As a result of the Federal Circuit’s decision in Secure Axcess, LLC v. PNC Bank National Association in late February, it is not likely that a flood of Covered Business Method (“CBM”) reviews will be coming any time soon. By statute, Covered Business Method (“CBM”) reviews are reserved for patents relating to “a financial product or service,” and under the Federal Circuit’s narrow reading of that statute, the number of CBM reviews will likely remain quite small relative to the number of Inter Partes Reviews (“IPR”). Although relatively few in number, CBM reviews have generated a number of precedential Federal Circuit opinions recently. In Secure Axcess, the Federal Circuit reversed the Patent Trial and Appeals Board’s (“PTAB”) decision finding that claims relating to website authentication were eligible for CBM review. 2017 WL 676601 (Fed. Cir. Feb. 21, 2017). Although earlier precedent, such as Blue Calypso, LLC v. Groupon, Inc., could… Continue Reading
Federal Circuit Holds a Business Method Claim Directed to a GUI to be Patent-Eligible—will the PTO Agree?
It’s no secret the Federal Circuit and the United States Patent and Trademark Office (“PTO”) have been inconsistent when it comes to determining the patent eligibility of claims directed to software, leaving patent practitioners guessing as to whether their software-based inventions are patentable. As it stands today, some district court judges and Federal Circuit panels have been very willing to find software-related inventions patent ineligible. Recently, in the Trading Techs. Int’l, Inc. v. CQG, Inc.(“CQG”) decision, the Federal Circuit dealt, yet again, with the question of whether software claims were patent-eligible. In CQG, the CQG companies appealed the decision of the United States District Court for the Northern District of Illinois, which held the asserted claims of U.S. Patents No. 6,772,132 (’132 patent) and No. 6,766,304 (’304 patent) recited patent-eligible subject matter under 35 U.S.C. § 101. The dispute originally arose when patent owner Trading Technologies International, Inc. (“TT”) asserted… Continue Reading
On December 7, 2016, the Court of Appeals for the Federal Circuit (CAFC) vacated a decision of the Patent Trial and Appeals Board (PTAB) in In re NuVasive, Inc., No. 15-1670 (Fed. Cir. December 7, 2016), finding that judicial review of the obviousness determination could not be meaningfully achieved without sufficient articulation of a motivation to combine the prior art references. In particular, while the Court acknowledged that common sense dictated that “additional information” could potentially be obtained by a combination of the references, the case was remanded because, without articulation of a “reason why” a person having ordinary skill in the art (PHOSITA) would have been motivated to seek out the “additional information,” the PTAB’s findings amounted “nothing more than conclusory statements.” NuVasive, page 12. This decisions is not surprising, as the CAFC has previously stated that a conclusion of obviousness “cannot be sustained with mere conclusory statements.” In… Continue Reading
The design patent train has been chugging along ever since the Federal Circuit overhauled the test for determining design patent infringement back in September 2008, making it easier for design patent owners to establish infringement and signaling the start of a pro-design patent era. Apple jumped on the design patent train by winning a $399 million (!) award at the expense of Samsung after Samsung’s smartphones were found to infringe Apple’s design patents relating to the front portion of Apple’s iPhone. This high-profile litigation award heightened awareness of the value of design patents, and the design patent train kept chugging. However, the design patent train appears to have hit a cow on the tracks, the cow being a unanimous 8-0 decision by the U.S. Supreme Court in Samsung Elecs. Co. v. Apple Inc., No. 15-777, (Dec. 6, 2016), overturning Apple’s $399 million award. The $399 million award by the lower… Continue Reading
Don’t Worry – You Got This: the Federal Circuit Clarifies the PTAB’s Power to Review IPR decisions after Cuozzo.
