Patent Law Blog (Patently-O)

Guest Post: Supplemental Examinations and the Client-Practitioner Relationship

Guest Post by Professor Lisa A. Dolak

Pursuant to the America Invents Act, supplemental examination will be available as of September 16, 2012.  Patent owners will be able to ask the U.S. Patent and Trademark Office “to consider, reconsider or correct” information that was not considered (or was inadequately considered) during a prior prosecution.  And the courts will be barred from holding a patent unenforceable based on information that was considered during a supplemental examination (and any resulting USPTO-ordered reexamination).

The introduction of supplemental examination raises many questions, and our understanding of the implications of this new opportunity will develop as the USPTO rule-making unfolds and as patent owners, litigants and the courts gain experience with it.  But some potential implications concern the relationship between practitioners and their clients, and may prompt new thinking about that relationship on the part of each.

Inherent in the design of supplemental examinations is the opportunity for the patent owner to liberate the patent from any taint resulting from misconduct in its procurement.  The supplemental examination proceeding is designed, in fact, to divorce the patent owner’s property right from any actual or alleged past misconduct on the part of the patent owner or its representative.  In particular, as illustrated by the legislation’s “carve out” for USPTO-detected “material fraud”, the enforceability of a patent that has undergone supplemental examination is a separate issue from the obligations of registered practitioners, inventors, and others who participate substantively in patent prosecution to disclose (and refrain from misrepresenting) known material information to the USPTO.   It is this opportunity to detach the enforceability of the patent from any misconduct in its procurement, in particular, that has the potential to impact the client-practitioner relationship.

From the perspective of the patent owner, supplemental examination provides an opportunity to have the USPTO consider, reconsider or correct information relating to patentability, and to remove that information as a potential basis for a viable inequitable conduct challenge in the courts.  In some cases, at least, it can be expected that the patent owner’s primary or even sole consideration, then, will be the “cleansing” of the patent.

However, as noted above, the very legislation that creates this opportunity for patent owners requires the USPTO to refer suspected material fraud to the United States Attorney General.  And, as is expressly preserved by the AIA, the USPTO retains its authority to discipline registered practitioners.  Thus, where misconduct such as an intentional candor violation did occur or might reasonably be suspected to have occurred, supplemental examination could lead to disciplinary or even more serious consequences for practitioners.  Accordingly, the interests of patent owners and the practitioners who assisted in the procurement (or a prior examination) of the patent as they relate to the use of supplemental examination have the potential to diverge – significantly.

For those patent owners who are themselves not potentially subject to criminal or disciplinary investigation or sanction, this possibility should not present a problem.  Patent owners are free, of course, to hire different counsel for supplemental examination than they used to prosecute the patent in the first place.  And, given that deceptive intent is irrelevant to supplemental examination and that any consequences for misconduct unearthed in supplemental examination will effect only the person(s) suspected of being involved in that misconduct, a patent owner (it appears) need not be concerned about whether a supplemental examination request suggests such misconduct.  But practitioners may find such a situation disconcerting, as they may have concerns about being thrown under the proverbial bus, even where the patent owner did not so intend.

For one thing, by definition, a practitioner who is not asked file a supplemental examination request relating to a prior prosecution in which she was involved will not have the opportunity to participate in the development of such a request.  But a practitioner who is engaged to request supplemental examination regarding a patent he prosecuted may have an additional or different concern, namely, whether the circumstances create a conflict between his client’s interest in cleansing the patent and his personal interest in his reputation and good standing.

Much in this regard will depend on what information the USPTO requires or permits (or receives) in supplemental examination requests, and whether supplemental examinations ultimately lead to any conduct-related investigations or charges.  Although we’ll learn something about the former from the upcoming USPTO rule-making, the latter, at least, will take some time to develop.  In the meantime, the potential effects of supplemental examination relating to the relationship between clients and practitioners are among the questions raised by this proceeding.

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Patents, Litigation and Reexaminations

By Jason Rantanen

The number of patents involved in litigation
The number of patent suits filed each year is well known.  But what about the number of patents involved in those cases?  Mark Lemley and others have estimated that about 1-2% of all issued patents have ever been litigated.  To test this estimate, I searched the LEXIS utility patents database using the LIT-REEX field to identify all patents that were flagged as the subject of litigation filed in the year 2009.*  I ended up with 3404 patents, or approximately 2% of the average number of utility patents that the PTO issued annually over the previous decade. 

This result provides further confirmation of the conventional belief that the vast majority of patents are never litigated - especially since I suspect it overstates the percentage of patents involved in litigation, as it assumes that the litigation flag is limited to just infringement suits (as opposed to inventorship disputes, for example) and it does not take into consideration the fact that some patents are the subject of multiple suits filed in different years.  

How old are these patents?
The below chart shows the age of the patents involved in suits filed in 2009.  More than half (55%) of these patents were at least five years old as of the litigation filing date; 24% were over ten years old. 

What about reexamination requests?
The above chart also shows the number of patents involved in suits filed in 2009 that have ever been the subject of a reexamination request.  Of the 3404 total patents, LEXIS reports that reexams were requested at some point for 578 (17%).  Many of these requests were filed in 2009 or later (likely as part of a litigation strategy): 398, or 11% of the total number of patents involved in suits filed in 2009 were the subject of a reexam request in 2009, 2010, or 2011.

*I used 2009 because the 2010 and 2011 results were affected by the numerous false marking suits filed in those years.  

CAFC & TTAB: No (Excess) Leeway for Pro Se

Benedict v. Super Bakery (Fed. Cir. 2011)

by Dennis Crouch

Mr. Benedict from British Columbia holds the U.S. trademark registration for the mark G THE GOODYMAN – U.S. Trademark Registration No. 2,966,255, granted on July 12, 2005.

Super Bakery holds U.S. Trademark Registration No. 2,930,398, granted on March 8, 2005 for the word mark GOODY MAN.  Both marks are registered in International Class 30 with Benedict specifying, inter alia, “cookies, cakes, tarts, rice cakes, strudels, and donuts” and Super Bakery specifying “bakery products, namely cupcakes.”

In 2007, Super Baker filed a petition with the TTAB for cancellation of Benedict’s mark. During discovery, Super Bakery requested a number of documents and Benedict (acting pro se) failed to either object or provide the documents. Super Baker then filed a motion to compel discovery that went unopposed, followed by a motion for default judgment.  Based upon Benedict's failure to comply, the TTAB awarded Super Bakery a default judgment and cancelled Benedict's mark. 

On appeal, the Federal Circuit affirmed. Writing for the unanimous court, typically pro-applicant Judge Newman agreed that "The remedy of default judgment was within the Board’s discretion in view of Benedict's repeated failures to comply with established and reasonable procedures orders.” 

Although the Board did give some leeway to Mr. Benedict as a pro se applicant, Judge Newman agreed that the rules can only bend so far.  "The possession of a trademark registration places a routine obligation on the possessor [even a pro se trademark owner] to participate in reasonable procedures concerning rights or interests affected by that registration."  Here, default judgment and cancellation was appropriate based upon Benedict's "repeated failures to comply with established and reasonable procedures orders."

Notes: 

• Read the 2010 Federal Circuit decision in this case.

In Memory: Gideon F. "Frank" Rothwell, IV

A longtime leader of the patent bar, Gideon F. "Frank" Rothwell, IV, passed away on Christmas day near his home in Naples, FL. Frank was a graduate of the University of Missouri (1949) as well as GWU Law and is from a small town near Columbia, Missouri. One year out of law school, he co-founded what is now the Sughrue Mion firm. In 1981, he founded the Rothwell Figg. Frank was long a supporter of Patently-O, and we had a great conversation about Mizzou during a recent IPO meeting. His namesake (GFR I) was also a Mizzou graduate and a member of Congress.

Hal Wegner reports that GWU will host a memorial ceremony at the Law School in the Faculty Conference Center. A reception will follow.

