Table of Contents

Patent News:

Patentee's statements at IPR raises prosecution disclaimer (posted 05/12/17)

In Aylus Networks v. Apple, the USFC upheld the lower court's finding of non-infringement based on a narrow claim construction of the phrase, “wherein the [control point proxy] logic is invoked to negotiate media content delivery between the [media server] and the [media receiver]” set forth in claim 2 of the litigated patent, RE 44,412. In upholding the lower court's ruling, the USFC addressed for the first time “whether statements made by a patent owner during an IPR proceeding can be relied upon to support a finding of prosecution disclaimer during claim construction.” Stated the court:

A patent owner's preliminary response filed prior to an institution decision and a patent owner's response filed after institution are both official papers filed with the PTO and made available to the public. In both official papers, the patent owner can define claim terms and otherwise make representations about claim scope to avoid prior art. . . . Regardless of when the statements are made during the proceeding, the public is “entitled to rely on those representations when determining a course of lawful conduct. . . .”
[. . .]
In conclusion we hold that statements made by a patent owner during an IPR proceeding, whetehr before or after an institution decision, can be considered for claim construction and relied upon to support a finding of prosecution disclaimer.“

The USFC then explained that they agreed with the district court that multiple statements made by the patent owner, such as “the CPP logic exclusively handles the negotiation of media content delivery between the MS and the MR,” according to the USFC, “constitute a clear and unmistakable surrender of methods invoking the control point logic [as opposed to the control point proxy] in the negotiation of media content delivery between the MS and the MR if the MS and MR are both in communication with the UE via a local wireless network.”

Fed. Cir. decides AIA on-sale bar (posted 05/01/17)

35 U.S.C. § 102(a) NOVELTY; PRIOR ART. —A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention

In Helsinn Healthcare v. Teva Pharmaceuticals USA the Fed. Cir. construed a vexing phrase in the AIA's on-sale bar provision. Patentee Helsinn asserted four patents against Teva, one of which, U.S. Patent 8,598,219, was subject to the AIA's novelty provision. Nearly 2 years before applying for the patent, Helsinn and MGI Pharma, Inc. entered into a “Supply and Purchase Agreement” for the medication covered by the patent which was announced in a joint press release by the two corporations and in MGI's 8-K filing with the SEC, which included partially redacted copies of the agreement. The transaction details were publicly disclosed except the price terms and specific dosage formulations.


The Federal Circuit reversed the lower court decision upholding patentability, stating:

  • “We decline the invitation by the parties to decide this case more broadly than necessary. [. . .] Even if the [Congressional] floor statements were intended to overrule those secret or confidential sale cases . . , that would have no effect here since those cases were concerned entirely with whether the existance of a sale or offer was public. Here, the existence of the sale . . . was publicly announced. . . .”
  • We conclude that, after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of the sale. . . . the Supply and Purchase Agreement . . . constituted a sale of the claimed invention . . . before the critical date, and therefore both the pre-AIA and AIA on-sale bars apply.

PTAB analyzes pre-AIA 102(e) claim-by-claim (posted 03/29/17)

35 U.S.C. §102 (pre-AIA) A person shall be entitled to a patent unless — (e) the invention was described in —

(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or

(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent . . .

In Duncan Parking Technologies v. IPS Group, the PTAB upheld some claims and determined other claims were anticipated under 35 U.S.C. § 102(e) (pre AIA) despite the fact that it was undisputed that the prior reference, King '054, described all the features of the patent at issue, King '310. The determination of anticipation turned instead on whether the '054 patent was “by another.”

The prior art reference, King '054, had one inventor, David King, in common with the patent, King '310. With respect to the upheld claims, the Board agreed with IPS that the upheld claims reflected the sole invention of King, and the portions of King '054 on which Petitioner DPT relies was King's own work, and hence not “by another.”

Laches defense nixed by SCOTUS (updated 03/21/17)


35 U.S.C. 286 Time limitation on damages:

Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

In the case of claims against the United States Government. . . .

In a 7-1 decision authored by Justice Alito, Justice Breyer dissenting, the S.Ct. held that, ”[b]y the logic of Petrella [which held that laches cannot be used to bar copyright claims during a three-year statute of limitations period] we infer that this provision represents a judgment by Congress that a patentee may recover for damages for infringement committed within six years of filing the claim.“

Breyer's dissent and the majority's response

In his dissent, Justice Breyer's wrote:

Laches is a doctrine that bars a plaintiff ’s claim when there has been unreasonable, prejudicial delay in commencing suit. See 1 D. Dobbs, Law of Remedies §2.3(5), p. 89 (2d ed. 1993). The question before us is whether acourt can apply this doctrine in a patent infringement action for damages brought within the statute of limitations. The Court holds that a court cannot. Laches, it says, is a “gap-filling doctrine,” generally applicable where there is no statute of limitations. But the 1952 Patent Act contains a statute of limitations. Hence there is “no gap to fill.” Ante, at 5.

In my view, however, the majority has ignored the fact that, despite the 1952 Act’s statute of limitations, there remains a “gap” to fill. See infra, at 2–3. Laches fills this gap. And for more than a century courts with virtual unanimity have applied laches in patent damages cases. Congress, when it wrote the 1952 statute, was aware of and intended to codify that judicial practice. I fear that the majority, in ignoring this legal history, opens a new “gap” in the patent law, threatening harmful and unfair legal consequences.
[. . .]
Two features of this statutory language are important. First, the limitations provision, unlike those in many other statutes, does not set forth a period of time in which to sue, beginning when a claim accrues and then expiring some time later. [. . .] Rather, it permits a patentee to sue at any time after an infringement takes place. It simply limits damages to those caused within the preceding six years. That means that a patentee, after learning of a possible infringement in year 1, might wait until year 10 or year 15 or year 20 to bring a lawsuit. And if he wins, he can collect damages for the preceding six years of infringement.

This fact creates a gap.

The majority responded to this argument in footnote 4 of the Court's opinion (internal citations removed):

The dissent argues that there is a “gap” in the statutory scheme because the Patent Act’s statute of limitations might permit a patentee to wait until an infringing product has become successful before suing for infringement. We rejected a version of this argument in Petrella, and we do so here. The dissent’s argument implies that, insofar as the lack of a laches defense could produce policy outcomes judges deem undesirable, there is a “gap” for laches to fill, notwithstanding the presence of a statute of limitations. That is precisely the kind of “legislation-overriding” judicial role that Petrella rightly disclaimed.


