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Federal Circuit Will Not Undo Intel Wins Nixing Computer Network IP

Reported by Tiffany Hu on law360.com.

Last Thursday, the Federal Circuit upheld PTAB rulings which solidified Intel’s victory in network patent case Intel Corp. v. Alacritech, Inc. The cases involved four patents, covering Alacritech technology which offloads networking tasks to a network interface card. The Federal Circuit’s decisions affirm a partial striking down of all four patents by the PTAB and ruled the PTAB’s conclusions were supported by “substantial evidence.” Hu explains:

For three of the patents, the panel rejected Alacritech’s arguments regarding the prior art that neither a U.S. patent known as Erickson nor a publication known as Tanenbaum described a network interface for dividing data in segments. The panel also was unconvinced that the PTAB had incorrectly filled in a gap in prior art to back its conclusion. . . . With regard to the fourth patent, the panel also sided with the PTAB that the disputed claims were obvious over a prior U.S. patent known as Connery, rejecting Alacritech’s contention that Connery did not disclose a certain limitation for a response when data has been sent from a network interface device to the network.

For more on this case, see our coverage.

Flash-of-Genius as Evidence of Eligibility

Reported by Dennis Crouch on patentlyo.com.

In a petition for writ of certiorari filed early this week, the petitioner, Steve Morsa, uses the Supreme Court’s “flash of genius” decision in Cuno Engineering Corp. v. Automatic Devices Corp. “in a positive light [to argue] that his own flash of creative genius is proof of eligibility.” Crouch further elaborates:

Morsa explains that the 1952 Patent Act eliminated ‘invention’ and ‘flash of genius’ as requirements of patent eligibility.  At the same time, Congress did not eliminate those elements as one basis for proving patent eligibility.

In addition to the Cuno argument, Morsa also questions whether the “Federal Circuit and Patent Office [may] ignore Patent Office proof of no undue preemption?” Crouch highlights the novelty of this question:

The preemption argument is interesting and important. The Supreme Court has noted that preemption-of-ideas is a fundamental basis for the restriction on eligibility.  At the same time, the Federal Circuit & USPTO have refused to consider any actual evidence of whether a particular claim would be preemptive.  Instead, the tribunals look to the two-step Alice/Mayo process as the proxy for determining preemption.

For more on this case, see our coverage.

Arthrex Files Certiorari Petition in Arthrex Case

Reported by Kevin E. Noonan on patentdocs.org.

Finally, the Supreme Court recently received yet another Arthrex petition challenging the controversial ruling in Arthrex, Inc. v. Smith & Nephew, Inc. Arthrex’s questions presented to the Court in the petition center around administrative patent judge’s final authority to revoke previously issued patents without any semblance of executive oversight. This recent petition marks the third petition stemming from the Federal Circuit’s recent Arthrex decision. Noonan provides a summary of Arthrex’s argument presented to the Court:

Arthrex asserts that the Federal Circuit’s decision ‘fundamentally distorted’ the IPR regime because it ‘discarded a safeguard Congress has long considered imperative for agency adjudicators’ and which is ‘indispensable to make the trial-like proceedings Congress created in the AIA actually fair.’. . . There is also a risk that courts reviewing the decisions from other agencies having ALJs appointed under the same constitutionally flawed procedure will mimic the Federal Circuit and thus put neutrality in agency adjudications at risk in 27 different agencies and 2,000 ALJs, as well as 10,000 adjudicators who are not ALJs.

For more on this case, see our coverage.