the federal year: our changing practice patent quality cas… · enfish, llc v. microsoft corp....

THE FEDERAL YEAR: OUR CHANGING

PRACTICE

Priya Sinha CloutierCloutier Global@[email protected]

©2016 Cloutier Global

Cloutier Global is a full service technology

law firm located in the heart of Seattle.


law firm focusing located in the heart of

Seattle.

• Start-ups


law firm focusing on start-up and emerging

companies located in the heart of the new

Silicon Valley.

• Start-ups

• Emerging Companies


law firm in the heart of Seattle.

• Start-ups

• Emerging Companies

• Companies having revenues less

than $50M.

Living Next Door to Alice: Patentable Subject

Matter

(https://youtu.be/gudDmgr1H3o)

Enfish, LLC v. Microsoft Corp.

(Fed. Cir., May 12, 2016)


2016 WL 2756266 (Fed. Cir. May 12, 2016)


2016 WL 2756266 (Fed. Cir. May 12, 2016)

United States District Court for the Central District of California


2016 WL 2756266 (Fed. Cir. May 12, 2016)

• United States District Court for the Central District of California

• Court finds “the concept of organizing information using tabular

formats” is abstract. More broadly, Court finds claims are directed to

“storing, organizing, and retrieving memory in a logical table”.


2016 WL 2756266 (Fed. Cir. May 12, 2016)

• United States District Court for the Central District of California

• Court finds “the concept of organizing information using tabular

formats” is abstract.

• Federal Circuit reverses using two-step analysis of Alice but never

reaches the second step.


2016 WL 2756266 (Fed. Cir. May 12, 2016)

Federal Circuit criticizes District Court.


2016 WL 2756266 (Fed. Cir. May 12, 2016)

• Federal Circuit criticizes District Court.

• “…describing the claims at such a high level of abstraction and

untethered from the language of the claims all but ensures that the

exceptions to §101 swallow the rule.”


2016 WL 2756266 (Fed. Cir. May 12, 2016)

• Federal Circuit criticizes District Court.

• “…describing the claims at such a high level of abstraction and

untethered from the language of the claims all but ensures that the

exceptions to §101 swallow the rule.”

• “…claims are not directed to any form of storing tabular data, but

instead are specifically directed to a self-referential table for a

computer database.”


2016 WL 2756266 (Fed. Cir. May 12, 2016)

Genetic Technologies Limited v. Merial L.L.C, Bristol-Myers Squibb Company

(Fed. Cir. , April 18, 2016)

United States District Court for the District of Delaware


(Fed. Cir. , April 18, 2016)

• United States District Court for the District of Delaware.

• District Court found unpatentable under 35 USC §101.


(Fed. Cir. , April 18, 2016)

• United States District Court for the District of Delaware.

• District Court found unpatentable under 35 USC §101.

• Federal Circuit Agrees.


(Fed. Cir. , April 18, 2016)

• Claims directed to methods of analyzing sequences of genomic

deoxyribonucleic acid (DNA)


(Fed. Cir. , April 18, 2016)



• Coding and non-coding regions in genes are inherited together and

linked together more than probability would dictate.


(Fed. Cir. , April 18, 2016)



• Coding and non-coding regions in genes are inherited together and

linked together more than probability would dictate.

• Inventor used well-established lab methods to amplify and analyze

non-coding regions known to be linked to coding regions.


(Fed. Cir. , April 18, 2016)

“Patent claims focus on a newly discovered fact about human biology

(the linkage of coding and non-coding regions of DNA), involves no

creation or alteration of DNA sequences, and does not purport to

identify a novel detection technique.”


(Fed. Cir. , April 18, 2016)

• “Patent claims focus on a newly discovered fact about human

biology (the linkage of coding and non-coding regions of DNA),

involves no creation or alteration of DNA sequences, and does not

purport to identify a novel detection technique.”

• LAW OF NATURE

In Re Smith

(Fed. Cir., March 2016)

In Re Smith


Appeal from a decision by the PTAB.

In Re Smith


• Appeal from a decision by the PTAB.

