Patent Docs

Webcast on Patent Reform

The Knowledge Group will offer a live webcast entitled "Sweeping Developments in Patent Reform Agenda: The Innovation Act and the PATENT Act -- A 2015 Perspective" on July 29, 2015 from 3:00 to 5:00 pm (ET).  Mark J. Thronson of Dickstein Shapiro LLP, Keith Grady of Polsinelli PC, and Peter Lambrianakos of Brown Rudnick LLP will review and discuss the latest issues surrounding the sweeping developments in the patent reform agenda: The Innovation Act and the PATENT Act, suggest why the changes may or may not be beneficial for one party or another, and identify the most common pitfalls and risks to avoid future litigation and costs.  The panel will cover the following issues:

• Pleading requirements, customer suits
• Discovery limitations, demand letters
• Venue
• Fee shifting provisions, transparency
• AIA reforms

The registration fee for the webcast is $299 to $349 (regular rate) or $149 (government/nonprofit rate).  Those registering by July 19, 2015 will receive a $100 discount of the regular rate.  Those interested in registering for the webinar can do so here.

Chisum Patent Academy Patent Law Seminar

The Chisum Patent Academy will be offering its next Advanced Patent Law Seminar on September 24-25, 2015 in Washington, DC.  The seminar is co-taught by Donald Chisum, author of the treatise Chisum on Patents (LexisNexis), and Janice Mueller, who was a tenured full Professor at the University of Pittsburgh School of Law from 2004-2011.  The registration fee for the seminar is $1,500; a maximum of ten registrations will be accepted for the seminar.  Those interested in registering for the seminar can do so here.  Additional information regarding the seminar can be obtained here or by e-mailing info@chisum.com.

No Rehearing En Banc for In re Cuozzo Speed Technologies -- PTAB Update

By James Lovsin and Andrew Williams --

Earlier this week, the Federal Circuit issued an order denying a petition for rehearing en banc in the In re Cuozzo Speed Technologies, LLC case.  As we have previously reported, this case was the first appeal of the first IPR Final Written Decision for the first IPR ever filed.  The original opinion not only addressed the substance of the underlying case, but it also approved of some of the most contentious rules promulgated by the Patent Office for these proceedings.  Moreover, Judge Newman provided a strongly worded dissent.  As such, many commentators believed that the entire Court would take up such issues as whether the "Broadest Reasonable Interpretation" (BRI) is the correct claim construction standard in these post-grant proceedings.  Nevertheless, when the poll was requested and taken for rehearing en banc, it failed.  The Order was accompanied by a concurring opinion authored by Judge Dyk, the author of the original opinion, and was joined by Judges Lourie, Chen, and Hughes.  Chief Judge Prost, and Judges Newman, Moore, O'Malley, and Reyna provided a joint dissent from the petition denial.  Finally, Judge Newman provided her own dissent.  Interestingly, the original panel (Judges Newman, Clevenger, and Dyk) issued an order granting a petition to clarify the underlying decision, withdrawing that decision, and replacing it with the revised opinion and dissent accompanying the order.  The changes made to that decision will be the subject of an upcoming post.

The closeness of the vote is intriguing, and presents some interesting issues.  It would have taken a vote of six judges in active service to rehear the case en banc, given that a majority of active judges must agree to rehear the case, and at the time of the poll the Court had eleven active circuit judges.  The poll therefore failed by only one vote, with the five dissenting judges indicating that they would have reheard the case en banc.  Of course, the Senate recently confirmed Kara Stoll to be the next Circuit Judge of the Federal Circuit, so the Court will soon have its maximum number of twelve active judges.

If Cuozzo decides to petition the Supreme Court to hear its case, the close en banc vote may indicate to the Supreme Court that there is an intra-circuit split on the application of the BRI standard in post-grant proceedings.  In addition, the principal dissent from the denial of the petition is unusual in that it is a joint dissent of five judges rather than an opinion authored by one judge and joined by others (like the concurrence from the denial of the petition).  Such a joint dissent may also indicate the importance of the issue to the Supreme Court.  Given that the Supreme Court addressed the standard of review for claim construction in district court litigation last Term in Teva v. Sandoz, the Court may be inclined to address the related issue of the standard of claim construction for Patent Office proceedings.  The Supreme Court has also not yet granted certiorari in a patent case for next Term.

It will also be interesting to see if future litigants will petition the Federal Circuit again to rehear en banc the broadest reasonable interpretation standard.  The Court declining this week to consider the issue en banc in this case does not mean it will not do so in the future.  For instance, of the six judges that did not dissent from the denial of the petition, two of them did not join the concurrence from the denial of the petition, Circuit Judges Wallach and Taranto.  In addition, Judge Stoll will also likely be available to consider a future petition directed to the BRI standard.  Perhaps a different majority of the Court will decide to address the issue en banc in a future case.

Judge Dyk's Concurence

Judge Dyk concurred in the per curiam order to address the dissenting opinions' arguments why BRI should not be applied in IPR proceedings.  First, BRI has been used by the Office for more than a century.  Second, there is no demonstrated congressional intent in the America Invents Act (AIA) to change the use of this claim construction standard.  Curiously, the concurrence did note that Congress is seeking to correct this "lack-of-intent" oversight.  Nevertheless, the fact that curative legislation is now pending in both the House and Senate is insufficient to demonstrate congresses' prior intent that BRI should not be the standard.

