Federal Circuit: Presence of a Blocking Patent Can Negate Strong Objective Indicia of Nonobviousness

The United States Court of Appeals for the Federal Circuit recently issued a ruling affirming a district court’s finding that certain pharmaceutical patent claims owned by Acorda were invalid due to obviousness over the prior art.  The patents’ claims covered a species of a genus taught by the prior art.  The invalidity determination hinged on (1) whether claiming the same concentrations as the prior art, but for a different indication would be obvious to a person having skill in the art; and…

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  • Supreme Court 2018 — Pending Cases for September Conference

    Supreme Court 2018 — Pending Cases for September Conference

    by Dennis Crouch

    The Supreme Court now starting its Fall 2018 term with its first Conference set for September 24, 2018.  At that initial Conference, the Court is set to consider certiorari in for a rich set of pending patent cases.  The following is a rundown of some of the more interesting:

    • Smartflash LLC v. Samsung Electronics America, Inc. et al., No. 18-189 (Three good questions):
    1. Whether Administrative Patent Judges of the [PTAB] are principal Officers of the United States who must be appointed by the President with the advice and consent of the Senate under the Appointments Clause.
    2. Whether retroactive application of CBM Review to patents on inventions disclosed before passage of the [AIA] violates the Due Process Clause of the Fifth Amendment.
    3. Whether undisputed evidence that a patented invention is not unduly preemptive, presented to technically proficient judges of the Board, is relevant to the question whether the invention is patent-eligible under 35 U.S.C. § 101.
    • B/E Aerospace, Inc. v. C&D Zodiac, Inc., No. 17-1252 (are the objective indicia of non-obviousness analyzed only after a prima facie case of obviousness is established).

    Continue reading Supreme Court 2018 — Pending Cases for September Conference at Patently-O.

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  • Federal Circuit Affirms PTAB’s Finding of Implicit Disclosure

    The Federal Circuit recently issued an opinion affirming the Patent Trial and Appeal Board’s (“PTAB”) finding of obviousness of a hot-spot technology patent based on implicit disclosures in a prior art reference. Even though the reference did not expressly disclose the limitation at issue, the Board’s holding that a POSITA would, nonetheless, read the reference as implicitly describing the claimed configuration was supported by substantial evidence.

    The post Federal Circuit Affirms PTAB’s…

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  • Federal Circuit Issues Slightly Revised Opinion on EMVR in Power Integrations

    The revised opinion in Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., published today, is here.  Dennis Crouch beat me to the punch in reporting on this one, and as he notes on Patently-O the only changes are as indicated below in boldface:
    1.  At p.20, the sentence reading “In some circumstances, for example, where the other features are simply generic and/or conventional and hence of little distinguishing character, it may be appropriate to use the entire value of the product because the patented feature accounts for almost all of the value of the product as a whole” has been changed to “In some circumstances, for example, where the other features are simply generic and/or conventional and hence of little distinguishing character, such as the color of a particular product, it may be appropriate to use the entire value of the product because the patented feature accounts for almost all of the value of the product as a whole.”
    2.  At p.22, the original opinion has been changed as follows:
    Where the accused infringer presents evidence that its accused product has other valuable features beyond the patented feature, the patent holder must establish that these features are not relevant to consumer choice do not cause  consumers to purchase the product. A patentee may do this by showing that the patented feature “alone motivates customers to purchase [the infringing product]” in the first place. See id. at 69. But when the product contains multiple valuable features, it is not enough to merely show that the patented feature is viewed as essential, that a product would not be commercially viable without the patented feature, or that consumers would not purchase the product without the patented feature. Id. at 68. When the product contains other valuable features, the patentee must prove that those other features did not influence purchasing decisions do not cause consumers to purchase the product.

