Archive for February, 2009

Forthcoming patent reform bill brings a familiar battle line, but has progress been made?

Saturday, February 28th, 2009

Several reports suggest that a new patent reform bill will be introduced in Congress this week. Most early indications suggest very few surprises and it seems safe to assume that the new bill will look quite a bit like those of the past. This report from EE Times suggests that the main battle line will be drawn on a familiar sticking point of the past – apportionment of damages.

It’s possible that some progress has been made, though. The report does indicate that “the new bill will not create a controversial process proposed in the last session to let third parties challenge patents twice after they have issued.”

This refers to the controversial “second window” provision that has been a sticking point since the earliest days of post-grant review proposals (not just last session). While accepting the likelihood that post-grant review, which would allow third parties to mount an administrative challenge against issued patents, will be a reality someday, Pharma/Biotech has strenuously opposed the “second window” concept from the beginning. All post-grant review proposals have allowed for an initial challenge during a fixed time period after issuance (typically 9 to 12 months). Some proposals have also included a “second window,” which would allow for challenges mounted at any point in a patent’s term following some triggering event, such as upon receipt of a charge of infringement.

Pharma/Biotech has always viewed the existence of a “second window” as a perpetual cloud on the title of an issued patent. If the new bill omits the “second window,” can a deal on apportionment of damages be far behind?

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Inconsistency between Patent Office and Federal Circuit applications of Bilski?

Wednesday, February 25th, 2009

In In re Bilski, the Court of Appeals for the Federal Circuit ushered in a new era for patentability of process claims. Under Bilski, a process claim must be “tied to a particular machine or apparatus”or must “transform[] a particular article into a different state or thing.” (Bilski, 545 F.3d at 954.) If a process claim doesn’t satisfy one of the machine, apparatus, or transformation prongs of the new test, it fails for a want of patentable subject matter.

The Patent Office has properly started citing the Bilski decision to support rejections of process claims for failure to define patentable subject matter. This LA Times article notes example Bilski-based rejections of claims for processes ranging from seismic data analyses to methods for converting an internet domain names to read both left to right, for languages like English, and in the opposite direction, for languages like Arabic and Hebrew.

Such rejections are expected, of course – the Patent Office is simply applying the current law, as it should. But a recent patent granted to Chase Card Services, the credit card division of JP Morgan Chase, has to make you wonder how strenuously the Office is applying the new test.

United States Patent No. 7,480,631 is directed to fraud detection processes and was granted on January 20, 2009. Claim 1 is reproduced below:

1. A method for detecting and processing fraud and credit abuse, the method comprising: receiving a telephone call from a caller concerning a credit account; identifying one or more potential fraud-related problems by searching the credit account data for conditions that match one or more predetermined qualifiers and quantifiers; presenting the caller with a series of questions and soliciting, from the caller, responses to the series of questions, wherein each question in the series is generated based on the one or more potential fraud-related problems and further based on the caller’s responses to earlier questions in the series; and determining a fraud status associated with the credit account based on a computerized analysis of the solicited responses.

Where’s the Bilski-required machine, apparatus, or transformation in that claim? Is it the ‘computerized analysis’? If so, is the term “computerized” sufficient to tie this claim to a particular computing machine? Beyond that, I can only wonder, tongue only partially in cheek, whether the ‘telephone’ provides the machine or apparatus.

It’s interesting to compare the Patent Office application of Bilski, which produced the claim above, to the approach taken by the Federal Circuit. Comparing this claim to the claim summarily rejected by the Federal Circuit in its post-Bilski decision in Classen Immunotherapies v. Biogen IDEC, which included a step of “immunizing mammals,” suggests that the new ‘machine, apparatus, or transformation’ test is not being applied consistently between the Office and the court. On one hand, the Office appears willing to find a required connection to a particular machine or apparatus either in a vague term like ‘computerized’ or through the use of a known apparatus like ‘telephone.’ On the other hand, the court appears completely unwilling to recognize a step that recites a physical act that is well-known to trigger a physiological change as a required transformation.