This case has an interesting background:

  • On October 31, 2003, patent holder SCA notifies defendant First Quality of infringement of Patent 6,375,646.
  • On November 21, 2003, First Quality informs SCA that it thinks SCA's patent is invalid because it is anticipated by prior patent 5,415,649, and therefore it is not infringing
  • On July 7, 2004, SCA requests reexamination of the '646 patent in light of the '649 patent. SCA does not notify or communicate with First Quality regarding the reexamination or otherwise, after the initial exchange.
  • On March 27, 2007, the PTO confirmed patentability of all 28 original claims and issued several other claims SCA added during reexamination.
  • On August 2, 2010 – over three years after reexamination concluded and nearly seven years since the original communication – SCA filed a complaint alleging First Quality of infringing the '646 patent.
  • The district court granted First Quality's summary judgment motion on latches and equitable estoppel.
  • SCA appealed and in an earlier panel decision, the summary judgment was affirmed the district court's analysis.
  • SCA filed a petition for rehearing en banc, posing the following questions:
    1. In light of the Supreme Court's decision in Petrella v. Metro-Goldwyn-Mayer 1), should A.C. Aukerman Co. v. R.L. Chaides Constr. Co. 2), be overruled so that the defense to latches is not applicable to bar a claim for damages based on patent infringement occurring within the six-year damages limitation period established by 35 U.S.C. § 286?
    2. In light of the fact that there is no statute of limitations for claims of patent infringement and in view of Supreme Court precedent, should the defense of latches be available under some circumstances to bar an entire infringement suit for either damages or injunctive relief?


On May 2, 2016, the S.Ct. granted a petition in SCA Hygiene Products v. First Quality Baby Products, LLC. to address the question: “whether and to what extent the defense of laches may bar a claim for patent infringement. . . .”

On 11/01/16, arguments were held:


In an en banc majority opinion authored by Chief Judge Prost, the Federal Circuit, in SCA Hygiene Products v. First Quality Baby Products, LLC, found that § 282 defenses provision of Title 35 includes laches (even though it is not mentioned) and that case law (pre-dating the Supreme Court's decision last year in Patrella) shows that laches is a defense to legal liability and hence a defense to patent infringement for prior damages, in contravention of the plain meaning of Patrella in view of § 286. Confused? Read on . . .

The majority opinion discussed judicial history of laches and equitable estoppel vis-à-vis the precedent set by Aukerman. Stated the court: ”Aukerman was motivated by preserving the distinction between laches – which bars only pre-suit damages – and equitable estoppel – which bars the entire suit. Estoppel, which does not necessarily involve delay in bringing the suit, requires 'statements or conduct of the patentee which must communicate in a misleading way that the accused infringer will not be disturbed by the plaintiff patentee in the activities in which the former is currently engaged“ (internal quotes and citations removed).

The court explained that although Auckerman controlled the operation of laches in patent cases for over two decades, the recent Petrella decision in the Supreme Court upset the status quo by holding that laches was not a defense to legal relief in copyright law. Petrella calls portions of Aukerman's reasoning into question, necessitating this en banc reconsideration. Specifically, In Petrella, the Supreme Court reasoned that the copyright statute of limitations itself takes account of delay, crowding out the judiciary's power to decide whether a suit is timely. Therefore, the Supreme Court found, “laches is a defense developed by courts of equity; its principal application was, and remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitations.”


The en banc opinion held that, under Petrella, Section 286 acts as a prescription by Congress of a time period for recovery of damages. Characterizing Section 286 as a statute of limitations or a limitation on damages is not dispositive or a relevant consideration. Because patent infringement is a continuous tort, there is no relevant functional difference between a damages limitation and a statute of limitations. However, the majority opinion held that, based on a “sufficiently reliable source on the meaning of § 282,” the defenses provision, that that section uses inclusive language, and hence includes within it codification of laches as a statutory defense to patent infringement. This is consistent with prior interpretations of § 282.

The question remained:

If laches as codified in § 282 is a defense only against only equitable relief, Petrella prohibits judicial application of laches to bar legal damages. If, however, laches as codified operates as a defense to both legal and equitable relief, patent law's statutory scheme–like the Lanham Act . . . – does not implicate Patrella. In that case § 286 obligates us to apply laches as a defense to a legal relief, notwithstanding § 286's time limitation on the recovery of damages.

Based on tenuous at best logic, the court further held, ”[i]n sum, the case law strongly supports the availability of laches to bar legal relief. In applying laches to ongoing relief, the court held awarding ongoing relief requires that the court act within its equitable discretion, which, according to eBay must be exercised consistent with traditional principles of equity. This means following the four-fact test laid out in eBay.


In a dissent-in-part authored by Judge Hughs, joined by Moore, Wallace, Taranto, and Chen, Judge Hughes writes:

In Petrella v. Metro-Goldwyn-Mayer, Inc., the Supreme Court emphasized that it had never approved the use of laches to bar a claim for legal damages brought within a statutory limitations period. The majority reasons that Petrealla is not controlling here because Congress specifically incorporated laches as a defense to legal damages into the Patent Act of 1952. But the majority has no sound basis for finding that Congress intended to displace the uniform limitations period in § 286 with the case-specific doctrine of laches. The majority's key logic – that Congress adopted the view of some lower courts that laches could bar legal relief in patent cases – requires us to presume that Congress ignored the Supreme Court. For in 1952, the Supreme Court had already recognized the common-law principle that laches cannot bar a claim for legal damages. I know of no precedent for inferring a congressional departure from a common-law principle recognized by the highest court based solely on aberrational lower-court decisions.

Diamond v. Diehr is still good law (posted 03/09/17)

1. A system for tracking the motion of an object relative to a moving reference frame, comprising:

a first inertial sensor mounted on the tracked object;

a second inertial sensor mounted on the moving reference frame; and

an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.

