Before Newman, Hughes, and Stoll. Appeal from the United States District Court for the Northern District of California.

Summary: Reasonable royalty patent damages cannot include a royalty for sales of non-accused products.

Before Dyk, Wallach, and Taranto. Appeal from the United States District Court for the Western District of Washington

Summary: Claims directed to improving computer security by using BIOS memory to store a license can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem.

Before Prost, O’Malley, and Stoll. Appeal from the Trademark Trial and Appeal Board

Summary: Advertising costs and sales figures are relevant in determining whether a trademark is famous and, thus, whether a likelihood of confusion exists between it and another mark.

Before Dyk, Reyna, and Taranto, per curiam.  Petition for Writ of Mandamus from the District Court for the Eastern District of New York.

Summary: In a case pending before TC Heartland was decided, a venue challenge based on TC Heartland’s interpretation of the venue statute is not waived as it was not “available” and can be successfully raised later in the litigation if the defendant did not delay in raising the venue challenge once it became available.

The U.S. Food and Drug Administration recently announced approval for Bose to market their Bose Hearing Aid.  According to the press release, the Bose Hearing Aid, which was approved through the FDA’s De Novo premarket review pathway, is the first approved hearing aid that can be self-fit and adjusted by a user.

Before Prost, Schall, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: The plain language of 35 U.S.C. § 311(a) unambiguously leaves no room for assignor estoppel to apply in the IPR context.

It was recently reported that China had successfully cloned a 12-year old schnauzer — the most recent of over 20 dog breeds successfully cloned by the nation so far. [1].  “Doudou” the schnauzer was cloned through somatic cell transfer, a technique in which the genetic material of a donor egg is replaced with the genetic material from the animal to be cloned.  The modified egg is stimulated to initiate cell division, and the egg is implanted in a surrogate mother.  Despite the number of breeds successfully cloned, China has only recently applied this technology to the cloning of  dogs.  In May of 2017, China first implemented the technique to produce a cloned beagle that had been genetically engineered to develop atherosclerosis in order to study possible treatments for the disease.  [2].   

Before Prost, Moore, and Reyna.  Appeal from the Patent Trial and Appeal Board.

Summary:  Omitting a transition phrase between the preamble and the body of a claim does not cause terms in the preamble to limit the scope of the claim.

For both patent Applicants and Patent Office Examiners, the Supreme Court’s 2014 Alice Corp. v. CLS Bank International decision has created ongoing uncertainty as to the proper scope of subject matter that should be excluded from patent protection.  Since the Alice decision, there have been over 40 relevant decisions at the Court of Appeals for the Federal Circuit (and many more at the lower courts) that each attempt to interpret Alice in applying 35 U.S.C. §101.  However, many examiners in the business method art units have allowed only a handful of application since the Alice decision, and many patent applicants have abandoned their patent applications after repeated rejections under section 101. 

On October 11, 2018, the USPTO published a Final Rule in the Federal Register, adopting a new standard for interpreting claims in trial proceedings before the patent trial and appeal board (PTAB).

In particular, the USPTO is replacing the “broadest reasonable interpretation” standard (the BRI standard) with the claim construction standard used in federal courts as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and its progeny (the Phillips standard). The new rule applies to inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method (CBM) patents proceedings. Additionally, under the final rule, when construing a claim term in an IPR, PGR, or CBM, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (ITC), if that prior claim construction is timely made of record in that IPR, PGR, or CBM. The final rule will be effective for IPR, PGR, and CBM petitions filed on or after November 13, 2018.