专利業務法人原謙三国際专利商标事務所

1. U.S. Copyright Office Implements Online Copyright Application System
The U.S. Copyright Office recently implemented its Electronic Copyright Office ("eCO") Online System for filing online copyright applications. This allows provision of faster application processing times and online status tracking with low cost ($35). For detail please access http://www.copyright.gov/eco/

2. In Kuney v. Bean (BayState v. Bowers) (Fed. Cir. 2008), CAFC leads on the District Court to open the documents which are not open to the public because it found that the lower court had abused its discretion. For detail please access http://www.cafc.uscourts.gov/opinions/08-1204.pdf

3-1. According to Ex parte Fu, Appeal No. 2008-0601, 2008 WL 867826 (BPAI March 31, 2008) to which case KSR is applied and the BPAI found it obvious to substitute one species for its genus where the genus contains a limited number of species. For detail please access http://www.uspto.gov/web/offices/dcom/bpai/prec/fd080601.pdf

3-2. According to Ex parte Wasynczuk (BPAI June 2, 2008), it is found that computer method claims were patentable subject matter because they recite a process that employs one of the other statutory categories, whereas, the computer implemented system claims were not patentable subject matter because they did not recite a particular machine implementation. For detail please access http://www.uspto.gov/web/offices/dcom/bpai/its/fd081496.pdf

3-3. According to Ex parte Ghuman, Appeal No. 2008-1175 (BPAI May 1, 2008), it is found that rejected claims that are not appealed are considered withdrawn and are subject to cancellation by the examiner. For detail please access http://www.uspto.gov/web/offices/dcom/bpai/prec/rm081175.pdf

3-4. According to Ex parte Kim (BPAI May 29, 2008), the indefiniteness rejection is affirmed based on the ground that PTO will not assume a particular meaning of claim terms without some factual or rational basis). For detail please access http://www.uspto.gov/web/offices/dcom/bpai/its/fd073980.pdf

3-5. According to Ex parte Letts, Appeal No. 2007-1392, 2008 WL 275515 (BPAI January 31, 2008), it is found that applicant may not conditionally withdraw a claim on appeal. For detail please access http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf

3-6. According to Ex parte Langemyr (BPAI May 28. 2008), it is found that mathematical manipulations of data do not become eligible subject matter even when they are performed on a computer and are outputted to a display. For detail please access http://www.uspto.gov/web/offices/dcom/bpai/its/fd081495.pdf

4. Triway Pilot Program
AIPLA announced on July 14, 2008 that the USPTO, EPO, and JPO agreed on the triway pilot program in which the worksharing between the three PTOs. The USPTO will launch July 28th for one year period so as to reduce the overlapping of the searching operations among the three PTOs, to improve the examination services, and to complement the exsisting Patent Prosecution Highway Program. Plant patent applications, design patent applications, re-issue patent applications, and provisional applications will be excluded from this program.

Triway Pilot Program will be applied to maximum 100 patent applications which are first filed in US and are then filed in JP and EP. The USPTO intends 10-15 cases for each technical field so that the program is not applied to specific technical fields. Please access in detail http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/triway_pilot_07152008.pdf.

5. Ebay Overcomes Tiffany’s Trademark Challenge In a recent decision with respect to a case filed by Tiffany & Co. four years ago, the U.S. District Court for the Southern District of New York ruled that Ebay Inc. was not liable for the sale of counterfeit Tiffany’s products on its website. The U.S. District Court held that Tiffany’s failed to satisfy its burden on direct and contributory trademark infringement, unfair competition, false advertising, and direct and contributory trademark dilution, which were asserted because eBay facilitated and allowed counterfeit items to be sold on its website. Please access in detail http://www1.nysd.uscourts.gov/cases/show.php?db=special&id=84.

