By: Jesus Hernandez, Blog Editor/Contributor 
TitleTeva Pharma. USA, Inc. v. Sandoz, Inc., No. 13-854 (Jan. 20, 2015).
IssueToday’s case involves claim construction with “eviden­tiary underpinnings.” See Part III, infra. And, it requires us to determine what standard the Court of Appeals should use when it reviews a trial judge’s resolution of an underlying factual dispute. Should the Court of Appeals review the district court’s factfinding de novo as it would review a question of law? Or, should it review that fact-finding as it would review a trial judge’s factfinding in other cases, namely by taking them as correct “unless clearly erroneous?”
Teva Pharma. USA, Inc., at *1.
HoldingWe hold that the appellate court must apply a “clear error,” not a de novo, standard of review [when reviewing underlying factual disputes of claim construction, but may apply de novo review when reviewing claim construction generally].
Id. at *1-2 (text added).
Category: Infringement
By: Abby Lin, Contributor 
Case:Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 2013-1472, -1656 (Fed. Cir. Oct. 22, 2014).
1. “Halo argues that the district court erred in granting summary judgment of no direct infringement with respect to products that Pulse delivered abroad. Halo contends that those products were sold and offered for sale within the United States because negotiations and contracting activities occurred within the United States, which resulted in binding contracts that set specific terms for price and quantity. Halo argues that the location of the sale or offer for sale should not be limited to the location of delivery. Halo also argues that it suffered economic harm in the United States as a result of Pulse’s sales.”
Halo Electronics, at *8-9.
2. “Halo challenges [the district court’s holding that Pulse did not willfully infringement due to relying on its obviousness defense] mainly by arguing that Pulse did not actually rely on any invalidity defense pre-suit when selling the accused products because Pulse’s obviousness defense was developed after the lawsuit was filed in 2007. Halo also contends that after Pulse received Halo’s notice letters in 2002, the Pulse engineer only performed a cursory review of the Halo patents and Pulse did not rely on that analysis to assess whether it was infringing a valid patent. Halo asserts that the court erred in holding that the objective prong was not met simply because Pulse raised a non-frivolous obviousness defense.”
Id. at *17 (text added).
3. “Pulse cross-appeals from the judgment that the asserted claims of the Halo patents were not invalid for obviousness[based on the jury’s findings]”.
Id. at *19 (text added).
1. “We agree with Pulse that the district court did not err in granting summary judgment of no direct infringement with respect to those products that Pulse manufactured, shipped, and delivered outside the United States because those products were neither sold nor offered for sale by Pulse within the United States. [Because the products were not sold/offered for sale within the U.S., Halo also did not suffer economic harm.]”
Id. at *9(text added).
2. “We agree with Pulse that the district court did not err in holding that the objective prong of the willfulness inquiry was not satisfied. “Seagate’s first prong is objective, and ‘[t]he state of mind of the accused infringer is not relevant to this objective inquiry.’” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1336 (Fed. Cir. 2009) (alteration in original) (quoting Seagate, 497 F.3d at 1371). The court properly considered the totality of the record evidence, including the obviousness defense that Pulse developed during the litigation, to determine whether there was an objectively-defined risk of infringement of a valid patent.”
Id. at *18.
3. “Pulse did not file a motion during trial under Fed. R. Civ. P. 50(a) on the issue of obviousness before that issue was submitted to the jury and thus waived its right to challenge the jury’s implicit factual findings underlying the nonobviousness general verdict. The district court thus correctly presumed that the jury resolved all factual disputes relating to the scope and content of the prior art and secondary considerations in Halo’s favor. Based upon those presumed factual findings, the court did not err in reaching the ultimate legal conclusion that the asserted claims were not invalid for obviousness.”
Id. at *19-20.
Category: 102 
By: Jesus Hernandez, Blog Editor/Contributor
TitleDelano Farms Co. v. The California Grape Commission, No. 2014-1030 (Fed. Cir. Jan. 9, 2015).
IssueThe question in a case such as this one is thus whether the actions taken by [a third party that stole the contents of the invention] create a reasonable belief as to the invention’s public availability.
Delano Farms Co., at *7.
HoldingThere is no public use when a third party steals secretive information without authority and endeavors to keep said information secret from the public and a sole disclosure limited to a friend/colleague is not a public use.
See, generally, id. at 11.
Category: 101   
By: Jesus Hernandez, Blog Editor/Contributor 
TitleContext Extraction and Transmission LLC v. Wells Fargo Bank, 2013-1588, -1589, 2014-1112, -1687 (Fed. Cir. Dec. 23, 2014).
[1: Abstract Idea] Are claims directed to 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory, an abstract idea?
See, generally, Context Extraction and Transmission LLC at *6-7.
