After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe had (or are likely to have) the greatest impact on patent practitioners and applicants. In two prior posts, we counted down stories #20 to #16 and stories #15 to #11, and today we count down stories #6 to #10 as we work our way towards the top five stories of 2015. As with our other lists (2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look. As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know. In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2015" on January 21, 2016 from 10:00 am to 11:15 am (CT). Details regarding the webinar, which will focus on a handful of the most important stories, can be found here.
10. USPTO Electronic Systems Go Dark
On December 22, a major power outage at the U.S. Patent and Trademark Office headquarters in Alexandria, VA significantly damaged the Office's electronic systems and required the shutdown of the Office's online and IT systems. At the end of the day on December 23, the Office declared the three days from December 22 through December 24 to be "Federal holiday[s] within the District of Columbia" under 35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196, and as a result, any action or fee due on those days would be considered as timely if the action was taken, or the fee was paid, on the next succeeding business day on which the USPTO is open. By Christmas Eve, the Office had restored its fax line, and by December 27, the Office had restored access to the EFS-Web and Private Patent Application Information Retrieval (PAIR) system. Six days after the power outage, the Office's electronic systems were once again functional enough that the Office did not have to declare December 28 a Federal holiday. Some issues, however, have persisted even into this week, e.g., filed documents may not appear on PAIR for some time, and a colleague was unable to access the payment system when filing applications on January 5. Interestingly enough, the Office noted in August that it would begin implementing a new system in the summer of 2016 that would eventually replace the EFS-Web, Public PAIR, and Private PAIR.
For information regarding this and other related topics, please see:
• "Breaking News: USPTO Restores EFS-Web and Private PAIR," December 26, 2015
• "USPTO Restores Fax Line," December 24, 2015
• "Major Power Outage Causes Shutdown of USPTO Online and IT Systems -- USPTO to Consider December 22-24 to be 'Federal Holidays'," December 23, 2015
• "USPTO News Briefs," November 30, 2015
• "USPTO News Briefs," August 9, 2015
9. Federal Circuit and USPTO Clarify PTA Rules
The Federal Circuit issued several decisions during the year that will have an impact on future Patent Term Adjustment determinations. In Gilead Sciences, Inc. v. Lee, the Court affirmed a decision by the District Court for the Eastern District of Virginia that the Office had properly calculated the PTA for one of Gilead's patents. In that case, the Office determined that the applicant's submission of an Information Disclosure Statement 57 days after a response to a restriction requirement had been filed, and 27 days before a non-final rejection had been issued, constituted a failure to engage in reasonable efforts to conclude prosecution of the application. In Mohsenzadeh v. Lee, the Court affirmed a decision by the District Court for the Eastern District of Virginia that the Office had properly calculated the PTA for two patents. In that case, the Court determined that two divisional applications were not entitled to the Office's 1,476-day delay in issuing a restriction requirement in the application from which both divisional applications were filed. Finally, in Daiichi Sankyo Co. v. Lee, the Court affirmed a decision by the District Court for the District of Columbia that two of Daiichi's patents, which had issued prior to August 5, 2009, were not entitled to a corrected PTA determination under the Optional Interim Procedure, which the Office adopted following the Federal Circuit's decision in Wyeth v. Kappos (the Office made the Optional Interim Procedure available only for patents that issued between August 5, 2009 and March 1, 2010). The Office also revised the rules of practice last year to implement the Federal Circuit's decision in Novartis AG v. Lee. In Novartis, the Federal Circuit agreed with the USPTO that the filing of an RCE tolls the B Delay clock even if the RCE was filed more than three years after the application was filed.
For information regarding this and other related topics, please see:
• "Daiichi Sankyo Co. v. Lee (Fed. Cir. 2015)," July 20, 2015
• "Mohsenzadeh v. Lee (Fed. Cir. 2015)," July 8, 2015
• "USPTO Issues Final Rule in View of Novartis v. Lee," March 16, 2015
• "Gilead Sciences, Inc. v. Lee (Fed. Cir. 2015)," March 2, 2015
8. Federal Circuit Decides First PTAB Appeal
In February, in In re Cuozzo Speed Technologies, LLC, the Federal Circuit decided the first appeal of the first inter partes review Final Written Decision for the first IPR ever filed. The decision was significant not only because it was the Court's first PTAB appeal, but also because the Court affirmed the Board's use of the Broadest Reasonable Interpretation (BRI) standard for claim construction and agreed with the Office that any aspect of the decision to institute the IPR is not reviewable. In July, the Court denied a petition for rehearing en banc in the case, and in September, in Achates Reference Publishing, Inc. v. Apple Inc., the Court reaffirmed its In re Cuozzo holding that the Court could not review any decision by the PTAB related to the institution of an IPR, including a determination whether the decision was time-barred according to the AIA.
For information regarding this and other related topics, please see:
• "Achates Reference Publishing, Inc. v. Apple Inc. (Fed. Cir. 2015)," October 1, 2015
• "No Rehearing En Banc for In re Cuozzo Speed Technologies -- PTAB Update," July 9, 2015
• "In re Cuozzo Speed Technologies, LLC (Fed. Cir. 2015)," February 4, 2015
7. Supreme Court Decides Teva v. Sandoz
In January, the Supreme Court held in Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. that an "appellate court must apply a 'clear error,' not de novo, standard of review" to the evidentiary underpinnings of a district court's claim construction determination. Unlike some of the Court's recent patent decisions, Teva was not decided by a 9-0 vote, with the majority constituting only seven Justices. The Teva majority had determined that claim construction was ultimately a question of law but one that could depend on "subsidiary" fact-finding by the district court. According to Justice Breyer's majority opinion, Federal Rule of Civil Procedure 52(a)(6) mandates that an appellate court give substantial deference to district court fact finding and to contravene the lower court's factual determinations only if there was "clear error." In addition, the Court majority asserted jurisprudential policy grounds for its decision, including that the district court was in the best position to assess (expert) witness credibility and to become familiar with the technology involved in the invention. Justices Thomas and Alito disagreed, taking the position that while Justice Breyer and his brethren would have applied the law correctly if there were underlying facts to be determined, in the context of claim construction there are no "subsidiary facts" to be determined and that Teva and the Court misapplied the law in arriving at this conclusion. Simply stated, in Justice Thomas's opinion, Rule 52(a)(6) simply did not apply in Teva. In June, the Federal Circuit decided Teva on remand, once again reversing the District Court's holding with regard to claim 1 of U.S. Patent No. 5,800,808, with a split panel deciding that the claim was indefinite notwithstanding the District Court's factual determinations about how one skilled in the art would understand the claim.
For information regarding this and other related topics, please see:
• "Federal Circuit Tackles Claim Construction Review under New Standard," June 25, 2015
• "What's Next? Some Consequences of the Teva v. Sandoz Decision," January 22, 2015
• "Teva v. Sandoz: The Dissent," January 21, 2015
• "Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. (2015)," January 20, 2015
• "Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. – 'Evidentiary Underpinnings' of Claim Construction: Supreme Court Holds Findings of Fact Require Deference," January 20, 2015
6. Supreme Court Decides Commil v. Cisco Systems
In May, the Supreme Court handed down its decision in Commil USA, LLC v. Cisco Systems, Inc., vacating the Federal Circuit's reversal of the District Court's ruling that Cisco's evidence that it had a "good faith belief" that Commil's claims were invalid was inadmissible for rebutting liability for inducing infringement. The Supreme Court held that "[a] defendant's belief regarding patent validity is not a defense to an induced infringement claim." In the process of deciding Commil, the Court chastised the Federal Circuit for misinterpreting both patent law and the Court's decision in Global-Tech Appliances, Inc. v. SEB S.A. (2014).
For information regarding this and other related topics, please see:
• "Commil USA, LLC v. Cisco Systems, Inc. (2015)," May 26, 2015