6. The CAFC clarified its position on method claim infringement in Muniauction, Inc. v. Thomson Corp. The patent was directed to electronic methods for conducting 'original issuer auctions of financial instruments, i.e., methods for performing auctions for original-issuer municipal bonds over the Internet.
The CAFC's non-infringement decision was based on its determination that no single party performs every step of the asserted claims, coupled with the further rubric that a method claim can only be infringed if all steps of the claimed method are performed (see BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007)). Some steps of the claimed methods were performed by the bidder, while others were performed by the auctioneer's computer system. Thus, the Federal Circuit opined, the issue was whether the actions of at least the bidder and the auctioneer may be combined to amount to infringement by the auctioneer. Please access in detail http://www.cafc.uscourts.gov/opinions/07-1485.pdf.

7. The USPTO announced the extension of period of time until June 15, 2009 for ”Peer Review Pilot” program, the enlargement of the upper limit of the number of patent applications to be subjected to the ”Peer Review Pilot”, and the enlargement of range covering the patent applications to be subjected to the ”Peer Review Pilot”. At the earlier stage, the ”Peer Review Pilot” is merely applicable to the computer related inventions but is also applicable to the business method patent applications from now on.
The commissioner of the USPTO comments that the USPTO will continue to support the ”Peer Review Pilot” to be a method for speeding up specifying the most relevant prior arts, and that the application of the business method patent applications into the ”Peer Review Pilot” would increase the number of participants and would exactly the USPTO to examine the effects of the program. Please access in detail http://www.uspto.gov/web/offices/com/speeches/08-26.htm.

8. Scope of Foreign Filing Licenses
Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.　Note that Applicants and US patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the USPTO, such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Namely, a foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States. Please access in detail http://www.uspto.gov/web/offices/com/sol/notices/73fr42781.pdf.

9. Patented claims 10 and 11 recite converting of text messages into binary syllabic elements before transmission. After claim construction, the district court granted summary of non-infringement. BENQ, et al. appealed to CAFC.　The appeal focuses on the term “syllabic element.” UT wanted the phrase to be broader than “a character set of one syllable.” In its analysis of claim construction, the CAFC looked to the prosecution history.　According to this, C]laim 10 originally recited matching with an alphabetic character string, while one of its dependent claims specified that this string comprised a word. After the examiner identified a reference during the prosecution that showed matching with a word, claim 10 is required to limit to matching with syllabic element(s) and canceled the dependent claim that required matching with words. The cancellation of this dependent claim indicates that the set of “syllabic elements” does not include all words. In addition, because the amendment was made in order to overcome a prior art reference, the CAFC found it would be nonsensical to give the claim a definition as broad as the original: “If "syllabic elements" included words, then [the prior art] disclosure of matching with words would teach the portion of claim 10 that was amended to distinguish [the prior art].　
Finally, the CAFC chose to hold the prosecution history against the patentee by ignoring potential arguments that lack explicit support in the intrinsic record. Please access in detail http://www.cafc.uscourts.gov/opinions/07-1388.pdf.

10. Judge Cacheris made the injunction permanent, finding that "the [continuation and claims] Rules are substantive in nature and exceed the scope of the USPTO's rulemaking authority under 35 U.S.C. § 2(b)(2)."

In its opening brief, the Patent Office makes two main assertions: first, that the Office acted within its rulemaking authority, and second, that the continuation and claims rules do not violate the relevant statutory provisions. Please access in detail http://www.patentlyo.com/patent/ptotafas.pdf.

11. Claim construction is not required for Preliminary Injunction Decision(Novo Nordisk v. Sanofi-Aventis (Fed. Cir. 2008) (nonprecedential))

Novo Nordisk owns a patent covering an insulin pen. Novo Nordisk sued Sanofi-Aventis by alleging that Sanofi-Aventis infringes Novo’s patent which is generally directed to a disposable insulin delivery "pen" (an medication injection device that requires less force to inject the medication and prevents the user from dialing up a dose that exceeds the amount left in the cartridge).

