AIPLA Reports

A Periodic Notification of AIPLA Activities and
Current Developments in Intellectual Property Law
Copyright © 2009 AIPLA

December 9 , 2009

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Click HERE for AIPLA Reports Archives.

• En Banc CAFC Hears Argument in Written Description Requirement Case
• Pilot Program Will Accelerate Applications on Green Technologies
• Small Entities Can Abandon Certain Applications for Special Status
• House Passes Bill to Reauthorize and Improve Satellite Compulsory License
• AIPLA Amicus Brief Urges Adherence to Rule of Reason in Misuse Case
• New ICANN Rules on Dispute Resolution Are Effective March 1, 2010

Patents/Written Description/Enablement
En Banc CAFC Hears Argument in Written Description Requirement Case
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., Fed. Cir., No. 2008-1248, oral argument 12/7/09.

The en banc Federal Circuit on December 7, 2009 heard oral argument on whether 35 U.S.C. §112 ¶1 contains a written description requirement that is separate from the enablement requirement.  While the attorneys for each side appeared to agree that the statute contains two description requirements, they did not agree on scope of the written description requirement, and questions from the Court reflected similar disagreements.

Lilly Argues for Separate Requirement

Charles Lipsey, of the Finnegan firm and counsel for Lilly, maintained that the statute has long included a separate written description requirement that was not satisfied here by merely teaching a person of skill how to make and use the invention.  He was quickly asked if the sufficiency of a written description is an issue of law or fact, and he replied that it is generally understood to be a fact question.  He suggested an analogy to claim construction or conception, which are judged with reference to the factual perspective of a person of skill in the art; the written description amounts to a corroboration of the inventor’s conception, according to Lipsey.

Judge Linn asked why the written description isn’t satisfied by the content of the originally filed claims themselves.  Lipsey replied that the claims are better understood as defining the “boundaries” of the invention rather than describing the invention itself.  Judge Alan Lourie suggested that the written description provides the detailed support needed to demonstrate “possession” of a claimed genus.  Judge Linn observed that, under the statute, enablement is the yardstick for measuring the sufficiency of the written description, to which Lipsey replied that the statute also requires a description “of the thing claimed.”

Judge Timothy Dyk asked what the practical difference is in the result sought by each party, noting that Ariad had conceded that the statute includes a written description requirement as well as an enablement requirement.  Lipsey acknowledged the concession on written description but complained that Ariad then makes the circular argument that the sufficiency of the written description is measured by the enabling disclosure.  Judge Randall Rader asked Lipsey if he could cite any Supreme Court precedent where the written description was used for any purpose other than deciding priority.  Lipsey referred to the Supreme Court’s decision in Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211 (1940), but Judge Rader contended that the issue there was enablement.  Judge Alan Lourie pointed out that Section 282 includes as a patent validity defense compliance with the requirements of Section 112, adding that nothing in Section 112 confines its terms to priority determinations.

Government Supports Separate Written Description Requirement

Mark R. Freeman from the Justice Department maintained that the written description requirement has a long history in the law as a separate requirement, responding to Judge Rader that Schriber-Schroth cannot be read simply as an enablement case.  What about relying on the originally filed claims as fulfilling the written description requirement, Judge Kimberly Moore asked, and Chief Judge Paul Michel questioned whether the issue entails any practical impact on examination for the Patent and Trademark Office.  Judge Pauline Newman recalled her experience in prosecuting patents when chemistry was the cutting-edge technology, observing that the scope of a genus claim depended on detailed species that were spelled out in the written description.  Judge Lourie added that lack of detail in the written description can show lack of possession of the genus.  Freeman indicated that the government was concerned about the proliferation of claims that do little more than describe a function or effect.

Ariad Complains Written Description and Enablement Have Been “De-Linked”

John M. Whealan, counsel for Ariad and Associate Dean at George Washington Law School, urged that the Court first consider the text of the statute.  He argued that this text makes no sense unless it is read to require a description to identify the invention and a description to teach how to make and use the invention, and to say that the sufficiency of each is measured by the standard of enabling persons of skill to make and use the invention.  Recent Federal Circuit decisions, he explained, have inappropriately “de-linked” these description requirements from the enabling standard as a measure of their sufficiency.

