Articles Posted in US Court of Appeals for the Federal Circuit

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Roche’s 723 patent, titled “Detection of a Genetic Locus Encoding Resistance to Rifampin in Microbacterial Cultures and in Clinical Specimens,” is directed to methods for detecting the pathogenic bacterium Mycobacterium tuberculosis, a major cause of tuberculosis. In 1994, before the priority date of the 723 patent, the general method of MTB detection in a tuberculosis patient was known as sputum examination by the acid-fast bacilli smear. The diagnostic test of the 723 patent involves subjecting DNA extracted from a biological sample taken from a patient to amplification by polymerase chain reaction using a short, single-stranded nucleotide sequence that can hybridize (bind) to at least one of the eleven position-specific signature nucleotides in the MTB rpoB gene. The Federal Circuit affirmed summary judgment, holding that the patent’s claims are directed to patent-ineligible subject matter and are therefore invalid under 35 U.S.C. 101. Roche’s discovery of the signature nucleotides on the MTB rpoB gene and the designing of corresponding primers are valuable contributions to science and medicine, allowing for faster detection of MTB in a biological sample and testing for rifampin resistance but groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the section 101 inquiry. The primers can be found in nature. View "Roche Molecular Systems, Inc. v. Cepheid" on Justia Law

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The district court entered judgment on the pleadings, finding the Tab Patents, titled “System and Methods for Improved Spreadsheet Interface With User-Familiar Objects,” patent-ineligible under 35 U.S.C. 101, as directed to abstract concepts and failing to provide an inventive concept. The patents claim systems and methods for making complex electronic spreadsheets more accessible by providing familiar, user-friendly interface objects—specifically, notebook tabs—to navigate through spreadsheets while circumventing the arduous process of searching for, memorizing, and entering complex commands. The Federal Circuit reversed in part, finding all but one claim to be patent eligible. The claims are not abstract, but rather are directed to a specific improved method for navigating through complex three-dimensional electronic spreadsheets. The asserted claims of one patent, reciting methods for tracking changes to data in spreadsheets, are directed to the abstract idea of collecting, recognizing, and storing changed information; nothing in these claims that provides an inventive concept sufficient to render the claims patent eligible. View "Data Engine Technologies LLC v. Google LLC" on Justia Law

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Real Foods sought registration of two marks: “CORN THINS,” for “crispbread slices predominantly of corn, namely popped corn cakes”; and “RICE THINS,” for “crispbread slices primarily made of rice, namely rice cakes.” Frito-Lay opposed the registrations, arguing that the proposed marks should be refused as either generic or descriptive without having acquired distinctiveness. The U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board refused registration of the applied-for marks, finding the marks “are merely descriptive and have not acquired distinctiveness,” dismissing Frito-Lay’s “genericness claim. The Federal Circuit affirmed. Substantial evidence supports the finding that the proposed marks are highly descriptive. The terms “corn” and “rice,” both of which are grains, describe the primary ingredient in Real Foods’ respective goods; the term thins describes physical characteristics of the corn and rice cakes. Viewing the marks as composites does not create a different impression. Real Foods “has not demonstrated that its applied-for marks have acquired distinctiveness. Real Foods did not demonstrate that its applied-for marks have acquired distinctiveness. The court remanded in part, finding that the Board erred in its analysis of genericness. View "Real Foods Pty Ltd. v. Frito-Lay North America, Inc." on Justia Law

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In 1997-2011, NAI filed eight patent applications. In each continuing application, NAI included a statement (35 U.S.C. 120) claiming priority to the filing date of the first application, which issued in 1999, as the 596 patent. While the fourth application was pending NAI filed the 2003 provisional application and the fifth application, claiming priority to the fourth through first applications and to the 2003 provisional application. The sixth application, filed in 2008, during the fifth application’s pendency, claimed priority to the fifth application, and the fifth application claimed priority to the fourth, and so on. After filing its sixth application, NAI amended the fifth application to delete the benefit claim to the fourth through the first applications and to claim priority to only the 2003 provisional application. The sixth through the eighth applications subsequently issued as patents, but with a statement seeking the benefit of the fifth through the first applications, and the 2003 provisional application. On inter partes reexamination of the 381 patent (from the eighth application), NAI insisted that the sixth application maintained priority back to the first application because it was irrelevant what happened to the fifth application once the sixth application became entitled to the first application’s filing date. The examiner rejected the reexamined claims in view of prior art including the 596 patent, issued from the first application. The Federal Circuit affirmed. Because the eighth application claimed priority to the first application via the fifth application, the 381 patent was not entitled to the benefit of the fourth through the first applications. Under NAI’s theory it could gain patent term on its fifth application while simultaneously shielding its child applications (including the eighth application) from their former parents; NAI cannot have it both ways. View "Natural Alternatives International, Inc. v. Iancu" on Justia Law

