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Missed Connection: Avoid Claim Construction Rendering Independent Claim Narrower Than Dependent Claim

by Tessa Kroll | Apr 14, 2022 | Patents

The US Court of Appeals for the Federal Circuit vacated a district court’s claim constructions concerning generic independent claims that were amended after a species restriction requirement, because the district court disregarded the doctrine of claim differentiation after incorrectly concluding that the examiner had mistakenly rejoined withdrawn claims. Littelfuse, Inc. v. Mersen USA EP Corp., Case No. 21-2013 (Fed. Cir. Apr. 4, 2022) (Prost, Bryson, Stoll, JJ.)

Littelfuse owns a patent directed to a fuse end cap for providing an electrical connection between a fuse and an electrical conductor. The specification teaches three embodiments of the invention:

A single-piece machined end cap comprising a mounting cuff and a terminal
A single-piece stamped end cap comprising a mounting cuff and a terminal
A two-piece assembled end cap comprising a mounting cuff, a terminal and a fastening stem attaching the mounting cuff to the terminal.

The originally filed claims included independent claims covering an end cap with a mounting cuff and a terminal, and dependent claims directed to the three embodiments. The claims directed to the two-piece assembled end cap embodiment contained the limitation that the terminal is press-fit onto the fastening stem.

During prosecution, the examiner issued a restriction requirement, asserting that the independent claims were generic to the three species in the dependent claims. Littelfuse elected to prosecute the assembled end cap species and the examiner withdrew the claims directed to the other embodiments. In response to a novelty rejection, Littelfuse amended the independent claims by adding the fastening stem element without specifying that the terminal is press-fit onto the stem. After allowing the amended independent claims, the examiner concluded that the previously withdrawn claims “require all the limitations of the . . . allowable claims,” and thus rejoined them.

Littelfuse sued Mersen for selling allegedly infringing fuses. The parties asked the district court to determine whether the fastening stem element in the independent claims limited Littelfuse’s patent to multi-piece end caps, despite the rejoined dependent claims being directed to one-piece embodiments. The district court found that the claim language, the specification and the prosecution history required the invention to have a multi-piece construction. First, the district court determined that the plain meaning of “fastening stem” was “a stem that attached or joins the other two components of the apparatus.” The district court then noted that the fastening stem was only mentioned in the specification in relation to the multi-piece embodiment in which the terminal is joined to the mounting cuff by the fastening stem. While Littelfuse argued that the US Patent & Trademark Office’s rejoining of the withdrawn claims meant that the independent claims covered unitary and multi-piece embodiments, the district court reasoned that the claims were rejoined based on a “misunderstanding” because they referred to the original independent claim, which did not include a fastening stem. In light of the district court’s finding that the independent claims covered only a multi-piece apparatus, the parties stipulated to non-infringement. Littelfuse appealed.

Applying the doctrine of claim differentiation, the [...]

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Eighth Circuit Defends Use of Term “Patent Troll,” Vacates Injunction against Infringement Defendant

by Paul Devinsky | Mar 24, 2022 | Patents

The US Court of Appeals for the Eighth Circuit vacated an injunction restraining defendants from engaging in certain allegedly harassing conduct because there was no evidence tying the defendants to the alleged misconduct and reassigned the case to a new district judge to obviate any doubts about the judge’s impartiality. Tumey v. Mycroft AI, Inc., Case No. 21-1975 (8th Cir. Mar. 4, 2022) (Erickson, J.)

Tod Tumey is a lawyer who represents Voice Tech Corporation in patent litigation against Mycroft AI, an open-source network focusing on voice assistance technology. Tumey separately sued Mycroft on his own behalf, alleging that Mycroft retaliated against him for representing Voice Tech by launching or inspiring a series of cyberattacks, hacking attempts and harassing phone calls (“heavy-breathing phone calls”) against Tumey, his law firm and his family.

