THE (arguably) most anticipated patent decision from SCOTUS is (probably) Oil States. Just under a year ago we saw yet more favourable (to patent reform) decisions from SCOTUS. Expect more of the same later this month or next month.
Helsinn’s petition for certiorari received strong support this week from a bevy of ten briefs amici. The missing element now is a call from the Supreme Court for the views of the Solicitor General (CVSG) and a resulting brief from the U.S. Government supporting the petition.
The Patent Act bars the patenting of inventions that were “on sale” prior to to the invention’s filing date. The question on appeal here is whether the AIA limited “on sale” to only include publicly available information — or instead do secret and confidential business deals also count as invalidating prior art (if ever discovered).
On the first morning of the Supreme Court’s April session next week, the justices will return to problems of extraterritorial patent infringement, hearing argument in WesternGeco v Ion Geophysical Corp. For the third time in recent years, the court will consider Section 271 of the Patent Act. The statute was adopted in response to the court’s 1972 holding in Deepsouth Packing v Laitram Corp. that the Patent Act does not provide a remedy for overseas patent infringement. Deepsouth was an early example of a presumption against extraterritoriality, which has come to loom quite large in the Supreme Court’s recent jurisprudence. Traditionally, under that canon of construction, a statute applies only to conduct within the United States unless Congress explicitly indicates a contrary intent.
In Exergen Corporation v. Kaz USA, No. 16-2315 (March 8, 2018), the Federal Circuit, in a split non-precedential opinion, affirmed a holding that Exergen’s claims directed to methods and apparatuses for detecting core body temperature were directed to patentable subject matter under 35 U.S.C. €§ 101. The Federal Circuit’s decision, like many of its recent €§ 101 decisions, raises many interesting issues, and we briefly address two of them.
[...]
And what is the difference between a technique that is merely “known” (e.g., a technique disclosed in that German thesis) and a technique that is well-known and conventional?
In a sweeping judgment,the N.D. Ill. district court dismissed Maxon’s infringement case — finding the claims of the plaintiff’s four asserted patents to be invalid for claiming ineligible subject matter under 35 U.S.C. 101. On appeal, the Federal Circuit has affirmed.
The patents here are all part of the same family — all directed to a seeming business method of providing an “electronic means of increasing user control over subscription entertainment content.” U.S. Patent Nos. 8,989,160; 7,489,671; 7,486,649; and 7,171,194. Although the bulk of the patents were issued pre-Alice (2014), the ‘160 was issued later in 2015. During prosecution, the examiner did reject the claims originally under Section 101 — that was overcome however by amending the specification to limit “computer-readable medium” to only non-transitory storage. Of course, that strict line-drawing does not work for the flexible eligibility analysis applied in court.