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IP Bulletin, March 2015

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The Nutter IP Bulletin provides periodic IP news updates and practical tips

Federal Circuit Issues First Decision Regarding New Post-Grant Proceedings

In In re Cuozzo Speed Technologies, LLC the Court of Appeals for the Federal Circuit (CAFC) decided the first appeal from the Patent Trial and Appeal Board (PTAB) regarding an Inter Partes Review (IPR). The decision in In re Cuozzo Speed Technologies, LLC made it clear that it may be difficult to overturn decisions from the PTAB due to the Court’s deference to the PTAB on both substantive and procedural issues. The Court clarified that the PTAB’s decision to institute IPR proceedings is not reviewable, and that the application of the broadest reasonable interpretation standard to claim construction is proper in IPR proceedings.

Click here for further details on why the Federal Circuit’s recent decision means the PTAB will likely continue to be a favorable choice of forum for challenging patents. 

USPTO Releases Post-Alice Abstract Idea Examples

Following on the heels of the Supreme Court’s decision in Alice v. CLS Bank, the United States Patent and Trademark Office (USPTO) issued subject matter eligibility guidelines for determining whether a patent claim amounts to “significantly more” than an abstract idea. The agency has now issued follow-on guidance in the form of eight fact patterns intended to demonstrate the abstract idea analysis in further detail. The fact patterns highlight some familiar themes that have emerged in the case law both pre- and post-Alice.

Click here to read some practical tips for patent prosecution in view of the USPTO's recent guidance on subject matter eligibility. 

Supreme Court Changes Standard of Appellate Review for Claim Construction

On January 20, 2015, the United States Supreme Court decided the case of Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., which presented the question of the proper standard of review for factual findings by district courts during patent claim construction. The CAFC has long held that claim construction rulings, including underlying factual findings, are reviewed de novo (that is, without deference to the district court). The Supreme Court has now partly upended that rule, holding that determinations of fact made by district courts must be reviewed for abuse of discretion, which is more deferential to the district court. The Court left alone, however, the existing de novo standard of review for the ultimate legal determination of patent claims' meanings.

While the Court noted that "[i]n some instances, a factual finding will play only a small role in a judge's ultimate legal conclusion about the meaning of [a term in a patent claim]," in other cases "a factual finding may be close to dispositive of the ultimate legal question of the proper meaning of the term in the context of the patent." In either case, "the ultimate question of construction will remain a legal question."

Because the case before it presented a potentially dispositive factual dispute regarding the meaning of a particular term to persons skilled in the art, and because the CAFC overturned the district court's determination of that dispute under the de novo standard, the Court has remanded the case back to the CAFC with the instruction to apply the less stringent abuse of discretion standard to the district court's factual findings. Thus, while the Court was careful to note that "subsidiary fact finding is unlikely to loom large in the universe of litigated claim construction," there are sure to be litigants, like those in Teva Pharmaceuticals, who will be affected by this decision.

Click here to read the Supreme Court’s decision.  

Nutter’s IP Bulletin How-To Series on Branding

What to Do Once Your Trademark Registers – Avoiding Genericism and Dilution
Tenth in The Series

As discussed in the previous article in Nutter’s IP Branding Series, monitoring competitors’ use of your marks and marks possibly akin to your marks, and enforcing your rights in your marks against those competitors, is an important aspect of protecting and building your brand. Equally important is policing your own use of the mark, the use of your mark by licensed third parties, and the use of the mark by third parties that are neither competitors nor licensees. The graveyard of brands that were arguably too successful because the brand name became genericised is fraught with lessons to be learned in protecting the use of your mark. Dilution is also a concern, although it is becoming increasingly more difficult to successfully show that your mark is being diluted or tarnished.

Click here to read more about guarding against your mark joining the generic graveyard.

Design Patent Application Changes Coming in May 2015

On May 13, 2015, the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs will go into effect in the United States. The Hague system will, in effect, introduce a design patent analog to the current Patent Cooperation Treaty (PCT) international patent application and Madrid Protocol international trademark registration systems. Rather than filing for design patent protection in foreign jurisdictions individually, applicants will be able to file a single application at the USPTO to pursue protection in multiple jurisdictions. Other participating countries at the time of writing include the European Union and South Korea. Japan will adopt the agreement on the same date as the U.S., and Canada, China, and Russia are all said to be exploring the possibility of participation.

Another important change associated with adoption of the agreement is that U.S. design patents issuing from applications filed after May 13, 2015, will have a 15 year term (vs. the 14 year term today). The USPTO is expected to publish rules regarding processing and examination of international design applications in the near future.

Click here to read the USPTO’s announcement regarding international design patent applications. 

Is the Name of the Game Still the Claim?

This past February, the Federal Circuit issued three opinions focusing on claim interpretations based, in a large part, on the specification. The general proposition that the courts should look to the intrinsic evidence (i.e., the specification, the figures, and the prosecution history) to inform the meaning of claim terms is not new. However, the CAFC’s recent opinions in Lexington Luminance v., Fenner Invs., Ltd. V. Cello P’ship, and Pacing Tech. LLC, v. Garmin Int’l, Inc. appear to shift the focus onto the specification in the first instance—above even the plain meaning of the claims.

Click here to read practical claim drafting tips in light of recent developments in the case law. 

USPTO Extends Missing Parts Pilot Program Through 2015

In mid-January, the USPTO published a notice that its Extended Missing Parts Pilot Program would continue through the end of 2015. Originally introduced in 2010, the Extended Missing Parts Pilot Program allows applicants to delay the payment of fees required for examination (i.e., the search fee, examination fee, any excess claims fees, and surcharges for late fee payment) by up to 12 months, allowing a sort of “extension” to the term of a provisional patent application. To take advantage of the program, applicants must submit a certification and request to participate when filing a nonprovisional or plant application that validly claims the benefit of a provisional application (applicants also must not have filed a nonpublication request). The Extended Missing Parts Pilot Program can be an effective tool to further delay costs associated with filing and prosecuting a patent application, thereby allowing funds to be put toward commercial development. However, the program does not affect the 12-month priority period for foreign filing under the Paris Convention, so applicants should be careful to complete any desired foreign filings within 12 months of their provisional application filing date.

Click here to read the Federal Register notice regarding the Extended Missing Parts Pilot Program. 

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property practice group at Nutter McClennen & Fish LLP in Boston. For further information, please contact your Nutter attorney at 617-439-2000.

Recognized as a "Go-To" patent firm by IP Law & Business and Corporate Counsel, Nutter is dedicated to making its clients' strategic goals a reality and to maximizing the protection and value of their intellectual property. The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs and inventors.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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