Rajan Law Office Blog - Rajan Law Office, LLC | Intellectual Property & Litigation

treatment claims patent eligible, rules federal circuit

3/15/2019

A Federal Circuit panel reversed a district court's grant of motion for judgment on pleadings that the asserted claims were patent ineligible because the appellee's proposed claim constructions failed to render the claims invalid. Natural Alternatives Int'l v. Creative Compounds, LLC, No. 2018-1295 (Fed. Cir. Mar. 15, 2019). Natural Alternatives is the owner of patents relating to dietary supplements containing Beta-alanine, an amino acid, that helps to increase the anaerobic working capacity of muscle. Natural Alternatives sued Creative Compounds and the S.D. Cal. court granted Creative's motion for judgment on pleadings under Rule 12(c) holding that the asserted claims lacked inventive concept rendering them patent ineligible. Using the proposed claim constructions of Natural Alternatives, the district court held the asserted claim 1 is directed to the natural law because "ingesting certain levels of beta-alanine, a natural substance, will increase the carnosine concentration in human tissue and, thereby, increase the anaerobic working capacity in a human." Claim 1 recited, in part, "effective to increase beta-alanylhistidine dipeptide synthesis in the tissue...wherein the amino acid is provided through a dietary supplement." In reversing the district court, the Federal Circuit panel consisting of Judges Moore, Reyna and Wallach reasoned that the asserted claims are "treatment claims" and administering certain quantities of beta-alanine results in specific physiological benefits for athletes engaged in intensive exercise and the claims embodies this discovery requiring administration of certain dosage. Judge Reyna concurred with the panel's decision to reverse the district court's grant of motion for judgment but dissented from the majority's Section 101 analysis.
Full text of the opinion is available here.

ptab designates joinder decision as precedential

3/13/2019

On March 13, 2019, PTAB designated Proppant, a decision involving same party and issue joinder, as precedential.
Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38):

Federal circuit reverses ptab's ipr ruling, in a setback to apple

3/8/2019

On March 3, 2019, the Federal Circuit reversed the PTAB's IPR decision that held the challenged claims as obvious. Personal Web Tech., LLC v. Apple, Inc., No. 2018-1599 (Fed. Cir. March 8, 2019). Apple filed an IPR petition against US7,802,310 asserting multiple grounds of unpatentability. Board issued a final written decision concluding that Apple had demonstrated by a preponderance of evidence that the challenged claims were obvious in view of prior art references. The '310 patent is directed to a system that uses content-based identifiers for various purposes in data processing systems.

Full text of the opinion is available here.

infringement action waives sovereign immunity defense to section 101 challenge

2/26/2019

On Feb. 26, 2019, the Federal Circuit affirmed the district court's motion to dismiss for failure to state a claim because the asserted claims were invalid under Section 101. Univ. of Fla. Research v. General Elec. Co., 2018-1284 (Fed. Cir. Feb. 26, 2019). University of Florida, the owner of US 7,062,251 directed to managing critical care physiologic data using data synthesis technology, sued General Electric for infringement. GE filed a Rule 12(b)(6) motion to dismiss arguing that the patent claims are directed to ineligible subject matter. The N.D. Fla. court granted the motion and applying the Alice test determined the claims to be directed to an abstract idea and lacking an inventive concept. Univ. of Florida appealed arguing that sovereign immunity precludes a Section 101 challenge.
In affirming the district court's decision, the Federal Circuit held that (a) the district court had subject matter jurisdiction because the plaintiff waived its sovereign immunity by bringing an infringement action and Section 101 eligibility challenge is a defense to infringement, and (b) the patent claims are directed to abstract idea of "collecting, analyzing, manipulating, and displaying data".
Full text of the opinion is available here.