[2: Additional Limitations] Does the use of a scanner in a claim limitation - either individually or as an ordered combination— transform the claims into a patent-eligible application?
See, generally, id. at 9.
[1: Abstract Idea] [T]he claims of the asserted patents are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.
Id. at *7.
[2: Additional Limitations] CET’s claims merely recite the use of this existing scanning and processing technology to recognize and store data from specific data fields such as amounts, addresses, and dates. See id. There is no “inventive concept” in CET’s use of a generic scanner and computer to perform well-understood, routine, and conventional activities commonly used in industry.
Id. at *9.
The Editors, Administrative Staff and Board of Governors are pleased to announce the newest issue of the Journal of the Patent and Trademark Office Society.
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Category: Infringement
By: Roy Rabindranath, Contributor 
TitleSSL Services, Inc. v. Citrix Systems, Inc. (Fed. Circ. October 14, 2014).
IssueSSL appeals the district court’s denial of a new trial on non-infringement of claim 27 of [U.S. Pat. 6,061,796], arguing that the district court erred in its claim construction of the terms “intercepting” and “destination address,” and in imposing a set step order requirement for the claim. SSL also appeals the district court’s finding that it was not the prevailing party in the litigation overall. Citrix cross-appeals the district court’s denial of JMOL [“judgment as a matter of law”] of no willful infringement and invalidity of claims 2, 4, and 7 of [U.S. Pat. 6,158,011]. Citrix further contends the district court’s award of prejudgment interest and asserts that certain of its evidentiary rulings justify a new trial on willful infringement and damages.
SSL Services, at *2-3 (text added).
HoldingsBased on the “destination address” limitation, we affirm the denial of a new trial on non-infringement of claim 27 of the ‘796 Patent. Furthermore, we affirm the district court’s denial of JMOL requesting a finding of no willful infringement and invalidity of the asserted claims of the ‘011 Patent. We also affirm the denial of a new trial based on the district court’s evidentiary rulings, and affirm the award of prejudgment interest. Finally, we vacate the district court’s denial of prevailing party status to SSL because we find that SSL is the prevailing party, and remand for an assessment of costs and fees.
Id. at *3.
Category: Infringement 
By: Christian Hannon, Contributor  
TitleAzure Networks v. CSR, No. 2013-1459 (Fed. Cir. Nov. 6, 2014).
[Standing] [Did the District court properly grant] the Appellees' motion to dismiss Tri-County for lack of standing, finding that Tri-County had effectively assigned Azure the '129 patent.
Azure Networks at *3 (text added).
[Claim Construction] [Did the district court properly construe] the term "MAC address" in the '129 patent as "a device identifier gerenated by the hub device".
Id. (text added).
[Standing] We agree that the agreement between Tri-County and Azure constituted an effective assignement for purposes of standing, we affirm the dismissal of Tri-County.
[Claim Construction] The district court improperly construed the term ["MAC address"], we vacate the judgmenet of noninfringement and remand.
Category: 101  
 By: Jesus Hernandez, Blog Editor/Contributor
TitleIn re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Lit., No. 2014-1361, -1366 (Fed. Cir. Dec. 17, 2014).
[I: Composition of Matter Claims] The four composition of matter claims now on appeal are directed to primers, which are “short, synthetic, single-stranded DNA molecule[s] that bind[] specifically to . . . intended target nucleotide sequence[s].” J.A. 13. The court held these were likely patent ineligible because they claim so-called products of nature—that is, they claim the same nucleotide sequence as naturally occurring DNA.
In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Lit., at *5.
[II: Method Claims] Ambry argues that Mayo is directly on point because the method claims here, as there, simply identify a law of nature (the precise sequence of the BRCA genes, and comparisons of the wild-type BRCA sequences with certain mutations of those gene sequences found in the test subject) and apply conventional techniques.
Id. at *13.
[I: Composition of Matter Claims] We do not read the Supreme Court’s opinion in Myriad as conferring patent eligibility on composition of matter claims directed to naturally occurring DNA strands under such circumstances. A DNA structure with a function similar to that found in nature can only be patent eligible as a composition of matter if it has a unique structure, different from anything found in nature. Myriad, 133 S. Ct. at 2116–17 (citing Chakrabarty, 447 U.S. at 309–10). Primers do not have such a different structure and are patent ineligible.
Id. at *9.
[II: Method Claims] We need not decide if Mayo is directly on point here because the method claims before us suffer from a separate infirmity: they recite abstract ideas. […] [Furthermore, under the Alice analysis,] [t]he non-patent-ineligible elements of claims 7 and 8 do not add “enough” to make the claims as a whole patent-eligible [because the language only identifies the technique used to compare two gene sequences].
Id. at *13 and *17 (text added).

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