products," the Representatives note that "[u]nlike companies in other sectors, biopharmaceutical companies are not able to immediately capitalize on the value of their patents," and instead "must spend almost a decade and, on average, $2.6 billion, before they can receive approval from the FDA to bring new medicines to market."  In support for the Hatch-Waxman regime, the letter points out that generics currently make up 88% of all prescriptions in the U.S., up from 19% prior to enactment of Hatch-Waxman, and that generics saved the U.S. health care system almost $1.5 trillion between 2004 and 2013.  The letter also notes that meanwhile "investment in research and development (R&D) is at an all-time high and there were a record number of new medicines approved by the FDA in 2014, allowing patients to live longer healthier lives."

    The Representatives state that "[t]he IPR process, as implemented by the Patent and Trademark Office (PTO), must not be allowed to upset this delicate balance," and contend that Congress can address concerns of the life sciences sector "by including language in H.R. 9 to make clear that the IPR process does not apply to biopharmaceutical patents that are subject to challenge under Hatch-Waxman and BPCIA."  According to the signatories, such an approach "would protect the delicate balance Congress struck in Hatch-Waxman and BPCIA while in no way harming the intent behind the IPR process."

  • By Andrew Williams

    MicrosoftEarlier this week, we noted that parties wishing to challenge IPR Final Written Decisions from the PTAB on appeal to the Federal Circuit would face an uphill challenge.  However, even if that challenge is extremely difficult, it is not necessarily futile.  This was demonstrated by the Federal Circuit on June 16, 2015 when it remanded part of a PTAB decision in the Microsoft Corporation v. Proxyconn, Inc. case.  The Court held that even though it does not constitute error to use the "Broadest Reasonable Interpretation" (or BRI) standard for claim construction, it is error to adopt a construction that is "unreasonable," which the Board did for two of the construed claim terms.  Otherwise, the Court did not find error with the Board's validity determination with respect to the claims not impacted by the improperly construed claims.  The Federal Circuit also addressed, for the first time, the standards implemented by the Board for amending claims during IPR proceedings.  Specifically, the Court found that the Board's Idle Free decision included a permissible interpretation of the PTO regulations at least with respect to the burden placed on the patentee to demonstrate patentability of any claim amended in view of the prior art of record.  The Court did, however, stop short of indicating that it is proper to require the patentee to address patentability over the entirety of the prior art.

    At the risk of oversimplifying the technology at issue, the patent in this case, U.S. Patent No. 6,757,717, related to decreasing traffic over the internet.  Specifically, it sought to address the problem of sending files between computers multiple times when either the original computer, or an intermediary computer, already contained a copy of the file.  Basically, the computer wishing to access a particular file (the receiver/computer) sends a request to a sender/computer that has a copy of the file.  Instead of immediately sending the file, the sender/computer calculates a "digital digest," or code (our term), that can be used to uniquely identify the file.  This code is used by the receiver/computer to determine if it already has a copy of the file on its memory.  Only if the answer is negative does the sender/computer transmit the whole file over the internet.  The patent also envisioned an intermediary "gateway" computer which would use the code to determine whether a "caching" computer had a copy of the file that could be sent to the receiver/computer.  This is demonstrated in Figure 11 from the '717 patent, which was reproduced in the opinion:

    Figure 11
    Microsoft filed two IPR petitions related to the '717 patent, each challenging different claims.  The Board joined the two proceedings, and determined that claims 1, 3, 6, 7, 9-12, 14, 22, and 23 were unpatentable as anticipated, and claims 1, 3, and 10 were additionally unpatentable as obvious.  However, claim 24 survived.  Microsoft appealed the determination that claim 24 was found to be patentable, and Proxyconn cross-appealed almost everything else.  Chief Judge Prost wrote the decision for a unanimous panel that included Judge Lourie and District Judge Gilstrap from the Eastern District of Texas sitting by designation.

    Was the Use of the BRI Standard Revesable Error?

    Proxyconn first challenged the Board's use of the BRI standard.  While the appeal was pending, the In re Cuozzo case was decided.  The Federal Circuit in this case said it was bound by the Cuozzo decision to approve of the use of the BRI standard.

    However, the Court pointed out that even though the Board may construe the claims broadly, they may not do so unreasonably.  Therefore, for example, if the PTAB adopts a construction that is contrary to arguments made or positions taken during the original prosecution, it could be reversible error.  Moreover, "[a] construction that is 'unreasonably broad' and which does not 'reasonably reflect the plain language and disclosure' will not pass muster."  In other words, the construction cannot be divorced from the specification or the record.

    Was the Construction of the Claim Terms Really "Reasonable"?               

