- Printed Matter Is Patentable If It’s Functional, Not Just Communicative – Bard’s suit of patent infringement by AngioDynamics may continue after the Federal Circuit reversed the lower court’s finding of non-infringement and invalidity.
- Functional claiming in the aftermath of Williamson – Analyses of means plus function limitations have shifted more than anticipated in the past few years following the Federal Circuit’s decision in Williamson v. Citrix Online LLC.
- Federal Circuit Considers CBM Review Under Thryv on Remand from SCOTUS – The Federal Circuit affirmed in SIPCO, LLC v. Emerson Electric that the decision to institute a covered business method (“CBM”) review cannot be reviewed based on Supreme Court precedent.
Here’s the latest.
Printed Matter Is Patentable If It’s Functional, Not Just Communicative
In C.R. Bard, Inc. v. AngioDynamics, Inc., the Federal Circuit held that the district court erred in awarding summary judgment to AngioDynamics. Gilbert T. Smolenski recaps the opinion where the Federal Circuit focused on the printed matter doctrine for its invalidity discussion. While the district court held that the patents were directed towards printed matter (information claimed for its communicative intent) and subsequently not patent-eligible, the Federal Circuit determined that the claims as a whole were not directed towards printed matter.
This opinion further highlights that claims including recitations going to printed matter remain patentable under § 101 if the printed matter aspect of the claim is functional and does not merely display or manipulate information.
The Federal Circuit also reversed the non-infringement finding, indicating an expert’s misunderstanding of the lower court’s construction of a claim was enough to create an issue of material fact. In addition, the Federal Circuit found sufficient evidence had been presented to reverse the district court’s finding of no willfullness.
For more information, see our coverage.
Functional claiming in the aftermath of Williamson
When the Federal Circuit changed the strong presumption against mean-plus-function claiming when “means” is not present, the Federal Circuit may not have adequately anticipated the result. Scott A. Hogan and James D. Stevens Jr. analyze the cases decided following the Federal Circuit’s decision.
In the five years following Williamson, the Federal Circuit has applied means-plus-function interpretation in eight out of 10 cases when the challenged claims did not recite the word ‘means’. Compare this to the five years leading up to Williamson, when the court applied means-plus-function interpretation to patent claims in only one out of eight such cases. Given that means-plus-function interpretations also led to invalidity in seven out of the nine cases in that 10-year period, the effect of Williamson might be considered alarming rather than subtle.
Hogan and Stevens also have suggestions in light of these cases such as using words with known structure and avoiding placeholder words. Overall, the authors recommend taking more caution and adding more certainty to the structure within the claims to account for the weaker presumption.
Federal Circuit Considers CBM Review Under Thryv on Remand from SCOTUS
The Federal Circuit issued an opinion this week after the Supreme Court vacated the Federal Circuit’s original decision and remanded the case. IP Watchdog summarizes the decision where SIPCO had requested a review by the Federal Circuit of the PTAB’s decision to (1) institute a CBM review and (2) invalidate the claims at issue for obviousness. Similar to its decision pertaining to the institution of inter partes review, the Federal Circuit noted that CBM review is subject to a “No Appeal” statutory provision.
Thus, the CAFC concluded that, according to Thryv, “§ 324(e) prohibits judicial review of SIPCO’s challenge because it is nothing more than a contention that the agency should have refused to institute CBM review.”
Regarding the challenge to the invalidity finding, the Federal Circuit indicated that the PTAB had substantial evidence to support its finding regarding the construction of certain terms. The Federal Circuit noted that the presence of the substantial evidence warranted affirming the obviousness rulings even if the Federal Circuit agreed with SIPCO’s constructions.
For more information, see our coverage.