Patently-O Bits & Bytes by Lawrence Higgins

USPTO news

• On December 20^th the USPTO released its updated website. The new website seems to be more user friendly and the design is more attractive than the previous website design. [Link]
• The USPTO in cooperation with the Center of Excellence for Collaborative Innovation (COECI) launched the USPTO Innovation Challenge, a $50,000 prize to develop new algorithms to aid in patent examination. [Link]

Chisum Patent Academy

• The Chisum Patent Academy will hold its next Intensive Patent Law Training Seminar in New York City on Feb. 22-24, 2012. Topics to be addressed include the America Invents Act of 2011, recent nonobviousness decisions, inequitable conduct post-Therasense, and the continuing schism in the Federal Circuit over patent claim construction. The Chisum Patent Academy offers what CLE providers and patent bar review courses simply can't: premium-quality patent law education in a unique seminar-style setting. Co-taught by leading patent law scholars Donald Chisum and Janice Mueller, the intensive three-day seminars are limited to ten (10) participants and conducted in roundtable, interactive style. [Link]

Student Writing Competition

• Georgia State University College of Law will hold its first annual Intellectual Property Student Writing Competition in 2012. The GSU Intellectual Property Writing Competition seeks papers addressing legal issues and challenges in the intellectual property field. Winners will have the opportunity to have their paper published in the conference materials for the 2012 Corporate IP Institute (CIPI) and also win a cash prize. [Link]

Evil Twin Debate

• On November 18, the University of Richmond School of Law hosted the Fifth Annual Evil Twin Debate, featuring Professor Daniel Crane of University of Michigan Law School and Professor Michael Carrier of Rutgers University School of Law at Camden. The video of the event has been posted on YouTube and is very entertaining. [Link]

Patent Jobs:

• Zagorin O'Brien Graham is seeking patent attorneys with 2+ years of experience and a degree in electrical engineering to work in their Austin, Texas office. [Link]
• Pioner is searching for IP attorneys with 5-7 years (or more) prior experience in patent prosecution and a background in life sciences to work at their Iowa location. [Link]
• Bristol-Myers Squibb is seeking an IP Counsel with 5+ years of patent attorney experience and a background in molecular biology or biochemistry to work at their New Jersey location. [Link]
• Guntin Meles & Gust is looking for patent attorneys with2+ years of patent prep and prosecution experience and a degree in EE or CE to work at their Chicago office (remote locations may be considered). [Link]
• Steinfl & Bruno is seeking a patent agent with 2-3 years of experience and a degree in EE or related fields to work in their Pasadena, California office. [Link]
• Klarquist Sparkman is searching for an IP litigation associates with 1-2 years of experience in IP to work at their Portland office. [Link]
• Klarquist Sparkman is looking for a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work at their Portland office. [Link]
• Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in EE to work at their McLean, Virginia office. [Link]
• Roberts Mlotkowski Safran & Cole is searching for a patent attorney with 2-4 years of experience and a degree in chemical engineering to work at their McLean, Virginia office. [Link]
• Clements Bernard is seeking a patent attorney/agent with a degree in electrical/computer engineering to work at their Charlotte office. [Link]
• Wells St. John is looking for a patent attorney with 4+ years of experience in all aspects of IP to work at their Spokane office. [Link]
• An IP firm in Northern Virginia is seeking a patent attorney/agent with at least 3 years of experience and a background in semiconductor inventions (telecommuting option). [Link]

Upcoming Events:

• The American Bar Association Section of Intellectual Property Law, Young Lawyers Division, ABA-IPL Young Lawyers Action Group and the ABA Center for Continuing Legal Education will sponsor a webinar on January 20 at 1 p.m. Eastern time. The webinar, Prosecution Strategies: Tackling USPTO Obviousness Rejections will explore how the KSR standards have been applied in various technology areas and provide guidance for effective avenues of argument based on the technology area. Speakers include: Janet Hendrickson, Gregory Hillyer, Michelle O'Brien, and Zachary Stern. [Link]
• The American Conference Institute (ACI) The Comprehensive Guide to Patent Reform For Life Science Companies, conference is scheduled for January 31- February 1 in New York. (Patently-O readers register with PO 200 for a discount). [Link]
• The 7^th Annual Conference on EU Pharma Law & Regulation will be held on February 22-23 on London. The conference will bring together eminent in-house counsel from the world's largest pharma and biotech companies, top legal practitioners and regulatory experts in an outstanding speaker panel. (Patently-O readers register with PO 10 for a discount). [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Injunctive Relief and the Public Interest at the ITC

by Dennis Crouch

The U.S. International Trade Commission is a branch of the U.S. government designed to protect and serve U.S. interests.  The ITC handles a variety of international trade issues, including passing judgment on whether importation of accused products constitutes actionable patent infringement. These Section 337 disputes have become more important as more expensive and high-technology products are being imported rather than being manufactured in the US and because of legal changes that have made injunctive relief relatively more likely in an ITC proceeding as compared with federal court litigation.

Although both the patentee and accused infringers have standing to argue their respective cases, ITC proceedings are administrative in nature with a focus on whether a domestic industry deserves protection.  Thus, rather than being captioned Apple v. HTC, the recent dispute between the two parties has the title: In the Matter of CERTAIN PERSONAL DATA AND MOBILE COMMUNICATIONS DEVICES AND RELATED SOFTWARE, 337-TA-710.

In its decision on the case, the Commission concluded that HTC’s Android phones violated Apple’s Patent No. 5,946,647 (Claims 1 and 8) and that the HTC phones do not infringe the asserted claims of Apple’s Patent Nos. 5,481,721, 6,275,983, or 6,343,263.  Commentators have noted that HTC should have little trouble designing around the the ‘647 patent. This is especially true because the Commission gave HTC four–months to alter its product before injoining further importation. 

In federal court litigation, a court can only award injunctive relief after considering teh four equitable factors outlined in eBay v. MercExchange. The ITC is not bound by eBay, but is required to consider the impact that an injunction (or “exclusion order”) would have on competition and consumers.  Interestingly, the ITC order follows a recent NYTimes editorial, by Professors Mark Lemley and Colleen Chien who argued for delay in exclusion orders in order to serve the public interest.

If the ITC continues to give more weight to the public interest factor, the result is that ITC exclusion orders may begin to parallel the injunction that a court would have ordered under eBay. Although the ITC still does not directly consider the first three eBay factors, it does require a domestic industry being harmed by the alleged importation.  That harm is often the type of harm that would help a patentee prove its case under eBay.

Notes:

• The ITC does not have power to award damages. This could suggest that the ITC decisions automatically satisfy the first-two eBay factors.
• In the Apple v. HTC case, the full decision on the merits that discusses the public interest factors has apparently been held as classified (or at least under seal).  The US President has the statutory right to disapprove of the decision within the next 60 days.
• Claim 1 of the infringed ‘647 patent is the broadest of the infringed claims and is directed to a system of detecting structures in data and then performing some action on the structures. The claim reads as follows: 1. A computer-based system for detecting structures in data and performing actions on detected structures, comprising: an input device for receiving data; an output device for presenting the data; a memory storing information including program routines including an analyzer server for detecting structures in the data, and for linking actions to the detected structures; a user interface enabling the selection of a detected structure and a linked action; and an action processor for performing the selected action linked to the selected structure; and a processing unit coupled to the input device, the output device, and the memory for controlling the execution of the program routines.
• These patents were all filed in the mid-1990’s and no, Steve Jobs is not listed as an inventor of any of them.
  

Patent Stats: Abandoning Provisional Patent Applications

By Dennis Crouch

Provisional patent applications have become the primary initial-filing for US-based patent applicants. In FY2011, more than 150,000 provisional patent applications were filed in the US. In order to take advantage of a provisional application's priority date, the patent applicant must take action within one year to file either a non-provisional patent application or an international patent application (PCT).

A provisional application that is abandoned without being relied upon for priority is kept secret from the USPTO and never published or distributed publicly. Thus, it is somewhat difficult to study these "failed" patent applications.

In a FOIA request, I asked the USPTO for information regarding the reliance on provisional applications for priority. The results are not surprising – a substantial number (around 41%) are abandoned without being relied upon for priority. Thus, from FY2000-FY2010, about 1.2 million provisional patent applications were filed and, of those, about 500,000 were abandoned. The percentage of applications abandoned has grown somewhat in recent years. As the chart shows below, in FY2010 (the last year for which abandonment data is available) about 48% of provisional filings were abandoned without being relied upon as priority documents.

In my Michigan (MTTLR) article, I suggested that provisional applications have increasingly been serving as a more reliable substitute to the one-year pre-filing grace period available under 35 U.S.C. § 102(b). These figures lead to the additional potential conclusion that applicants are filing provisional applications at a very early stage in the patenting process, and the one-year timeline is being aggressively used as a decision-point.

Note: An applicant can "convert" a provisional to a non-provisional application within the one-year deadline. A relatively small number of applicants use this conversion procedure (< .1%) and so, for the purposes of this post, I have simply included the converted cases with totals for those with non-provisional priority claims.

Assignment of US patents

 

Merry Christmas and Happy Holidays

I thought I would send out this holiday greeting before everyone escapes from the office. Let us hope that next year is filled with love, good friends and beneficial inventions. – Dennis Crouch

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Inter Partes Re-exam Requests Continue To Rise, For Now

By Jason Rantanen

Some of the most touted changes of the America Invents Act are its modifications to ex parte and inter partes reexaminations, modifications that are intended to fine tune these post-grant review mechanisms.  Both ex parte and inter partes reexam requests have been on the rise for the past decade, as shown by the following two graphs:

Inter partes reexaminations, in particular, saw a dramatic increase in popularity over the last few years. 

The above data may paint an overly rosy picture of reexams, however.  Especially with respect to inter partes reexams, I am dubious that their rapid growth will continue.  One of the AIA's most significant changes to inter partes reexams (inter partes review starting on September 16, 2012) is to raise the standard for successfully initiating a reexam from "a substantial new question of patentability" to "a reasonable likelihood that the requester would prevail."  This change took effect when the AIA was enacted, and may lead to a decrease in the number of inter partes reexam requests filed - or at least, a slowing down of the rapid growth in this area. 

