Posts Tagged: "Patentability"

“Teaching away” is a concept important to obviousness analysis under U.S. patent law. “Teaching away” basically bears upon the issue of motivation to combine elements in a manner set out by a patent claim, and such motivation is relevant to obviousness analysis but not to anticipation analysis: would one skilled in the art have had reason (or motivation) to put the known elements in the arrangement that the inventor has claimed? In a sense, “teaching away” is an anti-motivation, as it weighs against such an arrangement…. The question I propose to address is: Does the jurisprudence concerning “teaching away”—particularly the jurisprudence pertaining to whether a reference does or does not “teach away”—make any sense? And if not, what ought to replace it?

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday upheld the District of Delaware’s grant of judgment as a matter of law (JMOL) that Amgen’s patent claims covering its Repatha cholesterol treatment were invalid for lack of enablement. The court found that Amgen’s composition claims were defined by meeting functional limitations, rather than by structure, and that the patent specifications didn’t enable the preparation of the full scope of the claims without undue experimentation. Judge Lourie authored the opinion.  Amgen v. Sanofi (CAFC, Feb. 11, 2020)

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday issued a precedential opinion affirming a Delaware district court finding that Infinity Computer Products, Inc.’s patent claims relating to using a fax machine as a printer or scanner for a personal computer were invalid for indefiniteness. Infinity Computer Products, Inc. v. Oki Data Americas, Inc. (Feb. 10, 2020). Chief Judge Prost authored the opinion. The patents at issue were U.S. Patent Nos. 6,894,811; 7,489,423; 8,040,574; and 8,294,915, which share a specification. The term at issue was “passive link,” which refers to the link between the fax machine and the computer.

Earlier today, in cxLoyalty, Inc. v. Maritz Holdings, Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed-in-part, reversed-in-part and dismissed-in-part a decision of the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) in which the CAFC doubled down on its past contention that the USPTO’s Subject Matter Eligibility Guidance is not binding on the court’s analysis. The panel included Chief Judge Prost and Judges Lourie and Hughes. The opinion was authored by Prost.  

The U.S. Court of Appeals for the Federal Circuit (CAFC) on February 1 held in part that the United States Patent and Trademark Office’s (UPSTO) Patent Trial and Appeal Board (PTAB) erred in finding a claim anticipated when the petition for inter partes review had only asserted obviousness as to the claim. M&K Holdings, Inc. v. Samsung Electronics Co. Ltd. (CAFC, Feb 1, 2020). The CAFC vacated the PTAB’s decision on that claim but affirmed the holding of unpatentability as to the rest of the asserted claims.

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.

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.

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.”

In 2015, Randy dela Fuente launched Snapizzi. Randy had bet big, putting his career, savings, and company at risk. Later, Randy brought in a business partner, Chris Scoones, who cleaned out his savings and mortgaged his house. But they believed in the patent. On the patent’s government-issued cover, it stated that Snapizzi would have the “right to exclude others from making, using, offering for sale, or selling” the invention. This meant that U.S. Patent No. 8,794,506 would protect their company from infringers and give them enough time to carve a toehold in the market. That patent cover also said that the patent was “granted under law”, which meant that it was a legally granted and presumed valid property right. In America, we are a nation of laws. Randy trusted the U.S. government, and this made the burden of huge risk much more tolerable. But in December 2019, a court held that the claims are all ineligible for patenting because they are “abstract ideas”.

While China is becoming an increasingly attractive patent filing destination for foreign companies, foreign counsels are often confused by the country’s inventive step requirement. Indeed, Chinese patent examiners often use abstract legal terms, such as “prominent substantive features” and “notable progress,” in their inventive step analysis. This article provides an overview of the inventive step requirement in China, in comparison with the non-obviousness standard in the United States.

On November 13, the Federal Circuit affirmed a decision of the Board in In re: Google Technology Holdings LLC. In particular, the CAFC upheld a decision of the Board affirming a patent examiner’s final rejection and holding that Google forfeited the arguments put forth on appeal. Google’s U.S. Patent Application No. 15/179,765 was directed to “distributed caching for video-on-demand systems, and in particular to a method and apparatus for transferring content within such video- on-demand systems.” During prosecution, the examiner finally rejected the claims of the ‘795 application as being obvious under Section 103.

Consumer 2.0, Inc. d/b/a Rently has filed a petition with the U.S. Supreme Court asking it to review a U.S. Court of Appeals for the Federal Circuit decision holding its patent claims ineligible for patent protection under 35 U.S.C. § 101. The claims are directed to “the use of lockboxes able to recognize time-limited codes and coordination of those codes with software to facilitate secure automated entry.” Rently’s petition was filed just as the High Court kicked off its new term by denying certiorari yesterday in Chamberlain v. Techtronic, which also sought review of a Section 101 eligibility decision.

On Monday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Biogen MA, Inc. v. EMD Serono, Inc., reversing the U.S. District Court for the District of New Jersey’s judgment as a matter of law (JMOL) for Biogen. The New Jersey court had found no anticipation of Biogen’s patent claims, overturning a jury’s finding that the claims were anticipated by the prior art. The Federal Circuit’s decision, which turned on the issue of applying a product-by-process novelty analysis to certain nested claim limitations, said that a reasonable jury could find the claims anticipated and remanded with instructions to reinstate the jury verdict.

Intellectual property rights continue to be the Rodney Dangerfield of assets – they “can’t get no respect.” The reasons are complex, but not terribly surprising, given the increased speed and importance of technology in recent years. Compounding the disconnect are many individuals and businesses who prefer to view IP rights as impediments, not assets that can be licensed or otherwise monetized. In their mind, pilfering content, using someone else’s invention or borrowing a name or image is akin to a “white” lie that does no real harm. This myth has been perpetuated over time in different ways by other IP holders and consumers who would prefer not to pay for what they need. The result is a strangely inhospitable environment for IP that dissuades innovation and depresses value.

With its recent opinion in AAM, Inc. v. Neapco Holdings, LLC, No. 18-1763 (Fed. Cir. July 31, 2020), and a 6-6 stalemate by the court’s active judges on whether to take the case en banc, the Federal Circuit has now adopted—under the rubric of 35 U.S.C. §101—a formalized set of enablement-like requirements for patent claims. For a simple “threshold” eligibility test, section 101 has grown remarkably complex. Indeed, since the Supreme Court’s 2012 Mayo and 2014 Alice decisions re-cast patent eligibility into a “two-step framework,” the Section 101 test adjudges not just subject-matter eligibility and the three “limited” exceptions thereto, but also patentability or “inventive-concept” challenges predicated on comparisons to the prior art, see 35 U.S.C. §§ 102-103. And now the enablement-type requirements imposed by AAM v. Neapco.