TGIF for Halloween
"Bat Decorative Object"
"Bat Decorative Object"
The Federal Circuit also rejected other articulations of the test for patent-eligible subject matter under Section 101 from prior panel decisions:
"The application contains eleven claims, which Applicants argue together here. Claim 1 reads:
A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:
(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;
(b) identifying market participants for said commodity having a counter-risk position to said consumers; and
(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions
". . . The question before us then is whether Applicants' claim recites a fundamental principle and, if so, whether it would pre-empt substantially all uses of that fundamental principle if allowed. Unfortunately, this inquiry is hardly straightforward. . . ."The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. See Benson, 409 U.S. at 70 ("Transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines."); Diehr, 450 U.S. at 192 (holding that use of mathematical formula in process "transforming or reducing an article to a different state or thing" constitutes patent-eligible subject matter); see also Flook, 437 U.S. at 589 n.9 ("An argument can be made [that the Supreme] Court has only recognized a process as within the statutory definition when it either was tied to a particular apparatus or operated to change materials to a 'different state or thing'"); Cochrane v. Deener, 94 U.S. 780, 788 (1876) ("A process is . . . an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.").7 A claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed. And a claimed process that transforms a particular article to a specified different state or thing by applying a fundamental principle would not pre-empt the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article.
". . . The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article. See Benson, 409 U.S. at 70. Certain considerations are applicable to analysis under either branch. First, as illustrated by Benson and discussed below, the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility. See Benson, 409 U.S. at 71-72. Second, the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity. See Flook, 437 U.S. at 590.
". . . We hold that the Applicants' process as claimed does not transform any article to a different state or thing. Purported transformations or manipulations simply of public or private legal obligations or relationships,business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances. Applicants' process at most incorporates only such ineligible transformations. See Appellants' Br. at 11 ("[The claimed process] transforms the relationships between the commodity provider, the consumers and market participants . . . ."). As discussed earlier, the process as claimed encompasses the exchange of only options, which are simply legal rights to purchase some commodity at a given price in a given time period. See J.A. at 86-87. The claim only refers to "transactions" involving the exchange of these legal rights at a "fixed rate corresponding to a risk position." See ′892 application cl.1. Thus, claim 1 does not involve the transformation of any physical object or substance, or an electronic signal representative of any physical object or substance. Given its admitted failure to meet the machine implementation part of the test as well, the claim entirely fails the machine-or-transformation test and is not drawn to patent-eligible subject matter.
". . .We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine."
"In light of the present opinion, we conclude that the Freeman-Walter-Abele test is inadequate. . . . This test, in its final form, had two steps: (1) determining whether the claim recites an "algorithm" within the meaning of Benson, then (2) determining whether that algorithm is "applied in any manner to physical elements or process steps."
"The second articulation we now revisit is the "useful, concrete, and tangible result" thereby overruling the portions of its opinions in State Street Bank & Trust Co v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1998), that indicated that a claim is patent-eligible if it "produces a useful, concrete and tangible result.
" . . . [W]e also conclude that the "useful, concrete and tangible result" inquiry is inadequate and reaffirm that the machine-or-transformation test outlined by the Supreme Court is the proper test to apply.
However, the Court did not overrule the State Street Bank decision with regard to patent-eligibility for business methods:
"We further reject calls for categorical exclusions beyond those for fundamental principles already identified by the Supreme Court.22 We rejected just such an exclusion in State Street, noting that the so-called "business method exception" was unlawful and that business method claims (and indeed all process claims) are "subject to the same legal requirements for patentability as applied to any other process or method." 149 F.3d at 1375-76. We reaffirm this conclusion."More at these links from Foley & Lardner, Wilmer Hale, Sutherland, McDermott Will & Emery, and Professor Crouch.
Effective 01 November 2008, applicants may select IP Australia (IPAU) as the International Searching Authority (ISA) in international applications filed in the United States Receiving Office (RO/US). The search fee for requesting IPAU as the ISA will be $1514 (Fee Code: 1712). The revised PCT Fee Schedule will be posted at: http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm. See the press release at: http://www.uspto.gov/web/offices/com/speeches/08-36.htm.