Inter partes reexam requests may also plateau for another reason.  The PTO reports that 70% of the patents involved in inter partes reexams are known to be in litigation.  If the initiation of re-exams is largely a function of litigation, there is a soft cap on the number of potential reexams that will be initiated.  In addition, AIA limitations on inter partes reexam requests involving patents that are the subject of infringement litigation, although easily avoided with foresight, may have a depressing impact on the number of requests filed.

Source data for reexams: http://www.uspto.gov/patents/stats/Reexamination_Information.jsp

The above graphs are corrected from an earlier version.  The original graphs treated the PTO's fiscal year as running from January to December.  It runs from October of the preceding year to September of the identified year.

Claiming Priority to Provisional Applications

As the following chart demonstrates, provisional patent applications are increasingly relied upon by US patent applicants.  More than 1/3 of recently issued utility patents of US-origin claim priority to at least one provisional application. (Here, I defined US-origin as patents that do not claim priority to any prior foreign or international applications). Of applications that claim provisional priority, most (~80%) claim priority to only one provisional application.  

I have written previously that provisional applications are serving their intended role of adding 1-year delay to the prosecution process. By design, the US 20-year patent term does not begin until the filing of a subsequent non-provisional application. Thus, a provisional application has the dual benefit of (1) establishing an early priority date for patentability while (2) shifting the patent term one-year later.

For the cumulative frequency chart below, I created a dataset of about 165,000 patents that have issued since January 2005 and that claim priority to at least one provisional patent application. For each patent, I identified the number of days between the filing of the earliest provisional application and the subsequent non-provisional application. According to the Patent Statute, a non-provisional application must be filed by the 12-month deadline or else be deemed abandoned. About 40% of the non-provisional applications were filed within one day of the 12-month deadline. About 70% were filed within two-weeks of that deadline.

Guest Post: Where do Processes of Nature End and Processes of Human Invention Begin?

The following excerpt comes from Professor Robin Feldman's forthcoming Harvard University Press book Rethinking Patent Law which will be released in 2012. The excerpt is reproduced with permission from Harvard and Professor Feldman.

Looking from the perspective of preemption can be helpful in developing an approach to many of the questions generated by the emerging field of personalized medicine. Personalized medicine is an area of applied research devoted to developing tests that operate on biological and clinical data from a patient (e.g., protein levels, genetic mutations, medical history) to provide diagnoses, prognoses, and treatment regimens specific to the patient. Cases arising in this field include LabCorp, which concerned correlating elevated homocysteine levels with certain deficiencies, and Prometheus, which concerned determining metabolite levels after administering a particular class of drugs for gastrointestinal disorders and adjusting the dosage of the drug based on the metabolite levels.

As discussed earlier, the Federal Circuit's decision in Prometheus seemed to suggest that most life science inventions would satisfy the requirements of patentable subject matter, while the PTO's application of Prometheus could lead to the rejection of numerous inventions in this arena. Neither extreme is necessary if one focuses on preemption of laws of nature and natural phenomena as the primary concern.

For example, LabCorp was a relatively simple application of personalized medicine. It involved one biomarker and a reasonably straightforward correlation for treatment. In contrast, most personalized-medicine diagnostics are developed using whole genome expression or sequencing arrays to identify hundreds or even thousands of biomarkers that can be used to diagnose a specific disease state. The machine learning algorithms used to identify these markers do not operate on statistical concepts as simple as linear correlation, which for some of us is complicated enough. Machine learning algorithms employ statistical models to identify different combinations or "patterns" of markers that correlate with a specific disease state. Usually these markers are selected and statistically modeled to compensate for human genetic and environmental variation.

Thus, most personalized-medicine programs are tremendously complex compared even to logistic regression and other simple forms of statistical analysis. They are not simply a reflection of a natural phenomenon; they are an interpretive model of nature. Nor are they analogous to or preemptive of human thought. It would be quite improbable for a physician to be able to sit down with a pen and paper and work out a diagnostic by applying a machine learning algorithm or logistic regression to hundreds of biomarker levels.ⁱ

Consider the first person who discovered that human chorionic gonadotropin (hCG) levels indicate pregnancy when they are elevated above a certain level, and assume that the inventor also created a home pregnancy test for measuring the hCG. One could think of this as a simplistic personalized diagnostic device in which a particular nongenetic marker is measured to identify a state of health. The inventor could certainly patent the kit, which would consist of the physical device with its particular components. The inventor should not, however, be allowed to patent the process of testing human urine for an elevated level of hCG and correlating that level with the state of pregnancy. The core of the invention, the fact that hCG above a particular level confirms pregnancy, is a simple reflection of nature rather than an interpretive model. To understand the difference, compare the process of measuring one marker by looking for a simple level to the average personalized invention. The modern personalized invention may utilize hundreds of biomarkers analyzed by means of statistical patterns. Even if the complex process involved in identifying the relevant biomarkers yields a limited number of biomarkers to consider for a relevant patient, that information does not relate directly to anything. For example, with a personalized medicine invention involving only a few biomarkers, each of those markers generally has confidence intervals assigned to indicate the likelihood that the presence or absence of a factor or the particular level of that marker will translate into a particular diagnosis or successful treatment. Once biomarkers are collected from a relevant patient, they must be processed by statistical modeling to determine how the various factors and confidence levels for this particular patient should be interpreted. The complexity and variability of individual humans ensures that a model like this can never be a simple reflection of nature. Rather, it is no more than an interpretation of nature, albeit one that is extremely important in the treatment of a specific disease.

In contrast, the inventor of the method of measuring hCG is looking at only one marker, and it is a marker that is elevated in the same range for pregnant women in general. Thus, it requires no complex modeling and is a direct reflection of a phenomenon of nature. As a result, it would not be patentable subject matter on the grounds that the core of the invention is no more than the discovery of a natural phenomenon.

The hCG invention should also fail on the grounds that performing the test is no more than a mental step. The method does not require complex computer analysis to interpret the data; it requires observing a particular level of a substance and reaching a conclusion from that level. Preventing human beings from looking at information and concluding something threatens to preempt simple thought.

Personalized medicine, with its marriage of biology and computer technology, provides a wonderful opportunity to understand and tease out some of the threads of patentable subject matter. These inventions demonstrate how early misconceptions about the nature of computer programs and the nature of mathematics are causing problems in modern case law.ⁱⁱ

Part of the difficulty can be traced to confusion between the content of something that is being expressed and the language in which it is expressed. For example, we know that laws of nature are not patentable. Some of these laws are familiar to us in the formulaic language in which we normally see them expressed. Most people, for example, would recognize one of Einstein's laws of physics expressed as E = MC2. One could express that same law in prose, however, rather than formulaic language by explaining the way in which matter and energy are interchangeable.

The choice of language is irrelevant.ⁱⁱⁱ We disallow patenting of E = MC² not because it is expressed in mathematical form but because it represents one of the building blocks of scientific exploration and endeavor. Patenting that law would preempt scientific exploration by occupying a basic concept.

In addition to laws of physics, other things can be expressed in formulaic language. Expressing something in formulaic language, however, does not mean that what is being expressed is a law of nature. Thus, the fact that computer programs are expressed in a formulaic language that looks somewhat like math to the layperson does not mean that the concepts underlying a particular program are analogous to math, let alone analogous to a law of nature. Two things expressed in the same language or the type of same language are not necessarily analogous. Comic books and the Constitution are both expressed in the English Language, but they are hardly analogous. Our focus should remain on the content of what is being expressed and on the preemptive effect that might result from patenting that type of content.

Some unfortunate language in the Supreme Court's Diehr opinion, which flows from this misperception, makes it more difficult to properly separate software claims that should be patentable from ones that should not. In searching for logic to explain why the rubber-molding invention at issue was patentable while other apparently similar inventions had failed, the Court made the following comment: "A mathematical formula as such is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment."^iv

Other courts have jumped on the language to declare that so-called field of use restrictions cannot save software patents.^v Even the recent Supreme Court opinion in Bilski wandered into the same territory when referencing its earlier decision in Flook:

Flook established that limiting an abstract idea to one field of use . . . did not make the concept patentable. That is exactly what the remaining claims in petitioners' application do. These claims attempt to patent the use of the abstract idea of hedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signaling dangers in operating a catalytic converter.^vi

It is true, as a general matter, that if one were to claim a law of nature, the claim would not be rendered patentable by limiting use of that law of nature to a particular field. Thus, for example, an inventor could not save a claim to all uses of E = MC² by limiting the claim to "all uses of E = MC² in the construction field."

Sliding the analogy over to software, however, involves logical errors. The logic that appears to have been used is the following. Computer programs are mathematical formulas, and mathematical formulas are laws of nature. We know that laws of nature cannot be rendered patentable by limiting their application to a particular field of use. Computer programs, therefore, cannot be rendered patentable by limiting their application to a particular field of use.

This sequence contains a number of logical errors. Computer programs may be expressed in a language that looks like math, and some do involve calculations, but they are not necessarily analogous to mathematical formulas. Most important, they are not analogous to natural laws just because both are expressed in formulaic languages. One must look to the content of the computer program and its potentially preemptive effect to determine patentability.

