Sounding an appropriately alarmist note, Bloomberg BNA has issued the results of a study on how the U.S. Patent and Trademark Office is administering its March 4, 2014 Guidance on subject matter patent eligibility developed in view of the Supreme Court's decisions in Mayo v. Prometheus and AMP v. Myriad Genetics. Entitled "Stopped at the Threshold: The Practical Implications of the Supreme Court's Mayo and Myriad Decisions on Biotechnology Patent Practices" (an executive summary of this Report can be found here), and written by Matthew McFarlane, Tara Guffrey Sharp, and John T. Aquino, the byword of the report is that there will be continued uncertainty in subject matter eligibility under these guidances unless and until the Office corrects them (which while unlikely it may ultimately do; the deadline for providing comments on the guidance has been extended to July 31, 2014; see "USPTO Extends Deadline for Providing Feedback on Myriad-Mayo Guidance"). But with Legal Department member June Cohan calling these cases a "game changer" and the guidance a "course correction," it is not hyperbole for the report to state that the guidance has "rewritten the playbook," that "[t]he decisions and the guidance appear to have shaken the life sciences industry at its roots" and that "[the decisions and guidance] could affect the public's access to new and effective medicines and therapeutic approaches in the future."
Congress therefore would appear to have appreciated that it could have restricted patenting for isolated DNA molecules corresponding to human genes such as those claimed [in the Myriad case], yet specifically chose to permit such patents to preserve "economic viability of the biotechnology industry."
The final portion of this Section is a description of the Guidance document itself, with examples from the guidance and PTO materials (PowerPoint presentations, etc.) issued by the Office to help examiners and the public to understand the guidance; the Report notes that "some attorneys felt [that these slides] made the situation more confusing."
Section II shows the results of the survey of PTO actions with regard to "product of nature" claims. The authors reviewed 5,200 applications filed "on or after" April 1, 2011 from about 1,500 "unique [patent] families." Of these, about 1,000 prosecution file histories were reviewed and about 35% of these contained subject matter-eligibility rejections based on Mayo and 23% contained such rejections based on Myriad. The Mayo-based rejections generally involved claims to "measurement of biologically-relevant (sic) molecules in a biological sample" that "will correlate with a definable aspect of patient care." Examples provided in the Report include the existence of a cell-surface marker on a tumor cell that "could identify a patient who would benefit from [a particular] treatment" and other measurements relating to "susceptibility to disease, abnormal genetic sequences, [and] concentrations of relevant metabolites." The bases for rejection is that claims to such methods rely on a "law of nature," based on Mayo. In order to overcome such a rejection an applicant must establish that the claims recite "something more" than the law of nature that is not "conventional or obvious." In the survey, the authors found that making the required showing was not a typical outcome. Using a hypothetical claim directed to a method for detecting a genotype associated with susceptibility to a drug (one of the bases for so-called "personalized medicine"), the Report states that "claims of this type are almost always rejected" on the grounds that the applicant has not supplied that ineluctable "something more" the PTO discerns is mandated by the Mayo decision. Examples of limiting amendments found sufficient to overcome these rejections are provided in this Section of the Report but, as noted by the authors, these "cures" are often worse than the purported "disease," because they involve introducing limitations that can raise validity (under Section 103 or 112) and enforcement (divided infringement) concerns.
With regard to rejections based on Myriad, as is clear from the Guidance, the Office has expanded the scope of Section 101-based rejections far beyond the borders of the Court's decision related to human genomic DNA. Under current Office practice, all "naturally occurring" compounds are presumptively patent-ineligible (in contrast to earlier PTO practice; elsewhere in the Report the authors note that the Office just recently issue its 50,000th "DNA-related patent"). The Report further notes that while many of the claims of these patents were invalidated by the Court's Myriad decision, the timing of the decision (well after the time of "relatively old" biotech patenting involving cloning genes encoding known proteins having particular desirable functions, such as erythropoietin and tissue plasminogen activator) made its effects (if cabined to genomic DNA) minimal and the effect on non-DNA biotechnology patents would be "minor or non-existent." But that isn't how the Office has applied the Myriad decision, and this policy decision impacts (negatively) the protection available to "proteins, antibodies and polypeptides" (sic), as well as "plants, bacteria and many bacterial compounds [such as antibiotics], and chemical and metallic compounds." While the Report focuses on the biotechnology industry, in principle the Office would find a claim to a purified component of crude oil useful as a lubricant to be patent-ineligible under its interpretation of the Myriad decision.
The Report also notes that combinations of naturally occurring compounds may also not be patentable even if the combination does not occur in nature (based, no doubt, on Funk Bros. v. Kalo Inoculants and the Office's gunpowder example, where the combination of charcoal, sulfur and saltpeter is not patent eligible as a mere combination). This subject matter encompassed by the Office's interpretation of the proper standards for patent eligibility is "vast," according to the Report and puts many if not almost all composition of matter claims claiming a "product of nature" at risk. In a series of "horror stories," the Report outlines the type of mischief eminently predictable from the Court's decision; in one, the Examiner refused to acknowledge any difference between a claim that encompassed isolated genomic DNA versus one limited to cDNA (in clear contradiction to the Court's instructions provided that the genomic DNA comprised even one intron), while in other cases kits were deemed not patent-eligible. On the other hand, trivial modifications to natural products, such as attaching a detectable label have been deemed enough to pass Section 101 muster. This Section ends with a Table comprising "thumbnail" analyses of the grounds of rejection in the file histories of patents containing Section 101 rejections based on Myriad or Mayo; these sketches contained several examples of claims otherwise allowable were later rejected under Section 101.
Section III contains "comments" from selected patent practitioners, the comments reflecting varying levels of disdain, disgust, despair, and dread over the Supreme Court decisions and how the Office has decided to implement them. These practitioners note several instances where the Office has applied these decisions to subject matter (such as methods for manufacture and methods of treatment) far outside the scope of the judicial exceptions to patent eligibility. Several of them note the practical consequences of the Office's actions, including protracted prosecution and appeal to the Patent Trial and Appeal Board (and, it must be contemplated, eventually to the Federal Circuit). Some practitioners note that individual examiners have shown "greater openness" and more "flexibility" than the guidances would suggest. One practitioner recalled the tendency for companies to "vote with their feet" over the Bush Administration's stem cell restrictions and relocate to "other jurisdictions" (i.e., abroad), taking those jobs and that innovation with them. There is also some justified grumbling about the subjectivity the current guidance introduces into the law and that the guidance (as do the Court's decisions) impermissibly "read out" the word "discoveries" from the statute. But at least one practitioner thought the problem would resolve itself, because what is now "state of the art" in biotechnology is no longer monoclonal antibodies and isolated nucleic acids but compounds that have been sufficiently modified that they should qualify even under the guidance's rigid standard.
Section IV contains a synopsis of the comments elicited by the Office in its April 16th Biotechnology/Chemical/Pharmaceutical Customer Partnership Meeting and its May 9th forum on the guidance.
The PTO's guidance to examiners based on the Myriad and Mayo decisions confirms a shrinking scope of patent-eligible subject matter relating to life sciences and biotechnology concerns. It also establishes a disparity in substantive patent law that moves patent examination in the PTO away from the standards that are accepted under the patent laws of virtually all major U.S. trading partners. Life sciences companies, facing the possibility that U.S. patent law will not allow them to recoup the millions of dollars and years of research spent on getting a life-changing therapy from lab to market, may be less likely to pursue innovative technology or may take it to other countries where the technology more easily could find patent protection.
The Supreme Court decisions and PTO guidance have prompted a re-look at the issues of Chakrabarty, reflecting decades of case law, regulatory decisions and scientific advances.
The PTO has acknowledged that more clarity is needed. It also may be that this reconsideration is a natural progression towards a new standard that appropriately promotes further investment in innovation.
It remains to be seen how future action in the PTO and litigation in the courts will alter the situation, or whether, as the U.S. Constitution provides, Congress will step in to further ''promote the progress of science and useful arts'' relating to valuable innovation in biotechnology and life sciences.
The Report provides important information for anyone thinking of submitting comments to the PTO or trying to overcome a Section 101 ground of rejection (but in truth it is more a case of "misery loves company" than any practical advice). It also is solid evidence that the Office has fatally overreached with this guidance, and as with the infamous "claims and continuation" rules needs to be challenged until the Office realizes how complicit it is being with the Supreme Court in negating the Constitutional mandate that the patent laws "promote the progress . . . of the useful arts."
Novartis Pharmaceuticals Corp. et al. v. Mylan Inc. et al.
Infringement of U.S. Patent Nos. 6,316,023 ("TTS Containing an Antioxidant," issued November 13, 2001) and 6,335,031 (same title, issued January 1, 2002) following a Paragraph IV certification as part of Mylan's filing of an ANDA to manufacture a generic version of Novartis' Exelon® Patch (rivastigmine tartrate, used to treat mild to moderate dementia of the Alzheimer's type, and mild to moderate dementia associated with Parkinson's disease). View the complaint here.
Allos Therapeutics Inc. et al. v. Teva Pharmaceuticals USA Inc. et al.
• Plaintiffs: Allos Therapeutics Inc.; Sloan-Kettering Institute for Cancer Research; Southern Research Institute; SRI International Inc.
• Defendants: Teva Pharmaceuticals USA Inc.; Sandoz Inc.; Fresenius Kabi USA LLC; Dr Reddy's Laboratories Ltd; Dr Reddy's Laboratories Inc.