The Joint Dissent

As mentioned above, five Federal Circuit Judges issued a joint dissent.  Their position can be summed up in the two sentences near the end of the dissent:

But in IPRs, as in district court litigation, an already issued claim is being analyzed solely for the purposes of determining its validity.  In this context, it makes little sense to evaluate the claim against the prior art based on anything than the claim's actual meaning.

Joint Dissent from Denial of Petition, at 9.  Instead, these Judges would have required that claims in these new post-grant proceeding be given their actual meaning.

The joint dissent first took issue with the panel majority's conclusion that Congress "implicitly approved" the claim construction standard adopted by the Patent Office.  Instead, they would have applied the rule that silence means just that -- silence.  The new post-grant review proceedings established by the America Invents Act were a "wholly novel procedure," meant to be more adjudicatory than examinational, as most every other Patent Office proceeding is.  Because these proceedings have no real counterpart at the Office, nothing can be gleaned from congressional inaction.  In fact, the dissent challenged the panel majority for failing to explain why congressional silence did not, instead, signal that it had intended the same legal framework as used in district courts.

Second, the joint dissent asserted that existing case law not only failed to support the panel majority's conclusion, but it supported the opposite conclusion.  The prior cases made clear that the BRI standard was appropriate before issuance of a patent to clarify "the metes and bounds of an invention during the back-and-forth between the applicant and examiner when claims are not yet in their final form."  Id. at 3 (citing In re Prater, 415 F.2d 1393, 1405 (CCPA 1969)).  It is this same "give-and-take" that has existed in previous post-grant proceedings in which BRI has been approved.  In contrast, in district court adjudications, the courts arrive at a "'concise statement[] of the subject matter for which the statutory right to exclude is secured by a grant of the patent.'"  Id. at 4 (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1476 (Fed. Cir. 1998)).  In other words, it is the difference between the use of the BRI standard and determining what the patent claims actually mean.  And because an IPR is a "curtailed, trial-like proceeding meant to efficiently resolve a challenge to patent validity," the claim construction standard used in these proceedings should be no different than that used in district court.

Finally, the joint dissent took issue with the panel majority's holding that the Court should apply Chevron deference to Patent Office's promulgated rules.  First, they did not think it was clear that deference was warranted.  The only congressional grant of authority was for procedural regulations, according to the joint dissent, and therefore should not apply to the claim construction standard.  But, assuming for argument sake that claim construction was more procedural in nature, the joint dissent would still not believe that deference would be warranted because the PTO regulation is contrary to congressional intent.  Nevertheless, even under the deferential standard, the joint dissent would have found the BRI standard unreasonable.

Judge Newman's Dissent

Judge Newman authored her own dissent to address the concerns expressed by the amicus curiae.  In addition to the appellant and the Office of the Solicitor, briefs were filed in this case by the Pharmaceutical Research and Manufacturers of America (PhRMA), the Intellectual Property Owners Association (IPO), the New York Intellectual Property Law Association (NYIPLA), and a collective of companies (3M, Caterpillar, Eli Lilly, General Electric, Glaxosmithkline, Illinois Tool Works, Johnson & Johnson, Pfizer, Procter & Gamble, and Sanofi US) that reportedly "collectively hold tens of thousands of patents."  In fact, based on this showing, Judge Newman made the sweeping comment that the BRI standard "has no defender other than a majority of the Federal Circuit court."

Judge Newman noted the collective's concern that the currently used claim construction standard is inconsistent with the AIA and is against sound patent policy.  The resulting environment "is costly to the inventive community and discourages innovation."  Moreover, the application of different standards in these proceedings and in district court results in no estoppel effect and encourages gamesmanship.  Judge Newman also noted the IPO's concern that the BRI standard is upsetting the settled expectations of inventors, patentees, and anyone else that depends on the patent system.  PhRMA highlighted the importance of the patent system for medical advances, where approximately $40-50 billion in investments are made annually.  Finally, the NYIPLA stressed that the claim construction standard is of great importance and should be heard by the Court en banc.

Judge Newman continued by stressing that all of the amici curiae were in agreement that these new post-issuance adjudicative proceedings are important.  Nevertheless, the legislative purpose is thwarted by the application of a different claim construction standard before the Board.  This was clearly not the legislative intent, and as Judge Newman also pointed out, there is corrective legislation in bills that have already been approved by both the House and Senate committees, although "[p]rompt resolution is reported to be unlikely."  She then provided a list of why the BRI standard is inappropriate:

• Claim construction should be the same for validity and infringement;
• Claim amendments in AIA proceedings require permission, and are limited even when permitted;
• A patentee must now defend a broader construction than it ultimately obtained during prosecution;
• The AIA procedures are surrogate tribunals for determining validity, and the claim construction standard should therefore be the same;
• The public notice of patent claims requires the correct claim construction;
• There is no guidance on what is too broad -- therefore predictability is replaced with fuzziness and uncertainty;
• The PTO tribunals are to review the validity of patents, and it was expected that they would apply the correct law of validity.

Finally, Judge Newman took issue with the concurrence's comment that BRI has been used by the Patent Office for a hundred years.  In patent interferences, according to Judge Newman, the Office does not apply the "broadest" interpretation of anything.  And, in reissue proceedings, the goal is correctness, not breadth.  Therefore, according to Judge Newman, the deciding "question before this court is not whether to 'eliminate' BRI, but whether to impose it on issued patents, where it has not previously reposed."