• Examiner rejected claims as being patent ineligible under §101

arguing that the claims represented “an attempt to claim a new set of

rules for playing a card game [which] qualifies as an abstract idea.”

In Re Smith






• PTAB reasoned that a “wagering game is, effectively, a method of

exchanging and resolving financial obligations based on probabilities

created during the distribution of cards.”

In Re Smith






• PTAB reasoned that a “wagering game is, effectively, a method of

exchanging and resolving financial obligations based on probabilities

created during the distribution of cards.”

• Fed Cir also finds ineligible subject matter applying the Alice/Mayo

Test reasoning that the claims “require shuffling and dealing physical

playing cards.”

In Re Smith


“That is not to say that all inventions in the gaming arts would be

foreclosed from patent protection under § 101. We could envisage, for

example, claims directed to conducting a game using new or original

deck of cards potentially surviving step two of Alice. The Government

acknowledged as much during oral argument.”

UltimatePointer, L.L.C v. Nintendo Co. Ltd




Appeal from the Western District of Washington

Fed. Crt. Affirms



Two types of pointing devices: direct pointing and indirect pointing



• Two types of pointing devices: direct pointing and indirect pointing;

• Indirect pointing devices are, for example computer mice, “where the

object of the pointing (e.g. cursor) bears an indirect relationship to

the physical point-of-aim of the pointing device.”



• Two types of pointing devices: direct pointing and indirect pointing;

• Indirect pointing devices are, for example computer mice, “where the

object of the pointing (e.g. cursor) bears an indirect relationship to

the physical point-of-aim of the pointing device.”

• Direct pointing devices are devices “for which the physical point of

aim coincides with the item being pointed at.”



• UltimatePointer argues that ordinary meaning of “handheld device”

• Nintendo argues “handheld direct pointing device”



Words in a claim “are generally given their ordinary and customary meaning”



• Words in a claim “are generally given their ordinary and customary meaning”.

• “[T]he specification is always highly relevant to the claim construction analysis.

Usually it is dispositive; it is the single best guide to the meaning of a disputed

term.






term.

• Caution against importing limitations from the specifications into claims.






term.

• Caution against importing limitations from the specifications into claims.

• “[W]e have also recognized that repeated derogatory statements can indicate that

the criticized technologies were not intended to be within the scope of the claims.



• The repeated description of the invention as a direct pointing system, the repeated

extolling of the virtues of direct pointing, and the repeated criticism of indirect

pointing clearly point to the conclusion that the “handheld device” in the claims is

limited to a “direct pointing device”.



• The repeated description of the invention as a direct pointing system, the repeated

extolling of the virtues of direct pointing, and the repeated criticism of indirect

pointing clearly point to the conclusion that the “handheld device” in the claims is

limited to a “direct pointing device”.

• Adopting the “ordinary meaning, however, would incorrectly divorce the claim

language from…the specifications.”

Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc.

(Fed. Cir., Feb. 2016)

Appeal from District Court for the District of Texas.



• Appeal from District Court for the District of Texas.

• Fed. Cir. reverses finding that “no reasonable jury could have found “

infringement.



• Three patents at issue.




• Each patent relates to the two-way interactive communications between

local subscribers and a base station.




• Each patent relates to the two-way interactive communications between

local subscribers and a base station.

• Experts dispute meaning of “portable” and “mobile”.



Easily moved from one location to another

vs.

Capable of being easily moved…but not that it actually has to move

Nuance Communications, Inc. v. ABBY USA Software House, Inc. (Fed. Cir. 2016)

Nuance Communications, Inc. v. ABBY USA Software House, Inc. (Fed. Cir. 2016)

Trustees of Columbia University v. Semantic Corp (Fed Cir. 2016)

Nuance Communications, Inc. v. ABBY USA Software House, Inc. (813 F. 3d 1368)

Trustees of Columbia University v. Semantic Corp (811 F. 3rd 1359)

Avid Tech., Inc. V. Harmonic, Inc. (812 F. 3rd 1040)

THANK YOU

[email protected]@PNWTechLawyer

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the federal year: our changing practice patent quality cas… · enfish, llc v. microsoft corp....

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