The Patent Trial and Appeals Board (PTAB) has authority to review institution decisions for inter partes reviews (IPRs), according to the Federal Circuit’s October 20 decision in Medtronic v. Robert Bosch Healthcare.1 This decision comes after Medtronic petitioned for rehearing after the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee.2 Background The Medtronic suit began in 2013 when Bosch alleged that Cardiocom, LLC (a subsidiary of Medtronic) infringed Pat. Nos. 7,769,605 and 7,870,249, directed to patient monitoring systems. Cardiocom then petitioned for inter partes review (IPR) of the two patents. After those petitions were denied, Medtronic filed an additional three petitions for the same two patents, listing Medtronic as the sole real party in interest. Even though Bosch argued that the petitions should be denied because Medtronic failed to name Cardiocom as a real party in interest as required under 35 U.S.C. § 312(a)(2), the PTAB instituted IPR proceedings. … Continue Reading
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 15-1180 (Fed. Cir. Nov. 1, 2016) is the latest in a series of recent decisions in which the U.S. Court of Appeals for the Federal Circuit has reversed a district court’s finding of patent ineligibility under 35 U.S.C. § 101. In Amdocs, the Federal Circuit addressed the application of the judicially created “abstract idea” exception to patent eligibility under the two-step framework set forth by the U.S. Supreme Court in Alice Corp. v. CLS Bank International 134 S. Ct. 2347 (2014) (following Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)). The district court in Amdocs invalidated the four patents asserted by Plaintiff-Appellant Amdocs (Israel) Ltd. as patent ineligible under § 101 using the two-step Alice/Mayo framework: US Patent Nos. 7,631,065 (“’065 patent”); 7,412,510 (“’510 patent”); 6,947,984 (“’984 patent”); and 6,836,797 (“’797 patent”). As discussed by the Federal Circuit, all… Continue Reading
On August 15, 2016, in an opinion by Judge Moore in ScriptPro LLC. V. Innovation Assocs., Inc. (ScriptPro I), the United States Court of Appeals for the Federal Circuit addressed the issue of how much written description support is needed under 35 U.S.C. § 112(a) (pre-AIA 35 U.S.C. § 112, first paragraph) for patent claims that are broader than the primary embodiments disclosed in the specification. More specifically, the holding of ScriptPro I reinforces the importance of describing multiple embodiments within the specification, and alternatively including some broadening language within the specification to help defend broad claims against allegations that the specification lacks written description support. Background In 2006, ScriptPro sued Innovation Associates, Inc. (“Innovation Associates”) for infringement of U.S. Patent No. 6,910,601 (“the ’601 patent”). The ’601 patent describes a collating unit used to store prescription containers after medication has been dispensed into the prescription containers by an automatic dispensing system (“ADS”). … Continue Reading
On October 14, 2016, in Poly-America, L.P. v. API Industries (Appeal No. 16-1200, Fed. Cir. October 14, 2016), the Court of Appeals for the Federal Circuit (“the CAFC”) analyzed and applied one of two exceptions to the general claim construction rule that claim terms are generally given their ordinary and customary meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). This one exception states that the plain and ordinary meaning standard [of claim construction] is departed from when the patentee disavows the full scope of the claim term in the specification or during prosecution. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). The question before the CAFC in Poly-America was whether any of the terminology in the asserted patent, or any of patentee’s actions during its prosecution, could be interpreted as a disavowal of claim scope. In answering this question,… Continue Reading
Is common sense good enough to make up for deficiencies of a cited reference in an obviousness analysis? In Arendi S.A.R.L. v. Apple Inc., the Federal Circuit said “no,” by reversing a decision of the Patent Trial and Appeal Board (“PTAB”) to invalidate U.S. Patent No. 7,917,843 (the “Arendi patent”). When Arendi S.A.R.L., a Luxembourg company, brought patent infringement suits against several technology heavyweights, including Apple, Inc., Google, Inc., and Motorola Mobility LLC, these defendant companies struck back by filing a petition for an Inter Partes Review (“IPR”) seeking to invalidate the Arendi patent. In the IPR proceeding, the PTAB invalidated the Arendi patent on the grounds of obviousness under 35 U.S.C. §103. Arendi then appealed the case to the U.S. Court of Appeal for the Federal Circuit. The Arendi patent is directed to computer functions that allow a user to remain in a document displayed by a first computer… Continue Reading
On September 30, 2016, in Intellectual Ventures I LLC, v. Symantec Corp., No. 15-1769, 15-1770, 15-1771, the Court of Appeals for the Federal Circuit (CAFC) overturned a lower court’s finding of patent eligibility under 35 U.S.C. § 101 for a patent directed to using computer virus screening in a telephone network, while affirming the lower court’s finding of patent ineligibility under 35 U.S.C. § 101 for two other patents directed to methods of screening emails and other data files for unwanted content, and methods of routing e-mail messages based on specified rules. The court analyzed each of the patents at issue separately using the Mayo/Alice two-part test for determining patent eligibility under 35 U.S.C. § 101, coming to the same conclusion each time. First, the court addressed U.S. Patent No. 6,460,050 (“the ‘050 patent”), which was held patent ineligible by the lower court. The ‘050 patent is directed to filtering e-mails that have unwanted content by… Continue Reading