Mohsenzadeh v. Lee (Fed. Cir. 2015)

By Donald Zuhn --

Last month, in Mohsenzadeh v. Lee, the Federal Circuit affirmed the decision by the District Court for the Eastern District of Virginia granting summary judgment to the Director of the U.S. Patent and Trademark Office that the Office had properly calculated the Patent Term Adjustment (PTA) for U.S. Patent Nos. 8,352,362 and 8,401,963.  The instant appeal involves 35 U.S.C. § 154(b)(1)(A), which requires that the Office send a notification under § 132 or a notice of allowance under § 151 to the applicant within fourteen months of the date of filing of an application or the commencement of national stage of an international application.  At issue in the instant appeal was the impact of a delayed restriction requirement, one type of notification under § 132.

Appellant Hossein Mohsenzadeh filed U.S. Application No. 09/899,905 on July 6, 2001.  More than five years after the '905 application was filed, the Office issued a restriction requirement restricting the claims into four groups.  The group of claims that Mohsenzadeh elected to prosecute issued as U.S. Patent No. 7,742,984, with the Office granting Mohsenzadeh 2,104 days of PTA, of which 1,476 days was due to the Office's delay in issuing the restriction requirement.  Mohsenzadeh filed two divisional applications from the '905 application, each corresponding to a group of claims identified as a separate invention in the restriction requirement issued for the '905 application.  Those applications later issued as the '362 and '963 patents, with the Office granting 0 days of PTA to both patents.

Mohsenzadeh requested reconsideration of the PTA determinations for the '362 and '963 patents, arguing that both patents were entitled to 1,476 days for the Office's delay in issuing a restriction requirement in the '905 application.  The Office denied the requests, and pursuant to 35 U.S.C. § 154(b)(4)(A), Mohsenzadeh filed an action challenging the denials in the Eastern District of Virginia.  The Office moved for summary judgment, which the District Court granted, finding that § 154 unambiguously requires that PTA apply for delays that occurred during the prosecution of the actual application from which the patent directly issued, and not the application from which it derived priority.  The District Court also found that the Office's interpretation of § 154 was reasonable and entitled to deference.

On appeal, Mohsenzadeh argued that § 154 was enacted to adjust the terms of all patents impacted by Office delays, and relied on the text of the statute to support that argument.  The relevant part of the statute reads (emphasis added):

[I]f the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to—
    (i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 not later than 14 months after—
        (I) the date on which an application was filed under section 111(a); or
        (II) the date of commencement of the national stage under section 371 in an international application;
. . .
the term of the patent shall be extended 1 day for each day [of delay].

Mohsenzadeh argued that delays in the issuance of "an original patent" (the '362 and '963 patents) were caused by the delay in providing a notification in "an application" (the '905 application).  The Office responded by arguing that the history of amendment of § 154(b)(1)(A)(i) confirms that Congress was referring to a single application throughout, noting that an earlier draft of the statute omitted (i)(II) and used the definite article, referring to "the application was filed under section 111(a)" (emphasis added).  However, when Congress amended the statute to include (i)(II), the indefinite article was used for both (i)(I) and (ii)(II).

In affirming the District Court's grant of summary judgment to the Office, the Federal Circuit determined that "[t]he language of the provision of the patent term adjustment statute at issue, 35 U.S.C. § 154(b)(1)(A), clearly shows that Congress intended delay in the prosecution of an application to be restored to a single patent, the patent issuing directly from that application."  According to the Court, support for its determination could be found in the amendment of § 154 to change "the application" to "an application," which "signifies that Congress did not intend for patent term adjustments in continuing applications to be made for delays in parent applications."  As the Federal Circuit explained, "[t]he indefinite article, thus, appears not to allow for reference to a different application than the one ripening into 'an original patent,' but simply to signify Congress' adjustment of the statute to account for the fact that a patent may arise either from a domestic application or an international application."  "Because the plain language of 35 U.S.C. § 154(b)(1)(A) does not provide patent term adjustments in continuing applications based on delays in the prosecution of parent applications," the Federal Circuit affirmed the District Court's grant of summary judgment.

Mohsenzadeh v. Lee (Fed. Cir. 2015)
Panel: Circuit Judges Moore, Schall, and Reyna
Opinion by Circuit Judge Reyna

Eon Corp. IP Holdings LLC v. AT&T Mobility LLC (Fed. Cir. 2015)

By David Grosby and Michael Borella --

On September 23, 2010, Eon filed suit against seventeen defendants in the District Court of the District of Delaware, alleging infringement of U.S. Patent No. 5,663,757.  During the case, the '757 patent went through two reexaminations.  The claims were amended in the first reexamination, and then confirmed valid as amended in the second reexamination.  After the reexaminations, the District Court granted summary judgment for the defendants, holding that all claims of the '757 patent were indefinite under 35 U.S.C. § 112 ¶ 6.

Eon appealed.  On May 6, 2015, Chief Judge Prost of the Federal Circuit authored a decision clarifying the structure that patentees must disclose when using means-plus-function language in software patents.  Judges Newman and Bryson joined the opinion.

The '757 patent is directed to software embodied in a "local subscriber data processing station that operates in tandem with a television to interconnect various interactive features of the television."  The software supports actions including "impulse purchase transactions with immediate payment, audience participation voting, and sorting television programs by theme."  Eon's infringement position centered on the defendants' alleged manufacture and use of a smartphone as a modern iteration of the '757 patent's local subscriber data processing station.

Example claim terms that were held to be indefinite include "means under control of said replaceable software means for indicating acknowledging shipment of an order from a remote station" (claim 7); and "means controlled by replaceable software means operable with said operation control system for . . . reconfiguring the operation modes by adding or changing features and introducing new menus" (claims 1-6, 8-10).