22. A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.

In Thales Visionix Inc. v. U.S., the Federal Circuit reversed a lower court ruling that the claims were patent-ineligible subject matter under 35 U.S.C. § 101 because they are directed to an abstract idea under the two-part Alice framework.

The court first addressed Diehr, noting that the Supreme Court, “explained that claims are patent eligible under § 101 'when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect.' In terms of the modern day Alice test, the Diehr claims were directed to an improvement in the rubber curing process, not a mathematical formula” (internal citations removed).

In footnote 2, the Court continued, “Diehr preceded the evolution of the Supreme Court’s two-step framework and therefore did not separate its analysis into the two Alice steps. We do not hold that Diehr is instructive precedent only for Alice step one.”

In overturning the ruling that Thales Visionix's patent was invalid, the court stated (emphasis added):

For the purpose of evaluating patent eligibility, the ’159 patent claims are nearly indistinguishable from the claims at issue in Diehr. [. . .] While the claims utilize mathematical equations to determine the orientation of the object relative to the moving reference frame, the equations—dictated by the placement of the inertial sensors and application of laws of physics—serve only to tabulate the position and orientation information in this configuration. This arrangement is analogous to the claims in Diehr, which required the temperature measurement “at a location closely adjacent to the mold cavity in the press during molding.” Diehr, 450 U.S. at 179 n.5. Just as the claims in Diehr reduced the likelihood that the rubber molding process would result in “overcuring” or “undercuring,” id. at 187, the claims here result in a system that reduces errors in an inertial system that tracks an object on a moving platform.

Is Diamond v. Diehr still good law? (posted 03/07/17)

1. An automated method for determining the state of a well operation, comprising:

storing a plurality of states for a well operation;

receiving mechanical and hydraulic data reported for the well operation from a plurality of systems; and

determining that at least some of the data is valid by comparing the at least some of the data to at least one limit, the at least one limit indicative of a threshold at which the at least some of the data do not accurately represent the mechanical or hydraulic condition purportedly represented by the at least some of the data; and

when the at least some of the data are valid, based on the mechanical and hydraulic data, automatically selecting one of the states as the state of the well operation.

30. The method of claim 1, further comprising using the state of the well operation to evaluate parameters and provide control for the well operation.

In TDE Petroleum Data Solutions v. AKM Enterprise, Inc. DBA Mobilize, Inc., the Federal Circuit in 2016 nixed TDE's patent on a method of determining the state of an oil well operation on an appeal of the district court's grant of motion to dismiss made by Mobilize. In a short 5-page opinion, Judge Houghes wrote for the unanimous panel that the claims fail the 2-part Alice test.

In March 2017, the Supreme Court denied a petition certiorari after the Federal Circuit denied a petition for an en banc rehearing. An amicus brief filed on behalf of 15 law professors argues that this case is effectively a reversal of Diamond v. Diehr, the famous case involving automatically controlling a curing process for rubber tires.

This case exemplifies a fundamental error in the lower courts’ application of the Mayo-Alice test, which has produced harmful indeterminacy in patent law. Amici here identify a key insight into the nature of this legal indeterminacy: the district court and the Federal Circuit applied the Mayo-Alice test in a way that would invalidate the process claim this Court deemed to be patent eligible in Diehr. While the Petitioner focuses on Claim 1, Amici focus instead on Claim 30 because it precisely parallels the patented process this Court held to be patent eligible in Diehr. Thus, Claim 30 epitomizes the legal conflict that now exists between this Court’s patentable eligibility jurisprudence and the lower courts’ misapplications of the Mayo-Alice test.

In addition, the brief argues that the court improperly analyzed the claimed invention in parts, rather than as a whole. The amicus brief states:

In order to reach a contrary result in this case, both the district court and the Federal Circuit did what this Court has cautioned against: “dissect[ing] the claims into old and new elements and then [ignoring] the presence” of other elements in the claimed invention as a whole that make it patent eligible. Diehr 450 U.S. at 188. The courts below ignored the basic requirement that they must assess the claimed invention as a whole under § 101. In this case, the claimed invention as a whole is an industrial oil-drilling operation on an oil rig. Like the rubber-curing process at issue in Diehr, 450 U.S. at 184 n.8, industrial oil-drilling processes have historically been secured under the patent laws. See, e.g., Roberts v. Dickey, 20 F. Cas. 880, 884-85 (C.C.W.D. Pa. 1871) (holding as patent eligible an oil-drilling patent and rejecting defendant’s argument it is unpatentable subject matter); U.S. Patent 850,037 (issued Apr. 9, 1907) (Method of Raising Liquids From Wells); U.S. Patent 6,528 (reissued Jan. 26, 1875) (Method of Increasing Capacity of Oil-Wells).

Supreme Court construes statutory limits on international inducement (posted 02/22/17)

35 U.S.C. § 271(f)(1): Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

In Life Technologies Corp. et al. v. Promega Corp. et al., the Supreme Court held that 35 U.S.C. § 271(f)(1) “has a quantitative, not a qualitative meaning” and that sending overseas a single component for incorporation into other components for manufacture of the patented invention can never constitute a “substantial portion” and thus trigger infringement liability.

Another PTAB reversal at Fed. Cir. because of vague opinion (posted 02/15/17)

In Personal Web Technologies LLC v. Apple, Inc, the Federal Circuit expressed frustrations that the PTAB has not met its burden of adequately explaining its rationale for invalidating patents, stating, “[w]e have repeatedly applied those requirements in reviewing the adequacy of the board's obviousness analysis. . . .”


  • Unordered List ItemQuoting In re Lee 3), the Fed. Cir. held that “the agency tribunal must present a full and reasoned explanation of its decision. The agency tribunal must set forth its findings and the grounds thereof, as supported by the agency record, and explain its application of the law to the found facts.” The court continued, citing Synopsis, Inc. v. Mentor Graphics Corp. 4), “the Board, as an administrative agency, must articulate logical and rational reasons for its decisions” (inner quotations omitted). The court then concluded that “[t]he Board did not sufficiently explain and support its conclusions that (1) Woodhill and Stefik disclose all of the elements recited in the challenged claims . . . and (2) a relevant skilled artisan would have been motivated to combine Woodhill and Stefik in the way the '310 patent claims and reasonable expected success.”
  • With respect to the rationale to combine, the Federal Circuit is clear that the Board's acceptance of Apple's argument that the references could be combined is insufficient. Stated the court:
The Board’s most substantial discussion of this issue merely agrees with Apple’s contention that “a person of ordinary skill in the art reading Woodhill and Stefik would have understood that the combination of Woodhill and Stefik would have allowed for the selective access features of Stefik to be used with Woodhill’s content-dependent identifiers feature.” Id. at *8 (emphasis added). But that reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”); InTouch Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).
  • In its most harsh critique, the Boar stated, “[i]ndeed, the Board nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work. At least in this case, such a clear, evidence-supported account of the contemplated workings of the combination is a prerequisite to adequately explaining and supporting a conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.”

