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Two years after the Central District of California invalidated two 3-D animation patents under Section 101, the Federal Circuit reversed that court’s decision, finding that the lower court oversimplified the claims of a computer-related invention.  McRO, Inc. v. Bandai Namco Games Am. Inc., Nos. 2015-1080, et al., 2016 U.S. App. LEXIS 16703 (Fed. Cir. Sep. 13, 2016) (opinion by Judge Reyna, joined by Judges Taranto and Stoll).  While this case has stimulated  discussion in the legal community, as being a ground-breaker for the patentability of software patents since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014), the Federal Circuit’s McRO decision conforms with existing principles in post-Alice Section 101 law.  While the Federal Circuit disagreed with the lower court in applying these principles to the facts of this case, the McRO  decision does not change the core principle that patent claims directed to specific improvements in computer technology are patent-eligible.

The patents at issue in McRo (U.S. Patent Nos. 6,307,576 and 6,611,278) involve 3-D computer animation.  Their specifications describe that in the relevant art, applying the appropriate data points for basic sound phonemes, e.g. ‘aah,’ ‘ee,’ or ‘oo,’ was usually done using a “keyframe” approach.  McRO, 2016 U.S. App. LEXIS 16703 at *7.  In a keyframe approach, an animator sets the morph weights at certain important times, between which a computer program “interpolates” (filling in the data points between those morph weights).  Id. at *8.  The patents state that this method requires the animator to manually set a tediously high number of keyframes, which is time consuming, and can be inaccurate. Id.

Continue Reading In McRO, Federal Circuit Provides Further Guidance on Section 101

The October 2016 issue of Financier Worldwide features our article discussing the ITC’s general exclusion order procedure and how it impacts fighting counterfeit goods.  Though the US International Trade Commission (ITC) is most often thought of in terms of high stakes patent litigation, the issuance of a general exclusion order (GEO) by the ITC has always been a powerful tool for intellectual property owners to fight counterfeits and knockoffs. Word of the benefits of obtaining a GEO seems to have spread as in recent years the numbers of these orders, and the parties seeking them, have been increasing rapidly.

Companies seeking to stop a tide of imported knockoffs often find themselves playing legal whack-a-mole – they spend a great deal of money and time filing repeated cases in the US district courts against the sellers they can identify, but after it all find that the orders they worked so hard to obtain are difficult to enforce against small overseas companies which simply cease their official operations then re-emerge having changed their names, locations or channel of importation.

To read the entire article, please click here.

On September 9, 2016, Apotex Inc. filed a petition for writ of certiorari in the U.S. Supreme Court seeking review of the Federal Circuit’s decision in Amgen Inc. v. Apotex Inc., Case No. 2016-1308.  This case involves Apotex’s proposed filgrastim product, which is a biosimilar version of Amgen’s Neulasta®. At issue is whether the 180-day “Notice of Commercial Marketing” period provided by 42 U.S.C. § 262(l)(8)(A) of the BPCIA is always mandatory, and whether the Federal Circuit’s decision improperly extended the 12-year exclusivity period for reference product sponsors from 12 to 12 ½ years by holding that a biosimilar applicant cannot give effective Notice of Commercial Marketing for its biosimilar product until after it receives FDA license approval.

As previously discussed on this blog, the Federal Circuit held in Amgen Inc. v. Apotex Inc. that even though Apotex participated in the “information exchange” (a.k.a. the “patent dance”) envisioned by § 262(l) of the BPCIA, the statute’s “requirement of 180 days’ post-licensure notice before commercial marketing … is a mandatory one enforceable by injunction.”

Continue Reading Apotex to Supreme Court: Review BPCIA 180-Day Notice Requirement

Several months ago, we were struck with the question of whether, as counsel for a patent owner at the ITC, our clients’ case would benefit from a Markman hearing.  Claim construction during an ITC investigation was routinely performed as part of the evidentiary hearing in an investigation, rather than as part of earlier Markman proceedings.  This has now changed.  Recently appointed ALJs at the ITC have been trending towards conducting Markman hearings rather than pushing claim construction to the final hearing.  This new trend has resulted in additional litigation strategy considerations at the ITC, regarding whether Markman hearings are beneficial, or detrimental, and what affect the increase in Markman hearings have on investigations.

Claim construction will occur at some point in any patent-based ITC investigation.  From a patent owner’s perspective, the question is whether having a Markman hearing at the ITC will be helpful.  A negative claim construction order, especially early in the investigation, may imperil the ability to reach the evidentiary hearing as an adverse ruling could result in summary determination.  In contrast, a favorable claim construction order could result in added pressure for settlement.

Continue Reading Markman at the ITC and Its Effect on an Investigation

On September 22, Mintz Levin will host in our Boston office “Mobile Medical Applications – Navigating Regulatory, Profitability and Patentability”, a joint Boston Patent Law Association and MassMEDIC panel discussion. The program is moderated by Lisa Adams of Mintz Levin’s IP practice, and David Lane of  DePuy Synthes Spine’s IP team. Panelists:

  • Dianne Johnson, J&J’s Sr. Director of North American Policy & Intelligence
  • Bethany Hills, member of Mintz Levin’s health practice focusing on FDA issues
  • John Anastasi, attorney at Lando & Anastasi

The panelists will analyze and discuss several case studies and address questions such as: What types of mobile medical applications are subject to FDA regulation? What business models work best? And how can you best understand patentability of these applications?