35 U.S.C. § 112 ¶ 6 states that if the patentee uses means-plus-function claim limitations, the claims will be construed to cover only the corresponding structure in the specification and the equivalents thereof.  It is well-settled that the "structure" for functions performed by software is the particular algorithm that performs these functions, rather than just the computer hardware that the software runs on.  In Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., the Federal Circuit stated that "in cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor."  There is one narrow exception to this rule, as explained in In re Katz Interactive Call Processing Patent Litigation, that a standard microprocessor can serve as a sufficient structure if the functions claimed "can be achieved by any general purpose computer without special programming."

While Eon did not dispute that the '757 patent failed to disclose an algorithm, it did attempt to invoke the Katz exception.  But, the Federal Circuit had only analyzed this exception once, finding that it did not apply.  In Ergo Licensing, LLC v. CareFusion 303, Inc., the Court held that "[i]t is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed."  Eon attempted to distinguish this case by claiming the '757 patent does not involve any "special programming" because it is relatively simple to implement.

The Federal Circuit rejected this contention, stating a microprocessor can only serve as the structure if the claimed function is "coextensive" with a microprocessor itself.  The Court's three examples of coextensive functions are receiving data, storing data, and processing data.  The Court followed this reasoning to hold "[a] microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor . . . [a]ll other computer-implemented functions require disclose of an algorithm."

The Court further stated that the purpose of § 112 ¶ 6 is to "limit . . . the scope of the claim to the particular structure disclosed, together with equivalents."  Eon contradicted this purpose, because claiming a general purpose computer or microprocessor does little or nothing to limit the ways in which the claimed functions can be implemented.  Thus, "when a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding structure."

Eon did not argue that the functions at issue are coextensive with those of a microprocessor, and its expert stated that a person skilled in the art would need to consult algorithms outside the specification to implement the claimed functions.  As a result, the Federal Circuit found that the mere disclosure of a microprocessor was insufficient for the '757 patent, and therefore the claims containing those terms are indefinite.

This case reiterates that an algorithm must almost always be disclosed in the specification if the patentee is using means-plus-function claiming.  The narrow interpretation of the Katz exception will likely deter future parties from arguing that a general purpose computer or microprocessor serves as a sufficient structure for means-plus-function claim limitations.  However, the Court still left the boundaries of the Katz exception undefined.  Microprocessors are also capable of carrying out tasks such as adding, subtracting, multiplying, and dividing numbers, as well as moving data. Most microprocessors are also capable of floating point and even graphics operations.  Since the Court seems to have limited the Katz exception to only "basic functions" of a microprocessor, it remains unclear where the Court would draw the line between such a basic function and one that is more advanced.  Thus, the Court has left room -- albeit not much -- for parties using more advanced functions to argue that these functions are supported by standard microprocessors.

Eon Corp. IP Holdings LLC v. AT&T Mobility LLC (Fed. Cir. 2015)
Panel: Choef Judge Prost and Circuit Judges Newman and Bryson
Opinion by Chief Judge Prost

Another Aleynikov Trade Secrets Case Ends with Narrower Statute

By Josh Rich --

In 2009, Sergey Aleynikov was a computer programmer employed by Goldman Sachs to write high-frequency trading code.  He accepted an offer to join a new Chicago-based company, Teza Technologies.  Before he left Goldman Sachs, however, he sent portions of Goldman's high frequency trading code to a German website for his own future use.  After Goldman found out, it went to the FBI; Aleynikov was then arrested on a flight home from Chicago.  With that arrest began a circuitous journey through the U.S. legal system, governed by two different sovereigns and under two different legal regimes -- neither one of which was ultimately found to cover his actions.

Aleynikov was first tried in the U.S. District Court for the Southern District of New York on charges of violating the Federal Economic Espionage Act of 1996 ("EEA").[1]  At that time, the EEA's trade secret misappropriation provision established that "[w]hoever, with intent to convert a trade secret, that is related to or included in a product that is produced for or placed in interstate or foreign commerce, to the economic benefit of anyone other than the owner thereof, and intending or knowing that the offense will, injure any owner of that trade secret, knowingly . . . without authorization . . . downloads, uploads, . . . transmits, . . . or conveys such information" would be guilty of a criminal offense punishable with up to ten years in jail.  18 U.S.C. § 1832.  The parties disputed the application of the EEA to Aleynikov's behavior, Aleynikov's intent in uploading the code to the German website, and the importance of the uploaded code.  Eventually, however, the jury found Aleynikov guilty under the EEA.

The U.S. Court of Appeals for the Second Circuit interpreted the EEA differently from the construction applied by the trial court.  It stressed that the EEA had been adopted as a response to the Supreme Court's decision that the National Stolen Property Act (18 U.S.C. § 2314) did not apply to purely intangible property, as found in Dowling v. U.S., 473 U.S. 207 (1985).  676 F.3d 71, 78 (2d Cir. 2012).  It then considered the differences in language between the economic espionage provision of the EEA (18 U.S.C. § 1831) and the trade secrets provision (18 U.S.C. § 1832).  The former did not require that the information be "related to or included in a product that is produced for or placed in interstate or foreign commerce," while the latter did.  Id. at 79.  Given the statutory language, the Second Circuit found that Goldman's was intended to remain confidential (and not be related to any product placed in interstate commerce).  Id. at 82.  It therefore overturned Aleynikov's Federal conviction.

