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John Rogitz

is a registered patent attorney with his own practice in San Diego, CA. His background includes preparation and prosecution of a large number of patent applications for high-tech Fortune 500 companies in a wide range of technologies. John has also been active on behalf of his clients in the acquisition of patent portfolios. He writes frequently for various publications on developments in patent law and also lectures on intellectual property for DeVry University. Previously, John was engaged in civil litigation at the Watkins Firm, a San Diego-based law firm. Prior to that, he worked as a web developer for Loyola Marymount University. John received his J.D. in 2009 from California Western School of Law.

Recent Articles by John Rogitz

Federal Circuit Finds ‘Lifter Member’ Invokes Means-Plus-Function

On January 21, 2022, the U.S. Court of Appeals for the Federal Circuit held that the term “lifter member” invokes means plus function (MPF) claiming. The case is Kyocera Senco Indus. Tools Inc. v. ITC, Appeal Nos. 2020-1046 and 2020-2050 (Fed. Cir. 2022). The Federal Circuit panel for the case consisted of Chief Judge Moore along with Judges Dyk and Cunningham. Chief Judge Moore wrote the opinion for the panel. To summarize, in 2017, Kyocera filed a complaint with the International Trade Commission (ITC). Kyocera alleged that a company named Koki violated 19 U.S.C. § 1337 (Section 337) by importing gas spring nailer products that infringe, or were made using methods that infringe, certain claims in five Kyocera patents. Those patents generally relate to linear fastener driving tools, like portable tools that drive staples, nails, or other linearly-driven fasteners.

Latest Eligibility Decision from Federal Circuit Highlights Importance of Crafting a Background in Light of Alice

Thankfully, there has been a recent and noticeable drop in precedential abstract idea cases from the U.S. Court of Appeals for the Federal Circuit. But on October 23, 2020, the Federal Circuit provided further “guidance” with respect to Alice Step 1 and upheld a district court finding that a TecSec patent was eligible under Section 101. The case is TecSec v. Adobe, Appeal Nos. 2019-2192 and 2019-2258 (Fed. Cir. 2020). The Federal Circuit panel for the case consisted of Chief Judge Prost along with Judges Reyna and Taranto. Judge Taranto wrote the opinion for the court. While there were some other interesting issues that the opinion raises, here we will focus on the Federal Circuit’s abstract idea analysis.

Federal Circuit Indicates Conventional Technologies Can Be Used in Unconventional Ways

In an August 3, 2020 modified opinion, the U.S. Court of Appeals for the Federal Circuit held certain claims directed to a method of preparation to be patent-eligible at Alice Step 1. The case is Illumina Inc. v. Ariosa Diagnostics Inc., 2019-1419 (Fed. Cir. 2020), and IP Watchdog has already published a more-detailed write-up on the modified opinion that can be found here. I write separately to highlight an interesting quote from the modified opinion that may have currency, not just in biotechnology, but also in computer technology and other arts.

USPTO Issues Additional Subject Matter Eligibility Guidance

On Thursday, October 17, the USPTO issued new patent eligibility guidance. The new guidance discusses and elaborates on the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG) that was issued on January 7, 2019. The new guidance begins by stating that “all USPTO personnel are expected to follow the [PEG].” This statement is somewhat helpful given that some eligibility rejections still do not apply the PEG. After making the statement above, the guidance begins clarifying certain items from the PEG. In terms of Step 2A, Prong One regarding whether a claim “recites” a judicial exception, the guidance notes that a claim can recite more than one judicial exception. The judicial exceptions may be distinct in that there might be separate judicial exceptions in different claim elements. In other instances, there might be two judicial exceptions at play throughout the claim, in which case the examiner should identify the claim as reciting both and make the analysis clear on the record.