Bilski v. Kappos, No. 08-964 (S. Ct. June 28, 2010).

On June 28, 2010, the Supreme Court issued its long-awaited (oral arguments were November 9, 2009) decision in Bilski v. Kappos. The Court affirmed the rejection of Mr. Bilski’s claims, which were directed to methods of hedging against a risk of price changes for a commodity, as an unpatentable abstract idea. While doing so, the Court interpreted “process” in the patent statute as taking its “ordinary, contemporary, common meaning,” excluding only laws of nature, physical phenomena, and abstract ideas by Court precedent. The Court endorsed the Federal Circuit’s machine-or-transformation test as a useful, but not the sole, test of subject matter that may be patentable under 35 U.S.C. § 101. Finally, the Court rejected any categorical exclusion of business methods from patent-eligible subject matter.

The Court invoked 35 U.S.C. § 100(b)’s definition of “process” as “process, art or method . . .”—circular, according to Justice Stevens (concurring)—to anchor its approach on Congress’s “permissive approach to patent eligibility.”  Slip op. 4-5.  Because the “machine-or-transformation” test for a patentable process was not rooted in section 100(b)’s definition, or in any “ordinary, contemporary, common meaning,” it could not serve as an exclusive test for patent-eligible processes.  While a late nineteenth-century case (Cochrane v. Deener) supported the test, the Court read late twentieth-century cases (Gottshalk, Flook) as treating the test as but a clue to patentable subject matter.  Under an ordinary meaning, “at least some methods of doing business” may be within section 101.  Slip op. at 10. The Court further relied on 35 U.S.C. § 273(a) to support its conclusion that not all business methods are outside the scope of section 101. This section defines “method,” for the purpose of enumerating a defense to infringement of a method patent, as “a method of doing or conducting business.” Reading this 1999 provision with the 1952 act’s sections 100 and 101 demonstrated Congress’s intent to encompass business methods within the ambit of section 101.

As to the more detailed Bilski claims, with specific applications to energy as the commodity, adding statistical limitations, and random analysis techniques, the Court relied on Flook for the rule that limiting an abstract idea to a certain field or adding insignificant post-solution components does not imbue an abstract idea with patentability.

The Court opinion was only a plurality due to Justice Scalia’s defection from two sections of the plurality opinion (II-B-2 arguing that the machine-or-transformation test is tied to the Industrial Age and insufficient for determining what is patentable in the Information Age (“Section 101′s terms suggest that new technologies may call for new inquiries.”) and II-C-2 asserting that business methods are not per se unpatentable but include some that are unpatentable, abstract ideas (those that “instruct how business should be conducted”)).

The Stevens concurrence (joined by Justices Ginsburg, Breyer, and Sotomayor), three times the length of the plurality’s opinion, read as though it had been intended for a majority opinion. Justice Stevens would have “restore[d] patent law to its historical and constitutional moorings,” slip op. at 1 (Stevens, J., concurring), by disallowing business method patents: “[A]lthough a process is not patent-ineligible simply because it is useful for conducting business, a claim that merely describes a method of doing business does not qualify as a ‘process’ under §101.” Id. at 2-3.  The “less than pellucid” opinion of the Court jettisoned centuries of contextual meaning for “process” that tied a patentable process to technology, as in the Useful Arts.  “Indeed, the [Court's] approach would render § 101 almost comical.  A process for training a dog, a series of dance steps, a method of shooting a basketball, maybe even words, stories or songs if framed as steps of typing letters or uttering sounds-all would be patent-eligible.” Id. at 13.

Justice Scalia joined Justice Breyer’s concurrence, which set out four points on which, beyond the unpatentability of Bilski’s claims, everyone could agree. First, natural phenomena, mental processes, and abstract ideas are not patentable. Second, application of the machine-or-transformation test is helpful for determining if a process is patent-eligible. Third, although useful and important, the machine-or-transformation test “has never been the ‘sole test’ for determining patentability,” slip op. at 3 (Breyer,, J., concurring).  And last, “this by no means indicates that anything which produces a ‘useful, concrete, and tangible result’ is patentable,” id. (quoting with disapprobation State Street).