Supreme court affirms federal circuit's on-sale bar decision in helsinn

1/22/2019

On Jan. 22, 2019, the U.S. Supreme Court unanimously affirmed Federal Circuit's decision regarding "on sale" bar under AIA's 35 USC 102(a)(1) by holding that the catchall phrase "otherwise available to the public" did not alter the meaning of "on sale." Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 586 U.S. ___ (2019). Petitioner Helsinn, a Swiss pharma, acquired rights to palonosetron, the active ingredient in Aloxi. Helsinn submitted protocols for Phase III clinical trials for 0.25mg and 0.75mg dose of palonosetron. Helsinn and MGI Pharma entered into a license agreement, and a supply and purchase agreement. Both agreements included the dosage information and MGI disclosed these agreements in its SEC 8K filing after redacting the dosage information. Two years thereafter, Helsinn filed a provisional patent application covering the above dosages and the asserted patent issued from an application filed on May 2013 claiming priority to the provisional application. Teva filed an ANDA and asserted that the patent was invalid because the 0.25mg dose was "on sale" more than one year before Helsinn filed the provisional patent application.
The district court concluded that the "on sale" provision did not apply because the public disclosure of the agreements did not disclose the dosages and therefore the invention was not "on sale" before the critical date. The Federal Circuit reversed concluding that "if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale" to fall within the AIA's on-sale bar. In affirming the Federal Circuit, the Supreme Court reasoned that the Court's precedence suggest that a sale or offer of sale need not make an invention available to the public and that "secret sales" can invalidate a patent. According to the Court, the phrase "on sale" had acquired a well-settled meaning when the AIA was enacted and that Congress did not intend to upset that precedent with the addition of a broad catchall phrase. The Court then held that Congress did not alter the meaning of "on sale" when it enacted the AIA and that an inventor's sale of an invention to a third party who is obligated to keep the invention confidential can qualify as a prior art under 35 USC 102(a).
The takeaway from the Supreme Court's decision is that secret sales can be prior art. Any patent application filing must consider the date of such sales for prior art purposes.
Full text of the opinion is available here.

ttab must consider all evidence and arguments regarding likelihood of confusion

1/14/2019

On Jan. 14, 2019, the Federal Circuit vacated the Trademark Trial and Appeal Board's (TTAB) affirmance of an examiner's refusal to register the mark "GUILD MORTGAGE COMPANY" because TTAB failed to consider all of the evidence and arguments. In re Guild Mortgage Co., No. 2017-2620 (Fed. Cir. Jan. 14, 2019). Guild, a mortgage business, applied to register "Guild Mortgage Company" under class 36 for "mortgage banking services." Registration was refused due to likelihood of confusion between Guild's mark and mark "Guild Investment Management" registered in Class 36 for "investment advisory services." Examiner concluded a likelihood of confusion based on her findings that the marks, nature of services, and trade channels were similar and the Board affirmed the findings.
In vacating the Board's decision, the Federal Circuit enumerated the Du Pont factors that must be considered in a finding of likelihood of confusion, namely (1) the similarity/dissimilarity of marks in their entireties as to appearance, sound, connotation and commercial impression; (2) similarity/dissimilarity and nature of the goods/services as described in an application or registration or in connection with which a prior mark is in use; (3) similarity/dissimilarity of established likely-to-continue trade channels; (4) conditions under which and buyers to whom sales are made, i.e., "impulse" v. careful, sophisticated purchasing; (5) fame of prior mark (sales, advertising, length of use); (6) number and nature of similar marks in use on similar goods; (7) nature and extent of any actual confusion; (8) length of time during and conditions under which there has been concurrent use without evidence of actual confusion; (9) variety of good on which a mark is or is not used (10) the market interface between applicant and the owner of prior mark (11) the extent to which applicant has a right to exclude others from use of its mark on its goods (12) extent of potential confusion, i.e., whether de minimus or substantial (13) any other established fact probative of the effect of use. The court reasoned that the Board erred in failing to address Guild's argument and evidence related to DuPont factor 8. Particularly, Guild argued that the registrant and Guild have coexisted in business for over 40 years and operated in the same geographic market without any evidence of actual confusion.
Full text of the opinion is available here.