As described earlier, the term "algorithm" in computer science means a series of steps performed on input data by a computer. This process may or may not raise preemption concerns. Some computer "algorithms" are based on properties inherent in types of input and output data. Such broad, generic algorithms, which can be used on a variety of types of input data, may raise threats of preemption. In other words, if an inventor asks for a patent on a software program that works with whole sets of numbers or entire types of data, such a patent would not be patentable subject matter. Particularly in light of the bargaining potential that would come with such a grant, the patent would risk tying up entire types of data rather than constituting something applied.

This does not mean that all software is unpatentable. Claims to programs that are applied to a specific type of data in the pursuit of particular types of outputs do not present the same level of preemption threat. For example, a personalized medicine algorithm (i.e., series of steps) that employs a specific type of statistical model using a fixed set of markers to produce a very specific diagnosis would not threaten to preempt other methods of performing the same diagnosis that use different markers or novel types of statistical models. Such an invention should be patentable.

Computer programs may be many things, including methods of creating useful models of the world around us, methods of providing interpretations of information, and methods of sorting information. When methods of creating a particular type of model are described at a very general level, they may threaten to preempt the broad activity of exploration. However, when claimed at the level of a specific method of sorting a particular type of information for a particular pursuit, they should constitute an applied invention. Such specificity is the hallmark of what separates unpatentable abstractions from applications of those abstractions in the useful arts in a way that is worthy of patent protection.

* * * * *

ⁱ One scholar has suggested that even LabCorp could have survived as patentable subject matter if the claims drafter had chosen a narrower description. See Patricia Dyck, "Post-Bilski Personalized Medicine: At Home on the Range" (forthcoming) (manuscript on file with author) (presenting an empirical survey of the most frequently claimed biomarkers in personalized medicine and discussing problems in allowing claims for sets of biomarkers that are small and not limited to the diagnosis of a specific disease state or condition).

ⁱⁱ I have discussed some of the misconceptions described here in the context of patenting genes. See Feldman, "Whose Body Is It Anyway?" 1400–1402.

ⁱⁱⁱ One could easily argue that all math is invented. It is a human-made method of imposing order and structure on the natural world. For an interesting and accessible discussion of Wittgenstein's view that all mathematics is a human invention and various responses to that argument, see Ludwig Wittgenstein, Wittgenstein's Philosophy of Mathematics §3.1, http://plato.stanford.edu/entries/wittgenstein-mathematics.

^iv Diamond v. Diehr, p. 191 (citation omitted).

^v See, e.g., In re Bilski, p. 957 (noting that mere field-of-use limitations are generally insufficient to render an otherwise ineligible process claim patent eligible).

^vi Bilski v. Kappos, p. 3231.

Design Patent Pendency

The prosecution timeline for design patents continues to be relatively fast.  For both 2010 and 2011, the majority (54%) of design patents issued within one year of the application filing date. The most common delay in issuance is due to some error in the drawings leading to a 31 U.S.C. 112 issue. Very few design patent applications are ever rejected on prior art grounds. Apple's design patents have been at the center of its lawsuit against Samsung. As I wrote in an article a few years ago, design patents are really being used as an overlay for trade dress protection. 

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Guest Post on Myriad by Prof. Megan La Belle

Guest Post by Megan M. La Belle, Assistant Professor at Catholic University of America, Columbus School of Law.

Last Wednesday was an eventful day for patent cases at the Supreme Court.  In addition to oral arguments in Mayo v. Prometheus, the plaintiffs in Ass’n for Molecular Pathology v. USPTO (Myriad Genetics) – another high-profile case concerning patentable subject matter – filed their petition for a writ of certiorari.  The petition presents two questions.  Predictably, the first question addresses the limits of patentable subject matter and asks the Court to decide whether human genes are patentable.  The second and less obvious question focuses on plaintiffs’ standing to sue.  Specifically, the petition asks: “Did the court of appeals err in adopting a new and inflexible rule, contrary to normal standing rules and this Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007)….?”  Some might be surprised that plaintiffs are challenging standing, since the Federal Circuit held the Myriad case justiciable and decided it on the merits.  Yet, as I argue in Standing to Sue in the Myriad Genetics Case, 2 Cal. L. Rev. Circuit 68 (2011), the Federal Circuit’s decision in Myriad raises compelling questions about standing in patent declaratory judgment actions that warrant the Court’s attention. 

In MedImmune, the Supreme Court held that there is standing to bring a patent declaratory judgment action if “the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”  In announcing this all the circumstances standard, the Court criticized the Federal Circuit’s longstanding bright line test for standing, which required plaintiffs to show that: (1) the alleged infringer had a reasonable apprehension of suit at the time it filed the action; and (2) the alleged infringer is conducting infringing activity or has made meaningful preparations toward conducting infringing activity.

Initially, the Federal Circuit responded to MedImmune by abandoning its bright line test and announcing that it would use the all the circumstances standard instead.  More recently, however, the Federal Circuit has backpedaled.  In Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329 (Fed. Cir. 2008), the Federal Circuit held that “proving a reasonable apprehension of suit is one of multiple ways that a declaratory judgment plaintiff can satisfy the more general all-the-circumstances test.”  Similarly, in Cat Tech LLC v. Tubemater, Inc., the court concluded that plaintiffs still must satisfy the second prong of the old test – i.e., the “meaningful preparations” prong – to establish standing.  And finally, with its decision in Myriad, the Federal Circuit has come full circle and is evaluating standing in patent declaratory judgment actions according to a bright line test that is strikingly similar to the one utilized before MedImmune.

In Myriad, twenty plaintiffs filed a declaratory judgment action asking the court to declare certain gene patents invalid.  The trial court held that all twenty plaintiffs had standing.  On appeal, the Federal Circuit affirmed there was standing to sue, but only as to one plaintiff – Dr. Harry Ostrer – and on far narrower grounds.  The Federal Circuit concluded that Dr. Ostrer was the only plaintiff who had suffered an injury-in-fact, a prerequisite for standing in federal court.  In reaching this conclusion, the Federal Circuit claimed to be following MedImmune, yet in reality it had applied a bright line rule:

[T]o establish an injury in fact traceable to the patentee, a declaratory judgment plaintiff must allege both (1) an affirmative act by the patentee related to the enforcement of his patent rights, and (2) meaningful preparation to conduct potentially infringing activity….

Myriad, 653 F.3d at 1344.  The Federal Circuit then found that none of the other plaintiffs had standing, either because they failed to allege “affirmative patent enforcement actions directed at them by Myriad,” or because they had not made “meaningful preparation to conduct potentially infringing activity.”

This return to a formalistic test for standing in patent declaratory judgment actions not only violates the letter and spirit of MedImmune, but it is problematic because it makes it more difficult for plaintiffs to challenge potentially bad patents.  For years, the Supreme Court has adopted flexible legal standards that facilitate lawsuits brought by parties challenging patent validity, in view of the public benefit created when bad patents are eliminated.  More recently, Congress and the President have signaled their intent to encourage patent validity challenges by enacting the America Invents Act, which provides for certain post-grant review proceedings.  Yet, despite these strong messages, the Federal Circuit has heightened the standing requirements and created a procedural bar for many alleged patent infringers.  Although the Supreme Court addressed this standing question just a few terms ago in MedImmune, it seems the Court needs to remind the Federal Circuit of the purpose of declaratory relief and its essentiality to a well-functioning patent system.

Time for Clients to Start Marking?

Guest post by Paul Morgan

Recent patent legislation has removed almost all of the prior dangers of miss-marking products with patent numbers, including fully removing any risk of leaving expired patent numbers on products. (The new 35 U.S.C. § 292 is reproduced below). Yet the significant potential advantages for infringement damages recovery by marking products under 35 U.S.C. § 287, etc., remain. Patent owners who do not mark their products are prevented by §287 from recovering any damages for any of the infringements occurring prior to serving an actual, specific, notice of infringement, or bringing suit. (As a caveat, products that only "use" a patented process need not be marked under §287).

Also, marking can aid assertions of "willful" infringement – resulting in enhanced damages. Likewise, marking has the potential of aiding in establishing "inducing" infringement assertions.

Under the new statute, "virtual" marking can now be used which is easily maintained or changed and does not require product mold or tooling changes.

So, now is the time for client counseling on the reconsideration of patent marking policies by many companies. Especially those companies that had previously marked some of their products but had stopped due to the recent plague of costly mass-marking-trolls-litigation, now ended by the AIA.

Note: Of course deliberately or recklessly marking a product with a patent number that does not apply to any part of that product is still unwise. It can be potentially indirectly prejudicial for patent enforcement, FTC complaints, etc., even if competitors, or the government, cannot prove any actual damages occurred from that kind of deliberate miss-marking.

--------------

35 U.S.C. 292

(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words "patent," "patentee," or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word "patent" or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public - Shall be fined not more than $500 for every such offense. Only the United States may sue for the penalty authorized by this subsection.

(b) A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.

(c) The marking of a product, in a manner described in subsection (a), with matter relating to a patent that covered that product but has expired is not a violation of this section.