Mycroft had publicized its involvement in the underlying patent litigation and shared negative views about “bogus patents” and “patent trolls,” including statements that it is “better to be aggressive and ‘stab, shoot, and hang’ them, then dissolve them in acid.” Mycroft posted on its blog links to Tumey’s “confidential correspondence,” as well as documents in the underlying patent infringement lawsuit. Mycroft also posted updates on litigation developments with headlines such as “Mycroft Defeats Patent Trolls … Again … For Now.” The company cautioned patent trolls to “stay away” from Mycroft because “You’ll get your ass kicked,” and posted that “Rather than pay the troll toll, we decided to accept the fight.” In the underlying patent litigation, Voice Tech moved for an order requiring decorous and civil conduct by the parties, including a request that Mycroft cease using the term “patent troll.” The district court granted the order, which Mycroft viewed as sufficiently narrow and limited in scope such that it was willing to comply with the restrictions rather than appeal.

In the case brought on his own behalf, Tumey sought a temporary restraining order or, in the alternative, a preliminary injunction to prevent the cyberattacks, phishing and harassing phone calls that he and his family were experiencing and for which Tumey believed Mycroft was responsible. Mycroft opposed the proposed temporary restraining order (TRO), arguing that there was no evidence to attribute any of the alleged conduct to Mycroft. Mycroft also submitted sworn declarations averring that no one associated with Mycroft was involved in cyberattacks or harassment. The district court set a teleconference on the “Motion for Temporary Restraining Order.” About an hour before the set time for the hearing, Tumey circulated to the court and counsel a new proposed order, now styled as a preliminary injunction (PI). At the hearing, Mycroft objected to converting the request for a TRO to a PI hearing. The district court overruled the objection and heard testimony from several witnesses, including Tumey and that of an expert retained by Tumey who testified that he had not found any forensic evidence to attribute any of the cyberattacks or harassment to anyone associated with Mycroft. When Tumey was asked about the results of the expert’s [...]

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What Preclusion? Post-IPR Reexam Moves Forward

by Tim Dunker | Mar 10, 2022 | Patents

The US Court of Appeals for the Federal Circuit revived a petitioner’s validity challenge seeking ex parte review at the US Patent & Trademark Office (PTO), reversing a district court decision dismissing its complaint seeking Administrative Procedures Act (APA) review of the PTO Director’s vacatur decision. The Federal Circuit concluded that the petitioner was not subject to inter partes review (IPR) estoppel from pursuing reexamination after receiving IPR final written decisions concerning the same claims of the same patents. Alarm.com Inc. v. Hirshfeld, Case No. 21-2102 (Fed Cir, Feb 24, 2022) (Taranto, Chen, Cunningham, JJ.)

This case explores the tension between the ex parte reexam statute and the IPR estoppel statute. Under 35 U.S.C. § 302, “any person at any time may file a request for reexamination . . . of any claim of a patent on the basis of any prior art cited under [§ 301].” If the PTO Director determines “pursuant to [§ 303(a)] that no substantial new question of patentability is raised,” that determination “will be final and nonappealable.” § 303(c). If a substantial new question is deemed to have been raised, “the determination will include an order for reexamination of the patent for resolution of the question.” § 304. Under § 315(e)(1), a petitioner in an IPR that results in a final written decision is estopped from requesting or maintaining a proceeding before the PTO “with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”

Alarm.com filed several IPR petitions that resulted in three final written decisions holding that Alarm.com had not carried its burden of proving that the challenged claims at issue were unpatentable. The Federal Circuit affirmed all three decisions in its 2018 ruling in Vivint, Inc. v. Alarm.com. Alarm.com subsequently filed three requests for ex parte reexamination of the same claims under 35 U.S.C. § 302 and 37 C.F.R. § 1.510, presenting different grounds than were presented in the IPRs. Instead of rendering a § 303(a) decision on the issue of whether petitioner presented a substantial new questions of patentability, the Director vacated the requests, finding that Alarm.com reasonably could have raised its reexamination grounds in the IPRs and, therefore, was estopped under § 315(e)(1) from submitting the requests. Alarm.com filed a complaint in the Eastern District of Virginia against the Director and the PTO under 5 U.S.C. § 702, stating that the Director’s actions were arbitrary and capricious. Following dismissal of the complaint, Alarm.com appealed.

