- Patenting Software-Related Inventions Is Getting Easier – Experts analyze Federal Circuit precedent and USPTO guidance to advance two recommendations for IP practitioners with regard to ensuring patent eligibility of inventions directed to software-related technologies.
- CAFC Reverses In-Part, Vacates In-Part PTAB Patentability Finding for Skin Cancer Detection Device – The Federal Circuit used an obviousness analysis and ruled that the PTAB erred in holding that patent claims directed at a skin cancer detection device were patentable.
- Federal Circuit Affirms District Court Decision Blocking Poultry Chiller Patent Suit Due to Equitable Intervening Rights – For the first time, the U.S. Court of Appeals for the Federal Circuit addressed the “boundaries of the phrase ‘protection of investments’ in [35 U.S.C.] § 252”, which outlines the effect of reissued patents.
Here’s the latest.
Patenting Software-Related Inventions Is Getting Easier
While the U.S. Supreme Court decision in Alice set a seemingly insurmountable bar for establishing patent eligibility of software-related inventions, recent court decisions provide hope for inventors pursuing patent protection. Kulczycka and Hickman illustrate reasons for why filings of software-related inventions have been on the rise. One case they point to is the Federal Circuit’s decision in Packet Intelligence LLC v. Netscout Systems, Inc. There, the Federal Circuit held that a patentee’s specifications solved a challenge unique to computer networks, and thus was patent-eligible. Another case highlighted is Uniloc USA, Inc. v. LG Electronics USA, in which the claims were directed to improving a communication system to increase response time between primary and secondary stations.
The Federal Circuit explained that in cases involving software innovations, patent-eligibility analysis should include determining whether a claim’s focus is “on specific asserted improvements in computer capabilities.”
According to Kulczycka and Hickman, these holdings in the above cases are consistent with the guidance published by the U.S. Patent and Trademark Office in January 2019, which gave a constructive explanation of the patent-eligibility determination process. This guidance greatly resolved ambiguity and confusion about the patent-eligibility determination process within the legal community.
The guidance provides a multitude of examples of the integrations to practical applications, including not only improvements to the functioning of a computer, but also applying or using the alleged abstract idea in a meaningful way to a particular technological environment. This clarification is significant because it opens the door to the possibilities for justifying patent eligibility of the claims even if the claims are preliminarily classified as directed to an abstract idea.
CAFC Reverses In-Part, Vacates In-Part PTAB Patentability Finding for Skin Cancer Detection Device
The Federal Circuit held that the U.S. Patent Trial and Appeal Board erred in ruling that all the claims on a skin cancer detection device were patentable. The patent at issue involves skin cancer detection, diagnosis, and treatment mechanisms. As Conley explains, the device contains cameras and lights arranged in a manner to allow for the imaging of body surfaces to detect health and cosmetic conditions. Canfield Scientific Inc. petitioned the Board for inter partes review of multiple claims arguing that they were unpatentable on the ground of obviousness. After conducting a prior art analysis, the Federal Circuit found that the subject matter was obvious and therefore unpatentable. Conley further details the court’s reasoning.
As such, the court concluded that the subject matter described in claims 1 and 51 would have been obvious to a person of ordinary skill in the field of the invention. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” said the court, citing KSR v. Teleflex. The Board’s ruling of patentability as to these claims was thus reversed.
Although Canfield’s petition argued each of the challenged claims, the Board did not separately analyze the dependent claims, upon holding the independent claims to be patentable. Therefore, the court vacated the Board’s decision as to the dependent claims and remanded for determination of patentability of these claims.
Federal Circuit Affirms District Court Decision Blocking Poultry Chiller Patent Suit Due to Equitable Intervening Rights
Basing its opinion on the doctrine of equitable intervening rights, the U.S. Court of Appeals for the Federal Circuit upheld a district court’s decision to grant Morris & Associate Inc.’s motion for summary judgment against John Bean Technologies Corporation’s infringement claims. John Bean is the owner of the patent, which involves an invention to help process poultry for human consumption. Morris reached out to John Bean to express its belief that John Bean’s patent was invalid. After receiving no response, Morris proceeded to make and use products that infringed on the patent. Years later, John Bean filed a complaint against Morris for patent infringement. While the district court initially granted Morris’s motion for summary judgment, on remand from the Federal Circuit, Morris argued that the infringement claims were barred by equitable intervening rights. The district court agreed and the Federal Circuit affirmed.
The Federal Circuit stated that the granting of equitable intervening rights is a matter of judicial discretion. Furthermore, equitable intervening rights allows the alleged infringer to continue to manufacture, sell, or use the accused product after a reissue or reexamination. John Bean relied on a Tenth Circuit decision to support its argument that the court “should deem monetary recoupment of investments made prior to the grant of reissue as sufficient to protect investments and defeat the grant of the equitable remedy.” However, the CAFC responded that the plaintiff in the Tenth Circuit case did not delay legal proceedings unlike John Bean, who waited over a decade to bring a complaint.
The CAFC further explained that, in examining the boundaries of the phrase “protection of investments” in § 252, “[w]e see no indication in the statute that monetary investments made and recouped before reissue are the only investments that a court may deem sufficient to protect as an equitable remedy.” While recoupment is a factor to consider, it is not the sole factor a district court must consider, nor should it be weighed more heavily than other factors. “Determining entitlement to equitable intervening rights is an analysis broader than simply determining whether a party claiming intervening rights has fully recouped its monetary investment,” said the court.