The claim of the ‘631 patent is, of course, anecdotal in nature. It represents only a single post-Bilski patent issued by the Office and surely there are numerous examples of applications in which examiners took a strict approach to applying Bilski. But the existence of even one issued claim like the one above is troublesome because it reveals the difficulty associated with applying the vague test against which all process claims now must be evaluated.

UPDATE: A quick glance at the prosecution history for the ‘631 patent shows that the examiner mailed the Notice of Allowance on October 17, 2008 – 13 days before the court announced the Bilski decision. The timing, of course, doesn’t change the impact of the decision on the claim or render it subject to a different test for patentable subject matter. It may, though, explain the absence of a clear tie to a machine, apparatus or transformation – while the patent didn’t issue until January, the administrative gears of the issue process had already been set into motion and, apparently, could not be stopped.

In my mind, this actually raises more questions than it answers. Should the Office be required to evaluate all allowed claims that have yet to issue as patents when an intervening major change in patentability law is announced? What about a minor change? These are, of course, administrative headaches and would be time-consuming and expensive to implement. Should the patent attorney be responsible? Should prosecuting attorneys be required to amend claims or present additional arguments when such an intervening change is implicated? How about when such an intervening change might be implicated?

I wonder if this explains why Chase waited nearly 5 weeks to announce the granting of this patent.

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Recruiting the Patent and Trademark Office to Twitter

Monday, February 16th, 2009

Over the last several months, Twitter has become a vital component of the Promote the Progress site (follow me at @jmattbuchanan). I use the service to connect with PTP readers and others in the patent community by sharing quick thoughts, links, and other information that doesn’t necessarily warrant a full blog post or case review. In the few short months since I started to use Twitter seriously, I’ve met several interesting patent folks and have participated in numerous fascinating patent-related discussions.

The experience has taught me a lot about engaging a community and developing conversation. While the patent conversation on Twitter is growing (both in quantity and substance), it certainly could use a little help. To that end, I thought it would be great to recruit the Patent and Trademark Office into the mix. The Office is doing some wonderful things with technology and community involvement (the webcast of the recent roundtable discussion on deferred examination is a prime example), but has yet to undertake any social/new media efforts.

Twitter seems like a logical way for the Office to get started in this arena. At a minimum, the Office could use Twitter to post news items and links from its news page. This simple use of the system would provide another avenue to distribute critical information to Office stakeholders. There’s so much more that could be done, though. The Office could use the system to answer questions from the community, to provide live updates from important meetings (e.g., the roundtable, the Public Patent Advisory Committee), etc.

To start the process of recruiting the Office to Twitter, I’ve registered the @uspto account…and will gladly transfer it to someone from the Office that is responsible for IT and/or web technologies and that expresses a genuine interest in developing the account into a serious communications channel for the Office. I have started posting items to the account solely to attract relevant followers, but will only post official items made public by the Office in order to avoid any hesitation by the Office to “adopt” the account later.

When considering whether to use Twitter (either through this account or another), folks from the Office might be interested in reviewing this list of government agencies that are already on Twitter. The list includes NASA (@NASA_Ames_Web, @marsrover, @marsphoenix, and several others), FDA (@foodrecalls), and even President Obama (@BarackObama, although, sadly, he has not tweeted since the inauguration). The Social Media and Web 2.0 in Government collection of resources on webcontent.gov might also be helpful.

The patent community can help the recruiting effort by following @uspto on Twitter and sending a tweet that spreads the word!

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Obama continues search for Commerce Secretary, while PTO continues search for radical administrative reform

Friday, February 13th, 2009

It’s official – President Obama has lost another nominee for Secretary of Commerce. Republican Senator Judd Gregg officially withdrew from consideration for the post, citing political differences with the administration.

As this story was developing, the Patent and Trademark Office held its public roundtable discussion on the possibility of implementing a deferred examination procedure (the request for examination sort, not the de facto deferred sort). The discussion was mostly mundane, but did have a few high points.