The PTO argued that the overall ex parte reexamination scheme precluded judicial review of the Director’s vacatur decision based on § 315(e)(1) estoppel, which brought Alarm.com’s challenge within the exception to APA review, i.e., where “statutes preclude judicial review.” 5 U.S.C. § 701(a)(1). The PTO did not raise any other arguments as to why judicial review would not be available under the APA.

The Federal Circuit explained that “[t]he only portion of the ex parte reexamination statutory scheme that expressly precludes judicial review is § [...]

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Message Received: Service of Complaint by Email Found Sufficient

by Paul Devinsky | Mar 3, 2022 | Trademarks

The US Court of Appeals for the Fifth Circuit affirmed the district court’s entry of default judgment against the defendant because email service of the complaint was proper under the Federal Rules of Civil Procedure and the Texas Rules of Civil Procedure. Viahart, L.L.C. v. He GangPeng, Che Haixing, Aszune, Case No. 21-40166 (5th Cir. Feb. 14, 2022) (Wiener, Graves, Ho, JJ.)

Viahart manufactures, distributes and retails toys and educational products under registered trademarks. Viahart sued approximately 50 defendants for selling counterfeit products bearing its trademark on several online marketplaces. At the time Viahart filed its complaint, it moved to serve all defendants by email. The district court denied the motion but permitted Viahart to conduct discovery to determine the identities and addresses of the defendants through the online marketplaces. After attempting to obtain contact information for the defendants, Viahart again moved to serve the defendants by email. In the motion, Viahart documented its efforts to serve defendants physically and provided proof of attempted service for various defendants. The district court granted the motion, and Viahart served the defendants via email.

Viahart subsequently moved for entry of default judgment against defendants that failed to appear or otherwise respond to the complaint. The district court granted the default judgment motion and determined that each defaulting defendant was liable for $500,000 each plus attorneys’ fees and costs. The judgment permanently enjoined defendants from using Viahart’s trademarks, competing with Viahart unfairly, and withdrawing any funds from the online marketplaces or payment processors. Three of the defendants—GangPeng, Haixing and Aszune—appealed the judgment, arguing that service was improper, that they were improperly joined with the 50 other defendants and that “there was no trademark infringement.”

The Fifth Circuit found no error in the district court’s entry of default judgment. The Court noted that it reviews the entry of default for an abuse of discretion and the underlying factual determinations for clear error. The Court determine that Viahart properly complied with the Texas Rules of Civil Procedure in its attempts to serve GangPeng, including documenting its attempts to personally serve GangPeng and attaching the required affidavits that allowed the district court to authorize substitute service. As for Haixing and Aszune, the Court found that under the Federal Rules of Civil Procedure, email service was appropriate because it was court ordered, was reasonably calculated to notify the defendants and was not prohibited by an international agreement.

The Fifth Circuit rejected the defendants’ misjoinder argument, finding that there was no basis for misjoinder under Federal Rules of Civil Procedure 20 and 21. The Court found that the complaint sufficiently alleged that the defendants were all working together and that their conduct arose out of the same transaction, and therefore joinder was appropriate. Finally, the Court rejected the defendants’ argument that there was “no trademark infringement” because factual questions and unpled affirmative defenses cannot be raised on appeal of a default judgment when they were not presented to the district court. Accordingly, the Court affirmed the district court’s default [...]

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Paradise Lost: Art Created by AI Is Ineligible for Copyright Protection

by Jodi Benassi | Mar 3, 2022 | Copyrights

The US Copyright Office Review Board (“Board”) rejected a request to register a computer-generated image of a landscape for copyright protection, explaining that a work must be created by a human being to obtain a copyright. Second Request for Reconsideration for Refusal to Register A Recent Entrance to Paradise (Copyright Review Board Feb. 14, 2022) (S. Perlmutter, Register of Copyrights; S. Wilson., Gen. Counsel; K. Isbell, Deputy Dir. of Policy).

