Posts Tagged: "CAFC"

The relatively short opinion by Supreme Court standards – just over eight pages – puts it simply: “The text resolves this case. The term ‘article of manufacture,’ as used in §289, encompasses both a product sold to a consumer and a component of that product.”

After Halo, courts appear to be breathing new life into claims for willful patent infringement and enhanced damages claims. In fact, since Halo’s new standard took effect a few months ago, juries found willful infringement in three out of four cases where they returned a verdict of infringement. However, as discussed below, there are steps a defendant can take to protect itself against a finding of willful infringement.

It is that time once again when we look back on the previous year in preparation to close the final chapter on 2016 and to look ahead toward 2017. With patent reform surprisingly stalled, the biggest news stories of the year may have been the Patent Trial and Appeal Board (PTAB)… As 2016 started and through at least the first half of 2016 it seemed as if the PTAB had become rather all-powerful and completely unsusceptible to judicial restraints. As we close 2016 and look forward to 2017 a decidedly different picture seems like it is emerging… The other big news story of 2016 was with respect to patent eligibility…

On December 9, 2016, the en banc Federal Circuit will hear argument in In re Aqua Products, Inc. on an issue that has long been troubling patent owners involved in inter partes reviews (“IPR”)—the difficulty of amending patent claims before the Patent Trial and Appeal Board (“PTAB”)… The Federal Circuit granted a petition for rehearing en banc to consider whether the burden of persuasion allocated to the patentee by the PTAB for motions to amend is permissible under the statutory scheme.[5] Notably, the Federal Circuit’s rehearing order specifically identifies 35 U.S.C. § 316(e), which provides that in an IPR “the petitioner,” not the patent owner, “shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” The Federal Circuit also will consider whether the PTAB can raise sua sponte challenges to patentability, much the way an examiner would, if the IPR petitioner fails to do so.

In an indefiniteness analysis, particularly for a “means plus function” claim, the patent must particularly disclose the corresponding structure for performing the claimed function. It is not enough that a person of ordinary skill in the art would likely know what structure to implement. The Court also clarifies that in a willful infringement analysis, the preponderance of the evidence standard implemented in Halo should be used, rather than the clear and convincing evidence standard used in Seagate.

In an IPR decision, the Patent Trial and Appeal Board invalidated several claims from U.S. Patent No. 6,030,384 as anticipated or obvious over Japanese Publication No. H1033551A. The Federal Circuit vacated and remanded. The antedating inquiry under Pre-AIA section102(g) is directed to evidence of diligent activity during the critical period as a whole and does not require justifying every period of unexplained inactivity.

In 2013, Google, Inc. (“Google”) filed inter partes review and covered business method petitions challenging the validity of Unwired Planet, LLC’s (“Unwired”) patent, at issue on appeal. The patent describes a prioritization of search results based upon the location of a mobile device and including prioritization of “preferred providers” within those search results, in turn providing a “farther-over-nearer” ordering of the results. The Board invalidated all of the challenged claims as obvious. The Federal Circuit concluded, “[b]ecause the use of alphabetical order as prioritization information would sometimes meet the farther-over-nearer claim elements, the Board was correct to conclude that the proposed combination” rendered claim 1 obvious.

Claimed methods incidental or complimentary to financial services are not necessarily reviewable as CBM patents. The claims as they were written must be directed to methods and apparatuses that have particular uses in connection with a financial product or service. For a patent to be a CBM patent, “[i]t is not enough that a sale has occurred or may occur, or even that the specification speculates such a potential sale might occur.”

”It appears to me that en banc consideration [of Achates] is warranted,” Judge Taranto wrote. ”It is notable, to begin with, that the [Supreme] Court pointedly avoided embracing the simplest and most review-barring reading of § 314(d) – namely, that it prohibits judicial review of any determination to institute an IPR.”

How patent claims can be invalidated without a proper and thorough claim construction is baffling. It flies in the face of everything patent law stands for and does nothing but encourage patent examiners, PTAB judges and district courts to do a facial check based on a gut feeling, nothing more… That type of subjective, half-baked analysis is antithetical to the patent process and the Federal Circuit should be ashamed for engaging in such a review. The only way to competently determine what a claim is directed to and whether the claim adds significantly more, whatever that means, is to do a proper, thorough and competent claim construction, period. Seriously, if the Court is going to publish a decision like this that is heavy on conclusions, non-existent on analysis, and almost certainly drafted by an intern or Staff Attorney, then why even make it a non-precedential opinion?

The PTAB used the wrong standard to institute the CBM proceeding in the first place, which lead the Federal Circuit to vacate the PTAB decision and remand the case for further consideration by the PTAB – namely the application of the proper standard… As the Federal Circuit would point out later: “All patents, at some level, relate to potential sale of a good or service.” To allow this PTAB created standard that has no textual support in the statute to be applied would be to allow virtually any patent to be the subject of a CBM. That was clearly was not the intent of Congress and it would fly directly and unambiguously in the face of the explicit language of the statute. The PTAB is significantly limited in their power to institute a CBM.

The Alice/Mayo framework is the decisional approach adopted by the United States Supreme Court for determining whether a patent claim exhibits, such as software patent claims, embody patent eligible subject matter… Over the last six months the Federal Circuit has provided a great deal of clarity, with 9 judges (Judges Moore, Taranto, Hughes, Chen, Newman, O’Malley, Reyna, Stoll, and Plager) signing on to decisions that found software patent claims to be patent eligible. What follows is a a summary of the significant developments over the last six months.

The Federal Circuit reversed the cancellation of two trademarks by the Trademark Trial and Appeal Board (“Board”) and remanded for further consideration… “Use in commerce” under the Lanham Act encompasses any activity that falls under Congress’s Commerce Clause power, including in-state sales to an out-of-state resident. Activities that are within such regulatory authority are unlikely to be disqualified as merely “de minimis,” e.g. in economic impact.

In the second IPR, NuVasive never received an opportunity to respond to contentions citing the Michelson Patent. First, arguments in the first IPR did not carry over to the second IPR. Second, it was not until Medtronic’s reply that NuVasive received notice of Michelson, and then was denied an opportunity respond. NuVasive’s ability to enter observations regarding cross-examination of an expert who opined on Michelson was not an adequate opportunity to respond. The “observations are not a vehicle for submitting new evidence, including new expert declarations, by the patent owner,” and “indeed, the permitted content and format of observations are tightly circumscribed.”

Neste filed a petition for inter partes review of REG’s U.S. Patent No. 8,231,804 (‘804 patent) and the Patent Trial and Appeal Board ultimately found all of the challenged claims anticipated by either of two references. REG appealed, citing exhibits allegedly demonstrating a date of invention earlier than the prior art. Anticipation can be found where prior art discloses the claimed range in a different unit of measure that can be converted using reasonable and reliable methods. Prior invention is fact-intensive and must take into account all of the relevant evidence. Exhibits offered to show the fact of a communication, and not the truth of the communication’s contents, are not excludable as hearsay.