Top Stories of 2017: #10 to #14

by McDonnell Boehnen Hulbert & Berghoff LLP

After reflecting upon the events of the past twelve months, Patent Docs presents its 11th annual list of top patent stories.  For 2017, we identified nineteen stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants.  Yesterday, we counted down stories #19 to #15, and today we count down stories #14 to #10 as we work our way towards the top five stories of 2017.  As with our other lists (2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look.  As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know.  In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2017" on January 17, 2018 from 10:00 am to 11:15 am (CT).  Details regarding the webinar, which will focus on a handful of the most important stories on this year's list, can be found here.

14.  Federal Circuit: PTAB and District Court Can Reach Different Conclusions on Same Evidence

In April, the Federal Circuit determined in Novartis AG v. Noven Pharmaceuticals Inc. that the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) did not have to take into account a final district court determination of non-obviousness of the same claims based on the same prior art in an inter partes review proceedings.  The Federal Circuit based its decision on the different burdens of proof required in the two different types of proceedings, citing to Cuozzo Speed Techs., LLC v. Lee, wherein the Supreme Court which noted that the "different evidentiary burdens mean that the possibility of inconsistent results is inherent to Congress' regulatory design."  Cuozzo, 136 S. Ct. 2131, 2146 (2016).

For information regarding this and other related topics, please see:

• "Novartis AG v. Noven Pharmaceuticals Inc. (Fed. Cir. 2017)," April 4, 2017

13.  Patent Associations Propose Changes to § 101

In the aftermath of the Supreme Court's decision in 2016 not to grant certiorari in Sequenom v. Ariosa, many voiced the opinion that only Congress could resolve the acknowledged uncertainty that recent Supreme Court decisions have created in the law of patent subject matter eligibility.  In February, the Intellectual Property Owners Association was the first of three patent associations to propose an amendment to 35 U.S.C. § 101.  In March, the Intellectual Property Law Section of the American Bar Association (ABA-IPL) sent its proposal for revising § 101 to U.S. Patent and Trademark Office Director Michelle Lee.  Finally, in May, the American Intellectual Property Lawyers Association (AIPLA) announced its proposal to amend § 101.  The three proposals can be found in the posts listed below.  Many in the patent community are hopeful that the three patent associations will be able to come together on a consensus proposal in 2018 and have a bill to change § 101 introduced in Congress.

For information regarding this and other related topics, please see:

• "AIPLA Proposes Legislative Changes to 35 U.S.C. § 101," May 16, 2017
• "ABA IP Law Section Sends Section 101 Revision Proposal to USPTO Director Lee," March 29, 2017
• "What to Do about Section 101? IPO Provides Its Answer," February 9, 2017

12.  Federal Circuit Narrows Enfish & McRO in Recognicorp

Since September of 2016, when the Federal Circuit issued its decision in McRO, Inc. v. Bandai Namco Games America Inc., it had been understood that an invention that improves the operation of a computer or another technology is not abstract under § 101, and that a court should review the specification to make this determination.  While Recognicorp, LLC v. Nintendo Co. did not exactly throw that notion under the bus, it did serve to possibly narrow the holdings of Enfish, LLC v. Microsoft Corp., decided in May of 2016, and McRO.  In deciding Recognicorp, the Federal Circuit refused to acknowledge the possibility that the claimed invention resulted in such an improvement, and did not analyze the specification in detail.  As we reported shortly after Recognicorp was decided in April, the disconnect between the Federal Circuit's characterization of the claims under part one of the Alice two-part test (to determine whether claims are directed to patent-eligible subject matter) and the actual claimed invention was remarkable.  In the Court's view, there was no substantive difference between claim 1 and "Morse code, ordering food at a fast food restaurant via a numbering system, and Paul Revere's one if by land, two if by sea signaling system."  As many have noted, evaluating claims at such a high level does violence to the actual invention, which is the specific method recited by the claim.  Indeed, Enfish and McRo specifically warned against over-generalizing claims and reducing them to a subjective "gist" in part one of the Alice analysis.