Fed. Cir. reverses PTAB on functional limitation (posted 01/10/17)

In In re Chudik, the Federal Circuit reversed a PTAB decision upholding an Examiner's rejection of a claim to a scalpal having a blade “configured for creating a passageway through skin and soft-tissue to a target site on a bone.” There was no dispute that prior art device met non-functional (i.e., structural) limitations in the claim. Stated the court:

“When . . . the only question [is] whether the functional limitation can be found in the single prior art reference, we apply the long-standing and unquestioned precedent as stated in In re Schreiber 5). . . . [W]hen the structural limitations are met by a single prior art reference, and when the examiner 'has reason to believe' that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the functional limitation cannot be met by the single prior art reference.

In this case, the examiner and the Board shifted the burden to the applicant . . . to disprove anticipation. [. . .] As explained below, in this case the examiner lacked adequate reason for his belief that Samuels inherently teaches the functional limitation, and the Board thus erred in sustaining the examiner's § 102 final office action.”

Fed. Cir. upholds narrow meaning of "defined" (posted /date)

In Impulse Technology Ltd. v. Microsoft et al., the Judge Lourie, writing for a two-judge panel with Judge Newman, agreed with Microsoft and the lower court that the a claim limitation reading “a tracking system for continuously tracking an overall physical location of a player in a defined physical space” should be narrowly construed. The claim is asserted against Microsoft's XBox “Kinect” 3D tracking system and game developers using Kinect. The lower court construed “defined physical space” to mean an “indoor or outdoor space having size and/or boundaries known prior to the adaption of the testing and training system.” The Federal Circuit agreed with Microsoft that this construction means prior to game play and specifically that the “defined physical space” must “be (1) known prior to adaption of the system, and (2) defined independently of the sensor viewing area.”

Fed. Cir.: Amdocs network monitoring patents eligible under Alice (posted 11/02/16)

In Amdocs v. Openet Telecom, the Federal Circuit held that patents related to a distributed system for collecting network data for billing was patent eligible under § 101 because the distributed nature of the data enhancement step represented an improvement over prior art and therefore represented an unconventional technical solution.

~UPDATED~ Openet petitioned for En Banc Rehearing and this was followed by an Amicus Brief by the Internet Association and the Computer & Communications Industry Association.

The petition raised the following two questions for consideration:

  1. Can features disclosed in the specification but not claimed by a patent provide the inventive concept for the second step of the Alice/Mayo framework?
  2. Under the two-step Alice/Mayo framework, can a court properly determine whether a claim contains an “inventive concept” without first fully evaluating whether and to what extent the claim is directed to an abstract idea?

Procedural background

In 2014, the Federal Circuit issued a previous opinion in Amdocs (Israel) Limited v. Openet Telecom, Inc. which resulted in remand to the the district court. Since that decision, the Supreme Court issued its infamous Alice decision after Openet, with the case on remand from the initial Federal Circuit decision that the claims, moved for judgement of invalidity under Alice, which the district court granted. The panel majority, Judges Newman and Plager, reversed and remanded on all four patents at issue; Judge Reyna dissented.


The Court held that “a search for a single test or definition [of 'abstract idea'] int he decided cases concerning § 101 from this court, and indeed from the Supreme Court, reveals that at present there is no such single, succinct, usable definition or test. [. . .] Instead of a definition, then, the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided.” The court then proceeded to undertake a review of other cases and found the following:

  • With respect to '065 patent, “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record” is not abstract because the word, “enhance” was construed as dependent upon the invention's distributed architecture, where “distributed” means that the network usage records are processed close to their sources before being transmitted to a centralized manager.“ The court reasoned that this is not abstract because the distributed enhancement was a critical advancement over the prior art and therefore constituted an unconventional technological solution. The remaining broad claims of the other three patents were held to be patent eligible for similar reasons.


Judge Rayna dissented, arguing, that the majority did not properly follow the procedure outlined in Alice, that the use of a “distribution architecture” is insufficient to satisfy Alice step two, and was improperly imported to the claims from the specification when it was not explicitly present in the claims.

Oral Hearing

In oral arguments a three-judge panel including judges Newman, Rayna, and Plager heard arguments that a software invention relating to collecting and organizing information from a computer network is an abstract idea or not. One of the judges (either Plager or Rayna) appeared to focus on what an abstract idea is–whether everything is “abstract” under Alice, while Judge Newman appeared to focus on preemption. The patent holder argued that the invention is tied to physical, concrete objects, and therefore is not abstract, stating, “we have left our minds. We have left the realm of just general concepts or ideas and now we are talking about something that really exists in the real world in a geographically distributed architecture.”

PTAB upholds rejection of unpatentability of claim with conditional language (posted 10/28/16)

In Ex Parte Schulhauser the PTAB found that a claim having conditional language “If X and If NOT X” was unpatentable when art only shows the “If X” part of the claim. The opinion focused on claim 1, reproduced to the right.

1. A method for monitoring of cardiac conditions incorporating an implantable medical device in a subject, the method comprising the steps of:

collecting physiological data associated with the subject from the implantable device at preset time intervals, wherein the collected data includes real-time electrocardiac signal data, heart sound data, activity level data and tissue perfusion data;

comparing the electrocardiac signal data with a threshold electrocardiac criteria for indicating a strong likelihood of a cardiac event; triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria;

determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria;

determining whether the current activity level is below a threshold activity level;

comparing the tissue perfusion data with a threshold tissue perfusion criteria for indicating a strong likelihood of a cardiac event if the current activity level is determined to be below a threshold activity level;

triggering an alarm state if the threshold tissue perfusion data is not within the threshold tissue perfusion criteria;

and triggering an alarm state if the threshold tissue perfusion data is within the threshold tissue perfusion criteria and the heart sound data indicates that S3 and S4 heart sounds are detected, wherein if an alarm state is not triggered, the physiological data associated with the subject is collected at the expiration of the preset time interval.

