By: Robert R. Sachs

On January 31, 2014, Fenwick & West and the Center for the Protection of Intellectual Property (CPIP) at George Mason University School of Law held a roundtable on Patentable Subject Matter at Fenwick’s Silicon Valley office. 

Our approach to this roundtable was different from the typical conference or roundtable on patent

By: Robert R. Sachs, Daniel R. Brownstone

Last week, we filed two amicus briefs with the Supreme Court in Alice Corp. v. CLS Bank, one on behalf of Advanced Biological Laboratories (ABL), and one for Ronald M. Benrey (Benrey). It goes without saying that this is the bellwether case for the patent eligibility of software. The question

By: Robert R. Sachs

Having now discussed the underlying clarity issues that the USPTO is seeking to address with its proposal to include glossaries in patent applications and the fundamental linguistic elements that would impede the success of such a requirement, I’ll now discuss some of the problems that would arise in the implementation of patent glossaries.


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By: Robert R. Sachs

What motivates the USPTO to consider the use of glossaries in patent applications is surely the hue and cry that software patents are frequently, if not inherently, vague and ambiguous, and that something must be done to help clarify—and more importantly, narrow—the scope of patent claims. See, Government Accountability Report “Assessing Factors That Affect Patent Infringement Litigation Could Help Improve Patent Quality,” August 2013, p. 28, 30. 

My experience in prosecuting patents, and in particular in evaluating software patents for essentiality to technology standards, is that claims in software patents are no more or less ambiguous to one of skill in the art than claims in other disciplines. There is a difference between claims that are broad and claims that are vague, and this difference is lost on most observers. Indeed the examples used by critics of the patent system are typical of broad claims, not vague ones. See Chin, On Abstraction and Equivalence in Software Patent Doctrine: A Reply to Bessen, Meurer and Klemens, J. Int. Prop. Law, v.16, no. 2, pp. 197-240 (Spring 2009). 


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By: Robert R. Sachs

Humpty Dumpty smiled contemptuously. “Of course you don't—till I tell you. I meant ‘there’s a nice knock-down argument for you!’”

“But ‘glory’ doesn't mean ‘a nice knock-down argument,’” Alice objected.

“When I use a word,” Humpty Dumpty said, in rather a scornful tone, “it means just what I choose it to mean—neither more nor less.”

“The question is,” said Alice, “whether you can make words mean so many different things.”

“The question is,” said Humpty Dumpty, “which is to be master—that’s all.”

    Lewis Carroll, Through the Looking-Glass (1872) p. 72.

At last month’s Software Partnership Meeting in Berkeley, the USPTO discussed its proposed inclusion of glossary sections in patent applications to assist examiners in claim interpretation.


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By: Robert R. Sachs

Alternative universes make for compelling drama on the big screen, especially when the plot involves the reversal of identities or roles. What is surprising is how exciting this theme can be when set in the scholarly suites of the Federal Circuit courthouse. The following commentary is highly tongue-in-cheek. Reader discretion is advised.

SECTION 101

These are the voyages of the Starship Federal Circuit…

…whose never ending mission is to seek out new forms of patent eligible subject matter…

… to boldly claim what no man has claimed before!

Mirror, Mirror [1] A transporter malfunction in the U.S.S. Guidewire [2] sends Capt. Rader and First Officer Lourie into an alternate legal universe, where Rader advocates for Lourie’s legal theory of preemption from The En Banc Maneuver,[3] while Lourie devises a new theory of method claim estoppel to escape the consequence of his own inviolable logic.[4]


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By: Robert R. Sachs

 

"To coin a phrase, the name of the game is the claim.”
Judge Giles S. Rich, Federal Circuit (1990)

“We look to the words of the claims themselves … to define the scope ofthe patented invention.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir1996)

“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)

The above quotations are often cited in discussions and analysis of claim construction, typically in prelude to infringement or validity analysis. But when it comes to determining patent eligibility, there is a clear split within the Federal Circuit as to the importance of claim language, driven by the divergent stances that various members of the court take toward the fundamental question of what counts as an invention.


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By: Robert R. Sachs

The Federal Circuit’s en banc decision in CLS Bank Int’l v. Alice Corp., __  F.3d __, No. 2011-1301, 2013 WL 1920941 (Fed. Cir. May 10, 2013) was roundly criticized as a “nightmare,” further cementing the impression that the court was confused and in conflict over the requirements of patent eligibility under 35 U.S.C § 101. The six non-precedential opinions were seen as leaving patent applicants and owners alike without guidance, let alone predictability, as to whether their patents were valid. Alice Corp.’s patents covered computer-implemented methods and systems for a third-party intermediary to ensure real-time settlement of currency exchange transactions between counterparties. Judges Lourie, Dyk, Wallach, Reyna and Prost appeared to take a hard stand against such software-based financial inventions, finding that neither the method nor system claims were patent-eligible. Under Lourie’s “integrated approach,” the patent claims lacked any “meaningful limitations” and thereby preempted all “practical applications” of the abstract idea of third-party settlement. Taking a middle position, Judges Rader, Moore, Linn and O’Malley agreed that the method claims were not patent-eligible, but argued that the system claims were patent-eligible because they contained limitations that were not necessary and inherent in the abstract idea. At the other end of the bench, Judges Linn and O’Malley argued that the method claims were indeed patent-eligible because they included limitations that prevented the claims from being “unduly preemptive.”


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By: Robert R. Sachs, Jennifer R. Bush

In our previous post, we explored the philosophical aspects of what is a law of nature. We can now apply that analysis and consider whether Prometheus’ claim recites a law of nature under the variously described criteria. Here is the claim 1 of the ‘623 patent:

1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated
gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to
a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said
subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about
230 pmol per 8×108 red blood cells indicates a need to increase the
amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than
about 400 pmol per 8×108 red blood cells indicates a need to
decrease the amount of said drug subsequently administered to said subject. 


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By: Robert R. Sachs, Jennifer R. Bush

In March 2012, the Supreme Court ruled, in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012), that a patent claim on a method of determining whether a given dose of a particular type of medication was safe and effective was a “law of nature” and thus invalid. In the following two-part series, we will show that the Court’s characterization of Prometheus' patent as nothing more than a law of nature does not withstand critical analysis. 

Prometheus Labs is the exclusive licensee of U.S. patents 6,355,623 and 6,680,302. The patents deal with a protocol to determine the safe and effective dosage for thiopurines, which are medications that treat autoimmune diseases such as Crohn’s disease and ulcerative colitis. These medications metabolize in the patient’s body into 6-thioguanine (“6-TG”). The different rates at which the medications metabolize make it difficult for physicians to determine whether a given dose is too high (and thus toxic) or too low (and thus ineffective). The Prometheus patents’ claims identify the range for safe and effective dosages as those which result in a concentration of 6-TG between about 230 pmol and about 400 pmol per 8×108 RBC red blood cells (“RBC”). The patents claim no underlying biological process that accounts for the differences in metabolization.

The Supreme Court ruled that Prometheus’ claims were not eligible for patent protection, holding that Prometheus did nothing more than identify a law of nature. However, The Court’s analysis of the claim as a law of nature is based on a superficial understanding of the scientific status of laws of nature.


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