Below is gap analysis portfolio comparison of each company’s active U.S. patent families with the ability to filter the data by type of application, publication date, filing date, and cpc subclass description.
To learn more about how Harrity Patent Analytics can help you find insights into the patent world, contact us via email HERE.
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The PTO’s Revised Patent Subject Matter Eligibility Guidance (2019 PEG) has been generally well received for providing a more reliable manner of applying the Alice/Mayo test used by the courts. Even so, the 2019 PEG still left some matters unclear and the PTO has now responded to public feedback by providing further clarification in the October 2019 Update. Below, we discuss the updates and how practitioners can use the updated guidance in practice.
Step 2A Prong One
In Step 2A Prong One, the 2019 PEG instructs examiners to evaluate whether a claim recites an abstract idea by a) identifying specific limitations in the claims believed to be an abstract idea, and b) determining whether the identified limitations fall within any of the three specific groupings of abstract ideas (mathematical concepts, certain methods of organizing human activity, and mental processes).
However, there was some question as to how explicitly limitations in the claims have to recite an abstract idea. The October 2019 Update clarifies that “recites” should broadly be construed to mean that the claims either explicitly set forth the abstract idea or merely describe the abstract idea without explicitly using words that identify the abstract idea. The PTO further clarifies that claims may recite multiple abstract ideas, which may fall in the same or different groupings, and that the groupings are not mutually exclusive (i.e., a single claim limitation may fall into more than one abstract idea grouping).
The October 2019 Update also provides clarification on what the three groupings of abstract ideas entail.
The 2019 PEG also allows for the possibility that a claim limitation that does not fall into one of the three groupings of abstract idea may be still determined to be an abstract idea upon TC Director approval. The October 2019 update indicates that the public will be notified once such an office action issues. At this time, the PTO has not provided any such notification.
Step 2A Prong Two
In Step 2A Prong Two, the 2019 PEG instructs examiners to evaluate whether the claim as a whole integrates the abstract idea into a practical application and gives several considerations in making this determination, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.
The October 2019 Update reemphasized that this analysis considers the claim as a whole, and that the additional elements of the claim (i.e., those not identified as an abstract idea) are not to be evaluated separately from the limitations reciting the abstract idea. Moreover, the PTO clarified that merely claiming a specific way of achieving a result is not a stand-alone consideration in Step 2A Prong Two and is not enough by itself to integrate the abstract idea into a practical application. However, the specificity of the claims is relevant to the considerations related to using a particular machine, a particular transformation, and whether the limitations are mere instructions to apply an exception.
The October 2019 Update devotes lengthy discussion to how a claim improves the functioning of a computer or a technical field and provides a two-step procedure for how examiners are to perform this analysis.
Step 2B
In Step 2B, examiners are to evaluate whether the claims provide an inventive concept by reciting significantly more than the abstract idea. The October 2019 Update itself provides almost no discussion or clarification of Step 2B other than to reemphasize that well-understood, routine, conventional activity will only be considered under Step 2B and not Step 2A. However, the PTO provided Example 43 along with the October 2019 Update that shows how a claim can fail Step 2A but still be determined eligible under Step 2B. Such an example was notably absent from the examples provided with the 2019 PEG.
Example 43 is a hypothetical based on the well-known Diamond v. Diehr case. Example 43 is directed to a controller for an injection molding apparatus that repeatedly obtains temperature measurements of a mold, calculates an extent of curing completion based on the temperatures and an equation, and determines a percentage of curing completion. Claim 3 specifies that the controller is connected to a means for temperature measuring (which is specifically interpreted to be an ARCXY thermocouple). Under Step 2A Prong One, the claim is determined to recite a mathematical concept. Under Step 2A Prong Two, the step of obtaining the temperature measurements is deemed to be insignificant extra-solution activity of data gathering and does not integrate the abstract idea into a practical application. Notably, the fact that claim 3 uses an ARCXY thermocouple to obtain the temperature measurements is not considered in Step 2A Prong Two (not even to establish use of a particular machine). Thus, claim 3 is determined to be directed to the abstract idea.
However, the consideration of whether the ARCXY thermocouple feature is mere insignificant extra-solution activity is reconsidered under Step 2B taking into account whether such extra-solution activity is well-known. The PTO found that while use of ARCXY thermocouples is known in the aeronautical industry, the use of ARCXY thermocouples was not routine or conventional in injection molding apparatuses. Because the ARXCY thermocouple resulted in better long-term performance, durability, and response time than other thermocouples, the result of using the unconventional thermocouple in the claimed manner amounts to significantly more than the abstract idea (i.e., mathematical concept) and the claim is patent eligible.
