- Posts by John (Jack) J. PennyPartner
John (Jack) J. Penny, V is the chair of Nutter's Intellectual Property Department. He counsels clients in the development of strategic patent portfolios; prepares opinions concerning infringement, validity ...
Summary: While the Leahy-Smith America Invents Act (AIA) brought sweeping changes to the United States patent system, including moving to a first-to-file system and implementing and modifying a number of post-grant proceeding options, one less heralded change is the expansion of the third party preissuance submission process, by which a third party can submit prior art references in a pending U.S. patent application for consideration by the examiner. The revised preissuance submission process is significantly more robust and accessible than its pre-AIA counterpart. Key features of the process such as low cost, anonymity, and preclusion from estoppels make it a potentially attractive tool for challenging pending applications. However, a third party’s participation in the patent prosecution process is still limited and the submitted references may even inadvertently strengthen any patent that issues from the application in which the submission is filed. Accordingly, third parties should carefully consider the limitations and risks associated with the process before filing a preissuance submission.
Bikram Choudhury, one of the most famous names in modern yoga, sought copyright protection in 2002 on a series of twenty-six yoga poses and two breathing exercises he developed and later called “the Sequence.” On October 8, 2015, the Ninth Circuit Court of Appeals ruled that the Sequence is not entitled to copyright protection because it is an “unprotectable idea.” The judges noted that the Sequence is akin to cooking recipes or surgical procedures. Accordingly, yoga studios that are not owned or operated by Choudhury are able to practice and teach the Sequence without concern for copyright infringement claims.
In the beginning of October, the U.S. Patent and Trademark Office (USPTO) announced that it is extending two programs that patent applicants find useful in the later stages of prosecution—the After Final Consideration Pilot 2.0 (AFCP) and the Quick Path Information Disclosure Statement (QPIDS) programs.
Recently the Federal Circuit, sitting en banc, upheld the International Trade Commission’s (ITC) interpretation of 19 U.S.C. § 1337 to allow the ITC to prevent goods from being imported into the United States when the infringement does not occur until after importation. Although the panel was split 6-4, the primary practical justification for the majority’s decision stemmed from the determination that if the decision came out the other way, it would effectively make § 1337, and thus ITC cases, inapplicable to any induced infringement claims, as well as potentially all method claims. The case involved the importation of fingerprint scanning devices by the Korean company Suprema, Inc., which were then combined with software by Suprema’s American business partner Mentalix, Inc., before the scanners were actually sold in the U.S. The sole claim of the plaintiff Cross Match Technologies, Inc. that was at issue in the en banc appeal (claim 19) was directed to a method for capturing and processing a fingerprint image.
Summary: Two recent Federal Circuit cases serve as a reminder that the means-plus-function doctrine should be at the forefront of practitioners’ minds when drafting or evaluating patent claims, particularly in the case of computer-implemented inventions. These cases also demonstrate yet another weapon for invalidating functionally-claimed software patents.
In the recent Federal Circuit decision in Circuit Check v. QXQ Inc., the Court discusses the bounds of analogous art when considering the scope and content of the prior art in an obviousness determination. In making the determination whether a claim is obvious, the fact finder is required to decide, among other things, the scope and content of the prior art. This is because not every potential disclosure that pre-dates the invention can be considered prior art; the disclosure must be analogous to the claimed invention. It is well-established that the test for whether prior art is analogous is “if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” The Federal Circuit used the Circuit Check decision to iterate that there are indeed limits to determining what is “reasonably pertinent” to the particular problem the inventor is trying to solve.
On February 4, 2015, in In re Cuozzo Speed Technologies, LLC the Federal Circuit decided the first appeal from the Patent Trial and Appeal Board (PTAB) regarding an Inter Partes Review (IPR). Inter Partes Review is a United States Patent and Trademark Office (USPTO) proceeding created by the America Invents Act (AIA) meant to offer a more expeditious and less expensive alternative to district court litigations on validity.
The Federal Circuit recently issued a decision in Antares Pharma, Inc. v. Medac Pharma, Inc. (Fed. Cir. 2014) that examined the issue of whether claims have been properly broadened in a reissue application. A patent holder can seek broadened reissue claims within a two year period from the grant of the original patent, as set forth in 35 U.S.C. § 251. However, there are restrictions on how a patentee can broaden claims during the reissue proceeding. Those restrictions include 1) the recapture rule and 2) the original patent requirement. The Court in Antares found reissue claims to be invalid for failing the original patent requirement. Under the original patent requirement, the invention claimed in the reissue application must be directed to the same invention disclosed in the original patent. The Court found that the original patent requirement mandates that newly claimed subject matter be disclosed in an explicit and unequivocal manner in the specification. In other words, the newly added claims cannot be merely suggested or indicated in the specification. In contrast, the Court noted that continuation and divisional applications are avenues for applicants to shift the scope of the claims from one invention to another without the original patent requirement of § 251.
The examiner count system is the stick by which a patent examiner’s production is measured. Although the U.S. Patent and Trademark Office(USPTO) does set expected time limits for each task, examiners’ production goals are met by receiving “counts,” which are accrued by completion of various tasks associated with the examination process. Under the current count system, more counts are granted for tasks performed early in prosecution to provide an incentive for examiners to “dispose” of cases quickly—either through abandonment or the granting of a Notice of Allowance. Thus, the count system serves as a reminder that patent examiners and patent applicants are not opponents, but rather members of the same team who are intended to work together to move patent applications through the system.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.