The USPTO has released updated subject matter eligibility guidance that incorporates comments on the changes made in January 2019. The guidance is 22 pages long, with three appendices and 87 footnotes. Below are a few of the more salient…
FRAUNHOFER-GESELLSCHAFT v. SIRIUS XM RADIO INC.
Before Dyk, Linn, and Taranto. Appeal from the District of Delaware.
Summary: Contract interpretation must be applied in determining whether a sublicense survives termination of the main license.
HZNP Medicines LLC, Horizon Pharma USA, Inc. v. Actavis Laboratories UT, Inc.
Before Prost, Newman, and Reyna. Appeal from the District Court for the District of New Jersey.
Summary: Claims using “consisting essentially of” to define an open-ended list of ingredients are indefinite, where the basic and novel property of the invention introduces an improper zone of uncertainty.
B.E. TECHNOLOGY, L.L.C. v. FACEBOOK, INC.
Before Lourie, Plager, and O’Malley. Appeal from the United States District Court for the Western District of Tennessee.
Summary: A decision on the merits is not a prerequisite to a finding of prevailing party status.
OSI PHARMACEUTICALS, LLC v. APOTEX INC
Before Stoll, Newman, and Taranto. Appeal from the Patent Trial and Appeal Board.
Summary: A pharmaceutical company’s statement touting the completion of Phase I safety trials for FDA approval is not sufficient to show that a skilled artisan would have had a reasonable expectation of success in combining the prior art.
AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC
Before Dyk, Moore, Taranto. Appeal from the United States District Court for the District of Delaware.
Summary: Mechanical method claims involving tuning automotive propshafts to dampen vibrations were directed to natural laws and patent ineligible under § 101.
HONEYWELL INTERNATIONAL, INC. v. ARKEMA INC., ARKEMA FRA NCE
Before Newman, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board
Summary: The Patent Trial and Appeal Board (“Board”) does not have the authority to determine when a Certificate of Correction is appropriate.
A New Jersey jury has awarded Eagle View Technology $125 million in patent damages. Eagle View originally sued its competitor Verisk and its subsidiary corporation Xactware, for infringing nine patents related to software for developing 3D models from aerial images
CAMPBELL SOUP COMPANY v. GAMON PLUS, INC.
Before Prost, Newman and Moore. Appeal from the Patent Trial and Appeal Board.
Summary: A proper primary reference can have slight differences in design if, in light of overall similarities, it conveys basically the same visual impression as the claimed design.
SIPCO, LLC v. EMERSON ELECTRIC CO.
Before O’Malley, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board. Reyna concurring-in-part and dissenting-in-part
Summary: The language “unobvious over the prior art” in the USPTO’s regulation regarding whether a patent is for a “technological invention” for the purpose of determining whether the patent qualifies for CBM review is not necessarily coextensive with the meaning of “obvious” in the context of § 103.