There has long been a requirement to “identify” the invention, but this has always been related to the “make and use” requirement, according to Whealan.  A series of decisions that focused on the “identify” element ultimately separated it from enablement, leaving no standard for its sufficiency and introducing “possession” as a substitute standard.  The term “possession” is not in the statute or in the Supreme Court case law, he said.  The identification part is to tell the public what you’re making, and the enablement part is to tell how to make and use it.  Judge Lourie agreed that “possession” is not a great word, but he observed that it was meant not as a requirement but as a reason for having a written description. 

Whealan insisted that the question is not whether written description is a separate requirement but what is the measure of its sufficiency, and the answer to that question turns on whether the written description enables a person of skill to make and use the invention.  Even if I agreed with your analysis, why wouldn’t stare decisis be reason enough to leave the law alone, noting that “even Rhenquist gave up Miranda, stare decisis.”  The statute needs to be put back together to make sense, Whealan answered.

AIPLA Amicus Brief
 
On November 19, 2009 AIPLA filed an amicus brief in this case, arguing that Section 112 ¶1 contains a written description requirement that is distinct from, but related to, an enablement requirement.  It further argues that the purpose and scope of the written description requirement is to act in concert with the other requirements of Section 112 to advance the disclosure objectives of the patent system.

Background

The case on review involves method claims related to gene “transcription factors” which both induce the production of proteins that help cells survive extracellular influence, and which also decrease their effect as the harmful influence subsides.  The Federal Circuit panel held that the patent specification failed to adequately disclose how the reduction of the transcription factor activity recited in the method claim is achieved.  Although three classes of molecules “capable” reducing activity are disclosed, Judge Kimberly Moore wrote, that disclosure amounts to little more than a research plan.  Judge Richard Linn concurred in the judgment based on precedent, but also stated that Federal Circuit decisions have incorrectly engrafted a separate written description requirement onto Section 112 ¶1  En banc review was granted last August.

To hear a recording of the oral argument (59.8 MB), click here.

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Patent and Trademark Office/Green Pilot Program
Pilot Program Will Accelerate Applications on Green Technologies

The Patent and Trademark Office issued a notice on December 8, 2009 that it is initiating a pilot program permitting petitions to accelerate applications pertaining to green technologies.  74 Fed. Reg. 64666.

Under the Green Technology Pilot Program, applications pertaining to environmental quality, energy conservation, development of renewable energy, or greenhouse gas emission reduction, will be advanced out of turn for examination without meeting all of the current requirements of the accelerated examination program (e.g., examination support document).   The PTO will accept only the first 3,000 petitions to make special in previously filed new applications, provided that the petitions meet the requirements set forth in this notice.  

Because the Green Technology Pilot Program will run for 12 months from its December 8, 2009 effective date, petitions to make special under the program must be filed before December 8, 2010.  The USPTO may extend the pilot program (with or without modifications) depending on the feedback from the participants and the effectiveness of the pilot program.

To read the PTO notice about the program, click here.

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Patent and Trademark Office/Backlog Reduction
Small Entities With Multiple Applications Can Trade Abandonments for Special Status

The Patent and Trademark Office on November 27, 2009 announced a new procedure to permit small entities with multiple applications to advance certain applications out of turn for examination in exchange for abandoning other less important applications.   74 Fed. Reg. 62285.

The PTO notice explains that this departure from the practice of taking up applications in order of their filing date is intended as an incentive for applicants to remove less important applications from the examination queue.  The Patent Application Backlog Reduction Stimulus Plan, effective November 27, 2009, requires a petition under 37 C.F.R. §102 for the application for which special status is sought.  In addition, the following would be required:

• The application for which special status is sought is a non-provisional application that has an actual filing date earlier than October 1, 2009, in which the applicant has established small entity status under 37 CFR 1.27;
• the applicant has another co-pending non-provisional application that has an actual filing date earlier than October 1, 2009, and is complete under 37 CFR 1.53 (i.e., the application contains an executed oath or declaration and the filing fee, search fee, examination fee, any applicable application size fee, and any applicable excess claims fee have been paid);
• the application for which special status is sought and the other co-pending non-provisional application either are owned by the same party as of October 1, 2009, or name at least one inventor in common;
• the applicant files a letter of express abandonment under 37 CFR 1.138(a), signed in compliance with 37 CFR 1.33(b)(1), (b)(3), or (b)(4) (37 CFR 1.138(b)), in the co-pending non-provisional application before it has been taken up for examination, and includes with the letter of express abandonment a statement that the applicant has not and will not file an application that claims the benefit of the expressly abandoned application under any provision of title 35, United States Code, and that the applicant agrees not to request a refund of any fees paid in the expressly abandoned application; and

According to the PTO notice, this temporary plan will last only until February 28, 2010, at which time it may be extended to all applicants on either a temporary or permanent basis.  However the notice also states that the plan may be discontinued on January 31, 2010, depending on the results of the plan.

