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.

Before Judges Dyk, O’Malley, and Hughes. Appeal from the United States International Trade Commission.

Summary: Registered trade dress carries a presumption of secondary meaning only prospectively from the date of registration.  Prior to the date of registration, the mark owner must show acquired secondary meaning prior to the first infringing use for each accused infringer.

In April 2016, Beyoncé Knowles-Carter (known mononymously as “Beyoncé”) filed a trademark suit in the Southern District of New York against Feyonce, Inc., an online business that sells clothing, apparel, and assorted goods with the mark FEYONCÉ and certain phrases from Beyoncé’s songs. In the complaint, Beyoncé asserted trademark infringement and dilution, unfair competition, and unjust enrichment, and she sought a permanent injunction against Feyonce, Inc.’s further use of the allegedly infringing mark. In November 2017, Beyoncé filed a Partial Motion for Summary Judgment and entry of a permanent injunction against Feyonce, Inc. Her motion was denied by Judge Alison Nathan in October 2018.

On September 10, 2018, the international convenience store chain 7-Eleven filed suit in the United States District Court for the Northern District of Texas against Perry Ellis Menswear, LLC d/b/a OriginalPenguin.com (“Defendant”). 7-Eleven’s complaint alleges trademark infringement, dilution, unfair competition, counterfeiting, and unjust enrichment under the Lanham Act as well as trademark infringement, unfair competition, dilution, and unjust enrichment under Texas state law.

The U.S. Food and Drug Administration (FDA) announced an agreement with the U.S. Department of Homeland Security (DHS) to strengthen the partnership between the agencies and “stay a step ahead of constantly evolving medical device cybersecurity vulnerabilities.”

In the recent decision of Data Engine Technologies LLC v. Google LLC, the Federal Circuit may have expanded how factual questions underpin subject matter eligibility analysis under Section 101.  Since the two-part eligibility analysis was established by Alice v. CLS Bank,[1] courts have repeatedly emphasized that eligibility is a question of law, not fact.[2]  Courts have used this rationale to justify holding claims patent-ineligible without considering extrinsic evidence.[3]  Often, this leads to early dismissals of infringements suits, which limit patent holders’ ability to present evidence in support of their patents.

Over the last year, several Federal Circuit judges have filed opinions lamenting the state of the case law that interprets the abstract idea exception to patent eligibility under 35 U.S.C. § 101.  For example, Judge Linn wrote in Smart Systems that the “problem” with the Supreme Court’s test “is that it is indeterminate.”[i]  Similarly, Judge Plager wrote in Interval Licensing that the “incoherent body of doctrine” applying Alice makes it “near impossible to know with any certainty whether the invention is or is not patent eligible.”[ii]  Many practitioners agree that § 101 decisions are difficult to predict and the state of the case law exacerbates this difficulty.  This article considers affirmance data to explore whether it supports the premise that § 101 decisions are not just difficult but fundamentally “indeterminate” or “near impossible” to resolve. 

Before Judges Reyna, Bryson, and Stoll.  Appeals from the Patent Trial and Appeal Board and the United States District Court for the District of Delaware.

Summary:  Non-prior art evidence may be considered when evaluating the knowledge, motivations, and expectations of a POSITA regarding the prior art. In addition, there is no categorical rule in pharmaceutical patent cases precluding obviousness determinations in the absence of a pharmacokinetic and pharmacodynamics profile.  Finally, it is not error to apply an “obvious to try” analysis where there are a limited number of permutations of dose and frequency not already disclosed in the prior art.