Posts Tagged: "Federal Circuit"

On January 27, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed in-part and vacated in-part a decision of the Patent Trial and Appeal Board (PTAB) in its inter partes review of claims 1—20 of U.S. Patent No. 8,370,106 (the ‘106 patent) assigned to KEYnetik, Inc. (KEYnetik). Judge O’Malley concurred in part and dissented in part. In particular, the CAFC concluded that the PTAB did not err in its claim construction regarding an orientation detection limitation and a sequence limitation. Further, the CAFC affirmed the PTAB’s decision that the Petitioner’s references could be combined. However, the CAFC also found that the PTAB failed to properly assess the appellant’s argument regarding a reasonable expectation of success when combining references and therefore vacated the decision and remanded the case so that the Board could make such a determination.

As we turn the page to 2021, we expect at least two major cases to be resolved that could have long-lasting effects on where and how Hatch-Waxman and Biologics Price Competition and Innovation Act (BPCIA) cases are litigated. Specifically, the future of skinny labels is in doubt, and available venues for Plaintiffs could be significantly narrowed. The number of new drugs eligible for generic competition will also rebound in 2021, but only time will tell if the global pandemic affects the overall number of generic filings. While there are many more Hatch-Waxman and BPCIA developments to watch this year, these are a few that we will be following closely.

Inventor advocacy group US Inventor has filed an amicus brief in support of a petition to the U.S. Supreme Court asking the justices to clarify “[w]hether the Federal Circuit’s “heavy presumption” line of cases or its “holistic” line should govern claim construction. The petition was filed in December by Akeva, LLC, owner of a portfolio of athletic footwear patents, and is an appeal from a July 2020 nonprecedential Federal Circuit decision, Akeva, LLC v. Nike, Inc. In that case, the Federal Circuit upheld a district court’s grant of summary judgment of noninfringement to a number of defendants—including Asics, Nike, adidas America, Inc., New Balance Athletic Shoe, Inc., and Puma North America, Inc.—finding in part that the district court had “correctly construed the claim term ‘rear sole secured’ to exclude conventional fixed rear soles.”

As we thankfully see 2020 fading into the rear-view mirror and all look forward to a hopefully much better 2021, we want to take a moment to reflect on what the past year brought us and how the stage is set for another very fluid and consequential year for intellectual property policy. In times like these, it is clear that leadership matters more than ever. During some of the most challenging times our country has faced, there were a number of places where we saw strong leadership result in tangible progress. This year has already shown us a dramatic first few days. Beyond the tragic events in the U.S. Capitol, we saw the somewhat unexpected shift of power in the Senate to Democratic control based on the election of both Rev. Raphael Warnock and John Ossoff in Georgia. It is clear that the new Congress and the new Biden Administration will face huge challenges before we approach anything close to “normal” in any sense. That said, when it comes to IP, what can we expect?

Since the Supreme Court’s Alice decision in 2014, inventors have faced extra hurdles trying to protect their software-related inventions with patents. A chief obstacle has been satisfying the two-part test for eligibility under Section 101 set forth in Alice and Mayo. To meet this test, claimed subject matter must not be directed to a judicial exception, such as an abstract idea, (Step One), and if it is, must add “significantly more” to provide an inventive concept (Step Two)…. Theodore Rand reported in IPWatchdog last week, a disturbing but not surprising trend. Rand found that, in 2020, 81% of software-related patents on appeal for subject matter eligibility in decided precedential cases (22 of 27) were found invalid. But in three cases, software-related patents were found drawn to eligible subject matter for patent purposes. Id. In each of the three cases, the appeals court pointed to aspects of the patent specifications themselves. Looking more closely at the representative claims and court’s comments with respect to the corresponding patent specification is illuminating. In particular, the court looked to the specifications for evidence of performance improvements over conventional systems, description of a technical problem/solution, and technological advantages.

Judge Kimberly Moore, in a comprehensive and insightful opinion dissenting from the denial of the petition for rehearing en banc in Athena Diagnostics, Inc. v. Mayo Collaborative Servs., 927 F.3d 1333 (2019), emphasized that the lack of clarity in Section 101 jurisprudence is one of the most critical issues in patent law. Sensing no interest by her colleagues in crafting an opinion with sufficient common denominators to provide instructions to trial judges on how to navigate the cross-currents created by Federal Circuit decisions post-Mayo/Alice, Judge Moore advised litigants: “Your only hope lies with the Supreme Court or Congress.” Id. at 1363. Not now. Several months after Athena, the USPTO took the initiative to issue a guidance document “October 2019 Update: Subject Matter Eligibility,” in response to requests by numerous stakeholders for more clarity and predictability. Consequently, in light of well-established Supreme Court precedent in administrative law, there is every reason for the Federal Circuit to now adopt the analysis of these Guidelines in future Section 101 cases.