Infringement of U.S. Patent Nos. 6,028,071 ("Purified Compositions of 10-propargyl-10-deazaaminopterin and Methods of Using Same in the Treatment of Tumors," issued February 22, 2000), 7,622,470 ("Treatment of T-cell Lymphoma Using 10-porpargyl-10-deazaaminopterin," issued November 24, 2009), and 8,200,078 (same title, issued October 30, 2012) following a Paragraph IV certification as part of defendants' filing of an ANDA to manufacture a generic version of Allos' Folotyn® (pralatrexate, used to treat patients with relapsed or refractory peripheral T-cell lymphoma). View the complaint here.
Infringement of U.S. Patent Nos. 7,879,828 ("Tigecycline Compositions and Methods of Preparation," issued February 1, 2011) and 8,372,995 ("Crystalline Solid Forms of Trigecycline and Methods of Preparing Same," issued February 12, 2013), licensed to Pfizer, following a Paragraph IV certification as part of CFT's filing of an ANDA to manufacture a generic version of Pfizer's Tygacil® (tigecycline injectible, used for the treatment of complicated skin and skin structure infections, complicated intra-abdominal infections, and community-acquired bacterial pneumonia). View the complaint here.
Janssen Pharmaceuticals, Inc. et al. v. Roxane Laboratiores, Inc.
• Defendant: Roxane Laboratiores, Inc.
Infringement of U.S. Patent Nos. RE39,593 ("1-Phenyl-3-Dimethylaminopropane Compounds With a Pharmacological Effects," issued April 24, 2007), 7,994,364 ("Crystalline Forms of (-)-(1R,2R)-3-(3-Dimethylamino-1-Ethyl-2-Methylpropyl)-Phenol Hydrochloride," issued August 9, 2011), and 8,536,130 (""Use of 1 Phenyl-3-Dimethylamino-Propane Compounds for Treating Neuropathic Pain," issued September 17, 2013), licensed to Janssen, following a Paragraph IV certification as part of Roxane's filing of an ANDA to manufacture a generic version of Janssen's Nucynta® (tapentadol hydrochloride, used for the management of moderate to severe acute pain in adults). View the complaint here.
Cephalon, Inc. v. Actavis Laboratories FL, Inc. et al.
• Defendants: Actavis Laboratories FL, Inc.; Actavis Inc.; Actavis Pharma, Inc.; Watson Laboratories, Inc.
Infringement of U.S. Patent Nos. 6,200,604 ("Sublingual Buccal Effervescent," issued March 13, 2001), 6,264,981 ("Oral Transmucosal Drug Dosage Using Solid Solution," issued July 24, 2001), and 8,119,158 ("Effervescent Oral Fentanyl Dosage Form and Methods of Administering Fentanyl," issued February 21, 2012) following a Paragraph IV certification as part of Actavis' filing of an ANDA to manufacture a generic version of Cephalon's Fentora® (fentanyl citrate buccal tablets, used to treat breakthrough pain in adult patients with cancer). View the complaint here.
Teva Women's Health, Inc. et al. v. Watson Laboratories, Inc. et al.
• Plaintiffs: Teva Women's Health, Inc.; Teva Branded Pharmaceutical Products R&D, Inc.
• Defendants: Watson Laboratories, Inc.; Actavis Pharma, Inc.; Actavis, Inc.
Infringement of U.S. Patent Nos. 8,415,332 ("Methods of Hormonal Treatment Utilizing Ascending-Dose Extended Cycle Regimens," issued April 9, 2013) and 8,450,299 (same title, issued May 28, 2013) following a Paragraph IV certification as part of Watson's filing of an ANDA to manufacture a generic version of Teva's Quartette® (levonorgestrel/ethinyl estradiol and ethinyl estradiol, used for oral contraception). View the complaint here.
July 20-22, 2014 - 2014 Annual Meeting & Conference (National Association of Patent Practitioners) - Alexandria, Virginia.
As we reported earlier this week, the period for submitting written comments to the U.S. Patent and Trademark Office regarding the Office's Myriad-Mayo guidance memorandum has been extended to July 31, 2014. The Office initially announced a soft deadline of the end of June for submitting written comments at its May 9th forum on the guidance memorandum (officially entitled "Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products"). On the USPTO webpage regarding the guidance, the Office noted that "[i]n response to several requests from our stakeholders for additional time to submit comments, the Office has extended the period for submission of public comments until July 31, 2014" (emphasis in original). At the 2014 BIO International Convention, which took place this week in San Diego, Drew Hirshfeld, USPTO Deputy Commissioner for Patent Examination Policy, and June Cohan, a Legal Advisor with the USPTO's Office of Patent Legal Administration, took part in a BIO session that provided some initial observations regarding the written comments that have been submitted to date. Patent Docs will provide a report on that session in our "Docs @ BIO" series, which continues next week.
Earlier today, BIO 2014 presented a session entitled "Navigating Patent Challenges Under the America Invents Act" during which the presenters analyzed the differences between patent challenges in Federal District Court and before the Patent Trial and Appeals Board ("PTAB"). The panelists that discussed this issue were Judge Dana Sabraw of the U.S. District Court for the Southern District of California; Lead Administrative Patent Judge Michael Tierney of the PTAB, Trial Section; and Cliff Ford, Executive Director and Senior Patent Counsel at Isis Pharmaceuticals, Inc. Meaghan Kent of Venable LLP moderated the event.
Ms. Kent began by providing some interesting statistics. As of June 18, 2014, there have been 1,542 Inter Partes Review ("IPR") petitions filed, and of those, 87 related to biotechnology and pharmaceutical patents. Even though this only represents 6% of the total, it is much more than anyone expected when the America Invents Act ("AIA") was passed. In addition, the statistics suggest that IPRs are becoming more popular every month. IPR petitions make up about 88% of all post-grant patent challenges, while the Transitional Program for Covered Business Method Patents ("CBM") constitutes about 12%. There have been no Post-Grant Review ("PGR") petitions to date, most likely due to the fact that they are only available to patents issuing from applications filed since March 16, 2013.
Judge Tierney then provided an overview of the IPR and PGR proceedings. As readers of this blog are likely aware, IPR petitions can only include challenges under 35 U.S.C. §§ 102 and 103, and be based only on patents, published applications, and printed publications. The legal standard for institution is a "reasonable likelihood" that the petitioner would prevail with respect to at least one of the claims. As Judge Tierney explained, if the decision maker is on the fence (50%), the case should be instituted. This is in contrast to the standard for PGR, which is "more likely than not" that at least one claim is unpatentable. This is a higher threshold, because if the decision maker is on the fence (50%), the proceeding should not be instituted. Instead, it is a greater than 50% standard. In addition, unlike IPRs, PGR challenges can be based on 35 U.S.C. §§ 101, 102, 103, and 112 (except for best mode), and the 102 and 103 references are not as limited as for IPRs. Judge Tierney noted that PGR might prove valuable for challenging biotechnology patents because of the section 112 issues that they can present.
Judge Tierney than answered a series of questions from the audience. One participant inquired whether the denial of a PGR petition would estop a challenger from filing an IPR. The simple answer was that if the review was not instituted, there would be no final written decision, and therefore estoppel would not apply. The next question dealt with whether the PTAB has ever proceeded to a hearing despite a settlement agreement by the parties. Judge Tierney explained that such a circumstance is rare, but it has happened in at least one CBM review in which the parties settled on the eve of the hearing. Interestingly, because of the settlement agreement, when the case went forward, the petitioner did not participate. Therefore, only the patent holder was present at the hearing. There was question whether the Board has every handled section 112 issues in IPR proceedings. Even though it is very rare, it has come up in the context of claim construction. For example, Judge Tierney described a case in which a district court had already determined that the claims did not satisfy 35 U.S.C. § 112, ¶ 6 because of a lack of structure in the specification. Even though that court's determination was not binding on the PTAB because of the different standards used by the two institutions, the PTAB also found it could not construe the claims, and therefore could not apply it to the prior art. Finally, someone asked if the Myriad guidelines would be controlling on the PTAB. Judge Tierney explained that the guidelines were just interpretations of case law, so they might be persuasive, but they would not be binding. Whereas those in attendance appeared to approve of this answer, it is unclear if it will be any solution to the problem. After all, eligibility challenges are not permitted in IPRs.
Judge Tierney next outlined the IPR proceeding. With regard to whether a patent owner should file a response before institution, he explained that there were reasons for either strategy. For example, if the patent owner didn't want to tip his hand, he might not want to file a response. On the other hand, if there were serious holes in a petitioners challenge, it might be beneficial to point this out to the Board. Judge Tierney also explained that the institution was on a claim by claim basis and that the PTAB was not required to institute the proceedings based on all ground found in the petition. Part of the reason is because of the short timeframe to resolution – one year. Someone in the audience asked whether there would be estoppel to the grounds not instituted. Judge Tierney admitted that this has not come up yet, but that it would probably be dealt with on a case-by-case basis. Judge Sabraw, however, indicated that district courts would probably apply the estoppel because the entire point of the IPRs is to streamline litigation, and therefore estoppel will likely be liberally applied. A discussion about whether the PTAB was a "death squad" followed. Judge Tierney stated that he believed that, even though initially the PTAB appeared pro-petitioner, things were getting better for the patent owner. For example, IPRs are being instituted less, and the patent owners are winning more often – 8 final written decisions have now left the patent unscathed.