Average Patent Application Pendency

In its annual Performance and Accountability Reports, the USPTO publishes a statistic identified as the "Pendency time of average patent application." The reports describe the figure as the "average time (in months) between filing and issuance or abandonment of utility, plant, and reissue applications. This average does not include design patents." I have charted the PTO's reported average pendency below in the first chart. The chart shows that for 2011, the PTO was successful in keeping average pendency under three years.

Unfortunately, the PTO's numbers are somewhat misleading. The main technical problem with the USPTO numbers is that any request for continued examination (RCE) is counted as an abandonment of an application and a refilling of a new application. Thus, an application that remains pending for four years before issuance and that includes an RCE filing will be counted in the PTO calculations as two applications with an average two-year pendency. The PTO reporting also includes other application "reworkings" such as continuation applications and divisional applications that tend to be processed somewhat faster than original non-provisional applications.

The chart below adds two additional pendency calculations: One calculation ignores RCEs in the pendency calculation – looking instead at the time from non-provisional filing to issuance.  Thus, under my calculation, an application that remains pending for four years before issuance and that includes an RCE filing will be counted as one application with a four-year pendency.  The second calculation also ignores RCE filings and additionally limits the data set to only original non-provisional applications (excluding continuations, divisionals, and CIPs). As expected removing the RCE artifact from the data adds considerably to the average pendency. (Note here that my chart is lacking because it does not include statistics for pendency of abandoned applications.)

The final chart shows a pendency histogram for patents issued in October and November of 2011 (again ignoring RCE filings). The median pendency is 3-4 years. 98% issued within nine years of filing.

Mayo v. Prometheus Guest Post: The Hot-Button Issues

By Denise W. DeFranco of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.

The decision in Mayo v. Prometheus is sure to be a close one, perhaps even a 5-4 decision, like many other Supreme Court's decisions concerning patent eligibility under section 101 of the patent statute. The outcome of the case will probably turn on two fundamental issues about which the justices wrestled throughout the oral argument.

1) After recognizing the "hornbook law" that a law of nature is not eligible for patent protection, but that the application of a law of nature is, Justice Breyer inquired as to how much needs to be added to a claim to transform it from an unpatentable law of nature to a patent-eligible application of a law of nature. Justice Breyer and others seemed concerned that Prometheus's patent claim simply recites an "observation" of a law of nature, which may not be enough. In response, Prometheus's counsel argued that Prometheus's claims include limitations beyond the mere observation of the natural phenomenon, namely that a particular drug be administered to a patient and that the level of metabolites in the patient's bloodstream be measured. The Supreme Court's decision may ultimately turn on whether limitations like those are adequate to transform a law of nature into an application of a law of nature.

2) Many of the justices wrestled with the question of whether an analysis under section 101 of the patent statute should involve at least a "quick peek" at the issues of novelty and non-obviousness under section 102 and 103, respectively. Mayo's counsel argued that the Supreme Court took such a quick peek in the Bilski case and that such a quick peek is appropriate to provide some measure of protection to the medical community from overbroad patents. In response to an observation by Justice Kennedy that its "hard to resist the temptation to peek," the Solicitor General stated that "taking up the temptation to import a look into novelty and nonobviousness in the 101 inquiry [would] be very destabilizing." He further added that the Court in Bilski made clear that patent eligibility under section 101 is a threshold test that turns simply on "whether there is a process."

As in the Bilski case, the justices -- across the board -- seemed leery of the patentability of Prometheus's claim. In Bilski, though, both the U.S. Patent & Trademark Office ("PTO") and the U.S. Court of Appeals for the Federal Circuit had already concluded that the claims were patent ineligible under section 101. Here, both the PTO and the Federal Circuit found the claims patent eligible. Perhaps that difference will weigh on the minds of some of the justices as they determine whether their leeriness in fact arises not from issues of eligibility under section 101 but patentability under sections 102 and 103.

Denise W. DeFranco is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.  She has been representing companies in patent infringement litigation in both trial and appellate courts for almost two decades. She can be reached at denise.defranco@finnegan.com or 617.452.1670.

I made this graph by examining the oral argument transcript and counting the number of lines occupied by questions from each judge.  

Where should we put the next two patent offices?

The USPTO is seeking input on where to locate two more offices in addition to the DC Metro office (Alexandria, Virginia) and the planned Detroit Office. The chart below shows the distribution of patent attorneys and agents distributed by state. Does this map help us pinpoint the next two spots?: Fayetteville, Arkansas and Boise, Idaho? In this analysis, folks should consider that the new patent offices are likely to be quite small in comparison to the HQ.

Notes:

• I'm working on a zip code level map and a center-of-gravity calculation.
• I only looked at Reg No.'s greater than 27,000, which includes the most senior partner at my former firm, MBHB.

Chisum on the New Rules of Patent Priority

Don Chisum was already a leader in the patent field when his multi-volume treatise – Chisum on Patents – was first published in 1978. His authoritative explanation of the law has been cited by hundreds of court opinions and thousands of law review articles. Mr. Chisum has recently turned his attention to the Leahy-Smith America Invents Act and penned a new article titled Priority Among Competing Patent Applicants Under the American Invents Act. Although he had hoped to produce a straightforward explanation of the new priority rules, Chisum found a series of ambiguities and gaps in the new law that will be important for patent strategists. In a message to Congress, he concluded the paper as follows:

If the America Invents Act were a term paper submitted by a student in a patent law seminar, an instructor would, undoubtedly, send it back with a note: SOME GOOD IDEAS, SOME MUDDLED AND UNSUPPORTED IDEAS, POOR GRAMMAR: PLEASE REVISE AND CLARIFY.

Download the article here.

Patent Pendency as a Function of Claim Count

This is an updated version of a chart that I made a few years ago -- this time using utility patents issued 1/2009 through 11/2011. To create the chart, I grouped patents according to the number of claims in the issued patent and then calculated the average number of claims for each group. As usual, the 20-count claims is an anomaly.

Summary of Mayo v. Prometheus Oral Argument

Guest Post by Jonas Anderson, Assistant Professor at American University Washington College of Law

Yesterday morning I attended the highly anticipated oral argument in Mayo v. Prometheus at the Supreme Court.  The case raises the question of whether a patent claim that covers correlations between blood tests and patient health is 'patentable' under 35 U.S.C. § 101. 

I assume most PatentlyO readers are familiar with this case, but will provide a very brief background before diving into today's argument.  Prometheus is the owner of a patent that covers a method of analyzing the effectiveness of thiopurine drugs for treating gastrointestinal disorders.  Claim 1 of the relevant patent reads as follows:

    (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 8x10^8 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 8x10^8 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

Prometheus offers a blood test which analyzes metabolite levels in patients.  Mayo sought to offer a competing blood test at a lower price.  Prometheus promptly sued Mayo for infringement.

I have divided my review into 7 topics.  The topics are ranked based on my impression of the importance that the justices appeared to give to each topic.  Although I have tried to transcribe the key statements made by the justices and advocates as accurately as possible, all quotations are approximate.

1.  The preemption question

The justices and the parties focused much of their discussion on the issue of preemption.  One of Mayo's principal arguments in its brief and at oral argument is that Prometheus's patent preempts the use of a law of nature — namely, the relationship between metabolite levels and patient health. 

Justice Kennedy began the preemption questioning by asking whether a system of measurements that continually monitor drug retention would be patentable.  Mayo's counsel responded that it would depend on the breadth of the claims.  "Claim specificity is key."  According to Mayo, if Prometheus's patent had provided competitors room to develop different, more accurate metabolite levels it may have passed the 101 test.  But, in this case Prometheus's patent preempted any reduction in dosage if a patient's metabolite levels were above 400 pmol.  In Mayo's view, "incidental" steps added to a natural phenomenon were insufficient to avoid preemption.  Thus, any patent consisting only of a natural phenomenon and "incidental steps" would be preempted under Mayo's test.

Justice Breyer, the author of the famous LabCorp dissent, focused nearly all of his questions on the issue of differentiating between a patentable application of a law of nature and an unpatentable law of nature.  He pressed both parties to identify a process by which the court could discern the difference.  Mayo's counsel first suggested that a preemption test could be used to ferret out unpatentable laws of nature.  Later, he suggested that Bilski suggests that courts can determine if the non-novel elements of a claim are "incidental."  "You're getting warmer," Justice Breyer quipped.

Justice Scalia interrupted the exchange and scoffed "I'm not comfortable with that.  It depends on how broad it is?  Is up to 700 [pmol]? Is that OK?  550?  830?  How are we supposed to apply that kind of rule?  It just seems to me not a patent rule that we could apply."  It seems fair to say that Scalia was not convinced by either party that a 101 standard based on preemption could be reliably applied by courts.

Despite Scalia's concerns, preemption seemed to carry the day — with both sides.  Justice Breyer continued the preemption line of questioning with Prometheus's counsel.  "What has to be added to a law of nature to make it a patentable process?  If you put too little to the answer to that question, I believe I can take things like e=mc² and make them patentable, and if you put too much in you'll wreck your case."  Prometheus's counsel also advocated a preemption test, but its test would be much more limited than Mayo's.  Whereas Mayo would consider any natural phenomenon with "incidental" transformational steps as preempted subject matter, Prometheus would only find preemption when no applicative steps were added.  Prometheus repeatedly cited to the Morse telegraph case as a classic example of preemption under 101.