This basic guide by FISH & RICHARDSON P.C. provides useful information on building up a trade secret protection program and in preventing unauthorized use of the trade secrets of others. More
From the WIPO SMEs NEWSLETTER for October 2008:
This article by International Chamber of Commerce (ICC) suggests some guidelines that help businesses prepare and implement policies to improve protection of their IP rights and to reduce the business risks associated with counterfeiting and piracy. More
In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1336 (Fed. Cir. 2008) (citing In re Omeprazole Patent Litig., 483 F.3d 1364, 1379 (Fed. Cir. 2007)). In other words, the prior art must enable the claimed invention. Minn. Mining & Mfg. Co. v. Chemque, Inc. (3M), 303 F.3d 1294, 1301 (Fed. Cir. 2002). The “undue experimentation” component of that equation examines (1) the quantity of experimentation; (2) the amount of direction or guidance present; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
. . . The district court also did not find the dosage information in the disclosure to teach a proper treatment. Instead the trial court noted that “the dosage guidelines are broad and not specific to any of the hundreds of formula I compounds of the claimed invention or to any of the listed diseases.” Id. at 433. Moreover, the '940 patent ties the dosing information to “the compounds of the invention” and specifically excludes riluzole from the invention. Id. at 432-33. Finally, the trial court also noted the absence of working examples.
. . . In view of these findings, the district court found that one of ordinary skill in the pharmaceutical arts would have needed extensive experimentation to link riluzole with the treatment of ALS. Id. at 433. The district court then reached the ultimate conclusion that the ’940 patent does not enable claims 1-5 of the ’814 patent and thus, it is not anticipatory. As this court explained during the first appeal, when an accused infringer asserts that a prior art patent anticipates specific patent claims, the infringer enjoys a presumption that the anticipating disclosure also enables the claimed invention. Impax Labs., 468 F.3d at 1382. However, the patentee may overcome that presumption with persuasive evidence showing that the prior art patent does not enable the claimed invention.
"This is the judgment of the court to which all members have contributed. It is on an appeal brought, with the permission of the Judge, by the Comptroller General of Patents against a decision of Mr Justice Patten. He allowed an appeal by Symbian Ltd against the Comptroller's decision refusing UK Patent Application No GB 0325145.1 ("the Application"), on the ground that the alleged invention was excluded from patentability by section 1(2) of the Patents Act 1977. The issue raised on this appeal requires us to consider the reach of the exclusion of "programs for computers" from patentable inventions, a topic which is inherently difficult and on which there is apparently inconsistent authority domestically and in the European Patent Office ("EPO"). . . ."". . . It is, of course, inevitable that there will be cases where the EPO will grant patents in this field when UKIPO should not, at least so long as the view in Pension Benefit and Hitachi is applied by the Board and is not applied here. The fact that the two offices and their supervisory courts have their own responsibilities means that discrepancies, even in approach or principle, are occasionally inevitable. However, the fact that such discrepancies have been characterised as "absurd" by Nicholls LJ, and the reasoning in  of Conor emphasise the strong desirability of the approaches and principles in the two offices marching together as far as possible. This means that there is a need for a two-way dialogue between national tribunals and the EPO, coupled with a degree of mutual compromise. More directly relevant to the present appeal, it means that, where there may be a difference of approach or of principle, one must try to minimise the consequent differences in terms of the outcome in particular patent cases."
At present, OHIM's service standards specify that 80% of designs should be registered in under six weeks, but Design Department Director Pedro Rodinger says that by meeting the criteria set out above, users can benefit from much faster registration. "We are hoping that this information will encourage more users to adopt simple measures such as opening an OHIM current account, which can make a big difference to the speed of registration. When the new e-filing system for designs is introduced next year, we hope to make even more dramatic improvements in timescales."