In 2018, Steven Thaler filed an application to register a copyright in a work named “A Recent Entrance to Paradise.” Thaler listed as the author of the work the “Creative Machine,” a computer algorithm running on a machine. Thaler listed himself as a claimant and sought to register the work as a “work-for-hire” as the “owner” of the Creative Machine. The Board refused to register the work, finding that it lacked the necessary human authorship. Thaler requested reconsideration, arguing that the “human authorship requirement is unconstitutional and unsupported by either statute or case law.”

After reviewing the work a second time, the Board found that Thaler provided no evidence of sufficient creative input or intervention by a human author. The Board refused to abandon its longstanding interpretation of the Copyright Act, as well as Supreme Court and lower court precedent, that a work meets the requirements of copyright protection only if it is created by a human author. The Board concluded that “A Recent Entrance to Paradise” lacked the required human authorship and therefore affirmed refusal to register. Thaler filed for a second reconsideration.

The Board found that Thaler’s second request for consideration repeated the same arguments as his first request. Relying on the Compendium of US Copyright Office Practices (the Office’s practice manual), the Board found that Thaler provided neither evidence that the work was a product of human authorship nor any reason for the Board to depart from more than a century of copyright jurisprudence.

The Board explained that the Supreme Court of the United States, in interpreting the Copyright Act, has described a copyright as the exclusive right of a human and her own genius going back to 1884. The Board noted that the Supreme Court has repeatedly articulated the nexus between the human mind and creative expression as a prerequisite for copyright protection. The human authorship requirement is further supported by the lower courts. For example, in 1997 the US Court of Appeals for the Ninth Circuit held in Urantia Found. v. Kristen Maaherra that a book containing words “‘authored’ by non-human spiritual beings” can only gain copyright protection if there is “human selection and arrangement of the revelations.”

The Board further explained that federal agencies have followed the courts. In the 1970s, the National Commission on New Technological Uses of Copyrighted Works (CONTU) studied the creation of new works by machines. CONTU determined that the requirement of human authorship was sufficient to protect works created with the use of computers and that no amendment to copyright law was necessary. CONTU explained that “the eligibility of [...]

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Bargained-Away Rights to File for IPR May Not Be Recovered

by McDermott Will & Schulte | Feb 17, 2022 | Patents

In a precedential opinion, the US Court of Appeals for the Federal Circuit reversed a district court’s denial of a plaintiff’s requested injunction seeking to force a patent challenger to abandon its petitions for inter partes review (IPR). Nippon Shinyaku Co. Ltd. v. Sarepta Therapeutics, Inc., Case No. 2021-2369 (Fed. Cir. Feb. 8, 2022) (Newman, Lourie, Stoll, JJ.)

Nippon Shinyaku and Sarepta Therapeutics executed a mutual confidentiality agreement (MCA) to facilitate discussion of “a potential business relationship relating to therapies for the treatment of Duchenne Muscular Dystrophy.” The MCA established a mutual covenant not to sue for “any legal or equitable cause of action, suit or claim or otherwise initiate any litigation or other form of legal or administrative proceeding against the other Party . . . in any jurisdiction in the United States or Japan of or concerning intellectual property in the field of Duchenne Muscular Dystrophy” during a covenant term. The mutual covenant explicitly “include[d], but [wa]s not limited to, patent infringement litigations, declaratory judgment actions, patent validity challenges before the U.S. Patent and Trademark Office or Japanese Patent Office, and reexamination proceedings before the U.S. Patent and Trademark Office” (emphasis added). The MCA also included a forum selection clause to govern post-term intellectual property disputes between the parties, which stipulated:

that all Potential Actions arising under U.S. law relating to patent infringement or invalidity, and filed within two (2) years of the end of the Covenant Term, shall be filed in the United States District Court for the District of Delaware and that neither Party will contest personal jurisdiction or venue in the District of Delaware and that neither Party will seek to transfer the Potential Actions on the ground of forum non conveniens (emphasis added).

