A Blog About Intellectual Property Litigation and the District of Delaware


CAFC
United States Court of Appeals for the Federal Circuit

Fed. Cir. Confirms That "Printed Matter" Can Render Claims Ineligible Under § 101

Andrew E. Russell, Nov. 10, 2020
§ 101 Printed Matter

Handwritten Form
Glenn Carstens-Peters, Unsplash

The "printed matter" doctrine states that elements claiming printed matter—e.g., text printed on paper or some other substrate—bear no patentable weight unless the printed matter and the substrate are functionally related. As the Federal Circuit explained today:

[P]rinted matter encompasses any information claimed for its communicative content, and the doctrine prohibits patenting such printed matter unless it is “functionally related” to its “substrate,” which encompasses the structural elements of the claimed invention.

In its decision, the Federal Circuit noted the Court has—incredibly—never addressed whether a claim directed to printed matter is ineligible under § 101:

Notably, since the Supreme Court articulated its two-step framework in Alice, this court has not directly addressed whether …
View

Fed. Cir. Improves Cost / Benefit Calculus for Defendants Joining IPRs

Andrew E. Russell, Sept. 24, 2020
Estoppel IPR

Previous equations for deciding whether to join an existing IPR
Previous equations for deciding whether to join an existing IPR Roman Mager, Unsplash

Today the Federal Circuit held that a party joining an existing IPR is not subject to estoppel on any grounds other than those that were actually raised. See the opinion below.

Before this, a plaintiff could argue that a defendant who joined an in-progress IPR was estopped on any anticipation or obviousness arguments that "reasonably could have [been] raised" in the IPR.

The Court here held, in short, that because a defendant joining an existing IPR is not allowed to add new grounds at all, it cannot be estopped except on those grounds actually raised.

It relied on the Facebook decision we talked about …

View

Judge Bryson Issues 22-Page Opinion in Two Days, Stays Case Pending Re-Exam Just 11 Weeks Before Trial

Andrew E. Russell, Sept. 18, 2020
Re-exam Stay

Judge Bryon issued an interesting stay opinion last Friday.

The plaintiff had initially asserted six patents. Of those, four were dismissed under § 101, and the claims as to one of the remaining patents were severed and stayed pending IPR.

The case was set to go to trial on the last remaining patent on November 30, just over 11 weeks from the date of the order. But, last month, the PTO granted a request for ex parte reexamination of the sole asserted claim of that patent.

Shortly after that, Judge Bryson issued his opinion granting a motion to stay pending re-exam. A couple of interesting points:

  • What a turnaround! Defendant first indicated it intended to request a stay …
View

Federal Circuit Holds That A Party Cannot Join Its Own Previous IPR Proceeding

Andrew E. Russell, Sept. 4, 2020
IPR

The Federal Circuit's decision is below.

It found that even though the defendant did not receive an identification of asserted claims from the plaintiff until after the statutory IPR deadline, and even though the patents included a total of 830 claims, the statute did not allow the defendant to file a new IPR petition and then join it to its previous IPR proceeding as a way to add claims after the statutory filing deadline.

The Court recognized that the decision would result in wasted efforts by defendants in challenging claims unnecessarily:

We . . . recognize that our analysis here may lead defendants, in some circumstances, to expend effort and expense in challenging claims that may ultimately never be asserted …
View

Federal Circuit Rejects Argument that Court, Not Jury, Must Determine Whether Patent is Standards Essential

Andrew E. Russell, Aug. 4, 2020
Standards Essential Jury

In an appeal from a Judge Battalion case in the District of Delaware, the Federal Circuit today held that—unsurprisingly—a jury may answer the fact question of whether a patent is standards essential.

It held that the argument to the contrary, that the Court must determine whether a patent is standards-essential during claim construction, was based on a misreading of precedent.

View

Federal Circuit Reissues Illumina v. Ariosa, Rephrases "Bucket"-Based § 101 Analysis

Andrew E. Russell, Aug. 3, 2020
Alice Step One Natural Phenomenon

Buckets
Carolyn V, Unsplash

The Federal Circuit today reissued its March 2020 opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc., which held a "method of preparation" claim relating to a natural phenomenon was patent eligible.

The reissue follows a petition for rehearing.

The patents involve a method for preparing a fetal DNA sample using a blood sample from a pregnant mother, by sorting the DNA fragments and removing the smaller ones using a size threshold.

The Original Bucket-Based Analysis

The Court originally described how it has consistently rejected "natural phenomenon"-related claims that fall into a "diagnostic" bucket, but has permitted method of treatment claims:

This is not a diagnostic case. And it is not a method of …
View

Three Things Docket Navigator Didn't Mention About Judge Bryson's Recent Discovery Opinion

Andrew E. Russell, July 28, 2020
Errata 30(b)(6)

This morning, Docket Navigator covered Judge Bryson's D. Del. discovery opinion that was made public this week, focusing on his denial of a motion to strike errata to a 30(b)(6) deposition transcript.

But there are (at least) three other interesting points about the errata in the opinion:

  • COVID issues make deposition errata more necessary:
Mr. Rothrock had to prepare for his deposition under difficult circumstances, including having to consult remotely with others in the company. Mr. Rothrock understandably could have made a mistake during his deposition in light of the numerous topics and challenging circumstances in which he was forced to prepare. Given those circumstances, I will not disregard Mr. Rothrock’s errata.
  • The Court noted that, as usual, …
View

One Way That § 101 Motions Will Get Easier Over Time

Andrew E. Russell, July 13, 2020
§ 101

iPod
insung yoon, Unsplash

A few weeks ago, I suggested that, despite Berkheimer, courts are still taking § 101 motions to dismiss seriously when the facts warrant it. The Federal Circuit just affirmed the grant of one such motion in Data Scape Ltd. v. W. Dig. Corp., No. 2019-2161, 2020 U.S. App. LEXIS 20630 (Fed. Cir. July 1, 2020).

Reading Data Scape, it is interesting that the Court was able to shortcut the Alice Step 1 analysis by simply citing a 2016 Federal Circuit decision holding that the exact idea at issue—"the concept of delivering user-selected media content to portable devices"—was abstract.

In my view, this is one way that, over time, § 101 motions are …

View
Newer

Archive