On Friday, the U.S. Supreme Court granted a petition for certiorari filed by Minerva Surgical, Inc. asking the Court to clarify questions around the doctrine of assignor estoppel. Specifically, the petition presents the question “whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.”

On January 8, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States Patent and Trademark Office, Trademark Trial and Appeal Board (TTAB) dismissing QuikTrip West, Inc.’s (QuikTrip) opposition to Weigel Stores, Inc.’s (Weigel) registration of the mark W WEIGEL’S KITCHEN NOW OPEN on the ground that there was not likelihood of confusion with QuikTrip’s registered design mark, QT KITCHENS (QuikTrip West, Inc. v. Weigel Stores, Inc.).

In Part I of this article, I explained that the CAFC invalidated almost every software patent on appeal for eligibility in 2020 and recapped the first 13 such cases of the year. Despite the many software eligibility cases decided last year, there is still some uncertainty about what passes muster under the Alice two-step framework. Below is a recap of the remaining 14 cases considered by the CAFC in 2020 with respect to software patent eligibility.

On January 7, the United States Court of Appeals for the Federal Circuit (CAFC) dismissed ABS Global’s appeal from the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) as moot. Cytonome/st, LLC had disavowed its ability to challenge a district court’s summary judgment that ABS did not infringe claims of the patent in suit and ABS did not establish that it engaged in or had “sufficiently concrete plans to engage in activities not covered by” Cytonome’s disavowal (ABS Global, Inc. v. Cytonome/st, LLC), said the court. The majority denied ABS’s request for vacatur and Chief Judge Prost wrote separately to dissent on the issue of vacatur.

On January 5, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a decision of the U.S. District Court for the Southern District of New York rejecting the district court’s claim construction and holding that Hong Kong uCloudlink Network (uCloudlink) was entitled to summary judgment of non-infringement (SIMO Holdings Inc. v. Hong Kong uCloudlink Network). In particular, the CAFC concluded that the district court erred in not requiring the disputed claim to require two or more non-local calls databases and held that SIMO did not identify a triable issue on the question of whether the accused products lack a non-local calls database.

Last year was an active one at the United States Court of Appeals for the Federal Circuit (CAFC) for software eligibility. It also was a brutal year for patent owners, as the CAFC invalidated almost every software patent on appeal for eligibility. Despite the many cases decided last year, there is still some uncertainty about what passes muster under the Alice two-step framework promulgated by the Supreme Court in 2014. But one thing that has become increasingly clear is that the CAFC wants to see how a particular result is achieved or how a problem is solved. This desire for a “how” or rule set from the claims creates an evident tension with the traditional notion that patent claims should recite structure, not functional language. These recent CAFC cases have also made it clear that courts will look to the specification for implementation details, even if these details do not emerge in the claims. This analysis has previously been reserved for the written description requirement under Section 112 but found its way into the Alice two-step.

Eleven amicus briefs were docketed during the last two business days of 2020 in United States v. Arthrex, Inc., et al., which is scheduled for oral argument on March 1, 2021. Several of the briefs were filed by independent inventors, who implored the Court to acknowledge the stories of entrepreneurs and small inventors who have been adversely impacted by the Patent Trial and Appeal Board (PTAB), in part because Administrative Patent Judges (APJs) are presently unaccountable.

On December 29, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s decision dismissing Simio’s patent infringement action against FlexSim Software Products (FlexSim) and finding Simio’s claims patent ineligible under 35 U.S.C. § 101 (Simio v. FlexSim Software Products, Inc.). The CAFC also affirmed the district court’s dismissal of Simio’s motion for leave to file an amended complaint on the grounds of futility and, alternatively, on the ground that Simio failed to show good cause for its untimely motion for leave to amend.

American Axle & Manufacturing, Inc. filed a petition for certiorari with the U.S. Supreme Court on December 28, 2020, asking it to review the Federal Circuit’s July 31, 2020 modified judgment and October 2019 panel opinion in a closely-watched Section 101 patent eligibility case involving driveshaft automotive technology. The Federal Circuit has been sharply divided by the issues presented, leading Judge Moore to refer to the original panel’s analysis as “validity goulash” and to state that the “majority’s Nothing More test, like the great American work The Raven from which it is surely borrowing, will, as in the poem, lead to insanity.”