“Potential actions” were defined as:

any patent or other intellectual property disputes between [Nippon Shinyaku] and Sarepta, or their Affiliates, other than the EP Oppositions or JP Actions, filed with a court or administrative agency prior to or after the Effective Date in the United States, Europe, Japan or other countries in connection with the Parties’ development and commercialization of therapies for Duchenne Muscular Dystrophy (emphasis added).

The day the covenant term ended, Sarepta filed seven petitions for IPR at the Patent Trial & Appeal Board (Board). Nippon Shinyaku filed suit in the US District Court for the District of Delaware for breach of contract, declaratory judgment of noninfringement and invalidity and patent infringement. Nippon Shinyaku motioned for a preliminary injunction to enjoin Sarepta from proceeding with the IPR petitions and to force Sarepta to withdraw them. The district court denied Nippon Shinyaku under each of the preliminary injunction factors (likelihood of success on the merits, irreparable harm in the absence of extraordinary preliminary relief, balance of harms in its favor and relief being in the public interest).

The district court explained that any irreparable harm arguments fell within Nippon Shinyaku’s contract interpretation arguments, and that Nippon Shinyaku’s balance of hardships and public interest arguments relied on Sarepta’s ability to file [...]

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Can’t Presume Personal Jurisdiction Exists When Challenged

by Lisa P. Rumin, Claire Danberg and Joshua W. Eastby | Feb 3, 2022 | Trademarks

The US Court of Appeals for the First Circuit affirmed a district court order dismissing a trademark infringement case for lack of personal jurisdiction, finding that if challenged, personal jurisdiction cannot be assumed into existence. Motus, LLC v. CarData Consultants, Inc., Case No. 21-1226 (1st Cir. Jan. 18, 2022) (Lynch, Selya, McConnell, JJ.)

Motus is a Delaware corporation headquartered in Boston, Massachusetts. CarData is a Canadian corporation with offices in Colorado, New York and Toronto. Both Motus and CarData offer tools for companies to manage employee expense reimbursement. Motus asserted a trademark over the phrase “corporate reimbursement services,” which was present in the meta title of CarData’s website. In November 2019, Motus asked CarData to remove the phrase from its website, and CarData did so within three days.

Motus nevertheless filed a federal lawsuit in the District of Massachusetts asserting Lanham Act claims for trademark infringement, trademark dilution and other state and federal causes of action. CarData moved to dismiss for lack of personal jurisdiction, among other grounds. The district court granted the motion to dismiss, finding that Motus failed to demonstrate either the existence of personal jurisdiction over CarData or that discovery into CarData’s jurisdictional claims were warranted. Motus appealed.

On appeal, the First Circuit reiterated that Motus bore the burden of demonstrating that the district court’s exercise of personal jurisdiction over CarData was proper, noting that although a plaintiff is not required to plead facts sufficient for personal jurisdiction, “it must—if challenged—ensure that the record contains such facts.” To demonstrate that personal jurisdiction over CarData was proper, Motus had to show that CarData had sufficient “minimum contacts” with the forum that were sufficiently related to the matter at issue and evidenced a “purposeful availment of the privilege of conducting business in the forum,” and also had to show the reasonableness of the exercise of personal jurisdiction in that forum. Motus argued that CarData had sufficient “minimum contacts” with Massachusetts for personal jurisdiction to lie there, primarily because CarData had offices elsewhere in the United States and because CarData maintained a website that was available to serve Massachusetts residents.

Given that Motus’s arguments for personal jurisdiction related primarily to the publicly available nature of CarData’s website to residents of Massachusetts, the First Circuit explained that “[i]n website cases we have recognized that the ‘purposeful availment’ element often proves dispositive.” Here, the Court found nothing in the record suggesting that CarData specifically targeted or did business with Massachusetts residents. The Court rejected Motus’s citation to informational content on the website because it was not specific enough to evidence intentional solicitation of business from any particular state. Nor was there evidence of substantial CarData revenue from Massachusetts. Thus, the Court found that there was no “purposeful availment.”

