On May 25th, the Federal Circuit, sitting en banc, issued a decision reversing and remanded the district court’s holding that the patent-in-suit was invalid due to inequitable conduct. (A copy of the decision can be found at the end of this post.) The patent remained invalid as anticipated, but the bar has been substantially raised for accused infringers attempting to prove the inequitable conduct defense – the “atomic bomb” of patent law, as Chief Judge Rader described it. With respect to the element of intent, the accused infringer must prove by clear and convincing evidence that the patentee acted with specific intent to deceive the PTO. “The accused infringer must prove…that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.” Intent can still be established by circumstantial evidence, but a high level of materiality cannot satisfy the burden to prove intent. Also, the evidence “must be sufficient to require a finding of deceitful intent in the light of all the circumstances….The absence of a good faith explanation for withholding a material reference does not, by itself, prove intent to deceive.”
Posts Tagged ‘Judge Rader’
Therasense Makes Sense of Inequitable Conduct Defense
Friday, May 27th, 2011AUTM Panel To Address A “Myriad” Of Challenges
Thursday, February 24th, 2011
Robert S. MacWright, J.D., Ph.D., the new head of tech transfer at the Salk Institute, will moderate a panel at the 2011 Annual Meeting of the Association of University Technology Managers (AUTM) on March 1st in Las Vegas. The panel, entitled, “The Ever Changing Kaleidoscope of U.S. Patent Law,” will examine what MacWright terms “a decade of meddling by the legislature and the courts.” The “panel of experts” – that will include, Sandra Kuzmich of Frommer Lawrence, Gonzalo Merino, J.D., Ph.D., of Columbia and me – will review the current state of affairs and “with considerable risk of error, [we] will also make predictions about other changes that may lie ahead.”
Apart from encouraging you to attend this session (Tuesday, D1 on the program), the trend of judicial decisions at all levels to weaken patent protection for pharma/biotech inventions is alarming. The big losses like KSR (which eliminated the rigorous TSM test for obviousness), Merck v. Integra (expanded safe harbor for drug research), Ariad (“Yes, Virginia, Section 112 does contain a written description requirement”), and Myriad (No patent protection for DNA or for diagnostics used in personalized medicine) have tended to overshadow smaller but still significant anti-patent decisions like In re Kubin (Deuel reversed), In re Fisher (ESTs and SNPs lack utility) and In re Alonso (good-bye to the “monoclonal antibody exception”).
The Federal Circuit’s holding in Prometheus v. Mayo was one of the few bright spots (methods of screening for drug efficacy and medical treatment are patentable – yea!) but even this decision may be reviewed by the Supreme Court – again (it granted cert. once). And while it is difficult to see the Supreme Court’s Bilski decision as a good thing, at least an entire category of patentable subject matter was not eliminated. If the “M or T” test had been affirmed, the Federal Circuit would have been required to invalidate most of the Myraid diagnosis claims. Now Judge Rader has to figure out how to support a holding that the Myriad “comparing DNA sequence” claims are less abstract than Bilski’s claims to hedging commodity risk. And he is the judge that the ACLU is trying to recuse as prejudiced in favor of biotech! It’s going to be an interesting year.
RCT v. Microsoft – Fed. Cir. “Accepts” Bilski Invitation
Monday, December 27th, 2010
On December 8, 2010, the Fed. Cir. (Rader writing) reversed the district court’s holding that claims to a process for rendering a half-tone image of a digital image were patent ineligible as an attempt to claim an abstract idea. Research Corp. Technologies, Inc. v. Microsoft Corp., 2010-1037 (Fed. Cir. Dec. 8, 2010). (A copy is at the end of this post.) The claims given in the opinion involved the use of an “improved blue noise mask.” The panel spent 10 pages of its 25 page opinion explaining the technology and reproducing claims, and I still don’t have a clue how this technology works (it involves use of an algorithm as well!). The main process claims quite clearly would fail the M or T test, but the courts have more to work with now, and the panel got right to work.
Not surprisingly, the panel had a lot to say about the Supreme Court’s Bilski decision, particularly what it left unsaid:
“Indeed, the Supreme Court in Bilski re-focused this court’s inquiry into processes on the question of whether the subject matter of the invention is abstract. The Supreme Court did not presume to provide a rigid formula or definition for abstractness [citation omitted]. Instead, the Supreme Court invited this court to develop ‘other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.”
Rader’s Dissent in Bilski – Keeping It Real
Monday, July 19th, 2010
Discussing a particularly convincing dissent, commentators frequently are compelled to close with: “But it was a dissent.” The most influential dissent in recent months may well be Judge Rader’s dissent in In re Bilski, 545 F.3d 943, 1011 (Fed. Cir. 2008). It was cited twice in the opinion of the court in the recent Supreme Court decision which held that the “machine or transformation” test was overly limiting on processes and that the Bilski claims were directed to an abstract idea (unpatentable under s. 101).
This is exactly how Rader would have disposed of Bilski when the appeal was before the Federal Circuit. He opens his dissent:
“This court labors for page after page, paragraph after paragraph, explanation after explanation to say what could have been said in a single sentence: ‘Because Bilski claims merely an abstract idea, this court affirms the Board’s rejection.’”
The Supreme Court’s Bilski decision has been criticized for providing little in the way of guidance as to exactly when an invention falls into the “abstract idea” category. Judge Rader spends more time on this problem than did the Supreme Court:
“[A]bstract ideas can never qualify for patent protection because the Act intends, as section 101 explains, to provide ‘useful’ technology. An abstract idea must be applied to (transformed into) a practical use before it qualifies for protection. …When considering the eligibility of ‘processes,’ this court should focus on the potential for an abstract claim. Such an abstract claim would appear in a form that is not even susceptible to examination against prior art under the traditional tests for patentability. Thus this court would wish to ensure that the claim supplied some concrete tangible technology for examination. Indeed the hedging claim at stake in this appeal is a classic example of abstractness. Bilski’s method for hedging risk in commodities trading is either a vague economic concept or obvious on its face. …In any event, this facially abstract claim does not warrant the creation of new eligibility exclusions.”
The Supreme Court could not have agreed more. The problem is that Bilski’s claim does not seem all that abstract. It is certainly not in the same league as abstract ideas like The Golden Rule or “The love you take is equal to the love you make.” These abstract ideas are philosophical propositions that no one would expect an Examiner to be able to examine, even though their value to society can be debated ad infinitum. But some claims to new methods of directing or organizing human behavior to achieve (e.g., a business or a healthcare outcome) can certainly be searched against a body of prior art, although it may be difficult to do so. The Supreme Court did not rule out patents on this type of invention. It will remain for future decisions to put legal flesh on the bones of “some concrete tangible technology.” We now know that it has to be more real than a “useful, tangible and concrete result.” Just how much more real remains to be seen.