Note, Justice Scalia specifically declined to join that part of Justice Breyer’s concurring opinion that would have held all business methods to be outside the scope of patentable subject matter under 35 U.S.C. § 101.

We can expect from Justice Breyer’s last words that the machine-or-transformation test will be the starting point in future patentable subject matter analyses: “[I]n reemphasizing that the ‘machine-or-transformation’ test is not necessarily the sole test of patentability, the Court intends neither to deemphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach.” Slip op. at 4 (Breyer, J., concurring).

Within hours of the Court’s decision, the Patent Office told the examiners that if a process passes the machine-or-transformation test it is likely patent-eligible, absent “a clear indication that the method is directed to an abstract idea.”  If it does not, absent “a clear indication that the method is not directed to an abstract idea,” the applicant must show why it is a patent-eligible process (however that is to be done). The Court has left to the Federal Circuit the task of giving the “clear indication” some shape, and has provided a ready opportunity by remanding a pair of cases decided using the machine-or-transformation test, Classen Immunotherapies Inc. v. Biogen Idec (non-patent-eligible subject matter) and Mayo Collaborative Services v. Prometheus Laboratories Inc. (patent-eligible subject matter). Both Classen and Prometheus concern medical methods.

- by Anna M. Budde, Principal, Harness Dickey

Everyone knew Bernard Bilski had little chance. His claim was drawn to a method for hedging risk that could be performed by a couple of businessmen meeting in Central Park, with no equipment other than perhaps a pad of paper to take notes. Bilski’s claim presented the perfect case for the Patent Office to test whether patent law should permit anyone to monopolize powerful concepts such as hedging against risk without having made any technological advance in the art. The decks were stacked against Bilski from the start.

Those who believe that software and business method patents are a plague upon the very foundation of our society had high hopes that Bilski would tear both classes of invention from the pages of the law books. Their sigh of disappointment was palpable when the Supreme Court ruled. If labels have any value at all, Bilski was a “business method” patent case, not a “software patent” case. So the likelihood that the Bilski ruling would outlaw all software patents was not in the cards. As for business methods, that was a much closer question. Indeed, the Supreme Court came one vote short of ruling that business methods are not patent eligible processes. The swing vote appears to have been Justice Scalia, who was unwilling to categorically exclude any class of inventions, such as business methods, simply based on a label. All nine justices did agree, however, that Bilski’s claim did not reflect patent eligible subject matter.

However the 5-to-4 majority of the Court was not willing to venture onto new ground. Consistent with its rulings during the 1970s and 1980s, it ruled that if a process uses a particular machine, or if it changes an article into a different state or thing, those facts are a clue that the subject matter is eligible for patent; but this machine-or-transformation test is only one test and there may be others, the Court said. Unfortunately, the Court provided scant guidance on what those other tests might be.

The Patent Office was quick to announce that it will continue to apply the machine-or-transformation test; but that it may also reject a claim as being drawn to an abstract idea and place the burden on the applicant to prove otherwise. Thus patent applicants will want to characterize their inventions, where possible, so that a machine or transformation is apparent, and be prepared to show why the claim does not preempt all use of an abstract idea, where the machine or transformation is not so apparent. Patent examiners are trained to discount “mere data gathering steps” or “insignificant post-solution activity.” So any showing that the claim does not preempt an abstract idea will need to focus on the heart of the invention.

One wonders if Judge Rich might have had a different answer to the difficult question of patent eligible subject matter, if he were alive today. Judge Rich along with chief patent examiner Federico in the early 1950s drafted our current patent statute. Judge Rich served on the Court of Customs and Patent Appeals, and later on the Court of Appeals for the Federal Circuit from 1956 until his death in 1999. During his tenure he authored some of the most groundbreaking, influential and controversial decisions in patent law. Indeed he authored the State Street Bank decision that opened the business method patents floodgate in 1998 and thereby placed the patent eligibility issue squarely in the Patent Office’s gunsight.