The topic then switched to pending legislation. Judge Sabraw was asked about the 60-70% pass rate to grant motions to stay. He pointed out that in his approximately 10 years on the bench, these new proceedings are a "game changer." In determining whether the institute a stay, Judge Sabraw explained that district courts previously looked to three factors; whether it will streamline the issues in the case, the status of the case, and the prejudice to the parties. In the case of IPRs, he indicated that the streamlining factor was neutral, and required a prediction of whether the PTAB would alter the patent. As for the status of the case, Judge Sabraw pointed out that it was important to bring the petition early. If there has been no claim construction and minimal discovery, the chance of a stay would be significantly higher. With regard to the impact on the non-moving party, he pointed out that in the case of non-practicing entities ("NPEs"), there would generally be no real prejudice. Finally, Judge Sabraw explained that the AIA required a fourth factor when considering a stay – whether the stay will reduce the burden of litigation. This is always "yes," according to the judge, because the litigants will not need to proceed in two forums, and it will decrease the resources required by the district courts. On the subject of stays, Mr. Ford explained that defendants will almost always want a stay, because all of the focus for the next year will be on the validity of the patent, and not on infringement. He did, however, admit that there were cases in which the defendant might not want a stay, such as when inventorship was an issue, so that the notebooks of the patent owner might be desired, or when the accused infringer has deep pockets and wants to keep the pressure on the patent owner.
When asked which forum is better, Judge Sabraw acknowledged that the courts could improve, but that there were already signs that they were. For example, his court in San Diego strives to complete trial in 18 months. This includes streamlining discovery to avoid the proverbial "David and Goliath" effect. Also, the introduction of the patent pilot program and the proliferation of local patent rules were cited as a positive step by the judge. In response to the same question, Judge Tierney explained that the PTAB was meant to be an alternative to litigation. Even though the reports are currently only anecdotal, he believes that IPRs must be cheaper than litigation, and they certainly are timelier. Mr. Ford hypothesized that the accused infringer would almost always prefer the PTAB. This is because the preponderance standard is much easier to meet, and the use of the broadest reasonable interpretation for claim construction is advantageous. However, there are times where presenting the issues to a jury might be advantageous over the patent judges. The only real concern is the estoppel concern, but as Mr. Ford pointed out, it a petitioner loses at the PTAB, they were likely going to have lost at the district court also.
In making the case for who is better suited to review the validity of a patent, Judge Tierney pointed to the patent judges years of experience reviewing patents, which makes them well suited to make these determinations. Judge Sabraw acknowledged that district court judges were not specialists, but that they bring their own skills to bear on the issue. For example, even though trials may be longer and more expensive, both sides have an adequate opportunity to make their case. Also, federal judges are able to use the skills that they have obtained hearing the various cases that they do. Finally, when asked whether these new post-grant review proceedings were good for patents, Mr. Ford pointed out that they were meant to troll-busting provisions, and so they have been successful. However, it was the high tech sector that wanted these procedures, but the problem is that the biotech and pharmaceutical community is stuck with them now also.
The U.S. Patent and Trademark Office (USPTO) wasted no time providing guidance to its examining corps regarding the recent Supreme Court decision in Alice Corp. v. CLS Bank International. Just one week after the Justices struck down all of Alice's method, device, and system claims as being patent-ineligible under 35 U.S.C. § 101, the USPTO has published a memorandum with its preliminary examination instructions.
As an initial matter, the memorandum makes it clear that the decision "neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods." Instead, examiners are now to apply the framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., "to analyze all claims directed to laws of nature, natural phenomena, and abstract ideas for subject matter eligibility under 35 U.S.C. § 101."
This unifies the analysis in two ways. First, the same standard is applied to claims with abstract ideas and laws of nature. Previously, the former was evaluated under Bilski and the latter under Mayo. Second, the same standard is to be used for all statutory classes of claims, not just method claims. Before CLS Bank, it wasn't clear that the holdings of Bilski, Mayo, and their § 101 predecessors impacted more than just method claims.
• Mathematical relationships / formulas.
Claims that do not include such limitations should be rejected as being directed to non-statutory subject matter. Of note is that the USPTO does not address whether prior art should be used to establish that an abstract idea is "fundamental" or to determine that an addition limitation is more than routine or conventional.
This brief memorandum provides a glimpse of the immediate impact of CLS Bank in the USPTO -- applicants are likely to have software and business method claims scrutinized carefully in light of these guidelines. For applications already under examination, an applicant's options may be limited.
However, for new applications, the USPTO has provided something of a roadmap with which one can try to avoid CLS Bank rejections. To the extent possible, draft claims to avoid reciting any of the examples of abstract ideas given above. If that is not possible, include limitations that clearly demonstrate how the claimed invention improves a technological process, device or system. Doing so may result in more focused claims, but this approach may be necessary to avoid § 101 roadblocks during prosecution.
Cephalon Inc. v. Actavis Laboratories FL Inc. et al.
• Defendants: Actavis Laboratories FL Inc.; Actavis Inc.; Actavis Pharma Inc.; Watson Laboratories Inc.
Infringement of U.S. Patent Nos. 6,200,604 ("Sublingual Buccal Effervescent," issued March 13, 2001), 6,974,590 (same title, issued December 13, 2005), and 8,119,158 ("Effervescent Oral Fentanyl Dosage Form and Methods of Administering Fentanyl," issued February 21, 2012) following a Paragraph IV certification as part of Actavis’ filing of an ANDA to manufacture a generic version of Cephalon's Fentora® (fentanyl citrate buccal tablets, used to treat breakthrough pain in adult patients with cancer). View the complaint here.
Novartis AG et al. v. Glenmark Pharmaceuticals Ltd. et al.
• Plaintiffs: Novartis AG; Novartis Pharmaceuticals Corp.
• Defendants: Glenmark Pharmaceuticals Ltd.; Glenmark Generics Ltd.; Glenmark Generics Inc.
Infringement of U.S. Patent Nos. 6,025,391 ("Enteric-Coated Pharmaceutical Compositions of Mycophenolate," issued February 15, 2000), 6,172,107 ("Entric-Coated Pharmaceutical Compositions," issued January 9, 2001), and 6,306,900 (same title, issued October 23, 2001) following a Paragraph IV certification as part of Glenmark’s filing of an ANDA to manufacture a generic version of Novartis' Myfortic® (mycophenolate sodium, used for the prophylaxis or prevention of organ rejection in patients receiving allogeneic renal transplants, administered in combination with cyclosporine and corticosteroids). View the complaint here.
Infringement of U.S. Patent No. 5,691,336 ("Morpholine Compounds Are Prodrugs Useful As Tachykinin Receptor Antagonists," issued November 25, 1997) following a Paragraph IV certification as part of Fresenius’ filing of an ANDA to manufacture a generic version of Merck's Emend® (fosaprepitant dimeglumine for injection, used in the prevention of acute and delayed nausea and vomiting associated with initial and repeat courses of highly emetogenic cancer chemotherapy including high-dose cisplatin, and to prevent nausea and vomiting associated with initial and repeat courses of moderately emetogenic cancer chemotherapy). View the complaint here.
Amarin Pharma, Inc. et al. v. Andrx Labs, LLC et al.
• Plaintiffs: Amarin Pharma, Inc.; Amarin Pharmaceuticals Ireland Ltd.
• Defendants: Andrx Labs, LLC; Andrx Corporation; Actavis, Inc.
Infringement of U.S. Patent Nos. 8,293,728 ("Methods of Treating Hypertriglyceridemia," issued October 23, 2012), 8,318,715 (same title, issued November 27, 2012), 8,357,677 (same title, issued January 22, 2013), 8,367,652 (same title, issued February 5, 2013), 8,377,920 (same title, issued February 19, 2013), 8,399,446 (same title, issued March 19, 2013), 8,415,335 (same title, issued April 9, 2013), 8,426,399 (same title, issued April 23, 2013), 8,431,560 (same title, issued April 30, 2013), 8,440,650 (same title, issued May 14, 2013), 8,501,225 ("Stable Pharmaceutical Composition and Methods of Using Same," issued August 6, 2013), 8,518,929 ("Methods of Treating Hypertriglyceridemia," issued August 27, 2013), 8,524,698 (same title, issued September 3, 2013), 8,546,372 (same title, issued October 1, 2013), 8,551,521 ("Stable Pharmaceutical Composition and Methods of Using Same," issued October 8, 2013), and 8,617,594 (same title, issued December 31, 2013) following a Paragraph IV certification as part of Andrx’s filing of an ANDA to manufacture a generic version of Amarin's Vascepa® (icosapent ethyl, used as an adjunct to diet to reduce triglyceride levels in adult patients with severe hypertriglyceridemia). View the complaint here.
Spectrum Pharmaceuticals, Inc. et al. v. Ben Venue Laboratories, Inc.
• Defendant: Ben Venue Laboratories, Inc.
Infringement of U.S. Patent No. 6,500,829 ("Substantially Pure Diastereoisomers of Tetrahydrofolate Derivatives," issued December 31, 2002) following a Paragraph IV certification as part of Ben Venue’s filing of an ANDA to manufacture a generic version of Spectrum's Fusilev® (levoleucovorin, used to treat advanced metastatic colorectal cancer). View the complaint here.
Vanda Pharmaceuticals Inc. v. Roxane Laboratories Inc.
