In a July 7,  2010 ruling (In re Giacomini), the Court of Appeals for the Federal Circuit affirmed the Board of Patent Appeals and Interference’s rejection of U.S. Patent Application No. 09,725,737 (“the ’737 application”) pursuant to 35 U.S.C. § 102(e) as being anticipated by U.S. Patent No. 7,039,683 (“the ’683 patent”) which was issued to Vinh Tran.  The ’737 application was filed on November 29, 2000 and was directed to a method of efficiently populating a cache with resources.  The ’683 patent was filed on December 29, 2000 as a Non-Provisional Application, but claimed priority to a Provisional Application which was filed on September 25, 2000.  Consequently, the filing date of the Provisional would make the ’683 patent prior art under 35 U.S.C. § 102(e) whereas the filing date of the Non-Provisional would not.

The Board determined, and the Applicants did not dispute, that the ’683 patent taught all of the claimed features of the ’737 application.  Section 102(e) states that a person shall be entitled to a patent unless the invention was described in “(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent” (emphasis added).  Applicants argument was that since a Provisional Patent Application does not itself lead to the issuance of a patent, that its filing date cannot be used in formulating a rejection under 35 U.S.C. § 102(e).  However, the Federal Circuit sided with the Board’s ruling and quoted 35 U.S.C. § 111(b)(8) , the pertinent part of which states that “[t]he provisions of this title relating to applications for patent shall apply to provisional applications for patent.”

The Federal Circuit clarified an important limitation in that the Provisional must have support for the invention disclosed and claimed in the Non-Provisional.  Furthermore, since Applicants did not argue a lack of written description support before the Board, the argument was waived because Applicants failed to timely raise it below.  The Federal Circuit’s ruling was also distinguished over In re Hilmer, which clarified that a U.S. Patent Application claiming priority to a foreign application has a priority date as of the filing date of the foreign application, but is only effective as 102(e) prior art as of its U.S. filing date.  This difference arises from the wording of Section 102(e) wherein the application for patent must be “filed in the United States.” These subtle distinctions should be included among the considerations given precedence when determining whether to file first in the U.S. or abroad.

The U.S. Patent and Trademark Office (USPTO) recently released new interim guidelines to its patent examining corps in view of the U.S. Supreme Court’s decision in Bilski v. Kappos. The interim guidelines, which were issued on July 27, 2010, provide factors to be considered by Patent Examiners in determining whether method claims contain patentable subject matter under 35 U.S.C. § 101. As set forth in the U.S. Supreme Court’s Bilski decision, the “machine or transformation test” is no longer the sole test for patent eligibility, but rather is used as “useful and important clue” as well as an “investigative tool” in determining whether a claimed process is patent-eligible.

According to the guidelines issued by the USPTO, if the claim either expressly or inherently recites a machine or transformation, then this is a factor pointing towards patent-eligibility. If the claim does not recite a machine or transformation, then this is considered a factor weighing against an indication of patentable subject matter. An ultimate determination of patentability under 35 U.S.C. § 101 requires that a number of additional factors be carefully analyzed and weighed to determine whether the claimed process recites an abstract idea. Examples of factors which weigh for and against patent eligibility are provided at the end of the interim guidelines.  Under the proposed guidelines, there may be situations where a claim that satisfies the “machine or transformation test” may, in fact, be patent-ineligible, whereas a claim that does not meet the “machine or transformation test” is still determined to be patent-eligible. There is no single bright-line rule, but rather the claim as a whole and all relevant factors must be considered in determining patent eligibility.

The concept that an abstract idea is not patent-eligible is not new. However, the removal of the “machine or transformation test” as the sole test for determining whether a process is patent-eligible now requires a more detailed analysis of all relevant factors in order to determine whether a process is directed to an abstract idea. The interim guidelines are the USPTO’s attempt to define these factors. The public is invited to comment up to September 27, 2010, such that a final set of guidelines may be issued.