Finally, the First Circuit affirmed the district court’s denial of jurisdictional discovery into CarData’s “minimum contacts” with Massachusetts. The Court found that although Motus mentioned the availability of jurisdictional discovery in a single sentence in a footnote to its opposition to CarData’s motion to [...]

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#Blessed? Preliminary Injunction Related to Social Media Accounts Vacated

by Eleanor B. Atkins | Feb 3, 2022 | Trademarks

Addressing a dispute between a bridal designer and her former employer regarding the use of the designer’s name and control of various social media accounts, the US Court of Appeals for the Second Circuit affirmed the district court’s preliminary injunction prohibiting the designer from using her name(s) in commerce, vacated the portion of the preliminary injunction granting the employer exclusive control over the social media accounts and remanded the case for further consideration by the district court. JLM Couture, Inc. v. Gutman, Case No. 21-870 (2d Cir. Jan. 25, 2022) (Park, J.) (Newman, J., concurring in part and dissenting in part) (Lynch, J., concurring in part and dissenting in part).

Hayley Paige Gutman worked for JLM Couture from 2011 to 2020, during which time she designed bridal and bridesmaid dresses and developed the Hayley Paige brand. Hayley Paige brand apparel generated hundreds of millions of dollars in sales, and Gutman’s fame (and social media account followers) grew alongside the brand’s sales revenue. Gutman and JLM’s relationship began to break down in 2019. Following the parties’ failed contract negotiations, Gutman locked JLM out of her Instagram account and changed the account bio to indicate that it was a “personal and creative” account.

JLM subsequently sued Gutman for breach of contract, trademark dilution, unfair competition, conversion of social media accounts and trespass to chattels on social media accounts, among other things. The district court agreed with JLM that Gutman had breached the contract but declined to decide “whether JLM had shown a likelihood of success on its conversion and trespass claims or opine on the ‘novel’ and ‘nuanced’ question of who owns the [social media accounts].” The district court granted a temporary restraining order and then a preliminary injunction barring Gutman from changing, using and/or controlling the social media accounts and using the names “Hayley,” “Paige,” “Hayley Paige Gutman,” “Hayley Gutman,” “Hayley Paige” or any derivate thereof (collectively, the designer’s name) in commerce. Gutman appealed.

Gutman argued that the district court erred in concluding that she likely breached the noncompete and name-rights provisions of the employment contract, that JLM’s breach of the contract prohibited it from seeking injunctive relief and that the social media accounts should not have been assigned to JLM. The Second Circuit rejected Gutman’s contract-related arguments and disagreed with the proffered alternative interpretations of the text, concluding that the district court did not err in prohibiting Gutman from any use of the designer’s name in commerce. With respect to the social media accounts, however, the Court held that the preliminary injunction was overbroad because “the character of the district court’s relief—a grant of perpetual, unrestricted, and exclusive control throughout the litigation—sounds in property, not in contract. Yet the district court disclaimed any effort to ground the [preliminary injunction] on its evaluation of the ownership question.” The Court concluded it was “unclear on what basis the district court excluded Gutman from using the Disputed Accounts and granted total control to JLM.” Thus, the Court remanded the case for the district [...]

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Silence May Be Sufficient Written Description Disclosure for Negative Limitation

by Mandy H. Kim | Jan 13, 2022 | Patents

Addressing the issue of written description in a Hatch-Waxman litigation, the US Court of Appeals for the Federal Circuit affirmed the district court’s finding that the patent adequately described the claimed daily dose and no-loading dose negative limitation. Novartis Pharms. v. Accord Healthcare Inc., Case No. 21-1070 (Fed. Cir. Jan. 3, 2022) (Linn, O’Malley, JJ.) (Moore, CJ, dissenting).

Novartis’s Gilenya is a 0.5 mg daily dose of fingolimod hydrochloride medication used to treat relapsing remitting multiple sclerosis (RRMS). HEC filed an abbreviated new drug application (ANDA) seeking approval to market a generic version of Gilenya. Novartis sued, alleging that HEC’s ANDA infringed a patent directed to methods of treating RRMS with fingolimod or a fingolimod salt at a daily dosage of 0.5 mg without an immediately preceding loading dose.