Thanks to GE's Thaddeus Burns for passing along that
"WIPO is conducting a user survey on the Patent Cooperation Treaty (PCT) system. The purpose of this comprehensive PCT survey is to provide an opportunity for users of the PCT system to communicate their needs, expectations and experiences with the PCT system directly to WIPO. The results from this survey will provide WIPO with input on how the PCT is being used, how it is perceived, and how its users would like to see it develop in the future.
"This reflects an new interest in user satisfaction under Francis Gurry and I hope we can provide him with some useful data.
"The survey can be accessed at the following link: https://webaccess.wipo.int/opinio/s?s=2433"
"The major difference between the IDS/Markush versus Appeal Brief rules package is that the former group only relates to proposed rules while the latter group relates to already finally promulgated rules," adds Professor Wegner. "To the extent that [the] valiant effort to kill the Appeal Brief rules is unsuccessful with the present Administration, efforts will surely be made with a new Obama (or McCain) Administration to alter this most draconian set of rules."
"The PTO’s proposed rules on information disclosure statements and on applications
containing "Markush" alternative claim language will not be published as final rules by the current Administration. The announcement was made October 24, 2008 at the AIPLA Annual Meeting in Washington, D.C. by PTO Deputy Commissioner for Patent Operations Margaret Focarino in an appearance before the AIPLA Committee on Patent-Relations with the USPTO."
She reportedly made reference to May 9, 2008 Office of Management and Budget memorandum to all federal agencies stating that “regulations to be finalized in this Administration should be proposed no later than June 1, 2008, and final regulations should be issued no later than November 1, 2008.” Nonetheless, it appears that the new Appeal Brief rules will still take effect on December 10, 2008.
We aspire to be something like an NPR talk show, but focused on copyrights
and patents, and aimed primarily at a legal audience. The programs are
neither lectures nor debates. They are conversations, ideally thoughtful
ones, with guests drawn from academia, the entertainment community, and the
various technology industries.Each program lasts one hour; is downloadable; and
(the kicker) any lawyer who listens to our programs can earn (free) CLE credit
in California, New York, and any state that accepts one of those through
reciprocity. (We should soon be able to offer CLE in all the states, but
for now the combination of California, New York, and reciprocity should cover
most of our audience regardless.)I host each program; and our first one, a
lively conversation with Fred von Lohmann of the EFF, is up and ready to
go. A schedule of up-coming shows is already posted on the site, as are a
variety of subscription features that provide updates every time a new audio is
As noted by Administrative Patent Judge Torczon in his concurring opinion,
Narayanan claims benefit under 35 U.S.C. §119(e) to Provisional Application No. 601254,437, filed December 8,2000 ("the provisional application), a date before the present application's putative foreign priority date. . . . [T]he anticipation issue in this appeal [therefroe] turns on whether Narayanan qualifies as prior art
The two types of applications for patent that are relevant to this appeal are established by statute. First, §111 (a) provides for a standard written application that requires a specification, drawing, oath, and claims that must be accompanied by the requisite fee. 35 U.S.C. § 11l(a) (2002). Second, §111 (b) provides for a provisional application that must contain a specification and a drawing, the application also accompanied by the requisite fee. 35 U.S.C. § 111(b) (2002).
In sum, the statutory scheme of Title 35 indicates that Congress intended for "applications for patent" under §102(e) to apply to both regular utility applications and provisional applications, particularly when considering §111 (b) and §102(e) together. As a published "application for patent" under this statutory framework, a provisional application - like a regular utility application - constitutes prior art for all
that it teaches and, as such, promotes the progress of the useful arts.
If [this decision] is correct, In re Wertheim, 646 F.2d 527 (CCPA 1981), is no longer tenable authority.
. . . Wertheim posits a but-for theory for accepting a patent as prior art under 35 U.S.C. §102(e). According to this theory, a patent can only be prior art if it satisfies the fiction that it would have been available as of an earlier filing date but for delays in the United States Patent and Trademark Office. Thus, in Wertheim, the reference patent could not be used as of its earliest filing date because the issued claims depended on subject matter that had been added in intervening benefit applications. 646 F.2d at 536. Under the but-for test, a provisional application could never be used for a filing date under §102(e) because a provisional application cannot issue as a patent (or be a published application) without some additional action by the
. . . Wertheim requires a strained reading of statute and precedent to address a misplaced concern about secret prior art. Were we to follow Wertheim, we would reverse. Instead, I join my colleagues in their decision to affirm.