Infringement of U.S. Patent No. 8,586,610 (“Methods for the Administration of Iloperidone,” issued November 19, 2013) in conjunction with Roxane's filing of an ANDA to manufacture a generic version of Novartis' Fanapt® (iloperidone, used for the acute treatment of adults with schizophrenia). View the complaint here.
ALZA Corp. et al. v. Sandoz Inc.
• Plaintiffs: ALZA Corp.; Janssen Pharmaceuticals Inc.
The complaints in these cases are substantially identical. Infringement of U.S. Patent Nos. 8,163,798 ("Methods and Devices for Providing Prolonged Drug Therapy," issued April 24, 2012) 8,629,179 (same title, issued January 14, 2014) following a Paragraph IV certification as part of Sandoz’s filing of an ANDA to manufacture a generic version of Alza's Concerta® (methylphenidate hydrochloride, used to treat attention deficit hyperactivity disorder). View the Delaware complaint here.
Infringement of U.S. Patent Nos. 5,709,999 ("Linked Breast and Ovarian Cancer Susceptibility Gene," issued January 20, 1998), 5,747,282 ("17Q-Linked Breast and Ovarian Cancer Susceptibility Gene," issued May 5, 1998), 5,753,441 (same title, issued May 19, 1998), 5,837,492 ("Chromosome 13-Linked Breast Cancer Susceptibility Gene," issued November 17, 1998), 6,033,857 (same title, issued March 7, 2000), 6,051,379 ("Cancer susceptibility mutations of BRCA2," issued April 18, 2000), 6,951,721 ("Method for determining the haplotype of a human BRCA1 gene," issued October 5, 2005), 7,250,497 ("Large deletions in human BRCA1 gene and use thereof," issued July 31, 2007), 7,470,510 ("Methods for Diagnosing Cancer and Determining a Susceptibility for Developing Cancer," issued December 30, 2008), 7,622,258 ("Screening Methods and Sequences Relating Thereto," issued November 24, 2009), 7,838,237 (same title, issued November 23, 2010), 7,670,776 ("MYH Gene Variants and Use Thereof," issued March 2, 2010), 7,563,571 (same title, issued July 21, 2009), based on Pathway Genomic’s manufacture, sale, and offer for sale of its BRCATrue and ColoTrue products and services. View the complaint here.
Infringement of U.S. Patent Nos. 5,747,282 ("17Q-Linked Breast and Ovarian Cancer Susceptibility Gene," issued May 5, 1998), 5,753,441 (same title, issued May 19, 1998), 6,033,857(same title, issued March 7, 2000), 6,051,379 ("Cancer susceptibility mutations of BRCA2," issued April 18, 2000), 6,951,721 ("Method for determining the haplotype of a human BRCA1 gene," issued October 5, 2005), and 7,250,497 ("Large deletions in human BRCA1 gene and use thereof," issued July 31, 2007) based on Counsyl’s Inherited Cancer Screen, Inherited Cancer Screen, Counsyl Inherited Jewish Screen, Comprehensive BRCA Test, and BRCA1/2 Sequencing Test offerings. View the complaint here.
Vivus, Inc. v. Actavis Laboratories FL, Inc. et al.
Infringement of U.S. Patent Nos. 7,056,890 (“Combination Therapy for Effecting Weight Loss and Treating Obesity, issued June 6, 2006), 7,553,818 (same title, issued June 30, 2009), 7,659,256 (same title, issued February 9, 2010), 7,674,776 (same title, issued March 9, 2010), 8,580,298 (“Low Dose Topiramate/Phentermine Composition and Methods of Use Thereof,” issued November 12, 2013), and 8,580,299 (“Escalating Dosing Regimen for Effecting Weight Loss and Treating Obesity,” issued November 12, 2013) following a Paragraph IV certification as part of Actavis’ filing of an ANDA to manufacture a generic version of Vivus’ Qsymia® (phentermine and topiramate extended-release capsules, used as an adjunct to a reduced-calorie diet and increased physical activity for chronic weight management). View the complaint here.
The 2014 BIO International Convention has already begun in San Diego, but most of the sessions and forums get underway beginning on Tuesday, June 24, 2014. Patent Docs has been highlighting a few sessions or other opportunities, in thematic fashion, to help you navigate your way through the convention. For example, today, we focus on issues surrounding post-grant challenges of patents, both in the U.S. and Europe, and on the issues surrounding the regulatory approval of biosimilars. Of course, Patent Docs authors and contributors will be present at BIO as part of the MBHB contingent, and Patent Docs readers are encouraged to stop by the MBHB booth to discuss these sessions (or whatever other topic is of interest to you) (#1337).
Today we highlight two distinct topics that may be of interest to readers of this blog. The first involves the ability to challenge issued patents at the U.S. Patent Office or EPO instead of in the court system. Many detractors of the U.S. patent system have blamed the Patent Office for issuing too many vague or allegedly invalid patents. The AIA set up new and improved mechanisms allowing potential or alleged infringers to request another look by the Office. Of course, EPO has already had a lot of experience with opposition proceedings. A couple of panels will look at the challenges and considerations involving these mechanisms. The second topic does not necessarily implicate intellectual property, but patent attorneys are certainly paying close attention to regulatory approval pathways for biosimilars. All eyes have been focused on the FDA, but so far the mechanisms established for the approval of biosimiars have not been sufficiently utilized. It is therefore useful to look at the scientific and regulatory issues faced by countries outside the U.S.
With regard to post-grant challenges, we first note that Donald Zuhn of Patent Docs fame will be moderating a panel on opposition proceedings at the European Patent Office on Wednesday, June 25, at 4:15 PM to 5:15 PM. The title of this session is "'Chairman, That Patent Should be Revoked!' -- Join the EPO Opposition Mock Workshop and Help Argue the Case." As the name suggests, representatives of the EPO are scheduled to conduct a realistic opposition proceeding to decide the fate of a contested illustrative patent. Both the proprietor and defendant will be represented by European patent attorneys, but attendees are invited to join either party and help debate the case. The session promises to elucidate how opposition proceedings are conducted within the EPO, explore how the validity of patents are determined, and compare the differences with comparable proceedings in the U.S. The speakers for this session are Siobhán Yeats, Director of Biotechnology at the European Patent Office; Reuben Jacob, partner at RGC Jenkins & Co.; and Aylsa Williams, Partner at D Young & Co LLP.
In addition to hearing the comparisons between the EPO and US systems in the previous session, attendees will also be able to hear an in-depth presentation on post-issuance challenges at the United States Patent Office. On Wednesday, June 25, at 10:15 AM to 11:30 AM, the Intellectual Property track will be feature "Navigating Patent Challenges Under the America Invents Act." Biotechnology and pharmaceutical companies are not immune to such challenges, so it is important to understand the intricacies of these relevantly new procedures. Moreover, the Federal Circuit's Fresenius v. Baxter International decision has made the timing of such a challenge an important consideration. Of course, which process is used and how it is defended can affect not only whether suitable patent protection can be maintained, but can limit or expand defenses available either in court or at the Office. This session will assess the risks and benefits associated with the available actions for challenging patent validity at the Office, in the courts, and at the International Trade Commission. The speakers for this session will be Lead Administrative Patent Judge Michael Tierney, Patent Trial and Appeal Board; Judge Dana Sabraw, U.S. District Court for the Southern District of California; and Cliff Ford, Executive Director and Senior Patent Counsel at Isis Pharmaceuticals, Inc. The session will be moderated by Meaghan Kent from Venable LLP.
With regard to the two sessions we are highlighting with regard to the regulation of biosimilars, unfortunately their times overlap (likely because they are in different tracks/forums). First, the Regulatory Review & Approval track will present "Ensuring the Safety and Commercial Success of Biosimilars in the United States" on Tuesday at 1:45 PM to 2:45 PM. The description of the session notes that there is a debate over what approach the FDA and the industry should take to ensure patient safety on one hand, and promoting market competition and continued biomedical innovation on the other. The session promises to explore several critical issues related to safety, naming and traceability, substitution, product drift, and comparability and similarity. There will be a focus on the lessons learned from Europe in the launch of the new class of biosimilar monoclonal antibodies. With regard to issues of naming products, the "unknown" differences between an approved treatment with known process histories and a new product being studied for biosimilarity will be discussed. The speakers for the session are Marcia Horn, President and CEO of ICAN (the International Cancer Advocacy Network), Phillip Schneider, Associate Dean and Professor at the University of Arizona College of Pharmacy; and Robert Yapundich, Board Certified Neurologist with the Neurology Associates, P.A.
At about the same (1:30 PM to 3:30 PM on June 24), the Emerging Opportunities in Global Markets Forum will present "Biosimilars Regulations: A Perspective from Influential Global Regulators." This session will feature regulatory agency officials from around the globe to discuss both scientific and regulatory issues for biosimilars, especially with regard to the WHO draft guidelines. For example, the discussion of approval requirements will address clinical trials, extrapolation of data, and immunogenicity, among other topics. The session promises to also address issues surrounding naming, labeling, and pharmacovigilance. The panel will include Lic. Mikel Arriola, Commissioner at COFEPRIS; and Dirceu Barbano, President of ANVISA; and will be moderated by Christian Lopez-Silva, Partner with Baker & McKenzie, S.C. in Mexico.
We look forward to seeing you at BIO 2014!
