Patent Law

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By Audrey A. Millemann

A patent must sat­­isfy several requirements in order to be valid. One of these is the written description requirement, as set forth in 35 U.S.C. §112, ¶1. That subsection requires that a patent:

”contain a written description if the invention…in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains… to make and use the same…”

The purpose of the written description requirement is to demonstrate that the inventor is in possession of the invention (i.e., actually invented the claimed invention) as of the date the patent application was filed. In Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336 (Fed. Cir. 2013), the Federal Circuit Court of Appeals held that a specification that is a “mere wish or plan” does not satisfy the written description requirement. The case is a strong reminder to patent applicants and practitioners that the written description requirement is critical.Continue Reading You Must Describe What You Actually Invented

By Audrey A. Millemann

Two interesting patent cases are before the United States Supreme Court. The first is Akamai Technologies, Inc. v. Limelight Networks, Inc. 692 F.3d 1301 (Fed. Cir. 2012). The second is Medtronic Inc. v. Boston Scientific Corp., 695 F.3d 1266 (Fed. Cir. 2012).        

Does Inducing Infringement Require that a Single Party has Performed All of the Steps of a Method Claim?

In Akamai, the issue is whether a plaintiff suing a defendant for inducing infringement of a method patent must show that a single party performed all of the steps of the method.

Inducing infringement exists if a defendant instructs or causes another party to infringe a patent. With respect to a method patent, a defendant has induced infringement if it has instructed another party to perform all of the steps of the claimed method. The party who has induced infringement is an indirect infringer. The party who has performed all of the steps of the method claim is a direct infringer. “Divided infringement” is a phrase used to describe the situation where multiple parties have performed different steps of the claimed method. Continue Reading Patent Infringement Cases Before The Supreme Court

By Lisa Y. Wang

In April, we published an article about Fox Broadcasting Co. v. Dish Networks, LLC, where Fox Broadcasting was requesting a preliminary injunction against Dish Network, claiming that were engaged in copyright infringement by offering their Auto Hop on Dish Networks’ DVRs. As of that date, a judge declined to issue a preliminary injunction and Fox had appealed to the Ninth Circuit Court of Appeals. On July, 24, 2013, the Ninth Circuit rejected Fox’s appeal, and affirmed the district court’s refusal to enjoin Dish Network’s features. It affirmed the lower court’s reasoning that the consumer is the party causing a copy to be made, and not Dish Network. So if you subscribe to Dish Network and have the Auto Hop and "PrimeTime Anytime" features, no need to panic and switch cable/satellite providers, you can still watch your favorite television shows, commercial-free, without even touching the fast-forward button.

The Ninth Circuit confirmed that DVR recording is protected fair use, and since Fox did not have any copyright interest in the advertisements (the only content that was being skipped), it could not show that it was irreparably harmed by the features.   However, it may be a bit premature for Dish Network to break out the champagne, despite Dish’s executive vice-president’s statement that, "This decision is a victory for American consumers."   That is because this decision was made using the very high legal standard required to justify a preliminary injunction, and the deferential standard of review applied to denials of preliminary injunctions. Continue Reading UPDATE: You Can Still Hop Through Commercials

By Audrey A. Millemann

In Association For Molecular Pathology v. Myriad Genetics, Inc., decided on June 13, 2013, the United States Supreme Court held that isolated natural genes (DNA) are not patentable. Thus, genes that exist in a living organism, such as the human breast cancer genes BRCA1 and BRCA2 at issue in this case, are not made patentable because the inventor isolates them from the other genomic DNA. The Court was careful to explain that other inventions related to genes, however, are patentable. In particular, the Court held that the synthetic copy of a gene known as “complimentary DNA” (cDNA) is patentable, as well as methods of isolating genes and methods of using cDNA. 

The decision was not surprising. The law has long been that naturally occurring biological compositions are not patentable subject matter. The Court applied that rule logically to find that a gene as it exists in a living organism is not patentable just because someone discovers it. In contrast to natural DNA, cDNA is not found in the living organism. The Court found that cDNA is a copy of the natural gene, synthesized in the lab; it is different from the natural gene in that it does not include the non-coding portions of the DNA that are present in the natural gene. The Court concluded that the cDNA is therefore patentable as a man-made composition.

BRCA1 and BRCA2 genes are associated with an increased risk of breast and ovarian cancer. A woman with specific mutations in these genes has a 50% to 80% chance of having breast cancer, compared with 12% to 13% risk for women without these mutations, and a 20% to 50% chance of having ovarian cancer. Myriad discovered the location of these genes and sequenced the most common mutations. They used this information to develop a screening test to determine if a woman has a high risk of cancer due to the presence of the BRCA1 and BRCA2 gene mutations.
Continue Reading (NATURAL) GENES ARE NOT PATENTABLE

The landscape of patent law has been rapidly changing over the last several years. President Obama recently signed into law the America Invents Act (the “AIA”) which offered the first identifiable attempt by the United States government to stem the tide of claims asserted by non-practicing entities, also known pejoratively as “patent trolls.” Among the many changes included in the AIA is the requirement for non-practicing entities to file individual lawsuits against accused infringers rather than multiple defendants, thereby creating a potentially significant increase in the cost of litigation. This provision of the AIA, and other proposals directed at non-practicing entities, are often premised on the assumption that every lawsuit filed by these so-called “trolls” is frivolous.

While it’s true that a significant number of lawsuits filed by non-practicing entities have no merit, and are settled by the accused parties merely to avoid the costs associated with defending a patent infringement lawsuit, it is inaccurate and potentially counterproductive to assume that all patent litigation initiated by a non-practicing entity is meritless. Yet, recent comments by President Obama grouped all non-practicing entities together and cast them all as a significant drain on U.S. businesses and an overall drag on technology companies. The White House stated that “stopping this drain on the American economy will require swift legislative action.”Continue Reading Are Patent Trolls Good?