The Federal Circuit issued another precedential decision adding to its line of cases delineating between patent-eligible and patent-ineligible improvements in computer-related technology. On February 8, 2018, the Federal Circuit affirmed that U.S. Patent No. 7,447,713 (‘713 patent) related to eliminating redundant storage of common text and graphical elements to improve system operating efficiency and to reduce storage costs was directed to patent ineligible subject matter under 35 U.S.C. § 101. Continue reading
In the non-precedential decision WCM Industries Inc. v. IPS Corp., the Federal Circuit overturned the district court’s grant of IPS’s motion for judgment as a matter of law, finding that the patentee WCM provided sufficient evidence to support the jury’s finding of infringement under the doctrine of equivalents based on one product’s similarity to another, literally-infringing product.
In a split precedential decision, the Federal Circuit ruled that 37 C.F.R. § 42.73(b) permits the Patent Trial and Appeal Board to enter an adverse judgment when a patent owner cancels all claims at issue after an IPR petition has been filed, but before an institution decision.
(*Originally published as a Michael Best client alert on January 10, 2018, co-authored by J. Donald Best and Kenneth M. Albridge, III)
On January 8, 2018, in Wi-Fi One, LLC v. Broadcom Corp., the United States Court of Appeals for the Federal Circuit issued an en banc decision expanding the range of issues subject to judicial review on appeal from decisions of the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) proceedings. In a 9-4 decision, the full Federal Circuit overruled its prior panel decision in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and held for the first time that the PTAB’s time-bar determinations under 35 U.S.C. § 315(b) are not exempt from judicial review under § 314(d). Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944, slip op. at 21 (Fed. Cir. Jan. 8, 2018). Continue reading
In a nonprecedential decision, the Federal Circuit ruled that the Patent Trial and Appeal Board had (1) failed to address a specific anticipation argument raised by a petitioner and (2) failed to provide adequate reasoning to support a decision on obviousness. Continue reading
In 2014, the Supreme Court issued its decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), rejecting the Federal Circuit’s “insolubly ambiguous” standard for determining compliance with the definiteness requirement under 35 U.S.C. § 112. Criticizing that standard as leaving “courts and the patent bar at sea without a reliable compass,” the Supreme Court held that a patent is indefinite and invalid if the “patent’s claims, read in light of the specification and the prosecution history fail to inform with reasonable certainty those skilled in the art about the scope of the invention.” Nautilus, Inc., 134 S. Ct. at 2124, 2129-30. On November 20, 2017, the Federal Circuit issued a precedential decision on indefiniteness, adding to its growing jurisprudence applying the Supreme Court’s decision in Nautilus. Continue reading
A recent Federal Circuit decision may give further hope to some accused infringers still looking to transfer venue in the wake of the Supreme Court’s TC Heartland decision. On November 15, 2017, a Federal Circuit panel vacated the U.S. District Court for the District of Massachusetts’ denial of Micron’s motion to dismiss or transfer and declared that TC Heartland was a change in the law. In re: Micron Tech., Inc., No. 2017-138 (Fed. Cir. Nov. 15, 2017) (precedential). Continue reading