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.
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.
On December 13, 2018, Face Lace Ltd., founded by makeup artist Phyllis Cohen to provide ready-to-wear makeup designs, filed suit in the Central District of California against Bare Escentuals Inc. d/b/a Buxom Cosmetics. Face Lace’s complaint alleged copyright infringement and trade dress infringement under the Lanham Act.
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.
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.
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.
On December 28, 2018, both Calvin Klein and the parent company of the department store Saks Fifth Avenue, were sued by Wongab Corporation in the U.S. District Court for the…
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.
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.
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.