The decision reiterated that the test for anticipation by a single reference under 35 USC § 102 requires that the elements in a single reference be “arranged or combined in the same way as in the claim:”
A patent applicant who employs means-plus-function language "must set forth in
the specification an adequate disclosure showing what is meant by that language.
If an applicant fails to set forth an adequate disclosure, the applicant has in
effect failed to particularly point out and distinctly claim the invention as
required by the second paragraph of section 112." In re Donaldson Co., 16 F.3d
1189, 1195 (Fed. Cir. 1994) (en banc). To avoid purely functional claiming in
cases involving computer-implemented inventions, we have "consistently required
that the structure disclosed in the specification be more than simply a general
purpose computer or microprocessor." Aristocrat Techs. Austl. Pty Ltd. v. Int’l
Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). "Because general purpose
computers can be programmed to perform very different tasks in very different
ways, simply disclosing a computer as the structure designated to perform a
particular function does not limit the scope of the claim to ‘the corresponding
structure, material, or acts’ that perform the function, as required by section
112 paragraph 6." Id. "Thus, in a means-plus-function claim ‘in which the
disclosed structure is a computer, or microprocessor, programmed to carry out an
algorithm, the disclosed structure is not the general purpose computer, but
rather the special purpose computer programmed to perform the disclosed
algorithm.’" Id. (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339,
1349 (Fed. Cir. 1999)). Consequently, a means-plus-function claim element for
which the only disclosed structure is a general purpose computer is invalid if
the specification fails to disclose an algorithm for performing the claimed
function. See id. at 1337-38.
There is no dispute in this case that the specification fails to disclose an algorithm by which a general purpose bank computer "generat[es] an authorization indicia." [FOOTNTE 3: At oral argument, counsel for NMI conceded that "[t]here is nothing in the written description that expressly states what is going on inside that bank computer." Oral Arg. at 20:10-20:15, available at http://oralarguments.cafc.uscourts.gov/mp3/2007-1565.mp3.] As a result, the district court correctly concluded that claims 1, 13, and 14 are indefinite under 35 U.S.C. § 112 ¶ 2. We therefore affirm that part of the judgment.
[A]rranged as in the claim’ is readily understood in relation to claims drawn to things such as ingredients mixed in some claimed order. In such instances, a reference that discloses all of the claimed ingredients, but not in the order claimed, would not anticipate, because the reference would be missing any disclosure of the limitations of the claimed invention ‘arranged as in the claim.’ But the ‘arranged as in the claim’ requirement is not limited to such a narrow set of “order of limitations” claims. Rather, our precedent informs that the ‘arranged as in the claim’ requirement applies to all claims and refers to the need for an anticipatory reference to show all of the limitations of the claims arranged or combined in the same way as recited in the claims, not merely in a particular order. The test is thus more accurately understood to mean ‘arranged or combined in the same way as in the claim.’”
According to Mami Akasaka at Tech-On!, "the JPO is planning to continue the test for at least six months and lead to the revision and official operation of the system after considering the opinions of the applicants who used the test system."
a) Applicants that have already requested an examination, but for which the examination process has not yet started (i.e., Reasons for Refusal and other
office actions have been taken)
b) "Working invention-related application", i.e., applications filed by an applicant or a licensee who has already commercialized the invention or plans to commercialize the invention within two years from the filing date
c) "Internationally filed Applications", i.e., applications that were filed with both the JPO and at least one foreign IP Office
d) Applicants that file online
Under 35 U.S.C. § 271(b), "[w]hoever actively induces infringement of a patent shall be liable as an infringer." To prevail on inducement, "the patentee must show, first that there has been direct infringement, and second that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement." Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1304-05 (Fed. Cir. 2002) (citation omitted). In DSU Med. Corp. v. JMS Co., this court clarified en banc that the specific intent necessary to induce infringement "requires more than just intent to cause the acts that produce direct infringement. Beyond that threshold knowledge, the inducer must have an affirmative intent to cause direct infringement." 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc review of intent requirement).
