Q&A from Webinar on Top Patent Law Stories of 2015

By Kevin E. Noonan, Michael Borella & Donald Zuhn --

Earlier today, we presented a live webinar on the "Top Patent Law Stories of 2015."  The webinar covered seven of the twenty stories that made it onto Patent Docs ninth annual list of top patent stories.  Posts on our top twenty stories can be found here (stories #16 to #20), here (stories #11 to #15), here (stories #6 to #10), and here (stories #1 to #5).  The seven stories that we addressed during the webinar were:

➤ District Court Patent Decisions Cause Concern
➤ Federal Circuit Clarifies PTA Rules
➤ Federal Circuit Decides Akamai v. Limelight on Remand
➤ Hi-Tech Fallout from Alice Corp. v. CLS Bank Int'l
➤ USPTO Expands on Subject Matter Eligibility Guidance
➤ Federal Circuit Decides Ariosa v. Sequenom and Denies Rehearing En Banc
➤ Federal Circuit Decides Amgen v. Sandoz

Due to time constraints, we were unable to answer questions before the presentation was concluded and wanted to provide answers to some of the questions that attendees submitted.

Q:  Do patents issue at a certain time on Tuesday?  I'll file on Monday anyway!­

Kevin:  They are accessible on the website after midnight (in my experience).  But I don't think filing them on the grant date prior to their accessibility would overcome the decision that says a continuing/divisional application must be filed before grant.

Don:  This question was raised in Immersion Corp. v. HTC Corp.  HTC contended that because patents issue automatically at 12:00:01 am on their issue date, Immersion could not have filed the applications that issued as the '720, '181, and '105 patents "before" the parent patent issued since the later-filed applications were filed on the same day as the parent patent issued.  Although the District Court was "not convinced of the correctness of Defendants' contention that a patent automatically issues at 12:00:01 a.m. on the issue day," the Court noted that "Plaintiff has presented no evidence of when on August 6, 2002 [i.e., the parent patent's issue date] the applications were filed."  Ultimately, I think the decision to file continuing applications no later than the Monday before the parent patent issues is the most prudent choice.

Q:  Would the USPTO have contended that Gilead was delinquent even if they only learned of the publications the day they filed the IDS?

Kevin:  Ther­e are savings provisions for art not known to the applicant under these circumstances.  But there is a short timeline for getting such art before the examiner in a way that does not implicate PTA.

Don:  The USPTO would not have considered Gilead to be delinquent if Gilead had filed a certification under 37 C.F.R. § 1.704(d)(1).  That section states that:

A paper containing only an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) of this section [(c)(6) and (c)(8) were discussed during today's webinar] if it is accompanied by a statement that each item of information contained in the information disclosure statement:
    (i) Was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement; or
    (ii) Is a communication that was issued by a patent office in a counterpart foreign or international application or by the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement.

As indicated in the rule, the short timeline Kevin mentioned above is 30 days.  Unlike the 3-month certification of 37 C.F.R. § 1.97(e), however, the 30-day period of § 1.704(d)(1) runs from the date on which information was "received by any individual designated in § 1.56(c)."

Q:  ­What section of the AIA directs patentees to challenge Patent Term Adjustment determinations in the Eastern District of Virginia?

Don:  Section 9 of the Leahy-Smith America Invents Act amended 35 U.S.C. § 154(b)(4)(A) by striking ''United States District Court for the District of Columbia" and inserting ''United States District Court for the Eastern District of Virginia."  Section 154(b)(4)(A), which concerns appeals of patent term adjustment determinations, states that "[a]n applicant dissatisfied with the Director's decision on the applicant's request for reconsideration [of a PTA determination] shall have exclusive remedy by a civil action against the Director filed in the United States District Court for the Eastern District of Virginia within 180 days after the date of the Director's decision on the applicant's request for reconsideration."  By the way, the same change in courts was also made to 35 U.S.C. §§ 32, 145, 146, and 293.

Q:  ­Are examiners given Chevron deference on their interpretations of USPTO regulations or is it only USPTO official policy that is given Chevron deference?­

Kevin:  The examiners act under the Director's authority, so I think deference extends to their actions (provided that those actions are upheld on appeal or through grant, which puts the Director's imprimatur on them).

Q:  Was MIT also a party to the Akamai v. Limelight case?  How could Akamai as a licensee bring an infringement suit on its own?­

Mike:  The inventors of the MIT patent were an MIT professor and graduate student.  They founded Akamai to put their invention to work.  Akamai was the exclusive licensee of the patent, and MIT was also a party in the suit.

Q:  With regard to Limelight, are we saying that there was direct infringement because all of the elements could be attributed to a single actor (Limelight) since those elements performed by the customer were necessary to avail themselves of Limelight's service?­

Mike:  In a nutshell, yes.  It helped that Limelight instructed their customers on how to do the tagging.