    The bottom line is that the revised opinion appears to make it slightly more difficult than it already was to use the entire market value of the infringing end product as the royalty base; or, to put it another way, renders the conditions under which courts may invoke the entire market value rule (EMVR) even more strict than they were before. 
    When I blogged about the original panel opinion on July 12, I wrote:
    The result doesn’t seem all that surprising to me.  (Whether it’s right or wrong as a matter of policy is another matter.)  To be sure, the Federal Circuit has permitted some variations from the EMVR–for example, in CSIRO v. Cisco, where the court (in a bench trial) used the entire market value as the royalty base, because the parties themselves had done so during their own (unsuccessful) negotiations over a royalty; in Ericsson v. D-Link, where the court allowed the plaintiff’s expert witness to base his opinion on comparables that used the entire market value as the base; and in Exmark, where the claim covered the end product as a whole (see discussion here).  But this case doesn’t appear to have any of these distinguishing features, or at least there’s no mention of any such features in the opinion.
    So, maybe I should have been surprised that the original panel’s language about the EMVR wasn’t more stringent than it was, though I’m inclined to believe that the revised opinion’s alternative linguistic formulation won’t make much of a practical difference.  And at the end of the day, I’m still mildly skeptical about the virtues of the EMVR at all, given that the commutative property of multiplication means that a small rate multiplied by a large base can equal the same product as a large rate multiplied by a small base.  On the other hand, the U.S. practice of using juries to determine damages awards may counsel in favor of some version of the EMVR, as the Federal Circuit has pointed out more than once, and as my coauthors and I discuss in the Reasonable Royalties chapter of the forthcoming edited volume Patent Remedies and Complex Products: Toward a Global Consensus.
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  • Marvin Gaye haunts Federal Circuit oral argument

    Marvin Gaye made a special appearance at the Federal Circuit oral arguments a few months ago.  During the oral argument of GLG FARMS LLC v. BRANDT AGRICULTURAL PRODUCTS, LTD., No. 2017-1937 (Fed. Cir. Aug. 2, 2018), the audio equipment in the courtroom picked up an audio transmission from somewhere in the neighboring area.  At one […]

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  • USPTO Substantially Revises PTAB Standard Operating Procedures

    Earlier today the USPTO announced the substantial revision of Standard Operating Procedures (“SOPs”) for the paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2). The revisions deliver upon the repeated promises of USPTO Director Andrei Iancu to increase transparency, predictability, and reliability across the USPTO. These new SOPs update the procedures based upon feedback the Office received from stakeholders, courts, legislators, and six years of…

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  • 作用を受ける



    $$ In the arrangement shown in FIG. 5, toroidal magnetic flux circuits T1-T4 are created in the stators 9c and piston core elements 2f under the action of the switched current in coils 9a. / 図5に示す構成では、コイル9a内のスイッチングされた電流の作用を受けて、トロイド状の磁束回路T1~T4が、ステータ9cおよびピストンコア要素2fに形成されている。(USP8936003)

    $$ Each airflow will rapidly lose its momentum once it has passed the user’s hands and the water droplets will fall to the lower end of the cavity 30 under the forces of gravity whilst the air exits the cavity 30 either through the cavity entrance 32 or via the open sides of the cavity 30. / 各空気流は、いったんユーザの手を通過すると、その運動量を迅速に失い、水滴は、重力の作用を受けてキャビティ30の下端部に落下し、これに対し、空気は、キャビティ入口32を通るかキャビティ30の開放側部を経由するかのいずれかでキャビティ30から出る。(USP8347522)

    $$ Upon release of the pressure applied by the user to the projection 156, the rod 154 returns to the first position under the action of the spring. / ユーザにより突出部156に加えられている圧力が除かれると、ロッド154は、ばねの作用を受けて第1の位置に戻る。(USP8156609)

    $$ Said cocking/ejecting element may comprise a spring support portion disposed interiorly of the housing and acted upon by opposing spring means. / 前記発射準備/射出要素は、ハウジング内部に配置され対向するバネ手段の作用を受けるバネ支持部を備えることができる。(USP8388639)

    $$ Preferably both jaws are displaceable, resiliently urged to an outward position, and carried inward to be acted on by opposing wedging formations of the body on said inward movement of the striker for said gripping engagement therewith. / 両方のジョーは位置変更可能で、外側位置に弾性的に推進され、ストライカの該内方向移動時に本体の対向楔留め構造体の作用を受けて内側に動かされて該把持掛合状態となることが好ましい。(USP5727825)

    $$ By swing axis, which is a term well known in the art, we mean the axis about which the wheel carrier is permitted to rotate by the suspension links when subjected to a vertical load i.e. bump reaction. / 当該技術で周知の用語である旋回軸線によって、垂直方向荷重、すなわち衝突反作用を受けたとき、懸架装置のリンクによって車輪キャリアがその周りで回転することのできる軸線を意味する。(USP7168719): subjected

    $$ The weld enclosure 15, and friction welding apparatus 10 incorporating the weld enclosure 15, of the present invention are able to accommodate large "stick out" of the weld elements 16, 18, which distances the tooling 11, 13 from the part of the welded component 29 that is heat-affected during the welding process. / 本発明の溶接用のエンクロージャー15及び溶接用のエンクロージャー15を含む摩擦溶接装置10は、大きく突出させた溶接エレメント16、18を収容可能である。本発明では、工具構成要素11、13が、溶接プロセス中に熱の作用を受ける溶接された構成要素29の部分から離間している。(USP8336755): affect