We hope you can join us in Boston on September 22 from 5:00 – 7:00pm.

Register to attend.

Think you’ve won on validity at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) and your claims are safe on appeal? “Not so fast,” says the Federal Circuit in Software Rights Archive, LLC v. Facebook Inc., Nos. 2015-1649 through 2015-1563 (Fed. Cir., Sep. 9, 2016) (nonprecedential) (per curiam).

In Software Rights, patentee Software Rights Archive appealed an Inter Partes Review (IPR) decision finding four independent claims across two patents invalid (two claims in each patent). Facebook, LinkedIn, and Twitter cross-appealed, arguing that further claims should not have been held patentable.

The Federal Circuit panel majority, performing its own analysis of the prior art, agreed with Facebook that several additional claims in the patents were anticipated and rendered obvious over the cited prior art.

Continue Reading Federal Circuit: Go whole-hog on validity below if you want to contest an independent determination of invalidity on appeal

The deadline has come and gone for the ITC and patentee Align to file petitions for certiorari seeking review by the Supreme Court of the Federal Circuit’s decision in ClearCorrect. On November 10, 2015, a panel of the Federal Circuit found that the ITC does not have jurisdiction to bar digital downloads or imports where there was no physical article to bar from importation.  After the panel decision, the ITC and the patentee Align submitted a petition for rehearing en banc, which was denied on March 31, 2016.  The deadline for further appeal was August 26 and neither the ITC nor Align filed for certiorari.

Continue Reading ITC Declines to File Petition for Certiorari – CAFC Holding that ITC Does Not Have Jurisdiction over Digital Imports Stands

On August 22, 2016, Administrative Law Judge David Shaw of the International Trade Commission (“ITC” or “Commission”) issued his final initial determination (“the ID”) in Certain Portable Electronic Devices and Components Thereof, Inv. No. 337-TA-994. The ID invalidated all of the asserted claims for lack of patentable subject matter under 35 U.S.C. § 101, and terminated the investigation.  This decision resulted from an early evidentiary hearing, conducted by order of the Commission within 100 days of its Notice of Institution under its “pilot program.”  81 Fed. Reg. 29307 (May 11, 2016).

The ID has implications related both to the implementation of the 100 day pilot program and continually developing Alice jurisprudence.  For a more in depth discussion of those issues, please see our client alert here.

Continue Reading A Novel Outcome at the International Trade Commission: Patent Claims Invalidated Under Alice in the 100-Day Pilot Program

47730524_1American corporations are facing an ever increasing threat of misappropriation of their valuable trade secrets through industrial espionage, defined as the theft of a company’s trade secrets by an actor intending to convert the trade secret to the economic benefit of a competitor. Indeed, former Attorney General Eric Holder has said that “[t]here are only two categories of companies affected by trade-secret theft: those that know they’ve been compromised and those that don’t know yet.” (See Protection of Trade Secrets: Overview of Current Law and Legislation).  With this “significant and growing threat” of industrial espionage by competitors, current and former employees, and even foreign intelligence services, American companies must be vigilant and employ all available measures to protect against misappropriation of valuable trade secrets. (See Office of the National Counterintelligence Executive, Foreign Spies Stealing U.S. Economic Secrets in Cyberspace).  In the recently enacted Defend Trade Secrets Act (“DTSA”), which creates a federal civil cause of action for trade secret misappropriation, American companies have been given a number of robust tools to prevent, or remedy ongoing misappropriation of valuable trade secrets. Continue Reading Industrial Espionage and the Defend Trade Secrets Act

A recent decision by the Federal Circuit suggests that relying on “common sense” in analyzing whether a patent is obvious in view of prior art cannot always be based on common sense alone.  In a decision providing practitioners important guidance for relying on common sense in an obviousness inquiry, the Federal Circuit on August 10, 2016 handed down its decision in Arendi S.A.R.L. v. Apple Inc., No. 2015-2073, 2016 U.S. App. LEXIS 14652 *1 (Fed. Cir. Aug. 10, 2016), vacating the PTAB’s decision below.  The petitioners had only relied on an expert declaration and testimony as support for their position before the PTAB that common sense rendered a patent obvious. Id. at *19-20.  The Federal Circuit rejected the PTAB’s holding in favor of petitioners as “conclusory and unsupported by substantial evidence[.]”  Id. at *22-23, 26-27.

The patent in this case is U.S. Patent No. 7,917,843, owned by Arendi S.A.R.L., and against which Apple, Google, and Motorola filed a petition for inter partes review (IPR).  The ’843 Patent allows a user to coordinate with two computer programs: (1) to display a document with the first computer program while (2) accessing and conducting a search using a second computer program.  Id. at *2.  The patent discloses mechanisms for analyzing the document to identify the presence of name and address information in the document (e.g., from designators such as street, city, zip code, “Mr.,” “Mrs.” etc.), to determine if it can be used in the searches as part of the second computer program.  Id. at *2-3.  The claimed invention then displays the search results to the user, who can select the additional information obtained from the search for insertion into the document.  Id. at *3.

Continue Reading Federal Circuit Emphasizes that an Obviousness Analysis Based on Common Sense Must be Supported by Substantial Evidence and Explained with Sufficient Reasoning