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 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.
Unifying the Analysis of Obviousness for Design and Utility Patents
The Court of Appeals of the Federal Circuit (CAFC) recently issued an en banc ruling regarding design patent obviousness in LKQ Corp. v. GM Global Tech. Operations LLC, its first en banc ruling in six years and only the second related to design patents (the first being Egyptian Goddess, Inc. v. Swisa Inc.). A previous OBWB newsletter article presented details of the LKQ case. The LKQ decision established that the "Rosen-Durling" test, the standard assessment of obviousness in design patents since 1996, was "improperly rigid" and contradicted the precedent set by the Supreme Court in well-known cases such as Smith v. Whiman Saddle Co., Graham v. John Deere Co., and KSR International Co. v. Teleflex Inc.. Instead of the Rosen-Durling test, the CAFC indicated that the obvious or non-obviousness of design patents should be considered based on the familiar Graham factors, as is currently done for utility patents.
USPTO to Terminate the After Final Consideration Pilot Program 2.0 on December 15, 2024
On October 1, 2024 the U.S. Patent and Trademark Office announced a brief extension and then termination on December 15, 2024 of the After Final Consideration Pilot Program 2.0 ("AFCP 2.0"). In response to proposed new fees for participation in the AFCP 2.0, feedback from the public revealed an unwillingness to pay for the program. Stated differently, the program's benefit was not seen as being worth the added cost of participation.
Federal Circuit Clarifies the Estoppel Provision Under 37 C.F.R. § 42.73(d)(3)(i)
In SoftView v. Apple, the U.S. Court of Appeals for the Federal Circuit (CAFC or Federal Circuit) has recently clarified an important aspect of collateral estoppel. The case concerns the U.S. Patent and Trademark Office's (USPTO or Office) authority related to the estoppel provision applicable to inter partes reexamination, 37 C.F.R. § 42.73(d)(3)(i), and whether it may be properly applied by the Office to issued patent claims as well as amended claims pending during the reexamination proceeding.
Sale or Fail? Federal Circuit Decision on "Publicly Disclosed"
Introduction In a recent appellate decision, the United States Court of Appeals for the Federal Circuit (CAFC or Federal Circuit) affirmed a ruling by the Patent Trial and Appeal Board (PTAB), finding all challenged claims of U.S. Patent No. 10,572,429 ("the ‘429 patent") unpatentable as obvious. The case, Sanho Corp. v. Kaijet Tech. Int'l Ltd., centers around the interpretation of the phrase "publicly disclosed" within the statutory exception to prior art under AIA 35 U.S.C. § 102(b)(2)(B). This ruling has significant implications for how prior art is determined and how inventors may protect their innovations under the America Invents Act (AIA).
Representative Patent Claims in Alice/Mayo Subject Matter Eligibility Analysis
A recent decision by the United States Court of Appeals for the Federal Circuit (CAFC or Federal Circuit) in Mobile Acuity Ltd. v. Blippar Entities highlights important questions regarding the use of a representative patent claim when analyzing 35 U.S.C. § 101 subject matter eligibility under the U.S. Supreme Court's familiar Alice/Mayo framework. The opinion outlines the critical role that representative claims play in litigation and reaffirms the district court's discretion to compel a patent owner to present substantive argument against the classification of claims as representative at the earliest pleading stage of the case.
