Posts Tagged: "CAFC"

A divided panel of the Federal Circuit affirmed the Board’s rejection of all pending claims as obvious in an appeal arising from a method for treating or preventing influenza by oral inhalation of zanamivir. The teaching here seems to be that references can be combined to show that it would have been obvious to zero in on one of a few options disclosed in the prior art. Judge Newman filed a dissenting opinion.

While TecSec had urged the panel to reassign the case to a different judge on remand in part because the district court judge repeatedly held against TecSec, raised dispositive issues sua sponte, had been reversed on appeal for many of those issues, and had pre-judged a § 101 issue that has not yet been raised, reassignment is only appropriate in exceptional circumstances. “Here, reassignment is governed by Fourth Circuit law, which applies a three factor test for reassignment: 1) whether the judge would be reasonable expected to have substantial difficulty putting her views that were held to be incorrect out of her mind; 2) whether reassignment is necessary to preserve the appearance of justice; and 3) the degree of waste of judicial resources and duplication if the case were reassigned. See United States v. Guglielmi, 929 F.2d 1001, 1007 (4th Cir. 1991). Nothing in this case merits reassignment on remand.”

It is well known that hindsight reconstruction is an insidious error that infects patent prosecution. The Federal Circuit has noted that it is a difficult task to avoid “subconscious reliance on hindsight” and tools are available to “inoculate the obviousness analysis against hindsight”. However, it is well known that practitioners could benefit in countering the pernicious problem of subconscious hindsight directed analysis with additional tools. This article is intended to provide an additional tool outlining a new analytical approach to detecting hindsight: 1) identification of a proxy problem upon which an “obvious” advantage is predicated, and 2) showing that either a) the proxy problem is secondary to the problem solved by the inventor and would have been insufficient to drive advancement of the art, and that the examiner has failed to show that a person of ordinary skill in the art (POSITA) would have regarded the proxy problem as sufficiently significant so as to require solution, or b) a showing that the proxy problem posed to POSITA presupposes the problem and its solution as solved by the inventor and is derivative. Once it is shown that the proxy problem is subsidiary or presupposes the problem solved by the inventor it becomes a less difficult task to show that the invention was not considered as a whole or that the problem was improperly phrased.

Claim differentiation does not broaden claims beyond their meaning in light of the patent as a whole, and cannot override clear statements of claim scope found the specification and prosecution history… Disavowal can occur when the specification plainly describes “the present invention” as having that feature. Here, the specification states that an important characteristic of the present invention is a “reduction in upper width … resulting from the extended short seals.” Disavowal can also occur when the specification distinguishes or disparages prior art based on a specified feature. The specification did that here, by stating that prior art bags are difficult to secure over trash receptacle lips and explaining how the described short seals solve this problem.

The Court reasoned that the claims were limited to straightforward steps that a skilled artisan could perform mentally and that the inventors admitted to doing so. The claims, on their face, do not call for computer implementation, and Synopsys did not advance a claim construction requiring a computer. Additionally, complex details in the specification are insufficient to transform broad claims from an abstract idea into patentable subject matter. Given the breadth of the claims, the Court declined to decide if a computer-implemented version of the invention would be patentable under § 101.

The Federal Circuit agreed with the district court that this evidence did not demonstrate a “clear and unmistakable” disclaimer in claim scope. The Court emphasized that disavowals must be evaluated in the context of the entire prosecution history. Thus, the term “cells derived from a vascularized tissue” included both parenchymal (organ) and non-parenchymal cells. The file history statements did not amount to an unmistakable disclaimer of non-parenchymal cells, in light of the full prosecution history and the claim language pending at the time of the alleged disavowal.

Using new or improved rules applied by a computer may be patent-eligible, and improving the operation of the computer itself may be patent-eligible, but using a computer to implement old practices is not patentable under § 101. Further, claiming a combination of data sources, or limiting claims to the computer field, does not transform an otherwise abstract idea into “something more” that is patent-eligible.

The Court found substantial evidence to support the jury’s finding of infringement. While Samsung’s expert offered conflicting testimony, a reasonable jury could have credited Apple’s expert. Thus, there was no error in the district court’s conclusion that substantial evidence supported the jury verdict of infringement… Note that the underlying dispute in this case does not concern design patents that were also asserted against Samsung, and which are currently being reviewed by the Supreme Court.

The U.S. government weighs in on Life Technologies’ side because “the application of U.S. patent law to participation by U.S. exporters in foreign markets also raise issues concerning the competiveness of American companies abroad and the respective roles of the United States and other nations’ patent laws.” The government argues that the Federal Circuit has not given a workable definition to determine when a component is sufficiently important or essential as to be “a substantial portion of the components.” The government also argues that, in legislating § 271(f), Congress’s purpose was to outlaw evasion of a U.S. patent by conduct that tantamount to manufacturing the patented invention in the U.S. for export. The government argues that there is no clear expressed Congressional intent for § 271(f) to reach supplying a single staple article: when the product is made abroad except for such a staple article, Congress left that predominantly foreign conduct to be regulated by foreign law. Finally, the government argues that the presumption against extraterritoriality requires the courts to assume both that “legislators take account of the legitimate interests of other nations” and “foreign conduct is generally the domain of foreign law.”

what is particularly interesting about this case is that Smith, who had prevailed at the district court and was awarded about $322,500 in damages, thought he could not challenge the correctness of a claim construction made by the district court. While Smith could not have filed a cross appeal in this case concerning the claim construction, Smith could have asserted ‘alternative grounds in the record for affirming the judgment.’ Because Smith did not raise any such alternate grounds on appeal, the Federal Circuit could not address the correctness of the district court’s claim construction.

In vacating the district court’s summary judgment order, the Federal Circuit noted first that statements made by Micron’s expert regarding what the anticipatory reference disclosed were not actually supported by the anticipatory reference itself… These kinds of procedural safeguards are commonly applied by other regional circuits, but have seemed to be missing from Federal Circuit case law of late, with the Federal Circuit seeming to be rather eager to address the substance of a given dispute. Perhaps with the overwhelming caseload now at the Federal Circuit, and its need to resort to both Rule 36 and non-precedential opinions, the court seems to finally be coming to terms with the fact that it is an appeals court and not a court of first instance that should always decide cases de novo.

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.

Drone sued Parrot for indirect infringement of two patents relating to remote-controlled drones… The Federal Circuit sided with Drone and refused to substantively examine inventorship, where Drone’s claim to title was not otherwise in dispute. Inventorship of an issued patent is presumed correct, and Parrot provided no persuasive reason why the Court must litigate inventorship as part of the standing analysis. Alternatively, Parrot may challenge inventorship as an invalidity defense, but doing so under the guise of standing is improper.

The Federal Circuit affirmed a district court’s dismissal under Rule 12(b)(6) for failure to meet the pleading standards for joint patent infringement, holding that Form 18, from the Appendix to the Federal Rules of Civil Procedure, does not apply to a claim of joint infringement… Form 18 is not sufficient per se, and pleadings must adhere to the Twombly/Iqbal pleading standard, and must do so for each element of the allegedly infringed patent claim. This is particularly true for pleading joint infringement.

This case concerned the subject matter eligibility of patents under 35 U.S.C. § 101, for a computer-related invention. The Federal Circuit affirmed the district court’s decision that two patents were ineligible, and reversed the court’s decision that one patent was eligible. All three patents at issue were held to be drawn to abstract ideas, and none of them had a patentable inventive concept… There was no inventive concept because the ’142 claims provided only generic computers performing generic functions. The proper inquiry is whether each step in a claim does more than require a generic computer to perform generic computer functions, not whether the prior computers already applied that concept.