The US Court of Appeals for the Federal Circuit affirmed a district court’s pleadings-stage determination that a patent claim directed to a delivery notification system was subject matter ineligible under 35 U.S.C. § 101. Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, Case No. 19-1587 (Fed. Cir. May 14, 2020) (Prost, C.J.).

Continue Reading Verdict Delivered: Shipment Notification Claims are Patent Ineligible—Even with Security Flair

Addressing issues of design patent infringement, copyright infringement, trade dress infringement and unfair competition, the US Court of Appeals for the Federal Circuit affirmed a district court’s grant of summary judgment on all claims. Lanard Toys Limited v. Dolgencorp LLC, Ja-Ru, Inc., Toys “R” Us-Delaware, Inc., Case No. 2019-1781 (Fed. Cir. May 14, 2020) (Lourie, J.).

Continue Reading Chalk One Up to the Knock-Off

Addressing a decision by the US Patent and Trademark Office’s Patent Trial and Appeal Board (Board) declining to find certain claims unpatentable because they contained means-plus-function elements without any corresponding disclosed structure, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision except as to one challenged claim where the means-plus-function element was recited as an alternative to a non-means-plus-function element. Cochlear Bone Anchored Solutions AB v. Oticon Medical, AB, Case Nos. 19-1105, -1106 (Fed. Cir. May 15, 2020) (Taranto, J.).

Continue Reading Prior Art-Based Invalidity Analysis May Be Possible for Indefinite Claim

The US Court of Appeals for the Federal Circuit denied a petition for panel rehearing regarding the constitutionality of decisions issued by the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), holding that its decision in Arthrex, Inc. v. Smith & Nephew, Inc. (IP Update, Vol. 22, No. 11) also applies to final decisions issued by administrative patent judges (APJs) in inter partes re-examinations. Virnetx v. Cisco Systems, Inc., Case No. 19-1671 (Fed. Cir. May 13, 2020) (O’Malley, J.). The Court also denied (per curiam) a concurrently filed petition for rehearing en banc.

Continue Reading Arthrex Extended to Inter Partes Re-examination

The US Court of Appeals for the Federal Circuit affirmed a district court’s decision that a reformation of an incorrect assignment supports Article III standing and affirmed the court’s prejudgment interest award. Schwendimann v. Arkwright Advanced Coating, Inc., Case Nos. 18-2416, 19-1012 (Fed. Cir. May 13, 2020) (Wallach, J.) (Reyna, J. dissenting).

Continue Reading A Party May Have Standing Even with Incorrect Patent Assignment

Addressing for the first time whether a court must consider the adequacy of an alternative forum in its forum non conveniens analysis, the US Court of Appeals for the Federal Circuit affirmed the denial of a defendant’s motion to dismiss under forum non conveniens. In re Fortinet, Inc., Case No. 20-120 (Fed. Cir. May 1, 2020) (Dyk, J.).

Continue Reading Where Should This Case Go? Appeals Court Tosses Venue Motion to Dismiss

Addressing the disclosure-dedication doctrine, the US Court of Appeals for the Federal Circuit concluded that the disclosure-dedication doctrine barred a patent owner’s claim of infringement under the doctrine of equivalents because the asserted patents disclose, but do not claim, the alleged equivalent. Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, Case No. 19-1924 (Fed. Cir. May 8, 2020) (Reyna, J.).

Continue Reading Court’s Drug Patent Prescription: Unclaimed Disclosure is Dedicated

The US Court of Appeals for the Federal Circuit applied KSR and its obviousness progeny, finding that patent claims directed to location plotting were obvious under 35 USC § 103. Uber Techs., Inc. v. X One, Inc., Case No. 19-1164 (Fed. Cir. May 5, 2020) (Prost, CJ).

X One sued Uber Technologies asserting a patent directed to exchanging location information between mobile devices, such that a user could add other mobile device users to a “Buddy List,” share her location with listed buddies or temporary “instant buddies,” and see the locations of her buddies on a map. The patent’s purported novelty lay in “two way position information sharing,” creation of location sharing “groups,” and “temporary location sharing” that “automatically expires.”


Continue Reading The “Plotting” Thickens: Claims that Solve Known Problem with Known Methods Are Obvious

The US Court of Appeals for the Federal Circuit affirmed the US Court of Federal Claims attorneys’ fees award for patent infringement by the United States solely based on its actions during litigation. Hitkansut LLC, Acceledyne Technologies, LTD, LLC v. United States, Case No. 19-1884 (Fed. Cir. May 1, 2020) (Prost, CJ).

Continue Reading Bad Conduct During Litigation Means Attorneys’ Fees Against the Government, Regardless of Damage Amount

Addressing whether a party can waive a challenge to the constitutionality of Administrative Patent Judges’ (APJs’) appointment, the US Court of Appeals for the Federal Circuit found that the issue is non-jurisdictional and therefore waivable. Ciena Corp. v. Oyster Optics, LLC, Case No. 19-2117 (Fed. Cir. Jan. 28, 2020) (O’Malley, J.) (reissued as precedential May 5, 2020).

Continue Reading “Waive” Goodbye to Belated Argument that Administrative Patent Judges’ Appointment is Unconstitutional