Appellants argued that the references failed to show “comparing the tissue perfusion data with a threshold tissue perfusion criteria for indicating a strong likelihood of a cardiac event if the current activity level is determined to be below a threshold activity level” or as recited in claim 1, reproduced to the right. The PTAB concluded that this step is not required of the broadest reasonable interpretation of the claim. Specifically, the PTAB reasoned:

”[d]ue to the language in the “triggering” and “determining” steps, logically, the “triggering” and “determining” steps do not need to be performed, after the “comparing” step if the condition precedent recited in each step is not met. More specifically, the “triggering” and “determining” steps of this claim are mutually exclusive. If the electrocardiac signal data is not withint the threshold electrocardiac criteria,k kthen an alarm is triggered and the remaining method steps need not be performed. . . .

Based on the claim limitations as written, the broadest reasonable interpretation of claim 1 encompasses an instance in which the method ends when the alarm is triggered in response to the cardiac signal data not being within the electrocardiac criteria, such that the step of “determining the current activity level of the subject” and the remaining steps need not be reached. In other words, claim 1 as written covers at least two methods, one in which the prerequisite condition for the triggering step is met and one in which the prerequisite condition for the determining step is met. [. . .]

The Examiner in this case was able to present a prima facie case of obviousness as to claim 1 by providing evidence to show obviousness of the “collecting,” “comparing,” and “triggering” steps. The Examiner did not need to present evidence of the obviousness of doing the remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim. . . .

Fed. Cir. vacates PTAB's refusal to consider amended claim (posted 08/31/16)

In Veritas Technologies v. Veeam Software Corp., the Fed. Cir. vacated the PTAB's refusal to consider an amended claim. The PTAB denied Veritas' motion to add usbstitute claims because it considered the motion and supporting declaration deficient because Veritas “offered no discussion of whetehr the newly added features . . . were separately known in the art” (internal quotes omitted). All that Veritas discussed was that the newly added features in combination with other known features were not in the prior art.“

The Fed. Cir. concluded that because there is no reason to doubt that it is only the combination that was the “new feature” a scenario recognized in a long line of Supreme Court and Federal Circuit cases noting that novel and nonobvious inventions are also only a combination of known individual features. Stated the court: “In this case, we fail to see how describing the combination is meaningfully different from describing what is new about the proposed claims, even in comparison to the unamended claims.”

Fed. Cir. reverses BPAI obviousness holding (posted 08/15/16)

In Arendi S.A.R.L. v. Apple Inc., (Fed. Cir. 2016), the Federal Circuit reversed a holding by the BPAI that a claim to searching a contacts list for a matching contact on recognizing a name or phone number in a text was obvious in view of a reference teaching the phone number recognition, but not the search. As basis for the BPAI's rejection under 35 U.S.C. § 103(a) based on a single reference, the BPAI stated:

We find it reasonable to presume, as a matter of common sense and at the time of the invention, that the subroutine in Pandit would search for duplicate telephone numbers and, upon locating a duplicate entry, both the first information and associated (or second) information, such as the name and/or address associated with the telephone number, would be displayed to the user.

The Federal Court rejected “common sense” as a substitute for evidence when attempting to meet a claim limitation, and further expounded on appropriate uses for “common sense” in patent law:

  1. First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.
  2. Second, in Perfect Web, the only case Appellees identifies in which common sense was invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question was unusually simple and the technology particularly straightforward.
  3. Third, our cases repeatedly warn that references to “common sense”–whether to supply a motivation to combine or a missing limitation-—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.

Fed. Cir. suggests eligible under § 101 if patentable under §§ 102/103 (posted 07/31/16)

On June 27, the Federal Circuit, BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, issued another opinion interpreting Alice, Mayo, and now Enfish, in the field of computer software, vacating the district court's dismissal, and remanding to the lower court for further proceedings. In this case, the invention relates to a method to provide filtering internet requests at an ISP, where the filtering is customized for the particular user, as determined by a sign-in process.

The court addressed step 2 of the 2-step analysis outlined in Mayo without resolving step 1. Stated the court (internal citations and quotes omitted):

This case, unlike Enfish, presents a close call about how to characterize what the claims are directed to. The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.

Fed. Cir. criticized the District court's step 2 analysis of the claim limitations, stating (internal cites and quotes omitted):

In light of Mayo and Alice, it is of course now standard for a § 101 inquiry to consider whether various claim elements simply recite well-understood, routine, conventional activities. The district court's analysis in this case, however, looks similar to an obviousness analysis under 35 U.S.C. § 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

Jude Newman's Concurrence

Finally, Judge Newman’s concurs in result, but makes a forceful argument that, in order to resolve the issue presented in this case as to patent eligibility, you need to resolve patentability, and in such cases, the lower courts should litigate both eligibility and patentability together:

When evidence of patentability is needed or presented to resolve a challenge to eligibility of claims to a new method . . . the district court and the parties should have the flexibility to resolve patentability at this threshold. If the claims are unpatentable, any issue of abstractness, however defined, is mooted. And if the subject matter is patentable, it is not an abstract idea. We should clarify that such expediency is an available response to challenges on the ground of abstract idea.

Fed. Cir. en banc reverses panel on on-sale bar (posted 07/11/16)

Pfaff’s two-step framework for determining whether a sale triggers an on-sale bar requires

  1. that the claimed invention was the subject of a commercial offer for sale; and
  2. that the claimed invention was ready for patenting (can be met by (1) proof of a reduction to practice or (2) drawings or other descriptions sufficiently specific to enable a person of ordinary skill to practice the invention).

The Federal Circuit, in an en banc decision in The Medicines Company v. Hospira, Inc. reversed the prior panel decision holding that the sale by a manufacturor to the patentee did not meet the requirements of the second step outlined by Pfaff v. Wells 6) on what constitutes an on-sale bar. This decision reverses the “no supplier exception” rule under Special Devices, Inc., v. OEA, Inc., 7).

