Federal Circuit Finds Claims Patent-Eligible under Alice

On November 1, 2016, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered a precedential decision, which is favorable to patentees. The CAFC decision reversed a district court’s finding of certain patent claims to be invalid under 35 U.S.C. § 101. A copy of the decision, with relevant portions highlighted, is attached for your reference.

The patents at issue are directed to parts of a system that is designed to solve an accounting and…

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Federal Circuit Renders Another Decision on Prosecution Disclaimer

This post is in follow-up to the email I sent you yesterday, which reported the MIT v. Shire decision from the U.S. Court of Appeals for the Federal Circuit (CAFC), which dealt with the doctrine of prosecution disclaimer. Attached is another CAFC decision that deals with the same issue, only in the…

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Federal Circuit Rules on Prosecution Disclaimer and Indefiniteness

Last Thursday, the Federal Circuit upheld a district court judgment that MIT’s patent claims were neither unenforceable under the doctrine of prosecution disclaimer, nor were they indefinite. I have attached a highlighted copy of the opinion for your reference.

Prosecution Disclaimer

The principal issue in the opinion relates to the doctrine of prosecution disclaimer. I won’t go into the details of the decision…

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Federal Circuit Reverses District Court Finding of Indefiniteness

On September 23, 2016, the U.S. Court of Appeals for the Federal Circuit (CAFC) rendered its decision in the Cox Communications, et al. v. Spring Communication et al. litigation. The issue was patent claim indefiniteness under 35 U.S.C. § 112, second paragraph. I have attached a highlighted version of this decision for you.

Significantly, the CAFC reversed a district court decision, which granted summary judgment finding claims to be indefinite because of the…

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PTAB Decision Reversed for Applying Common Teaching as Corresponding to Different Claimed Features

Yesterday, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a decision by the Patent Trial and Appeal Board (PTAB), which decision had upheld rejections made by an Examiner. The CAFC concluded that there was no substantial evidence to support the conclusion reached by the PTAB (which had adopted the findings of the Examiner in its decision). I attach a highlighted copy of this opinion.

The CAFC decision is non-precedential, which means that it does not reflect a change in the law, but the decision is…

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Federal Circuit Finds Lip-Sync Software Patents to be Patent Eligible

On September 13, 2016, the U.S. Court of Appeals for the Federal Circuit delivered an opinion, which reversed a U.S. district court decision, and found patent claims directed to a method and apparatus for automatically animating lip synchronization and facial expression to be patent eligible. This decision is very favorable for…

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The Specification Must Support Claim Scope

Yesterday, the Federal Circuit delivered the attached precedential decision in ScriptPro LLC v. Innovation Associates, dkt. 2015-1565 (Fed. Cir. August, 15, 2016). Central to this decision is whether a claim is invalid if it is broader than the embodiments described in the specification.

ScriptPro’s claims were directed to a device called a “collating unit” and an automatic dispensing system (ADS) used to store prescription containers, after a patient’s medication has been stored in the containers. The patent specification described the preference of storing prescription containers by patient-identifying information and slot availability (the storage area having “slots” for storing the prescription containers). The claims, however, did not require this…

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Federal Circuit Decisions Relating to PTO’s Conclusory Assertions

This week, the U.S. Court of Appeals for the Federal Circuit delivered two different opinions, which may be useful to Applicants during prosecution, in appropriate scenarios. Specifically, these cases are relevant where the Patent Office fails to set forth the requisite factual findings to support a rejection, or where the Patent Office substitutes “common sense” in place of evidence that should be used to support a rejection.

The first opinion (In re Warsaw Orthopedic) confirms that “The [Patent Office] cannot rely on conclusory statements when dealing with … prior art and specific claims, but must set forth the…

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Another Federal Circuit Case Regarding Patent-Ineligible Subject Matter

As claim evaluation under 35 U.S.C. 101 (post Alice) is a quickly evolving area of law, I wanted to update you on the latest decision from the Federal Circuit. Yesterday, the Federal Circuit delivered the attached opinion, in which it upheld a district count determination of invalidity under 35 U.S.C. § 101. The patents in question were directed to systems and methods for real-time monitoring of an electric power grid.

The Court reasoned that “Though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in…

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Federal Circuit Invalidates Claims under 112, 2nd paragraph

Late last week, the U.S. Court of Appeals for the Federal Circuit rendered the attached decision in the case of Advanced Ground Information Systems v. Life360, Inc. (I have highlighted relevant passages in the attached). In this case, the Federal Circuit upheld a district court’s determination that certain claims of the asserted patents were invalid under 35 U.S.C. § 112, second paragraph (now 35 U.S.C. § 112(b)) because the specification did not disclose sufficient structure (e.g., an algorithm) for performing the claimed function.

Specifically, the claims at issue recited a “symbol generator.” The Court determined that this feature was a functional term, and as a functional term was to be…

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