uspto issues revised examination guidelines on sections 101 and 112

1/4/2019

On January 4, 2019, the USPTO announced revised examination guidelines on Sections 101 and 112, evaluating subject matter eligibility and application of Section 112 to computer-implemented inventions, respectively. The guidelines go into effect on Jan. 7, 2019.
Under the guidelines, examiners are instructed to determine whether a patent claim is directed to a judicial exception under the first step of the U.S. Supreme Court's Alice/Mayo test and whether the abstract idea can be grouped as mathematical concepts, certain methods of organizing human activity, or mental processes. Examiners are to determine whether a claim recites a judicial exception and if the exception is integrated into a practical application. A claim that meets these conditions will be determined to be not directed to a judicial exception. On the other hand, a claim that recites a judicial exception, but is not integrated into a practical application, will be evaluated for inventive concept (Step 2B) to determine subject matter eligibility.
The abstract idea grouping includes: (1) mathematical concepts--mathematical relationships, mathematical formulas/equations, mathematical calculations; (2) certain methods of organizing human activity--fundamental economic principles or practices (hedging, insurance, mitigating risk), commercial or legal interactions (agreements in the form of contracts, legal obligations, advertising, marketing/sales activities/behaviors, business relations), managing personal behavior/relationships/interactions between people (social activities, teaching, following rules/instructions); (3) mental processes--concepts performed in human mind (observation, evaluation, judgment, opinion)
The practical application may be shown as: (1) an improvement in the functioning of a computer or improvement to other technology or technical field; (2) effect a particular treatment or prophylaxis for a disease or medical condition; (3) implements a judicial exception in conjunction with a particular machine or manufacture that is integral to claim; (4) effects a transformation or reduction of particular article to a different state or thing; and (5) applies or uses the judicial exception in some other meaningful way beyond linking the use of the judicial exception to a particular technological environment.

The Section 112 guidance emphasizes various issues with regard to 112 analysis as it relates to computer-implemented inventions. Specifically, it addresses proper application of means-plus-function claiming under 112(f), of the definiteness requirement under 112(b), and of the written description and enablement requirements under 112(a).

Full texts of the guidelines are available here--Section 101, Section 112

Rules for playing dice game patent-ineligible

12/28/2018

A Federal Circuit panel consisting of Judges Chen, Mayer and Bryson ruled that the method claims directed to rules for playing a dice game is patent-ineligible subject matter where the only arguable inventive concept relates to the dice markings. In re Marco Guldenaar Holding B.V., No. 2017-2465 (Fed. Cir. Dec. 28, 2018). Marco Guldenaar Holding B.V. filed a patent application directed to dice games intended to be played in casinos. Claim 1 recited, in part, a method of playing a dice game comprising "providing a set of dice, the set of dice comprising a first die, a second die, and a third die, wherein only a single face of the first die has a first die marking, wherein only two faces of the second die have an identical second die marking, and wherein only three faces of the third die have an identical third die marking." Examiner rejected claim 1, and other claims, as directed to an abstract idea of rules for playing a game which is a "method of organizing human activities." The claims were also rejected as obvious over matters old and well known to dice games applying the printed matter doctrine. The Board affirmed the rejections and the applicant appealed.

In affirming the Board's decision, the court reasoned that the claimed method of playing a dice game including placing wagers on whether certain die faces will appear face up is directed to a method of conducting a wagering game that was held patent-ineligible in In re Smith, 815 F.3d 816 (Fed. Cir. 2016). In dismissing the appellant's argument that the die markings on one, two, or three die faces amounts to "significantly more" than an abstract idea, the Court held that the markings constitute printed matter that falls outside the scope of Section 101 and the method of playing a dice game does not recite an inventive concept sufficient to transform the claimed subject matter patent-eligible. The alternative arguments based on obviousness were not reviewed by the court as the rejection of the appealed claims were affirmed under Section 101.