Stated the court:

  • . . . the mere sale of manufacturing services by a contract manufacturer to an inventor to create embodiments of a patented product for the inventor does not constitute a “commercial sale” of the invention.
  • . . . commercial benefit – even to both parties in a transaction – is not enough to trigger the on-sale bar of § 102(b); the transaction must be one in which the product is “on sale” in the sense that it is “commercially marketed.”

The court found three reasons in the present case that the sale did not meet the first test in Pfaff:

  1. only manufacturing services were sold to the inventor – the invention was not;
  2. the inventor maintained control of the invention, as shown by the retention of title to the embodiments and the absence of any authorization to Ben Venue to sell the product to others; and
  3. “stockpiling,” standing alone, does not trigger the on-sale bar.

Fed. Cir. reverses district court's ruling requiring that continuations be filed at least one day before parent's grant (posted 06/21/16)

35 U.S.C. 120 (pre‑AIA) Benefit of earlier filing date in the United States:

An application for patent for an invention disclosed . . . in an application previously filed in the United States . . . which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application. . . .

In Immersion Corp. v. HTC Corp, The Federal Circuit reversed a lower court decision invalidating a patent because it was filed the same day as its parent application.

Stated the court:

The statutory language does not compel, though it certainly could support, adoption of a day as the unit of time for deciding if filing is “before” patenting. And history is decisive in permitting the same-day-continuation result, under which using units of time of less than a day, a “filing” is deemed to occur before “patenting.” The Supreme Court approved same-day continuations in 1863, and the 1952 Patent Act, which introduced section 120, was broadly a codification of existing continuation practices. And same-day continuations have been approved by a consistent, clearly articulated agency practice going back at least half a century, which has plausibly engendered large-scale reliance and which reflects the agency's procedural authority to define when the legal acts of “filing” and “patenting” will be deemed to occur, relative to each other, during a day. We reverse the district court’s contrary holding and remand.

Oral Arguments

S.Ct. affirms BRI standard for AIA reviews (posted 06/20/16)

In Cuozzo Speed Technologies LLC v. Lee, the Supreme Court affirmed the Federal Circuit's holding that (1) the decision whether to institute inter partes review is final and non-appealable, and (2) broadest reasonable interpretation of claims is “a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office.”

Oral Arguments

On April 25, 2016, the Supreme Court heard oral arguments.

Opinion below: Federal Circuit

In a 6-5 decision, In re Cuozzo Speed Technologies, LLC., the full Federal Circuit denied en banc review of its prior panel decision to let stand broadest reasonable interpretation (BRI) claim construction by the BPAI during inter partes review. Judge Dyk, joined by Lourie, Chen, and Hughes, authored a concurring opinion finding (1) the PTO has applied BRI standard in proceedings for more than a century, and (2) the AIA does not indicate congressional intent to change the prevailing BRI standard.

Judge Prost, joined by Newman, Moore, O'Malley, and Reyna, dissented, arguing that IPR is a new, court-like proceeding designed to adjudicate validity of issued patent claims and in such proceeidngs claims are given their actual meaning, not BRI. According to Prost, the AIA “is a new statutory regime” and Congress' silence as to the proper claim construction standard does not suggest congressional intent one way or the other on this new proceeding.

Newman wrote a separate dissent, highlighting the outlier nature of the majority opinion, noting that “[a]ll of the amici curiae criticize the panel majority position and urge en banc attention to this “matter of exceptional importance.” Separately she argues that “the legislative purpose [of the AIA] fails if the PTO applies different law than is applied in the courts” and again lists from her panel dissent the reasons BRI is improper in AIA proceedings.

Supreme Court nixes Seagate, relaxes treble damages rule (posted 06/14/16)

35 U.S.C. § 284:

Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.

When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d) .

The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.

In a combined ruling for Halo Electronics v. Pulse Electronics and Stryker v. Zimmer, the Supreme Court struck down the two-part test under In re Seagate technology, LLC, 8) for determining when a district court may increase patent infringement damages under 35 U.S.C. § 284.


Stated the court:

  • [Section 284] contains no explicit limit or condition, and we have emphasized that the “word 'may' clearly connotes discretion” [citing Martin v. Franklin Capital Corp.]] [. . .] At the same time, ”[d]iscretion is not a whim.“ . . . Thus, although there is “no precise rule or formula” for awarding damages under §284, a district court's “discretion should be exercised in light of the considerations” underlying the grant of that discretion. [Internal citations removed.]
  • That [Seagate]] test . . . “is unduly rigid, and it impermissibly encumbers that statutory grant of discretion to district courts” [quoting Octane Fitness]. In particular, it can have the effect of insulating some of the worst patent infringers from any liability for enhanced damages.
  • The principle problem with Seagate's two-part test is that it requires a finding of objective recklessness in every case before the district courts may award enhanced damages. [. . .] The existence of such a defense insulates the infringer from enhanced damages, even if he did not act on the basis of the defense or was even aware of it. Under that standard, someone who plunders a patent–infringing it without any reason to suppose his conduct is arguably defensible–can nevertheless escape any comeuppance under §284 solely on the strength of his attorney's ingenuity.
  • Section 284 allows district courts to punish the full range of culpable behavior. Yet none of this is to say that enhanced damages must follow a finding of egregious misconduct. As with any exercise of discretion, courts should continue to take into account the particular circumstances of each case in deciding whether to award damages, and in what amount. Section 284 permits district courts to exercise their discretion in a manner free from the inelastic constraints of the Seagate test. Consistent with nearly two centuries of enhanced damages under patent law, however, such punishment should generally be reserved for egregious cases typified by willful misconduct [emphasis added].
  • The Seagate test is also inconsistent with §284 because it requires clear and convincing evidence to prove recklessness. [. . .] Like §285, §284 “imposes no specific evidentiary burden, much less such a high one” [quoting Octane]. [. . .] As we explained in Octane Fitness, “patent-infringement litigation has always been governed by a preponderance of the evidence standard.” [. . .] Enhanced damages are no exception.
  • Finally . . . we . . . reject the Federal Circuit's tripartite framework for appellate review. [. . .] Because Octane Fitness confirmed district court discretion to award attorney fees, we concluded that such decisions should be reviewed for abuse of discretion. [. . .] The same conclusion follows naturally from our holding here.