Remarkably, the Second Circuit's decision in the Federal Aleynikov case led to a change in the statute.  Although it cannot apply to the Aleynikov case (under both the Constitution's ex post facto clause and double jeopardy case law), § 1832 was amended to apply to any trade secret "that is related to a product or service used in or intended for use in interstate or foreign commerce."  Thus, in future cases, misappropriation of computer code that is intended to remain confidential, but used in relation to a service performed in interstate commerce, will be an offense under the EEA.

Rather than returning Aleynikov's computer, other evidence, and passport, however, the U.S. Attorney's Office turned it all over to the New York County (Manhattan) prosecutor's office.  Ultimately, that evidence was ruled to be illegally transferred and inadmissible as evidence against Aleynikov.  The prosecutor's office decided to prosecute Aleynikov nonetheless.[2]  The state court prosecution proceeded under two statutes:  two counts of Unlawful Use of Secret Scientific Material (N.Y. Pen. L. 165.07) and one count of Unlawful Duplication of Computer Related Material (N.Y. Pen. L. 156.30).  The former statute provides, "A person is guilty of unlawful use of secret scientific material when, with intent to appropriate to himself or another the use of secret scientific material, and having no right to do so and no reasonable ground to believe that he has such right, he makes a tangible reproduction or representation of such secret scientific material by means of writing, photographing, drawing, mechanically or electronically reproducing or recording such secret scientific material."  Aleynikov challenged his State indictment on numerous grounds, ranging from double jeopardy to the high-frequency trading code not being "secret scientific material" to not having made a "tangible reproduction or representation."  The trial court judge rejected those arguments and allowed the case to go forward to trial.

At trial in April 2015, Aleynikov argued that he had committed no crime, based both on his own lack of culpable intent and the technical language of the relevant statutes.  The jury returned with a split verdict:  guilty on one count of Unlawful Use of Secret Scientific Material, hung on the other count of Unlawful Use of Secret Scientific Material, and not guilty of Unlawful Duplication of Computer Related Material.

On July 6, 2015, however, the trial court judge entered an order overturning the jury's finding of guilt on the count of Unlawful Use of Secret Scientific Material.  The judge asserted that he had no doubt that Aleynikov's actions were wrongful, but also found that prosecutors "did not prove he committed this particular obscure crime."  His findings were based on two deficiencies by the prosecutors:  first, that they failed to prove that Aleynikov made a "tangible reproduction or representation of such secret scientific material" and, second, that they failed to prove that Aleynikov intended to take much of the value of the high-frequency trading code.  Thus, the trial court found, the prosecutors had not proven all of the elements of the charged offense and Aleynikov could not be convicted.

Under these circumstances, Sergey Aleynikov may finally be free from risk of criminal jeopardy from his actions at Goldman.  The Manhattan DA's office could still appeal, but it would be surprising to see an appellate court find that a virtual copy of information would constitute a "tangible reproduction," since the Supreme Court rejected that argument in Dowling.  But future defendants may not be so lucky:  the New York State Senate has already passed a bill that would criminalize the same sort of acts that Aleynikov undertook.  Thus, Aleynikov may end up with a unique position in legal history:  two vacated convictions based on the same acts and two laws changed because of those vacated jury decisions.

---

[1] 18 U.S.C. §§ 1831-39.
[2] The Manhattan DA’s office offered Aleynikov a plea bargain: if he pled guilty to one of the counts, they would agree to drop the other charges and seek no time beyond the one year he had already served awaiting trial on the Federal charges.  Aleynikov rejected the plea deal.

NAI & IPO Release List of Top 100 Universities Receiving Patents in 2014

By Donald Zuhn --

Last month, the National Academy of Inventors (NAI) and the Intellectual Property Owners Association (IPO) published a list of the top 100 worldwide universities that received the most U.S. utility patents in 2014.  The NAI is a non-profit organization comprising U.S. and international universities, and governmental and non-profit research institutions, with over 3,000 individual inventor members.  The organization was founded in 2010 to recognize and encourage inventors, enhance the visibility of academic technology and innovation, and translate the inventions of its members to benefit society.  The joint effort by the NAI and IPO is based on data the IPO collects for its annual list of the top 300 organizations receiving U.S. patents (see "IPO Releases List of Top 300 Patent Holders for 2014").  The top 20 universities on the NAI/IPO listing are as follows (click on table to expand):

The complete list of 100 universities can be found here.

For additional information regarding this and other related topics, please see:

• "IPO Releases List of Top 300 Patent Holders for 2014," July 1, 2015
• "IPO Names Top 100 Patenting Universities," July 24, 2014
• "NAI & IPO Release List of Top 100 Universities Receiving Patents in 2012," January 7, 2014
• "IPO Releases List of Top 300 Patent Holders for 2013," July 7, 2014
• "Brookings Paper Calls for Technology Transfer Model Based on University Start-ups," December 12, 2013
• "IPO Releases List of Top 300 Patent Holders for 2012," June 24, 2013
• "Another Look at IPO Top 300 and Life Sciences Top 53," June 11, 2012
• "IPO Releases List of Top 300 Patent Holders for 2011," June 7, 2012
• "IPO Releases List of Top 300 Patent Holders for 2010," June 30, 2011
• "IPO Releases List of Top 300 Patent Holders for 2009," May 26, 2010
• "IPO Releases List of Top 300 Patent Holders for 2008," May 14, 2009
• "IPO Releases List of Top 300 Patent Holders," May 22, 2008
• "IPO Posts List of Top 300 Patent Holders," April 20, 2007

