Category : obviousness

Patent Month in Review: February 2017

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Supplying a Single Part of Many in an Infringing Device Does not Give Rise to Infringement Liability

The Supreme Court weighed in on whether supplying a single part for export in a multi-part infringing assembly gave rise to liability in Life Technologies Corp. v. Promega Corp. (Supreme Court 2017). In finding no liability, its conclusion was succinct: “supply of a single component of a multicomponent invention for manufacture abroad does not give rise to §271(f)(1) liability.”

Board (and Examiners) Must Sufficiently Identify Elements in Prior Art and Justify Motivation to Combine References

Patent applicants sometimes feel frustrated by loose rejections where examiners don’t explicitly point out where each claim element may be found in a reference, or more often, what would motivate a person of ordinary skill in the art to combine references. In PersonalWeb Tech v. Apple (Fed. Cir. 2017), the Federal Circuit gave some support to the frustrated applicant, stating that “[t]he Board did not sufficiently explain and support the conclusions that (1) Woodhill and Stefik disclose all of the elements recited in the challenged claims of the ’310 patent and (2) a relevant skilled artisan would have been motivated to combine Woodhill and Stefik in the way the ’310 patent claims and reasonably expected success.”

“Consisting of” Still Sets of a Closed List

Careful claim drafters know that “comprising” and “comprised of” set off open lists that include the elements therein and others unidentified, and “consisting” sets off closed lists that are limited to the elements in the list and no others. Shire Development v. Watson Pharma (Fed. Cir. 2017) confirmed this reading on “consisting of:” “‘consisting’ creates a very strong presumption that that claim element is ‘closed’ and therefore excludes any elements, steps, or ingredients not specified in the claim.”

Sovereign Immunity Protects Public Universities from IPR Challenges

According to the Patent Trial and Appeals Board, the 11th Amendment shields public universities from IPR challenges. The 11th amendment reads, “The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.” The case has not gone higher than the PTAB at this point but this is good news for public universities with large patent portfolios. It will be interesting to see how this might apply to public university licensees. See Covidien LP v. University of Florida Research Foundation Inc., Case Nos. IPR 2016-01274, 01275, and -01276 (PTAB January 25, 2017).

Who is the Director of the USPTO: Solved

For reasons unknown, the identity of the USPTO director was unclear since President Trump’s inauguration. In response to FOIA requests from Patently-O’s Dennis Crouch, the USPTO now confirms that Michelle Lee is still Director.

[T]he Agency is responding that Michelle K. Lee is the Director of the United States Patent and Trademark Office and Anthony P. Scardino is the Acting Deputy Director of the United States Patent and Trademark Office.

If you have questions, contact me.


Quick Hitter: Is it Really Obvious to Combine Those References?

By Stephen B. Schott

dreamstime_xs_13876035 2One justification for a patent office rejection is the brick wall, “It would have been obvious for a person of ordinary skill in the art to combine these references.” This is a tough statement to overcome for any would-be patentee hoping to argue that an examiner improperly combined two (or more) references in issuing an obviousness rejection.

But the Federal Circuit just gave applicants a boost in In re Nuvasive, Inc.

Motivation to Combine Background

The Supreme Court, in its 2007 KSR Int’l Co. v. Teleflex Inc. case, considered the standard for when it is acceptable to combine references in forming an obviousness rejection. “[It] can be important to identify a reason that would have prompted [a person having ordinary skill in the art] to combine the elements in the way the claimed new invention does.”

Nuvasive and a Higher Threshold

The Federal circuit stated that “the PTAB “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” As most applicants know, this threshold is a higher bar than the boilerplate sentence that usually justifies the combination of references in a rejection. The Federal Circuit addressed such boilerplate rationale for combinations and found it wanting: “‘[C]onclusory statements ‘alone are insufficient and, instead, the finding must be supported by a “reasoned explanation.” (citing In re Lee.)

The next time you’re faced with a questionable combination of references, don’t despair: Cite Nuvasive and question the justification: Ask for the rational connection between the facts found and choice to combine the references.

If you have questions, contact me.

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