    Proxyconn next challenged the claim constructions as unreasonable.  The first related to the phrase "gateway . . . connected to said packet-switched network in such a way that network packets send between at least two other computers."  The Board adopted the construction proffered by Microsoft that the "two other computers" were not limited to just the sender/computer and the receiver/computer, but could encompass the gateway and caching computers.  As a result, it found claims 6, 7, and 9 anticipated by the "DRP" reference.

    The Federal Circuit did not find this construction to be reasonable.  A plain reading of the impacted claims indicated that the "two other computers" were meant to be alternatives to the gateway and caching computers.  Indeed, the term "other" denoted distinction between the "two other computers" and the gateway and caching computers separately identified in the claims.  Therefore, a construction that included them would be nonsensical.  Furthermore, the specification consistently used this term to distinguish the two computers from the gateway and caching computers.  Therefore, the Board's construction was determined to be unreasonably broad.

    Similarly, Proxyconn challenged the construction of the terms "sender/computer" and "receiver/computer."  Specifically, the Board construed these claim terms in such a way as to encompass the intermediary gateway and caching computers.  But, with similar logic as used above, the Federal Circuit found that such constructions did not reasonably reflect the language and disclosure of the '717 patent.

    Because the Board's determination of patentability was necessarily flawed with regard to the claims that contained any of these claim terms, the Federal Circuit vacated the findings of unpatentability of these claims and remanded for proceedings consistent with the opinion.  Because Microsoft filed a petition for panel rehearing at the end of July, the case has not yet made its way back to the PTAB.  It will be interesting to see how they handle the remand, and how fast they handle it, once it returns.  Without the "one-year-to-final-decision" time constraints, the PTAB may not feel compelled to deal with the remand in an expedited fashion.  We will, of course, monitor the case and report any interesting developments.

    Did the Board Properly Deny Proxyconn's Motion to Amend

    As another interesting aspect of this case, the Federal Circuit for the first time addressed one the largest criticisms levied against the PTAB for these new post-grant proceeding challenges to issued patents — the ability (or lack thereof) to amend the claims.  Proxyconn had moved to replace claims 1 and 3 with claims 35 and 36, respectively.  Microsoft alleged that the substitute claims were not patentable because they were anticipated by the prior art reference DRP, which was of record, but was not a reference cited when trial was instituted for these two claims.  The Board denied the motion for two reasons.  First, it found that Proxyconn had not met its burden of establishing a prima facie case of patentability.  Essentially, among other defects, it had failed to provide constructions of the newly added claim terms, failed to address the manner in which the claims were patentable over the art, and failed to identify the closest prior art.  Second, it rejected Proxyconn's argument that the Board was precluded from relying on the DRP reference.

    At center stage in this appeal was the "informative" decision Idle Free, which was decided by a six-member panel.  As such, even though it is not necessarily binding on other panels, it has been cited on numerous occasions in the denial of motions to amend.  Basically, the Idle Free decision clarifies that the burden is on the patent owner to show "a patentable distinction over the prior art of record and also prior art known to the patent owner."  Interestingly, because the DRP reference was of record in the case, the Federal Circuit made clear that it was not deciding whether every requirement in Idle Free constitutes permissible interpretations of the PTO's regulations.  As indicated in footnote 4, "[t]he Idle Free decision is not itself before us . . . ."  Therefore, it remains a question whether a patentee is properly required to provide a distinction over the all of the prior art (at least of which it is aware).

    But, with regard to the prior art of record, the Court found the Idle Free requirement to be reasonable.  First, it found that establishing "rules" within adjudicated cases was permissible.  While it might be advantageous to establish such rules with traditional notice and comment rule-making, the decision ultimately rests with the agency's discretion.  As such, the use of adjudication over rulemaking was not an abuse of discretion.  Second, the Court found that the Board acted reasonably when it interpreted its rules to require a patentee to show patentability over the art of record, because nothing in the statute or regulations prohibits it.  Moreover, it is consistent with the very nature of these IPR proceedings.  If the motion is granted, the claims will be added to an issued patent without further examination.  Therefore, to limit any challenge to only the art cited at institution could prevent the Board from denying the motion despite being in possession of art that undermines patentability.  Finally, the Court rejected Proxyconn's argument that such an interpretation was "fundamentally unfair."  Proxyconn was clearly aware of the DRP reference because it was a part of the entire proceedings.  It also had an opportunity to respond to Microsoft's opposition which cited the DRP reference, although it chose not to.  As such, the Court determined that this was not a case in which Proxyconn was taken by surprise and was not given the opportunity to respond.

    Microsoft Corporation v. Proxyconn, Inc. (Fed. Cir. 2015)
    Panel: Chief Judge Prost, Circuit Judge Lourie, and District Judge Gilstrap (sitting by designation)
    Opinion by Chief Judge Prost