Seyfarth PTAB Blog

 

Introducing Seyfarth's BioLoquitur Blog

April 5, 2017

Seyfarth’s Intellectual Property Practice Group is delighted to announce the launch of BioLoquitur on LexBlog. Seyfarth’s IP-life sciences attorneys created this blog as a single resource for executives and corporate in-house counsel seeking timely updates on recent developments, trends, tools, best practices, and discussions in the area of intellectual property—patent law, particularly in the life sciences industry.  
 
The BioLoquitur blog offers an all-inclusive assessment of the law regarding life sciences, including issues related to Hatch-Waxman litigation, patentability and patent eligibility, biosimilars, freedom to operate, patent enforcement, America Invents Act (AIA) proceedings, and patent prosecution. 
 
Our team of bloggers have a deep understanding of the biotechnology, chemical, pharmaceutical, and nanotechnology industries. Our attorneys have handled all aspects of life sciences-related intellectual property, including patent litigation, prosecution, due diligence, counseling, and transactions. Our broad technical training, as well as years of legal experience representing clients in court before the United States Patent and Trademark Office as venture capitalists and in-house counsel, allow our attorneys to work closely with clients to not only understand but achieve their technical, business, and legal goals. 
 
If you would like to receive our BioLoquitur blog updates via email as soon as they are published, please subscribe by clicking here.

Filing vs. Serving - The PTAB Splits Another Hair

By: Patrick T. Muffo
February 14, 2017

The admissibility of evidence is an important consideration for many PTAB proceedings. The procedures for objecting to and admitting evidence can be nuanced and, as often is the case with the PTAB, the devil is in the details. Panels are also quick to point out that non-precedential decisions from other panels have no binding effect such that different panels may operate under slightly different procedural rules. One panel clarified the process for handling evidentiary objections to shed some light on the correct manner of curing objections or challenging the admissibility of evidence.
 
The case of Taiwan Semiconductor Manufacturing Company, Ltd. v. Godo Kaisha IP Bridge 1, Case IPR2016-01249 and IPR2016-01264 (January 20, 2017 Order) clarified the process for objecting to evidence and the manner of curing such objections. Taiwan Semiconductor objected to evidence filed by Godo Kaisha, and Godo Kaisha filed supplemental evidence in an attempt to cure the objection. Taiwan Semiconductor then objected to the filing of the supplemental evidence, arguing it should have instead been served under 37 C.F.R. § 42.64(b)(1) and (2):
 
(1) Objection. Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial. Once a trial has been instituted, any objection must be filed within five business days of service of evidence to which the objection is directed…
 
(2) Supplemental evidence. The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.
 
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IPR NOT INSTITUTED OVER DUPLICATIVE PRIOR ART

By: King L. Wong
February 7, 2017

Challenges of patents in Inter Partes Reviews (IPRs) at the Patent Trial and Appeal Board (PTAB) must be based on anticipation or obviousness over printed prior art (35 U.S.C. § 311(b)).  However, it is important that the petitioners carefully choose the proper prior art to be relied on before filing the petitions.  This post discusses a decision of the PTAB to deny institution of an IPR because the petition relied on duplicative prior art. The case is Nu Mark LLC v. Fontem Holdings 1, B.V. (Case IPR2016-01309; Decision Denying Institution entered December 15, 2016) concerning Patent No. 8,863,752 B2 (“the ‘752 patent”).  At the end of this post, strategies to avoid the denial of IPR institution in a similar situation or to deal with the denial will be discussed. 
 

The ‘752 patent concerns electronic cigarettes.  A petition was filed to institute an IPR for some of the claims of the ‘752 patent on the grounds that the challenged claims were obvious over two prior art references, Brooks I (US 4,947,874) and Whittemore (US 2,057,353).  The claims were directed toward an atomizer assembly for an electronic cigarette, and are summarized below without reproduction of every claim element for brevity sake.  The claimed atomizer assembly for an electronic cigarette comprises

          a housing containing an atomizer in contact with a liquid storage;
          a screw thread electrode on one end of the housing;
          a through-hole centered on the screw thread electrode; and
          a flow passageway from the atomizer to an outlet.  

To view the full post, click here.

