Blog

Last week I reported The Supreme Court unanimously decided that computer implemented business methods are not patent eligible subject matter. See Alice Corp Ruling Spells Trouble but There May Be a “Diamond” in the Rough for Business Method, Software, and Biotech Patents. Now, less than a week later the US Patent and Trademark Office (USPTO) has issued an instruction memorandum to its Patent Examining Corps for analyzing patent claims involving abstract ideas. See USPTO Preliminary Examination Instructions.

In Triton Tech Of Texas, LLC v. Nintendo Of America, Inc.[1] the Federal Circuit affirmed a ruling by the United States District Court for the Western District of Washington that Triton’s U.S. Patent No. 5,181,181 (“’181 Patent”) was invalid for indefiniteness. The case revolved around the claims of the ‘181 Patent and the use of a Wii RemoteTM with a computer. The patent had claims reciting an input device that provided information to the computer about cursor movement much like a conventional mouse, except that the information provided by the ‘181 device was related to movement in three dimensions. The claimed input device included acceleration sensors, rotational rate sensors, an analog-to digital converter, buffer memory, and an “integrator means associated with said input device for integrating said acceleration signals over time to produce velocity signals for linear translation along each of … first, second and third axes.”[2]

So, what are the implications of this decision? What does it mean for business method patents, software, and even the biotech industry? If Justices Sotomayor, Ginsburg, and Breyer had their way, business method patents would essentially be dead and software patents would be very hard to come by. However, there is a ray of hope. […]

This is the third article in a review of recent patents in the area of Fluid Catalytic Cracking (FCC). The first article reviewed patents on catalyst additives, and demonstrated that relatively few patents had recently issued on FCC additives (e.g., gasoline sulfur reduction catalysts), likely reflecting the current use of gas oil hydrotreaters and naphtha hydrotreaters/desulphurizers, which reduce the need for such additives. The second article reviewed patents related to zeolites, and demonstrated that trends in this area reflected an emphasis on the mesoporosity of those zeolites. The current article covers recent patents relating to cyclones.

The Food and Drug Administration (FDA) has issued a regulation establishing a list of “qualifying pathogens” under the Generating Antibiotics Incentives Now (GAIN) act. Gain, which came into force back in 2012 as part of the Food and Drug Administration Safety and Innovation Act (FDASIA), provides strong incentives to encourage development of new antibacterial and antifungal drugs for treating serious or life-threatening infections. Under GAIN, new qualifying drugs would be awarded an additional five years of exclusivity, priority review, and eligibility for fast track designation. Based on analyses conducted both in the proposed rule and in response to comments, the FDA has now added additional “qualifying pathogens” to the list of pathogens proposed back in 2013. New drugs intended to treat serious or life-threatening infections caused by one of these listed pathogens may be eligible for the GAIN incentives. The new rule takes effect on July 7, 2014. Senator Richard Blumenthal, who has been a strong proponent of Connecticut’s biotechnology industry was originally responsible for introducing the legislation that resulted in the addition of GAIN to FDASIA.

In Nautilus, the Court deals with the complex question of patent claim construction and scope in view of the standard for definiteness (in layman’s terms, whether the patent claim is clearly written and defined in the patent disclosure). The governing statute here is the second paragraph of 35 USC § 112 (“definiteness”), which states that a patent “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention”. If a patent fails to meet this requirement, the claims can be found invalid for being “indefinite”.

This past Monday was a busy day for the Supreme Court. It handed down two unanimous decisions, each overturning lower Federal Circuit Court rulings. In Nautilus, Inc. v. Biosig Instruments, Inc., the Court dealt with the esoteric question of patent claim construction and scope in view of the standard for definiteness (in layman’s terms, whether the patent claim is clearly written and defined in the patent disclosure). In Limelight Networks, Inc. v. Akamai Tech. Inc., the Court dealt with the more straightforward question of whether a party, who only carries out some of the steps of a method patent, is liable for infringement if it encourages others to carry out the remaining steps – even if there would otherwise be no direct infringement. I discuss the Limelight case in this article. The Nautilus case will be discussed in a future article.

On May 21st Senator Patrick Leahy (D-VT) announced he was yanking the Patent Transparency and Improvements Act (S. 1720) he had introduced last November. This Bill represented the Senate’s attempt to work towards compromise legislation to trim the broader – and certainly more controversial – House Bill (H.R. 3309) that was passed last December. Just the day after Senator Leahy’s announcement, the House held a hearing at which legislation focused on regulating abusive patent infringement demand letters was discussed. This demand letter legislation was proposed by Rep. Lee Terry (R-NE) in a draft Bill entitled “Bill to Enhance Federal and State Enforcement of Fraudulent Patent Demand”. Representative Terry remarked that the Senate, by pulling its Bill now “puts us in a position where we have to do something”.

The rapidly changing landscape of intellectual property law makes it challenging for experts to stay current. Imagine how much more difficult it is for scientists, engineers, and business leaders, who experience IP issues indirectly and less frequently, to appreciate the law’s contours. If you’re already an IP expert, Top Ten Patent Myths will underscore or help you better understand what your in-house business and R&D colleagues or your client groups may not adequately understand about IP matters. If you’re not an IP attorney, you’ll gain a better understanding of patent law and practice, and you’ll quickly recognize when a colleague has fallen victim to one of these “top ten” common misconceptions. Dr. Jonathan Schuchardt, Partner at Dilworth IP will be presenting a free webinar entitled Top Ten Patent Myths on Wednesday, June 25th from 1pm – 2pm EDT. Click through to register for this event.

When I was your age, and Pluto was a planet, “obvious to try” was not the standard for evaluating patentability under 35 USC § 103. In KSR v. Teleflex, the US Supreme Court qualified this by rejecting the Federal Circuit’s “TSM” test in favor of a more flexible standard. Thereafter, a skilled person might respond to a “design need” or “market pressure” to solve a problem having only a “finite number of predictable solutions.” Such an application of “common sense” would be unpatentable and “obvious to try.” Perhaps your patience has also worn thin in considering the possibilities?

Recent Federal Circuit decisions continue to shape the law of obviousness and the meaning of “obvious to try.” Here are three examples: