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February 2012
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USPTO issues preliminary guidance to the Patent Examining Corps

"Yesterday, in a unanimous decision, the Supreme Court held that the claims in Mayo Collaborative Services v. Prometlreus Laboratories, Inc. (Mayo) effectively claim a law of nature and are not patent-eligible under 35 U.S.C. § 101. The purpose ofthis memorandum is to provide preliminary guidance to the Patent Examining Corps, Additional guidance on patent subject matter eligibility under 35 U .S,C. § 101 will be issued soon."

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Mayo Collaborative Services v. Prometheus Laboratories, Inc.

BREYER, delivered the opinion of the Court.

Section 101 of the Patent Act defines patentable subject matter. It says:

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U. S. C. §101. The Court has long held that this provision contains an important implicit exception. "[L]aws of nature, natural phenomena, and abstract ideas" are not patentable. Diamond v. Diehr, 450 U. S. 175, 185 (1981); see also Bilski v. Kappos, 561 U. S. ___, ___ (2010) (slip op., at 5); Diamond v. Chakrabarty, 447 U. S. 303, 309 (1980); Le Roy v. Tatham, 14 How. 156, 175 (1853); O'Reilly v. Morse, 15 How. 62, 112-120 (1854); cf. Neilson v. Harford, Webster's Patent Cases 295, 371 (1841) (English case discussing same). Thus, the Court has written that "a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are `manifestations of ... nature, free to all men and reserved exclusively to none.'" Chakrabarty, supra, at 309 (quoting Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, 130 (1948)).

"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Gottschalk v. Benson, 409 U. S. 63, 67 (1972). And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.

The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. Thus, in Diehr the Court pointed out that "`a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.'" 450 U. S., at 187 (quoting Parker v. Flook, 437 U. S. 584, 590 (1978)). It added that "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." Diehr, supra, at 187. And it emphasized Justice Stone's similar observation in Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U. S. 86 (1939):

"`While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.'" 450 U. S., at 188 (quoting Mackay Radio, supra, at 94). See also Funk Brothers, supra, at 130 ("If there is to be invention from [a discovery of a law of nature], it must come from the application of the law of nature to a new and useful end").

Still, as the Court has also made clear, to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words "apply it." See, e.g., Benson, supra, at 71-72.

The case before us lies at the intersection of these basic principles. It concerns patent claims covering processes that help doctors who use thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage level is too low or too high. The claims purport to apply natural laws describing the relationships between the concentration in the blood of certain thiopurine metabolites and the likelihood that the drug dosage will be ineffective or induce harmful side-effects. We must determine whether the claimed processes have transformed these unpatentable natural laws into patent-eligible applications of those laws. We conclude that they have not done so and that therefore the processes are not patentable.

Our conclusion rests upon an examination of the particular claims before us in light of the Court's precedents. Those cases warn us against interpreting patent statutes in ways that make patent eligibility "depend simply on the draftsman's art" without reference to the "principles underlying the prohibition against patents for [natural laws]." Flook, supra, at 593. They warn us against upholding patents that claim processes that too broadly preempt the use of a natural law. Morse, supra, at 112-120; Benson, supra, at 71-72. And they insist that a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an "inventive concept," sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself. Flook, supra, at 594; see also Bilski, supra, at ___ (slip op., at 14) ("[T]he prohibition against patenting abstract ideas `cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or adding `insignificant postsolution activity'" (quoting Diehr, supra, at 191-192)).

We find that the process claims at issue here do not satisfy these conditions. In particular, the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field. At the same time, upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.

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Bridgestone Americas Tire Operations, LLC v. Federal Corp

In light of the identity of the goods, the lengthy prior use of POTENZA and TURANZA, the market strength of the POTENZA and TURANZA marks, and the similarities of words, sounds, and connotation with MILANZA, suffi-cient similarity has been shown as would be likely to cause consumer confusion, deception, or mistake. We conclude that the Board erred in denying Bridgestone’s opposition to the registration of MILANZA for intended use with tires. The Board’s decision is reversed.


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Marine Polymer Technologies, Inc. v. HemCon, Inc.

peals from a judgment of the United States District Court for the District of New Hampshire holding that HemCon infringed U.S. Patent 6,864,245 (“the ’245 patent”) as-signed to Plaintiff-Appellee Marine Polymer Technologies, Inc. (“Marine Polymer”). On September 26, 2011, a panel of this court reversed the district court’s decision, conclud-ing that HemCon had acquired intervening rights in the ’245 patent based on actions taken by Marine Polymer during a parallel reexamination proceeding. Marine Polymer Techs., Inc. v. HemCon, Inc., 659 F.3d 1084 (Fed. Cir. 2011) (“Panel Opinion”), vacated, 2012 U.S. App. LEXIS 1155 (Fed. Cir. Jan. 20, 2012). Upon reconsidera-tion en banc, we affirm the judgment of the district court by an equally divided court. Although the district court did not have the reexamination before it or decide the effect of that issue on its decision, we also consider Hem-Con’s arguments with respect to the reexamination and a majority of this court concludes as an alternative ground for affirmance that intervening rights do not apply to claims that have not been amended and are not new.

[. . . ]

Accordingly, the final judgment of the district court is affirmed.