Concurring opinion by Justice Breyer, joined by Kennedy and Alito

Stated J. Breyer:

  • First, the Court's references to “willful misconduct” do not mean that a court may award enhanced damages simply because the evidence shows that the infringer knew about the patent and nothing more. [. . .] Here, the court's opinion, read as a whole and in context, explains that “enhanced damages are generally appropriate . . . only in egregious cases.” [. . .] They amount to “punitive” sanction for engaging in conduct that is either “deliberate” or “wanton.”
  • Second, the Court writes against a statutory background specifying that the “failure of an infringer to obtain the advice of counsel . . . may not be used to prove that the accused infringer willfully infringed.” §298. The Court does not weaken this rule through its interpretation of § 284. Nor should it.
  • Third, . . . enhanced damages may not “serve to compensate patentees” for infringement-related costs or litigation expenses. [. . .] That is because §283 provides for the former prior to any enhancement.
  • Consider that the U.S. Patent and Trademark Office estimates that more than 2,500,000 patents are currently in force. [. . .] moreover, Members of the Court have noted that some “firms use patents . . . primarily [to] obtai[n] licensing fees” [citing eBay]. Amici explain that some of those firms generate revenue by sending letters to “tens of thousands of people asking for a license or settlement” on a patent “that may in fact not be warranted.” [. . .] How is a growing business to react to the arrival of such a letter, particularly if that letter carries with it a serious risk of treble damages? Does the letter put the company “on notice” of the patent? Will a jury find that the company behaved “recklessly” simply for failing to spend considerable time, effort, and money obtaining expert views about whether some or all of the patents described in the letter apply to its activities (and whether the patents are even valid)? These investigative activities can be costly. Hence the risk of treble damages can encourage the company to settle, or even abandon any challenged activity. [¶] To say this is to point to a risk: The more that businesses . . . adopt this approach, the more often a patent will reach beyond its lawful scope to discourage lawful activity, and the more often patent-related demands will frustrate, rather than “promote” the “Progress of Science and useful Arts” [quoting Art. I, §8, cl. 8 of the Constitution]. [. . .] Thus, in the context of enhanced damages, there are patent-related risks on both sides of the equation. That fact argues, not for abandonment of enhanced damages, but for their careful application, to ensure that they only target cases of egregious misconduct.
    • [Editor's note: Is Breyer saying that ignoring threads from patent trolls should not be considered “egregious”?]
  • One final point: The Court holds that awards of enhancement damages should be reviewed for an abuse of discretion. [. . .] I agree. But I also believe that, in applying that standard, the Federal Circuit may take advantage of its own experience in patent law. Whether, for example, an infringer truly had “no doubts about [the] validity” of a patent may require an assessment of the reasonableness of a defense that may be apparent from the face of that patent.

Fed. Cir. hears args on limits of CBM review (posted 06/08/16)

AIA § 18(d)(1): IN GENERAL.—For purposes of this section, the term ‘‘covered business method patent’’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

In Unwired Planet v. Google, the Federal Circuit heard arguments regarding a PTAB CBM decision invalidating all claims under § 112 first paragraph. The arguments dealt with possible overreach by the PTO in instituting the CBM review of patent claims that relate to a system for providing location-based services to connected mobile devices.

Unwired Planet argued that the U.S. Patent 7,024,205 is not directed to covered business method and PTAB had no business instituting the CBM. From questioning, the judges appear inclined to avoid the question of CBM review by finding invalidity by reasons of obviousness in an IPR on the same patent proceeding in parallel with the CBM review. Judges grill Google's representative on whether this patent relates to a financial service starting at 30:28.

Fed. Cir. reverses 101 invalidity on "self referential database" (posted 05/17/16)

On May 12, 2016, in Enfish v. Microsoft Corp., the Fed. Cir. reversed a district court ruling of invalidity under § 101 of a claim directed to a self referential database.

§ 101 eligibility - Key Holdings

  • “We . . . see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs.”
  • ”[t]he first step in the Alice inquiry . . . asks whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.“

The Fed. Cir. held that, in finding that Enfish's claims were directed simply to “the concept of organizing information using tabular formats”, the district court oversimplified the self-referential component of the claims and downplayed the invention's benefits. Contrasting the facts of this case with Versata Development Group v. SAP America, the court rejected the argument that the claims are doomed under Alice because the invention can run on a general-purpose computer. For similar reasons, the court rejected the idea that because the improvement is not defined by reference to “physical” components, the claims are invalid under Alice, refusing to resurrect the bright-line machine-or-transformation test of Bilski.

Benefits of the Invention: The court, in several places and in particular in oral arguments expounded on the benefits the invention brings to the art. Stated the court: “Moreover, our conclusion that the claims are directed to an improvement of an existing technology is bolstered by the specification's teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. [. . .] In finding that the claims were directed simply to 'the concept of organizing information using tabular formats,' . . . the district court oversimplified the self-referential component of the claims and downplayed the invention's benefits.”

The opinion refers to a large extent to points made in oral arguments:

§ 112 definiteness

The court rejected Microsoft's argument that the means-plus-function element in claim 17 is indefinite under 35 U.S.C. § 112, finding that the district court's 4-step algorithm sufficiently identified a structure for a person of skill in the art to implement the function of “configuring said memory according to a logical table.”

Stated the court:

  • “The fact that this algorithm relies, in part, on techniques known to a person of skill in the art does not render the composite algorithm insufficient under § 112 ¶ 6. Indeed, this is entirely consistent with the fact that the sufficiency of the structure is viewed through the lens of a person of skill in the art and without need to 'disclose structures well known in the art,' 9).

Delaware rejects Alice arguments (posted 04/15/16)

In a pair of cases, the U.S. District court for Delaware rejected defendant's arguments that patent claims pertaining to network technologies were invalid under Alice.

