Gibbons Law Alert

Gibbons Law Alert

Category: Patent

Third Circuit District Courts Take Aim at Non-Patent Eligible Patents Under § 101

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Posted in Patent

On August 8, 2013

In a pair of recent decisions issued just days apart, the District of Delaware and the District of New Jersey have found patents relating to online transaction guaranties and financial services to be non-patent eligible pursuant to 35 U.S.C. § 101. Practitioners may wish to take heed …. In buySafe, Inc. v. Google, Inc., C.A. No. 11-1282-LPS, Dkt. 69 (D. Del. July 29, 2013) (Stark, J.), buySafe asserted its online transaction guaranty patent, and Google moved for judgment on the pleadings pursuant to Rule 12(c). Ultimately, Judge Stark of the Delaware District Court granted defendant’s motion on the grounds that the patent-in-suit was invalid under 35 U.S.C. § 101 because it is directed to non-patent-eligible subject matter. In so ruling, the Court noted that on the face of the patent, it described that the entire inventive process could be performed by a human.

CAFC Council Rescinds Model Order ….

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Posted in Patent

On August 6, 2013

We previously reported that the Federal Circuit Advisory Council (“the CAFC Council”) recently approved a “Model Order Limiting Excess Patent Claims and Prior Art” that set default numerical limits on the number of asserted patent claims and prior art references. Prior to this, we reported in October 2011, that Chief Judge Randall Rader of the Federal Circuit had announced that the CAFC Council had adopted a Model Order to streamline and reduce e-discovery costs.

Negative Claim Leads to “Udder” Failure

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Posted in Patent

On July 30, 2013

Judge Rich gave us the adage, “the name of the game is the claim.” Given the number of cases issued by the Federal Circuit on written description, perhaps the adage should be revised as “the name of the game is the claim – supported by the specification.” In In Re Bimeda Research & Development Ltd., the Federal Circuit issued another decision requiring the entire scope of the claims to be supported by the disclosure. While this is nothing new in patent law, the claim at issue is a negative claim that expressly excluded an element. The original claim was directed to a prophylactic method to treat infections in cow mammary glands by providing a physical barrier to the teat canal.

Federal Circuit Advisory Council Gives Nod to Limited Claims and Prior Art in Patent Suits

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Posted in Patent

On July 23, 2013

IP practitioners on both sides of the “v.” should take heed that the Federal Circuit Advisory Council (“the CAFC Council”) has unanimously approved a “Model Order Limiting Excess Patent Claims and Prior Art.” Citing a “[l]ack of discipline” by the asserting party, the CAFC Council recounted that the resulting “superfluous claims and prior art” have contributed to increasing the expense and burden of patent litigation. And rather than dealing with the number of claims and prior art references on an ad hoc basis, as is presently done, the aspirational Model Order sets default numerical limits on the number of asserted patent claims and prior art references.

The USPTO Launches the Global Patent Search Network

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Posted in Patent

On July 22, 2013

On July 8, Teresa Stanek Rea, Acting Director of the United States Patent and Trademark Office (“USPTO”), announced on her official blog the launch of the Global Patent Search Network (“GPSN”). The GPSN is the result of a cooperative effort between the USPTO and China’s State Intellectual Property Office (“SIPO”). Users of the GPSN will be able to search full text Chinese patent documents and English machine translations, thus enabling searches in both English and Chinese. The initial database of documents will include published applications, granted patents, and utility models dated from 2008 to 2011. The database will be periodically updated. In addition, the USPTO anticipates the network will expand to include patent documentation from other foreign intellectual property offices.

So, Too, a DJ Plaintiff May Be Entitled to Attorney Fees in Exceptional Cases

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Posted in Patent

On July 17, 2013

According to a recent Central District of California decision, a declaratory judgment plaintiff may be entitled to attorney fees if it prevails on non-infringement in a patent case. Homeland Housewares, LLC v. Sorensen Research and Dev. Trust, No. 11-03720, slip op. at 7-8 (C.D.C.A. Jun. 27, 2013). In Homeland, plaintiff filed a declaratory judgment of non-infringement, invalidity and unenforceability in response to a demand letter (and correspondence thereafter) asserting patent infringement. The asserted patent was directed to plastic injection molding, and the accused products were plastic cups. The Court granted plaintiff’s summary judgment of no infringement, but denied plaintiff’s motion for invalidity and in fact, granted defendant’s cross-motion for summary judgment of validity. Plaintiff then moved for attorneys’ fees under 35 U.S.C. § 285, which permits awards in “exceptional cases” to the “prevailing party,” but, who was the prevailing party?

Whither or Wither the A/C Privilege?

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Posted in Patent

On July 15, 2013

The attorney-client privilege is one of the most sacrosanct and inviolable, allowing full and frank dialogue between client and counsel. The recent decision in BSP Software LLC v. Motio, Inc., 1-12-cv-02100 (ND Ill. July 9, 2013) DN 141, Order has broad implications for this well-established privilege, and important lessons-learned for when it might be waived.

High Court Seeks Government Input on Akamai v. Limelight

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Posted in Patent

On June 25, 2013

The Supreme Court asked the U.S. Solicitor General to weigh in on whether to hear an appeal from the Federal Circuit’s decision in Akamai Technologies Inc. et al v. Limelight Network, Inc. on induced infringement. This is a very closely watched case for the software industry, but may have far reaching implications in the pharmaceutical field as well.

The End of an Era for Gene Patents? Supreme Court Rules that Isolated DNA is Unpatentable

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Posted in Patent

On June 14, 2013

Over thirty years ago, the USPTO awarded the first gene patent (US 4,447,538) and the Supreme Court held that biological inventions were subject to patent protection. Since then, tens of thousands of U.S. “gene” or DNA related patents have issued. However, there has been much uncertainty over the patentability of such inventions as of late.

Don’t Go Over 1%, or the Seed Giant May Come After You!

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Posted in Patent

On June 12, 2013

Last month, we reported on seed giant, Monsanto’s Supreme Court victory involving the question of patent exhaustion with regard to its sale of seed incorporating its patented seed technologies. On Monday, June 10, Monsanto appeared to emerge victorious from another litigation related to its seed technology and business when the Federal Circuit affirmed a lower court ruling that a coalition of organic farmers and seed sellers had no standing to seek declaratory judgments of non-infringement and invalidity with respect to Monsanto’s patented seed technologies.

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