In State Street Bank Judge Rich held that the so-called business method exception was not a valid rationale for denying patent eligibility. Justice Stevens was ultimately one vote short of convincing the Bilski court that Judge Rich was wrong. However, now that Justice Stevens has retired, it seems doubtful that the business method exception will be again be proffered as the basis for denying patentability. Rejecting a class of inventions based on an artificial label seems the wrong direction for a Court to take.

More likely, the battle will be, as the Patent Office has already hinted, whether the claimed invention seeks to preempt an abstract idea. Applicants in emerging technologies should think about what they will say when asked to explain why their claimed invention does not preempt an abstract idea. Hint: See Gottschalk v Benson to see how the Patent Office will attack; see Parker v Flook to see what didn’t work; and see Diamond v Diehr to see what did.

Most patent attorneys would have thought these basics were set in stone decades ago. They were not.

The patents at issue in Encyclopaedia Britannica claimed priority through a chain of four earlier patents. The second application in the series (first continuation) was filed and abandoned under circumstances that created the difficulty. But it was critical for Britannica to be accorded the priority date of the first application in the series because the first application’s foreign equivalent had been published more than a year before the actual filing date of even the first continuation.

The first continuation had been filed on the same day that its parent issued, without filing fee, declaration, claim to priority of the parent, or first page. The PTO issued a Notice of Incomplete Application, requiring receipt of the first page before according a filing date. Britannica petitioned to have a filing date accorded, but was rebuffed by the PTO because the petition was not supported by an oath or declaration from the inventors stating the first page was not needed to understand the claimed invention. The PTO invited Britannica to file a request for reconsideration along with such a supporting oath or declaration. Britannica elected instead to do nothing, buying a four-month extension only to file a third application in the chain on the very last day of the period for responding. Britannica left the problems in the second application in the chain uncorrected.

The court found that the priority chain was broken because the second application did not “contain a specific reference to the earlier filed application” required by 35 U.S.C. § 120.  Britannica had argued that only the application being asserted needed to contain a reference to the earlier applications to which priority was claimed. However, section 120 required each earlier application in turn had to be “similarly entitled to the benefit to the filing date of the first application,”  but the second application in the series had not been similarly entitled when the third application in the series attempted to claim priority through it. 

Take note: the court warns that it “leave[s] for  another day whether filing a continuation on the day the parent issues results in applications that are co-pending as required by statute.” Slip op. at 13. The court also left for another day whether it is possible to claim priority to an application such as the second in the Britannica chain that had not been accorded a filing date before being abandoned, among other “infirmities.” Id. 

The Britannica court noted that In re Henricksen, 399 F.2d 253 (CCPA 1968) had settled the issue that 35 U.S.C. § 120 imposed no limit on the number of applications in a chain through which the benefit of priority may be claimed.

Henricksen was not considered in Boehringer but perhaps it should have been. The Boehringer court ruled that the safe-harbor provision of 35 U.S.C. § 121 available for a divisional application (grandchild) that claimed priority through another divisional application (child) to the application (parent) in which a restriction requirement was made.  In addition, the court stated that the safe harbor provided by section 121 was not lost if distinct inventions are prosecuted together so long as separate divisional applications respect the lines drawn by the examiner in the restriction requirement. The dissent would have accorded a safe harbor only to a divisional having only a single distinct invention and only for a first-generation divisional application. 

Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc., 2009-1544, -1545 (Fed. Cir. June 18, 2010)

- by Anna M. Budde, Principal, Harness Dickey

The “first sale” doctrine allows purchasers of trademarked goods to resell those items without infringing the trademark owner’s rights. That is, the trademark owner may only control the “first sale” of its goods. The “first sale” doctrine protects these downstream sellers, so long as the goods bearing the trademark have not been materially altered.