Of course, Prometheus's suggested application of the preemption test has an obvious problem: Bilski.  The patented hedging method in Bilski was not a naked claim to an abstract idea; the claim was limited by both industry and analysis techniques.  Prometheus's counsel acknowledged this difficulty, but argued that Bilski's abstract idea was merely coupled with other abstract ideas.

2.  The 'creep' of novelty and obviousness

Many of the Justices, but primarily the Chief Justice, expressed concern about the blurred relationship between novelty, non-obviousness and the 101 inquiry.  Chief Justice Roberts wanted to know what efficiencies would be gained, if any, by relying on Section 101 instead of obviousness or novelty to reject invalid patents.  Mayo made the case that 101 is a much more manageable and predictable doctrine than 102 or 103.  Prometheus countered by reference to the very case before the court — clearly Section 101 had not led to a quick resolution of this long-running case.

The Chief Justice asked Prometheus's counsel whether he was advocating for the elimination of a Section 101 limitation on patentability.  In response, counsel conceded that he was urging that courts rely on other patent doctrines in most cases, but that there would be some instances, such as the Morse case, in which 101 would be the proper vehicle for rejecting or invalidating a patent.

3.  The impact (or lack thereof) of LabCorp

In my view, one of the most surprising statements of the day came about as a result of Mayo's suggestion—in response to a question from Justice Scalia—that Justice Breyer's dissent in LabCorp could guide some of the analysis in this case.  Justice Breyer quickly interrupted and seemed to distance himself from his dissent.  Although he was convinced that the patent claims in the LabCorp case were merely directed to an observation of a law of nature, the dissenting opinion, he said, "lacked an explanation of why [the claims in that case were not] an application of the law of nature."

Throughout the argument, he was clearly wrestling with how much "extra" is needed in order to patent a newly discovered natural law.  If, as many have predicted, Justice Breyer pens part of the Prometheus decision, I expect that he will attempt to give some guidance to this most difficult question.

4.  The innovation question.

A healthy amount of discussion centered around the impact on innovation that a decision in this case will have.  Justice Breyer, who had been extremely skeptical of diagnostic method patents in his dissent in LabCorp, noted that discovering laws of nature can be an incredibly expensive process.  His search for a line between phenomenon and application seemed to center around balancing the incentive to discover new laws of nature with a desire to allow access to those laws to follow-on innovators. 

Mayo repeatedly urged the court to overturn the patent at issue by arguing that Promtheus could limit others from developing new, improved, and cheaper alternatives to their blood test and was therefore preemptive.  Mayo argued that if the claims incorrectly correlated metabolite levels and outcomes, "the public is stuck with the erroneous information."  In response, Prometheus stated that there are ways that follow-on innovators can improve on Prometheus's patent; namely, by acquiring an improvement patent or by challenging Prometheus's patent under Section 101's utility requirement.

Finally, as any good appellate attorney would, Mayo's counsel attempted to limit the perceived impact of a reversal.  When asked by Justice Sotomayor how many patents would be impacted by a ruling favoring Mayo, counsel responded "only a couple."

5.  The scope of Prometheus's patent

The newest Justices, Sotomayor and Kagan, directed nearly all of their questions to the scope of the patent claims at issue.  Although claim construction was no longer at issue, the Justices probed the extent to which Prometheus's patent foreclosed competitors.  Justice Kagan wanted to know what, in Mayo's opinion, Prometheus's patent attorney could have done to make their invention patent-eligible.  Mayo's counsel responded by saying that a claim with a more narrow range of relevant metabolite levels and a specified treatment protocol would satisfy 101.  Justice Kagan followed-up by asking whether "the difference is the scope of the ranges, or the treatment protocol."  "Both," Mayo responded.

Justice Kagan followed up with Prometheus.  When asked why the patent drafter had failed to include a therapeutic step (which Mayo conceded would have made the claim patent-eligible), Prometheus's counsel responded that it was unnecessary.  He pointed to numerous patents that merely claimed a method of gathering information: patents on identifying ore deposits (but not requiring removal); patents on navigating boats in fog (but not requiring redirecting the ship); patent to find leak in a water main (but not requiring repair).

6.  Prior decisions: are they helpful?

Justice Scalia seemed genuinely dismissive of the Court's precedents that have held that laws of nature (or natural phenomenon) are not patentable.  "Tell me why you can't patent nature?" he asked Mayo's counsel early in the proceeding.  "Doesn't any medical patent rely on natural processes?  Even if you invent a new drug, what that new drug does is natural.  Whatís the difference [from this case]?"  When Mayo's counsel responded that the specificity would be the key test for preemption, Justice Kennedy responded "I thought your answer to Justice Scalia would be...that [the claims here cover] the measurement of a result.  That's how I would have answered the question.  But that's obviously not the right way to do it."

In a related vein, Justice Breyer openly questioned whether the holdings in Flook and Diehr can be reconciled.  "If you look at the Court's cases, they seem to say Flook, one thing, and Diehr another thing."

7.  The transformation question

Almost no time was devoted to discussing whether the claims at issue meet the machine or transformation test. In fact, I can't recall hearing the words "Machine or Transformation" escape from the Justices.  Perhaps the Court is going to distance itself from the MOT test — or at least give courts another "clue."

Conclusion

Predicting the outcome of Supreme Court rulings in patent cases is a treacherous hobby.  If anything, the argument today revealed a Court troubled by the fact that both sides have urged an application of Section 101 that centers on preemption, but with little guidance on how to apply such a test.  While I would expect a ruling to have some mention of preemption, none of the justices seemed comfortable with either side's suggested application of such a test, while Justice Scalia was dismissive of such an idea. 

Perhaps most surprising was that the Court's most vocal critic of diagnostic patents, Justice Breyer, appeared to distance himself from LabCorp.  I get the feeling that he is still troubled with the idea of granting patent rights covering natural phenomenon, he is genuinely concerned with the impact of the Court's decision in this case on the medical innovation community. 

Justice Breyer: Giving Patent Law the Finger

In Mayo v. Prometheus, the Supreme Court is again addressing patentable subject matter. During oral arguments, Justice Breyer came-up with a hypothetical invention to help him draw the line on patentable subject matter.

JUSTICE BREYER: Suppose I discover that if … someone takes aspirin … for a headache and, you know, I see an amazing thing: if you look at a person's little finger, and you notice the color [indicates that] you need a little more, unless it's a different color, you need a little less. Now, I've discovered a law of nature and I may have spent millions on that. And I can't patent that law of nature, but I say: I didn't; I said apply it. I said: Look at his little finger.

MR. SHAPIRO: Sure.

JUSTICE BREYER: Okay? Is that a good patent or isn't it?

MR. SHAPIRO: No … Well, because you -- you've added to a law of nature [to] just a simple observation of the man's little finger.

How would you respond to Justice Breyer's idea with respect to 35 U.S.C. §101?

 

Mayo v. Prometheus

The memorable line from the KSR oral arguments was Justice Scalia's criticism of Federal Circuit precedent as “gobbledygook.” 

The Court heard oral arguments today in Mayo v. Prometheus.  The best one-liner from oral arguments comes from Justice Breyer.  As you might expect, Justice Breyer's statement is not as colorful as Justice Scalia's, but it is likely more accurate.

JUSTICE BREYER: If you look at the Court's cases, they seem to say Flook, one thing, and Diehr another thing.

Justice Breyer's statement highlights a central problem of modern patentable subject matter doctrine — that the quartet of leading decisions contradict one another. The court failed to move the ball in its 2010 Bilski decision and instead simply stated that the proper path is to follow these cases.

• We'll be posting a more complete discussion of the oral arguments tomorrow.
• Read the transcript (draft).

Morgan: Ambiguities in Defining Prior Art under the Leahy-Smith America Invents Act

In our newest Patently-O Patent Law Journal article, former Xerox patent counsel Paul Morgan highlights two important ambiguities in the new 35 U.S.C. § 102(a)(1) as defined by the Leahy-Smith America Invents Act. This provision replaces Sections 102(a) and 102(b) and, beginning in March 2013 will serve as the fundamental definition of prior art in the US patent system. Under the new statute, no patent can issue if "the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention." The language "otherwise available to the public" is new to the patent statute. Morgan makes the counterintuitive case that the catchall phrase actually serve the purpose of limiting limit the scope of prior art under the statute. In particular, the language suggests that the other types of art identified in the statute are also "available to the public." If so, this statutory change could be seen to overrule doctrines that bar patent rights based upon secret commercialization by the patentee. See, for example, Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F. 2d 516, 520 (2nd Cir. 1946).

Read the article: Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Review 29.  Download Morgan.2011.AIAAmbiguities

Forthcoming Article: Patentable Subject Matter for Diagnostic Methods after in re Bilski

Review by Dennis Crouch

Professor Eisenberg (Michigan) is one of the leading academics focusing on proprietary rights in biomedical research. She has been writing about biotech patents and other forms of protection since the 1980's. Most recently, Professor Eisenberg provided final version of her forthcoming article titled "Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in re Bilski." The article will soon be published in the Case Western Reserve Journal of Law, Technology & the Internet, but I wanted to highlight the article today because it speaks directly to the pending case of Mayo v. Prometheus. Oral arguments are scheduled in Prometheus for Wednesday, December 7, 2011.