Key Takeaways
The October 2019 Update reinforces the idea that the best practice when drafting a patent application is to describe the invention as providing a technical solution to a technical problem. In this way, should a Step 2A Prong One argument fail, practitioners can rely on a Step 2A Prong Two argument that the claims improve the functioning of a computer or other technology. This argument seems to be the argument preferred by examiners and often cited by the courts as a basis for patent eligibility when there is a 101 issue.
Specifically, practitioners should keep in mind that examiners will heavily rely on the specification to determine if such a technical solution or technical improvement is provided. The improvement should not be merely recited in a conclusory manner (e.g., an unsupported assertion that the invention provides a specific improvement), but should be explained in sufficient detail to tie specific features of the invention to the improvement. Importantly, the claims should be drafted in such way to include the features that provide the improvement. Examiners have often requested, or even required, that the claims explicitly recite the improvement to overcome a 101 rejection even though these claim features are often considered intended use or given little patentable weight. The October 2019 update makes it clear this is not necessary.
The PTO also appears to narrow at least some of the three groupings of abstract ideas in Step 2A Prong One. Practitioners should use this to their advantage when drafting applications to characterize features that may be arguably abstract in a way that avoids falling into the three groupings of abstract ideas. For example, when appropriate, the application could describe the complexity of steps that may be arguably mental processes (e.g., determining steps, processing steps, analyzing steps, etc.) to establish that these steps cannot be practically performed in the human mind. However, practitioners should be careful not to try to game the system by describing a simple step, which truly could be performed in the mind, as a complex step that cannot be performed in the mind because such a characterization could have unintended consequences for potential infringement and claim interpretation. Moreover, if a feature truly could be performed in the mind, then there is most likely a better way to establish eligibility under Step 2A Prong Two or Step 2B.
The 2019 PEG stripped Step 2B of most of its previous considerations and moved them to Step 2A Prong Two. While the 2019 PEG indicated that Step 2B was still a viable option to establish eligibility, there was little instruction on how practitioners could actually present a successful argument and no examples of succeeding under Step 2B were given. Given this, examiners have been reluctant to seriously consider Step 2B arguments. Although arguments under Step 2B are likely to remain an improbable way to overcome a 101 rejection in view of the of the October 2019 Update, practitioners should keep in mind that new Example 43 provides a manner of establishing an inventive concept and a rationale that can be used as a backup position under Step 2B going forward. Therefore, practitioners should draft their specifications to highlight how their inventions differ from what is well-understood, routine, conventional in the field, even if it is a feature that is more tangentially related to the core invention that could be considered extra solution activity.
Overall, the October 2019 Update should help the PTO continue to provide more reliable subject matter eligibility analysis and clarify what kinds of arguments will successfully overcome a 101 rejection.
Blockchain is an emerging technology that has taken the world by storm. In October 2008, Satoshi Nakamoto published a seminal paper, titled “Bitcoin: A Peer-to-Peer Electronic Cash System“, and the age of blockchain was born. Since then, entrepreneurs and large corporations have explored implementation of blockchain technology in financial transactions, smart contracts, automotive, retail, healthcare, energy, utilities, travel, supply chain, and gaming, among other industries.
Based on our analysis of active patents & pending applications, blockchain-related filings have increased significantly around the world in recent years. For instance, there were only 126 filings in 2014, but by 2017 there were over 3,700 applications filed in the blockchain space. In 2018, a year in which not all the filings have yet become public, there have already been over 8,200 filings. The growth curve in blockchain filings is truly exponential. It will be interesting to see over the coming years whether this trend continues.
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Page 1 highlights the top players in the blockchain space, page 2 highlights the filing trends, and page 3 highlights the patent issuance trends. You can click on elements (e.g., country code, company name, type filter, filing date filter) of the dashboard to filter the data.
