Case Updates

The following excerpts were presented in previous CASE UPDATES:

CAFC Holds that Patent Directed to Relative Placement of Inertial Sensors (for Motion Compensation) to be Patent Eligible

The U.S. Court of Appeals for the Federal Circuit (CAFC) delivered its decision in Thales v. United States, in which the CAFC reversed the decision of the U.S. Court of Federal Claims, which found the claims of U.S. Patent 6,474,159 to be invalid under 35 U.S.C. § 101 as being directed to patent ineligible subject matter (i.e., abstract idea). This is the second CAFC decision to resolve step 1 of the Alice analysis in favor of the patentee (the first CAFC decision being the Enfish v. Microsoft decision in May 2016)…

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Two Recent Patent Cases Decided in the U.S.

The first is the case of Icon Health v. Strava. While there are a number of tedious issues resolved in the case, the significant point of the decision is the Federal Circuit’s reminder that the Patent Office MUST provide an evidentiary basis for its findings. As you know, when making rejections under 35 U.S.C. § 103, patent Examiners will often combine references by making only conclusory assertions, and without advancing a proper evidentiary basis for the asserted combination. This case serves as a reminder that such a rejection is improper.

The second opinion is the case of Life Technologies v. Promega. In this case, the U.S. Supreme Court held that a party who supplies only a single component of a multi-component patented claim cannot be found to infringe the claim under 35 U.S.C. § 271(f)(1)…

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Federal Circuit Invalidated Claims under 112, 2nd Paragraph

The U.S. Court of Appeals for the Federal Circuit rendered a decision in the case of Advanced Ground Information Systems v. Life360, Inc. 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”…

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Federal Circuit AGAIN Reverses PTAB Rejection for Conclusory Assertion that Combination was “Intuitive”

Back in August, 2016, I sent you an email about two Federal Circuit decisions (In re Warsaw and Arendi v. Apple). I’ve attached copies of those decisions to this post for your reference. I’ve also reproduced (at bottom) the text from that email for your reference. This past week, on January 3, the Federal Circuit delivered a similar decision, again reversing a PTAB (Patent Trial and Appeal Board) conclusion of obviousness, which was based on a bare (unsupported) assertion of the combination of references was “intuitive”. The decision is In re Marcel, and I have attached a highlighted copy for your reference.

The invention at issue is directed to a touchscreen interface for a portable electronic device that allows the user to rearrange icons on the display. According to…

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Federal Circuit Finds Claims Invalid for Indefiniteness

On November 17, 2016, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered the decision in Alfred E. Mann Foundation v. Cochlear Corporation. This decision is a reminder of the importance of disclosing in a patent specification appropriate structure associated with all functional language that is claimed. In this decision, the CAFC upheld a district court finding of invalidity of claims for failing to disclose in the specification the structure for the claimed feature of…

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