Advanced AIA Issues for Patent Claim Construction: Best Practices - - PowerPoint PPT Presentation

Advanced AIA Issues for Patent Claim Construction: Best Practices Absent Clear Court Guidance

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THURSDAY, APRIL 18, 2013

Presenting a live 90-minute webinar with interactive Q&A

Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. Lauren L. Stevens, Of Counsel, Global Patent Group, San Francisco Colin G. Sandercock, Partner, Perkins Coie, Washington, D.C.

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FOR LIVE EVENT ONLY

AIA and Patent Claim Construction

Session 2: Claim Construction Before the Patent Trial and Appeal Board

Colin G. Sandercock*

* These slides have been prepared solely for the Strafford Claim Construction Webinar and solely reflect the personal views of the author and not the views of Perkins Coie LLP, any other lawyer of the firm, or any of its past, present and future clients.

5

The Traditional PTO Standard – MPEP §2111

During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard:

The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” (Citation omitted.) … Because applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. (Citations omitted.)

6

PTO Standard Adopted In 37 CFR Part 42

§ 42.100 Procedure; pendency.

(a) An inter partes review is a trial subject to the procedures set forth in subpart A of this part. (b) A claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.

§ 42.200 Procedure; pendency.

(a) A post-grant review is a trial subject to the procedures set forth in subpart A of this part. (b) A claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.

7

But The PTO’s Standard Has Limits

In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010):

The express language of the claims requires a “material for

finishing the top surface of the floor.” … A material cannot be finishing any surface unless it is the final layer on that surface. Otherwise, the material would not be “finishing” the surface in any meaningful sense of the word. The PTO's proffered construction ignores this reality by allowing the finishing material to fall anywhere above the surface being finished regardless of whether it actually “finishes” the surface. …

8

In re Suitco Surface, Inc.,

The PTO's construction here, though certainly

broad, is unreasonably broad. The broadest- construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent.

• Id. at 1260

9

In re Abbott Diabetes Care Inc.

The parties' primary dispute centers on whether the broadest reasonable construction of “electrochemical sensor” includes external cables and wires connecting the sensor to its control unit. Abbott argues that the Board improperly relied on language in its patents that was directed to the failings of the prior-art devices—failings that the claimed invention attempts to

• vercome. Abbott notes that all descriptions of the claimed

electrochemical sensor in the specification are devoid of any mention of external cables or wires for connecting to the sensor control unit. Abbott further contends that the plain language of the claims … does not support an embodiment with external cables or wires attached to the sensors.

696 F.3d 1142, 1148 (Fed. Cir. 2012)

10

In re Abbott Diabetes Care Inc.

We agree with Abbott that the Board's construction of “electrochemical sensor” is unreasonable and inconsistent with the language of the claims and the specification. As a preliminary matter, the claims themselves suggest connectivity without the inclusion of cables or wires …. That suggestion is only reinforced by the specification… Here, the specification contains only disparaging remarks with respect to the external cables and wires of the prior- art sensors ….

• Id. at 1149 (emphasis added)

11

In re Abbott Diabetes Care Inc.

* * * In fact, the primary purpose of the invention was to provide “a small, compact device that can operate the sensor and provide signals to an analyzer without substantially restricting the movements and activities of the patient.” … Even more to the point, every embodiment disclosed in the specification shows an electrochemical sensor without external cables or wires… Here, Abbott's patents “repeatedly, consistently, and exclusively” depict an electrochemical sensor without external cables or wires while simultaneously disparaging sensors with external cables or wires.

• Id. at 1149-50

12

In re Vaidyanathan

*** However, the PTO's “broadest” interpretation must be

reasonable, and must be in conformity with the invention as described in the specification. The Board's interpretation of claim 9 finds no support in the '203 specification, and is not a reasonable interpretation under the rules of claim construction. The description in the specification consistently indicates that the neural network guides the munition all the way intercept. The '203 specification uses the word “strike” synonymously with “intercept,” foreclosing the divergent meanings the Board seeks to attach to these terms. 2010 WL 2000682 (Fed. Cir. 2010) (unpublished; emphasis added)

13

What This Means For You

• The PTAB will be extremely mindful of its obligation to

construe patent claims in light of the specification

• The PTAB will first examine the language of the involved

claim(s) to determine whether a party’s proposed construction is consistent or implied

• The PTAB then will carefully examine the involved patent to

determine whether a party's claim construction is consistent with the specification

• Claim construction arguments that are fully consistent with the

specification are more likely to prevail

• Patent owners will have to support their proposed

constructions with detailed analyses of the specification

14

Idle Free Systems, Inc. v. Bergstrom, Inc.

IPR2012-00027

Consistent with the statute and the legislative history of the AIA, the Board interprets claim terms by applying the broadest reasonable construction in the context of the specification in which the claims reside. . . We give claim terms their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context

• f the entire patent disclosure... That ordinary and customary

meaning applies unless the inventor as a lexicographer has set forth a special meaning for a term… When an inventor acts as a lexicographer, the definition must be set forth with reasonable clarity, deliberateness, and precision… Decision re Institution of IPR (1/31/13) at p.6 (citations omitted)

15

Idle Free Systems, Inc. v. Bergstrom, Inc.

IPR2012-00027

Based on its proposed interpretation of “engine off,” Patent Owner argues that Iritani does not disclose both “engine on” and “engine off” operation of a vehicle air conditioning system as is required in each of independent claims 1, 13, and 17… According to the Patent Owner, “engine off” cannot be met by an engine that is merely stopped or is not running, but requires that there be no associated electronics in the ignition system that are primed and ready to automatically start the engine upon detection of a certain condition… Decision at p.8

16

Idle Free Systems, Inc. v. Bergstrom, Inc.

IPR2012-00027

The PTAB first examined the language of the claims:

At the outset, we note that the claims require only “engine

• ff” operation of the air-conditioning system, not “vehicle

electronics off” operation of the air conditioning system. It is of no moment that in Iritani’s vehicle, the ignition switch is placed in the “on” position to activate the automatic controller which monitors the battery condition and decides when to start the

• engine. The claims do not require any particular placement of

the vehicle’s ignition switch.

Decision at p.9

17

Idle Free Systems, Inc. v. Bergstrom, Inc.

IPR2012-00027

The PTAB then carefully examined the patent specification:

Patent Owner argues … that its specification makes clear that the air conditioning system provides engine off operation even when the vehicle is completely shut down. First, the argument is misplaced because the specification … makes no distinction between shut down and completely shut down, and engine off and completely off… Secondly, the argument is without merit because satisfaction of the engine off condition by the vehicle’s complete shut down does not undermine, take away from, or otherwise preclude satisfaction of the engine off condition by a stopped or nonrunning engine.

Decision at p.10

18

Idle Free Systems, Inc. v. Bergstrom, Inc.

IPR2012-00027

The PTAB concluded: We have read the entirety of the specification of the ’303 Patent and can find no reasonable instance where regarding “engine off” as being met by the engine’s being in a stopped or not running state would be inconsistent with the

• disclosure. The Patent Owner also has identified no such

disclosure in the ’303 Patent specification. We are unpersuaded by Patent Owner’s argument that for the engine to be off, electronics circuits which automatically start the engine

• n a certain detected condition must also be off.

Decision at p.11(emphasis added)

19

Microsoft Corp. v. Proxyconn, Inc.

IPR2012-00026

• Petition for IPR granted for six claims, but denied for

claims 11 (indep), 12 (dep) and 14 (dep)

• Microsoft moved for rehearing, arguing that the PTAB

failed to apply the broadest reasonable interpretation

• f those claims
• Motion denied (2/25/13)

20

Microsoft Corp. v. Proxyconn, Inc.

IPR2012-00026

Petitioner’s main argument is that in construing the above “receiving” step of claims 11-12 and 14, the Board failed to apply the “broadest reasonable interpretation.” Motion 3-4. Petitioner is incorrect. The broadest reasonable interpretation of a claim must be consistent with the specification. (Citation omitted.) Petitioner’s contention that the alternative signals in the receiving step are “optional” conflicts with Figures 8-10 of the '717 patent and the accompanying written description in the specification ….

Decision at p.4 (emphasis added)

21

Microsoft Corp. v. Proxyconn, Inc.

IPR2012-00026 Alternatively, Petitioner contends that the broadest reasonable interpretation of the claims requires but a “single” response signal resulting from “one run or

• peration of the recited method.” Motion 5-6. We are

not convinced by Petitioner’s argument. Petitioner cites nothing in the specification of the '717 patent that leads to the conclusion that the claims are limited to “one run” of the claimed method.

Decision at p.5 (emphasis added)

22

Microsoft Corp. v. Proxyconn, Inc.

IPR2012-00026

• 3. Claim Differentiation

*** Moreover, “[c]laim language must always be read in view of the written description, … and any presumption created by the doctrine of claim differentiation will be

• vercome by a contrary construction dictated by the written

description or prosecution history.” Id. (citations and internal quotation marks omitted). Petitioner’s claim differentiation argument is inconsistent with the specification and the figures showing three signals and is therefore unavailing. Decision at p.6 (emphasis added)

23

Synthon Pharmaceuticals v. Sanofi-Aventis

Reexamination Control 95/000,282

Since the meaning of claim 1 is in dispute, we begin with claim interpretation. During reexamination, the PTO must give claims their broadest reasonable construction consistent with the

• specification. (Citations omitted) …

* * * the Examiner construed “0.01M hydrochloric acid buffer” to be any suitable buffer. Other than state that the interpretation was based on the “broadest reasonable interpretation consistent with the specification,” and quote from the ‘531 patent, the Examiner did not provide an explanation for this broad construction.

• Id. at pp.6-7

24

Synthon Pharmaceuticals v. Sanofi-Aventis

Reexamination Control 95/000,282

*** It is therefore inconsistent to read “0.01M hydrochloric acid buffer” to encompass phosphate buffer, as construed by the Examiner, because the two different media are expressly distinguished from each other in the ‘531 patent. … the ‘531 patent reveals a clear difference in the dissolution profile when 0.01M hydrochloric acid is compared to a phosphate buffer .... To read “0.01M hydrochloric acid buffer” as simply any suitable buffer would be ignoring the plain language of the claim as it would be interpreted in view of the written description of the ‘531 patent.

• Id. at p.6

25

Synthon Pharmaceuticals v. Sanofi-Aventis

Reexamination Control 95/000,282

Claim 1 is directed to a “pharmaceutical controlled-release dosage form adapted to release zolpidem or a salt thereof over a predetermined time period.” The claim does not recite specific amounts of the zolpidem which are present in the dosage form …. The Examiner found that claim 1 “does not require dosage amounts of zolpidem.” … Patent Owner contends that this interpretation is not proper, and the claimed dosage forms “must be able to induce and maintain sleep while eliminating the drug to a sufficiently low level as to avoid hangover effects.” … Patent Owner contends that because the claim is drawn to a pharmaceutical, it must be interpreted to have the specific activity of the zolpidem described in the ‘531 patent...

• Id. at p.9 (emphasis added)

26

Synthon Pharmaceuticals v. Sanofi-Aventis

Reexamination Control 95/000,282

We agree with Patent Owner that the recitation of “pharmaceutical” imports the only purpose disclosed in the ‘531 patent for the dosage form into the claim. The term “pharmaceutical” means a drug or relating to drugs. Thus, a “pharmaceutical controlled-release dosage form adapted to release zolpidem,” when read in light of the written description

• f the ‘531 patent, would be interpreted to mean a drug with the

specific “drug” activity associated with zolpidem: to induce and maintain sleep – the only purpose for the claimed pharmaceutical described in the ‘531 patent.

• Id. at p.11 (emphasis added; footnote omitted)

27

Ex parte Weatherford/Lamb, Inc.

Reexamination Control 90/010,342

The Examiner states that the dispositive issue is "whether the receptacle 40 of [reference] Langer can reasonably be considered to define part of the casing" even though "the receptacle is to be eventually drilled out." …The Examiner's position is that the receptacle 40 can be reasonably be considered part of the casing, and in support, cites to Langer which states that float shoe and float collar are devices that include check valves and "generally comprise tubular members threaded into and made part of the casing string." … Decision on Appeal (1/4/12) at pp.6-7 (footnote omitted)

28

Ex parte Weatherford/Lamb, Inc.

Reexamination Control 90/010,342

The Examiner cites to a portion of Langer which states that float shoes or float collars with valves are threaded to the casing string to support the assertion that it is not unreasonable to consider the term "casing" as encompassing

• ther devices housed therein, and as such, the receptacle of

Langer can be considered part of the drill string/casing.... However, Langer does not fully support the Examiner's assertion …. Moreover, in construing the claims, the disclosure of the patent under reexamination takes precedence over the disclosure of Langer. Decision on Appeal (1/4/12) at p.9 (emphasis added)

29

What To Expect At The Federal Circuit?

Board constructions have received (at least) two different stds of review:* 1. Deferential review: is the Board’s decision reasonable in light of all of the evidence? See, e.g., In re Suitco Surface, Inc., 603 F.3d at 1259 (citing In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997)

• 2. De novo review; see, In re Baker Hughes, 215 F.3d 1297 (Fed. Cir.

2000) (“[A]lthough the PTO gives claims the broadest reasonable interpretation consistent with the written description ... claim construction by the PTO is a question of law that we review de novo, ... just as we review claim construction by a district court”). *See, Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1376-80 (Fed. Cir. 2012) (Plager, J., additional views)

30

Colin G. Sandercock Perkins Coie LLP 700 Thirteenth Street N.W. Washington, D.C. 20005-2003 PHONE: 202.434.1630 FAX: 202.654.9673 E-MAIL: csandercock@perkinscoie.com

Questions or Comments

Disclaimer

These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law. These materials reflect only the personal views

• f the joint authors and are not individualized legal advice. It is understood

that each case is fact-specific, and that the appropriate solution in any case will

• vary. Therefore, these materials may or may not be relevant to any particular
• situation. Thus, the joint authors, PERKINS COIE LLP, GLOBAL PATENT GROUP,

LLC, and FINNEGAN cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with the joint authors, PERKINS COIE LLP, GLOBAL PATENT GROUP, LLC, or FINNEGAN. While every attempt was made to ensure that these materials are accurate, errors or

• missions may be contained herein, for which any liability is disclaimed.

Advanced AIA Issues for Patent Claim Construction: Best Practices Absent Clear Court Guidance

April 18, 2013 Presented by Lauren L. Stevens, Ph.D.

What Are The Changes Resulting From AIA And The Implications For Claim Construction?

32

• US PTO: “The Office appreciates that the courts may ultimately

address questions concerning the meaning of AIA 35 U.S.C. 102 and 103. However, as a practical matter, the Office needs to provide examination guidelines so that the public is aware of how the Office will apply AIA 35 U.S.C. 102 and 103. The Office considers its interpretation of AIA 35 U.S.C. 102 and 103 as set forth in these examination guidelines to be the correct interpretation of AIA 35 U.S.C. 102 and 103 based upon the statutory language of the AIA and its legislative history.”

33

Courts Will Ultimately Interpret AIA

See Examination Guidelines, 78 Fed.Reg. 11,061 (Feb. 14, 2013)

From Slide 61 of USPTO Presentation Feb. 25, 2013 The America Invents Act: Final Provisions to Become Effective

Lessons Learned – Claim Construction

• Claim constructions should be supported by

citations to the record that justify the proffered construction and analysis provided as to why the claim construction is the broadest reasonable

• construction. 37 C.F.R. 42.104(b)(3)
• An example of a failure to provide a sufficient claim

construction occurs where claim terms are open to interpretation but party merely restates claim construction standard to be used.

34

34

• First, construe claims

– Intrinsic evidence

• Claims
• Specification
• Prosecution

history, if in evidence

– Extrinsic evidence, if necessary

• Then, compare claims as

construed:

• to accused product

(infringement analysis)

• to prior art (invalidity

analysis)

• to written description (§112

support analysis)

WHY DOES PRE-AIA OR AIA MATTER FOR CLAIM CONSTRUCTION?

35

EXAMPLE OF WHY PRE-AIA OR AIA MATTERS: PRIOR ART EFFECT PRE-AIA §102(e)

JP US Publ. JP US Prov. US Publ.

= §102(e) date But §102(e) does not exist under AIA, so the Japan filing date on line 1 may be the effective filing date without a US provisional being filed.

36

EXAMPLE OF WHY PRE-AIA OR AIA MATTERS: DEFINITION OF GRACE PERIOD

• Dec. 31, 2009

Art Patent application filed in China January 1, 2010 US counterpart application filed January 1, 2011

Pre-AIA grace period in U.S. (35 U.S.C. §102(b)(2006)).

1-year grace period, 1 year prior to US filing

January 1, 2013 Patent application filed in China on January 1, 2014 US counterpart application filed January 1, 2015 with effective filing date January 1, 2014

AIA grace period in U.S. (35 U.S.C. §102(b)(1), applies to applications containing at least one claim with an effective filing date after March 15, 2013)

1-year grace period, 2 years prior to US filing

37

38

“effective filing date” is the key to navigating the road- map of AIA, pre-AIA, and the Jedi Master Mixer

• Examination Guidelines issued Feb. 14, 2013: “Because the changes to

35 U.S.C. 102 and 103 in the AIA apply only to specific applications filed

• n or after March 16, 2013, determining the effective filing date of a

claimed invention for purposes of applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 and 103 provisions is critical.”

• So critical to know what is EFD of claim as construed the broadest

reasonable way.

• § 1.109 Effective filing date of a claimed invention under

the Leahy-Smith America Invents Act.

– (a) The effective filing date for a claimed invention in a patent or application for patent, other than in a reissue application or reissued patent, is the earliest of:

• (1) The actual filing date of the patent or the application for the

patent containing a claim to the invention; or

• (2) The filing date of the earliest application for which the patent or

application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, or 365.

FITF Final Rule Confirms Definition of “Effective Filing Date” (EFD)

39

• “although prior art is applied on a claim-by-claim

basis, the determination of whether pre-AIA 35 U.S.C. 102 and 103 or AIA 35 U.S.C. 102 and 103 apply is made on an application-by-application basis.”

• So a question will be whether under the broadest

reasonable claim construction, a claim has an EFD before March 16 or after March 15?

40

Once Claims Construed, Whether Pre-AIA or AIA Definition of Prior Art Applies Is Determined Application-by-Application Basis

See Examination Guidelines, 78 Fed.Reg. 11,073 (Feb. 14, 2013)

Enactment:

• Sept. 16, 2011

PCT Filing First to Invent System Applies

Straddling the Effective Date: It’s all about Claim Construction!!

“First To Invent” System or “FITF” System? (see SEC. 3(n)(1)(A) and (n)(2)) (Even if one claim not supported at priority date is eventually canceled, still in FITF.)

PCT Filing Priority Date

Enactment:

• Sept. 16, 2011

Effective Date: March 16, 2013

Priority Date “FITF” System Applies PCT Filing

Enactment:

• Sept. 16, 2011

Scenario 1: no claims entitled to priority date: FITF Scenario 2: all claims entitled to priority date: first-to-invent Scenario:3: at least 1 claim not entitled to priority date: mixed

Assumes “priority date” is ex-US

41

41

42

Claim Construction Can Affect EFD And Thus Choice Of Law

US PTO District Court Burden of Proof Preponderance of the evidence Clear and convincing evidence Presumption of validity No Yes Claim construction Broadest reasonable construction One of ordinary skill in the art, based on claims, specification, and prosecution history Amend claims? Yes No Pre-AIA AIA JMM anticipation Pre-AIA §102(a)-(g) §102 §102 and pre-AIA §102(g), 135, and 291

• bviousness

Pre-AIA §103 §103 §103

43

Prior Art Under the AIA New 35 U.S.C. §102: When Broadest Reasonable Claim Construction Dictates an EFD After 3/15/13

(a)(1): A public disclosure ANYWHERE in the world before the EFD of the claimed invention; OR (a)(2): Patent filing disclosures (in the U.S. or PCT designating the U.S.) that later become public, that name another inventor, and were effectively filed before the EFD of the claimed invention. b) Exceptions from prior art c) Expands exceptions subject to CREATE Act (joint research agreements/mergers); and d) new definition of “effectively filed” for 102(a)(2) (sort of like old 102(e))

Grace Period!

44

The NEW U.S. Grace Period (§102(b)(1)(A)): Claim Construction and EFD In AIA Land

Disclosure “by or … from” an inventor

<1 Year

Disclosure “by or … from” an inventor and since after effective filing date, not prior art under 102(a)(1)

<1 Year

Filed! Filed! (Claim Constrution Gives EFD)

44

Grace Period!

The NEW U.S. Grace Period (§102(b)(1)(A)/(B)): AIA

Disclosure “by or … from” an inventor; related subject matter?

Disclosure by ANYONE

<1 Year

Filed!

(Claim Construction Drives EFD)

45

45

Contact: Lauren L. Stevens, Ph.D. lstevens@globalpatentgroup.com (650) 387-3813

GLOBAL PATENT GROUP, LLC.

46

Advanced AIA Issues for Patent Claim Construction: Best Practices Absent Clear Court Guidance Questions to Consider

April 18, 2013

Presented by Tom Irving

47

• Can the choice of law change when a district court judge construes the claim in

such a way that the EFD changes (e.g., pre-AIA case now being analyzed as a AIA

• r JMM case)?
• What are the benefits and dangers of new claims, depending on their claim

construction, in a continuation application/preliminary amendment filed after

• Mar. 15, 2013?
• What are the benefits of new claims in a continuation application regarding

choice of law in view of transitional (JMM) applications?

• SEC. 3(n)(1) Except as otherwise provided in this section, the

amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, [March 16, 2013] and shall apply to any application for patent …that contains or contained at any time:

A. a claim to a claimed invention that has an effective filing date as defined in section 100(i) [remember: “entitled to”] …, that is on or after the effective date described in this paragraph [March 16, 2013]; or B. a specific reference under §§ 120, 121, 365(c) to any patent or application that contains or contained at any time such claim. [antecedent for “such claim” has to be sub.para. (A)?]

48

First AIA Transition Provision: EFD after 3/15/13 If Driven By Claim Construction

• SEC. 3(n)(2): The provisions of sections 102(g), 135, and 291 of

title 35, United States Code, as in effect on [March 15, 2013], shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time—

– (A) a claim to an invention having an EFD as defined in section 100(i) of title 35, United States Code, that occurs before [March 16, 2013]; or – (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

49

Second Transition Provision: EFD Before 3/16/13 and After 3/15/13 If Driven By Claim Construction!!

• “section 3(n)(2) does indicate that the provisions of 35 U.S.C. 102(g),

135, and 291 as in effect on March 15, 2013, shall apply to “each claim” of an application for patent, and not simply the claim or claims having an EFD that occurs before March 16, 2013, if the condition specified in section 3(n)(2) occurs. Therefore, “each claim” of an application presenting a claim to a claimed invention that has an effective filing date before March 16, 2013, but also presenting claims to a claimed invention that has an effective filing date on or after March 16, 2013, is subject to AIA 35 U.S.C. 102 and 103 and is also subject to the provisions of 35 U.S.C. 102(g), 135, and 291 as in effect

• n March 15, 2013.”

50

FITF Examination Guidelines:

• SEC. 3(n)(2) and the JMM: what’s in your claim

construction wallet?

See Examination Guidelines, 78 Fed. Reg. 11069, 11072 (Feb. 14, 2013)

• Some may seek out a claim construction to be able to

land SEC.3(n)(2), owing to advantages of AIA.

– Elimination of Metallizing Engineering forfeiture

• See legislative history and US PTO Examination Guidelines, 78

Fed.Reg. 11,062 (Feb. 14, 2013)

– Liberalization of the CREATE ACT and common

• wnership in §102(c);

– Possible elimination of pre-AIA statutory bars that are not AIA prior art, such as secret sale!!!

• See Examination Guidelines, 78 Fed.Reg. 11,075 (Feb. 14, 2013).

51

• SEC. 3(n)(2): Jedi Master Mixer!

52

The Jedi Master Mixer: you want claim construction EFD for AIA or pre-AIA or both?

Private on sale in U.S.

<1 Year

Assume U.S. filing is pre-AIA; file CIP on

• r after 3/16/13 after US filing but before
• publication. Present at least one AIA claim

and at least one pre-AIA claim. Under 3(n)(2), possible statutory use bar for pre- AIA claim vanishes!!!

<1 Year

Filed! Filed! (Effective FD) 3/16/13

file CIP

52

• Need an application 1 filed before March 16, 2013 and

still pending.

• Need an application 2 filed after March 15, 2013

claiming priority/benefit of application 1 and also containing at least one claim (ALOC) with an EFD before March 16, 2013, and ALOC with an EFD after March 15, 2013.

• Of course, EFD depends on claim construction.

53

Intentionally Creating the Jedi Master Mixer with Claim Construction

• Application 2 could be a CIP.
• Application 2 could be a continuation filed

along with a preliminary amendment presenting ALOC with an EFD after March 15, 2013.

• If JMM not intended, may be prudent to file

the preliminary amendment at least one day after the continuation.

54

Intentionally Creating the Jedi Master Mixer

• Count the cost: AIA §102(a)(1), AIA §102(a)(2),

AIA §103, and pre-AIA §102(g) will apply to each JMM claim.

• And even though EFD of each claim is considered,

all prior art, even if the events occurred before March 16, 2013, is viewed solely through the lens

• f AIA §102(a)(1), AIA §102(a)(2), AIA §103, and

pre-AIA §102(g).

55

Intentionally Creating the Jedi Master Mixer

• Simply need an Application 1 having ALOC with an

EFD before March 16, 2013.

• Application 2 could be a continuation or CIP claiming

benefit of Application 1 but with ALOC with an EFD after March 15, 2013.

• But what if you get the claim construction wrong?

56

JMM Can be Filed Years After 3/15/13

• Could file a potential JMM Application 2 after

March 15, claiming benefit of Application 1 but not yet claiming the “post-March 15” EFD subject matter.

• Claim that “post-March 15” EFD subject

matter later, basically as long as Application 1 is still pending.

• Reporting requirements: ADS (see infra)

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The Latent JMM

• Response to Comment 15: “Sections 1.55 and 1.78 as

adopted in this final rule do not require an applicant to … make a prima facie case of entitlement to a patent. Rather, the requirement for a statement for certain transition applications … simply requires the applicant to provide information that will be used by the Office as an aid in determining whether to examine the application under AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103.”

58

FITF USPTO FINAL RULES: Statement Required for JMM Applications Commentary: Statement is so PTO Can Make Proper Choice of Law

78 Fed. Reg. 11,040 (Feb. 14, 2013)

ADS: Application data sheet revised to include check box. PAIR: The idea is that J.Q. Public can see in PAIR whether an application being examined as a pre-AIA application or AIA application. But can J.Q. figure out the delayed Jedi Master Mixer?

59

FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules: Practical Implementation

78 Fed. Reg. 11,040 (Feb. 14, 2013)

• Claims added after March 15, 2013, fully supported by pre-

AIA priority application, do not automatically trigger requirement for statement or application of AIA 35 U.S.C. §102 and 103.

• Amendments on or after March 16, 2013: Same is true for an

amendment to an application filed on or after March 16, 2013, entitled to benefit of pre-AIA priority application, seeking to add a claim to a claimed invention that is not supported in pre-AIA priority application.

– Proper approach is for examiner to reject claim as new matter and the applicant could dispute that but it would not automatically move the whole application into AIA.

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FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: The §112 Defective Claim After 3/15/13 Does not an AIA Application Make?

78 Fed. Reg. 11,040 (Feb. 14, 2013)

• “The addition of a claim in a transition application that is directed

to subject matter fully supported in a pre-AIA benefit or priority application would not itself trigger the statement requirement under §1.55 or §1.78 and would not make the application subject to AIA 35 U.S.C. 102 and 103.”

• See next slide.

61

FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: PTO Views that Presentation After 3/15/13 of a Claim with an EFD Before 3/16/13 Does Not Move the Application into AIA

78 Fed. Reg. 11,040 (Feb. 14, 2013)

• For an application filed on or after March 16, 2013,

– that discloses and claims only subject matter also disclosed in a previously filed pre-AIA application – to which the application filed on or after March 16, 2013, is entitled to priority

• r benefit under 35 U.S.C. 119, 120, 121, or 365,

– an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim to a claimed invention that is directed to new matter – would not convert the application into an AIA application.

62

FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: The PTO Tackles the Improper §112 Claim Issue: It’s all About Claim Construction!!

78 Fed. Reg. 11,040 (Feb. 14, 2013)

• 35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure and

thus an application may not actually “contain” a claim to a claimed invention that is directed to new matter.

• …the new matter is required to be cancelled from the written description and the

claims directed to the new matter are rejected under 35 U.S.C. 112(a)(MPEP § 608.04). – This process for treating amendments containing new matter is purely an administrative process for … resolving disputes between the applicant and an examiner as to whether a new drawing or amendment to the written description or claims would actually introduce new matter.”

63

FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: The PTO Tackles the Improper §112 Claim Issue

78 Fed. Reg. 11,040 (Feb. 14, 2013)

• Once in AIA, cannot go back to pre-AIA.
• As the next slide shows, if application is mixed (“transition

application”) with ALOC with an EFD before March 16, 2013, and ALOC after March 15, 2013, even if the post-March 15, 2013, claims are canceled, application will be examined under AIA and also under 102(g) because it is a JMM or transition application.

– File continuation or divisional of pre-AIA parent containing only claims with EFD before March 16, 2013, and that will be examined under pre- AIA only. – Ethical Considerations.

64

FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary Summary: Transition Application: Thy Name is the Jedi Master Mixer (JMM)

• the application will be examined under AIA even if the latter claims are cancelled.
• However, if a pre-AIA parent application is pending and
• the applicant could file a continuation or divisional application from the pre-AIA parent

application without any claim to the benefit of the AIA application and without any claim to a claimed invention having an effective filing date on or after March 16, 2013.

• In this situation, the continuation or divisional application would be examined as a pre-AIA

application under pre-AIA 35 U.S.C. 102 and 103.”

65

FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: lost vision of JMM?

“If an application on filing contains at least one claim having an effective filing date before March 16, 2013, …at least one claim having an effective filing date on or after March 16, 2013,

and

an applicant inadvertently files a continuing application with claims having an effective filing date on or after March 16, 2013,

78 Fed. Reg. 11,043 (Feb. 14, 2013)

Can You Change or Correct Claim to Priority? Keep Those X Home Fires Burning!

66

A B

X

D C

March 16, 2013

abandoned

add claim only entitled to C filing date

Date Z

at Date Z, D can’t disclaim priority claim to C and replace it with a priority claim to X to get back to pre-AIA

X

• But, pre-AIA §102(g) prior art can be antedated for all

claims So, for all claims in a JMM application, a prior date of invention can be proved to overcome any §102(g) prior art that comes up, or in any interference

• r interfering patent litigation that arises under §§ 135

and 291, (also apply to all claims under AIA SEC. 3(n)(2)).

67

“JMM” Can Bring Back Antedation for All Claims

P.S. Remember same invention double patenting: pre-AIA or AIA.

• Assume Application 1 filed before March 16,

2013.

• Assume a §102(g) or §102(f) event exists but

would not be an AIA §102(a)(1) or AIA §102(a)(2) event.

• Application 1 has not yet published after March

15, 2013.

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But what if you want only AIA? US Only

P.S. Remember same invention double patenting: pre-AIA or AIA.

• You file an identical specification Application 2 before

publication of Application 1.

• You do not claim benefit/priority of Application 1.
• §102(g) or §102(f) events disappear.
• But AIA §102(a)(1) and AIA §102(a)(2) events are now

in play.

• Balance the risks.

69

But what if you want only AIA? US Only

P.S. Remember same invention double patenting: pre-AIA or AIA.

• Have a pre-AIA patent filing (slow motion and prioritized exam?) Best if

claims are patentably distinct (Exelixis I)

• Jedi Master Mixer: File a second, independent AIA patent application that

is a duplicate or near-duplicate of the pre-AIA patent filing, but avoids identical claims and has at least one claim with effective filing date after March 15, 2013 (and prioritized examination?) Best if patentably distinct

• Have a third AIA application with AIA claims only (and prioritized

examination?) Best if all six are patentably distinct

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Filing Strategy: Jedi Master Mixer/AIA/pre-AIA Multiple Filings*

*Note: there may be Dayco and McKesson implications. Each case depends on its own facts but consider and take any action that is appropriate.

• Secure whatever benefits might exist in both the first-to-invent, the FITF,

and the mixed (n)(1) and (n)(2) FITF and first-inventor to file worlds, subject to liabilities.

• May have to disclaim the extra term provided by the AIA second patent

and may not be able to enforce the patents separately. Try to avoid

• bviousness type double patenting.
• Patents with identical claims will still be barred, and the multiple patent

filings will need to stand alone.

• Line up the ducks:

71

Filing Strategy: JMM Multiple Filings: Quack, quack, quack

Thank you.

Tom Irving Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 202.408.4082 tom.irving@finnegan.com 72