Patent Office Trials Blog
    • 3/28/2016
      Sughrue is pleased to announce that Alan Kasper, senior partner and head of DC's International Patent Group, has co-authored a book on the America Invents Act. The book, entitled "Patents After AIA: Evolving Law and Practice, was done in partnership with Bloomberg BNA. This comprehensive treatise provides a single reference guide to all the tactical and strategic decisions for patent professionals, following the most comprehensive revision in the U.S.'s patent laws.

    • 2/26/2016
      Docket Navigator analyzed data from PTAB for filings in 2015 which revealed the top law firms and attorneys filing petitions. The report listed 1797 filings for 2015; a 7% increase over 2014. Sughrue was among the top filers in the nation with 44 filings before the PTAB. Additionally, Sughrue attorneys William H. Mandir, Brian Shelton and Fadi Kiblawi were listed among the top attorneys representing litigants in the PTAB.
    • 2/26/2016
      Michael Dzwonczyk, member of Sughrue's litigation group and management committee, will participate in the upcoming Paragraph IV Disputes Conference in New York on April 25-26, 2016. The Paragraph IV conference is one of the pharmaceutical industries leading forums on Hatch-Waxman litigation.  Mr. Dzwonczyk is among the elite "who's who" that will gather to discuss and assess the implications of court cases, legislation and trends in the pharmaceutical industries and how these factors affect the patent process.   Mr. Dzwonczyk will address the topic of "Re-Evaluating Claim Construction and Markman Strategies Post-Teva".

      For registration information, please click here.

    • 2/23/2016
      Esteemed Partner, John Callahan, will participate in the upcoming Life Sciences Patent seminar in New York on February 23-24, 2016. Mr. Callahan will be joined by an equally impressive panel as they take on the topic of "Strategies for Avoiding or Overcoming the Growing Reach of Obviousness-Type Double Patenting in the wake of Gilead.

      For registration information, please click here.
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    • 4/7/2016

      Federal Circuit, April 7, 2016, 2015-1222

      Author: Joshua Dean

      The Federal Circuit affirmed claim rejections involving obviousness to combine references, finding the patent owner’s teaching away argument insufficient.

      The claims of Hubbell Incorporated's ("Hubbell") U.S. Patent No. 7,323,639 were subject to an ex parte reexamination and were rejected as being obvious in view of two combinations of references, first, a combination Hayduke et al. (US 6,133,531; "Hayduke") in view of Hartmann (US 1,557,526), and second, a combination of Berlin et al. (US 5,280,135; "Berlin") in view of Hartmann.

      In each of the combinations, the rejection acknowledged that neither Hayduke nor Berlin disclosed the following features of representative claim 1, but instead relied on Hartmann for these features: "…a base assembly comprising…at least one keyhole slot extending through the base assembly…wherein the at least one keyhole slot is accessible for selective adjustment of the base assembly after the base assembly is installed on the electrical outlet."  That is, the rejection relied on Hartmann for the claimed keyhole slot extending through a base assembly.

      Hubbell argued that it would not have been obvious to modify Hayduke's cover 10 to include Hartmann's keyhole slot because Hayduke describes: "The cover 10 of the present invention further preferably includes a pivotal wall plate insertable within the back body 40 for preventing direct access to the box which contains the outlets" Hayduke col. 9, lines 64-67.  Based on this, Hubbell argued that would teach away from adding holes in the adapter plate that would make the keyhole slot accessible because the holes would not prevent direct access to the outlet box.  Hubbell also argued that it would not have been obvious to use Hartmann's non-standard keyhole slot because Berlin teaches a cover with holes that "are sized and adapted to conform to the standards for electrical outlets and boxes" at Berlin col. 4, lns. 21-23.

      In response to Hubbell's arguments, it was noted that neither of Hayduke's nor Berlin's descriptions 'criticize, discredit, or otherwise discourage' investigation (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc. 567 F.3d 1314, 1327 (Fed. Cir. 2009)) into the invention as claimed, and therefore, the Federal Circuit affirmed the rejections.   In doing so, the Federal Circuit noted that the statements relied upon by Hubbell merely articulated a preference for an adapter plate that prevents direct access, which was insufficient to teach away. 

      Further, Hubbell also submitted evidence that their patent covered products which outsold similar products, but the Federal Circuit noted that the Board's rejections at least because Hubbell's products were "priced significantly lower than," the similar products, and therefore the Federal Circuit affirmed the Board's rejection of the claims.

    • 03/25/2016

      Author: Hyunseok Park

      In June 2015, the Federal Circuit decided that Sequenom's patent (US Patent No. 6,258,540) is not patent eligible for the reasons that the claims recite cell-free fetal DNA (“cffDNA”) which is a natural phenomenon, and that the remaining part of the claims such as using methods like PCR to amplify and detect cffDNA was well-understood, routine, and conventional activity at the time of the invention.  In December 2015, the Federal Circuit denied Sequenom's petition for en banc rehearing.

      On March 21, 2016, Sequenom filed a petition for a writ of certiorari with Supreme Court to review the Federal Circuit's decision.  The Question Presented provided in the petition is as follows.

      Whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon;(2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery?

      In the petition, Sequenom has presented the following three points as the reasons for granting the petition.

      I.                        The Federal Circuit's decision has dangerously overextended Mayo;

      II.                        The presented issue is vitally important; and

      III.                        The case is an ideal vehicle.

      First, with regard to point (I), the petition firstly indicated that the two-part test used in the Supreme Court's earlier decisions, Mayo and Alice, was not intended to serve as a fully developed legal rule that could be easily or mechanistically applied to all future cases as acknowledged by Mayo's author.  Thus, the petition requested that the Supreme Court clarify that its precedents permit patenting meritorious invention like the Sequenom  patent.

      Specifically, the petition discussed that the Supreme Court found that Diehr's method is patent eligible since the combination of recited technique was not known while each separate technique was already known.   The petition indicated that Sequenom's patent is like Diehr's method since the phenomenon the inventors discovered motivated them to teach a new method that no one was practicing, and whose combined steps were in fact the opposite of a conventional approach that had previously treated the key materials as waste.

      In addition, the petition stressed that Section 101 forecloses claims that preempt essentially all uses of a natural phenomenon-not claims foreclosing only particular methods of using them that the inventor has disclosed.  The petition criticized the Federal Circuit's rationale that once a formalistic application of Mayo's two-part test suggests that the claims combine an unpatentable discovery with conventional techniques, preemption concerns are fully addressed and made moot, and requested the Supreme Court to clarify Mayo's breadth.

      Then, the petition argued that the Federal Circuit broadens the breadth of Mayo as it interpreted Mayo to require invalidating patents whenever they incorporate a natural law or phenomenon and recite techniques that are separately well-known, conventional, or routine.  In particular, it criticized the Federal Circuit's interpretation of Mayo by presenting three examples (i.e., Diehr's invention, etc.), which were treated as patent eligible, but would be patent ineligible under the Federal Circuit's interpretation.  Moreover, the petition argued that the Federal Circuit's reading of Mayo leads to ironic and unacceptable results since such an interpretation would invalidate inventions which recombine only well understood and readily available techniques to achieve breakthrough results.

      Second, with regard to point (II), the petition stressed the importance of the presented issue based on the following points.

      i.                        Support of trustworthy amici (e.g., twelve different briefs supported rehearing);

      ii.                        Necessity of addressing the question on whether or not patents will ever be available in biomedical field; and

      iii.                        Necessity of addressing the discordance with foreign jurisdictions.

      Third, with regard to point (III), the petition stressed that this case is an ideal vehicle for clarifying the Supreme Court's position on patent eligibility of the patent that combined and utilized man-made tools in a new way that revolutionized a field.

      Now, the ball is back to the Supreme Court.  And soon, the Supreme Court will decide whether or not the Court grants the petition and hears this case.
    • 3/21/2016

      Federal Circuit, March 21, 2016, 2015-1478

      Author: Joshua Dean

      The Federal Circuit affirmed claim rejections even in view of Appellant's arguments that claim limitations were misinterpreted and that commercial reasons would have prevented the combination of references relied on by the rejection.

      The claims of Hagenbuch's U.S. Patent No. 8,014,917 and its continuation US Patent No. 8,532,867 were found unpatentable during inter partes review as being obvious of JP H03-085412 (Apr. 10, 1991; "Aoyanagi") and one or more of WO 90/03899 (Apr. 19, 1990; "Vollmer") and US 4,939,652 ("Steiner).

      The Appellant argued that, in contrast to the rejection, Aoyanagi does not reasonably suggest the claimed "detecting a collision of the vehicle in response to a sudden change in the velocity of the vehicle" because Aoyanagi merely suggests detecting a collision when a vehicle brake is activated, in contrast to many different conditions described by Appellant's specifications which discuss detection of all crashes based on any sudden changes in velocity.  As such, the Appellant believed that the claims were too narrowly interpreted during the rejection, but the Federal Circuit noted that the claims did not require the Appellant's alleged distinction, and as such, the Federal Circuit affirmed the rejections.

      The Appellant also argued that Aoyanagi was not concerned with recording all types of information which was suggested by the secondary reference Steiner, and therefore, it would not have been obvious to combine these references at  least because of unnecessarily increasing the cost and risk of failure of Aoyanagi's disclosure; however, the Federal Circuit noted that the combination would have been obvious because there would have been a reasonable expectation of success to combine these references.

      Further, Appellant also argued that the successful sales of the Petitioner’s commercial product alleged to embody the patented technology demonstrated the claims at issue would not have been obvious, but the Federal Circuit responded by noting that the Appellant did not provide a connection between the claimed elements and the presented successful sales information, and therefore, the Federal Circuit affirmed the rejections. 

    • 03/16/2016
      Diagnostic tests are significant and essential steps in clinical decision making.  Among such tests, those using biomarkers have developed greatly along with the success in the field of molecular biology.  As such diagnostic tests become a crucial part of the health industry, more patent applications directed to diagnostic methods have been filed.
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