The geographic distribution of filings is also very interesting. To date, over 10,000 blockchain filings occurred in China, more than half of all blockchain related filings worldwide. According to a recent Forbes article, nearly 70% of crypto mining activity occurs in China, creating significant interest in protecting IP in the crypto currency space. The top ten filers of chinese patent applications in the blockchain space are as follows:
China Blockchain Patent Applications Filed (as of 10/1/2019)| Rank | Company | Active Patents & Pending Applications |
|---|---|---|
| 1 | Alibaba | 259 |
| 2 | CUNC | 189 |
| 3 | Hangzhou Fuzamei | 163 |
| 4 | Ping An | 151 |
| 5 | Baidu | 139 |
| 6 | Shenzhen Launch | 102 |
| 7 | Tencent | 102 |
| 8 | Zhongan IT | 89 |
| 9 | Shenzhen Oneconnect | 77 |
| 10 | Shenzhen Onething | 74 |
Notably, the U.S. has the second most blockchain filings, with over 2,700 filings. In the U.S., the top ten filers of patent applications in the blockchain space are as follows:
US Blockchain Patent Applications Filed (as of 10/1/2019)| Rank | Company | Active Patents & Pending Applications |
|---|---|---|
| 1 | IBM | 252 |
| 2 | Alibaba | 93 |
| 3 | Bank of America | 81 |
| 4 | Mastercard | 73 |
| 5 | Wal-mart | 63 |
| 6 | Accenture | 52 |
| 7 | Intel | 46 |
| 8 | Nchain | 32 |
| 9 | Coinplug | 29 |
| 10 | TD Bank | 28 |
In comparison, the top ten U.S. patent owners in the blockchain space are as follows:
US Blockchain Patents Issued (as of 10/1/2019)| Rank | Company | Active Patents |
|---|---|---|
| 1 | IBM | 57 |
| 2 | Accenture | 26 |
| 3 | Bank of America | 24 |
| 4 | Mastercard | 13 |
| 5 | Winklevoss IP | 13 |
| 6 | Capital One | 12 |
| 7 | Dell | 9 |
| 8 | Vijay Madisetti | 9 |
| 9 | TD Bank | 9 |
| 10 | Blockchain Asics | 7 |
According to a recent report published by Accenture PLC, worldwide spending on blockchain solutions has a forecast annual growth rate (CAGR) of 76.0%, reaching $12.4 billion in 2022. The blockchain space is still in the early stages of development, and it will be interesting to see how the technology evolves and who else enters the space.
To learn more about how Harrity Patent Analytics can help you find insights into the patent world, contact us via email HERE.
Here, Harrity discusses how his law firm has streamlined and automated the patent application process a la McDonald’s, why lawyers are not paid based on origination credits and why charity is such a big part of the firm’s culture.
How is your law firm different from a traditional law firm?
There’s a lot of ways that we’re different. From the very beginning, we’ve had this focus on quality. People talk about quality in our field, but one of the things we like to do when we talk about something is we want to make sure that it’s measurable. From the very beginning of our firm, my twin brother and I, we started with the traditional question: Why us? Why would anyone send us work over the thousands of firms doing patent prosecution and preparation? After some discussion, we honed in on quality. We implemented a couple of procedures, one was adopted from my brother’s former firm, Finnegan, and the other we created on our own.
We made sure everything goes through a very thorough second attorney review. It’s all about expectations here. Attorneys know that when they hand something in to me, there’s a certain level of quality that’s expected. And when we send things out to clients, there’s a certain expectation. When we send it to an inventor or in-house counsel, we’re going to send something that thoroughly, accurately and technically describes your invention and in our eyes is ready to be filed.
It’s tracking some statistics in relation to that to see: Are we succeeding or are we failing? How often, when we send out a patent application to an inventor or in-house counsel, do we get “looks good” [in response]? That’s our level of expectation. Going back to the beginning of the firm, so over the course of 20 years and having drafted over 5,000 patent applications, 67% of the time we’ve gotten a “looks good.”
The other [quality procedure] is writing style. I liken it to McDonald’s. Why is McDonald’s successful? Every McDonald’s you go to in the United States and you order their premier burger, the Big Mac, it’s going to have the same look, the exact same flavor every single time. And it’s going to come out in roughly the same amount of time. Our uniform writing style works exactly the same. Individual companies have preferences for how they want their patents to look, often the attorneys that work internally have individual preferences. We have a uniform writing style for every single attorney and every single company so that when they come to our firm, regardless of the drafting professional, they’re going to get their uniform writing style every single time.
Your firm has eliminated origination credits. Why have you done that and what kind of impact does it have?
Let’s think about origination credits. When you look inside these firms that have origination credits, what you see inside these firms are law firms within a law firm. You’ve got all of these partners with their origination credit, rowing in different directions. When you look at my firm, every client here is the firm’s client. We make business decisions about whether to bring on a client and whether to keep a client. Our firm’s mission is to be the No. 1 firm in the world doing what we do. We do patent applications and prosecution and we just do it in the electrical and mechanical space. I can tell you, every single individual at my firm, we’re all rowing in the same direction. Since we opened up 20 years ago, every single client has been the firm’s client. I might manage some of them and be the face to our firm for a particular client, but it’s the firm’s client, it’s not mine. That’s why we can be so agile, and move so quickly in the field, because we’re all rowing in the same direction.