Prior to its 2010 decision in Bilski v. Kappos, the Supreme Court's leading precedent on patentable subject matter was the quartet of cases issued before the formation of the Court of Appeals for the Federal Circuit. See, Benson, Flook, Diehr, and Chakrabarty. In deciding the patentable subject matter question raised in Bilski, the Supreme Court simply pointed back to its old precedent as controlling. Eisenberg writes: "The Supreme Court reaffirmed the authority of these decisions without explanation in Bilski v. Kappos, thereby demanding formal adherence to stare decisis without following the discipline of common law reasoning."

In her article, Professor Eisenberg asks the Supreme Court to use this next opportunity in Mayo v. Prometheus to "not only to clarify the boundaries of patentable subject matter, but to explain what the doctrine of patentable subject matter is all about." She points to three possible uses of the doctrine: (1) PSM could serve as a threshold inquiry that economizes administrative costs by excluding some kinds of subject matter from the front door of the patent system without the need for a full examination. However, Eisenberg recognized that "patentable subject matter doctrine does not and cannot serve that role in its current form." (2) PSM could be useful in "limiting heterogeneity" of the system by narrowing the technological diversity of patentable inventions and excluding technologies for which "less protection is optimal." (3) PSM could serve as a backstop for when other patentability doctrines fail to protect the public domain, properly limit claim scope, or ensure that building blocks of innovation are available for future innovators.

Notes:

• Read the article: http://www.patentlyo.com/files/eisenberg.wisdomordeadhand.patentlyo.pdf.
• Cite: Rebecca Eisenberg, Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in re Bilski, 3 CASE W. RES. J.L. TECH. & INTERNET 1 (2012)

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IP Hall of Fame Nominations

by Dennis Crouch In 2006, the publishers of the UK based Intellectual Asset Magazine (iam) founded the non-profit IP Hall of Fame to honor individuals who have made an outstanding contribution to the development of IP law and practice. The process begins with nominations from the public and then voting by members of the 45 members of the IP Hall of Fame Academy. The Academy includes previous inductees to the Hall of Fame and a handful of additional members. (I am a voting member of the Academy but not the IP Hall of Fame). The focus is global and includes all areas of intellectual property law and practice.

Call for Nominations: The nomination process closes on December 9, 2011. To nominate someone, simply fill in the nomination form and supply a paragraph of between 50 and 100 words to support your nomination. The award ceremony and gala dinner will be held at the Estoril Casino near Lisbon, Portugal during the IP Business Congress in June 2012.

Recent patentable subject matter decisions at the BPAI

By Dennis Crouch

Here are several recent BPAI decisions on patentable subject matter eligibility.

New Rejection in Answer: Examiner's Answer raised new a new Section 101 issue, but applicant failed to respond in the reply brief. BPAI Holding: "We therefore summarily sustain this rejection." Ex Parte Maeng, 2011 WL 6012458 (BPAI November 30, 2011).

Delay in Adjudication: L'OREAL claims a "method for recommending a beauty product" that includes several steps, including applying a beauty product to a person and then seeing how the person looks under various simulated lighting environments. The examiner rejected the claim as unpatentable based upon its failure to satisfy the machine-or-transformation test. On appeal, the BPAI reversed the rejection, holding that "a full analysis as outlined in Bilski v. Kappos … should have resulted in a finding by the Examiner that the claimed subject matter either was or was not an abstract idea, and hence, respectively, that the claimed subject matter was not patent eligible or was patent eligible in this particular instance." This case highlights a problem with the growing backlog at the BPAI. The Examiner's final rejection was mailed in 2009 and she mailed the Examiner's Answer in February 2010, a few months prior to the Supreme Court's decision rejecting the machine-or-transformation test as a determinative test of patentable subject matter eligibility. Ex Parte Hessel, 2011 WL 6012477 (BPAI November 30, 2011)

CyberSource Rejections: Citing the Federal Circuit's recent decision in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), the BPAI has affirmed a Section 101 rejection of an IBM application that claims a "computer-implemented method for partitioning a domain dataset." Despite the "computer implemented preamble, the BPAI held that the claimed process was not patent eligible because it "could be performed by a human writing on a piece of paper." The Board quoted CyberSource for the proposition that "a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101."

IBM had also include claims directed to a "system for partitioning" that included "nominal recitations of conventional hardware in the body of the claim (e.g., 'a memory' and 'a processor')." As instructed by CyberSource, the court considered the "underlying invention for patent-eligibility purposes" rather than particular nominal claim limitations. Here, the BPAI found that the true invention was the process and that the system claims were simply reformulated versions of the method and therefore, that the system claims should be interpreted as process claims.

In analyzing the underlying invention of independent "system" claims 26, 27, and 28 as a process, we again conclude that the scope of the recited functions (steps) covers functions that can be performed in the human mind, or by a human using a pen and paper (e.g., claim 26: "establish an evaluation function" and "partition said domain subset"). Therefore, we conclude that unpatentable mental processes fall within the subject matter of independent claims 26-28.

IBM also include "Beauregard claims" directed to an "article of manufacture" comprising "a computer readable medium." The BPAI likewise found those claims unpatentable under 35 U.S.C. §101 as interpreted by CyberSource. Ex Parte Vilalta, 2011 WL 6012377 (BPAI November 29, 2011). On the flip side of this, the BPAI has also been holding that claim scope must be determined before Section 101 analysis can be complete. See Ex Parte Black, 2011 WL 6012476 (BPAI November 28, 2011).

Software Not Patentable: OPNET Tech's patent application is directed toward a "network monitoring system" that includes a set of "collectors", "analyzers", and "reporters" as well as an "automated engine" configured to control the applications in achieving a target task. In the specification, the applicant wrote that each element of the system could be created in software and the Board concluded that "the invention can exist solely as software." Citing the Federal Circuit's 1994 Warmerdam decision, the Board held that a claim that covers a "purely software embodiment" cannot be patentable subject matter. Ex Parte Cohen, 2011 WL 6012432 (BPAI November 29, 2011). On the flip side, the BPAI held that a "web based system" is patent eligible because such a network based requires "more than software per se, because a web, upon which a web-based system is based, is physical, in addition to software, in that it requires computers and routers and telecommunications equipment to operate." Ex Parte Vogel, 2011 WL 6012447 (BPAI November 21, 2011).

Providing, Receiving, and Manufacturing: Small paper manufacturer Grays Harbor has seemingly spent a small fortune prosecuting its patent application No. 09/849,504. The invention relates to their computerized system for processing paper and was filed back in 2001. One step of rejected method claim 11 was written as follow "receiving a promotions order from a third-party advertiser to place promotional material on an enclosure…" OK, nothing brilliant in this limitation (or another limitation involving "providing instructions") with regard to inventiveness, but the Board's rejection was odd – holding that that the claim's "recitation of the steps of receiving and providing are merely abstract ideas because each step is recited in the future tense of 'to place', 'to create', 'to deliver', and hence is only contemplated, rather than executed." Ex Parte Quigg, 2011 WL 6012448 (BPAI November 22, 2011)

Provisional Patent Application Filing Count

by Dennis Crouch

Provisional patent applications continue to remain popular, and the number of annual filings continue to rise at a moderate pace. In FY2011, more than 150,000 provisional applications were filed. That number is roughly the same as the number of original non-provisional applications filed by US entities during the same period. (Here, “original” means that the filing was not based on a prior non-provisional application or a foreign patent application).  Of recent US patents issued that do not claim international priority, more than 1/3 claim priority to a provisional application filing. (This excludes applications claiming foreign & PCT priority).

Federal Circuit Holds Defendant's State of Incorporation (Delaware) Improper Venue

By Dennis Crouch

In re Link_A_Media Devices Corp. (LAMD) (Fed. Cir. 2011)    

Introduction: The Federal Circuit has again asserted mandamus power to order a patent case to be transferred to a more convenient forum under 28 U.S.C. § 1404(a) – holding that Judge Robinson's denial of transfer out of Delaware was an abused of discretion.

Three facts make the case somewhat interesting and novel. First, the transfer is not out of Texas, but rather from Delaware to the Northern District of California. Second, the defendant, LAMD, who requested the transfer is a Delaware Corporation (although its operations are in California). Finally, the plaintiff, Marvell Int'l., is a foreign entity based in Bermuda although its subsidiary, Marvell Semiconductors, and the named inventors are all based in California.

Legal Background: The due process clauses of the US Constitution have been read to place personal jurisdiction limitations on the power of courts to pass judgment on non-resident parties. In patent cases, personal jurisdiction is rarely an issue because most defendants are national-players that have sufficient minimum contacts in every local jurisdiction.

Even when a court has personal jurisdiction over a case, the laws of civil procedure allow a court to transfer a case to a different jurisdiction "[f]or the convenience of the parties and witnesses, in the interest of justice." 28 U.S.C. § 1404(a). This provision in the law is derived from the common law doctrine of forum non conveniens and there continues to be cross-talk between the two docrines.

