Tag Archives: Patents

The Motivation to Combine References: Substantial Evidence and the Obviousness Examination Guidelines

By Stephen C. Hall

A recent opinion by a Federal Circuit panel demonstrates that three years can be a long time in the smartphone industry. MobileMedia Ideas, LLC v. Apple, Inc. targeted Apple’s iPhone products and determined, for now at least, the fate of claims in two patents owned by MobileMedia, a non-practicing holding company partially owned by Nokia and Sony. (Fed. Cir. 2014-1060, 2014-1091.) Rulings on two separate patents hinged on whether a skilled artisan would have been motivated smartphoneto combine multiple references.

The determination of obviousness is a legal question based on juror fact findings. In the case at hand, two references in combination taught Continue reading

Patent Litigation on Reach of Raging Bull Decision to go to Round Two in Federal Circuit

By Will Gibbons

Could a case on the boxing classic Raging Bull lead to a patent litigation prizefight of sorts? In an en banc hearing ordered on December 30, 2014, the Federal Circuit Court of Appeals, a federal appellate court with special jurisdiction over patents and trademarks, will decide whether the Supreme Court’s essential elimination of a litigation defense involving copyright cases should also apply in patent cases.

intellectualpropertyThe defense in question is the doctrine of laches. Laches is an equitable defense that bars recovery when a party claims it has been legally injured, but unreasonably delays pursuing any legal action in a way that prejudices the opposing party. The defense has been asserted in many kinds of cases, including contract, tort, copyright, and patent cases.

A Supreme Court case involving a copyright and the laches defense, Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), has triggered a ripple effect that may reach into patent law. In that case, Paula Petrella, daughter of the co-author of the screenplay that evolved into Raging Bull, alleged copyright infringement against MGM. MGM countered that Petrella delayed too long in bringing the action, as she had renewed the copyright in 1991 and first threatened suit in 1998. However, the Supreme Court rejected MGM’s position and held that Continue reading

The Written Description Requirement: Genus/Species Claims (Part Three of Three)

By Stephen C. Hall

This is the third and final post of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

“Genus”: a class, kind, or group marked by a common characteristic(s)
“Species”: a logical subdivision of a genus marked by a specific attribute

gear to successTaxonomy (classifying things according to genus and species) also has a parallel in patent law. A patentee may use narrow species claims to distinguish against prior art, while at the same time seeking the broadest possible “right to exclude” with a genus claim(s). But there are trade-offs. First, the Patent Office can reject a broad genus claim if only one member of the genus was known in the art. Second, the patentee must provide a level of description proportional to the scope of the claim. In litigation, defendants accused of Continue reading

The Written Description Requirement: When Narrow Teachings Meet Too Much Specificity (Part Two of Three)

By Stephen C. Hall

This is part two of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

The previous post in this series introduced the potential litigation hurdle – or, opportunity, depending on one’s perspective – involving the requirement that a “parent” patent application must satisfy the written description requirement with respect to claims of a later-filed “child” application.  While this requirement is well established under U.S. patent law, the interaction between the written description requirement and the AIA is a new wrinkle.iStock_000019576650Large

An AIA “transitional application” is one filed after March 16, 2013, which claims the effective filing date of an application filed on or before March 16, 2013.  If such a priority claim is justifiable, then Continue reading

The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)

By Stephen C. Hall

This is part one of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

InventionsIt happens regularly in patent litigation: a patentee asserts a patent that arose from a child application, the child application claims priority to an application filed years before, and the development of prior art in the intervening years affects the outcome of the litigation. In various cases, the outcomes (along with millions of dollars in damages) have hinged on the teachings of a parent application.

One such case involved the alleged infringement of Continue reading

High court invalidates some business methods, leaving some uncertainty

By: William S. Parks*

Another chapter in the continuing saga of business method patents was recently added with the Supreme Court’s Alice v. CLS Bank decision. Prior decisions had given credence to the concept that adding a computer or some other type of transformative quality to a method of ostensibly handling a business-like process was sufficient for patenting purposes (or, at least to move past the threshold question of whether the claimed method met the basic patentability criteria of 35 §101). In addition, certain court opinions had appeared to establish a definition of an “abstract idea” in the patent realm. Since long-held and followed principles have refused patent protection to methods based strictly on abstract considerations, the coupling of a computer-transformative action appeared to provide a basis for inventors to move forward in this area. With Alice, however, the Supreme Court has apparently done away with this well-understood patenting basis.

The Alice decision concerned an infringement claim on several business method patents that claimed schemes for mitigating settlement risks within financial exchange agreements. Basically, the overall method concerned the Continue reading