In a recent article, we discussed how courts have used patent specifications in finding that patents satisfy the Supreme Court’s Mayo/Alice test. However, the specification may be a double-edged sword. Language in the specification can also doom the patent claims. Two recent federal court cases provide examples of how the courts have used the specification to invalidate claims under Alice.
The December 8, 2016 passage of the 21st Century Cures Act by Congress is expected to lead to sweeping changes to the biotech, medical device and health industries and streamline the regulatory system for approval of both drugs and medical devices. The Obama-supported bill was years in the making and is predicted to provide strong benefits to the biotech, pharmaceutical, and medical device industries.
In 2006, Warner Bros. filed suit against A.V.E.L.A., X One X Productions, and ArtNostalgia.com, Inc. (collectively, “AVELA”) for copyright and trademark infringement under the Copyright Act, the Lanham Act, and state law. AVELA used publicity materials that were created and distributed by Warner Bros. for the films Wizard of Oz and Gone with the Wind, before the films were completed and copyrighted.
In the wake of Alice[1] the waters of eligibility under section 101 can be challenging to navigate, and particularly so for those seeking to obtain or enforce software patents. A two-part test for eligibility is the standard, with step one determining if a claim is directed to an abstract idea.
On November 21, 2016, the U.S. Court of Appeals for the First Circuit upheld a 2014 jury verdict for AstraZeneca (AZ) and Ranbaxy regarding a 2012 payment of $700 million from AstraZeneca for Ranbaxy to abandon its challenge to patents covering Nexium®.
In a case before the Trademark Trial and Appeal Board (“Board”), the Board cancelled and abandoned the trademark registration and trademark application for the I ♥ DC marks owned by an individual, Jonathan A. Chien (“Chien”) on the ground that the marks do not function as a trademark.
The Mayo/Alice two-step patent-eligibility framework focuses on the patent claims. Nevertheless, recent Federal Circuit decisions have relied on patent specification statements to support holdings that the claims are patent-eligible because they include an “inventive concept” under Alice step two.
For the third time in two months, the Federal Circuit took on patent subject-matter eligibility in Amdocs (ISRAEL) Ltd. v. Openet Telecom, Inc. In a divided opinion, the Federal Circuit reversed the district court and held Amdoc’s patent on “a system designed to solve an accounting and billing problem faced by network providers” to be patent eligible.
In 2009, the U.S. Patent and Trademark Office rejected shoe manufacturer Adidas’s application to trademark the phrase “ADIZERO,” due to a likelihood of confusion with an existing mark: “ADD A ZERO,” a clothing trademark held by the Christian Faith Fellowship Church of Zion, Illinois. The Church used the phrase on caps and other apparel that it sold for fundraising purposes.
The Federal Circuit’s recent decision in Synopsys, Inc. v. Mentor Graphics Corp., Case No. 2015-1599 (Fed. Cir. Oct. 17, 2016), upholding the lower court’s grant of summary judgment of invalidity under § 101, may provide another tool to patent challengers wishing to invalidate claims arguably reciting mental processes. In deciding the case, the Federal Circuit relied on the two-step analytical framework of Mayo/Alice, and found that the claimed methods were directed to unpatentable abstract ideas without reciting “significantly more.”