The ITC released its initial determination before this court’s clarification of the
intent standard for inducement in DSU. The ITC’s administrative law judge
understood Federal Circuit law to permit a finding of inducement upon "a showing
of either general or specific level of intent" and expressly adopted Broadcom’s
argument that "the only intent required of the defendant is the intent to cause
the acts that constitute infringement." Initial Determination, 2006 ITC LEXIS
803 at *126, *225. Applying this understanding of the law, the Commission
determined that "Qualcomm intends to induce infringement because it provides its
customers with the system determination code." Id. at *225.
Although thought to be proper at the time, the approach adopted by the ITC is improper under this court’s decision in DSU. Proof of intent to cause infringing acts is a necessary but not sufficient condition for induced infringement. Inducement additionally requires "evidence of culpable conduct, directed to encouraging another’s infringement," i.e., specific intent to encourage infringement. DSU, 471 F.3d at 1306. This specific intent may, of course, be demonstrated by circumstantial evidence such as that presented by Broadcom. Id. But the ITC’s conclusion that "Qualcomm intends to induce infringement because it provides its customers with the system determination code" evinces, at most, a finding that Qualcomm generally intended to cause acts that produced infringement. Thus, the current record falls short of the
necessary intent showing for inducement—that Qualcomm possessed a specific
intent to cause infringement of Broadcom’s patent.
. . . this court has consistently honored the . . . distinction between limited and general exclusion orders. For example, this court has held that LEOs "only apply to the specific parties before the Commission in the investigation." Fuji Photo Film Co. v. ITC, 474 F.3d 1281, 1286 (Fed. Cir. 2007). By contrast, GEOs "bar the importation of infringing products by anyone, regardless of whether they were a respondent in the Commission's investigation." Id.; see also Vastfame Camera, Ltd. v. ITC, 386 F.3d 1108, 1114 (Fed. Cir. 2004) ("A general exclusion order broadly prohibits entry of articles that infringe the relevant claims of a listed patent without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order."). . . .
In summary, Section 337 permits exclusion of the imports of non-respondents only via a general exclusion order, and then too, only by satisfying the heightened requirements of 1337(d)(2)(A) or (B). The statute permits LEOs to exclude only the violating products of named respondents. Because the Act speaks unambiguously to the precise question at issue in this case, the Chevron inquiry is at an end. This court must simply "give effect to the unambiguously expressed intent of Congress." Chevron, 467 U.S. at 843. Because the Commission did not issue a GEO under either of the two statutory exceptions in 19 U.S.C. § 1337(d)(2), the Act prevents the Commission from issuing a limited exclusion order that excludes products of those who are not "persons determined . . . to be violating [Section 337]." Accordingly, this
court vacates the ITC’s exclusion order. On remand, the Commission can reconsider its enforcement options.
. . . Finally, this court vacates and remands the exclusion order fashioned by the Commission because Section 337 unambiguously limits the ITC’s exclusionary authority to persons named by the complainant.
Whether the later reissuance of the ’250 patent by the PTO, subsequent to the decision by the trial court in this case, is pertinent to the appeal is a different question. It is self-evident that the PTO’s subsequent reaffirmation of its earlier position, that claim 33 is a valid claim despite the alleged prior art, can have no legal effect as such on the already-rendered judgment of a court of competent jurisdiction. No one suggests that the PTO has power to exercise review authority over a judgment of a federal trial court.
That said, there remains the question of what deference, if any, needs to be accorded on appeal to such an administrative re-determination when it first appears at the last moment in an appeal from a trial court’s final judgment. It hardly needs noting that it is the trial court’s decision, not the PTO’s, that is before us on appeal. The reissuance of the patent occurred after the trial court rendered its final judgment. An appellate court ordinarily declines to consider new evidence or argument not previously presented to the trial forum whose judgment is under review. We think that, in a circumstance such as this, judicial efficiency and the policy of repose counsels against our re-weighing of the evidence to add an additional deference-thumb to the scale, or, even more disruptive, our asking the trial court to reopen the entire invalidity question to reweigh the intangible worth of additional deference.
