Posts Tagged: "Judge Kara Stoll"

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.

The Federal Circuit dismissed Husky’s appeal, finding that it lacked jurisdiction to review the Board’s determination of whether assignor estoppel barred institution of an inter partes review for two reasons. First, Husky’s appeal did not fall into any of the three categories of challenges that were reviewable by the Federal Circuit: there were no constitutional concerns at issue, the question of assignor estoppel did not depend on other less closely related statutes, and there was no question of interpretation reaching beyond § 314(d). Second, Husky’s challenge only implicated the question of who may ask the Board to evaluate the validity of a patent, not the Board’s authority to invalidate a patent.

The Court affirmed the Board’s finding that two previous patents render the ‘695 Patent obvious. The Court rejected ClassCo’s argument that “[a] basic characteristic of a KSR combination is that it only unites old elements with no change in their respective function.” Slip op. at 7 (internal quotation marks omitted). The Court instead emphasized KSR’s flexible approach to a § 103 analysis.

It is hard to ignore the fact that the Federal Circuit again continued to point out that the innovation at issued was an improvement. This should give patent practitioners important clues into how to characterize software related innovations so as to maximize the likelihood of prevailing in Alice inspired challenges and rejections. Hopefully the United States Patent and Trademark Office will not ignore McRo and will issue guidance to patent examiners. Taking a “nothing to see here” approach to this case would be inexcusable.

On appeal, the Federal Circuit reviewed whether there was substantial evidence supporting the district court’s finding that Nathan and Matheson should be added as co-inventors. In determining that the inventorship evidence below was sufficient, the Court reiterated that all inventors are required to be named even if their contribution is limited to a single aspect of a single claim, and that co-inventors need not have collaborated at the same time to be named.

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.

The CAFC then approvingly noted that the district court invoked “an important common-sense distinction between ends sought and particular means of achieving them, between desired results (functions) and particular ways of achieving (performing) them.” As the district court reasoned, “‘there is a critical difference between patenting a particular concrete solution to a problem and attempting to patent the abstract idea of a solution to the problem in general.’” According to the CAFC, the claims at issue in this case do the latter, namely, “rather than claiming ‘some specific way of enabling a computer to monitor data from multiple sources across an electric power grid,’ some ‘particular implementation,’ they ‘purport to monopolize every potential solution to the problem’…Whereas patenting a particular solution ‘would incentivize further innovation in the form of alternative methods for achieving the same result’… allowing claims like [the ones at issue here] would ‘inhibit[] innovation by prohibiting other inventors from developing their own solutions to the problem without first licensing the abstract idea.’”

Murata argued that the district court should have relied on the traditional three-factor test, which does not consider the burden of litigation on the court and the parties. By considering the burden of litigation, it alleged that the court committed a reversible error. The Court disagreed, ruling that courts have broad discretion to manage their own dockets, including the power to grant a stay of a case. This discretion does not come from statute, but is an inherent power of the courts. Thus, a district court may consider other factors beyond the three-factor stay test at its discretion. Further, the legislative history of the AIA reveals that Congress intended IPR’s to reduce the burden of litigation.

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 the Board’s changed claim construction of “data flow,” violated the Administrative Procedure Act (APA), even if it was correct. In particular, it deprived the petitioner of the procedural protections of the APA, which prohibits an agency from changing legal theories during a proceeding without giving respondents notice of the change and the opportunity respond to the new theory. Because the Board changed its construction of the term “data flow” absent any suggestion from the parties, and without any notice, there was no meaningful opportunity to respond to the unanticipated change. Therefore, the Court vacated the decision of the Board to afford the parties an opportunity to present arguments on the Board’s newly-adopted construction of “data flow.”

The Court agreed with Facebook in that these claim terms had no accepted meaning in the art, which meant that they cannot be construed broader than the specification disclosuses. The Court noted that the prosecution history also provided support for the district court’s construction. Further, because the other evidence was persuasive, there was no need to determine whether certain statements made by the patentees during prosecution rose to clear and unmistakable disclaimer, which is what Facebook argued in the alternative.

In a May 13, 2016 decision, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision upholding an Examiner’s denial of registration based on a finding that the term CHURRASCOS was generic as used for a restaurant, because the word “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.”

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.

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.

Bamberg’s specification stated that plastics must not melt at ironing temperatures (up to above 220 degrees Celsius) because the effects would be undesired. Bamberg argued that while this was in the specification, the written description requirement was satisfied because one skilled in the art would understand that one could have a layer that melted above and below 220 degrees Celsius, but both may not be desired. The Court held there was insufficient evidence on the record to support the conclusion that Bamberg possessed a white layer that melted below 220 degrees Celsius because it specifically distinguished this as an undesired result.