The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board. Approximately one week after issuing the recent Unwired Planet v. Google decision clarifying the proper standard to determine whether a patent is a CBM patent, the Federal Circuit issued a decision in Ameranth, Inc. v. Agilsys, Inc., which demonstrates the great deal of deference the Federal Circuit may give the Board in determining what constitutes a CBM patent.

A threshold issue for CBM review is whether the challenged patent is a CBM patent and thus eligible for CBM review. As the Federal Circuit explained last week, a CBM patent is statutorily defined as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” To fall within the “technological inventions” exception to CBM patents under 37 C.F.R. §42.301(b), the claimed subjected matter as a whole must satisfy two requirements: (1) it must recite a technological feature that is novel and unobvious over the prior art; and (2) it must solve a technical problem using a technical solution.

Continue Reading The Federal Circuit Confirms That It Will Review PTAB’s CBM Determinations … To A Certain Extent

On October 28, 2016, the United States Patent and Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register proposing revisions to the materiality standard for the duty to disclose information in patent applications and reexamination proceedings in light of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).  The PTO had previously issued a notice of proposed rulemaking regarding the same rules in the Federal Register on July 21, 2011 after the Therasense decision.  However, given the passage of time and the significant changes to patent law as a result of the successful implementation of the Leahy-Smith America Invents Act (AIA), the PTO considered it appropriate to obtain public comment on the proposed changes to the duty of disclosure rules.

In the new notice, the PTO proposes to revise the rules to adopt the but-for standard for materiality required to establish inequitable conduct as set forth in the Federal Circuit’s decision in Therasense as the standard for materiality for the duty to disclose information in patent applications and reexamination proceedings.  The PTO also proposes to revise the rules to explicitly reference “affirmative egregious misconduct” as set forth in the Federal Circuit’s Therasense decision.

Continue Reading Changes to the “But-For” Standard For Materiality at the U.S. Patent and Trademark Office?

The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents.  On November 21, 2016, the Federal Circuit ruled in Unwired Planet v. Google that the Patent Trial and Appeal Board (PTAB) had rendered this limitation “superfluous” by failing to apply the correct statutory definition of “covered business method patent.”  Accordingly, the Federal Circuit vacated PTAB’s final written decision and remanded the case for a threshold determination of whether the challenged patent is a covered business method patent under the controlling statutory definition.

On October 9, 2013, Google petitioned for Covered Business Method (CBM) patent review of Unwired Planet’s U.S. Patent No. 7,203,752.  On April 8, 2014, PTAB instituted CMB review (CBM 2014-00006), stating that, when determining whether the ’752 patent was a CBM patent, the proper inquiry is “whether the patent claims activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity.”  Applying this standard, PTAB determined that the ’752 patent was a CBM patent eligible for CBM review because the claimed invention could be used to facilitate advertising and therefore is incidental or complementary to a financial activity.

Continue Reading PTAB’s Definition of CBM Patent is Wrong and Too Broad, Federal Circuit Says

On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of reasonable diligence,” was too exacting and in conflict with Federal Circuit precedent.  Slip Op. at 5-6 (emphasis in the original).

The appeal, Perfect Surgical Techniques, Inc. v. Olympus America, Inc. (Appeal No. 2015-2043), arose from the Board’s inter partes review (“IPR”) decision holding each claim at issue in U.S. Patent No. 6,030,384 (“’384 patent”) unpatentable as anticipated or obvious over Japanese Application Publication No. H10-33551 A (“JP ’551”).  In so finding, the Board determined that Perfect Surgical Techniques (“PST”) failed to antedate JP ’551 because it had not proven that the ’384 patent named inventor, Dr. Nezhat, was reasonably diligent in reducing his invention to practice.  The Board criticized PST for not showing “sufficiently specific … facts and dates” of Dr. Nezhat’s diligence during specific portions of the diligence period and ultimately concluded that PST failed to demonstrate Dr. Nezhat’s “continuous exercise of reasonable diligence for the entire critical period.”  Slip Op. at 6.