Au-Tomotive Gold (“Auto Gold”) makes and sells automobile accessories for cars, including Volkswagen vehicles.  Auto Gold bought “VW” brand badges, as used on the hoods and trunks of Volkswagen vehicles, affixed the VW badges to marquee license plates, and sold the plates with packaging indicating that the plates were not produced or sponsored by Volkswagen.[1]  After receiving several letters from Volkswagen demanding that Auto Gold cease using the trademarks, Auto Gold filed suit in 2001 (“Auto Gold I”), seeking a declaratory judgment that its products did not infringe Volkswagen marks.  A “procedural morass” ensued, according to the Court of Appeals for the Ninth Circuit; “[f]rom this point, the case became a maze of counterclaims, stipulated dismissals, and new complaints.”  Au-tomotive Gold, Inc. v. Volkswagen of America, Inc. et al., 544 F. Supp.2d 933, 934 (D. Ariz. 2008) (citing Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc. 457 F.3d 1062, 1066 (9th Cir. 2006)).

At trial in Auto Gold I, the District Court granted summary judgment to Auto Gold, holding that the trademarks were functional under the doctrine of “aesthetic functionality.” The Ninth Circuit reversed on this point, further held that Volkswagen established a case for trademark infringement, and remanded for consideration of Auto Gold’s “first sale” defense.

On remand, in Auto Gold II, the District Court held that Auto Gold failed to state facts to substantiate a “first sale” defense, and granted summary judgment to Volkswagen. Auto Gold appealed.

On appeal, the Ninth Circuit held “that the ‘first sale’ doctrine does not provide a defense because the plates create a likelihood of confusion as to their origin … base[d] on the likelihood of post-purchase confusion among observers who see the plates on purchasers’ cars.” Au-tomotive Gold, 2010 U.S. App. LEXIS 9277 at *5-*6.  Accordingly, in the Ninth Circuit, if post-purchase likelihood of confusion has been established, the “first sale” defense is not available.

- by Elizabeth K. Brock, Associate, Harness Dickey

Au-tomotive Gold Inc. v. Volkswagen of America Inc. et al., 544 F. Supp. 2d 933; 2008 U.S. Dist. LEXIS 33233 (March 31, 2008)

View the Shepard’s Summary here.

[1] Auto Gold also sold license plates, license plate frames and key chains using replicas of Volkswagen trademarks. These actions are not the subject of the current appeal.

The 40/40 Complaint alleges that Ortiz’ use of the words “Forty Forty” in conjunction with a restaurant in the Dominican Republic constitutes trademark infringement.  The allegations made in the complaint focus on the website www.fortyforty.net promoting the restaurant owned by Ortiz. 

Does U.S. trademark law have the extra-territorial reach to stop the use of a trademark in the Dominican Republic?  While that remains open for debate, it seems that Jay-Z, a confirmed Yankee faithful, may have taken Ortiz off his game.  Since the lawsuit was filed on April 15th, Ortiz is batting .111 (160 points off his career average of .281) with no runs and no RBIs.

In a much anticipated decision, the Federal Circuit issued an en banc decision addressing the scope of the “written description” requirement of 35 U.S.C. §112, first paragraph.  At the court’s direction, the parties briefed two questions:  whether §112, paragraph 1 contains a written description requirement separate from an enablement requirement; and, if yes, what is the scope and purpose of the written description requirement.  The court received twenty-five amicus briefs, most of which (including a brief cited by the USPTO) advocated a separate written description requirement.

The court’s majority (9-2) reached the same result as the previous panel (reported at 560 F.3d 1366 (Fed. Cir. 2009)), finding the asserted claims of Ariad’s U.S. Patent 6,410,516 invalid for failure to meet the written description requirement.   The court held that §112, paragraph 1, contains separate written description and enablement requirements.  As to the purpose of the requirement, the court stated, “[R]equiring a written description of the invention plays a vital role in curtailing claims that do not require undue experimentation to make and use, and thus satisfy enablement, but that have not been invented, and thus cannot be described.”  Slip op. at 26. 

