Today, Mon., Mar. 5, 2012, in In re Staats, No. 2010-1443, the Federal Circuit (Dyk, O’Malley (concur) and Reyna) reversed the Patent Office and ruled that a continuing reissue application filed after the 2-year period for seeking broadened reissue was proper because it related to a prior broadening reissue application filed within the 2-year period.  This was the case even though the continuing reissue application sought for the first time to cover a second embodiment in the patent and the prior broadening reissue application was directed only to a first embodiment.

Continue Reading Patent Alert: Federal Circuit permits continuing reissue application if related broadening reissue application filed within 2-year period of original patent grant (In re Staats)

Today, Fri., Mar. 2, 2012, in MySpace v. Graphon, No. 2011-1149, the Federal Circuit (Newman, Mayer (dissenting) and Plager) affirmed summary judgment that patent claims directed to accessing a database over a network were invalid as anticipated or obvious over the prior art.

Continue Reading Patent Alert: Federal Circuit decides classic invalidity defenses to avoid abstract patentable subject matter defense (MySpace v. Graphon)

UPDATE: On July 6, 2012, a panel rehearing was granted in this case that modified the decision by withdrawing all of Section III concerning what constitutes a Commission determination subject to appeal.  Please see our July 6, 2012 post for more details.

Today, Wed., Feb. 29, 2012, in General Electric v. ITC, No. 2010-1223, the Federal Circuit (Rader, Newman and Linn) ruled that “issues decided by initial determination and not substantively reviewed by the full Commission are deemed determinations of the Commission … and entitled to appeal … .”  The Court thus rejected the ITC’s argument that the only issues subject to appeal were those specifically decided by the full Commission.

The Court also provided incremental guidance on the claim construction issue of whether a structural limitation must be separate from another.  The Court ruled that the limitation “a [shunt] circuit coupled with the input of the inverter … to shunt current from the inverter …” did not require the shunt circuit to be entirely external to the inverter.

Today, Mon., Feb. 27, 2012, in Fort Properties v. American Master Lease, No. 2009-1242, the Federal Circuit (Prost, Schall and Moore) affirmed summary judgment invalidating as unpatentable subject matter claims directed to a real property investment tool.  This case provides a good summary of the current state of the law on patentable subject matter, particular for computer implemented business methods.

The patent method claims, which were similar to the Bilski commodity investment claims, were directed to “creating a real estate investment instrument adapted for performing tax-deferred exchanges.”  The claims covered the general steps of forming a real property portfolio that is divided into deedshares governed by a master agreement that required the deedshares to be reaggregated later.  The Court held that the claims were not patentable because they claimed “an abstract real estate investment tool” and “this abstract concept cannot be transformed into patentable subject matter merely because of connections to the physical world through deeds, contracts, and real property.”

Some claims further required a computer to generate the deedshares.  But those claims also were not patentable, because “the computer limitation is simply insignificant post-solution activity” that did not “impose meaningful limits on the claim’s scope.”

On Wed., Feb. 1, 2012, in Thorner v. Sony Computer, No. 2011-1114, the Federal Circuit (Rader, Moore and Aiken) reversed a claim construction because the district court improperly used the specification to limit claim terms.

Continue Reading Patent Alert: Federal Circuit provides insight on claim disavowal and rules that claims raising questions of degree are factual infringement issues (Thorner v. Sony Computer)