No Duty to Disclose Prior Art in Patent Term Extension Proceeding
Granting summary judgment and dismissing an inequitable conduct claim in Schering Corp. v. Mylan Pharmaceuticals, Inc., No. 09-6383 (JLL), 2011 WL 1885709, *3-*5 (D.N.J. May 17, 2011), the district court held that an applicant for a § 156 patent term extension has no duty to disclose to the PTO in that term extension proceeding any prior art that allegedly is material to the validity of the claims. Instead the applicant only has a “a duty to disclose ‘material information adverse to a determination of entitlement to the extension sought, which has not been previously made of record in the patent term extension proceeding ….’ 37 C.F.R. § 1.765(a).” Thus, “even assuming that counsel for [an applicant] knowingly fail[s] to disclose potentially invalidating prior art to the PTO in connection with the term extension proceedings for the ‘721 patent, such information [i]s not material [to] those proceedings.” Id The court instructed that “the relevant statute and rule simply do not require the disclosure of such material [i.e., material prior art] or the communication of any ‘knowledge’ of the legal conclusions that could be drawn therefrom. Id.
For additional materials on duty to disclose applicable to PTO proceedings see generally Annotated Patent Digest § 27:8 PTO Regulations Applicable to Specific PTO Proceedings.
First-to-File Rule Barred Second False Marking Suit
Granting a Rule 12(b)(6) dismissal with prejudice, the district court in Champion Labs., Inc. v. Parker-Hannifin Corp., No. 1:10-CV-02371-OWW-DLB, 2011 WL 1883832, *4-*9 (E.D. Cal. May 17, 2011), held that as the government is the real plaintiff in a false marking suit, the first-to-file rule applies to bar a second suit brought for the same acts of alleged false patent marking by a different relator. Thus, “[t]he qui tam statute provides for a single claim for false marking, not multiple claims for multiple penalties.” Id. at *6 (emphasis in original)
For additional materials regarding multiple false marking suits see generally Annotated Patent Digest § 34:103.50 Different Suits by Different Plaintiffs on Same Alleged Acts of False Marking.
Computer Method Claim Held Invalid on Rule 12(b)(6)
Addressing a § 101 invalidity challenge on a Rule 12(b)(6) motion to dismiss, the district court in Glory Licensing LLC v. Toys “R” Us, Inc., No. 09-4252 (FSH), 2011 WL 1870591, *2-*4 (D.N.J. May 16, 2011), held invalid a claim reciting:
A method of processing information on a first computer system comprising at least one computer, which comprises:
a. receiving a file by transmission from another computer system external to said first computer system and automatically displaying said file on a computer display as a template;
b. automatically selecting and extracting information from said file according to content instructions;
c. providing utilities capable of automatically routing the extracted information as input information to an unrestricted diversity of application programs according to customizable transmission format instructions tailored to enable correct processing of the input information by any application program that requires said input information;
d. transmitting said input information to each application program requiring said input information; and
e. automatically processing said input information by said each application program.”
The court concluded that the claim did not claim a machine as “[t]he case law is clear that simply the use of a programmed computer is not sufficient to satisfy the machine or apparatus prong of the test.” Additionally, the court found the claim did not address any transformation since “the relevant claims in the Glory Patents address a ‘mere transfer’ of data from an electronic or hard copy document to an application program. Glory cannot claim that the data itself is transformed or even changes at all.”
For additional materials regarding § 101 challenges and computer/business methods see generally Annotated Patent Digest § 20:14 Mathematical Algorithms/Computer Programs; § 20:15—Cases Finding Invention With Mathematical Algorithm Had Patentable Statutory Subject Matter; § 20:16 —Cases Finding Invention With Mathematical Algorithm Lacked Patentable Statutory Subject Matter; § 20:18.100 Post-Bilski Cases Finding Claimed Business Method was Not Patentable Subject Matter.