The court provided little in the way of specific guidance as to what constitutes sufficient disclosure, declining (in its words) to “set out any bright-line rules”  Slip op. at 25.  Rather, the court stated that “whatever the specific articulation, the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.  Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.”  Slip op. at 24.  The court stated that the level of detail required to support the written description requirement depends on the nature and scope of the claims and the complexity and predictability of the technology.  The court stated that the sufficiency of written description is a question of fact. 

Elsewhere in the opinion, the court articulated the test for sufficiency of written description as “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”  Slip op. at 23.  The court admitted that “possession” is not an “enlightening” standard; “‘possession as shown in the disclosure’ is a more complete formulation.”  Slip op. at 24.  The court also stated that possession or reduction to practice outside the specification is not enough.  “Rather, . . . it is the specification itself that must demonstrate possession.”  Slip op at 25. 

One focus of the court’s analysis was on whether claims meet the written description requirement simply by having been present in the application as filed.  The court stated that, although original claims are part of the specification, they do not necessarily satisfy the written description requirement.  The original claims define the invention, but do not describe the invention.  “For example,” the court said, “a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient o support a claim to a genus.  Slip op. at 20.  The court held that a claim to a genus, particularly one that defined the members of the genus by their function (like Ariad’s claims), “may simply claim a desired result, and may do so without describing species that achieve that result.”  Id. 

The court specifically stated that “a constructive reduction to practice that in a definite way identifies the claimed invention can satisfy the written description requirement.”  However, the court found that Ariad’s attempted constructive reduction to practice failed to satisfy the requirement.  In particular, the inventors of the ’516 patent discovered a mechanism for the body’s immune response to infection.  A transcription factor, NF-kB, is released from an inactive complex with a protein inhibitor, I-kB, so that it can bind to and activate certain genes, including cytokines, which can be harmful in excess.  The specification states that it is possible to modify the activity of NF-kB by three mechanisms: adding an inhibitor molecule, an example of which was given as I-kB; with a decoy molecule that has a binding site for NF-kB, for which a table of sequences recognized by NF-kB in eleven genes was given; and by introducing a dominantly interfering molecule, describing a preferred embodiment as a truncated NF-kB molecule containing the binding domain but not the activating domain, “if the DNA binding domain and the DNA polymerase activating domain of NF-kB are spatially distinct in the molecule.”  The patent claimed methods of reducing NF-kB activity by reducing binding of NF-kB to NF-kB recognition sites on genes.

The ’516 specification failed to support the claimed genus because it did not sufficiently disclose actual molecules belonging to the genus as of the adjudged effective filing date of April 21, 1989.  Thus, although a figure disclosed the sequence of DNA that encodes I-kB, that figure was added in a continuation-in-part application in the chain in 1991.  (The ’516 patent’s actual filing date was June 6, 1995.)  It was not enough that one of ordinary skill in this art could have isolated natural I-kB; the court characterized disclosure of the first mechanism as “a vague functional description and an invitation for further research.” Slip op. at 33.  Regarding the third mechanism, the dominantly interfering molecule, the specification had provided no specific molecule and had stated the method would work only “if the DNA binding domain and the DNA polymerase activating domain of NF-kB are spatially distinct in the molecule,” which the court viewed as an admission that the inventors did not know if, in fact, the two domains were spatially distinct, characterizing the disclosure as “ ‘just a wish, or arguably a plan’ for future research.” Slip op. at 35.  Finally, the table of eleven genes with sequences recognized by NF-kB that might be used as decoy molecules for the second mechanism “does not answer the question whether the specification adequately describes using those molecules to reduce NF-kB activity. . . . [T]here is no descriptive link between the table of decoy molecules and reducing NF-kB activity.” Slip op. at 35-36.  A publication in 1990 that reported using decoy molecules to reduce NF-kB activity could not show possession as of the 1989 priority date.  Even were there a link to show possession of the decoy molecule mechanism, that would not have supported the generic claim to reducing NF-kB activity.  Slip op. at 37.