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Zoltek Corp. v. US

In its original suit before the Court of Federal Claims, Zoltek alleged infringement by the Government of its patent, and a right to recover compensation therefore by virtue of 28 U.S.C. § 1498(a). The trial court ruled for the Government on the § 1498 issue on the basis of its under-standing of § 1498(c) as applied to these facts, but permit-ted Zoltek’s case to go forward on its theory of a taking of its patent rights under the Fifth Amendment. We now hold:

1. 28 U.S.C. § 1498(a) creates an independent cause of action for direct infringement by the Government or its contractors that is not dependent on 35 U.S.C. § 271(a). Direct infringement under § 1498(a) comes within the scope of the right to exclude granted in 35 U.S.C. §154(a)(1). Thus, under § 1498(a) the Government has waived its sovereign immunity for direct infringement, which extends not only to acts previously recognized as being defined by § 271(a) but also acts covered under § 271(g) due to unlawful use or manufacture. Therefore, as in this case, when the product of a patented process is used in, or imported into, the United States by or for the United States, there is direct infringement for the pur-poses of a § 1498 action. We do not decide the issue of indirect infringement, under §§ 271(b), (c), and (f), which is not before us. Zoltek has filed a complaint with well-pleaded allegations against the Government for infringe-ment under § 1498(a). The trial court’s holding to the contrary is reversed, and the case is remanded for further proceedings in accordance with this opinion;

2. Properly understood, § 1498(c) has no application to the facts of this case in which a United States patent was allegedly infringed by activities that took place within the United States. Thus § 1498(c) does not bar Zoltek’s suit against the Government. The trial court’s holding to the contrary is reversed;

3. When the United States is subject to suit under § 1498(a) for alleged infringement of a patent by a con-tractor acting by and for the United States, the contractor by law is rendered immune from individual liability for the alleged infringement. The trial court’s holding to the contrary on appeal in this case is reversed; and

4. Since the Government’s potential liability under § 1498(a) is established, we need not and do not reach the issue of the Government’s possible liability under the Constitution for a taking. The trial court’s determina-tions on that issue are vacated.


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Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.

In sum, we reverse the district court’s grant of sum-mary judgment on res judicata grounds to Revolution and Marchon with respect to products that were not at issue in the California Actions and were not covered by the Marchon settlement agreement, in particular the New Design products sold by Revolution and Marchon. We remand for further proceedings, including a determina-tion as to whether the New Design products that Revolu-tion introduced during the pendency of the Revolution California Action were included within the scope of that litigation, and whether principles of collateral estoppel have any effect of limiting Aspex’s rights to proceed under the ’545 patent against the defendants. If the court determines that Aspex’s action against one or more of the defendants is not barred, the court will be required to determine the issue of infringement based on the con-struction of the critical terms of the two claims at issue in this case.

Aspex’s allegations of induced infringement against Zelman and Nike stem from Revolution’s and Marchon’s alleged direct infringement, respectively. Given our holding above reversing the district court’s grant of sum-mary judgment in favor of Revolution and Marchon, the district court’s grant of summary judgment in favor of Zelman and Nike is likewise reversed and the proceedings against those defendants are included within the scope of the remand.

Each party shall bear its own costs for this appeal.


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Skydive Arizona, Inc. v. Quattrocchi

Skydive Arizona owns and operates one of the largest skydiving centers in the world. Defendants Butler, Quattrocchi, Atlanta SC, Inc., CASC, Inc., and IGOVincent, Inc. (collectively, SKYRIDE) operate an Internet and telephone-based advertising service, making skydiving arrangements for customers, and issuing certificates that can be redeemed at various drop zones around the country. Skydive Arizona sued SKYRIDE for false advertising, trademark infringement and cybersquatting. Following partial summary judgment and a trial, a jury awarded Skydive Arizona $1 million in actual damages for false advertising, $2.5 million in actual damages for trademark infringement, $2,500,004 in profits resulting from the trademark infringement, and $600,000 for statutory cybersquatting damages. The district court denied SKYRIDE’s motions to reduce the jury verdict, for judgment notwithstanding the verdict, for remittitur, and for a new trial, and instead doubled Skydive Arizona’s $1 million actual damages award for false advertising and $2.5 million award for trademark infringement. The final judgment totaled $600,000 in statutory damages, $7 million in enhanced actual damages, and $2,500,004 in disgorged profits, plus attorney fees. The district court also entered a permanent injunction against SKYRIDE’s operations in Arizona. SKYRIDE now appeals the district court’s grant of partial summary judgment, the jury’s actual damages and profits awards, and the district court’s damages enhancement. Skydive Arizona cross-appeals the district court’s limitation of the permanent injunction to Arizona, and seeks a nationwide injunction against SKYRIDE. We have jurisdiction under 28 U.S.C. § 1291, and we affirm as to all claims, except for the doubling of actual damages.

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Digital-Vending Services Int'l, LLC v. The University of Phoenix, Inc.

In a patent infringement action against a for-profit university concerning patents directed to regulating access to content that is delivered through a computer network, the district court's grant of summary judgment to the defendant is: 1) vacated as to certain claims of one patent, where there was an incorrect claim construction of "registration server"; 2) remanded to allow the district court to consider the defendant's alternative non-infringement argument as to that patent; and 3) affirmed with respect to all other claims, where the district court's construction of "registration server" was harmless error with respect to those claims.

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In re Viterra Inc.

On appeal of a decision of the Trademark Trial and Appeal Board affirming an examining attorney's refusal to register the trademark XCEED, in standard character form, for agricultural seed, the decision is affirmed, where: 1) the Board’s factual findings were supported by substantial evidence; and 2) the XCEED mark was likely to cause confusion with an existing X-Seed mark.

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In re Staats

A decision of the Board of Patent Appeals and Interferences rejecting certain claims of a broadening reissue application is reversed, where: 1) an earlier broadening reissue application had been filed within the two-year statutory period of 35 USC section 251, and an applicant is not barred from making further broadening changes after the two-year period in the course of the prosecution of the reissue application; and 2) this rule is not limited to situations where later broadened claims are related to, or are directed to the same embodiment as in the original application.

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