The White House moved to protect what they call an “Identity Ecosystem” through a new cybersecurity initiative. On June 25th, a post on the White House blog called The National Strategy for Trusted Identities in Cyberspace proposed a system developed jointly by the government and private enterprise to simplify the management of online identities. The goal would be to have users’ online reputations vetted by a participating vendor, “vouching” for them across the Internet. For example, if a user is verified through Google or Facebook, she could simply use her login to simplify an Amazon or eBay purchase.

The idea is hardly new. OpenID has been working towards a similar goal for some time, partnering with some of the biggest names on the Internet. Google, Yahoo, Verisign, and WordPress all have incorporated the OpenID interface into their systems, giving users the option to use it along side or in place of their local logins. The Open ID website even has a page welcoming the government, linking to the the draft memo for the government’s program. The primary goals of both systems are being easy to use, cost-efficient, voluntary, and secure. The potential applications for the system include digital transactions, social media conformity, and allowing “anonymous” blogging.

The plan is not without its critics. The Department of Homeland Security set up a website allowing for user-rated commenting on the proposal; the top 5 all present compelling arguments against the system. The DHS comments focus more on the natural risk of centralizing users’ personal information and better informing the public on how to protect their information. However, there has been somewhat less discussion on how a system a system designed to verify one’s identity would preserve anonymity. But, as a few tech blogs have pointed out, it doesn’t. It merely shortens the subpoena’s trip from complainant to records custodian while facially preserving anonymity to the casual reader. But given the public’s indifference towards sharing their identity by using their Facebook accounts to log-in to various sites across the Internet, is it likely to be a concern?

Under 35 U.S.C. 120, an application for patent may benefit from the priority date of an earlier filed application if the following four conditions are met: (1) the invention was properly disclosed in the earlier application; (2) there is at least one inventor in common; (3) the application is copending with the earlier filed application; and (4) there is a specific reference to the earlier application. In Encyclopaedia Brittanica Inc. v. Alpine Electronics of America Inc., the application of conditions (3) and (4) to each individual patent application in a continuation chain played a central role in determining the validity of two issued patents.

Encyclopaedia Brittanica Inc., assignee of U.S. Patent Nos. 7,051,018 and 7,082,437, attempted to assert these patents against Alpine Electronics of America Inc. as well as a plurality of other entities that produce in-car navigation systems. Both patents were filed in 2005 and claimed priority dating back to 1989 through a chain of patents and patent applications. Priority was at issue as a foreign patent application to the same invention was filed and subsequently published in 1991. The original U.S. application was filed in 1989 and a continuation application was filed in the U.S. in 1993. The 1993 application was submitted absent the filing fee, signed declaration, and first page. Furthermore, the 1993 application was filed on the same day the 1989 application issued as a patent.

The Court of Appeals for the Federal Circuit affirmed a grant of summary judgment in favor of the defendants and noted that 35 U.S.C. 120 grants the priority date benefit if the application was “filed before the patenting or abandonment of or termination of proceedings on … an application similarly entitled to the benefit of the filing date of the first application” (emphasis added). The phrase ‘similarly entitled’ was held to mean that each application in a chain of continuation applications must meet the requirements of Section 120.

Since the 1993 application did not contain a proper priority claim to the 1989 application it was determined to be anticipated by the 1991 foreign publication pursuant to 35 U.S.C 102(b). This break in the continuity chain also meant that all subsequent continuation applications, which attempted to claim priority through the 1993 application, were not entitled to the 1989 priority date. Consequently, the asserted patents were held to be invalid. The court left unanswered the question of whether the filing of the 1993 application on the same day the 1989 patent issued satisfied the co-pendency requirement of Section 120.

As genetic testing rapidly develops and becomes more widespread, the already heavily burdened FDA is left clamoring to establish its role in regulating new advancements. Only two days after Pathway Genetic’s May 11th announcement regarding its deal with Walgreens to begin selling direct-to-consumer (DTC) genetic testing kits, the FDA responded by publicly launching an investigation into possible federal regulation. Although agreeing to comply with the FDA by postponing the release of its product, Pathway stood firm in its pronouncement that its testing kits complied fully with all federal and state regulations. The point of contention for this type of testing kit, which is produced and marketed by the same laboratory, focuses on whether or not the product meets the definition of a “device” under Section 201(h)(2) of the Federal Food, Drug, and Cosmetic Act (FFDCA). Specifically, whether the product can be classified as an:

instrument, apparatus, implement, machine, contrivance, implant, in vitro reagent, or other similar or related article, including any component, part, or accessory, which is…intended for use in the diagnosis of disease or other conditions, or in the cure, mitigation, treatment, or prevention of disease, in man or other animals.

