BREAKING NEWS
On December 3, 2024, the United States Patent and Trademark Office ("USPTO") formally withdrew its highly controversial proposal to add a new requirement for terminal disclaimers. Terminal disclaimers are often filed during prosecution of U.S. patents to overcome non-statutory double patenting rejections. The proposal, published in May of 2024, would have imposed a new practice under which a patent in which a disclaimer is filed would be enforceable only if no claim in a patent to which it is tied by the terminal disclaimer has been found invalid. The proposal was roundly criticized as onerous, unnecessary, and disruptive to well-established practice.
Claim Scope and Biological Deposits
The U.S. Patent Trial and Appeal Board (PTAB) recently issued a post-grant review decision, denying a post-grant review challenge to U.S. Patent No. 11,696,545 submitted by Inari Agriculture, Inc. against the patent owner Pioneer Hi-Bred International, Inc. The Board ruled that because the claims cited representative seeds deposited at the National Center for Marine Algae and Microbiota (NCMA), the claim scope encompasses both the plant variety's phenotype and genotype, even though the genotype is not explicitly recited in the claims. Thus, the post-grant review challenge was denied because the Board agreed with Patent Owner's arguments that the claimed material was properly enabled by the specification and was also nonobvious. This decision raises more questions than it answers regarding claim construction.
USPTO Announces New Patent Fees
After announcing an intention to exercise its fee setting authority in 2023, and following a public feedback process, the USPTO has finally announced fee increases and accompanying rules that will take effect on January 19, 2025. The final changes deviate in several respects from the USPTO's proposal of April 3, 2024, based on feedback the USPTO received during the public comment period.
Federal Circuit's Ruling Highlights International Obligations in Global Patent Disputes
In a decision with significant implications for global patent licensing, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated a district court's ruling in a dispute between Ericsson and Lenovo over Standard-Essential Patents (SEPs). Both companies are members of the European Telecommunications Standards Institute (ETSI), which requires members to license their SEPs under "fair, reasonable, and non-discriminatory" (FRAND) terms. After failing to obtain a global cross-license, Ericsson filed lawsuits in Colombia and Brazil, securing injunctions against Lenovo for allegedly infringing its SEPs. Lenovo, in turn, sought an "antisuit injunction" in the U.S. District Court for the Eastern District of North Carolina to prevent Ericsson from enforcing the foreign rulings, arguing that Ericsson had violated its FRAND obligations. The district court denied Lenovo's request, reasoning that the U.S. case is not "dispositive" of the foreign disputes because it might not result in Lenovo obtaining a global cross-license. However, the CAFC held that determining whether Ericsson honored its FRAND obligations is dispositive because it could resolve key issues in the foreign disputes. The case was remanded to the district court to decide whether Lenovo is entitled to the antisuit injunction based on Ericsson's FRAND commitments.
Supplementary Experimental Data to Prove Inventive Step: Acceptance Conditions
On September 4, 2024, the China National Intellectual Property Administration ("CNIPA") issued an invalidation decision on a utility model patent (Pat. No. ZL201620610437.1, hereinafter referred to as "the Patent-in-Issue") owned by Joyoung Co., Ltd. (the "Patentee"). After reviewing the case, the panel concluded that some claims of the Patent-in-Issue lack inventiveness, and therefore the Patent-in-Issue is partially invalid.
PTAB Provides Guidance on Rule 132 Declaration Sufficiency
The United States Patent and Trademark Office (USPTO) has recently provided additional guidance to Examiners on the consideration of factual evidence provided in the form of a Declaration under 37 C.F.R. § 1.132 ("Rule 132 declaration"). Understanding these guidelines and the overall utility of Rule 132 declarations is an important tool for practitioners to rebut a prima facie case of obviousness. A Rule 132 declaration is recommended for the introduction of evidence to the record when the evidence to be provided is "on a basis not otherwise provided for" in the application. In these practitioners' views, Rule 132 declarations should be considered in many, if not a majority, of chemical-related cases. Historically, many practitioners have argued against the use of Rule 132 declarations because of litigation worries (such as inequitable conduct findings for inaccurate / misleading declarations). However, so long as reasonable due diligence is done when obtaining the Rule 132 declaration, in our view the benefits, as discussed below, far outweigh the risks.
Same Language in Different Claims May Have Different Meanings
On September 16, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded an invalidity ruling by the U.S. District Court for the District of Minnesota which concluded that independent claims using the same language to define different boundaries of a "substantially rigid portion/segment" of a catheter were "mutually exclusive" and, therefore, indefinite. The CAFC instructed the trial court to conduct claim construction "on a claim-by-claim basis with the understanding that, at the claim construction stage, the claims are not necessarily ‘mutually exclusive' since each independent claim is a different ordered combination of limitations."
AEROPHILE GROUP: A Dream Comes True With the Olympic Cauldron
It all began in 1993 with the dream of two 25-year-old entrepreneurs and friends, Jérôme Giacomoni and Matthieu Gobbi, to bring a tethered balloon back to the Tuileries in Paris—specifically to the very spot where its predecessor was showcased at the 1878 Universal Exhibition by the French airship inventor Henri Giffard (1825 - 1882). Thirty years later, that dream became a reality with the tethered balloon being the centerpiece of the Paris 2024 Olympic Games. AEROPHILE has been a client of OBWB for over ten years, and Mathieu Gobbi has graciously agreed to share more about their incredible journey.
Internet Archive's Fair Use Defense to Wholesale Copying Fails
In Hachette Book Group, Inc. et al. v. Internet Archive [1], the Second Circuit concluded that it is not "fair use" for a nonprofit organization to scan copyright-protected print books in their entirety, and distribute those digital copies online, in full, for free, subject to a one-to-one owned-to-loaned ratio between its print copies and the digital copies it makes available at any given time, all without authorization from the copyright-holding publishers or authors.
First Patent Sets Maximum Patent Term for Later Patents under Obviousness-Type Double Patenting
Many patent applicants have received an obviousness-type double patenting (ODP) rejection at some time. For example, the U.S. patent examiner may reject the pending claims for being "patentably indistinct" from other claims already found in an issued patent owned by the same applicant. The examiner issues this ODP rejection even though the earlier-issued patent is not valid prior art for a regular obviousness analysis. However, the examiner further notes that there is still hope to gain allowance of the claims. The ODP rejection is typically followed by a statement that it will be withdrawn if the patent applicant files a terminal disclaimer with payment of the corresponding USPTO fee. While this offer sounds advantageous to the applicant, the final price for this patent will be paid in terms of shortened patent term several years later. While this story describes the traditional process of overcoming ODP rejections, a recent court decision, Allergan USA, Inc. v. MSN Laboratories Private Ltd., provides clarity for which circumstances would invoke the ODP doctrine.
