Patent Law Practice Center

Hyatt v. Kappos: The En Banc Decision Makes Section 145 Actions More Attractive

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor).

Two weeks ago, the Federal Circuit handed down an en banc decision in Hyatt v. Kappos overruling a panel decision and substantially changing the rules for admitting evidence in a §145 action.  Although the decision has not attracted much attention, Hyatt may make §145 actions substantially more attractive and meaningfully alter the strategic landscape for those applicants who wish to pursue their claims beyond a BPAI rejection.

After an applicant’s claims are rejected by the BPAI, the applicant has two basic options—either appeal the  decision to the Federal Circuit, or bring an action in district court under 35 U.S.C. §145.  If the applicant elects to appeal the decision to the Federal Circuit, the appeal is heard on the administrative record created by the PTO and pursuant to the substantial deference standard normal in judicial review of expert administrative proceedings.  In a §145 proceeding, however, some new issues can be raised and (prior to Hyatt) some new evidence could be submitted to the district court. (more…)

Federal Circuit Keeps Door Open For New Evidence In Section 145 Actions

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent along an article she wrote with colleagues, Stephen B. Maebius and Courtenay C. Brinckerhoff discussing the  recent Federal Circuit decision in the Hyatt v. Kappos en banc re-hearing.

On Monday, November 8, 2010, the Federal Circuit issued its decision in the en banc re-hearing of Hyatt v. Kappos (No. 2007-1066)). The en banc Court departed from the August 11, 2009 panel decision and held that a patent applicant may introduce new evidence against the USPTO in a district court action under 35 USC § 145 (“Civil Action to Obtain a Patent”) provided such evidence relates to issues that were raised before the USPTO. This decision will be welcomed by patent applicants who have received negative USPTO decisions on patentability, and reflects the realities—and difficulties—of marshalling evidence during patent prosecution. For additional background on the appeal, see Hyatt v. Kappos: Will a Bad Case Make Bad Law?.

The Panel Decision

After the USPTO Board of Patent Appeals and Interferences affirmed certain rejections of his patent application claims, Mr. Hyatt filed an action in the U.S. District Court for the District of Columbia under 35 USC § 145. To support his claim for a patent, Mr. Hyatt submitted a declaration to address the rejections. The district court granted the USPTO’s motion to exclude the declaration because Mr. Hyatt had been negligent in not submitting it during the USPTO proceedings. (more…)

New BPAI Appeal Rules Proposed

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

Rules for Ex Parte Appeals to be Simplified

In recent years, the USPTO has advanced significant changes to the rules of practice for ex parte appeals to the Board of Patent Appeals & Interferences (BPAI). (previously proposed appeal rules). The past proposal was not exactly greeted with enthusiasm by stakeholders. In response, today’s Federal register includes a new, and much improved, ex parte appeals rule package. (here)

The new proposal, consistent with the spirit of Director Kappos’ administration to date, advances a refreshing change of pace. Previously the Office proposed increased formality and bureaucratic hurdles seemingly geared toward making USPTO appeal practice more burdensome and expensive to Applicants. The new rules, like many of the proposals of the Kappos regime, advance common sense solutions designed to simplify appeal. Yet, one of the proposed revisions could be used to frustrate the statutorily mandated special dispatch to be accorded ex parte patent reexaminations. (more…)

Goeddel V. Sugano: What’s The Difference Between “Envisioning” An Invention And Being “In Possession” Of The Invention?

The following post was written by Gerald M. Murphy, partner at Birch, Stewart, Kolasch & Birch, LLP and Practice Center Contributor.

In Goeddel v. Sugano, the Court of Appeals for the Federal Circuit (CAFC) has provided more guidance as to what is necessary for a sufficient “written description” of an invention, this time for a true “biotech” invention, in the context of a motion for benefit of priority in an interference.  This case involved two interferences; one directed to DNA encoding human fibroblast interferon (hFIF) unaccompanied by a hFIF presequence (mature hFIF) and one directed to a composition comprising  non-glycosylated hFIF.  Sugano filed a motion for benefit of its Japanese priority application (Sugano priority application) and was granted priority by the Board of Patent Appeals and Interferences (the Board) in both interferences.  Goeddel appealed that decision on the grounds that the Sugano priority application did not constitute a constructive reduction to practice because it did not enable the Counts and did not provide a sufficient written description of the Counts.  The Federal Circuit reversed on the ground that the Sugano priority application did not provide a sufficient written description of the Count because the inventors were not “in possession” of the invention. (more…)

Bilski v. Kappos: Summary And Implications

 

Written by Andrea M. Augustine (Partner at Foley & Lardner LLP and faculty member for the upcoming PLI Patent Litigation program) and Kevin J. Malaney (Associate at Foley & Lardner LLP)

On June 28, 2010, the U.S. Supreme Court issued its much anticipated opinion in Bilski v. Kappos.  In Bilski, the Court affirmed the judgment of the Court of Appeals for the Federal Circuit, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), that the claims in question did not qualify for patent protection.  In doing so, the Court unanimously rejected the Federal Circuit’s determination that the “machine-or-transformation” test was the exclusive test for “process” patent eligibility.  But instead of establishing what test should be applied in future cases, the Court left this question open and simply relied on previous Supreme Court case law and the Patent Act to hold Applicants’ claims ineligible for patent protection.  Despite the uncertainty regarding the appropriate test, Bilski does provides some guidance as to what “process” claims are eligible for patent protection.  Because of the open questions that remain, future cases will be closely watched and studied for clarification and application of the Court’s holdings.  In the meantime, observers, advocates, and pundits will review the fine details and history of In re Bilski in search of guidance on the future of business method patents and patent applications. (more…)