Posts in Federal Circuit

In vacating the district court’s summary judgment order, the Federal Circuit noted first that statements made by Micron’s expert regarding what the anticipatory reference disclosed were not actually supported by the anticipatory reference itself… These kinds of procedural safeguards are commonly applied by other regional circuits, but have seemed to be missing from Federal Circuit case law of late, with the Federal Circuit seeming to be rather eager to address the substance of a given dispute. Perhaps with the overwhelming caseload now at the Federal Circuit, and its need to resort to both Rule 36 and non-precedential opinions, the court seems to finally be coming to terms with the fact that it is an appeals court and not a court of first instance that should always decide cases de novo.

Although the scope of Rader’s role with LeEco remains to be seen, the fact that the Chinese electronics company went so far as to retain a former Federal Circuit judge with a great knowledge of American IP law strongly suggests that LeEco is very interested in protecting its patent rights in the U.S. market.

This decision reestablishes what should always have been the case; namely that the Federal Circuit is an appellate court that does not consider evidence outside the record or engage in fact finding on their own. The Federal Circuit has been increasingly out of control for years, acting as a trial court and jury rather than an appellate court. Hopefully that will end today.

Drone sued Parrot for indirect infringement of two patents relating to remote-controlled drones… The Federal Circuit sided with Drone and refused to substantively examine inventorship, where Drone’s claim to title was not otherwise in dispute. Inventorship of an issued patent is presumed correct, and Parrot provided no persuasive reason why the Court must litigate inventorship as part of the standing analysis. Alternatively, Parrot may challenge inventorship as an invalidity defense, but doing so under the guise of standing is improper.

The Federal Circuit affirmed a district court’s dismissal under Rule 12(b)(6) for failure to meet the pleading standards for joint patent infringement, holding that Form 18, from the Appendix to the Federal Rules of Civil Procedure, does not apply to a claim of joint infringement… Form 18 is not sufficient per se, and pleadings must adhere to the Twombly/Iqbal pleading standard, and must do so for each element of the allegedly infringed patent claim. This is particularly true for pleading joint infringement.

This case concerned the subject matter eligibility of patents under 35 U.S.C. § 101, for a computer-related invention. The Federal Circuit affirmed the district court’s decision that two patents were ineligible, and reversed the court’s decision that one patent was eligible. All three patents at issue were held to be drawn to abstract ideas, and none of them had a patentable inventive concept… There was no inventive concept because the ’142 claims provided only generic computers performing generic functions. The proper inquiry is whether each step in a claim does more than require a generic computer to perform generic computer functions, not whether the prior computers already applied that concept.

Simply stated, the industry and the public deserve better than Judge Mayer. His anti-patent views so cloud his judgment that he twists, exaggerates and misrepresents in order to attempt to impose his radical views into the law. There is no place for a judge like that. It is time for him to leave the Court. If he chooses not to do that it would seem appropriate for the Court to do what they would with an attorney who grossly exaggerates and mischaracterizes cases and rulings.

In re: Natural Alternatives, LLC, 2015-1911 (opinion and errata) is a non-precedential but still notable case from the U.S. Court of Appeals for the Federal Circuit that finds the claims of a patent that was in reexamination to be patentable, despite the examiner and the Patent Trial and Appeal Board finding that the claims were obvious. While the examiner had cobbled together various references to make an obviousness rejection, the examiner failed to set forth “sufficient facts” supporting his position that the prior art disclosed the limitations of Natural’s claims in a manner that renders the claimed invention obvious.

The USPTO, through its Trademark Trial and Appeal Board (TTAB), denied a standard character mark for “The Slants” to be used with live music performance entertainment on the basis that the term is a highly disparaging reference to people of Asian-American descent. The writ of certiorari was issued for this case after the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) issued a decision last December in In re Tam, an appeal filed by Simon Tam to overturn the TTAB decision. In that case, the Federal Circuit voted 9-to-3 to vacate the TTAB decision to deny the trademark to Tam because § 2(a) of the Lanham Act was unconstitutional “under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.” The majority opinion issued by Federal Circuit noted that the First Amendment protects even hurtful speech and that the federal government has offered no legitimate interests justifying § 2(a) of the Lanham Act.

The Federal Circuit dismissed Husky’s appeal, finding that it lacked jurisdiction to review the Board’s determination of whether assignor estoppel barred institution of an inter partes review for two reasons. First, Husky’s appeal did not fall into any of the three categories of challenges that were reviewable by the Federal Circuit: there were no constitutional concerns at issue, the question of assignor estoppel did not depend on other less closely related statutes, and there was no question of interpretation reaching beyond § 314(d). Second, Husky’s challenge only implicated the question of who may ask the Board to evaluate the validity of a patent, not the Board’s authority to invalidate a patent.

Under the doctrine of inherent disclosure, it is not necessary for an earlier application to explicitly describe the later patent. There is adequate written description to support a later patent where it is undisputed that the invention inherently described in an earlier application was the same subject matter included in the claims of the later patent.

The Federal Circuit Court found that the source of the purported indefiniteness (“processing system”) played no role in defining the claims. Since the asserted claims are method claims, patentability resides with the method steps and not with the machines performing those steps.

The Court affirmed the Board’s finding that two previous patents render the ‘695 Patent obvious. The Court rejected ClassCo’s argument that “[a] basic characteristic of a KSR combination is that it only unites old elements with no change in their respective function.” Slip op. at 7 (internal quotation marks omitted). The Court instead emphasized KSR’s flexible approach to a § 103 analysis.

Affinity Labs of Texas, LLC, lost two cases at the Federal Circuit last week, both in decisions authored by Judge Bryson, which Chief Judge Prost and Judge Wallach joining the opinions. Although the patents at issue in the two cases were different, they shared a similar specification. In the DirecTV decision, the Federal Circuit followed the Alice/Mayo framework and found the claims patent ineligible. Perhaps of note, the Court rebuffed Affinity’s arguments regarding novelty, explaining patent eligibility does not turn on novelty of the claims. In the Amazon decision the Federal Circuit ruled that basic user customization is insufficient to qualify as inventive under Mayo and Alice.

Rather than the drastic measure of abolishing § 101, such as that proposed by previous USPTO Director Kappos, we think that a simple change to § 101 that removes the confusing notion of “inventiveness” from statutory interpretation would do the trick. Our proposal strikes a middle ground, in that, while removing “inventiveness” concepts from § 101 analysis, it retains the historical exceptions rooted in pre-emption that were reiterated in the Triad.