Conference & CLE Calendar

July 8-10, 2015 - Fundamentals of Patent Prosecution 2015: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) - San Francisco, CA

July 9, 2015 - "Leveraging Post-Grant Patent Proceedings Before the PTAB -- Best Practices for Patentees and Third Parties in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Challenges" (Strafford) - 1:00 to 2:30 pm (EDT)

July 14, 2015 - Patent Quality Chat webinar series -- Face-to-face Examiner Interviews: A Demonstration of USPTO Tools - noon to 1:00 pm (EDT)

July 16-17, 2015 - "Advanced Patent Prosecution Seminar 2015: Claim Drafting & Amendment Writing" (Practising Law Institute) - New York, NY

July 20-21, 2015 - Patent Cooperation Treaty Seminar (American Intellectual Property Law Association) - San Francisco, CA

July 23, 2015 - "Section 103 and Non-Obviousness Post-AIA -- Navigating Timing Changes, Federal Court Treatment, and Secondary Considerations to Meet Patent Validity Requirements" (Strafford) - 1:00 to 2:30 pm (EDT)

July 23-24, 2015 - Patent Cooperation Treaty Seminar (American Intellectual Property Law Association) - Alexandria, VA

August 10-11, 2015 - "Advanced Patent Prosecution Seminar 2015: Claim Drafting & Amendment Writing" (Practising Law Institute) - San Francisco, CA

August 11, 2015 - Patent Quality Chat webinar series -- Measuring Patent Quality - noon to 1:00 pm (EDT)

August 12-14, 2015 - Advanced Patent Law Seminar (Chisum Patent Academy) - Seattle, WA

September 10-11, 2015 - "Advanced Patent Prosecution Seminar 2015: Claim Drafting & Amendment Writing" (Practising Law Institute) - Chicago, IL

***Patent Docs is a media partner of this conference or CLE

PLI Advanced Patent Prosecution Seminar

Practising Law Institute (PLI) will be holding a two-day seminar entitled: "Advanced Patent Prosecution Seminar 2015: Claim Drafting & Amendment Writing" on July 16-17, 2015 in New York, NY, on August 10-11, 2015 in San Francisco, CA, and on September 10-11, 2015 in Chicago, IL.  Patent Docs authors Donald Zuhn and Kevin Noonan will be presenting at the Chicago seminar.

At the New York and Chicago seminars, PLI's faculty will offer presentations on the following topics:

• Ethics in the PTO
• Concurrent Sessions I:  Advanced Specification Drafting Issues -- all concurrent sessions and workshops will provide lectures specific to four different technologies:  biotechnology, chemical/pharmaceutical, electromechanical, and electronics/computers
• Concurrent Sessions II:  Advanced Claim Drafting Issues
• Concurrent Seminars I:  Advanced Claim Drafting
• Patent Eligible Subject Matter After Myriad, Alice and the PTO Interim Guidance
• Lessons Learned from Two Years of Post-Grant Proceedings
• Concurrent Sessions III: Advanced Patent Prosecution Issues
• Concurrent Seminars II:  Advanced Amendment Drafting
• Roundtable Discussions and Wrap Up.

At the San Francisco seminar, presentations will be offered on the following topics:

• Ethics for Patent Prosecutors
• The New 35 USC §102
• Advanced Claim Drafting Issues -- class to split into technology groups, including Electromechanical/Mechanical, Electronics/Computers, and Life Sciences (Biotechnology, Chemical/Pharmaceutical)
• Claim Drafting Seminars -- class to split into technology groups
• Advanced Issues for Written Description -- class to split into technology groups
• Countering the Obviousness Rejection
• Post Final Practice
• The Litigation Perspective on Patent Prosecution
• Amendment Seminars -- class to split into technology groups

A complete program schedule, including descriptions of the presentations and a list of speakers for each seminar can be found here.

The registration fee for each conference is $1,795.  Those interested in registering for the conference can do so here.

Webinar on Non-Obviousness Post-AIA

Strafford will be offering a webinar/teleconference entitled "Section 103 and Non-Obviousness Post-AIA -- Navigating Timing Changes, Federal Court Treatment, and Secondary Considerations to Meet Patent Validity Requirements" on July 23, 2015 from 1:00 to 2:30 pm (EDT).  Thomas L. Irving and Erika H. Arner of Finnegan Henderson Farabow Garrett & Dunner will provide guidance to patent counsel regarding the impact of the Leahy-Smith America Invents Act (AIA) on Section 103 and non-obviousness, and offer best practices for meeting the non-obviousness requirement for patent validity.  The webinar will review the following questions:

• How has the AIA impacted the determination of obviousness?
• How has the Federal Circuit treated the issue of non-obviousness?
• How has PTAB treated obviousness issues?
• What practices should counsel employ in order to meet the non-obviousness requirement?

The registration fee for the webinar is $297 ($362 for registration and CLE processing).  Those interested in registering for the webinar, can do so here.

News from Abroad: Ariosa Diagnostics V Sequenom and Isis Innovation -- A European View

    By Paul Cole* --

The June 12, 2015 decision of the Federal Circuit in the above case has been discussed by Kevin Noonan in his posting of 22 June, but it is believed that the factual and legal background could benefit from further discussion.

It is convenient to consider claims 1 and 2 of US Patent No. 6,258,540 together since PCR is the technique exemplified and both claims 1 and 2 were held not to be patent eligible.