The 2014 BIO International Convention begins this week in San Diego. If you are planning on attending, you probably already know that the amount of information and opportunities available at BIO can be daunting. Therefore, Patent Docs has been highlighting a few sessions or other opportunities, in thematic fashion, to help you navigate your way through the convention. For example, today, we focus on presentations by influential leaders in the Intellectual Property Community. Of course, Patent Docs authors and contributors will be present at BIO as part of the MBHB contingent, and Patent Docs readers are encouraged to stop by the MBHB booth to discuss these sessions (or whatever other topic is of interest to you) (#1337).
In the United States, two of the entities that have the most impact on U.S. patent practice are the United States Patent and Trademark Office and the United States Court of Appeals for the Federal Circuit. And, on the global scale, it can be argued that no organization has more impact on international patent practice than the World Intellectual Property Organization ("WIPO"). Impressively, BIO will feature at least three current or recent leaders of these three organizations. Therefore, attendees will be able to gain insight from the individuals that play (or have played) a major role in each of these three organizations.
First on our list, Judge Randall R. Rader of the Federal Circuit will be providing his view from the bench on recent developments in biotech patent law in the courts and in Congress. This session will be on Wednesday, June 25, from 8:30 AM to 9:00 AM for the Intellectual Property track. Judge Rader recently stepped down from his position as Chief Judge, and was succeeded by now Chief Judge Sharon Prost. Moreover, five days after his presentation at BIO, on June 30, Judge Rader will be retiring from the court. The title of his presentation is aptly named "Welcome and Farewell -- Judge Randall R. Rader." Judge Rader has also been outspoken on the issue of using § 285 fee-shifting as a mechanism for federal courts to combat patent trolls. It will be interesting to see what he has to say on the recent legislative efforts aimed at the same goal. Along those lines, there will be a separate session later that day at 1:45 PM to 2:45 PM on these Congressional efforts. The title of that session will be "As if AIA Hasn't Brought Enough Change -- Patent Litigation Reform is Looming in the US."
Next up, literally, Acting Director Michelle Lee will participate in a session immediately following Judge Rader, from 9:00 AM to 10:00 AM, June 25, entitled "View from the USPTO -- Address by Acting Director Michelle Lee and Discussion of the Myriad-Mayo Guidelines." Anyone following this blog knows how controversial those guidelines have been, so it will be interesting to hear the perspective of the acting director herself on the issue. With her will be two additional representatives from the patent office, June Cohan, Legal Advisor, and Andrew Hirshfeld, Deputy Commissioner for Patent Examination Policy. They promise to provide the latest thinking on the examination guidelines, and take questions and feedback from the audience. The period for submitting comments to the Office on these guidelines is still open, and in fact has been extended to July 31, 2014. Those attendees interested in this topic might also be interested in the session "Patent Eligibility from the Trenches: Practical Implications of the Supreme Court's Mayo and Myriad Decisions" on June 25, from 3:00 PM to 4:00 PM. The panel for this session includes former Acting Director of the USPTO Teresa Stanek Rea.
Finally (or should we say initially?), Director General Francis Gurry of WIPO will be kicking off the Intellectual Property track on Tuesday, June 24, from 2:15 PM to 2:45 PM. The Director General will be discussing WIPO activities and their impact on the biotechnology sector. Just last month, the member states of WIPO appointed Director General Gurry by consensus to a second six-year term of office. Immediately preceding this presentation, there will be an Intellectual Property Meetup in the "IP Social Spot" from 1:30 PM to 2:15 PM. This Meetup will provide intellectual property professionals to mingle and kick-off the track.
The Biotechnology Industry Organization (BIO) is holding its annual BIO International Convention this week in San Diego, CA. Founded in 1993, BIO is a nonprofit association seeking supportive biotechnology policies on behalf of more than 1,100 biotechnology companies, academic institutions, state biotechnology centers, and related organizations across the United States and in more than 30 other nations.
As part of the Convention, more than 1,700 biotech companies, organizations, and institutions are expected to participate in the BIO Exhibition. Patent Docs Donald Zuhn, Kevin Noonan, Andrew Williams, Sherri Oslick, Michael Greenfield, Josh Bosman, Josh Rich, James DeGiulio, and Nate Chongsiriwatana will also be attending BIO as part of the MBHB contingent, and will be participating in BIO's blogger network throughout the week. Patent Docs readers who may be attending BIO this week are encouraged to stop by booth #1337 to meet the Docs, at the times indicated below, and talk a little biotech patent law.
In addition, most of the Docs will be attending the MBHB reception at Dublin Square Irish Pub & Grill in San Diego's downtown Gaslamp Quarter on Tuesday, June 24 from 8:00 pm to 1:00 am. Additional information about the reception, including invitations for the event, can be picked up at the MBHB booth on Tuesday.
June 27, 2014 - "Navigating the Patent Trial and Appeal Board Post-Grant Minefield" (American Bar Association Section of Intellectual Property Law) - 1:00 to 2:30 pm (ET).
• Why so many petitions are being bounced?
• What the PTAB looks for in a complete rejection?
• Getting the PTAB to change their mind after institution.
The registration fee for the webcast is $150 for members and $195 for the general public. Those interested in registering for the webinar, can do so here.
There's an old saying that "bad facts make bad law," acknowledging that a court's decision regarding an extreme case can result in law that poorly serves less extreme cases. The Supreme Court's recent trio of 35 U.S.C. § 101 decisions, Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories, Inc., and today's unanimous Alice Corp. v. CLS Bank Int'l each involved claims that were probably too broad for their own good. But instead of directly challenging the novelty or non-obviousness of these claims, the patent-eligibility of the claims were the core of the respective disputes. As a result, the lines between §§ 101, 102, and 103 have become blurred, and the Court still hasn't clarified what makes a claim too abstract to be patent-eligible despite using this doctrine to strike down claims in all three cases. Thus, the impact of CLS Bank on less extreme cases -- those with more focused claims for instance -- remains to be seen.
As noted in an earlier overview article by Kevin Noonan, the Court did not bar software or business method patents per se. This case, however, continues the trend of two other patent cases decided this term, Limelight Networks, Inc. v. Akamai Technologies, Inc. and Nautilus, Inc. v. Biosig Instruments, Inc., in which the Court has placed further limits on the scope of patent protection. Consequently, the Court has introduced new avenues for challenging the validity of patents.
The following is a collection of initial thoughts regarding the CLS Bank decision and its impact on software and business method practice.
• The Court declined to clearly define the term "abstract idea." It stated that "we need not labor to delimit the precise contours of the 'abstract ideas' category in this case." Instead, the Justices relied on the conceptual similarity between Alice's claims and those found patent-ineligible in Bilski. Alice argued that abstract ideas must exist apart from any human interaction (e.g., an equation would be an abstract idea, but a process involving human activity would not). The Court would hear nothing of this, couching the abstract claims of Bilski as "a method of organizing human activity."
• In Bilski, the Court held that "while the machine-or-transformation test has always been a 'useful and important clue,' it has never been the 'sole test' for determining patentability." In this case, Alice's computer-readable media and system claims were struck down under § 101, despite reciting general-purpose computer components. Thus, it appears that to pass the machine-or-transformation test, claims must be tied to a particular machine and not just a generic computer.
• To that point, the Court has taken a rather dim view of the ability of general purpose computing to lift an otherwise abstract idea above the § 101 bar. For instance, the Court stated that "method claims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent-eligible invention," "[t]he fact that a computer necessarily exist[s] in the physical, rather than purely conceptual, realm is beside the point," "each step [of Alice's claims] does no more than require a generic computer to perform generic computer functions," and "nearly every computer will include a 'communications controller' and 'data storage unit' capable of performing the basic calculation, storage, and transmission functions required by the method claims." It is now abundantly clear that recitation of generic computer structure will not save a claim that is drawn to an abstract idea.
• 1980's Diamond v. Diehr noted that "[t]he question therefore of whether a particular invention is novel is wholly apart from whether the invention falls into a category of statutory subject matter." After today, it appears as if novelty (or lack thereof) can play a major role in determining whether claims are statutory under § 101. In finding Alice's claims drawn to the abstract idea of "intermediated settlement," the Court cited several references (some of which might not qualify as prior art under §§ 102 or 103) to establish that such undertakings were "fundamental economic practice long prevalent in our system of commerce." Similarly, when considering the impact of the recited (or stipulated) computer implementation, the Court stated that "all of these computer functions are well-understood, routine, conventional activities previously known to the industry."
• Justice Breyer's two step test for § 101 worthiness introduced in Mayo was thought by some to be an aberration or a temporary departure from the Court's previous holdings. Others criticized it as being subjective and too difficult to apply in practice -- the test certainly divided the Federal Circuit judges. With the Justices relying on the test, it is now evident that the Mayo framework was no passing fad.
• The first prong of the Mayo test is to "identify the abstract idea represented in the claim." In doing so, the Court did not focus on the language of the claims, but instead focused on a summary of the claimed invention. But almost any invention can be made to look abstract or conventional through summarization, or by downplaying certain aspects of the claim.
• The second prong of the Mayo test is to determine whether a claim directed to an abstract idea recites "an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself." But we have little guidance as to what "significantly more" entails. In the last 40 years, the only example of a claim meeting the § 101 bar in the Supreme Court is that of Diehr.
• The Court seems to use the word "technological" as something of a synonym for "physical." Thus, novel and non-obvious algorithmic improvements might not be patent-eligible unless they are integrated somehow with a physical process. For instance, the Court wrote that "the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer." This fixation on physicality may demonstrate an underlying predisposition against software, which is technology that operates in a mostly unseen fashion.