Comment:  The scope of the written description requirement has been the subject of much concern to many in the patent community, particularly in the pharmaceutical and biotechnology fields.  The court’s decision in Ariad did little to assuage these concerns.  Rather, the court acknowledged the impact on inventors in the life sciences, but refuted Ariad’s assertion that the written description requirement constituted a “super enablement” standard for chemical and biotechnology inventions.  Slip op. at 26.  The court also responded to concerns that the written description requirement disadvantages universities, stating, “Patents are not awarded for academic theories, no matter how groundbreaking or necessary to the later patentable inventions of others.”  Slip op. at 28. 

The fact remains, however, that the written description requirement places major hurdles for inventors, companies, universities and their counsel in their pursuit of patents covering basic inventions (as opposed to “academic theories”) in new technologies.  These hurdles are particularly difficult for smaller companies, as well as academic institutions; such entities have limited resources, are subject to pressures to expose technology for academic or commercial reasons (e.g., obtaining funding), or both.  The court’s analysis in Ariad provides little solace or guidance in addressing these issues.  (In addressing such concerns, the court notes that “This is no failure of the law’s interpretation, rather its intention.”  Slip op. at 28.)  The remedy, if one is to be had, is legislative.  Thus, it remains clear that the pursuit of patents for inventions in the life sciences areas, in particular, requires potentially extensive technical work to define as many embodiments (whether real or prophetic) as possible prior to filing.  There will be uncertainty in how many examples are needed to describe a genus and where such examples should be located in the genus space.   Planning such work should be part of a comprehensive patent and business strategy for new technologies.

United States Patent No: 7,674,969               

Issue Date: March 9, 2010

Title: Finger Musical Instrument

Inventor: Keduan Xu and Xiangyang Han

Assignee: Ringsun (Shenzhen) Industrial Ltd

Abstract:  The present invention relates to a finger musical instrument, including a first glove and a second glove, some performance keys distributed on a fingertip of each of the gloves, and a sound box positioned at each of the gloves. The finger musical instrument further includes a combination key positioned at palm heel of each of the gloves. Each of the sound boxes is connected with a controller. The performance key and the combination key on the same glove are all connected with the corresponding controller. Therein the performance key and the combination of the performance key and the combination key of one glove gives out one octave sound, while the performance key and the combination of the performance key and the combination key of the other glove gives out another octave sound. Each of the controllers is provided with a range regulation switch used for making a sound higher or lower by an octave on each of the gloves. With regulation of the range regulation switch, the finger musical instrument is able to give out a range of two octaves through the sound box. The finger musical instrument of the present invention covers a range of three octaves and can exhibit a vivider music, and the controller can switch between a performance mode and a teaching mode, thus enhancing interaction between the finger musical instrument and a performer.

Other Musical Instrument Utility Patents Issued on March 9, 2010

7,674,971        Keyboard Attachment For Disabled Persons

7,674,970        Multifunctional Digital Music Display Device

7,674,968        Musical Instrument With Electronic Proof System, Electric System And Computer Program

7,674,967        Body Movement Detecting Apparatus And Method, And Content Playback Apparatus

7,674,966        System And Method For Realtime Scoring Of Games And Other Applications

7,674,965        Method And System For Music Notation

7,674,964        Electronic Musical Instrument With Velocity Indicator

7,674,963        String Instrument With Variable Openings

7,674,962        Harp With Exposed Soundboard And Separate Bridges

7,674,181        Game Processing

7,673,907        Musical Ice Skates

7,673,776        Carrier Assembly For Percussion Instruments

Musical Instrument Design Patents Issued on March 9, 2010

D611,524        Drum Ring

D611,523        Guitar

D611,269        Saxophone Stand

Musical Instrument Patent Applications Published on March 11, 2010

20100058920  Music System For Collaboration, Reproducer, Music Data Distributor And Producer

20100058919  Combination Drumstick

20100058918  Instrument Pick 

United States Patent No: 7,671,268 

Issue Date: March 2, 2010 

Title: Internally mounted self-contained amplifier and speaker system for acoustic guitar

Inventor: Laurie Victor Nicoll (Metcalfe, Victoria, AU)

Abstract:  An apparatus for the amplification and projection of the sound of a musical instrument, such as an acoustic guitar, adapted to mount within the guitar itself. The apparatus may mount within the sound hole of the guitar, with an outward facing speaker within the sound hole adapted to project the sound of the instrument. The apparatus may have an amplifier attached to the speaker in a unitary design. The apparatus may be battery powered.