Q:  ­What is the Mayo/Alice test?­

Mike:  This is the two prong test for patent-eligibility under § 101 that the Supreme Court introduced in Mayo Collaborative Services v. Prometheus Laboratories and refined in Alice Corp. v. CLS Bank International.  As explained in our presentation, it is applied as follows:

1.  Is the claim at issue is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea?

2.  If so, then is any element, or combination of elements, sufficient to ensure that the claim amounts to "something more" than the judicial exclusion. Generic computer implementation of an otherwise abstract process does not qualify as "something more."

Q:  Would you say that Bilski is overruled?­

Mike:  No, Alice did not overrule Bilski per se, but did erase the notion that merely satisfying the requirements of the machine or transformation test renders a claim patent-eligible.  The machine or transformation test is still a tool that can be used to evaluate patent-eligibility, but just tying a process to a generic machine will not satisfy the Alice test.

Q:  What does "ordered" combination mean?­

Mike:  Like "something more," the Supreme Court did not shine much light on this term.  Here is a quote from Alice:  "We have described step two of this analysis as a search for an 'inventive concept' -- i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself."  From Diehr we have "a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made."  The latter sounds like § 102/103 language but was in reference to § 101.

Q:  How do you think database related applications will play under Alice?  This is extremely valuable technology, but it seems pretty "computer-y" without much hardware to sink one's teeth into.­

Mike:  One cannot patent just an arrangement of data -- see In re Warmerdam.  However, a use of data in a database could be patent-eligible if that use meets § 101 requirements per Alice.  In other words, some claims incorporating a database are getting issued post-Alice, but claims to a database itself are not.

Q:  What do you think about using the term "configured to" in a claim?  Is it good practice?

Mike:  I could write a lot here, but in short I try to avoid "configured to" unless there doesn't seem to be a better alternative.  This language can be used to invoke § 112 ¶ 6, so you need to be careful.  Also, I don't think it will have much weight at all in an Alice analysis.

Q:   In Ariosa, why didn't the court focus on the fact that the claims were limited to the cell-free portion of maternal blood which previously was being thrown out?

Kevin:  It didn't matter -- that is more an anticipation/obviousness argument which is not relevant under Mayo.

Comments

[A Rational Person]

"Q: In Ariosa, why didn't the court focus on the fact that the claims were limited to the cell-free portion of maternal blood which previously was being thrown out?

Kevin: It didn't matter -- that is more an anticipation/obviousness argument which is not relevant under Mayo."

Of course, this raises the question: Why should an Examiner ever reject a claim under 35 USC 103.

Thanks to the Alice-Mayo test, pretty much any type of 35 USC 103 rejection an Examiner can make could be restated as a 35 USC 101 rejection. Plus, if an Examiner can't find a prior art reference teaching or suggesting a particular claim limitation, the Examiner can just call that limitation "an abstract idea" or "an application of a law of nature."

Also, by rejecting the claim under 35 USC 101, is free to reject the claim based purely on conclusory statements, something which KSR held cannot be done under 35 USC 103.

I also think similar things can be said about rejecting a Claim under 35 USC 101 in comparison to rejecting the claim under 35 USC 102 or for failing to fulfill the enablement requirement of 35 USC 101.

In all or vitually all situations I can think of, the 35 USC 101 rejection is easier to make for the Examiner and harder to rebut for the applicant.

[GrzeszDeL]

"The examiners act under the Director's authority, so I think deference extends to their actions (provided that those actions are upheld on appeal or through grant, which puts the Director's imprimatur on them)."

Hm, that does not seem right to me. United States v. Mead, 533 U.S. 218, 221 (2001) held that the acts of customs inspectors are not entitled to Chevron deference, even though presumably the customs inspectors are acting under the authority of the head of customs. I think that it is hard to apply Chevron deference to low level agency officials, and that would include patent examiners.

[Kevin E Noonan]

Dear GrzeszDel: I can think of counter arguments but admin law is not my particular area of expertise. David Boundy, if you are listening can we have your take on this?

Thanks for the comment.

[David Boundy]

GrzeszDei is correct. Mead is the correct case. Not every bit of fluff coming out of an agency is entitled to high deference, only pronouncements made after full agency deliberation.

For findings of fact, the Federal Circuit gives "substantial evidence" deference to the Board, and the Board is supposed to (but doesn't always) review the examiner de novo.

Issues of law (where Chevron starts to apply) in decisions of the Board are typically reviewed de novo. I can imagine there are situations in which the Board's legal analysis gets weak Skidmore deference, but I can't think of one off the top of my head.

[David Boundy]

There are many constraints on Chevron that would exclude most issues in most Board decisions. The exclusion that would apply most often is "Chevron Step Zero" -- since most issues of law are substantive law, and the PTO has no substantive rule-making authority, the Board's decisions on issues of law are not entitled to Chevron deference.