SRI's claim 1 of U.S. Patent 6,711,615:
1. A computer-automated method of hierarchical event monitoring and analysis within an enterprise network comprising:

deploying a plurality of network monitors in the enterprise network;

detecting, by the network monitors, suspicious network activity based on analysis of network traffic data selected from one or more of the following categories: {network packet data transfer commands, network packet data transfer errors, network packet data volume, network connection requests, network connection denials, error codes included in a network packet, network connection acknowledgements, and network packets indicative of well-known network-service protocols};

generating, by the monitors, reports of said suspicious activity; and

automatically receiving and integrating the reports of suspicious activity, by one or more hierarchical monitors.

Network Congestion claim 1 of U.S. Patent 6,826,620:
1. A method for alleviating congestion in a communication network, the communication network enabling the flow of data to and from a plurality of end user devices that are connected to the network through a plurality of communication devices, the method comprising the steps of:

monitoring data flows to and from the plurality of end user devices for indications of congestion; and

controlling the data rate of at least one end user device in response to said congestion indications.

In SRI International, Inc. v. Cisco Systems Inc., the Delaware district court held that a patent claiming automated monitoring of a network. Quoting DDR 10), Judge Robinson held, “the claims (informed by the specification) must describe a problem and solution rooted in computer technology, and the solution must be (1) specific enough to preclude the risk of pre-emption, and (2) innovative enough to 'override the routine and conventional' use of the computer.” Judge Robinson rejected Cisco's argument that the claims are directed to the abstract idea “of monitoring and analyzing data from multiple sources to detect broader patterns of suspicious activity,” holding instead that:

“That Cisco can simplify the invention enough to find a human counterpart (or argue that a human could somehow perform the steps of the method) does not suffice to make the concept abstract as '[a]t some level “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas” [quoting Alice quoting Mayo].' [. . .] The claims at bar are, therefore, more complex than 'merely recit[ing] the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet,' and are better understood as being 'necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks'” (quoting DDR).

In Network Congestion Solutions, LLC v. United States Cellular Corp (combined with Network Congestion Solutions, LLC v. WideOpenWest Finance, LLC) Judge Robinson again turned to DDR Holdings for guidance, but noted that, ”[s]ince providing that explanation, the Federal Circuit has not preserved the validity of any other computer-implemented invention under § 101” and specifically called out Intellectual Ventures 11). Judge Robinson quoted paragraph from Intellectual Ventures in which the Fed. Cir. distinguished that case from DDR, which concluded: “The patent claims [in Intellectual Ventures] do not address problems unique to the Internet, so DDR has no applicability.”

Judge Robinson rejected Defendants' characterization of the claim as directed to the abstract idea of “resource control management, namely managing resource flow by monitoring the usage of a resource, and then controlling that usage based on that monitoring” which defendants analogized to resource management by a TSA worker at an airport checkpoint or factory line supervisor of widgets down a production assembly line. Stated the court:

“The claims address the problem of 'network congestion' in a defined environment, which includes end user devices and communication devices. Although defendants argue that the environment and devices are well known in the prior art and cannot provide an inventive concept, the claim as a whole (the equipment recited and steps claimed) provides the requisite degree of specificity. Moreover, the claims are directed to a solution for a problem that arises in the computer context. This specificity also suffices to alleviate concerns of pre-emption.”

Fed. Cir. reverses PTAB invalidity finding (posted 04/07/16)

In Cutsforth v. MotivePower, the Fed. Cir. reversed PTAB's invalidity finding, looking specifically at two limitations that the BPAI construed unreasonably broadly in its determination that the claims were anticipated by two separate references.


The Fed. Cir. first addressed the claim limitation, “a brush release extending from the mounting block . . . said brush release is a projection extending from the mounting block.” The Board rejected Cutsforth's proposed construction “a structure that protrudes outwardly from the mounting block” as not supported by the specification and contended that the phrase is not limited only to projections extending outwardly from the mounting block. The Federal Circuit held that, while claims are given their broadest reasonable interpretation (BRI) in IPR proceedings, claim interpretation “must be reasonable in light of the claims and specification” (quoting PPC Broadband Inc. v. Corning Optical Commc'ns RF, LLC (Fed. Cir. Feb. 22, 2016). Held the court: “The Board's interpretation of 'a projection extending from the mounting block' far exceeds the scope of its plain meaning and is not justified by the specification. We hold that the Board's interpretation, which encompasses a structure that recedes into themounting block rather than jutting out from it, is unreasonable.”

"coupled to"

The Federal Circuit also addressed a second limitation reciting, “a brush catch coupled to the beam.” The BPAI held despite this limitation, the “brush catch” may be a sub-component of the “beam” and still be considered to be “coupled to the beam.” The Federal Circuit again sided with Cutsforth's argument that the claim requires a “bursh catch” to be a physical structure that is separate from, and not a sub-component of, the claimed, “beam.” It goes beyond the plain meaning of “coupled” to say that a sub-component (e.g., an engine in a car) is “coupled to” the component as a whole (e.g., the car).

Inventorship presumed correct

In Meng and Hor v. Chu, the Federal Circuit held that “[b]ecause issued patents are presumed to correctly name their inventors, the burden of proving nonjoinder of inventors is a 'heavy one,' which must be demonstrated by clear and convincing evidence.” Quoting Symantec Corp. v. Computer Assoc s. Int'l, Inc., 12) the court added “[a]n alleged co-inventor's testimony, standing alone, cannot rise to the level of clear and convincing evidence; he must supply evidence to corroborate his testimony” In this case, collaborators Meng and Hor failed to adequately corroborate allegations that they contributed more than that of a person of ordinary skill to the idea of completely substituting Gadolinium for Yttrium in developing high temperature superconducting material and should therefore be added as inventors to U.S. Patents 7,709,418 and 7,056,866.

134 S.Ct. 1962 (2014)
960 F.2d 1020 (Fed. Cir. 1992)
277 F.3d 1338, 1342
814 F.3d 1309, 1322
128 F.3d 1473 (Fed. Cir. 1997)
525 U.S. 55 (1998)
270 F.3d 1353, 1355 (Fed. Cir. 2001)
497 F.3d 1360) (2007)
Biomedino, 490 F.3d at 952
DDR, 773 F.3d at 1257
792 F.3d 1363
522 F.3d 1279, 1295 (Fed. Cir. 2008)