Full text of the opinion is available here.

rule 36 judgment has collateral estoppel effect

12/10/2018

On December 10, 2018, the Federal Circuit affirmed the PTAB's decisions finding that Apple had met its burden of proving the challenged claims as obvious as VirnetX was collaterally estopped from relitigating whether a prior art reference was a printed publication. VirnetX Inc. v. Apple, Inc., No. 2017-2490, -2494 (Fed. Cir. Dec. 10, 2018) Apple filed two IPRs challenging US 8,504,696 as obvious over a US patent and printed publication RFC 2401. VirnetX argued that RFC 2401 was not a 102(b) prior art but the Board disagreed and invalidated the challenged patent. During pendency of appeal in this case, the Federal Circuit affirmed the Board's decisions, in a Rule 36 judgment, in another case between the same parties (VirnetX I) in which the Board found the RFC2401 to be a printed publication for 102b analysis. Subsequent to the VirnetX I decision, Apple filed a notice of supplemental authority in this case notifying the court of the relevance of the Rule 36 judgment in VirnetX I arguing that VirnetX was collaterally estopped from relitigating the printed publication issue.

On appeal, the Federal Circuit stated that a party is collaterally estopped from relitigating an issue if: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. According to the court, a Rule 36 judgment may serve as a basis for collateral estoppel if the issue was essential or necessary to the Rule 36 judgment. In affirming the Board's decision here, the court reasoned that the question of whether RFC 2401 was a printed publication was essential to the Rule 36 judgment in VirnetX I since each ground of unpatentability that VirnetX appealed in VirnetX I relied on RFC 2401.
Full text of the opinion is available here.

Patent issue date is reference point for double patenting rejection

12/7/2018

On December 7, 2018, the Federal Circuit held that obviousness-type double patenting must consider the issuance date of the patent as the reference point for rejection where the patent issues from an application filed prior to June 8, 1995. Novartis Pharm. Corp. v. Breckenridge Pharm. Inc., No. 2017-2173 (Fed. Cir. Dec. 7, 2018) Novartis is the owner of two patents US 5,665,772 and 6,440,990 that are directed to the compound everolimus and methods of treatment using the compound, respectively. Everolimus is an active ingredient in Zortress and Afinitor used to treat certain cancers. Both '990 and '772 patents claim the same priority date. The '990 patent was filed after June 8, 1995 and expired on Sept. 23, 2013, i.e., 20 years from earliest effective filing date. The '772 patent was filed before June 8, 1995 and expired on Sept. 9, 2014, 17 years from the issuance date but due to a fie-year patent term extension, the term of the '772 patent expires on Sept. 9, 2019.

Novartis sued ANDA filers Breckenridge, Par, and West-ward Pharma for infringing certain claims of the '772 patent. In the district court, the defendants conceded that their proposed products would infringe the '772 patent and the parties stipulated that the asserted claims would be invalid if the district court found the '990 patent to be a proper double patenting reference to the '772 patent. Relying on the Federal Circuit's decision in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014), which held that a later-filed but earlier-expiring patent can serve as a double patenting reference for an earlier-filed but later-expiring patent, the district court found the '990 patent to be a proper double patenting reference for the '772 patent. Novartis appealed the decision.

On appeal, the Federal Circuit reversed the lower court's decision as it erred in using the '990 patent as a reference for the '772 patent in its obviousness-type double patenting determination. Writing for the panel, Judge Chen reasoned that the change in patent term law under the Uruguay Round Agreements Act of 1994 changed the double patenting analysis and unlike the patents in Gilead which were both post-URAA, the '772 patent is pre-URAA and the '990 patent is post-URAA and the 17-year term granted to the '772 patent is not an unjustified extension of time.

Full text of the opinion is available here.