Other Musical Instrument Utility Patents Issued on March 2, 2010

7,672,466          Audio Signal Processing Apparatus And Method For The Same

7,671,269          Graphical Actuation Of A Velocity And Directionally Sensitive Sound Generation

7,671,267          Melody Generator

7,671,266           System And Method For Speech Therapy

7,671,265           System And Method For Teaching Music Theory

7,671,264           Protective Cover For A Guitar

7,671,263           Locking Mechanism For Percussion Musical Instrument

7,671,262           Adjusting Mechanism Of An Instrument Pedal

7,671,261           Musical Instrument Carrier And Related Methods

7,671,260           Component Of Musical Instrument And Production Method Of The Same

7,671,259           Process For The Manufacture Of A Toy Piano

7,669,299           Guitar Strap Connector

Musical Instrument Design Patents Issued on March 2, 2010

D611,087            Bass guitar

Musical Instrument Patent Applications Published on March 4, 2010

20100050854     Device For The Automatic Or Semi-Automatic Composition Of Multimedia Sequence

20100050853     System For Providing Lyrics With Streaming Music

20100050852     Drum

20100050851      Intonated Nut With Locking Mechanism For Musical String Instruments

20100050850     Method For Improving The Sound Of Musical Instruments

20100050849     Stringed Instrument Using Flowing Liquid

Ajinomoto Co. v. ITC, 2009-1081 (Fed. Cir. Mar. 8, 2010)

In a rare best mode case, the Federal Circuit confirmed invalidity of two patents for failure to disclose the best mode.  The claims at issue claimed methods of producing L-lysine with E. coli genetically engineered with mutations of either the gene responsible for inhibiting further lysine production once a certain amount has been produced or the gene responsible for  breaking down excess lysine.  Each claim had steps of cultivating the mutated microorganism to produce L-lysine and collecting the L-lysine.  The patents described preparing mutant strain having these modifications that were deposited in an international depository.  The patents did not describe, however, that these strains has two additional genetic modifications to encode an enzyme in the synthesis and to allow use of sucrose as a carbon source in the synthesis.  Because the claims were for “producing L-lysine,” and because these two additional, undisclosed features were part of the inventor’s contemplated best mode for carrying out the claimed process—producing lysine—the requirement to disclose best mode had not been met.

The patentee argued that “best mode” was limited to production of lysine by the claimed genetic mutations; however, the claimed invention was a process of making lysine by cultivating genetically altered E. coli, and this process was admittedly enhanced by the other, undisclosed features.  The inventors were obligated to disclose the preferred bacterial strain they used to practice the invention, as well as the undisclosed modification that allowed them to use sucrose.

Practice tip: There is no “gist of the invention” doctrine for best mode.

A JMOL on validity of the dependent claims to cure an inconsistent jury verdict for obviousness of  claims dependent on nonobvious  independent claims could not stand because the district court’s basis for finding nonobviousness, that the asserted prior art was not analogous to the invention, was faulty.  Both the prior art and the invention pertained to cooling computers and electronic components.  The evidence supported the jury’s decision that the dependent claims were obvious, so the Federal Circuit remanded for a new trial on invalidity.  Just six months earlier the Federal Circuit dealt with another such inconsistent jury finding in Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009).

On claim construction issues, the court held that when the patent specification does not provide or suggest a particular definition for a term (here, “case”), interpretation may use a general dictionary definition.  There is an inference that different terms (“drive bay” versus “drive bay  slot”) are used to mean different things; here, intrinsic evidence supported giving the terms different meanings (amendment made during prosecution distinguishing prior art made prior art’s use of “slot” significant).

 Comparer Corp. v. Antec, Inc., 2009-1248, -1249 (Fed. Cir. Mar. 1, 2010)