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The district court dismissed Bennett’s infringement complaint, served on Atlanta Gas in July 2012, without prejudice. In February 2015, Atlanta Gas sought Inter Partes Review (IPR). Bennett cited 35 U.S.C. 315(b), which prohibits institution “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.” The Patent Board held that the without-prejudice dismissal nullified service, instituted review, and held every claim of the patent unpatentable. Petitioners must identify all real parties in interest in their petitions, 35 U.S.C. 312(a)(2); Board regulations require petitioners to update that information within 21 days of any change, Late in the IPR, Atlanta Gas’s parent company, AGL merged with another company and changed its name. Atlanta Gas had listed AGL as a real party in interest but did not notify the Board of the merger or the name change before the final decision. Shortly after receiving the final decision, Bennett notified the Board and sought sanctions for nondisclosure. The merger created new Board conflicts; one member of the three-judge panel recused himself. A reconstituted panel declined to terminate the IPR but authorized Bennett to seek “costs and fees.” The Federal Circuit vacated. The Board exceeded its authority and contravened section 315(b)’s time bar when it instituted Atlanta Gas’s petition. View "Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co." on Justia Law

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WARF sued Apple for infringement of the 752 patent, which relates to how computer processors execute a computer program’s instructions. The patent, which expired in December 2016, describes a specific prediction technique for an out-of-order processor. After a bifurcated trial, a jury found Apple liable for infringement and awarded over $234 million in damages. The district court denied Apple’s post-trial motions. The Federal Circuit reversed, stating no reasonable juror could have found infringement based on the evidence presented during the liability phase of the trial. Drawing all reasonable inferences in favor of WARF, there is insufficient evidence to support the jury’s finding that Apple’s products literally satisfy the “particular” limitation. The court affirmed the grant of summary judgment in favor of WARF on invalidity. Rather than improperly reading a limitation from the preferred embodiment into the claims, the district court properly read the claim term in the context of the entire patent. Rejecting an argument that the claims were anticipated the court stated that no reasonable juror could find that prior art discloses the “prediction” limitation of the 752 patent’s claims. View "Wisconsin Alumni Research Foundation v. Apple Inc." on Justia Law

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AlphaCap, a non-capitalized non-practicing entity, hired Gutride on a contingency basis and sued 10 internet crowdfunding companies for patent infringement. Nine defendants settled for less than $50,000 each, leaving only Gust. After the litigation ended, the district court awarded Gust $492,420 in fees and $15,923 in costs under 28 U.S.C. 1927, concluding that the case was “exceptional” because AlphaCap had “clear notice" that its patents could not survive scrutiny under 35 U.S.C. 101. The court found the claims were directed to crowdfunding, a fundamental economic concept and an abstract idea, and did not include an inventive concept sufficient to render the abstract ideas patent eligible under “Alice.” The court reasoned that AlphaCap brought the case “to extract a nuisance settlement,” as confirmed by the nine other “paltry settlements” and AlphaCap’s decision to file in a distant venue. Gutride’s contested its joint and several liability for the fees. The Federal Circuit reversed, noting the “unbroken band of cases” excluding baseless filing of a complaint from supporting a section 1927 award. In addition, AlphaCap’s position on patent eligibility was colorable, given the relative paucity of section 101 cases. The district court had no basis to find that Gutride knew that the patents were invalid. While acknowledging concerns about AlphaCap’s “business model,” the court held that the fact that 10 suits were filed and the opposition to a transfer of venue did not establish bad faith. View "Gust, Inc. v. AlphaCap Ventures LLC" on Justia Law