Alice's claims could have, and probably should have, been attacked as being anticipated or obvious. After all, this decision relies on the existence of prior art that could have been used for such a purpose. Instead, the Court has fully opened the § 101 Pandora's Box that it peeked into with Mayo.
This morning, in Alice Corp. v. CLS Bank, the Supreme affirmed the Federal Circuit's per curiam opinion in CLS Bank v. Alice Corp. in a unanimous opinion by Justice Thomas with a concurring opinion by Justice Sotomayor joined by Justices Breyer and Ginsberg. The decision appears to be an incremental one, insofar as it does not strike down all software patents and is crafted as an application of the Court's earlier precedent, particularly Bilski v. Kappos and Mayo Collaborative Serv. v. Prometheus Labs.
We have "repeatedly emphasized this . . . concern that patent law not inhibit further discovery by improperly tying up the future use of " these building blocks of human ingenuity" [quoting O'Reilly v. Morse as cited in Mayo]. "At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law" because "[a]t some level, "all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas" [citing Mayo].
Accordingly, in applying the §101 exception, we must distinguish between patents that claim the "'buildin[g] block[s]'" of human ingenuity and those that integrate the building blocks into something more, thereby "transform[ing]" them into a patent-eligible invention. The former "would risk disproportionately tying up the use of the underlying" ideas and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws" [citing liberally from the Mayo opinion].
First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, "[w]hat else is there in the claims before us?" To answer that question, we consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application. We have described step two of this analysis as a search for an " 'inventive concept'" -- i.e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."
The Court also considers its jurisprudence from Gottschalk v. Benson, through Parker v. Flook, Bilski and to Mayo to be consistent in both the underlying principles and how the analysis should be done. The opinion distinguishes its seemingly contrary decision in Diamond v. Diehr in a way that may be useful in making decisions regarding what is patent-eligible subject matter (and how it should be claimed): "In other words, the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer" (emphasis added). And, in a footnote, the Court declares that its Mayo analysis is consistent with the patent law principle that the claims should be considered as a whole because the Mayo decision instructs a court to consider the elements of the claim at issue both individually and as a whole.
The Court's opinion expressly ties its decision here to the decision in Bilski, based on the perceived similarity between attempts in each case to preempt a preexisting human activity (hedging in Bislki, intermediated settlement here) as being abstract ideas (and once again conflating Section 101 with Sections 102 and 103), the Court stating that "[i]t is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of 'abstract ideas' as we have used that term." And after a brief discussion of the Court's understanding of how a conventional general purpose computer works, the Court opines that how the computer implements the claimed (and ineligible) method is not "enough" to render the system claims patent eligible because said implementation is entirely conventional.
The method claims do not, for example, purport to improve the functioning of the computer itself. ("There is no specific or limiting recitation of . . . improved computer technology . . . "); Brief for United States as Amicus Curiae 28–30. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to "nothing significantly more" than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer. Under our precedents, that is not "enough" to transform an abstract idea into a patent-eligible invention [citations omitted].
Put another way, the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long "warn[ed] . . . against" interpreting §101 in ways that make patent eligibility 'depend simply on the draftsman's art.'"
The Court's decision is entirely consistent with its disinclination to enunciate broad proscriptions against patenting particular areas of technology, as evidenced by its decisions in Bilski (which did not rule all business method claims to be patent-ineligible), Association for Molecular Pathologists v. Myriad Genetics (which was limited to rendering genomic DNA patent-ineligible but did not disturb patent-eligibility for cDNA, and contained express proscriptions against reading the decision to encompass methods or other applications of the knowledge of the BRCA genes, despite the PTO's recent Guidelines that appear to ignore these proscriptions) and even Bowman v. Monsanto, which cautioned against interpreting the Court's decision in that case to apply to all "self-replicating technologies."
Justice Sotomayor's concurring opinion is brief and to the effect that the Justice believes business method patents to be patent ineligible per se because they do not fall within the ambit of a "process" under the Patent Act. Justices Breyer and Ginsberg join her here, as they did in Justice Stevens' concurring opinion in Bilski. The other Justices apparently are not yet ready to make all business method claims ineligible for patenting, provided that they satisfy the rule reiterated here that there must be something that improves existing technology or otherwise does not merely adapt methods for controlling human activity for implementation by a computer.


text:
Chicago Bulls V. Utah Jazz presale passwords are used during this American Express presale - so that if you have the correct and working presale password you can access a special block of american express tickets before the general public.
With a working Chicago Bulls V. Utah Jazz American Express presale code you have a great chance to skip the line and buy your own Chicago Bulls V. Utah Jazz tickets before the public gets a chance to buy tickets during the on-sale.
Use the Chicago Bulls V. Utah Jazz presale password to see Chicago Bulls V. Utah Jazz perform live in Chicago, IL!
Looking for another venue or date? Find more Chicago Bulls V. Utah Jazz presale passwords here.

matches: V. V. V. V. V. V.


text:
Complainant is Cinemark USA, Inc. of Plano, Texas, United States of America (“U.S.”), represented by Mitrani, Caballero, Rosso Alba, Francia, Ojam & Ruiz Moreno Abogados, Argentina.
Respondent is PERBANY SA of Montevideo, Uruguay.
The disputed domain name <cinemaki.com> is registered with GoDaddy.com, Inc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2011. On November 21, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2011.
The Center appointed Ross Carson as the sole panelist in this matter on December 28, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a motion picture exhibitor with theaters in the U.S., United Kingdom (“U.K.”), Brazil, Mexico, Chile, Columbia, Argentina, Peru, Ecuador, Honduras, El Salvador, Nicaragua, Costa Rica, Panama and Guatemala and Taiwan Province of China. Twenty three percent of its screens are in Latin America.
Complainant is the second largest film exhibitor in the Americas with 430 theaters and 4,945 screens. In terms of attendance, Complainant is the leader in film attendance in the Americas with over 241.2 million persons attending its theaters in 2010.
According to Motion Picture Association of America, total international box office revenues in the Americas for film exhibition was USD 21.2 billion in the year ending December 31, 2010. According to Complainant’s financial statements Complainant’s international box office revenues in the Americas was USD 2.1 billion for the financial period ending December 31, 2010.
Motion Pictures Association of America statistics show that Latin America film exhibitors box office revenues for the period ending December 31, 2010 were USD 2.1 billion. Complainant’s revenues from motion picture exhibitions in Latin America in the same period was USD 564.2 million or 26% of Complainant’s total revenue in 2010. Complainant’s percentage of box office revenues of film exhibitors in Latin America for the year ending December 31, 2010 was 22.2 % of the total Latin America film exhibitors’ revenue.
Complainant is the registered owner of the trademark CINEMARK in Argentina, Registration No. 2007161 registered March 2, 2005; Brazil, Registration No. 822122685 registered March 30, 2004; Chile, Registration No. 672902 registered September 9, 2003; Colombia, Registration No. 225783 registered December 22, 1999; Peru, Registration No. 3879 registered March 28, 1995 and renewed on January 18, 2005; U.K., Registration No. 2178371 registered July 2, 1999 and renewed on December 9, 2008; U.S., Registration No. 1660126 registered October 8, 1991 and renewed on October 21, 2010. The trademark registrations for the trademark CINEMARK listed above are the earliest dated registrations for CINEMARK owned by Complainant who also owns numerous other trademark registrations for or including CINEMARK in most of the above noted countries. The CINEMARK trademarks are registered in relation to movie theater services in International Class 41 among other goods and services.
Complainant is also the registrant of numerous domain names incorporating CINEMARK including: <cinemark.com> registered July 12, 1995; <cinemark.com.ar> registered November 9, 2009; <cinemark.com.br> registered June 18, 1997; <cinemark.cl> registered March 10, 2008; <cinemark.com.co> registered December 4, 2001; <cinemark.ec> registered June 3, 1999; and <cinemark.com.mx> registered September 30, 1998.
Respondent is a company based in Montevideo, Uruguay, which owns a range of movie related websites. The websites display the titles and material relating to current leading films being shown in various Latin American countries, the cities in which the films are being shown, the theaters in the cities which are showing the films and the times that the shows commence during the days and evenings. The websites include additional material concerning actors appearing in the films, etc. The disputed domain name was registered on March 31, 2008.
Complainant states that it is the owner of the renowned trademark CINEMARK registered and applied for in twenty territories around the world. Moreover aside from its registered trademarks Complainant is the owner of the <cinemark.com> domain name registration. Complainant states that it owns several other Top Level domains which contain its trademark CINEMARK. Particulars of some of Complainant’s registered trademarks and domain names for or including its registered trademark CINEMARK are set out in Section 4 above.
Complainant submits that the disputed domain name <cinemaki.com> is almost identical to Complainant’s trademark CINEMARK and is therefore confusingly similar thereto.
Complainant submits that (i) the initial and central parts of the disputed domain name are identical; (ii) both have the same number of letters; (iii) the only difference between them is their respective ends (“Ki” and “rK”) that have the same strong and distinctive letter “K” on them and only one different letter (“i” and “r”) which is not enough to have rights over it and certainly not enough to avoid confusion in consumers. See, Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441, (“A domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”).
Complainant submits that the following rules for trademark comparison apply: (i) the confusion results from the first-sight impression as a whole impression arising out of the trademarks; (ii) whoever examines the resemblance must undertake to stand in the place of the potential consumer and take into account the nature of the products or services involved; and finally (iii) existing similarities, but not differences between the trademarks must be taken into account.