How does the law firm then figure out how to determine whether a particular lawyer is successful?
We track some statistics internally. Every patent application that’s drafted at my firm, every response to a rejection from the patent office that’s drafted, goes through a second attorney review. And if I’m the reviewer, I fill out a scorecard and I’m grading this application or response on a little over a dozen different categories. This gives feedback to our attorneys. You can see your statistics for the year, you can compare them to last year. If you’re struggling in a particular area of drafting a patent application, don’t you want to know what that area is? There’s a quality score that all of our attorneys have.
There’s also a production element. One of the things we do is we pay our attorneys for production. We’ve experienced, in the lifetime of this firm, the same thing other firms experienced. The pricing of patent applications continually went up from 1999 until it plateaued for four to five years and then we started seeing it dip and it’s come down almost all the way to 1999 numbers. Back in 2013, one of our clients decreased their prices and we had a discussion internally and said, this is a wake-up call. We can walk away from the client and say we only do work for top-paying clients. If we do that, there will be less and less companies willing to pay top dollar and every firm in the United States is going to be lined up fighting for that work. The other route, the one we chose, is: Let’s get efficient. I put [the patent application process] in steps. Which of these steps must be performed by an attorney? All of the other steps, I hand those off to support staff members. And then, at the beginning of this year, I said: Let’s start automating some of the stuff the support staff is doing and let’s start automating some of the stuff the attorneys are doing.
2012 was before our efficiency journey. Our top drafting attorney drafted 54 patent applications that year, second place was 42. Last year, we had four attorneys draft more than 90 patent applications. We had one attorney in December draft 19 patent applications. This year our automation tools have rolled out. We have an attorney this year who is on track to draft 150 patent applications.
Let me tie that back into pay. You join our firm and when you’re assigned a patent application to draft, you’re given a number of hourly credits. If the hourly credit is 40 hours, you get that same hourly credit regardless of your actual time spent on it. So if you spend 40 hours, you’re getting hour-for-hour credit. If I can get you efficient, without sacrificing quality, down to 20 hours, now you’re drafting two patent applications. If I can get you down to 10 hours, then in that same 40 hour period you’re drafting four, which means you make four times as much money. The big producers at our firm make what partners make at other firms.
What tasks and processes have you automated?
One simple one I‘ll tell you about is form filling. There are certain forms that need to be filled out when you’re filing a patent application. And these forms were taking our staff about 15 to 30 minutes. Now it takes them about five seconds to fill them out — it’s being populated based on our docketing system.
You had a massive heart attack in 2016 at age 49, how has that impacted the way you operate your law firm?
Let me start with charity. I had this health scare back in 2016 and it really set the firm on a different course. I was in intensive care for eight weeks. It took me a couple of months after that to actually get back to the firm. I became hugely service-focused and that bled over to everything we do at the firm now. Harrity for Charity, that’s our giving back initiative. We’ve committed at the partner level to give 5% of profits to our partner charities. Those are the American Heart Association, that was my health scare, I had a heart attack; Inova Children’s Hospital; UNICEF; and Zero, which is the fight against prostate cancer. What makes Harrity for Charity infinitely better than the 5% coming out of partner profits is every single employee at my firm is committing a portion of their paycheck to one or more of these partner charities. Service is hugely important to us.
On the diversity side, we started our diversity journey kind of late in the game. We started our firm in 1999 and we started diversity efforts in November, 2015. At the time we started the conversation, we were 8% [ethnically] diverse at the attorney level. We implemented our Rooney Rule 2.0. What we’ve done is this. For every single position at my firm, support staff included, when we interview a white male for a position, we will interview a non-white male for that same position. Fast forward three years and we’ve gone from 8% diverse to 30% diverse today.
The newest thing we did is our minority firm incubator. It is a unique, innovative program. We’re willing to spend the time and money to make this thing successful. What we’re doing is creating minority-owned firms, female-owned firms that are replicas of our firm. We’re going to teach them what we do here and spin them off into their own firms. What makes the program a truly once-in-a-lifetime opportunity is we’re going to line up companies that will commit to give work to these minority-owned firms. Accenture has already made that commitment. The biggest pain point any time you start your own business is: Where am I going to get the work? We’re going to get [top patent-owning] companies to make that commitment to try them out.