For information regarding this and other related topics, please see:

• "Recognicorp, LLC v. Nintendo Co. -- Petition for En Banc Rehearing and Amicus Briefs," June 22, 2017
• "Recognicorp -- A Miscarriage of Justice Calling for En Banc Reconsideration," May 10, 2017
• "Recognicorp, LLC v. Nintendo Co. (Fed. Cir. 2017)," May 1, 2017

11.  Federal Circuit Eschews "Newly Characterized Antigen" Test for Antibodies

In October, the Federal Circuit rendered a decision in Amgen Inc. v. Sanofi that brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement in 35 U.S.C. § 112(a) to properly circumscribe the scope of claims to monoclonal antibodies.  Perhaps the most significant portion of the opinion involved the jury instructions, which relied on Noelle v. Lederman for the proposition that characterizing a new antigen was sufficient to satisfy the statute for claims encompassing a broad genus of antibodies that could bind to the new antigen.  The Federal Circuit determined that this instruction "is not legally sound and [] not based on any binding precedent," finding the instruction to be improper because it effectively eliminated the written description requirement from the statute in favor of enablement, contrary to the Court's en banc Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. decision, stating that "[b]y permitting a finding of adequate written description merely from a finding of ability to make and use, the challenged sentence of the jury instruction in this case ran afoul of what is perhaps the core ruling of Ariad."  In setting forth its abrogation of the "fully characterized antigen" test more directly, the Federal Circuit declared that:

[T]he "newly characterized antigen" test flouts basic legal principles of the written description requirement.  Section 112 requires a "written description of the invention."  But this test allows patentees to claim antibodies by describing something that is not the invention, i.e., the antigen.  The test thus contradicts the statutory "quid pro quo" of the patent system where "one describes an invention, and, if the law's other requirements are met, one obtains a patent."  Indeed, we have generally eschewed judicial exceptions to the written description requirement based on the subject matter of the claims [citations omitted].

For information regarding this and other related topics, please see:

• "Amgen Inc. v. Sanofi (Fed. Cir. 2017), November 19, 2017

10.  Supreme Court to Decide Whether Board Must Address Every Claim Raised in IPR Petition

In November, the Supreme Court heard oral argument in SAS Institute, Inc. v. Complementsoft, LLC (immediately after the Supreme Court heard oral argument in Oil States Energy Services, LLC. v. Greene's Energy Group, LLC -- which, as most readers may surmise, will make a subsequent appearance on our top stories list for 2017).  As for SAS Institute, the case arose in litigation over a patent assigned to Complementsoft.  SAS filed its inter partes review petition on claims 1-16 of that patent, and the Board instituted as to claims 1 and 3-10 on obviousness grounds.  The PTAB found all instituted claims but claim 4 obvious and issued a final written decision on these claims.  SAS appealed, arguing that "the Board's final written decision is deficient for failing to address the patentability of all claims SAS included in its IPR petition, including those for which the Board did not institute IPR."  On appeal, the Federal Circuit held that the Board was not required to render a decision as to claims for which it did not institute the IPR, and that its decision in Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) was controlling.  At least one basis for the Federal Circuit's decision was the differences between the statutory language in 35 U.S.C. § 318(a), which recited "claims challenged by the petitioner," and the language in 35 U.S.C. § 314, in which the language "claims challenged in the petition" was used to describe the institution decision.  SAS's petition for certiorari set forth the following Question Presented:

Whether 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review "shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner," requires that Board to issue a final written decision as to every claim challenged by the petitioner, or whether it allows that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the U.S. Court of Appeals for the Federal Circuit held.

For information regarding this and other related topics, please see:

• "Supreme Court Hears Argument in SAS Institute, Inc. v. Complementsoft, LLC," December 5, 2017

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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