Case Updates

The following excerpts were presented in previous CASE UPDATES:

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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