The kernel of the opinion of Judge Reyna is contained in the two passages set out below:

It is undisputed that the existence of cffDNA in maternal blood is a natural phenomenon.  Sequenom does not contend that Drs. Lo and Wainscoat created or altered any of the genetic information encoded in the cffDNA, and it is undisputed that the location of the nucleic acids existed in nature before Drs. Lo and Wainscoat found them.  The method ends with paternally inherited cffDNA, which is also a natural phenomenon.  The method therefore begins and ends with a natural phenomenon.  Thus, the claims are directed to matter that is naturally occurring.

Like the patentee in Mayo, Sequenom contends that the claimed methods are patent eligible applications of a natural phenomenon, specifically a method for detecting paternally inherited cffDNA. Using methods like PCR to amplify and detect cffDNA was well-understood, routine, and conventional activity in 1997.  The method at issue here amounts to a general instruction to doctors to apply routine, conventional techniques when seeking to detect cffDNA.  Because the method steps were well-understood, conventional and routine, the method of detecting paternally inherited cffDNA is not new and useful.

It is useful to consider the steps of the claimed method against these statements to determine the extent to which they can legitimately be held to fall within the natural phenomenon exclusion.  Detail in addition to the express wording of the claim is believed to indicate what would be implicit to a skilled reader.

The first step requires the use of a maternal serum or plasma sample from a pregnant female.  In Example 1, 10μl of centrifuged and heated plasma or serum are placed into a 0.5 ml Eppendorf tube.  While the presence of cffDNA in the maternal serum or plasma is a natural phenomenon, the decision to make use of the serum or plasma sample for amplification and detection is arguably a step towards an application of that phenomenon.

The second step involves addition of pair of primers to the blood or serum sample.  In Example 1 of the patent in issue these are Y1.7 andY1.8 which are specific for the Y-chromosome which is passed only from father to son and determines the sex of the fetus.  Those primers enable amplification of a sequence of the Y-chromosome of length 198 base pairs.  The experimental details in Example 1 are less than complete, but comparison with Example 2 shows that ~300 nM of each amplification probe would have been added and 200μM each of dATP, dCTP, dGTP and dUTP to provide the monomeric nucleotides needed for polymerisation, together with polymerization enzyme and incidental materials.  The serum or plasma samples were then subjected to 60 cycles of polymerase chain reaction in a PCR machine, 30-40 cycles being generally regarded as sufficient for the reaction to go to completion.  As explained at page 3 of the slip opinion, amplifying cffDNA results in a single copy, or a few copies, of a piece of cffDNA being exponentially multiplied across several orders of magnitude, generating thousands to millions of copies of that particular DNA sequence to reach detectable levels.  If a sample originally contains one or more parentally-derived Y-chromosomes, then after amplification thousands or millions of copies of the selected 198 bp short sequence are present in it.

The product of the second step could therefore most appropriately be described as a composition of matter which is for that reason inherently within the realm of patent-eligibility, said composition comprising the blood or serum of the sample, the naturally occurring cffDNA, thousands to millions of copies of the the Y-chromosome short sequence and residual primer, nucleotides, enzyme and other starting materials.  Even if concentration is focused on the short sequences to the exclusion of other relevant process and composition of matter features, the short sequence copies are a wholly artificial creation, being the result of the synthetic chain reaction and to describe them as a natural product gives rise to an error, on the figures of the slip opinion, of 10³-10⁶ which is on any view an exuberant margin.  They have new utility compared to the original blood or serum sample insofar as they are present at levels that are detectable in subsequent test procedures whereas the original cffDNA is not.

Furthermore in equating the selected and amplified short sequences with a natural product, the Court is implicitly disregarding long-established precedents such as Parke-Davis & Co. v. H. K. Mulford Co (adrenalin), Kuehmsted v. Farbenfabriken of Elberfeld Co. (aspirin) and Merck & Co. v. Olin Mathieson Chemical Corp (Vitamin B12) which show that an isolated or purified natural product having new utility is patent-eligible.  By the same logic, the amplified short sequences are a new and different product having new utility in that they have been brought to detectable levels and cannot be equated simply with the corresponding region of the Y-chromosome as a natural product.

The third step involves detecting the presence of the paternally inherited nucleic acid, and although specified at a high degree of generality is not unduly broad having regard to the range of tests that can be performed.  In Example 1, the mere presence of a Y-positive signal distinguishes a male fetus from a female fetus.  In Example 2, quantitative PCR is used as a screening marker for aneupoloid pregnancies e.g. Downs syndrome, Example 3 describes tests for RhD, Example 4 describes tests for pre-eclampsia and Example 5 provides data showing the very high concentration of fetal DNA in serum or plasma compared to the cellular fraction of maternal blood.

Prometheus requires the claim to be considered not merely as an isolated aggregation of features but as an ordered combination.  If that is done, the new result emerges of a test of high sensitivity for a range of medical conditions that can be applied early in pregnancy and avoiding the risks to the fetus inherent in amniocentesis and that starts from a new and hitherto overlooked starting material and that, in the words of Judge Reyna "revolutionised medical care."  The question in Prometheus was whether the described processes added enough, and it is submitted that the benefits achieved should not have been dismissed as adding nothing of significance.