Strategic Use of Disclaimers in PTAB Proceedings

By: Patrick T. Muffo
January 31, 2017

A patentee has several options for responding to a Petition for Inter Partes Review (“IPR”) or Covered Business Method (“CBM”) petition. The patent owner can optionally file a Preliminary Response arguing against institution on substantive grounds, or the patent owner can attack the petition procedurally, such as by arguing the petitioner is a real-party in interest to a litigation or is otherwise related to a party served more than a year prior to the petition and the petition is therefore time barred. A third, less frequently used approach, is to file a disclaimer that disclaims the claims that provide a basis for the institution of the IPR or CBM.

37 CFR § 42.107 states “The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” The patent owner can therefore eliminate claims that present the basis of the PTAB institution, for example, those claims that are of a financial nature and that therefore provide the basis for institution of a CBM petition. The patent owner may also file a disclaimer to eliminate claims that are most likely not novel in light of the prior art and, instead of fighting those claims in the petition, can emerge from the PTAB proceeding with stronger claims intact and without spending resources and time fighting for all of the claims in the IPR petition.

To view the full post, click here.

Remote Software Application Survives Alice Challenge

By: Patrick T. Muffo
January 24, 2017

Inventions directed to “pure software” have arguably had the most difficult time surviving Alice challenges. Software is often characterized as an “abstract idea” without more, and the inventive step requirement in Alice seems difficult to prove absent a significant technological advancement. The Northern District of Georgia recently rejected its special master in favor of allowing a network-based software patent survive a patentable subject matter challenge.
 
The case of Tridia Corp. v. Sauce Labs, Inc., (Case No. 1:15-cv-2284, N.D. Georgia Sept. 28, 2016) analyzed a patent directed to “remote execution of computer programs over a network.” The invention was specifically directed to a problem found in demo programs where a purchaser would like to first sample a computer program before purchasing it. Previously, a user must download the demo program, install it, and then sample the program. The patent at issue allowed the user to remotely execute the program to sample it, removing several steps that may otherwise cause the purchaser’s interest in the program to wane, and therefore cause the purchaser not to buy the program.
 
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Construction of a Claim Term by the PTAB Does Not Negate Indefiniteness

By: Patrick T. Muffo
January 18, 2017

The doctrine of definiteness requires a patent to clearly state what the inventor considers to be their invention. Of course, the PTAB interprets various claim terms when determining whether a prior art reference anticipates or renders obvious a particular claim. So what happens when an accused infringer challenges a claim before the PTAB, and after a PTAB claim interpretation, then challenges the definiteness of that same claim term in district court?
 
The case of Depomed, Inc. v. Purdue Pharma, L.P., Civil Action No. 13-571 (MLC) (D. NJ) considered this very issue. Depomed sought to preclude Purdue Pharma from amending their invalidity contentions to assert indefiniteness after the 2014 Supreme Court Nautilus decision changed the standard for definiteness. Among other things, Depomed argued the PTAB had already construed the term “substantially all of said drug” so any such assertion of indefiniteness would have been futile. 
 
To view the full post, click here.

PTAB's Decision on Obviousness of Eye Drop Patent

By: King L. Wong
January 10, 2017

Inter partes reviews (IPRs) held in the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office are frequently associated with contemporaneous patent infringement litigations in district courts. The case, Akorn, Inc. v. Senju Pharmaceutical Co., Ltd., discussed in the current post is an example of such a scenario. After Akorn, Inc. (“Akorn”) was sued for infringement of U.S. Patent No. 6,114,319 (“the ‘319 patent”) owned by Senju Pharmaceutical Co., Ltd., and Mitsubishi Chemical Corporation, Akorn petitioned for IPR of the ‘319 patent in the PTAB on the grounds that some of the claims of the patent were unpatentable for obviousness over the prior art, U.S. Patent 5,556,848 (“the ‘848 patent”) and international patent application publication WO 95/31211 (“Ding”). The PTAB issued a Final Written Decision in the IPR on November 22, 2016, (Case IPR2015-01205) holding that Akorn had shown that the challenged claims were unpatentable under 35 USC §103(a) as obvious over the prior art.  
 
The challenged claims of the ‘319 patent were directed toward an emulsion of difluprednate, which is a steroid. Claim 1 and 18 are representative and are summarized below. For the sake of brevity, the claim elements are not reproduced in their entirety. 
 