They’re completely independent. They’re with us for three years; the fourth year, they leave our firm to start their own.
About Harrity & Harrity, LLP
Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.
WASHINGTON (October 11, 2019) – Harrity & Harrity, LLP received the Washington Business Journal (WBJ) Corporate Citizenship Award in recognition of its partnership with the American Heart Association (AHA) of Greater Washington Region.
Part of the WBJ’s Corporate Philanthropy Awards, the Corporate Citizenship Award honors partnerships between Washington, D.C. metro area businesses and nonprofits that demonstrate positive outcomes for both organizations. Harrity and other winners will be formally honored in November at the WBJ’s annual Corporate Philanthropy Awards event.
“We greatly appreciate the Washington Business Journal’s recognition of our firm’s important work alongside the American Heart Association,” said Harrity Managing Partner John Harrity. “As a heart attack survivor, I am personally very proud of the tremendous support that the Harrity community continues to give to this cause to fight heart disease and stroke while saving and improving people’s lives.”
Harrity began its partnership with the AHA of Greater Washington in 2017, joining forces to fight heart disease by working to educate policy makers, health care professionals, and the general public, with the goal of one day ending heart disease. The partnership was borne out of John Harrity’s personal experience of suffering and recovering from a “widow maker” heart attack in 2016 at the age of 49. The following year, Harrity launched Harrity 4 Charity, through which Harrity partners pledge to give 5 percent of their profits and Harrity employees pledge to donate a portion of their paychecks to partner charities.
Since 2017, Harrity partners and employees have donated countless volunteer hours to fighting heart disease. The firm also partners with the AHA of Greater Washington for its annual Lawyers Have Heart 10K Race, 5K Run & Fun Walk, which this year raised more than $900,000 for the cause. The last two years, Harrity has not only been the top corporate sponsor of the race, but also the top fundraiser. Most recently, the AHA of Greater Washington named John Harrity and Harrity & Harrity Controller Sandra Maxey co-chairs of the 30th annual Lawyers Have Heart 10K Race, 5K Run & Fun Walk. Also as part of its commitment to the cause, Harrity hosts the annual Harrity Race 5K Run and 1 Mile Fun Run, with 100 percent of the event’s proceeds going to the AHA of Greater Washington.
About Harrity & Harrity, LLP
Harrity & Harrity is the nation’s leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.
LAW.COM (October 3, 2019) After years of reading about new legal diversity programs with nothing to show for it, Harrity & Harrity managing partner John Harrity decided he wanted to try something new.
Harrity & Harrity managing partner John Harrity was sick of reading about law firm diversity.
The effort to diversify firms, he agrees, is noble. But over the years he had read countless stories about how this new internship or mentorship program will mend the legal industry’s diversity problem. And despite all these efforts, nothing much has changed.
“We keep doing the same things over and over and over again,” said Harrity, who co-founded the IP firm 20 years ago. “If the programs were really impactful we wouldn’t be having these conversations today.”
After reading a book about apprenticeships, Harrity had an idea for something new: Why not incubate women- and minority-owned law firms?
he idea wasn’t a big hit when he first brought it before the firm’s diversity committee. The biggest objection was that the program would essentially create competition for the firm. Harrity didn’t see it that way.
John Harrity“The reality is that there’s a ton of work out there, much more than we could ever handle ourselves,” he said. “And if they’re really good and taking work away from us that means we need to up our game.”
Eventually, the program was approved, and Harrity got to work on structuring the incubator. For each of the next three years beginning Jan. 1, the firm will bring in one woman attorney and one male minority attorney. Candidates must be a licensed attorney with a degree in electrical engineering, mechanical engineering, computer science, physics or a similar technical field.
The first year of the three-year program will teach the candidates how to draft patent applications. In the second year, the attorneys will learn how to prosecute pending applications. The third year marks a shift from legal practice training to management training. Participants will be taught how to hire and train attorneys, establish and maintain an office and pitch and retain clients.
At the beginning of the fourth year, the participants will each launch their own women- and minority-owned law firm.
The minority attorney incubator program has partnered with professional services firm Accenture, which will send work to the nascent firms to help get them off the ground and build a portfolio. Harrity hopes to bring in more companies as the apprenticeship develops.
Joel Stern, CEO of the National Association of Minority and Women Owned Law Firms, described the program as “novel” and “innovative.” Stern spoke with Harrity about the incubator when it was in development, and he applauded his firm for creating an unselfish and innovative program—especially in an area of the law that has traditionally been devoid of minorities.
