Posts Tagged: "Judge Kimberly Moore"

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.

Based on the question presented in Lee v. Tam, the Supreme Court made clear that its grant of review is only as to the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), but the outcome of this case will affect the other types of marks excluded by Section 2(a), such as marks that may be viewed as immoral or scandalous. Indeed, in a footnote in its en banc decision the Federal Circuit “recognized…that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks….”

The Court recognized that “‘[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.’” However, “there are at least three caveats to note in applying ‘common sense’ in an obviousness analysis.” First, common sense is typically invoked to provide a known motivation to combine, and not to supply a missing claim limitation. Second, while some cases have allowed use of common sense to supply a missing claim limitation, “the limitation in question was unusually simple and the technology particularly straightforward.” Third, common sense “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.”

The Court held that the Board improperly continued to apply the BRI standard following the expiration. While the examiner properly applied the BRI prior to expiration, the BRI standard no longer applies the moment the patent expires – even if it means the Board applies a different standard than the examiner.

O’Malley recognized that in Perfect Web the Federal Circuit did authorize the use of common sense to supply a missing claim limitation, but she pointed out that this was the only case where that has been done. O’Malley further explained that in Perfect Web that which was missing was “unusually simple and the technology particularly straightforward.” In fact, in Perfect Web, which dealt with sending e-mail to an e-mail list, the missing claim limitation was nothing more than merely repeating the step of resending e-mails in accordance with the claim. Thus, O’Malley explained that Perfect Web is properly considered an exception to allowing common sense to supply a missing claim limitation, rather than the rule.

The Court also affirmed that the this means-plus-function term was indefinite. In the case of computer-implemented functions, the specification must disclose an algorithm for performing the claimed function. The patents-in-suit did not disclose an operative algorithm for the claimed “symbol generator.” A patentee cannot claim a means for performing a specific function and then disclose a “general purpose computer” as the structure performing that function. The specification must disclose an algorithm in hardware or software for performing the stated function.

Oakville Hills Cellar, Inc. (“Oakville”), doing business as Dalla Valle Vineyards, appealed from the decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) dismissing its opposition to a trademark application filed by Georgallis Holdings, LLC (“Georgallis”) to register a MAYARI mark for use on wine. Oakville had previously registered the mark MAYA, also for wine. Because there was substantial evidence to support the finding of the TTAB that there would be no likelihood of confusion, the Federal Circuit affirmed a registration of the mark MAYARI for wine products, affirming the TTAB’s decision and dismissing Oakville’s opposition.

The Federal Circuit, with Chief Judge Prost writing for the majority, joined by Judge Moore and Judge Stoll, vacated and remanded the case after ruling that the ‘929 patent claims are not directed to a patent-ineligible concept. “This is very heartening since the Supreme Court denied cert in Sequenom,” said Bob Stoll, former Commissioner for Patents at the United States Patent and Trademark Office and current partner at Drinker Biddle in Washington, DC. “It is great to see the CAFC apply the Supreme Court decisions more narrowly, as intended by that Court, and provide some relief to innovators that will help them to attract funding to develop their inventions.”

The Federal Circuit held that it is not the case that a patent must spell out a claim element’s function, way, and result, for the doctrine of equivalents to apply. It looked to what the claim element’s function in the claimed composition is to one of skill in the art, which it held may be determined by looking at extrinsic evidence. The Court found no error in the district court’s finding of infringement under the doctrine of equivalents. In applying the two part test (constructing a hypothetical claim that covers the accused device and comparing that claim to the prior art), the district court correctly determined that the hypothetical claim properly included the disputed excipients, i.e. Glenmark’s excipient.

Where the claims are directed to an improvement to computer functionality, they are not abstract under the first step of Alice, and thus no step-two analysis is necessary. Here, the Federal Circuit found that Enfish’s self-referential table was directed to a specific improvement in computer capabilities, unlike Alice, where the claimed technology only added a computer to a traditional business practice. For this reason, the Court held that Enfish’s claims were not abstract under the first step of Alice, and therefore did not warrant the application of step two.

The records revealed that Dr. Bielawski repeatedly testified that he personally conducted laboratory testing on J&J’s accused lenses when, in fact, the testing was conducted by Dr. Bielawski’s graduate students and various lab supervisors. Further, evidence suggested that Dr. Bielawski overstated his qualifications and experience with the relevant testing methods, and in fact had no experience whatsoever. There was also evidence that Dr. Bielawski withheld test results and data analysis that would have undermined his opinions and trial testimony.

In the Introduction to the Unified Patents’ brief the following statement is made: “The phrase ‘broadest reasonable interpretation’ describes the same procedure applied in both the PTO and by the courts.” That statement is unequivocally incorrect. Federal district courts do not apply the broadest reasonable interpretation of an issued claim when performing a claim construction in patent litigation. Quite the opposite, district courts narrowly interpret claims in an attempt to find a true and correct construction of the claims. The law is unequivocally clear: district courts do not apply the broadest reasonable interpretation standard. It is so axiomatic that district courts use a different standard than does the USPTO when interpreting claims it is almost difficult to figure out where to begin to unravel this falsehood.

ACS challenged the Board’s decision that Shaw was not barred from bringing the second IPR because the petition was filed more than one year after a complaint for infringement was served on Shaw. It argued that the decision of the Board not to apply the one-year bar was a matter of statutory interpretation reviewable by the Federal Circuit, and not a decision whether to institute an IPR. The court disagreed, and held that it had no authority to review the Board’s application of the one-year bar. In dicta, the Court suggested that while voluntary dismissal without prejudice may undo the effect of the lawsuit, it may not undo the effect of service of a complaint, which triggers the one-year time bar. But the issue was not properly before the court.

Twenty-five years ago, the Federal Circuit decided a case that transformed where (and how) patent infringement cases can be litigated.[1] By expanding the scope of where a corporate defendant “resides” for venue purposes, the court in VE Holding Corp. v. Johnson Gas Appliance greatly increased the number of states and courts in which many corporations can be sued for infringement. This decision has contributed to the development of forum-shopping and related litigation issues over the past several years. One company, TC Heartland, LLC, is now urging the Federal Circuit to overturn that precedent and restore more stringent venue restrictions through a writ of mandamus, and dozens of others are joining the debate.

The Court held that dealing “physical playing cards” did not constitute patent eligible territory. This constituted a “purely conventional” activity, like the conventional computer implementation that fell short in Alice. The Court found there was no inventive concept sufficient to transform the subject matter into a patent-eligible application of an abstract idea.