Complainant submits that in this case the three rules apply as follows: (i) at first-sight impression the disputed domain name <cinemaki.com> is almost identical and therefore confusingly similar to Complainant’s trademark CINEMARK; (ii) by standing in the place of the potential consumer of products and services related to movie industry it is easy to understand the confusion in consumers; and finally (iii) there are more similarities than differences in this case and the only and insignificant difference is their respective ends (“Ki” and “rK”) that have the same strong and distinctive letter “K” in them and only one different letter (“i” and “r”).
Complainant further submits that Respondent has registered a domain name that is visually and phonetically similar to Complainant’s trademark. There is no reason why Respondent would choose a domain name so similar to Complainant’s trademark for a site which offers services similar to Complainant except to attract customers to Respondent’s site through potential confusion.
Complainant states that it does not have any relationship or association with Respondent and neither their former nor its subsidiary or affiliated companies have ever authorized Respondent nor otherwise given permission to apply for or use any domain name confusingly similar to Complainant’s trademark CINEMARK. Thus any use Respondent might put of any of confusingly similar term is illegitimate and infringes Complainant’s intellectual property rights and particularly Complainant’s trademarks.
Complainant further submits that the disputed domain name is used in the same field as Complainant’s trademarks and trade name (the movie industry) which were used registered and had become well known a long time before the registration of the disputed domain name.
Complainant states that the disputed domain name has been recently created on March 31, 2008, while the first use of Complainant’s trademarks and trade name CINEMARK began back in 1984. Complainant states that its trademark CINEMARK is indeed famous and Respondent knew of Complainant’s trademark at the time it registered the disputed domain name. Matias Alejo Garcia cofounder and CEO of Respondent and technical and administrative contact of the disputed domain name is Argentine. This year Complainant acquired ten theaters in Argentina representing 95 screens from Hoyts General Cinema South America Inc. Complainant is focused on strengthening its position in Latin America through acquisitions and organic growth. The theaters that Complainant acquired are primarily located in the greater Buenos Aires area among others. With this acquisition Complainant increased its presence in Argentina where cinema has such a rich tradition. Complainant has been successfully operating in Latin America since 1993 and this acquisition has raised its screen total in the region to more than 1250 screens. It is clear that Respondent knew about Complainant’s trademark when it registered the disputed domain name showing an explicit bad faith pattern of behavior.
Complainant states that Respondent registered and is using the disputed domain name in bad faith. This is shown by the election of the name which is confusingly similar to Complainant’s trademarks and by its use in the same field as Complainant’s trademarks, being aware of its existence and similarity. Out of all of the potential derivations of letters Respondent could have chosen to create its domain name it chose one so similar to Complainant’s trademark that it cannot be inferred without benefit of explanation that it has a valid right or legitimate interest in the disputed domain name. By choosing and using the disputed domain name, Respondent is using Complainant’s reputation prestige and the power to be known by millions of consumers. These qualities have been reached by Complainant with years of investment and hard work. Respondent could have chosen another term but in that case it should have acquired said reputation prestige and power by itself with years of investment and hard work; it is much easier to appropriate someone else’s. Moreover, it is not a coincidence that Respondent is using this term Cinemaki in all countries where Complainant has theaters and screens on, and except for Venezuela, Respondent is not using the term in countries in which Complainant does not have businesses. It is clear that Respondent’s intention is to use the term only in those countries where Complainant has already acquired reputation and prestige and only in those countries where consumers know Complainant’s businesses.
Complainant further submits that not only does the disputed domain name and its content confuse consumers that may surely think that Respondent is related with Complainant, but they also have another important and harmful effect: the disputed domain name causes Internet users to reach an unintended site which is an illegal practice called typosquatting. Typosquatting is the intentional registration of a domain name (and in this case accompanied with the use of a trademark) that is similar to a distinctive or famous mark causing an Internet user who makes a slight spelling or typing error to reach an unintended site and finally confusing consumers as to the relation between the original trademark (in this case Complainant’s trademark) and the similar site (in this case the disputed domain name’s site).
Complainant states that although both websites provide some different services, similarities between the two are shown. Both websites provide search information' and several services related to the movie industry.
Complainant states that Respondent is not using the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant contends that it is clearly not a bona fide behavior to take advantage of all benefits that a well-known trademark has, such as Complainant’s trademarks, by trying to attract consumers of said well-known trademark and gaining users of the web site by generating a clear confusion in consumers.
Complainant states that its registered trademarks for CINEMARK were registered and widely used in Latin America and had become well known in the movie theater business long time before the registration of the disputed domain name <cinemaki.com> was registered on March 31, 2008. Matias Alejo Garcia cofounder and CEO of Respondent and technical and administrative contact of the disputed domain name is Argentinian. Respondent must have been aware of Complainant’s reputation as a leading exhibitor of movies in Latin America as Respondent’s websites includes information on movies appearing in all the countries in Latin America in which Complainant operates movie theaters.
Complainant submits that Respondent registered the disputed domain name which is almost identical and therefore confusingly similar to Complainant’s trademarks and trade name except for a slight difference in the end (“Ki” and “rK”) which have the same strong and distinctive letter “K” in them. Because of the close similarity between the disputed domain name and Complainant’s trademarks Internet users are likely to misspell the mark and reach Respondent’s web site or see the web site published and think that is related to Complainant, both effects of which are unfair for customers and for Complainant and put in risk commerce good practices.
Complainant submits that Respondent has prepared and used advertising material which closely resembles Complainant’s advertising material enhancing the misleading concept that Respondent is associated with or otherwise connected with Complainant. Complainant operates the most geographically diverse theater circuit in Latin America with over 137 theaters and 1,113 screens in 13 Latin American countries. Complainant’s website in Latin America associated with its domain name <cinemark.com> displays a series of national flags with the name of the country below the flag limited to the 13 Latin American countries in which Complainant currently operates movie theaters. Internet users can click on a flag to determine the location of Complainant’s theaters in each country. Respondent’s advertising material uses a circle with an identifiable part of a national flag with the country name below the flag to direct Internet users to movies and movie theaters in each of the Latin American countries represented by a flag.
Complainant further states that Respondent registered and is using the confusingly similar domain name in bad faith to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location, (Policy, paragraph 4(b)(iv)).
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response may result in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following therefrom in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
Complainant has submitted a well-presented Complaint with a series of assertions concerning the intentions and behavior of Respondent. Complainant has established that it is the owner of numerous trademark registrations for the trademark CINEMARK in the U.S. and Latin America in relation to goods and services relating to promotion and operation of movie theaters and the exhibition of movies as described in section 4 above. Complainant’s CINEMARK trademarks were registered and extensively used and were well-known in the U.S. and Latin America long before the disputed domain name <cinemaki.com> was registered on March 31, 2008.
Complainant contends that the disputed domain name <cinemaki.com> is confusingly similar to Complainant’s registered trademarks for CINEMARK. Complainant contends that the following rules for determining confusing similarity apply: (i) the confusion results from the first-sight impression as a whole impression arising out of comparison of the disputed domain name and the trademark; (ii) whoever examines the resemblance must undertake to stand in the place of the potential consumer and take into account the nature of the products or services involved; and finally (iii) existing similarities but not differences between the trademarks must be taken into account.
Complainant further contends that in this case the three rules apply as follows: (i) at first-sight impression the disputed domain name <cinemaki.com> is almost identical and therefore confusingly similar to Complainant’s trademark CINEMARK; (ii) by standing in the place of the potential consumer of products and services related to the movie industry it is easy to understand the confusion in consumers; and finally (iii) there are more similarities than differences in this case and the only and insignificant difference is their respective ends (“Ki” and “rK”) that have the same strong and distinctive letter “K” in them and only one different letter (“i” and “r”). Complainant cites the decision in Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441, (“A domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”).
The Panel has reviewed the WIPO Overview of WIPO Panel Views On Selected UDRP Questions. Second Edition (“WIPO Overview, 2.0”), Section 1.2 to determine the test for confusing similarity which is summarized as follows : “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being being regarded as insufficient to prevent threshold internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string of in the domain name”.
Applying the above test the Panel is of the view that the relevant trademark CINEMARK is not generally recognizable as such either visually or aurally in the disputed domain name <cinemaki.com>. It is the Panel’s view that Complainant’s contention that existing similarities, but not differences between the trademark and the disputed domain name must be taken into account is not consistent with a straightforward visual or aural analysis to determine if the relevant trademark is generally recognizable in the disputed domain name. A trademark is not generally recognizable as such within the disputed domain name when letters in a domain name have to be deleted, added and transposed by mental effort to make the trademark recognizable.
In applying Complainant’s contended rules to its trademark CINEMARK and the disputed domain name <cinemaki.com>, Complainant contends there are more similarities than differences between its trademark and the disputed domain name and the only and insignificant differences is their respective ends (“Ki” and “rK”) that have a strong and distinctive letter “K” in them and only one different letter (“I” and “r”). Neither Complainant’s word mark registrations or design mark registrations for CINEMARK include a distinctive letter “K”. Complainant’s design mark registrations for “Cinemark” feature a distinctive “M” in the middle of “Cinemark” in which the base of the vertical members of the letter “M” extend horizontally forwardly and rearward under “cine” and “ark”. The disputed domain name <cinemaki.com> is necessarily comprised of small letters. The letter “k” is not distinctive in Complainant’s registered trademarks or in the disputed domain name as contended by Complainant. Furthermore the test applied by Complainant is not consistent with the threshold test for determining confusing similarity under Section 1.2 of WIPO Overview 2.0 discussed above.