This is not to say that the determinations made by the corps of examiners are not important, or should not be worthy of appropriate deference to their expertise in these technical matters, especially when we have the benefit of well-reasoned explications. It is to say that when dealing with the intangible worth to be accorded an administrative agency’s decision making, the judicial process cannot be held hostage to the timing of either the agency or the litigants who have invoked the agency’s further review. In some circumstances a party may be able to obtain a stay from the trial court while awaiting the sought-for agency action; absent that, and absent extenuating circumstances not here present, the case must be decided on the record the litigants present for appeal.
First, a clarification of terminology. We will refer to the generic problem of burdens only in the plural—burdens of proof—because there are within that phrase two distinct, and quite different, ideas. One is the burden of persuasion. That is the ultimate burden assigned to a party who must prove something to a specified degree of certainty—beyond a reasonable doubt (the criminal law standard of proof for guilt); by a preponderance of the evidence (the usual civil law standard for proof of a fact); or, perhaps, something in between, such as "clear and convincing," the patent law evidentiary standard for establishing that a patent, otherwise presumed valid, is invalid . . . . Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses. see 35 U.S.C. § 282; Am. Hoist & Derrick Co. v. Sowa & Sons, Inc.See generally Christopher B. Mueller & Laird C. Kirkpatrick, Evidence § 3.1 (1995); Charles Alan Wright & Kenneth W. Graham, Jr., Federal Practice & Procedure § 5122 (2d ed. 2005).
A quite different burden is that of going forward with evidence—sometimes referred to as the burden of production—a shifting burden the allocation of which depends on where in the process of trial the issue arises. See generally Christopher B. Mueller & Laird C. Kirkpatrick, Evidence §§ 3.1, 3.2 (1995); Charles Alan Wright & Kenneth W. Graham, Jr., Federal Practice & Procedure § 5122 (2d ed. 2005). We understand, and we shall use here, the phrase ‘going forward with evidence’ to mean both producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record, as the case may require.
PowerOasis was issued between the time the briefing in this case was completed and the time oral argument in the case was held.
In affirming the trial court’s judgment, this court’s opinion noted that the trial court "held that PowerOasis had the burden of proving that it is entitled to claim priority to the filing date of the Original application." 522 F.3d at 1303. In our affirmance, however, we stated that once T-Mobile satisfied its initial burden of production by coming forward with evidence that the MobileStar Network was anticipatory prior art, "the burden was on PowerOasis to come forward with evidence to the contrary." Id. at 1305 (emphasis added). We then concluded that the "district court therefore correctly placed the burden on PowerOasis to come forward with evidence to prove entitlement to claim priority to an earlier filing date." Id. at 1305-06 (emphasis added).
Nevertheless, Gennum is not alone in reading PowerOasis to have modified the traditional burdens rule so that the patentee has the burden of persuasion to prove it was entitled to the earlier filing date. Carefully read, however, our decision in PowerOasis says nothing more than, and should be understood to say, that once a challenger (the alleged infringer) has introduced sufficient evidence to put at issue whether there is prior art alleged to anticipate the claims being asserted, prior art that is dated earlier than the apparent effective date of the asserted patent claim, the patentee has the burden of going forward with evidence and argument to the contrary. As we noted earlier, it is a long-standing rule of patent law that, because an issued patent is by statute presumed valid, a challenger has the burden of persuasion to show by clear and convincing evidence that the contrary is true. That ultimate burden never shifts, however much the burden of going forward may jump from one party to another as the issues in the case are raised and developed. Correctly understood, PowerOasis is fully consistent with this understanding; until such time as these rules are abrogated by statute, by this court sitting en banc, or by the Supreme Court, the opinion in PowerOasis could not be otherwise.
