Archive for November, 2011

Prometheus’s Brief – Don’t Confuse Us With “LabCorp”

Monday, November 21st, 2011

It took me a while to get around to reading Prometheus’s brief to the Supreme Court in Mayo v. Prometheus Labs., No. 10-1150 (S. Ct. Oct. 31, 2011), because I was pretty sure how it would read and, in fact, there are no major surprises. Prometheus argues that their claims must be considered as a whole, and that section 101 does not categorically exclude processes that end by providing useful information – what I called a “thinking step” in an earlier post. Prometheus argues that “Mayo’s categorical rule that all claims must end with an action step would just multiply byzantine claim drafting…This Court has routinely recognized that patents can properly leave ample room for ‘the judgment of the operator.” Res. Brief at 35. Prometheus also reaches into the Bilski opinion for one of the few helpful quotations: “Nothing in Bilski was intended to ‘create uncertainty as to the patentability of …advanced diagnostic medicine techniques.’ [130 S. Ct. at 3227[ let alone all processes provided valuable information.” Res. brief at 36.

Prometheus also takes the reader along the well-worn path of Morse, Benson, Flook and Grams to argue that the monitoring patents do not preempt all practical use of any “relevant principle” but then neatly circles back to Tilghman, 102 U.S. at 709, to argue that the patent in question “wholly preempted the ‘natural phenomenon’ that water applied at high temperature and pressure would have the stated effect on fatty bodies. But it did not preempt the broader natural principle that high temperature and pressure tend to break chemical bonds, and it did not preclude the use of other methods to separate fat acids and glycerine from fatty bodies, such as sulfuric acid distillation or steam distillation.”


Common Citation Document Launched By Trilateral Patent Offices

Thursday, November 17th, 2011

This posting came with a set of presentation slides which you can find at the end of the post.

The Industry Trilateral (of which IPO is a member) initially proposed a Common Citation Document (CCD).  In response, the Trilateral have launched an electronic capability which consolidates access to citation data from the Trilateral Offices combining a priority-based family of patent applications with the cited prior art for each family application.  It is possible to enter the database by means of application numbers or patent numbers and obtain a listing of the entire patent family filed in the Trilateral Patent Offices, as well as all of the other offices that send information to the European Patent Office database.  Together with each of these applications is included the citations cited against that application in that particular country, as well as its applicable status as X, Y, A, etc.  For certain offices such as the European Patent Office and others, the data includes “enhanced information”, including particular sections of the citation that are relevant and the particular claims against which those citations are relevant.  This is the typical information in the Search Reports provided under the PCT.  The USPTO and JPO are planning in the near future to include such “enhanced information” in their reporting of the citations to this CCD. 


Powell v. Home Depot – False Petition Not “Egregious Misconduct”

Tuesday, November 15th, 2011

In Therasense, the Fed. Cir. held that inequitable conduct can be based on non-prior art misconduct, which was characterized as an exception to the “but-for” rule of materiality set out in the decision. This seemed to me to be a warning to applicants that “[t]here is no room to argue that submission of false affidavits is not material” (Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556 (Fed. Cir. 1983). However, in Powell v. Home Depot, App. No. 2010-1409, -1416 (Fed. Cir. Nov. 14, 2011), the court found that a statement in a petition to make special, that was known by applicant to be false before the petition was granted, was not conduct egregious enough to find that applicant had committed inequitable conduct. In other words, some petitions/declarations are more weighty when it comes to tipping the equities in favor of the defendant.

Powell’s attorney filed a petition to make special under MPEP 708.02(I), “prospective manufacture”, averring that he was obligated to manufacture infringing saw guards for Home Depot. However, during the pendency of the petition, Home Depot switched suppliers. Powell did not update the petition. (The district court noted that he could have truthfully alleged actual infringement under 708.02(II)).

Apparently following Rohm & Haas, the district court found materiality and intent to deceive, but found no inequitable conduct upon balancing the equities. The Fed. Cir. noted that the IC standards had changed post-Therasense, and went on to find no inequitable conduct based on the lack of “but-for” materiality – a prior art standard – and insufficiently egregious misconduct on the part of Powell’s attorney. The Fed. Cir. seemed to almost be splitting the hair that the petition was true when it was filed and so the conduct “did not involve the filing of an unmistakably false affidavit” that would rise to the level of “affirmative egregious misconduct.” [Emphasis supplied]. So this decision still leaves patent attorneys to guess how egregious misconduct has to be to trigger the “atomic bomb of patent law.”

Excerpts From Amicus Briefs Supporting Prometheus

Friday, November 11th, 2011

This intriguing compilation “Excerpts From 15 AMICI Briefs Supporting Respondent Prometheus: Mayo Collaborative Services v. Prometheus Laboratories, Inc.,” was sent to me by Mark Corallo of Corallo Media Strategies, Inc., Alexandria, VA.

UNH Law used to be Franklin Pierce Law Center. Interestingly, SAP filed an amicus brief. Not surprisingly, so did Myriad.

Key Excerpts – Amici Briefs – Combined Revised