• September 01, 2017
      Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co., Ltd. (Federal Circuit 2016-232, August 22, 2017) By David Emery In a concurring opinion by Judge Timothy Dyk (joined by Judge Wallach), Judge Dyk expressed that there are “serious questions as to the Board’s (and Director’s) interpretation of the relevant statutes and current practices” when expanding...
    • July 05, 2017
      Federal Circuit No. 2016-1599 (Fed. Cir. May 11, 2017) In Aylus Networks, Inc. v. Apple Inc. (Fed. Cir. No. 2016-1599, May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction and relied upon to...
    • June 15, 2017
      On June 12, 2017, the Supreme Court granted certiorari to review whether the America Invents Act’s provisions on inter partes review (IPR) violate the Seventh Amendment right to jury by extinguishing patent claims through a non-Article III court. Oil States Energy Services LLC v. Greene’s Energy Group LLC.1 The USPTO’s authority to decide IPRs does...
    • April 18, 2017
      The Patent Trial and Appeal Board recently denied Cover Business Method (CBM) review of an Internet advertising display patent assigned to KlausTech. The petitioner, Google, argued that the claim limitation “retaining … a record of the browser identity” should be construed as financial in nature because the specification describes determining compensation for publisher websites and...
    Patent Office Trials Blog
    • 9/1/2017
      For the third year in a row, Sughrue Mion has made Law360's annual list of the best law firms for minority equity partners. Sughrue was recognized for having a partnership tier that is 26.53 percent minority attorneys, demonstrating a relatively large proportion of racially diverse equity partners based on firm size.
    • 6/14/2017

      On June 12, 2017, the Supreme Court granted certiorari to review whether the America Invents Act's provisions on inter partes review (IPR) violate the Seventh Amendment right to jury by extinguishing patent claims through a non-Article III court. Oil States Energy Services LLC v. Greene's Energy Group LLC.1 The USPTO's authority to decide IPRs does not stem from Article III of the Constitution. Rather, this authority is firmly rooted in Article I. Article I gives Congress the authority "To promote the Progress of Science and useful Arts, by securing for limited Times to Writers and Inventors the exclusive Right to their respective Writings and Discoveries." In other words, Article I grants Congress the power to make patent laws. The IPR provision comprises a major part of Congress' most recent patent legislation, the America Invents Act.

    • 3/31/2017
      On December 9, 2016, the Court of Appeals for the Federal Circuit in a per curiuam decision affirming the determination of the International Trade Commission, which found no violation of Section 337 as to certain outdoor grill products that had been accused of infringement of a patent owned by A&J Manufacturing. A&J Manufacturing was the complainant in the underlying ITC investigation (337-TA-895). Outdoor Leisure Products was named as a respondent in that investigation, and A&J Manufacturing had sought to have Outdoor Leisure Products’ grills excluded from importation into the United States. During the investigation, the Commission was persuaded that redesigned grills made by Outdoor Leisure Products did not infringe A&J Manufacturing’s patent. A&J appealed that decision to the Federal Circuit, and Outdoor Leisure Products intervened in the Federal Circuit proceeding in support of the Commission. Outdoor Leisure Products is represented by Michael Dzwonczyk, Mark Boland, and Brian Shelton of Sughrue Mion. The Federal Circuit decision is A&J Manufacturing LLC v. U.S. International Trade Commission, No. 2015-1494.
    • 3/27/2017
      Congratulations to Jody Drake for admission to the Fellows of the American Bar Foundation. This honor is given to attorneys, judges, law faculty and legal scholars who have exhibited outstanding dedication to the welfare of their communities and to the highest principles of the legal profession. Membership to this esteemed group is by invitation only and is limited to one percent of the lawyers licensed to practice in each jurisdiction.
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    • 07/27/2017

      Regeneron creates an interesting, and highly controversial, intersection between prosecution inequitable conduct and litigation misconduct in U.S. patent law.  In particular, Regeneron raises questions regarding the proper implementation of Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011).

      Under Therasense, inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent.  Therasense established two requirements: 1) the inequitable conduct must be but-for material; and 2) the accused infringer must prove that the patentee acted with the specific intent to deceive the USPTO.  A prior art reference is but-for material if the USPTO would not have allowed a claim had it been aware of the undisclosed prior art.  The standard of proof for both the but-for materiality and the intent to deceive is clear and convincing evidence.

      Plaintiff Regeneron appealed from the Southern District of New York judgement that U.S. Patent No. 8,502,018 is unenforceable because of Regeneron’s prosecution inequitable conduct.  In detail, Regeneron's prosecutors withheld four references from the USPTO during prosecution, which were cited in a third-party submission in a related case and in European opposition briefs.  The District Court held that under Therasense: 1) the withheld references were but-for material; and 2) Regeneron was sanctioned for litigation discovery misconduct by drawing an adverse inference of specific intent to deceive the USPTO.  There was no trial for the intent to deceive.

      The technology of the ‘018 Patent is directed to mouse DNA coding for antibodies that are modified using human DNA in different ways.  As shown in the figure reproduced and annotated below, the mouse DNA coding includes a "variable" region toward the top of the "Y," and a "constant" region toward the bottom.

      Independent claim 1 of the ‘018 Patent recites:

      A genetically modified mouse, comprising in its germline human unrearranged variable region gene segments inserted at an endogenous mouse immunoglobulin locus.