In order to establish this Section 2(a) bar to registration of a now-deceased natural person's name, the PTO must show, inter alia, that there are heirs or other successors who are entitled to assert that person's right to the use of the designation. Here, the "contradictory" evidence led the Board to give the Applicant the benefit of the doubt.
. . . Based on the totality of the evidence of record, the Board expressed its "doubt as to whether there is any successor in interest entitled to assert rights, as contemplated under Section 2(a), to the Maria Callas name or persona. In other words, it is unclear whether the rights that Ms. Callas once possessed in her name or persona devolved to anyone. The record is replete with contradictory information on this point."
Because the burden of proof is on the PTO to establish that applicant’s mark falsely suggests a connection with the particular name or persona, the Board sided with Applicant: "In view of the significant doubt remaining as to whether anyone currently possesses rights in the name 'Maria Callas,' and resolving such doubt in applicant’s favor, we find that the examining attorney has not met her burden in establishing the false suggestion of a connection refusal under Section 2(a)." . . .
The single most important document is this one
Further background is available at: http://www.reginfo.gov/public/do/PRAViewDocument?ref_nbr=200809-0651-003 http://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=200809-0651-003#section0_anchor (click the "All" box at the top of the page)
The materials on the Appeal Rule and the public comments are at http://www.uspto.gov/web/offices/com/sol/notices/72fr41472.pdf http://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf http://www.uspto.gov/web/offices/pac/dapp/opla/comments/bpai/bpai1.html http://www.uspto.gov/main/homepagenews/2008sep03.htm
Despite theoften quoted maxim that anticipation is the “epitome of obviousness,” In re Kalm, 378 F.2d 959, 962 (CCPA 1967), novelty under 35 U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103 are separate conditions of patentability and therefore separate defenses available in an infringement action. See 35 U.S.C. § 282 (2000). . . .
While it is commonly understood that prior art references that anticipate a claim
will usually render that claim obvious, it is not necessarily true that a verdict of
nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different. See, e.g., Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107-08 (Fed.Cir. 2003) (“Succinctly put, the various unenforceability and invalidity defenses that maybe raised by a defendant—inequitable conduct, the several forms of anticipation and loss of right under § 102, and obviousness under §
103—require different elements of proof.”). . . .
Moreover, obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation. Compare King Instrument Corp. v. Otari Corp., 767 F.2d 853, 857 (Fed. Cir. 1985) (“In a § 103 obviousness analysis, Graham [v. John Deere Co., 383 U.S. 1 (1966)] requires that the trier assess certain underlying facts: (1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the priorart, and (4) the so-called ‘secondary considerations.’”), with Hakim v. Cannon AventGroup, PLC, 479 F.3d 1313, 1319 (Fed. Cir. 2007) (“‘Anticipation’ means that theclaimed invention was previously known, and that all of the elements and limitations ofthe claim are described in a single prior art reference.”). And although anticipation canbe proven inherently, proof of inherent anticipation is not the same as proof ofobviousness. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir.2005) (“[A] prior art reference without express reference to a claim limitation may nonetheless anticipate by inherency.”); Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) (“[O]bviousness is not inherent anticipation.”). Thus, “it does not follow that every technically anticipated invention would also have been obvious.” In re Fracalossi, 681 F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).2
FOOTNOTE 2: The dissent claims categorically that “every anticipated claim is obvious.”Post at 3. But this is not correct. Consider, for example, a claim directed toward aparticular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention—there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.