He hopes that these new firms will join NAMWOLF, which just announced it had helped more than 100 minority- and women-owned law firms win $1.6 billion in legal spend since 2010.
“You can’t just keep doing the same thing over and over again. Harrity is trying something new and novel that I think is going to work,” Stern said. “Even if it doesn’t, he deserves credit. He’s subordinating his interests to help minorities thrive in the business.”
To learn more about the Minority Firm Incubator and Harrity’s other initiatives to drive diversity in the IP legal field, visit harrity.com/diversity.
The Federal Circuit recently issued a decision that reminds us of the importance of always remembering prosecution history estoppel when presenting arguments in responses to the USPTO. Specifically, in Amgen Inc v. Coherus Biosciences Inc., 2018-1993 (Fed. Cir. Jul. 29, 2019)) (“Amgen”), the Federal Circuit highlights how prosecution history estoppel can bar a patent owner from succeeding on its infringement claim under the doctrine of equivalents.
At issue was Amgen’s U.S. Patent No. 8,273,707 which was being asserted against Coherus for infringement. During prosecution, the USPTO rejected Amgen’s claims as obvious in view of U.S. Patent No. 5,231,178 (“Holtz”). In response, Amgen presented multiple different arguments. First, Amgen argued that “the pending claims recite a particular combination of salts. No combinations of salts taught nor suggested in the Holtz et al. patent, nor [are] the particular combinations of salts recited in the pending claims taught nor suggested in this reference.” See Fed. Cir at pgs. 4-5. Amgen further included a Declaration from the inventor of the ‘707 patent. “The Declaration did not discuss any salt pairs other than sulfate/citrate, sulfate/acetate, and acetate/citrate—the only claimed pairs in the ’707 patent.” See Fed. Cir at pg. 5. The Patent Office issued another rejection and, in a final response, Amgen reiterated that Holtz did not disclose a combination of salts nor did Holtz disclose enhancing the dynamic capacity of an HIC column. The Amgen patent issued after these arguments were filed.
Amgen filed suit against Coherus alleging infringement of the ‘707 patent under the doctrine of equivalents. Coherus moved to dismiss Amgen’s complaint under Fed. R. Civ. P. 12(b)(6) stating that Amgen argued that Holtz did not disclose “one of the particular, recited combinations of salts.” See Fed. Cir at pg. 7. A magistrate judge issued a report that recommended that Coherus’ motion be granted due to prosecution history estoppel. The report stated that Amgen “clearly and unmistakably—and indeed, repeatedly—indicated to competitors that it surrendered processes using combinations of salts different from the ‘particular combinations of salts recited in the . . . claims[.]’” See id. Therefore, the report found that “prosecution history estoppel bars Amgen from now attempting to reassert surrendered ground involving other combinations of salts.” See id. The District Court adopted the magistrate judge’s recommendation and granted Coherus’ motion to dismiss.
At the appeal, the Federal Circuit agreed with the lower court’s dismissal. The Court looked at the prosecution history and noted that “Amgen distinguished Holtz on the basis that Holtz did not teach or suggest the “particular combinations of salts” recited in Amgen’s claims.” See Fed. Cir at pg. 9. The Court further noted that “Amgen emphasized “particular” and referred to its particular salts three times in the span of two pages.” See id. As to Amgen’s argument that it distinguished from Holtz on the basis of increasing dynamic capacity, the Court states that “while Amgen did assert multiple reasons for why Holtz is distinguishable, our precedent instructs that estoppel can attach to each argument.” See Fed. Cir at pg. 11. Importantly, the Court stated that “[t]here is no requirement that argument-based estoppel apply only to arguments made in the most recent submission before allowance.” See id.
This case is a strong reminder that everything written during prosecution can be used against the patent owner in later litigation. The fact that “this particular combination” was a non-convincing argument, but still was used against Amgen with doctrine of equivalents shows how careful patent practitioners must be in drafting responses to the USPTO. Each argument written down is part of the record that can be used against the ultimate patent. As such, a high emphasis must be placed on having successful interviews with the Examiner. Examiner interviews should be used at every stage of prosecution. The Examiner interview is an invaluable way to receive feedback from the Examiner without adding to the written record. Often, an agreement on claim language can be reached during the Examiner interview. Based on the agreement, a response can be drafted in a way that minimizes the written record. As such, Examiner interviews not only help with efficiency but are also a crucial part of obtaining high quality patents.