One exchange in particular caught my ear -  John Doll and Professor Arti Rai hinted at a planned increase in the fee for filing a Request for Continued Examination. Some feel Professor Rai’s comments carried an implication that the fee should be set high enough to actually discourage the filing of RCE’s (see the comments on this PatentlyO post).  Indeed, late yesterday, a trusted source from the Office, who wishes to remain anonymous, confirmed that “a rumor that has been circulating is that a proposed significant fee increase is forthcoming.” If true, look for statistics regarding increases in various after final procedures first….to justify any later proposed increases as reasonably related to covering the cost of examination.

The roundtable comments by Doll and Rai should serve to put the patent bar on notice: the Office continues to seek radical administrative reform, all while President Obama continues the troubled search for a policy leader in the Department of Commerce. In the absence of policy directives from above, the pursuit for administrative efficiency appears to be guiding the ship.

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Patent validity scorecard, January 2009

Thursday, February 12th, 2009

Today’s caselaw environment seems to have sent the phrase “valid and infringed” into the closet of the lexicon of American patent law. We just don’t see it very often these days, thanks in large part to KSR v. Teleflex and a few other key decisions.

I decided to assemble a validity scorecard to help stakeholders watch the trend as it continues to develop. The scorecard is a simple tally of decisions in which the Court of Appeals for the Federal Circuit reached patent validity on the merits. Sure it’s a simple bit of anecdotal evidence, but I’m confident it will prove interesting over time. I’ll update the scorecard monthly.

Here’s the scorecard for January, 2009:

Valid: 0

Invalid: 4

During the month of January, the court issued four substantive opinions that addressed validity on the merits. Of those, the court held the patent invalid every single time (three for obviousness, one for lack of patentable subject matter).

Here’s the details (with links)

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The challenge of claim construction – in two-and-a-half minutes

Wednesday, February 11th, 2009

Claim construction is one of the most challenging tasks in the patent law game. We all struggle with it – prosecutors, examiners, litigators, judges. Lack of clarity and loyalty in the law aside, the task is a difficult one because, no matter how clear the meaning of a term is to you, it might have an entirely different meaning to someone else. This is often true irrespective of what the rest of the patent says about the meaning of the term, including the claim language, the specification, and the prosecution history.

Nothing illustrates this point better than a recent exchange between Judge Rader and counsel for the patent owner in Boston Scientific v. Cordis. Judge Rader asked about the meaning of a simple claim term – “implantable” – and the resulting exchange shows that a legal determination of the meaning of the term is anything but simple. “Implantable” is one of those terms you think you understand, until you really think about it…which is exactly what Judge Rader did. Ultimately, the meaning of the term was not dispositive in the case (it isn’t even mentioned in the opinion), but the oral argument should serve as a reminder to all of us about the complexities of claim language.

A transcript of the exchange appears below…but listening to the audio really underscores the point. You can download the mp3 from the court’s website (search for case number 08-1073) or listen to it on the PTP audio notes page for the case.

Judge Rader: “How can you have an implantable device before it’s sterilized? You wouldn’t implant something that’s going to kill a patient.”

Counsel (for patentee): “‘Implantable’ here, I think, clearly refers to the character, to the geometry, to the structure of the device…”

Judge Rader: “‘Implantable’ means capable of being implanted. I don’t think there’s any problem with that interpretation…You’re not going to implant an unsterile device, are you? An incomplete device….”

Counsel: “I can make two brief points on that Your Honor….”

Judge Rader (interrupting): “Get to my question: Implantable or not before it’s sterilized?”

Counsel: “It is physically implantable.”

Judge Rader: “How can it be? You’re abdicating implantation of a non-sterilized product.”

Counsel: “I’m certainly not abdicating anything. There’s no question that when a device like this is used in people it should be and must be sterilized.”

Judge Rader: “And can it be implanted before that?”

Counsel: “Yes it can be.”

Judge Lourie: “You mean physically, but it’s not medically ready.”

Counsel: “That would be correct, Your Honor.”

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Dear Bob – Let’s talk about patent legislation and policy

Thursday, February 5th, 2009

We’ve got a new Congressman – Bob Latta – here in Perrysburg (and the rest of Ohio’s 5th Congressional District). I don’t know where Bob stands on patent reform and other patent policy issues, so I was a bit intrigued when I recently received a “let’s talk” mailer from his office.