    $$ This is problematic because it is desirable that on actuation, a definable pull action is experienced by the medicament carrier pocket at the opening station to ensure that a generally uniform indexing/opening effect is experienced by each pocket of the medicament carrier. / このことが問題なのは、薬剤キャリアの各ポケットがほぼ一定の間欠送り/開放作用を確実に受けるようにするためには、開放ステーションで薬剤キャリアポケットが予め決められた引張り作用を受けることが望ましいからである。(USP8201556): experience

    $$ As well as being a mechanical support within the instrument and a conduit for purged air, tube 45 serves to prevent stray light and, in the medial portion, particles from impinging on waveguide 80. / 管45は、機器の機構的な支持及びパージ用空気の導管であるばかりでなく、光がそれるのを妨げ、中間部分において、粒子が導波路の作用を受けることを妨げる。(USP8134706): impinge

    $$ Arranging the links in this manner, a longitudinal force at the contact patch will be reacted by the two pairs of links only and no deflection of the wheel is permitted. / このようにリンクを配置すると、接触パッチにおける長手方向力は、2対のリンクによってのみ反作用を受け、車輪の撓みは何ら許容されない。(USP7168719): react


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  • Inside Views: Why Follow-On Pharmaceutical Innovations Should Be Eligible For Patent Protection

    Christopher M. Holman writes: Despite the important role of intellectual property rights in incentivizing innovation, the patenting of pharmaceutical innovation is frequently accused of impeding access to medicine. Criticism of the prevailing patent regime has focused in particular on patents directed towards follow-on pharmaceutical innovation, i.e., innovation that seeks to improve upon existing pharmaceuticals and their use in treating patients. Patents on follow-on innovation are often derided as “secondary” patents, with the implication that the underlying inventions are somehow lesser in nature than the subject matter claimed in “primary” patents, i.e., the drug active ingredient per se. While implicitly acknowledging the legitimacy of primary patents, critics of so-called secondary patents contend that patents on follow-on innovation allow drug innovators to “evergreen” their products, i.e., to extend the period of patent exclusivity beyond the expiration of any original patent on the drug active ingredient, and in doing so contribute to the high cost of drugs, thereby limiting the ability of patients to access the drugs upon which they have come to rely.

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  • 作用を有する




    $$ The probe is accordingly maintained in a position at which it has a constant average (over a number of oscillations) interaction with the surface. / したがって、プローブは、表面との一定で平均の(いくつかの振動にわたる)相互作用を有する位置に維持される。(USP8479310)

    $$ So Stemme replaces conventional `one-way` valves that have a better flow rectification action with valves that have no requirement for mechanical motion and are therefore more robust than the standard displacement pumps. / 従って、Stemmeは、より良い流れ整流作用を有する従来の“一方向”弁を、機械的運動を必要とせず、従って、標準の変位ポンプよりも強固な弁と交換している。(USP7284962)

    $$ Light transmissive ink has the effect of planarising or flattening the microstructures and facilitates light guiding over the film layer. / 光透過性インクは、微細構造体を平坦化する又は平らにする作用を有し、かつ、フィルム層の上への光の誘導を助ける。(USP8264622)

    $$ However, a small increase in this value would have a marked effect on the results. / しかしながら、この値の増加はわずかでも結果に著しい作用を有すると予想される。(USP8062743)

    $$ This phase relation has the effect of reducing the field-of-view of any imaging system. / この位相関係は、像形成システムの視野を狭める作用を有する。(USP8068049)

    $$ Such a motor could provide active damping by using a controller and/or passive damping by using a controller or passive damping by shorting the motor windings. / この電動モータは、制御部の使用による能動的な減衰作用、及び/又は、制御部の使用による受動的な減衰作用、もしくは、電動モータの巻線を短絡させることによる受動的な減衰作用を有するものであってもよい。(USP8267350): provide V-ing

    $$ Surprisingly, it has been found that agents according to the present invention are potent in inhibiting ligand binding to CRP. / 驚くべきことに、本発明の薬剤は、リガンドのCRPへの結合を阻害する作用を有する。(USP7615543): potent in V-ing

    $$ Each preamplifier 22 has filtering to define a passband containing the resonant frequency of the transducer 18 which, in this example, is 300 kHz. / 各前置増幅器22はフィルタ作用を有していて、トランスジューサ18の共振周波数を含んでいるパスバンドを定義するようにしているが、この例では、これが300kHzとなっている。(USP6826982): have V-ing


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  • From the USPTO: PTAB Standard Operating Procedures

    The PTAB has substantially revised its Standard Operating Procedures (“SOPs”) regarding paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2). The revisions focus upon increasing transparency, predictability, and reliability across the USPTO. They update the procedures based upon feedback received from stakeholders, courts, legislators, and our 6 years of experience with AIA trial proceedings.

