Posts in Courts

Bilski and Its Expansion of the Abstract Idea Exception: A Failure to Define

The Supreme Court’s Bilski v. Kappos decision—which celebrated its 10th birthday this past weekend—still matters, even in the age of Mayo-Alice. For one thing, the case marked the end of the patent-eligibility peace. For another, Bilski stands for the well-known principle that the “machine-or-transformation” test offers a “useful and important clue” as to whether the process claimed by a patent will qualify as patent-eligible under 35 U.S.C. §101. And at the same time, it stands for the fact that the machine-or-transformation test has been far more trivia than principle, the case law not having applied or considered that Bilski “clue” much beyond the Bilski case itself.

Supreme Court Declines to Consider PTAB Authority to Overturn Article III Decisions

On June 30, the U.S. Supreme Court denied certiorari to Chrimar Systems, Inc., thereby letting stand a decision of the United States Court of Appeals for the Federal Circuit and declining to consider the controversial issues of “when a judicial decision becomes binding on the parties, and whether a decree from a different branch of government can reverse an Article III court judgment.”

Federal Circuit Affirms PTAB’s Conclusion of Obviousness on Grounds of Common Sense

On June 26, the U.S. Court of Appeals for the Federal Circuit affirmed a final written decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board in B/E Aerospace v. C&D Zodiac, Inc.  In particular, the CAFC affirmed the PTAB’s conclusion that the asserted patent claims would have been obvious because a modification of the prior art was nothing more than a predictable application of a known technology and because a modification would have been common sense.

The Consumer is King: High Court Sides with Booking.com, Rejecting Per Se Test for Generic.Com Trademarks

The U.S. Supreme Court has sided with Booking.com, ruling that a generic term paired with .com “is a generic name for a class of goods or services only if the term has that meaning to consumers.” The opinion was delivered by Justice Ginsburg and joined by eight members of the Court, with Justice Breyer dissenting and Justice Sotomayor filing a separate concurring opinion. In the Booking.com case, the U.S. Patent and Trademark Office (USPTO) was urging the High Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. But the Supreme Court ultimately found that the genericness analysis should turn on consumer perception, rather than a “per se rule” against trademark protection for a generic.com term.

Eighth Circuit Finds ‘Hot Pocket’ Patents Were Not Fraudulently Obtained

On June 18, the U.S. Court of Appeals for the Eighth Circuit (the circuit court) affirmed the district court’s grant of summary judgment in Inline Packaging, LLC v. Graphic Packaging International, LLC, holding that the district court properly concluded that there was no genuine dispute of material fact regarding whether Graphic fraudulently obtained its patents through false claims of inventorship or through concealing prior sales.

Federal Circuit Agrees with PTAB that Firebug’s Footwear Claims Are Obvious

On June 25, the U. S. Court of Appeals for the Federal Circuit (CAFC) affirmed an appeal from two final written decisions of the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC, wherein the CAFC held that the PTAB did not err in concluding that the claims of two patents owned by Shoes by Firebug (Firebug) were obvious in view of the prior art.