The University of Minnesota (UMinn) and Toyota Motor Corp. (Toyota) co-own U.S. Patent 8,394,618 (the ’618 patent). After Reactive Surfaces Ltd. filed a petition for IPR of the ’618 patent, UMinn and Toyota filed a motion to dismiss the petition based on UMinn’s sovereign immunity. Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2016-01914, Paper 23 (PTAB March 3, 2017). The Board granted the motion in part, dismissing UMinn from the proceedings, but continuing the IPR with Toyota. Paper 36 (PTAB July 13, 2017). [Link to Blog post from July 20, 2017] On March 1, 2018, the Board entered a Final Written Decision holding all instituted claims were unpatentable. Paper 64 at 43 (PTAB March 1, 2018).
Before Moor, Mayer, and Stoll. Appeal from the patent Trial and Appeal Board
Summary: The broadest reasonable interpretation of a claim term cannot be so broad that it is inconsistent with the specification or renders the term meaningless.
In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., the Federal Circuit held that user interface claims are patent eligible under 35 U.S.C. § 101 because they “recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.” Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018). The court determined that the claims are directed to “a particular manner of summarizing and presenting information in electronic devices” and that the claims do not “us[e] conventional user interface methods to display a generic index on a computer.” Id.
The U.S. Food and Drug Administration has announced approval of Banyan Biomarkers, Inc.’s Banyan BTI (Brain Trauma Indicator) under the FDA’s De Novo premarket review pathway. According to the press release, Banyan BTI is the first in vitro diagnostic blood test for the evaluation of mild traumatic brain injuries (mTBI), commonly referred to as concussions, authorized for marketing by the FDA.
The United States Patent and Trademark Office (USPTO) recently published a new revision to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP) (Revision 08.2017). This revision added a number of chapters about patent-eligibility, the duty to disclose information to the office and other key patent law issues.
Before Newman, Wallach, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: Disclosure of a species may provide written description support for a claimed genus when the field of invention is a predictable art.
Before Dyk, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board.
Summary: Where the Federal Circuit had previously construed the same claim term in an appeal involving a related patent also owned by the patentee in the present case, collateral estoppel applied as to the construction of that term in this appeal even though the claims were not identical.
Before Dyk, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board
Summary: In an inter partes review proceeding, broadest reasonable interpretation of a claim term must encompass all embodiments unless there is a support for a narrower interpretation.
On March 6, 2018 the USPTO announced that it has started a pilot program that makes it easy to report specimens that have been digitally created, altered or fabricated. Third parties that believe that an application contains suspect specimens can now send an email to TMSpecimenProtest@uspto.gov to report such issues.
In two recent cases, the Federal Circuit addressed the role of factual questions in resolving patent eligibility under 35 U.S.C. § 101. The first case was Berkheimer v. HP Inc. and the second was Aatrix Software v. Green Shades Software.[1] These cases possibly undercut the holdings of previous cases in which the Federal Circuit routinely affirmed judgments invalidating patent claims under § 101 in the early stages of litigation, when factual questions are typically unresolved.[2]