On a policy level, the battle lines are drawn between those who claim the results of these genetic tests are used by consumers to make life-altering medical decisions following genetic “diagnoses.” Lack of scientific certainty about whether genetic indicators represent an accurate assessments of a person’s health and the lack of consumer understanding regarding this point worry physicians and lawmakers alike. In response, industry leaders, such as 23andMe, Navigenics, and deCODE Genetics, claim that understanding the body’s genetic makeup is simply a learning tool and does not replace the physician as the ultimate aid in making healthcare decisions.

The FDA released numerous letters to these and other companies on June 11th delineating the status of DTC testing kits as devices. But these actions narrowly affected the industry as a whole until the FDA’s June 16th announcement that it would hold a public meeting to discuss the regulation of all laboratory-developed tests (LDTs) not just those produced by a select few companies. This meeting, to be held July 19-20, will impact the entire LDT industry including hundred of laboratories currently producing DTC tests and the thousands of products already on the market. As a result of this meeting and its effects, the FDA’s laissez faire stance to DTC testing regulation over the past few years may soon come to a screeching halt.

In a June 11th ruling, the U.S. Court of Appeals for the Federal Circuit upheld a lower court’s holding in Advanced Magnetic Closures, Inc. v. Rome Fastener Corp that a patent was unenforceable because of inequitable conduct.  The court found that both the materiality and intent prongs required for inequitable conduct were met when a company owner falsely identified himself as the sole inventor of a patent, while withholding the identity of the true inventor.  In the opinion, Judge Gajarsa reaffirmed that “when named inventors deliberately conceal a true inventor’s involvement, the applicants have committed inequitable conduct and the patent is unenforceable even as to an innocent co-inventor.”

Quoting Frank’s Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd., the court also said “[m]isdeeds of co-inventors, or even a patent attorney, can affect the property rights of an otherwise innocent individual.”  In addition to ruling that the patent was unenforceable, the court affirmed an award of attorney’s fees and interest in the amount of approximately $1.5 million dollars to be paid by the company.

In Advanced Magnetic Closures, Inc. v. Rome Fastener Corp., the true inventor alleged that the company owner did not list him on the patent application because the company owner believed that the true inventor’s consulting agreement with a former employer would have caused the invention to be assigned to a different entity.  It is unambiguous that, under 35 U.S.C. 102(f), a person is entitled to a patent unless “he did not himself invent the subject matter sought to be patented.”  This recent Federal Circuit ruling makes it clear that a proper determination of inventorship is essential to ensuring that a patent is valid and enforceable.  Even if the inclusion of an inventor may have a potentially adverse effect, if that person is, in fact, an inventor, then it is incumbent upon any co-inventors and the prosecuting attorney or agent to ensure that they are listed on the patent application.

The class action against Microsoft over their “Vista Ready” certifications issued during 2006 holiday season recently took another turn.  Keith Leffler, Plaintiff’s economic expert, valued the claims at over eight billion dollars. The case’s premise is that Microsoft stoked demand for PCs that could support their new operating system, causing people to pay a premium for machines that could, in actuality, not even use the majority of the new OS’s features, such as the Aero interface featured prominently in ad campaigns. Keffler’s math was based on an estimate of over 19 million of these bare-minimum PCs shown multiplied by the cost per machine to upgrade the machine to use all of Vista’s features- from $155 for a desktop to almost $600 for notebooks and laptops. Microsoft has already made a counter-filing.

It’s worth noting that the judge on this case is one of the more tech-savvy US District Judges, Marsha Pechman. Most notably she ran the trial of Robert Soloway, the “spam king”, and sentenced him to 47 months in prison.