      As shown in the figure reproduced above, Regeneron argued that the broadest reasonable interpretation (BRI) of claim 1 includes only the “reverse chimeric” embodiment in which the human DNA is inserted in only the variable region.  On the other hand, defendant Merus argued that the BRI of claim 1 additionally includes the “humanized” and “fully human” embodiments in which the human DNA is inserted in the variable and constant regions, mainly because of the claimed term “comprising.”

      The Federal Circuit agreed with the District Court and held that the withheld references were but-for material.  In particular, the Federal Circuit determined that the District Court correctly adopted Merus' BRI of claim 1, and that the withheld references taught modifying mouse regions with human regions and thus taught the humanized and fully human embodiments.  The Federal Circuit further agreed that the withheld references were not cumulative over the cited prior art.

      Moreover, the Federal Circuit agreed with sanctioning Regeneron for litigation discovery misconduct by drawing an adverse inference of specific intent to deceive the USPTO.  The litigation discovery misconduct included the following examples:

      improperly withholding and citing on privilege logs documents clearly not privileged (such as experimental data);

      withholding as privileged information where the privilege had been waived; and

      withholding evidence of prosecution counsels' reasoning and state of mind relevant to whether counsel had an intent to deceive.

      Drawing an adverse inference to sanction litigation misconduct was based on the law of the Second Circuit, namely, Residential Funding Corp. v. DE George Fin. Corp., 306 F.3d 99, 107 (2d Cir. 2002).  Notably, the Residential case is unrelated to U.S. patent law.

      In her long and vigorous dissent, Judge Newman argued that the District Court inferred the intent to device without clear and convincing evidence, contrary to the standard provided in Therasense.  For example, she argued, "there was no evidentiary record developed on intent to deceive, with no testimony and no opportunity for examination and cross-examination of witnesses."

      Regeneron raises many questions regarding whether Therasense is hopelessly eroded.  With respect to the but-for materiality, the Federal Circuit and the District Court both chose to adopt Merus’ BRI.  However, one is left to wonder whether a district court should be bound by evidence of an Examiner's BRI instead of adopting its own BRI as in this case.  With respect to the intent to device, Regeneron opens up the issues of whether prosecutors will be sanctioned for litigators' misconduct, whether U.S. patent law including Therasense controls over regional circuit law, and whether property rights would be taken without due process in similar cases.

    • 7/9/2017
      Inter partes review (“IPR”) has been popularly adopted and used as a strategy for invalidating patent claims due to its compact and expedited process. The Board is required to render an institution decision within 3 months of preliminary briefings on issues of claim patentability and a final decision within 12 months of any instituted proceeding. Such a time frame allows both a petitioner and a patent owner to reach a conclusion on the patentability dispute. Further, the expedited schedule allows each party to understand its relative strength of argument, leading to a settlement within a relatively short period of time as compared to a proceeding before a federal district courts, thereby saving time and expense in the patent dispute.
    • 06/12/2017

      In One-E-Way v. ITC, the Federal Circuit reversed the ITC's determination that the claim language "virtually free from interference" is indefinite, and remanded the case.

      One-E-Way owns U.S. Patent Nos. 7,865,258 and 8,131,391, which are directed to a wireless digital audio system designed to let people use wireless headphones privately without interference, even when they are using wireless headphones in the same space.  The patents share the same specification.

      At the ITC, the parties disputed whether the term "virtually free from interference" was indefinite, and the ITC confirmed the administrative law judge's summary determination, reasoning that one of ordinary skill in the art would not be able to discern with reasonable certainty what amount or level of interference constitutes ‘virtually free from interference.’

      On appeal, One-E-Way did not submit any extrinsic evidence to argue that “virtually free from interference” has any ordinary meaning to a person of ordinary skill in the art, so the indefiniteness inquiry therefore rests on the intrinsic evidence.  One-E-Way argues that the term is definite as meaning 'free from eavesdropping,' in view of the specification and the prosecution history. 

      Reviewing the intrinsic evidence, the court directed its attention to the specification describing that "private listening" feature of the invention is listening without interference from other user's wireless audio transmission devices.  The court also relied on a statement made by One-E-Way during prosecution of '885 patent that virtually eliminating interference could mean that eavesdropping cannot occur. 

      As a result, the majority decided that "virtually free from interference" is definite as meaning 'free from eavesdropping,' explaining that the term "virtually" does not expand the scope of the term "free from interference" without end because a system that permits eavesdropping is no longer captured by the asserted claims.
    • 06/07/2017

      Skky appealed the PTAB's decision in an IPR that Skky's patent (U.S. Patent No. 7,548,875) is obvious over a prior art reference (US 7,065,342, "Rolf").

      On appeal, Skky asserted that the claim term "wireless device means" invokes §112, para. 6, in an attempt to distinguishing over Rolf by importing limitations from the written description into the claims.  Skky argued that corresponding structure of "wireless device means" as described in the specification have multiple processors, which were missing in Rolf, and the claims should be also interpreted to require such elements.

      The Federal Circuit denied the argument on the grounds that the term "wireless device" is used by a skilled person in the art to designate structure and the claim does not recite any functions performed by "wireless device means."  In the claims of the '875 patent, the term "wireless device means" is not linked to or associated with any functional language.  Instead, the claims merely recite "wireless device means" as a recipient of media files transmitted from one or more servers.

      As a result, the court construed the claim under the broadest reasonable interpretation standard, and denied Skky's assertion regarding the multiple processors on the grounds that the specification includes an embodiment in which Skky's invention is implemented with software (i.e., without a need for additional processor) in a conventional cell phone having a single processor.
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