The Abstract Idea Defense in a Patent Infringement Suit Jumped the Shark in Nike v Puma

Jumped the SharkGuest Post from Janal Kalis.

Nike sued Puma for infringing its fly knit shoes.  Puma filed a motion to dismiss because the patents asserted by Nike are directed to an abstract idea.  As can be seen below, the Nike claims clearly are directed to a SHOE!!!!  The judge in the case denied Puma’s motion this week.  A bit of sanity in a patent world gone mad.

9078488:

  1. An article of footwear including an upper and a sole structure attached to the upper, the upper incorporating a knitted component formed of unitary knit construction, the knitted component comprising: at least one lenticular knit structure including a first portion and a second portion disposed on opposite sides of the lenticular knit structure; and a base portion disposed adjacent to the at least one lenticular knit structure; wherein the at least one lenticular knit structure extends away from the base portion on an exterior surface of the upper; and wherein the first portion of the at least one lenticular knit structure is associated with a first visual effect when the upper is viewed from a first viewing angle and the second portion of the at least one lenticular knit structure is associated with a second visual effect when the upper is viewed from a second viewing angle that is different than the first viewing angle.

8266749:

  1. A method of manufacturing an article of footwear, the method comprising: simultaneously knitting a textile element with a surrounding textile structure, the knitted textile element having at least one knitted texture that differs from a knitted texture in the surrounding knitted textile structure; removing the knitted textile element from the surrounding knitted textile structure; incorporating the knitted textile element into the article of footwear.

7637032:

  1. An article of footwear, comprising: an upper member substantially constructed from textile material, wherein the upper member includes an exterior portion substantially constructed from knitted textile material, the exterior portion including a first region having stability ribs integrally formed in the knitted textile material and a second region continuous with the first region, the second region not including stability ribs; wherein a first portion of the first region extends along a forefoot portion of the exterior portion of the upper member and a second portion of the first region extends along a lateral midfoot side of the exterior portion of the upper member; wherein a portion of the second region extends along a junction between the upper member and the sole member and between the first portion of the first region and the second portion of the first region on a lateral midfoot side of the exterior portion of the upper member; and a sole member engaged with the upper member.

Nike’s response to Puma’s motion.

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New Annual Update: Critical Patent Validity Developments in 2017-2018

This is a guest post from the Chisum Patent Academy.

The Academy is pleased to announce the September 2018 publication by Wolters Kluwer Law & Business of the annual Update for Volume I (Patentability and Validity) of the practitioner treatise, Mueller on Patent Law, authored by our co-founder, Janice M. Mueller. See below to review the Highlights.

First published in 2012 and updated annually, Volume I of the Mueller treatise addresses patentability (pre- and post-AIA), drafting patent claims, inventorship, and USPTO prosecution procedures; Volume II covers patent infringement, defenses, remedies, USPTO post-issuance procedures, design patents, and international patenting issues.

The full text of both volumes, including the 2018 Update for Volume I (Patentability and Validity), is available electronically on Wolters Kluwer’s CHEETAH legal research platform.

To review the detailed table of contents incorporating the 2018 Update for Volume I (Patentability and Validity), click here.

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UCB, Inc. v. Accord Healthcare, Inc. – Can a Racemic Mixture be a “Lead Compound.”

Supreme CourtUCB v. Accord, Appeal no. 2016-2610 et al. (Fed. Cir., May 23, 2018) may be headed to the Supreme Court, which prompted me to take another look at this opinion. This was a decision in Hatch-Waxman litigation, in which a split Fed. Cir. panel affirmed the district court’s ruling that the valuable patent in suit, RE38,551, that covers the anti-epileptic drug lacosamide was not anticipated, obvious, or invalid for obviousness-type double patenting. Judge Stoll wrote the opinion, joined by Judge Bryson. Judge Prost dissented.

The most interesting parts of this lengthy opinion, apart from the thorough review of obviousness-type double patenting were the effort by the panel to draw the line between the obviousness of resolving an R/S mixture that contains the active R compound and obviousness due to the motivation provided by a “lead compound.” There was quite a lot of prior art for the defendants to piece together to get to the fairly simple structure of lacrosamde: BzN(H)-C(O)-CH(MeOMethyl)-N(H)C(O)Me. The key substituents were Benzyl (Bz)(R), the unsubstituted methyl at the other end of the molecule (R1) and the methyoxymethy goup (R3).

To briefly summarize some of the prior art, the inventor had published a number of papers, one of which disclosed a lacrosamide-like molecule with an MeON(H)- group as R3. The inventor had two earlier patents contained broad generic claims, but neither of which claimed lacrosamide per se. (The ‘301 patent was not prior art to the ‘551 patent and was only relevant to the obviousness-type double patenting rejectioin.) Worse yet, it seemed, was a thesis by LeGall that disclosed a racemic mixture of R/S lacrosamide and stated that it “may have good activity.” However, Le Gall also speculated that aromatic groups at R3 would be more bioactive.

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Phillips Standard of Claim Construction to be Used by PTAB in “AIA Proceedings”

United States Patent and Trademark OfficeAfter much deliberation, the USPTO has published a Final Rule mandating that the claim construction standard articulated by the Fed. Cir. in Phillips v. AWH Corp., 415 F.3d 1301 (Fed. Cir. 2005), and used by federal district courts, will replace the broadest reasonable interpretation (BRI) standard currently used by the PTAB in Inter partes review (IPR), post grant review (PGR) and transitional program for covered business patents (CBM), collectively “AIA Proceedings”. See Fed. Reg., 83, 51340 (October 11, 2018). The Final Rule is applicable to all AIA proceedings petitions filed on or after the effective date of November 13, 2018.

Two points are of some interest and raise some questions. The Phillips standard will not be applied to reissue or ex parte reexamination proceedings, even though the prosecution history is complete regarding the patents under review. One commentator has suggested that the Phillips standard should be applied in prosecution, but at first, I did not see how this is possible with an incomplete prosecution history. But consider; the Examiner uses BRI to interpret the claims and then locates prior art to establish a prima facie case that the claim fails under 102, 103 and/or 112. The Applicant must rebut the rejections, and often uses Phillips-type evidence to meet that burden (such as limiting disclosures in the specification of a prior art patent). So maybe we are closer to the general applicability of the Phillips standard to claim interpretation than we think.

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