• Patentability: The Novelty Requirement of 35 U.S.C. 102

    Essentially, §102 requires the patent applicant to demonstrate that the invention is new. In essence, in order for a claimed invention to violate this “newness” requirement it must be exactly identical to the prior art… In order to understand the requirements of §102 it will be helpful to explore the concept of anticipation in detail. A claim is said to be “anticipated” if comparison of the claimed invention with a prior art reference reveals that each and every element in the claim under…

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  • Interesting Posts on Injunctions in India on SpicyIP

    In recent weeks the SpicyIP Blog has published some interesting posts on injunctions in India, most recently one from May 11 by Maitreyee Dixit titled Lighting Up Injunction Jurisprudence:  US v. India and another from May 9 by Professor Shamnad Basheer titled And the US Issues Yet Another Compulsory License!  The latter notes, among other things, the discrepancy between the U.S.’s position regarding other countries’ threats to impose compulsory licenses for patented inventions and the U.S. courts’ actual practice under eBay–including the Federal Circuit’s recent (and in my view, problematic) decision in Nichia v. Everlight (see my post here).  The author adds in a postscript, however, that “while US courts do a fairly decent job of explicating the standards for an injunction and largely adhering to them, Indian courts have made a hotchpotch of these criteria and we’re left with little to no clarity on this,” and refers to the (then-forthcoming) Dixit post. Dixit discusses, among other matters, the lack of consistency among the Indian courts on the the meaning of the “public interest” factor–which the judge in the Bayer v. Ajanta decision from earlier this year interpreted as including “‘loss of employment’ and ‘revenue to the state,’” though two other more recent decisions including Bayer v. BDR have not followed this approach–and on the meaning of “prima facie case”   On the Ajanta and BDR matters, Dixit also links to this post and this post by Balaji Subramanian.  On the prima facie case issue, she also cites this post by Rupali Samuel and this paper by Shamnad Basheer, Jay Sanklecha and Prakruthi Gowda, titled Pharmaceutical Patent Enforcement:  A Development Perspective, the abstract to which reads as follows:
    Although standards for the grant of intellectual property rights often take center stage in the literature on intellectual property and development, intellectual property enforcement is largely ignored. This paper seeks to fill this gap, albeit to a limited extent, by focusing on the standards for the grant of injunctions in patent infringement suits.

    This is particularly relevant, as a number of developing countries, such as India, are faced with burgeoning patent disputes disputes that have enormous implications for the future of innovation and the issue of access to patented goods, notably pharmaceuticals. Given that interim injunctions are largely dispositive of intellectual property disputes in many cases, this chapter focuses largely on such injunctions.

    The standards for the grant of injunctions ought to be calibrated in a manner that appropriately balances the interests of the patentee in securing timely and effective enforcement of her rights with the public interest in guarding against erroneous injunctions (i.e. where the patent turns out to be invalid or not infringed after trial). Such wrongly granted injunctions harm not only competitors against whom they are granted, but also consumers who are forced to pay a monopoly price during the subsistence of the injunction/restraining order.

    We recommend that, when faced with a complex patent dispute where it is difficult to legitimately assess the strength of each party’s case at the interim stage and effectively predict who is more likely to win at trial, courts move directly to the trial stage – a suggestion that is coming to be increasingly adopted by the Indian Supreme Court. We argue that this is a TRIPS flexibility that developing countries, such as India, can legitimately exploit. We also highlight issues of institutional capacity and ask: Should developing countries such as India institute specialist intellectual property courts to decide patent infringement suits? Would this make for more optimal intellectual property adjudication? Though specific to India, most of the suggestions in this chapter could prove useful for a number of other developing countries, particularly those that follow common law and are yet to experience a significant number of patent infringement cases.

    Finally, the post also links to a 2015 SpicyIP series on interim injunctions, here.

    Readers also might be interested in this June 5 post by Prashant Reddy titled 143 patent infringement lawsuits between 2005 and 2015: Only 5 judgments.  From my less-than-perfect vantage point, it does seem to me that many of the most important Indian decisions on patent remedies in recent years have been from interim proceedings.  In addition, the blog has published some interesting posts recently on punitive damages for copyright and trademark infringement, here, here, here, and here.  See also my blog post of September 11, 2015.

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  • 閑話 -米国の意匠権 (Design Patent) の存続期間-

    米国の特許権(utility patent)の存続期間の終期は、原則として出願日から起算して20年です。権利は特許発行日から発生します。ただし、審査期間が庁側の責任で遅延した場合には延長されます。審査官が必要以上に審査に時間を要してしまった為に、その終期が出願日を起点として計算される権利の存続期間が実質的に短縮される事があるからです。この延長期間の設定は、特許期間調整(patent term adjustment)と呼ばれます。一方、意匠

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    –>be as PP, be as prep

    $$ One of the primary uses is as a means of analysing collected fluid samples to detect and quantify specific compounds, or combination of compounds. / 主要な用途の一つは、特定の化合物または化合物の組み合わせを検出して定量するために、収集された流体試料を分析する手段としてのものである。(USP7578972)

    $$ An alternative form for the electro-active structure is as a plurality of discrete electro-active elements connected together. / 電気活性構造の他の形態は、複数の個別電気活性素子を一体に接続したものである。(USP6833656)

    $$ Another way is as an acoustic filter converting between incident and desired acoustic ranges. (USP6332029) 他の方法は、…としてである

    $$ A third use for the head is as an agent interface for on-line services. (USP6549200) 第3の用途は、…としてである

    $$ Another common use for hydrogenated fats is as a stabiliser and to control texture in food products. (USP01038872)


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  • CAFC affirms PTAB in Credit Acceptance case

    The outcome:

