Knobbe/Martens: Intellectual Property Law

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2019 Eligibility Guidance Leads to Unpredictable Results at the PTAB

February 15, 2019 Bryan McWhorter and Russell Jeide

In January of 2019, the Patent Office, under Director Iancu, issued new guidance to all USPTO personnel evaluating patent subject matter eligibility under the requirements of 35 USC Section 101.  The guidance sought to add certainty to what has been widely recognized as an unpredictable area of law.  (See more about the new guidance at our prior post on the subject.)  The view of most practitioners appears to be that the new guidance is positive for applicants, particularly for patent applications directed to software‑related inventions.  But seasoned patent applicants will recognize that many examiners have their own interpretations of examination guidelines—often not in line with that of the applicant.  And when an applicant is unhappy with a rejection, the next step is generally an appeal to the Patent Trial and Appeal Board.

 

 

CENTRAK, INC. v. SONITOR TECHNOLOGIES, INC.

February 15, 2019 James Smith and Andrea Cheek

Before Reyna, Taranto, and Chen.  Appeal from the United States District Court for the District of Delaware.

Summary:  Where the complexity and predictability of a claimed embodiment were disputed, summary judgment finding inadequate written description was not appropriate.  Additionally, a final assembler can be liable for making an infringing product even if it does not make each individual component element.

 

 

CONTINENTAL CIRCUITS LLC v. INTEL CORPORATION

February 8, 2019 Josepher Li and Kendall Loebbaka

Before Lourie, Linn, and Taranto.  Appeal from the United States District Court for the District of Arizona.

Summary:  Reading a process limitation into a product claim is improper where the patentee did not clearly and unmistakably disavow claim scope and also did not make clear that the process is an essential part of the claimed invention.

 

MOMENTA PHARMACEUTICALS, INC. v. BRISTOL-MYERS SQUIBB COMPANY

February 7, 2019 Jacob R. Rosenbaum and Jeremy Anapol

Before Newman, Dyk, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: An injury-in-fact is required to establish Article III standing for judicial review of agency action, even if a statute permits such review.

 

ATHENA DIAGNOSTICS, INC. v. MAYO COLLABORATIVE SERVICES

February 7, 2019 Nathan J. Lee and Christie Matthaei

Before Judge Newman, Laurie and Stoll.  Appeal from the United States District Court for the District of Massachusetts.

Summary:  Claims reciting only conventional steps to detect a natural law, are patent-ineligible under § 101.

 

IN RE: GOOGLE LLC

February 6, 2019 Clayton R. Henson and Nicole R. Townes

Before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Dissenting opinion to denial of petition for rehearing written by Reyna and joined by Newman and Lourie. 

Summary: The Federal Circuit elected not to review en banc the issue of whether servers or similar equipment in third-party facilities constitute a regular and established place of business for purposes of determining whether venue is proper under 28 U.S.C. § 1400(b).  The dissenters argued that the Federal Circuit’s denial sidestepped the purpose of mandamus relief and left unanswered a critical question that affects venue. 

 

MYLAN PHARMACEUTICALS INC. v. RESEARCH CORPORATION TECH.

February 4, 2019 David J. Grant and Adam Powell

Before Lourie, Bryson, and Wallach.  Appeal from the Patent Trial and Appeal Board.

Summary: A party joined to an inter partes review has the right to appeal the Board’s final written decision even if the initial petitioner does not appeal.

 

DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.

February 1, 2019 Mark E. Davis and Karen M. Cassidy

Before Lourie, Dyk and Taranto. Consolidated Appeals from the Patent Trial and Appeal Board and the Southern District of California.

Summary: A person is a joint inventor of the anticipating portions of a reference for the purposes of 35 U.S.C. § 102(e) when the person’s contributions to that anticipating portion are significant in view of the invention as a whole.

 

Big Picture on Software Patent Eligibility: The Forces at Work

January 25, 2019 Philip M. Nelson

Much of the modern economy is driven by software development.  Companies are creating and refining new apps that run on mobile devices, and using machine learning to provide users with personalized user interfaces and content.  Consumers expect intuitive and polished interfaces.  After devoting significant energy and resources to developing software, many companies seek to protect their intellectual property.  Unfortunately, a bewildering legal gauntlet confronts them.  At the threshold of this gauntlet lies a major obstacle: is their software even “eligible” for patent protection?

 

BARRY v. MEDTRONIC, INC.

January 25, 2019 Derk A. Westermeyer and Mark Kachner

Before Chief Judge Prost, Moore, and Taranto.  Appeal from the United States District Court for the Eastern District of Texas.

Summary:  An invention is not “ready for patenting” to trigger a public use bar until the invention has been tested in a variety of settings and is known to work for its intended purpose.

 

 

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