INTELLECTUAL PROPERTY

SPRING 2008 

Biomedical Patent Mgmt. Corp. v. California Dept. Of Human Services, 505 F.3d 1328 (Fed. Cir. 2007)

State Wavier and State Abrogation of Sovereign Immunity – Patent Rights: The Federal Circuit has tightened the requirements for the finding that a state has waived its immunity from patent infringement. The original case from 1999, College Savings Bank v. Florida Prepaid Postsecondary Education Expense Bd., 527 U.S. 666 (1999), said that a state can waive its sovereign immunity by selecting a federal court jurisdiction or stating it will submit to a federal court jurisdiction. The case did not assert that a state could constructively or implicitly waive its defense of sovereign immunity. The Federal Circuit considered whether the federal patent statute 35 U.S.C. § 271, abrogated states sovereign immunity in Chew v. California, 893 F.2d 331 (1990), and it was found that § 271 did not abrogate states sovereign immunity. In this decision, the Federal Circuit determined that a states participation in patent litigation, that is, the enforcement of its own patents, did not waive its Eleventh Amendment immunity. However, where a state has brought suit in federal court to enforce its patent rights or to challenge the patent rights of others, that state consents to litigate all compulsory counterclaims; it can not hide behind sovereign immunity. In short if a defendant has been sued by a state for patent infringement in federal court, then the defendant will not be barred from assenting counterclaims under sovereign immunity for patent enforcement. Even so, the finding of this case was that a patent shield did exist for independent infringing activity of a state institution, like a university. This means state institutions can aggressively use patent litigation while getting a free pass for their own infringing activities. This decision will significantly enable state run universities to increase their own research activities with less fear of claim of infringement.

KSR International Co. v. Teleflex , 127 S.Ct.727 (2007)

U.S. and European Patent Law Harmonized?: The U.S. Supreme Court attempted to harmonize U.S. patent law with European patent law, by modifying the basis for a finding of obviousness to a new standard, requiring the patent applicant to identify the “inventive step” of the invention. Inventive step analysis was not the same as the non-obvious (to one skilled in the art) standard which had long existed in the U.S. The inventive step analysis required (1) the identification of the closest prior art, (2) determining technical problems addressed by the invention and (3) examine if the claimed solution would be obvious for the skilled person in view of the generally available teachings related to the invention. The Court held that patent examiners should not be held to only consider the particular problem the patentee was trying to solve and whether or not combining of reference actually taught the solution of the invention, but whether someone skilled in the art would have considered it “obvious to try” the solution. This “obvious to try” had no foundation in actual teaching, but presented a hypothetical standard to argue against. Examiners now have a new basis for rejection, that of “reasonable to try” the solution offered by the patentee. Accordingly, new patent applications must now list specific advantages from the invention, and lists of problems solved by the invention, rather than the shorter versions which followed the earlier decision of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002).

Patent Appeal Statistics: We are pleased to report that Intellectual Property Today columnist John Rogitz investigated the 2007 statement made by the United States Patent and Trademark Office on its website www.USPTO.gov that “patent examiner decisions were upheld 69% of the time” by the Patent Board of Appeals. Mr. Rogitz noted of the 4,639 appeals filed, 3,272 decisions on the merits were issued. 1,928 of these decisions, about 58%, were affirmances. 469 were affirmed in part and 875 were outright reversals. Given that an affirmance in part is also a reversal in part over all technology centers, there is actually a 42% (not 31%) chance the appeal would result in an issued patent or a remand to the examiner. Mr. Rogitz’s investigation also found that technology centers 2100 and 3600 have the highest chance of reversals, of at least 50%.