In Gilead Sciences, Inc. v. Lee (decided February 26, 2015), a panel of the Federal Circuit held that the Patent Office’s rules for calculating patent term adjustment (“PTA”) are not “overbroad and an unreasonable interpretation of the statute.” At issue in Gilead was the “interpretation and application of 35 U.S.C. § 154(b),” which granted the Director authority to “prescribe regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.” Specifically, under that authority, the PTO promulgated a rule that filing a supplemental reply or other paper after a reply has been filed constitutes a “failure to engage in reasonable efforts to conclude prosecution of the application.” 37 C.F.R. 1.704(c)(8).
Gilead filed the application that issued as U.S. Patent No. 8,148,372 (“the ’374 patent”) on Feb. 22, 2008. The PTO issued a restriction requirement on Nov. 18, 2009, and Gilead filed a response to a restriction requirement on Feb. 18, 2010. Fifty-seven days later, Gilead filed a supplemental IDS citing two co-pending Gilead patents. The PTO asserted that 37 C.F.R. § 1.704(c)(8) establishes that a submission of a supplemental IDS (“other paper”) after a response to a restriction requirement (“reply”) requires a reduction of PTA and thus reduced the PTA by 57 days.
In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., the Supreme Court settled the issue of the level of deference the Federal Circuit must give to District Court determinations during claim construction. The case specifically addressed whether subsidiary findings of fact relating to extrinsic evidence, made by a judge during claim construction, are entitled to the “clearly erroneous” standard of review rather than the de novo standard historically used by the Federal Circuit.
At the District Court, Sandoz asserted that the claims were indefinite under 35 U.S.C. § 112, ¶ 2 because the term “molecular weight” was ambiguous. Teva argued that the term meant “peak average molecular weight,” which it said was clear in light of the specification. Sandoz asserted that Figure 1 of the patent showed that this interpretation was not reasonable and discussed that Teva asserted different definitions of “molecular weight” during the prosecution of familial patents using the term. The District Court considered expert testimony from both sides to assist his determination of the meaning of the term “molecular weight.” The District Court accepted Teva’s expert’s testimony as more credible and held that the claims were not indefinite because the meaning of “molecular weight” is “peak average molecular weight” in light of the specification.
Kyle Helgemoe and Neha Pathak were admitted to the Minnesota State Bar on October 31, 2014. Fogg & Powers congratulates these two new associate attorneys on their admissions. See Neha’s bio and see Kyle’s bio.
The opinion for the first of three highly anticipated patent cases taken up by the Supreme Court in the October Term of 2013 has been released. In Nautilis, Inc. v. Biosig Instruments, Inc., the Supreme Court continued its recent trend of redirecting the Federal Circuit toward a more limited view of patent rights.
This case addressed “indefiniteness” under 35 U.S.C. §112, ¶2. The disputed claim term regarded two electrodes “mounted … in a spaced relationship with each other.” The claim including this language recited two sets of such electrodes, each set on one side of an elongate member (e.g., cylindrical bar). The District Court construed the term to mean “there is a defined relationship between the [first] electrode and the [second] electrode on one side of the cylindrical bar and the same or a different defined relationship between the [first] electrode and the [second] electrode on the other side of the cylindrical bar”. Despite being able to construe the term, the District Court granted a summary judgment motion agreeing that the term was indefinite under §112, ¶2, because the term as construed “did not tell [the court] or anyone what precisely the space should be,” or supply “any parameters” for determining the appropriate spacing.
In Alice Corp Pty. Ltd. v. CLS Bank International, the Supreme Court attempted to clear up the law around 35 U.S.C. §101. The Supreme Court unanimously affirmed the judgment of the Federal Circuit, ruling that all of Alice Corp’s claims were invalid as directed to non-statutory subject matter.
The claims at issue were directed to a computed implemented scheme for mitigating settlement risk using a third party intermediary. In particular, the claims were designed to facilitate the exchange of financial obligations between two parties using a computer system as a third-party intermediary. The intermediary maintains balances in the parties’ real-world accounts, and instructs relevant financial institutions to carry out a transaction if the balances of each parties’ accounts allows such a transaction. The claims included a method claim, a computer system configured to carry out the method, and a computer-readable medium containing program code for performing the method.
The Supreme Court used the two step test from Mayo v. Prometheus to answer the question of whether the claims at issue were directed to non-statutory subject matter. The first step is: are the claims directed to non-statutory subject matter (laws of nature, natural phenomena, and abstract ideas). If the claims are directed to non-statutory subject matter, the second step is addressed, which was described as a “search for an ‘inventive concept’” over and above the ineligible subject matter.