Continue Reading Federal Circuit Corrects the Board’s “Too Exacting” Diligence Standard

723px-US-CourtOfAppeals-FederalCircuit-Seal_svgEarlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101.  Both patents—the ’050 and the ’610—are directed to filtering email or file content.  (IV does not challenge the invalidation of a third patent, which was directed to receiving, screening, and distributing email.)  The petition echoes concerns raised by clients, courts, and the patent bar about the growing uncertainty about what is—and what is not—patent eligible, especially in the area of software patents.  Identifying two emerging fault lines in the court’s evolving section 101 jurisprudence, IV urges the full court to bring much needed doctrinal clarity and methodological consistency to the patent eligibility analysis. Continue Reading Intellectual Ventures Petitions Federal Circuit for Full Court Review

An important question for any plaintiff alleging trade secret misappropriation is: “How much detail should I provide about the stolen trade secrets in the complaint?” Answering this question often requires the balancing of two important considerations. On the one hand, plaintiffs alleging trade secret theft are rightly cautious about detailing proprietary company information in a public complaint, especially given that public disclosure of a trade secret may cause the information to lose its protected trade secret status. On the other hand, plaintiffs must put a sufficient amount of detail into the complaint to state a claim and survive a motion to dismiss. This is a very important yet often difficult balance to strike. The U.S. District Court for the Northern District of Illinois in Mission Measurement Corp. v. Blackbaud, Inc., Case No. 16 C 6003, U.S. Dist. LEXIS 148607 (N.D. Ill. Oct. 27, 2016) recently addressed how much detail to include about a misappropriated trade secret in a complaint under the Defend Trade Secrets Act (DTSA). The court found that only a general description of trade secret information was required to survive a motion to dismiss.

Continue Reading District Court Finds General Description of Trade Secret Sufficient to Satisfy Pleading Standard under Defend Trade Secrets Act

Trade secret theft is a growing threat to American businesses. One obstacle to addressing misappropriation through a lawsuit can be a lack of direct evidence of theft. For example, if an employee leaves his company to work for a competitor and, some months later, the competitor comes out with a product similar to that of the original employer with features previously unique to the original product, it might be inferred that the employee improperly took trade secret information to the competition. A decision in the U.S. International Trade Commission (ITC) this past summer suggests that these facts, without more compelling evidence, may be insufficient to support a finding of trade secret misappropriation. The decision is an important reminder to all trade secret owners to develop a comprehensive trade secret management plan that tracks a company’s trade secrets and who has access to them so that theft can be documented and used in judicial actions, if necessary.

In August 2015, the ITC instituted an investigation based on allegations by Jawbone that Fitbit misappropriated 154 Jawbone trade secrets through the recruitment of a former Jawbone employee. The trade secrets at issue generally relate to the manufacturing and testing of Jawbone wrist worn activity monitors that track a user’s activity and the number of calories the user has expended.

Continue Reading Jawbone Fails to Prove Trade Secret Misappropriation by Fitbit at the ITC

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same portions to hold the claims unpatentable.

In re NuVasive (Appeal Nos. 2015-1672, -1673) involved the appeal of two separate inter partes review (“IPR”) proceedings initiated by Medtronic against U.S. Patent No. 8,187,334 directed to spinal implants.  Both petitions relied on the Michelson reference for teaching a single implant whose length is both greater than 40 mm and at least 2.5 times its width as recited in the ‘334 patent claims.  The petitions differed however in that one specifically discussed Michelson Figure 18 and the other did not.  Not until its reply in the latter IPR did Medtronic point to Figure 18 and argue that it disclosed the dimensional limitations.  Over NuVasive’s objection at the oral hearing and request to move to strike or file a sur-reply, the Board found that all challenged claims but one were obvious based, in large part, on Figure 18 of Michelson disclosing an implant with a length greater than 40 mm and at least 2.5 times its width.  Slip. Op at 6-7.

Continue Reading Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures

Business_FeedbackThe United States Patent and Trademark Office (“USPTO”) introduced the Ombudsman Program on April 6, 2010 with the ostensible goal of advancing patent applications that have stalled during the examination process.  Since its inaugural year, which saw a mere 268 inquiries, the Ombudsman Program has experienced a surge in popularity, fielding 2,692 inquiries in the first half of 2016 alone.  These numbers reflect the Ombudsman Program’s attractiveness as a free resource for applicants who are at an impasse with an examiner.

Continue Reading An Ombudsman in Shining Armor: Spotlight on the USPTO Patents Ombudsman Program

Bruno Mars RecordOne living member and the estates of the 1980s funk group, Collage, have filed suit against musicians Mark Ronson and Bruno Mars claiming the duo copied the bass line, guitar riff, and various other elements of Collage’s 1980s work “Young Girls.”  This lawsuit comes on the heels of last year’s controversial verdict out of the Central District of California where a jury found that Pharrell Williams and Robin Thicke’s “Blurred Lines” copied key elements from Marvin Gaye’s “Got to Give It Up.”

See Mintz Levin’s Trademark & Copyright Matters blog for our full write-up on the “Uptown Funk” case and how the “Blurred Line” decision may impact it.