According to the card, Bob’s “door is always open” and he is ready and willing to assist “if you have problems with federal agencies such as social security, veterans concerns, passport problems, or other federal issues.” The return mailer card has a series of check boxes next to the standard issues that are keeping people awake at night – economy, energy, Iraq/Afghanistan, Social Security, etc.

There’s also a check box for “other.” Hmmmm…he did say he’s ready to help with “other federal issues.”

My completed card appears below. I’ll let you know the substance of any response I receive.

latta_card

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Boston Scientific v. Cordis: post-KSR obviousness without the Graham analysis

Wednesday, February 4th, 2009

Last week in Boston Scientific v. Cordis, the Court of Appeals for the Federal Circuit declared invalid several claims of a Boston Scientific patent covering drug-eluting stents. While the conclusion of obviousness might not be surprising, the analytical path leading to the conclusion is very interesting and is worthy of attention.

Overturning a jury verdict holding the claims valid and infringed, the court determined that the claims were obvious in light of a single prior art patent. The reference taught all limitations of the claims, but did so across two separate embodiments. To arrive at the claimed invention, the court reasoned, a skilled artisan need only combine the two embodiments, which were illustrated in side-by-side figures in the patent. According to the court, making this combination “does not require a leap of inventiveness.”

So far, this seems fairly straightforward. But here’s the interesting part – the court did not conduct any sort of analysis under Graham v. John Deere to support its conclusion of obviousness. The opinion has no discussion of the Graham factors and, indeed, doesn’t even cite the case. Instead, the court points to the “predictable variation” language of KSR v. Teleflex and indicates that “one of ordinary skill in the art would have been motivated to combine the [separate embodiments of the reference] to arrive at [the claimed invention].”

Is it acceptable to skip the Graham analysis under these circumstances? The “predictable variation” language of KSR – relied upon here as support for the conclusion of obviousness – seems to cry out for a Graham analysis:

“[i]f a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.” (emphasis added)

“Likely” seems to leave room for the possibility that a claim to a predictable variation is, in fact, nonobvious. The Graham framework likely provides an appropriate structure for evaluating the issue – secondary considerations seem particularly relevant here. The court, nevertheless, skipped the analysis altogether, at least in the written opinion.

This seems to beg the question of whether a summary conclusion of obviousness is acceptable in certain situations, or whether a full Graham analysis is always necessary. Is this the summary conclusion of obviousness that KSR warned against?

There’s another interesting wrinkle to the Boston Scientific v. Cordis opinion – While the court failed to mention or discuss the Graham factors, it did note – in two separate instances – that the skilled artisan would have been motivated to combine the separate embodiments of the prior art patent to arrive at the claimed invention. In the absence of a Graham analysis, the mentions of a ‘motivation to combine’ appear to be an important factor on which the court relies for its conclusion of obviousness. Indeed, in the absence of any discussion of the Graham factors, it seems to come dangerously close to litmus-test treatment of the issue.

Does this hint at a clarification of the role of the TSM test in an obviousness analysis in the post-KSR world? If, in fact, the ‘motivation to combine’ was used in litmus test fashion, is this acceptable following KSR? All of these questions surrounding Boston Scientific v. Cordis are likely limited to the realm of obviousness issues based on combinations of embodiments from a single reference, which is presumed to be a relatively small universe.

Read the PTP review and analysis of Boston Scientific v. Cordis here.

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Duncan Bucknell’s IP Think Tank podcast – Bilski, Classen, and more

Tuesday, February 3rd, 2009

I had the honor of being a panelist on Duncan Bucknell’s weekly IP Think Tank podcast this week. Jeremy Phillips of the IPkat was also on the call.

On the patent front, we had a brief discussion on Bilski, Classen, and the potential impact of a new USPTO Director.

Duncan’s doing wonderful work with this brief weekly update that touches on IP issues (not just patent issues) from around the globe. I encourage you to add it to your regular routine.

You can download/listen to this week’s episode here. You can subscribe to the series here.

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