    Revised SOP1 explains the procedures for panel assignment and for informing parties regarding panel changes. It also explains the process for designating panels with more than three judges, and notes that such panels should be rare and will only occur with the approval of the Director.

    Revised SOP2 creates a Precedential Opinion Panel (POP), typically comprising the Director, the Commissioner for Patents, and the Chief Judge of the PTAB. The POP will serve two primary functions: 1) it may be convened to rehear matters in pending trials and appeals, for example on issues of exceptional importance; and 2) it may assist the Director in determining whether a decision previously issued by the PTAB should be designated as precedential or informative. It is expected that the POP and the procedures described in revised SOP2 will, in most cases, replace the prior practice of expanded paneling under SOP1, with a process that is more transparent and predictable.

    Continue reading From the USPTO: PTAB Standard Operating Procedures at Patently-O.

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  • Federal Circuit revives the Entire Market Value Rule for Calculating Damages (Although it is Still Disfavored)

    Federal Circuit revives the Entire Market Value Rule for Calculating Damages (Although it is Still Disfavored)

    by Dennis Crouch

    In this past summer’s Power Integrations v. Fairchild decision (Power Integrations I), the Federal Circuit held that the entire market value rule cannot be used to calculate infringement damages unless the patentee proves that the unpatented features in the accused product did not influence consumer demand.  The patentee had not met that burden and so the $140 million verdict was vacated and remanded.  Power Integrations, Inc. v. Fairchild Semiconductor Intl., Inc., 894 F.3d 1258 (Fed. Cir. June 3, 2018) (altered on rehearing)

    On petition, the original panel has  revised its opinion — but maintained its judgment vacating the damage award.  Power Integrations II.

    In the revised opinion, the court pulled back from the level of proof required. In particular, under the old language, the court required proof that the non-patented features were not relevant to and did not influence the consumer purchasing decision. The new formulation requires the patentee seeking EMVR damages show that the non-patented features “did not cause consumers to purchase the product.” The relevant blackline edits are in the following paragraph:

    Where the accused infringer presents evidence that its accused product has other valuable features beyond the patented feature, the patent holder must establish that these features are not relevant to consumer choice do not cause consumers to purchase the product.

    Continue reading Federal Circuit revives the Entire Market Value Rule for Calculating Damages (Although it is Still Disfavored) at Patently-O.

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  • Registering your website with the Chinese government?

    Doing business in China is exciting and potentially lucrative; however, there are “hidden” traps. Most of these hidden traps have been extensively discussed in the Western world – for example, China’s unique subclass system and its massive counterfeiting issue. One area in which we haven’t seen a lot of discussion but has certainly triggered some headaches is the idea – or rather, the requirement – that a business should “register” its website with the Chinese government.

    The post…

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  • Standing to Appeal: When does a petitioner have Standing to Appeal?

    by Dennis Crouch

    My prior post on DuPont v. Synvina focused on the obviousness of a claimed range in the context of inter partes review (IPR) proceedings.  The decision also raises a question of standing — whether the patent challenger DuPont had standing to appeal the IPR decision favoring the patentee Synvina.

    E.I. DuPont de Nemours v. Synvina C.V. (Fed. Cir. 2018)

    The patent act provides a couple of limits on who may file a petition to institute an IPR. The petitioner must be “a person” and may not be either the patent owner nor a person (or privy) who was sued for infringing the patent more than 1-year before the petition filing date.* Notably absent – the IPR statute does not require the petitioner to have any reason for challenging the patent or any actual dispute with the patentee.

    Courts are different – a lawsuit cannot be filed by just any person.  Rather, the plaintiff must have “standing” — a an actual case or controversy that the lawsuit can resolve.  Standing is required at every stage of court litigation. This creates a bit of a difficulty for IPR proceedings: Although no standing is required for a patent challenger to pursue an IPR proceeding — standing is required once the case goes to the Federal Circuit on appeal. 

    Continue reading Standing to Appeal: When does a petitioner have Standing to Appeal? at Patently-O.

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