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    • 5/13/2016
      Rolls-Royce Motor Cars Limited and Rolls-Royce Motor Cars NA, LLC (collectively RR) were recently successful in a proceeding filed against a rapper who records and sells music, and performs under the name Rolls Royce Rizzy.
    • 4/11/2016
      In ClearCorrect Operating LLC v. U.S. International Trade Commission, [1] the Federal Circuit held that the ITC lacks authority over the electronic transmission of digital data into the United States.  Central to the court's holding was the determination that digital data is not an "article" within the meaning of 19 U.S.C. §1337(a)(1).
    • 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.
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