The Panel has reviewed the Reuters case cited by Complainant. In that case the panel found that the domain names <wwwreuters.com> and <reutersnews.com> were confusing similar to the complainant’s trademark. The panel noted that the domain names incorporate the complainant’s trademark in its entirety among other factors. With respect to domain names <reters.com>, <ruters.com> and <reuers.com> the panel noted that the domain names differed from the complainant’s trademark by one letter. The panel believed the facts in the Reuters case are different from the facts in this case. previous cases are not of much assistance when a test of visual or aural comparison are applied in a subsequent case. The Panel noted the panel’s comment that: “A domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar where the trademark is highly distinctive.” While distinctiveness may be a factor to consider it cannot override the threshold test for confusing similarity discussed above. See, The Football Association Limited v. Websitebrokers Limited, WIPO Case No. D2001-0156, where the panel found that the domain name in dispute was not confusingly similar with complainant’s trademark even though the Football Association is a British Household name.
Applying the threshold test for confusingly similar reviewed above the Panel finds that the trademark CINEMARK is not generally recognizable as such either visually or orally in the disputed domain name <cinemaki.com>, the “.com” not being a part in the consideration.
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity or lack thereof. Other UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has failed to prove that the disputed domain name <cinemaki.com> is confusingly similar to Complainant’s registered trademarks for CINEMARK under paragraph 4(a)(i) of the Policy. As Complainant has failed to establish its case under paragraph 4(a)(i) of the Policy, the Panel finds it unnecessary to proceed with consideration and reasons under paragraphs 4 (a) (ii) and (iii) of the Policy. Thus, the Panel need not address the arguments which Complainant has advanced on Respondent’s rights or legitimate interests and bad faith; the Panel’s above finding is without prejudice to any appreciation of those in a legal context.

matches: v. v. v. v. v. v.


This matter is submitted to the court for decision upon the motion of Paula A. Wells to reopen this case to add an omitted creditor. For the reasons set forth below, the court concludes that the Motion to Reopen should be overruled and that the debt to creditor, Norma McDowell, has been discharged.
Prior to filing bankruptcy, the debtors in this proceeding incurred an indebtedness to Fifth Third Bank which was secured by a certificate of deposit of debtor James Wells mother, Norma McDowell, in the amount of $28,000.00. When the debtors failed to pay the indebtedness, McDowells certificate of deposit was liquidated to apply against the indebtedness. The debtors thereby become indebted to McDowell. Thereafter, on August 18, 1995, the debtors filed this Chapter 7 proceeding. They did not list McDowell as a creditor, and while the reason therefor is not clear, there is some suggestion that the omission may have been deliberate. A trustee was appointed and filed a Trustees Report of No Distribution indicating that the trustee had not received any property or money. That report was filed on September 20, 1995. The debtors were subsequently granted a discharge of their debts and the case was closed on March 1, 1996. Since there were no assets administered by the trustee, there was no distribution to creditors.
On December 20, 1999, debtor, Paula A. Wells, moved to reopen the case to add McDowell as a creditor. After an initial delay, that matter was heard on March 7, 2000 and the parties were directed to submit briefs on the question and the matter now stands ripe for a decision by the court.
The debtor movant points out that no ground for nondischargeability pursuant to 11 U.S.C. §523(a)(2), (4), or (6) is asserted by the creditor and that pursuant to In re Madaj, 149 F.3rd 467 (6th Cir. 1998), the state of mind of the debtors in failing to list the objecting creditor is irrelevant. Apparently, James and Paula are now divorced and Paula has been awarded maintenance. Paula contends that McDowells motivation in pursuing this matter stems from her alienation from McDowells son.
The objecting creditor, McDowell, asserts that the actions of the debtors in deliberately failing to list her as a creditor were fraudulent and the court should therefore overrule the Motion to Reopen and should not allow amendment of the schedules to list McDowell as a creditor. McDowell recites Rosinski v. Boyd (In re Rosinski), 759 F.2d 539 (6th Cir. 1985) for authority that reopening should not be allowed if the failure to include the creditor in the original schedules can be shown to have prejudiced the creditor or to have been part of a scheme to defraud and done intentionally. McDowell has not asserted any ground of nondischargeability set forth in 11 U.S.C. §523(a)(2), (4) or (6) in this proceeding.
McDowells reliance on In re Rosinski is misplaced. In Madaj, the facts very much resemble the facts in this case and clarify the appropriate interpretation of Rosinski. In Madaj, the debtors had moved to reopen their case to list the foster parents of debtor, Michael Madaj. The parties stipulated that had the debt been properly scheduled there would have been no claims of nondischargeability pursuant to 11 U.S.C. §523(a). The creditors in that case, unaware of the bankruptcy proceeding and its conclusion, filed suit and obtained judgment against the debtors. The debtors then moved to reopen the case to add the omitted foster parents as creditors. The bankruptcy court concluded that, because the case was a no-asset case, the debt to the foster parents was discharged and it was not necessary to reopen the case to schedule the debt to reach this result. The court then denied the Motion to Reopen the case. On appeal, the court explained that, in no-asset cases, since no claims are required to be filed, no creditor is foreclosed from filing a claim, and unless some showing of nondischargeability pursuant to 11 U.S.C. §523(a)(2), (4) or (6) is made, the creditor has not been prejudiced and the debt is discharged. Where no nondischargeability is asserted under subsections (2), (4) or (6) of 11 U.S.C. §523(a), all debts are discharged unless the debtor fails to schedule the debts in time for the creditor to file a timely proof of claim. Where no proof of claim is required, there is no prejudice to the creditor in failing to list the debt in these circumstances.
The Rosinski Courts emphasis on the subjective mental state of the debtor in failing to list the debt has led some to cite that case for the proposition that a debtors actions in failing to list the debt can somehow transmute an otherwise ordinary debt into a fraudulent debt of the type covered in §523(a)(2), (4) or (6). Rosinski does not stand for such a proposition. A debt is either fraudulent or not depending on the debtors actions and intent in incurring the debt in the first instance. An otherwise innocently incurred debt (say, a loan from ones foster parents) does not suddenly become a fraudulently incurred debt when the debtor fails to list it. The case at hand serves as an excellent example. The Creditors conceded in the bankruptcy proceeding that the loan at issue here is not a fraudulently incurred debt. [Footnote omitted] When the Creditors lent the money to the Debtors, both parties expected it to be repaid. Before they repaid the loan, however, the Debtors filed for bankruptcy. Even if, as we shall assume for the sake of argument, the Debtors purposely failed to list the debt in an attempt to defraud the Creditors, this action did not (and could not) work some perverse alchemy to change the innocent loan into a fraudulent debt of the type that is covered by §523(a)(2), (4) or (6) and therefore excepted from discharge pursuant to §523(a)(3)(B). If the debt is to be excepted from discharge, it can only be excepted according to §523(a)(3)(A). If the bankruptcy estate had any assets (i.e., if this were not a no-asset case) and if the Debtors failure to list the debt had deprived the Creditors of their ability to timely file a proof of claim, then §523(a)(3)(A) would, indeed, except the debt from discharge. To the extent that Rosinski has been interpreted to demand a different result, it has been dangerously misinterpreted.
In the case before us, it is undisputed that the debt at issue, had it been timely filed, would not have been included in any category of debts that are excepted from discharge by §523. It is undisputed that the Debtors bankruptcy was a no-asset Chapter 7 case. In order to determine whether the bankruptcy court erred in denying the Debtors motion to reopen their Chapter 7 case to amend the schedule of debts and in holding that the debt at issue here was nevertheless discharged, we must answer one question: when an otherwise dischargeable debt is omitted from the schedule in a Chapter 7 no-asset case and the debtor receives a discharge, what is the effect of reopening the case to permit the debtor to schedule the omitted debt?
The answer is there is no effect. The reason that the reopening has no effect is clear. A debtor cannot change the nature of the debt by failing to list it in his petition and schedules. Section 523(a)(3)(A) excepts from discharge only those debts as to which a timely proof of claim cannot be filed because the debts were not listed and the creditor had neither notice nor actual knowledge of the bankruptcy in time to file a timely a proof of claim. In a no-asset Chapter 7 case, there is no date by which a proof of claim must be filed in order to be timely. Whenever the creditor receives notice or acquires actual knowledge of the bankruptcy, he may file a proof of claim, that claim will be timely, and the fact that the debts were not listed becomes irrelevant. Section 523(a)(3)(A) simply provides no basis for excepting an unlisted debt from discharge if the creditor has actual knowledge such that he can file a proof of claim. And once the §727 order of discharge is entered, all of the debtors prepetition debts are either discharged or they are not discharged; nothing the debtor does after the entry of the order of discharge can change the character of those debts.
In accordance with the above, since there has not been a claim of nondischargeability pursuant to 11 U.S.C. §523(a)(2), (4) or (6), the court concludes that the discharge entered in the within proceeding discharged the debtors from their obligations to McDowell, and that it is not necessary to reopen this case and schedule McDowells debt to accomplish that result.
1) That the Motion to Reopen the within proceeding filed by debtor, Paula A. Wells, be, and the same hereby is, OVERRULED.
2) That the indebtedness of the debtors herein to Norma McDowell was discharged in this proceeding by this courts Order of February 8, 1996 as appears of record herein.
Dated this day of March, 2000.