To view the full post, click here.

Financial Patent Resurrected After Court Sua Sponte Reverses Alice Decision

By: Patrick T. Muffo
December 20, 2016

Since the Supreme Court Bilski case, financial patents have been routinely denied patentability by the Patent Office, or have been invalidated before the PTAB or district court. A court in the Southern District of New York had previously invalidated a finance-based patent on Alice grounds, finding it related to no more than an abstract idea. After a new judge received the case, the new court found the claims patent-eligible and, as an early Christmas gift to the patentee, reversed the prior invalidity finding.
 
The case of Tivo Research and Analytics, Inc. v. TNS Media Research LLC, 11-cv-4039 (S.D.N.Y. November 29, 2016) involved a patent with claims directed to analyzing a return on an investment in advertising campaigns by matching multiple data sources. The invention specifically allows for “accountability regarding the financial resources spent on advertising.” The court conducted a detailed analysis of the specification, noting the many proffered advantages of the invention and the “four dozen figures.”
 
To view the full post, click here.

Try-and-Try-Again Is a Recipe for Failure When Petitioning the Patent Trial and Appeal Board

By: David A. Klein
December 14, 2016

Whether an Inter Partes Review (IPR) will be instituted is at the discretion of U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”). Usually when the Board declines a petition requesting an IPR, it is due to there being insufficient support for at least one challenged claim being unpatentable. Less developed are the Board’s standards for declining petitions based on equity and fairness. One question has been how many bites-at-the-apple does a petitioner get when filing multiple petitions asking for review of a same patent claim.
 
The Board’s November 28 decision in Alarm.Com Inc. v. Vivint, Inc. denying institution of an IPR attempts to provide practitioners some guidance. The Board assembles a list of eight factors they use in deciding whether to exercise their discretion. 
 
To view the full post, click here.

Documents Encryption Patent Found Patent-Eligible

By: Patrick T. Muffo
December 6, 2016

Encryption patents often face Alice challenges with varied results. Inventions that simply apply encryption to an age-old product or process are often held invalid under §101. Specific encryption algorithms, however, tend to stand a slightly greater chance of being held patentable under the theory that the invention improves a computer-centric technology. The more “technical” implementations of encryption have had the greatest success, with the District of Delaware giving the nod to yet another encryption patent.
 
The case of MAZ Encryption Technologies, LLC v. Blackberry Corp., (C.A. No. 13-304-LPS, D. Del. Sept. 29, 2016) involved an invention directed to transparently integrating encryption and decryption functionality into a document management system. The parties agreed on a representative claim, which the court found was directed to “frictionless, ‘behind-the-scenes’ encryption—when a user closes or saves a file, the invention automatically obtains an appropriate encryption key, encrypts the file, and saves the encrypted file in an [electronic document management system].” 
 
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No Abstract Idea Where Invention Cannot be "Practiced in the Abstract"

By: Patrick T. Muffo
November 29, 2016

Courts have decided many recent Alice challenges based on whether the invention at hand is “physical” or not. Others determine patent-eligibility based on whether a human can practice the invention in their mind, or with pen and paper. Still others challenge patent-eligibility by defining the invention and dismissing other elements as “conventional” computer components. But what if those other components are physical, non-computer elements?
 
The case of 2-Way Computing, Inc. v. Grandstream Networks, Inc., 2:16-cv-01110-RCJ-PAL (D. Nev. Oct. 18, 2016 Memorandum Order and Opinion) dealt with this very issue. In 2-Way Computing, the court heard an Alice-based §101 challenge to an invention that translates audio data packets to enable audio communication. The claims include several elements found in conventional electronics, such as a network interface, a microphone, a speaker, and an audio input and output unit. Claim 1 of the asserted patent is essentially a listing of these conventional, physical devices followed by a large paragraph setting forth steps performed by computer software to perform the intended function of translating data packets into recognizable audio.
 
To view the full post, click here.

We encourage you to submit questions and comments to Patrick T. Muffo at pmuffo@seyfarth.com. Any comments that we believe would provide additional substance to the conversation will be posted to the page so that all of our readers may benefit from our collective insights.