I attended the 14th annual Rocky Mountain IP & Technology Institute at the beginning of June. As usual, Mark Lemely reviewed the last year in patent law at the Federal Circuit. Here are some highlights:

  • 101 jurisprudence
    • 42 cases holding patents invalid as unpatentable; 2 cases upholding validity. That is one more than last year.
    • Many Federal Circuit §101 cases are unreported.
    • Some clear rules:
      • General, well-known computer technology/hardware is not going to be patentable.
      • Digitizing a well-known human process will not be patentable.
      • Asking for claim construction is not enough, without a citing to a specific claim construction that would save the claim from a 101 argument.
      • Medical diagnostics technologies are not immune from 101 challenges.
    • Enfish
      • Enfish has similarities to DDR – both have claims written to be an actual advancement to computer technology.
      • Enfish is a self-referential database. That is arguably new – there may be reason to question whether, in fact, it is new.
      • The court says they must focus upon whehter the point of the claim is directed to an abstract idea, not just if there is an abstract idea in an element.
      • The claims were written in means plus function format which incorporates technology from the specification into the claim limitations.
    • In re TLI
      • This case shows that the Federal Circuit has not completely shifted its views after Enfish. The claims were directed toward organizing photos on a phone.
      • Organizing photos is an abstract idea. The court says inventing a camera phone might not have been abstract, but simply organizing pictures on the phone is abstract.
    • § 112 — Indefiniteness
      • Where there are four ways to calculate a number (the slope of strain hardening coefficient) and the patent does not pick one, the term is indefinite.
      • There is also indefiniteness in software claims:
        • Means plus function terms in patent claims must be connected to algorithms or high-level explanations of the software in the specification.
        • Williamson v. Cisco – Federal Circuit overruled the presumption that “means” language is means plus function and non-“means” language is not.
          • The Court held that replacing “means” with “module” is not enough. It is still means plus function. Because the specification did not provide the algorithm for the “module.”
        • The Federal Circuit also held “compliance mechanism” was means plus function language and invalidated because there was not a corresponding algorithm or software description.
      • So, you may overcome 101 with means language, but if you do that you must disclose the relevant algorithms to avoid 112 invalidity.
    • Obviousness
      • Circuit Check v. QHQ – The missing prior art element is etching the circuit board. Cited prior art is rock carving/engraving. The Federal Circuit held that rock carving was not analogous art.
      • Nike (appeal from PTAB) – The PTAB did not make any factual findings and, therefore, remands even though the Federal Circuit agreed regarding the PTAB’s obviousness analysis.
      • Apple v. Samsung – Prior art regarding slide to unlock. Apple argued that the prior art taught away because it required swiping finger in the opposite direction. Federal Circuit says it is not enough that the reference did something difference. Teaching away requires saying/showing that the patented aspect would not work or should not be used.
        • Also, evidence that the expert wanted the functionality himself is not sufficient evidence of long-felt consumer need.
        • No evidence of a nexus between copying and that the slide to unlock feature was the reason consumers bought the phone.
      • PTAB proceedings
        • Federal Circuit affirmed the PTAB’s decision to throw out an entire reply brief because it contained a new argument. The Court reasoned that it was not required to search through the reply and separate arguments that were proper and those that were not.
      • Claim construction
        • Prosecution disclaimers
          • The Federal Circuit disfavors disclaimers and holds them to a high standard.
          • OpenWave v. Apple – Repeated disparagement in the specification of computer modules was a disclaimer.
        • In re Cuzzo – We are waiting to learn whether the broadest reasonable interpretation at the PTAB will survive.
        • Claim construction cannot be refined after a jury verdict, although you can refine up until the verdict.
        • Nuance v. ABBYY – Where a party argued for ordinary meaning, that party cannot argue for a new construction after losing a jury verdict.
          • The district court required streamlining the trial to three of eight patents. Nuance acquiesced without objection. The Court held that Nuance did not get a second trial on the other five patent because it had not objected. A “boiler plate reservation of rights” was not sufficient to preserve Nuance’s additional patent claims.
        • Eon v. Silver Springs Networks – The district court held “portable” and “mobile” had ordinary meanings. Patentee claims that meters attached to houses are portable and mobile because they can be removed and walked to a truck. The Federal Circuit held that the district court had to construe the term because there was a dispute. The Federal Circuit did not remand because it was able to hold that no reasonable jury would conclude that a meter bolted to a house was either a mobile or a portable device.