To read the PTO notice on this plan, click here.

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Legislation/Satellite Compulsory License
House Passes Bill to Reauthorize and Improve Satellite Compulsory License

The House of Representatives on December 3, 2009 passed legislation (H.R. 3570) to reauthorize and improve the satellite compulsory license at Section 119 of the Copyright Act, which is due to expire on December 31, 2009.  The legislation renews the satellite license for another five years.  In addition to renewing the compulsory license, the passed legislation would:

• Reflect a transition from analog to digital;
• Ensure that consumers in markets without network affiliates can receive the full complement of network programming;
• Alter the way the cable royalty rates are calculated to resolve the so-called “phantom signal” ambiguity and make the compensation for copyrighted content more fair;
• Attempt to help rural markets that are currently not receiving “local-into-local” service;
• Restore the section 119 license to DISH network on the condition that DISH enter all television markets in the United States;
• Heighten the penalties for copyright infringement;
• Provide a verification right for copyright owners to ensure that they are being properly compensated for the use of their intellectual property;
• Correct and updates provisions related to rate-setting proceedings before the Copyright Royalty Judges;
• Add a royalty filing fee to defray the administrative costs of disbursing the copyright payments to the pool; and
• Move provisions for low power television and “significantly viewed” stations from Section 119 to Section 122 to reflect the “local” nature of those signals.

To read the text report on the legislation, click here.
To read the House report on the legislation, click here.

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Amicus Brief/Patents/ Standards/Misuse
AIPLA Amicus Brief Urges Adherence to Rule of Reason in Misuse Case
Princo Corp. v. U.S. International Trade Commission, Fed. Cir., No. 2007-1386, brief filed 12/4/09.

The en banc Federal Circuit should clarify that patent misuse allegations arising from license restrictions on pooled patents must be analyzed under a “rule of reason” approach, according to an AIPLA amicus brief filed December 4, 2009. 

The case involves a pool of patents licensed in connection a technical standard (the “Orange Book”) for manufacturing recordable compact discs and rewritable compact discs where U.S. Philips Corporation was authorized to administer the pool of patents.  In an action before the ITC, Princo’s patent misue defense to infringement failed in part because Princo was unable to demonstrate tying with evidence that the patent pool required a license to unnecessary patents.  The Federal Circuit affirmed in part, but reversed and remanded on the claim that an agreement between Phillips and Sony not to separately license a particular patent in the pool was anticompetitive.  That decision was vacated and the case was taken for en banc review.

The AIPLA brief notes that the panel referred to per se illegal price fixing and noted that agreements preventing patent licensing of competing technologies are “not within the rights granted to a patent holder.”  The brief strongly urges the en banc Court to clearly articulate that the licensing conduct at issue in this case is only properly analyzed under the rule of reason, and not the per se rule.  It also urges that the Court clearly place the burden of proving anticompetitive effect under the rule of reason on the party invoking the patent misuse defense or asserting antitrust claims (in this case, Princo).

To read the AIPLA amicus brief, click here.

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Trademarks/Domain Names
New ICANN Rules on Dispute Resolution Are Effective March 1, 2010

The Internet Corporation for Assigned Names and Numbers (ICANN) announced December 7, 2009 that its new Uniform Domain Name Dispute Resolution Policy (UDRP) rules will become effective March 1, 2010.

The new rules require UDRP claimants and respondents to provide documents to UDRP Providers in electronic form and change UDRP Provider obligations in forwarding hard copy notice to respondents in UDRP proceedings.  Until 1 March 2010, UDRP Providers may elect to follow the hard copy notice (without complaint) requirement as set forth in the modified Rules.  For all UDRP proceedings filed on or after 1 March 2010, all UDRP Providers must follow the updated requirements.

According to the ICANN notice, providers may allow, but must not require, UDRP complainants and respondents to submit complaints and responses in electronic form prior to 1 March 2010.  For all UDRP proceedings filed on or before 28 February 2010, complainants and respondents may elect to submit their documents in hard copy form, as set forth in the original Rules.

To read the ICANN notice, click here.

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