12/17/2014
Category: Civil Procedure
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleAnticancer, Inc. v. Pfizer, Inc., No. 2013-1056 (Fed. Cir. Oct. 20, 2014).
Issues[The district court's action, in requiring Anticancer to pay defendants' attorney fees, in order for AntiCancer to supplement its Preliminary Infringement Contentions,] was [an unwarranted] sanction, [...] and that the summary judgment based on the [fee-shifting] was improper.
Anticancer, Inc., at *6 (text added).
HoldingWhen a complaint meets the standards of the Federal Rules, and there has been no reasonable opportunity for discovery and evidentiary development of the issues, it is rarely appropriate to summarily decide the merits against the complainant. We need not intrude upon the district court’s authority to require supplementation of the Preliminary Infringement Contentions when such supplementation may assist the procedures of trial. However, exercise of a court’s inherent authority to levy a sanction as a condition of supplementing the Contentions requires conduct that “constituted or was tantamount to bad faith.”
Id. at *27.

 
12/14/2014
Category: 101 
 
 
 
 
By: Abby Lin, Contributor 
 
CasePlanet Bingo, LLC v. VKGS, No. 2013-1663 (Fed. Cir. Aug. 26, 2014) (non-precedential).
Issues
1. Planet Bingo argues that “in real world use, literally thousands, if not millions of preselected Bingo numbers are handled by the claimed computer program,” making it impossible for the invention to be carried out manually [and thus impossible to be done mentally, making it patent eligible].
Planet Bingo, at *4 (text added).
2. Planet Bingo argues that the patents recite “significantly more” than an abstract idea because the invention includes “complex computer code with three distinct subparts.”
Id. at *5.
Holdings
1. But the claimed inventions do not require [thousands of preselected Bingo numbers]… although the ’646 and ’045 patents are not drawn to the same subject matter at issue in Bilski and Alice, these claims are directed to the abstract idea of “solv[ing a] tampering problem and also minimiz[ing] other security risks” during bingo ticket purchases. This is similar to the abstract ideas of “risk hedging” during “consumer transactions,” Bilski, 130 S. Ct. at 3231, and “mitigating settlement risk” in “financial transactions,” Alice, 134 S. Ct. at 2356–57, that the Supreme Court found ineligible. Thus, we hold that the subject matter claimed in the ’646 and ’045 patents is directed to an abstract idea.
Id. at *4(text added, internal citations omitted).
2. [T]he claims recite a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers. And, as was the case in Alice, “the function performed by the computer at each step of the process is ‘[p]urely conventional.’” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1298). Accordingly, we hold that the claims at issue do not have an ‘inventive concept’ sufficient to ‘transform’ the claimed subject matter into a patent-eligible application.
Id. at *6.
 
 
 
12/11/2014
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleWorld Class Tech. Corp. v. Ormco Corp., No. 2013-1679, 2014-1692 (Fed. Cir. Oct. 20, 2014).
IssueThe heart of the parties’ dispute is what constraints claim 1 places on the “support surface” during movement of the movable member (slide). As a complement to that issue, the parties also dispute what role is played by the “ledge” surface that lies on the other side of the wire-holding slot from the support surface.
World Class Tech. Corp., at *4.
Holding[W]e conclude that the specification makes clear that the district court correctly resolved the uncertainties in the claim language, adopting a construction that aligns with the description of the invention [which distinguishes “support surface” from a “ledge” surface, and assigns a unique operation to each term,” such that the two terms are not interchangeable].
Id. at *9 (text added).
 
 
 
12/08/2014
Category: 101 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleUltramercial, Inc. v. Hulu, LLC, No. 2010-1544 (Fed. Cir. Nov. 14, 2014).
IssueUltramercial argues that the ’545 claims are not directed to the type of abstract idea at issue in Alice—one that was “routine,” “long prevalent,” or “conventional”— and are, instead, directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before.
Ultramercial, Inc., at *8.
HoldingThe process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application.
Id., at *9.
 
12/03/2014
Category: Civil Procedure 
 
 
 
By: Christian Hannon, Contributor  
 
TitleJang v. Boston Scientific Corp., No. 2014-134 (Fed. Cir. Sept. 16, 2014).
IssueBoston Scientific Corporation and Scimed Life Systems, Inc. petition for permission to appeal an order of the United States District Court for the Central District of California that denied summary judgment.
Jang at *2.
Holding[W]e conclude that the limited circumstances under which an interlocutory appeal might be
permitted are not met in this case.
Id. at *9.
 
12/01/2014

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11/30/2014
 
 
 
 
By: Roy Rabindranath, Contributor 
 
TItle:American Calcar v. American Honda Motor Co., Inc. (Fed. Circ. Sept. 26, 2014).
Issue:[Whether] the judgment of the [lower court] finding that U.S. Patent Nos. 6,330,497 ("497 patent"), 6,438,465 ("465 patent"), and 6,542,795 ("795 patent") were unenforceable due to inequitable conduct [was an abuse of discretion].
American Calcar, at *2, 6 (Text Added).
Holding:The defendant proves inequitable conduct "by clear and convincing evidence that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive the PTO." [...] This court held in Therasense that the standard for "the inequitable conduct is but-for materiality." In particular, undisclosed prior art is "but-for material if the PTO would not have allowed a claim had it been aware of" it. [... In regard to the intent prong,] "because direct evidence of deceptive intent is rare a district court may infer intent from indirect and circumstantial evidence," provided that such intent is the single reasonable inference.
Id. at *5-6, 9 (Text Added, Internal Citations Omitted). 
 
 

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