Today, Monday, Nov. 5, 2012, in Voter Verified, Inc. v. Premier Election Solutions, Inc., Nos. 2011-1553 and 2012-1017, the Federal Circuit (Lourie, Reyna, and Wallach) ruled that an online document that had not been indexed by major search engines was nevertheless a prior art “printed publication” under section 102(b).  This case provides insight on establishing online resources as prior art printed publications.

Continue Reading Patent Alert: Federal Circuit gives guidance on “printed publications” found on the Internet (Voter Verified v. Premier Election Solutions)

Today, Thu., Oct. 11, 2012, in Apple v. Samsung, No. 2012-1507, the Federal Circuit (Prost, Moore and Reyna) reversed preliminary injunctive relief where the patentee did not establish that the accused infringing feature in a multicomponent device drove consumer demand for the entire enjoined device.  This is an important case in the Federal Circuit’s recent trend to rein-in relief available from accused infringement by one component of a multicomponent device.

Continue Reading Patent Alert: Federal Circuit limits injunctive relief for multicomponent devices (Apple v. Samsung)

UPDATE: The Federal Circuit issued an en banc decision holding the claims invalid.  Please see our May 13, 2013 post for more details.

Today, Tues., Oct. 9, 2012, in CLS Bank v. Alice Corp., No. 2011-1301, the Federal Circuit ordered rehearing en banc on the patent eligibility of computer-implemented inventions.  The CLS Bank original, and now vacated, decision found a stock trading platform invention patent eligible under a permissive view of § 101 patent eligibility that counseled focusing on more established invalidity defenses under §§ 102, 103 and 112.   But a few weeks later, the Bancorp. decision found that a life insurance policy value tracking invention was not patent eligible and breathed life into the patent eligibility defense against computer-implemented inventions.

Continue Reading Patent Alert: Federal Circuit to review en banc patent eligibility of computer-implemented inventions (CLS Bank v. Alice)

On Tues., Sept. 18, 2012, in Medtronic Inc. v. Boston Scientific Corp. et al., Nos. 2011-1313, -1372, the Federal Circuit (Lourie, Linn, and Prost) determined the proper allocation of the burden of proof as to patent infringement issues in the limited circumstance where a party licensed to a patent-in-suit seeks a declaratory judgment of non-infringement.  The Court held that where the only issue is the request by the licensee for a declaratory judgment of non-infringement, the licensee bears the burden of persuasion to show non-infringement, as any counterclaim for infringement is foreclosed by the existence of a license agreement.

[UPDATE]  On May 20, 2013, the U.S. Supreme Court has granted Medtronic’s Petition for Certiorari, and will review this case.  For more coverage on the status of this case at the Supreme Court level, you can check out SCOTUSblog. [/UPDATE]

Continue Reading Patent Alert: Federal Circuit Holds that Burden of Proof on Infringement May Vary in Declaratory Judgment Actions

On Tuesday, Sep. 4, 2012, in Mirror Worlds v. Apple, Inc., No. 2011-1392, the Federal Circuit (Lourie, Newman and Prost (dissent-in-part)) affirmed an E.D. Tex. court’s ruling that overturned a jury verdict of induced infringement based on failure of proof of an underlying direct infringement.  This case provides incremental insight into induced infringement post-Akamai.

Continue Reading Patent Alert: Federal Circuit rules no inducement because insufficient proof of underlying direct infringement (Mirror Worlds v. Apple)

Today, Friday, August 31, 2012, in a combined en banc decision in Akamai Tech. v. MIT and McKesson v. EPIC Sys, Nos. 2009-1372 and 2010-1291, the Federal Circuit (Majority: Rader, Lourie, Bryson, Moore, Reyna and Wallach; Dissent: Newman; Dissent: Linn, Dyk, Prost and O’Malley) substantially changed § 271(b) induced infringement by overruling the BMC Resources rule that a “single entity” must perform all claimed method steps to establish underlying direct infringement required for an induced infringement claim: “To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.”

Continue Reading Patent Alert: Federal Circuit changes law of induced infringement (Akamai and McKesson)

On Thu., Aug. 30, 2012, in LaserDynamics v. Quanta, No. 2011-1440, the Federal Circuit (Dyk, Clevenger and Reyna) clarified and limited applying the entire market value damages rule where the patent is directed to a component of a multi-component system – e.g., a patented method for determining the type of disc in an optical drive that is a component of a laptop computer.  This is a significant case to review in determining evidence required to establish damages under the entire market value rule as well as other damages theory, including issues such as using prior licenses, litigation settlements and the proper date for the Georgia-Pacific hypothetical negotiation.

Continue Reading Patent Alert: Federal Circuit limits reliance on entire market value damages (LaserDynamics v. Quanta)

Today, Thu., Aug. 16, 2012, in Ass’n for Molecular Pathology v.  USPTO (“The Myriad Case”), , No. 2010-1406, the Federal Circuit (Lourie, Bryson (concur/dissent) and Moore (concur)) issued its anticipated decision in the Myriad case on whether certain composition and method claims to isolated DNA molecules were patentable subject matter.  This Myriad decision will have a substantial impact in the biomedical, chemical and related arts.  The decision provides only incremental insight to computer-based or similar inventions, and also provides incremental insight into declaratory judgment jurisdiction.

Continue Reading Patent Alert: Federal Circuit clarifies patent eligibility for biomedical arts (Myriad)

Today, Thu., July 26, 2012, in Bancorp v. Sun Life, No. 2011-1467, the Federal Circuit (Lourie, Prost and Wallach) revived the § 101 patent eligibility defense against computer-based inventions, holding that claims to a method for administering and tracking the value of life insurance policies were not patentable because the computer limitations were not “integral to the claimed invention” or limited to “a very specific application of the inventive concept”, but merely involved computers doing calculations more efficiently than could be done by mental processes.  This is a significant decision to review with respect to patent eligibility of computer inventions, and limits the recent CLS decision of July 9, 2012 that appeared much more permissive on what computer inventions are patentable.

Continue Reading Patent Alert: Federal Circuit revives patent eligibility defense against computer-based patents (Bancorp v. Sun Life)

UPDATE:  The Federal Circuit has vacated its decision and will take this case up en banc in early 2013.  Please see our October 9, 2012 post for more details.

SECOND UPDATE: The Federal Circuit issued an en banc decision holding the claims invalid.  Please see our May 13, 2013 post for more details.

Today, Mon., July 9, 2012 in CLS Bank v. Alice Corp., No. 2011-1301, the Federal Circuit (Linn, Prost (dissent) and O’Malley) found a computer-implemented trading platform for reducing settlement risks when exchanging stocks or currency was not invalid based on a permissive test of patentable subject matter.  This decision will further guide litigation away from the abstract § 101 patentability defense and toward the better-defined invalidity §§ 102, 103 and 112 defenses based on prior art or inadequate patent disclosure.

Continue Reading Patent Alert: Federal Circuit creates permissive patent eligibility standard for computer-implemented inventions (CLS v. Alice)