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Hyatt is the named inventor on more than 70 patents and approximately 400 pending applications, all filed before June 1995. With numerous amendments, those pending applications contained approximately 115,000 total claims by 2015. Each application incorporates and claims priority from applications dating back to the early 1970s. By 2015, the Patent Office (PTO) dedicated 14 full-time patent examiners to Hyatt’s applications. In the mid-2000s, the PTO started issuing final rejections, prompting appeals to the Patent Trial and Appeal Board (PTAB); the examiners never filed answers to Hyatt’s briefs, preventing PTAB from acquiring jurisdiction over his appeals. In 2013, the PTO issued formal “Requirements,” that Hyatt limit the number of claims from each patent family to 600 absent a showing that more were necessary, identify the earliest possible priority date and supporting disclosure for each selected claim, and present a copy of the selected claims to the PTO. The Federal Circuit upheld the "unique requirements." The PTO reopened prosecution of 80 previously-rejected applications. In 2014, Hyatt sued, alleging the PTO unreasonably delayed examination of his applications by reopening prosecution rather than letting PTAB hear his appeals. The PTO won summary judgment. Hyatt filed a petition (5 U.S.C. 553(e)) requesting that the PTO either repeal Manual of Patent Examining Procedure 1207.04 or declare it unenforceable. Section 1207.04 describes an examiner’s ability to, “with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief.” The Federal Circuit affirmed the dismissal of Hyatt’s 2016 suit challenging the denial of that petition. Hyatt’s claims are either time-barred or reliant on mistaken statutory interpretation. View "Hyatt v. United States Patent and Trademark Office" on Justia Law

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Synvina’s 921 patent is directed to a method of oxidizing 5-hydroxymethylfurfural (HMF), or an HMF derivative, under specified reaction conditions to form 2,5-furan dicarboxylic acid (FDCA). DuPont and Synvina are competitors in the production of FDCA for industrial use. Because FDCA can be produced from sugars using biological or chemical conversion, the U.S. Department of Energy has identified FDCA as a potential “building block[]” for “high-value bio-based chemicals or materials.” The oxidation of HMF and its derivatives to yield FDCA was known at the time of the claimed invention; the issue is whether the patent's claimed reaction conditions—the choice of temperature, pressure, catalyst, and solvent—would have been obvious to a person of ordinary skill at the time of the invention. On inter partes review, the Patent Trial and Appeal Board held that DuPont failed to prove obviousness. Concluding that Dupont had standing because it operates a plant capable of infringing the patent and that the Board applied the wrong legal standard, the Federal Circuit reversed. Where there is a range disclosed in the prior art, and the claimed invention falls within that range, the burden of production falls upon the patentee to come forward with evidence of teaching away, unexpected results or criticality, or other pertinent objective indicia indicating that the overlapping range would not have been obvious in light of that prior art. View "E.I. DuPont de Nemours & Co. v. Synvina C.V." on Justia Law

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ParkerVision’s 940 patent, titled “Method and System for Frequency Up-Conversion” relates to telecommunications devices, such as cellular phones, in which low-frequency electromagnetic signals are “up-converted” to higher-frequency signals by various means. “Baseband” signals— electromagnetic signals that encode the relevant information of sound waves—have low frequencies, and therefore low energy, making them difficult to transmit wirelessly through the air. Up-converting these frequencies to higher-frequency signals, such as radio frequency signals, allows the signal—and the information contained therein—to be more efficiently transmitted to a receiver. The specification explains that prior art transmitter systems used up-conversion components that are costly, in terms of power consumption and purchase price. The invention disclosed in the 940 patent purports to provide a more efficient means for producing a modulated carrier for transmission that uses less power and requires fewer components” by modulating the amplitude of the baseband signal with the help of an “oscillating signal.” The Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (in related inter partes review proceedings) that certain claims of the 940 patent are unpatentable as obvious under 35 U.S.C. 103(a). The court upheld the Board’s construction of “plurality of harmonics.” View "ParkerVision, Inc. v. Qualcomm Inc." on Justia Law