This is precisely why our precedent has rejected reliance on the “legal homily”
that “anticipation is the epitome of obviousness.” Mendenhall, 5 F.3d at 1563. We have expressly upheld a jury verdict of anticipation under § 102(b), even when the same jury found the patent nonobvious under § 103. Id. Though the dissent argues that a “long line of precedent” supports its argument that every anticipated claim is obvious, not a single one of the cases it cites actually holds that the “epitome” maxim precludes a jury from finding a patent invalid under § 102, simply because it is nonobvious under § 103. See Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998)(remarking in footnote that trial court did not err in allowing parties to present argument on anticipation during trial on obviousness); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (prefacing quoted discussion of relationship between anticipation and obviousness with “it is never necessary to so hold”); Fracalossi, 6 F.2d at 794 (addressing whether specific anticipation rejection was sufficient evidentiary support for obviousness rejection); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974)(affirming § 103 rejection when § 102 rejection would also have been appropriate); In re Kalm, 378 F.2d 959, 963(CCPA 1967) (reversing anticipation rejection). We cannot conclude—as the dissent’s reasoning implies—that the novelty requirement of § 102 is mere surplussage, subsumed by the nonobviousness requirement of § 103.
The Paperwork Reduction Act (44 U.S.C. 3501 et seq, 5 C.F.R. Part 1320) is a very important but almost completely unknown law. It's purpose is to protect the public from abusive governmental demands for information. Unlike previous notice-and-comment periods,
this time comments go to the Office of Management and Budget, a neutral arbiter outside the PTO whose statutory responsibility is to ensure that federal agencies treat the public fairly.
THIS INFORMATION COLLECTION ("ICR") IS VERY IMPORTANT
Without OMB's approval, the Patent Office has no legal authority to compel patent applicants to comply with the new Rules.
WHAT YOU NEED TO DO
The first thing to do is send an email request to the PTO asking for a copy of the relevant documents:
Subject Line: 0651–00xx Board of Patent Appeals and Interferences (BPAI)
Actions copy request
Message Body: Please send by reply email a copy of this ICR and the Supporting Statement.
Please include a bcc to me (rbbelzer [at] post.harvard.edu) so that I can count how many requests are sent to the PTO as a result of this alert.
You should receive at least two documents (we are awaiting our copies). The text of the ICR will contain summary information. By regulation, the Supporting Statement must include objectively supported estimates of burden, and these estimates must be transparent and easy for you to reproduce to see how they did it.
For reference, the definition of paperwork "burden" is an expansive one; see the text below.
Estimates based on the “professional judgment,” “belief,” or "opinion" of Patent Office personnel, or estimates with no disclosed basis, do not qualify as “objectively supported.”
For the next 30 days, OMB will be accepting public comment on the paperwork and recordkeeping burdens associated with the Appeal Rule. By law, OMB has 60 days to either approve or disapprove the ICR. That deadline will run out very close to December 10, 2008, effective date of the Appeal Rule. For that reason, it is imperative that public comments be submitted as early as possible. Do not wait until Day 29 to decide to do this.
It is essential that OMB hear from you. The more thoughtful, reasoned, and documented public comments OMB receives, the better. Usually, OMB does not receive any public comments at all, and in these cases it is OMB is compelled by necessity to assume that what the agency provided is valid and reliable. Your job is to make sure OMB gets higher quality information.
Public comments on the ICR should be sent as soon as possible, and must be sent by November 7, 2008, via email to:
Nicholas A. Fraser
Desk Officer for USPTO
Office of Information and Regulatory Affairs
Office of Management and Budget
Public comments to OMB should address the following issues:
I'd very much appreciate your help ensuring that OMB receives a rich set of highly informative public comments. I would like to make sure that comments are submitted by a variety of entities (organizations, firms, large, small, from a variety of technological areas), and I can help you target your efforts to be informative without being tendentious. A series of conference calls may be scheduled to assist you. To indicate interest in participating, please contact me by email at rbbelzer [at] post.harvard.edu or by phone at 703-780-1850.
Richard B. Belzer
(i) Reviewing instructions;
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Presently, the Board is experiencing a rapid increase in ex parte appeals. In FY
2007, the Board received 4639 ex parte appeals. The number of appeals received
in FY 2007 exceeded the appeals received in FY 2006 by more than 1000 appeals. In FY 2008, the Board expects to receive more than 6000 ex parte appeals. The amendments to the rules governing ex parte appeals are one item of a five point plan to ensure that the Board will be able to handle an increasing number of ex parte appeals in a timely manner.
Other potentially noteworthy aspects of the changes include: