FOR FIVE HOURS over the past weekend I monitored news about patents worldwide, spending much of the time assessing outcomes of cases (the Federal Circuit in particular), new patent grants from the U.S. Patent and Trademark Office (USPTO), and Patent Trial and Appeal Board (PTAB) inter partes reviews (IPRs). It seems like the only "good" news patent maximalists have had was one or at most a couple of instances of PTAB overturning an application's rejection (examination level, akin to appeal or opposition). It's just about the lowest form of a "win" for them and it is quite revealing. We also saw some law firms bringing up Berkheimer one year later, as expected. I saw quite a few court outcomes against software patents and just about nothing for (in favour of) them. Links are omitted because, as we said at the end of last year, we would rather not focus much on the US anymore; the critical issues are at the European Patent Office (EPO). As for east Asia, Korea and Japan have curtailed software patents somewhat, whereas China creates additional appeal courts, perhaps having realised that many Chinese patents lack merit, hence safety nets for defendants are needed.
Article 53(c) EPC does not allow the patenting of methods for treatment, which is what a use claim would be.
To compensate, the legislator initially introduced what is now Article 54(4) EPC and, with EPC 2000, added Article 54(5) EPC. These provisions allow the patenting of a known "substance or composition" for a new first or second medical use. In these particular cases (only), a new use does make the product new (and potentially inventive).
In the first decision in this case, the district court considered the claims, specification, and prosecution history and found that the claims should be interpreted to require a double pass — even though not expressly required by the claims. Because the accused infringers only used a single-pass, non-infringement was then an easy finding.
On appeal, the Federal Circuit has rejected the narrow claim construction. As is its process, the court began with the claim language — finding that ” at least based on the plain language, the claims are not limited to a repeated desmear process.” Moving then to the specification, the court found no “clear and unmistakable disclaimer” of the claim scope covering a single-pass method. For the court here, the deciding factor appears to be the patent attorney’s care in drafting the specification. Here, the specification calls double desmear “one technique” that the invention “can be carried out” and “for example” rather than calling the approach “the invention.”
This approach here is properly seen as a patent drafting trick rather than an improved disclosure or invention.