    Credit Acceptance Corp. (“CAC”) appeals the final
    written decision of the Patent Trial and Appeal Board
    (“Board”) in a Covered Business Method (“CBM”) review
    proceeding. The Board determined that claims 10–12 and
    14–33 of CAC’s U.S. Patent No. 6,950,807 B2 (“the ’807
    patent”) are directed to patent-ineligible subject matter
    under 35 U.S.C. § 101. CAC appeals the Board’s determination
    that the petitioner, Westlake Services, LLC
    (“Westlake”), was not estopped from maintaining CBM
    review of those claims under 35 U.S.C. § 325(e)(1). CAC
    also appeals the Board’s § 101 determination. Because we
    agree with the Board that Westlake was not estopped
    from maintaining CBM review of those claims and that
    the challenged claims are unpatentable under § 101, we

    Of note:

    As a threshold matter, both Westlake and the PTO
    argue that a determination by the Board on 35 U.S.C.
    § 325(e)(1) is nonappealable, and therefore, this court has
    no jurisdiction to review the Board’s estoppel determination.
    We disagree.


    The estoppel provision at issue here, § 325(e)(1) (like
    the comparable IPR provision, § 315(e)(1)), is distinct
    from the issues addressed in Cuozzo. Specifically,
    § 325(e)(1) does not refer to “institution” decisions and in
    fact is not limited to institution decisions. While the
    appeal bar precludes review of a “request” for proceedings,
    which might be analogized to an institution decision, on
    its face, § 325(e)(1) contemplates that estoppel governs at
    any stage of a subsequent proceeding before the PTO—its
    application is not limited to the institution stage.

    Here, the Board did issue a final written decision with
    respect to patentability, and CAC appeals that decision.
    Because the statute prohibits an estopped petitioner from
    “maintain[ing]” a proceeding, the Board necessarily found
    that Westlake was not estopped when it issued its final
    written decision. See 35 U.S.C. § 325(e)(1).
    We conclude that we have jurisdiction to review the
    CAC’s estoppel argument regarding 35 U.S.C. § 325(e)(1).

    As to the appellant:

    CAC’s argument is foreclosed by our decision in Synopsys,
    which interpreted statutory language in the IPR
    context that is identical to language in the provisions
    governing CBM proceedings. As the Synopsys court
    recognized, “[t]he validity of claims for which the Board
    did not institute inter partes review can still be litigated
    in district court,” and this caused “no inconsistency” with
    the AIA estoppel provisions. 814 F.3d at 1316; see also 35
    U.S.C. § 315(e)(2) (IPR estoppel provision applicable to
    subsequent civil actions). It equally follows that there is
    no estoppel in future PTO proceedings.

    In Synopsys, we held that, under the statute and the
    PTO’s regulations, the Board may institute an IPR on a
    claim-by-claim basis, such that “the Board can pick and
    choose among the claims in the decision to institute.” 814
    F.3d at 1316. The court also explained that 35 U.S.C.
    § 318(a) (which is identical in all relevant aspects to
    § 328(a)) “only requires the Board to address claims as to
    which review was granted” in a final written decision.
    814 F.3d at 1317. Therefore, a final written decision on
    instituted claims is not a final determination on the
    patentability of non-instituted claims. See 814 F.3d at

    Of statutory construction:

    The holdings in Synopsys and Shaw with respect to
    IPRs apply to the PGR statutes and regulations as well
    since the PGR provisions contain identical language.
    Compare 35 U.S.C. §§ 314(a), 315(e)(1), and 37 C.F.R.
    § 42.108, with 35 U.S.C. §§ 324(a), 325(e)(1), and 37
    C.F.R. § 42.208. The IPR statutes and PGR statutes (as
    adopted into the CBM framework) were all enacted simultaneously
    in the AIA. “[T]he normal rule of statutory
    interpretation [is] that identical words used in different
    parts of the same statute are generally presumed to have
    the same meaning.” IBP, Inc. v. Alvarez, 546 U.S. 21, 34
    (2005). To be sure, despite the parallel nature of the IPR
    and CBM provisions, there are significant structural
    differences in the overall schemes, but none of these
    differences is relevant here. Accordingly, we adopt the
    reasoning and conclusions of our IPR cases.

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  • Examiner Citations of Smartgene, Cyberfone Drop After McRo Memo

    By Robert R. Sachs After Alice, the USPTO’s various guidance memoranda included references to non-precedential Federal Circuit decisions, particularly Smartgene, Cyberfone, and Planet Bingo, as examples of patent-ineligible subject matter. Naturally, examiners cited these decisions in support of their Section 101 rejections. Smartgene was the most frequently cited because the USPTO glossed it simply as “comparing new and stored information and using rules to identify options," a characterization that allowed examiners to apply the case to just about any computer-implemented method. I and others expressed our concerns to the USPTO about the examiners’ reliance on Smartgene and other non-precedential cases…

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  • Legality of the Matal Appointment: Acting As PTO Director

    The following is a guest post by David Boundy – a Cambridge Massachusetts attorney with a specialty at the intersection of patent and administrative law. In 2007-09, David led the teams that quashed the Continuations, 5/25 Claims, IDS, Markush, and appeal rules under the Paperwork Reduction Act. On other mailing lists, members of the patent bar have […]

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  • AIA Did Not Alter Reviewability Bar of District Court Remand Decisions Under §1447(d)

    The district court determined that it lacked subject matter jurisdiction because Preston’s state-law claims did not arise under federal law and Nagel’s patent counterclaims did not present a justiciable case or controversy under Article III because the patent dispute was not imminent. Therefore, the district court remanded the case and Nagel timely appealed… The AIA and its strengthening of federal court jurisdiction over patent claims did nothing to override the rule that a district court…

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