Claim 1 is recited as follows.
1. A drug delivery device comprising:
a piston rod having at least one threaded portion (4);
a dose dial sleeve (17) threadedly engaged with a portion of the device and having a scale indicative of dose sizes and wherein the dose dial sleeve is rotatable during a dose setting operation so that it can be rotated to a position where a predetermined dose is indicated on the scale;
a drive sleeve (20) for driving the piston rod; and
a clutch (21), which is comprised of one or more components (33, 32), that releasably couples the dose dial sleeve (17) and the drive sleeve (20); and wherein:
(i) during the dose setting operation the dose dial sleeve (17) and the drive sleeve (20) are coupled by the clutch so that they rotate together; and
(ii) during injecting of medication from the device, the dose dial sleeve (17) is decoupled from the drive sleeve (20) and so that it rotates back to an original pre-dose setting position upon completion of the injection but the drive sleeve (20) does not rotate during injecting of medication but instead moves in a longitudinal direction toward an injecting end of the device.

According to the order dated Feb 19, 2008, the district court denied Novo’s request for a preliminary injunction. The district court found that Sanofi-Aventis has a strong argument of non-infringing the patent. Novo Nordisk filed an appeal. The CAFC, however, quickly affirmed the decision of the district court. The CAFC found that the decision of not issuing a preliminary injunction is within the discretion of the district court（Judge Cooper found that there was a "substantial question of non-infringement" based on Sanofi's argument that the claims required a “gearbox” and a “non-rotating piston rod” because that was the "invention." This was the only preliminary injunction factor addressed by the court and its sole stated basis for denying the injunciton. ）.

The CAFC reverses such a decision only when an appellant demonstrates that (i) the factors relied on by the district court were clearly erroneous and (ii) a denial of the preliminary relief sought would amount to an abuse of the court’s discretion upon reversal of an erroneous finding (New Eng. Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878 (Fed. Cir. 1992)).

In this case, the district court did not construct the claims before denying the preliminary injunction request. It did note, however, that questions exist as to whether the patented invention requires direct gearing and a non-rotatable piston. However, corresponding elements are not found in the accused product.

The CAFC found that the lower court had acted properly in denying the preliminary injuction request without deciding the claim construction issue.

At the preliminary injunction stage, however, it is not relevant whether this case presents greater issues of claim construction or validity. Instead, the existence of one or both of these issues is sufficient to justify the district court’s decision to deny a preliminary injunction. The CAFC affirmed the decision of the district court. Please access in detail http://www.cafc.uscourts.gov/opinions/08-1225.pdf.

12. New Applicability Date of Provisions as to Related Applications in Final Rule

The USPTO alerts in the Federal Register Notice that, If the USPTO Prevails in Tafas v. Dudas and the injunction is removed, the requirements of the rule that deal with related applications (Commonly Owned Applications and Patents [37 CFR 1.78(f)(1) and (f)(2)]*) will apply only to applications filed on or after any new effective date that would be published by the USPTO following a lifting of the injunction.
Please access in detail http://www.uspto.gov/web/offices/com/speeches/08-33.htm, and http://www.uspto.gov/web/offices/com/sol/notices/73fr45999.pdf.　

(*)
Under 37 CFR 1.78(f)(1), applicant in a nonprovisional application that has not been allowed (37 CFR 1.311) must identify by application number (i.e., series code and serial number) and patent number (if applicable) each other pending or patented nonprovisional application, in a separate paper, for which the following conditions are met:
(A) The nonprovisional application has a filing date that is the same as or within two months of the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
(B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application; and
(C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application.

Under 37 CFR 1.78(f)(2)(i), a rebuttable presumption shall exist that a nonprovisional application contains at least one claim that is not patentably distinct from at least one of the claims in another pending or patented nonprovisional application if the following conditions are met:
(A) The nonprovisional application has a filing date that is the same as the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
(B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application;
(C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application; and
(D) The nonprovisional application and the other pending or patented nonprovisional application contain substantial overlapping disclosure. Substantial overlapping disclosure exists if the other pending or patented nonprovisional application has written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the nonprovisional application.