The proposition that because the method steps were well-understood, conventional and routine, the method of detecting paternally inherited cffDNA is not new and useful verges on the incomprehensible.  Essentially the same claim was examined by the EPO Appeal Board T 0146/07 ISIS/Prenatal diagnosis.  The closest prior art was a paper from one of the inventors, Dr Lo.  That paper describes a method for the detection of foetal RhD sequences in peripheral blood of sensitized RhD-negative pregnant women.  In the earlier method described, antecubital venous blood was collected from pregnant women and DNA was extracted from the buffy coat fraction, i.e., peripheral blood mononuclear cells (PBMC) isolated from maternal peripheral blood.  Foetal RhD sequences were detected by PCR using specific primers.  The method therefore differed from that now claimed in that the presence of nucleic acid of foetal origin was detected in buffy coat cells rather than in maternal serum or plasma.  As explained in the patent in issue, it was surprisingly found that foetal DNA is enriched in maternal plasma or serum compared to the amount present in the cellular fraction.  The Opposition Division found that a skilled person starting from the cited document and confronted with the problem of providing a more sensitive method for detecting foetal blood cells would not have derived the solution claimed.  In affirming this finding, the Appeal Board held that even of the technical problem were reformulated to the lesser task of finding an alternative source of foetal nucleic acid a skilled person starting from Dr Lo's paper would not have been motivated to consider serum or plasma samples.  Lack of industrial applicability was not a ground of opposition, but nevertheless it is disturbing that subject matter held inventive by the EPO should be summarily dismissed as ineligible in the U.S. under §101.

The steps quoted from the Prometheus opinion recur in Alice and to that extent may reflect a settled view within the Supreme Court.  However, it is submitted that it is inappropriate to select specific passages from these opinions without taking into account the caution with which they were originally expressed, and the warning at the end of the Prometheus opinion that a new protective rule that seems to suit the needs of one field might produce unforeseen results in another.  It is difficult to avoid the conclusion that in Ariosa the Court is extending the second part of the two-part Prometheus test beyond the original intention of the Supreme Court and has fallen into the trap of making its findings of fact to fit the earlier opinions on which it wished to rely, rather than straightforwardly finding the objective facts and then applying the appropriate jurisprudence to them.

* Mr. Cole is a European Patent Attorney and Partner with Lucas & Co. in Warlingham, Surrey, UK and Professor of IP Law at Bournemouth University.

IPO Releases List of Top 300 Patent Holders for 2014

Life Sciences Top 55

By Donald Zuhn --

Last week, the Intellectual Property Owners Association (IPO) announced the release of its 32nd annual list of the top 300 organizations receiving U.S. patents (see "Top 300 Organizations Granted U.S. Patents in 2014").  Patent Docs Readers may recall that the U.S. Patent and Trademark Office stopped releasing its annual list of top patent recipients in 2006 in order to "discourag[e] any perception that we believe more is better."

The IPO compiled its list by counting the number of utility patents granted during 2014 that listed an organization or a subsidiary as the owner on the printed patent.  The IPO notes that if an assignment to an organization or its subsidiary was recorded after the patent was printed, the patent was not counted, and further, that patents that were granted to two or more organizations jointly were attributed to the organization listed first on the patent.  The IPO also noted that 300,678 patents were issued in 2014, which was an increase from the 277,835 patents that issued in 2013.  The top fifteen companies on the IPO Top 300 are listed below (click on table to expand):

Falling out of the Top 15 in 2013 were Fujitsu Ltd. and Siemens AG, which dropped to 16th and 21st, respectively.  Replacing those companies in the Top 15 were Intel Corp. and AT&T Corp.

As in past years, Patent Docs used the IPO's list of top patent holders to compile a list of the top "life sciences" companies and organizations receiving U.S. patents in 2014.  In the past seven years, the number of life sciences companies and organizations making the list has gone from 51 in 2006 to 47 in 2007, 43 in 2008, 47 in 2009, 56 in 2010, 53 in 2011, 50 in 2012, 49 in 2013, and 55 last year.  Each organization's IPO top 300 ranking for 2014 is indicated in the "2014 IPO Rank" column; the IPO top 300 ranking for 2013 (if available) is indicated in the "2013 IPO Rank" column; and the change in number of patents from 2013 is indicated in "% Change from 2013."  The Life Sciences Top 55 is listed below (click on table to expand):

Life sciences companies and organizations that failed to make the IPO top 300 in 2014 after making it in 2013 included Covidien AG (#49 on the IPO top 300 for 2013), Pacesetter, Inc. (271), Life Technologies Corp. (293), and National Taiwan University (296).  UPDATE: A Patent Docs reader reminded that in January 2015, Medtronic, Inc. announced that it had completed the acquisition of Covidien plc.  Medtronic moved from #42 on the IPO Top 300 for 2013 to #17 in 2014.

Please note that some of the companies and organizations listed above may be involved in work outside the life sciences sector, and therefore, a portion of the patents granted to these companies and organizations may be directed to other than life sciences-related inventions.  In addition, our list includes medical device companies.

For additional information regarding this topic, please see:

• "IPO Releases List of Top 300 Patent Holders for 2013," July 7, 2014
• "IPO Releases List of Top 300 Patent Holders for 2012," June 24, 2013
• "Another Look at IPO Top 300 and Life Sciences Top 53," June 11, 2012
• "IPO Releases List of Top 300 Patent Holders for 2011," June 7, 2012
• "IPO Releases List of Top 300 Patent Holders for 2010," June 30, 2011
• "IPO Releases List of Top 300 Patent Holders for 2009," May 26, 2010
• "IPO Releases List of Top 300 Patent Holders for 2008," May 14, 2009
• "IPO Releases List of Top 300 Patent Holders," May 22, 2008
• "IPO Posts List of Top 300 Patent Holders," April 20, 2007