IT HAS been pretty pleasing to see what happened to the Court of Appeals for the Federal Circuit (CAFC) after Paul Redmond Michel and Mr. "Death Squads" Rader left it. No longer a patent extremists' court or a patent trolls' ally, CAFC nowadays instructs the USPTO regarding examination guidelines (which its rulings inspire).
On Thursday, April 20th, the Court of Appeals for the Federal Circuit issued a decision in Medinol Ltd. v. Cordis Corporation et. al. which vacated and remanded a lower court’s ruling that claims of patent infringement alleged by Israeli pharmaceutical firm Medinol were barred by the equitable defense of laches. The Federal Circuit’s decision comes after the U.S. Supreme Court overturned the Federal Circuit’s previous precedence on laches as an equitable defense in SCA Hygiene Products v. First Quality Baby Products, decided last year. The case was decided by a panel consisting of Circuit Judges Timothy Dyk, Jimmie Reyna and Kara Stoll.
Inequitable Conduct: In the failure-to-disclose context inequitable conduct requires clear and convincing evidence that “the applicant knew of … the prior commercial sale, knew that it was material, and made a deliberate decision to withhold it.” See Therasense. These issues are determined by the district court judge and given deference on appeal. Thus, an inequitable conduct finding should only be overturned when based upon a misapplication of law or based upon a clearly erroneous finding of fact.
Here, the patentee argued that the prior uses were “experimental” or at least he thought that they were. That argument was rejected since the prior uses included all elements of claim 1; that there were no notebooks or other experiment-like-paraphernalia; and that the uses were done openly without any attempt to hide the system or require confidentiality. (Linking these factors to Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336 (Fed. Cir. 2002)). Those elements were more than enough to overcome the experimental-use-defense.
As many patent attorneys and agents know, the landscape of business methods and software patent eligibility has changed since the 2014 ruling of Alice v. CLS Bank. Alice has made it significantly more difficult to patent software and business methods, but now the Federal Circuit made a ruling that will slow down the process of invalidating patents under Section 101.
The Federal Circuit found that a finding of patent eligibility under Section 101 and the Alice ruling involve "factual issues." This means that lower district courts will have a more difficult time resolving Section 101 cases at the summary judgment stage because these factual issues are something that require a jury to decide.
In an appeal from a rejection in initial examination of appellant Mark Eberra's patent application, the Federal Circuit affirmed the Patent Trial and Appeal Board's ("Board") determination that the claims are patent-ineligible under ۤ 101.
The patent application is entitled "Business Method for Opening and Operating a National Television Network" with serial number 12/230,058 ("the '058 application"). The Examiner rejected all claims of the '058 application as patent-ineligible under 35 U.S.C. ۤ 101 and as anticipated under 35 U.S.C. ۤ 102.
The Board initially affirmed the Examiner's anticipation rejection without reaching the ۤ 101 issue. Then, on rehearing, the Board affirmed the Examiner's rejection under both ۤ 101 and ۤ 102. Mr. Eberra appealed and represented himself pro se.
The court granted in part defendant's motion to strike portions of the report of plaintiff's technical expert for applying improper legal principles.