Lower Court Decision: In her decision to keep the case in Delaware, Judge Robinson primarily gave weight to three factors: (1) the plaintiff's choice of forum; (2) the defendant's choice of Delaware as its state of incorporation; and (3) the international (rather than regional) nature of the defendant. In addition, the court found no "congestion" problems or identified problems "with discovery or witness availability."

On appeal, the Federal Circuit reversed – holding that the fact that a defendant is incorporated in the forum state is only one factor to be considered in the analysis.

The Federal Circuit particularly pointed to four errors in the district court's analysis.

Choice-of-Forum: First, the court indicated that "far too much weight" was given to the plaintiff's choice of forum. While some weight may be given to that choice, the plaintiff's choice is given less deference when the forum is not the home-forum of the plaintiff. (Note, this result has the potential of being discriminatory to foreign entities under TRIPs because the foreign entities have no "home forum" in the US.)

State of Incorporation: Second, the appellate court held that heavy reliance on state of incorporation is inappropriate.

Neither § 1404 nor Jumara [the leading 3^rd Circuit 1404 case] list a party's state of incorporation as a factor for a venue inquiry. It is certainly not a dispositive fact in the venue transfer analysis, as the district court in this case seemed to believe.

Convenience of Records: Judge Robinson refused to give weight to the convenience of witnesses and location of books and records – holding that those traditional 1404 factors are "outdated" except where truly regional defendants are litigating. The Federal Circuit held that at least some consideration should have been given to these factors.

Public Interest: Finally, the court looked to the interest of the forum jurisdiction (Delaware) in deciding the case and found it had very little interest because the state had no connection to the dispute and no connection to the parties other than the fact that LAMD is incorporated there.

Holding: The District Court is ordered to direct transfer of the case to the United States District Court for the Northern District of California.

• It is important to note here that the Federal Circuit based its mandamus decision on 3^rd Circuit law rather than Federal Circuit law.
• Pilar G. Kraman discussed the district court decision at the Delaware IP Law Blog.

Patently-O and the Top 100 Legal Blogs: Vote Here

The ABA Journal has again chosen Patently-O as one of the top-100 legal blogs along with Gene & Renee Quinn's IP Watchdog and Evan Brown's Internet Cases. This is the fifth year that the ABA Journal has published this list, and Patently-O has made the list each and every year. 

We've made a number of major improvements to Patently-O's coverage over the past year. Most notably, Professor Jason Rantanen is now a co-author, Lawrence Higgins is covering Bits and Bytes, and we have published a number of excellent guest posts both on the blog and in the associated short form Law Journal. Ryan Swarts is managing the Patently-O Job Board and he reports that we've had more job postings the past year than ever before (36 last month) and more readers as well (500,000 page views).

Some Stats: During the past year there have been more than 700,000 unique visitors to the Patently-O website and the vast majority of visits are return-visits. In addition, these days well over 20,000 patent law professionals receive Patently-O through a free daily e-mail service.

We have several projects that we hope to implement over course of the next few months. Most importantly, we'll be rolling-out a complete of the site on a new blogging platform that allows for better control of comments through moderation and comment-ranking as well as easier navigation through the site archives and a high quality mobile version of the site. We're also talking with several potential regular contributors who could provide additional case studies on patent prosecution, litigation, examination and licensing. As always, please let me know if you have concerns or ideas for the site. dcrouch@patentlyo.com.

How can you help: In addition to the top-100 list, the ABA is also holding a popularity contest. I would appreciate your vote in the IP Law Category. To vote, you have to register but you don't have to provide the ABA with actual identifying information. VOTE HERE.

Thanks again!

Dennis

Teva v. Astrazeneca: Invalidating a patent with secret prior art

By Jason Rantanen

Teva Pharmaceutical Industries Ltd. v. Astrazeneca Pharamceuticals LP (Fed. Cir. 2011) Download 11-1091
Panel: Rader, Linn (author), Dyk

"Secret" prior art is prior art that is not available to the public as of the date of invention for the relevant patent.  The most well-known category of secret prior art is that of pre-publication patent applications. 35 U.S.C. 102(e).  Less commonly asserted is prior invention by another under 102(g)(2).  This case illustrates the strength of such prior art under the current novelty framework.

Teva, the owner of Patent No. RE39,502, sued AstraZeneca, asserting that an AstraZeneca drug (CRESTOR) infringed several claims of the '502 patent covering a pharmaceutical formulation stabilized exclusively by an amido-group containing polymeric compound ("AGCP compound").  The problem Teva faced was that AstraZeneca had made the first batches of its drug in the summer of 1999, prior to Teva's asserted invention date of December 1999. Given this prior invention by AstraZeneca, the district court granted summary judgment of anticipation under 102(g)(2). Teva appealed.

Teva's principal argument on appeal was that because AstraZeneca had failed to appreciate the stabilizing role the AGCP compound played in its drug product in 1999, it had not conceived of - and therefore not made - the invention as required by 102(g)(2).  This argument rested on the undisputed fact that although AstraZeneca's drug contained an AGCP compound, it was designed to use a non-AGCP compound as the stabilizer; the AGCP compound was believed to be a disintegrant.

Note: Because both the product that Teva accused of infringing and the 1999 batches were the same formulation, AstraZeneca conceded infringement for purposes of its motion for summary judgment of invalidity.  In other words, it was undisputed that the AGCP compound was acting as the exclusive stabilizer even if AstraZeneca was unaware of that fact in 1999.

Conception requires an appreciation of what is made, not why it works: Rejecting Teva's argument, the panel concluded that AstraZeneca had met the requirement for conception of its prior invention by appreciating "that the compound it created was stable and what the components of the formulation were."  Slip Op. at 12.  AstraZeneca did not need to appreciate which component was responsible for the stabilization or why the invention worked.

The "invention" as distinct from the claims for purposes of 102(g): In arriving at its ultimate conclusion of anticipation, the court drew a distinction between the "invention" and the claims, at least for purposes of 102(g).  Traditionally, an anticipation analysis involves first establishing that something is prior art and then demonstrating that this prior art contains all the elements of the claimed invention either expressly or inherently.  Under a conventional approach to anticipation, then, Teva's claims would be invalid once the prior art status of AstraZeneca's 1999 batches was established since there was no dispute that the batches met all the limitations of Teva's claims.

Section 102(g) operates somewhat differently, however, due to its origins in the interference context. It requires that another inventor have made "the invention" that is at issue.  To address this issue, the court in Teva invoked a broad view of what constitutes the "invention" that allowed it to conclude that AstraZeneca had conceived of the same invention as Teva despite AstraZeneca's failure to think of it in the claimed terms.  Quoting from Dow Chemical Co. v. Astrao-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001), the court applied a concept of the "invention" as distinct from the claims.  "The invention is not the language of the [claim] but the subject matter thereby defined."  Slip Op. at 12, quoting Dow (quoting Silvestri v. Grant, 496 F.2d 593, 597, 599 (CCPA 1974)).  “The language of the count is but one way to define the new form and certainly not a unique definition [. . . and a]ny claim they might have written, based on this or other information specific to [the new form] would still define the same subject matter as the count even though in different terms.” Slip Op. at 9, quoting Silvestri at 601 (CCPA 1974)).  “[T]hat which we call a rose [b]y any other name would smell as sweet.”  Slip Op. at 9, quoting William Shakespeare, Romeo and Juliette act 2, sc. 2.  Based on this view of the "invention" as a metaphysical entity existing independent of any defining claim language, the court held that AstraZeneca had conceived of Teva's invention, despite doing so in different terms than Teva chose to use in the patent claims. 

The Impact of the AIA: With the change to a first-to-file-or-first-to-disclose system, the America Invents Act eliminates 102(g)(2) prior art.  The impact of this change is significant in cases such as this one: under the future 102, AstraZeneca would not have been able to bring this validity challenge.  Nor is it probable that AstraZeneca could seek protection under the framework of prior user rights: even if its batches met the requirement of being a composition of matter used in a commercial process (there's a strong argument they would not), AstraZeneca's manufacture began less than one year before the filing date of Teva's provisional patent application.

Correction: The first sentence of the original version of this post referred to secret art as art that is unavailable to the public as of the patent's priority date.  That is incorrect.  Secret prior art is prior art that is unavailable to the public as of the invention date for the patent (the relevant date for purposes of 102(e), (f), and (g)). 

Addendum: Several of the comments have pointed to the sentence in the court's opinion that says "By late summer 1999, AstraZeneca had disclosed the ingredients and quantities for its rosuvastatin formulation matching those of all commercial drug dosage strengths," and pointed out that this implies that AstraZeneca's formulation was publicly disclosed prior to Teva's invention date.  The court's use of "disclosure," however, appears to just be an unfortunate word choice.  According to AstraZeneca's brief, the only relevant events that took place during that time period were the manufacture of the batches and an internal company presentation on the finalized sales formulation of the tablets.  Any form of public disclosure took place much later, such as through its patents and applications, the first of which was filed in Great Britain on January 26, 2000.