The specification described the results of an Experimental Autoimmune Encephalomyelitis (EAE) experiment induced in Lewis rats showing that fingolimod hydrochloride inhibited disease relapse when administered daily at a dose of 0.3 mg/kg or administered orally at 0.3 mg/kg every second or third day or once a week, and a prophetic human clinical trial in which RRMS patients would receive 0.5, 1.25 or 2.5 mg of fingolimod hydrochloride per day for two to six months. The specification did not mention a loading dose associated with either the EAE experiment or the prophetic trial. It was undisputed that loading doses were well known in the prior art and used in some medications for the treatment of multiple sclerosis.

The district court found that HEC had not shown that the patent was invalid for insufficient written description for the claimed 0.5 mg daily dose or the no-loading dose negative limitation. The district court also found sufficient written description in the EAE experiment and/or prophetic trial and credited the testimony of two of Novartis’s expert witnesses. HEC appealed.

The Federal Circuit affirmed the district court’s decision. Turning first to the daily dose limitation, the majority held that the prophetic trial described daily dosages of 0.5, 1.25 or 2.5 mg and found no clear error by the district court in crediting expert testimony converting the lowest daily rat dose described in the EAE experiment to arrive at the claimed 0.5 mg daily human dose. Reciting Ariad, the Court explained that a “disclosure need not recite the claimed invention in haec verba” and further, that “[b]laze marks” are not necessary where the claimed species is expressly described in the specification, as the 0.5 mg daily dose was here.

Turning to the no-loading dose negative limitation, the majority disagreed with HEC’s arguments that there was no written description because the specification contained zero recitation of a loading dose or its potential benefits or disadvantages, and because the district court inconsistently found that a prior art abstract (Kappos 2006) did not anticipate the claims because it was silent as to loading doses. The Court explained that there is no “new and heightened standard for negative claim limitations.” The majority acknowledged that silence alone is insufficient disclosure but emphasized that [...]

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PTO Proposes Deferred Responses for Subject Matter Eligibility Rejections

by Amol Parikh | Jan 13, 2022 | Patents

In a January 6, 2022, Federal Register notice, the US Patent and Trademark Office (PTO) announced its intention to implement a pilot program to evaluate the effects of permitting applicants to defer responding to subject matter eligibility (SME) rejections in certain patent applications. Under this pilot program, applicants may receive invitations to participate if their applications meet the program’s criteria, including a criterion that the claims in the application necessitate rejections on SME and other patentability-related grounds. An applicant who accepts the invitation to participate in this pilot program must still file a reply addressing all the rejections except SME rejections in every office action mailed in the application but is permitted to defer responding to SME rejections until the earlier of final disposition of the application or the withdrawal or obviation of all other outstanding rejections.

Invitations to participate in the Deferred Subject Matter Eligibility Response pilot program will be mailed during the period between February 1, 2022, and July 30, 2022. The PTO may extend, modify or terminate the pilot program depending on the workload and resources necessary to administer the program, feedback from the public and the program’s effectiveness.

Because satisfaction of non-SME conditions for patentability (e.g., novelty, nonobviousness, adequacy of disclosure and definiteness) may resolve SME issues as well, the pilot program may result in improved examination efficiency and increased patent quality.

An examiner may invite a prospective applicant to participate in the pilot program by including a form paragraph in the first office action on the merits. An applicant receiving an invitation to participate in the pilot program may elect to accept or decline the invitation. If an applicant wishes to participate in the program, they must file a properly completed request form PTO/SB/456 concurrently with a timely response to the first office action on the merits. The request form must be submitted via the PTO’s patent electronic filing systems.

The limited waiver permits the applicant to defer addressing the SME rejections until the earlier of final disposition of the participating application or the withdrawal or obviation of all other outstanding rejections. A final disposition is the earliest of the following: