I was on vacation last week doing some scuba diving in the Caribbean. But, I took some time off to try and better understand the phenomenon of “submarine patents.” This little mini-submersible takes people down to a depth of 1,000 feet.
Submarine Patents
April 12th, 2014Oral argument in Alice v. CLS Bank
April 12th, 2014The Supreme Court heard oral argument in the case of Alice v. CLS Bank on March 31st.
You can download/listen to the entire oral argument here: [Listen].
The transcript of the oral argument is available here: [Transcript].
The briefs are available here: [Briefs].
You can listen to the various portions of the oral argument here:
- ORAL ARGUMENT OF CARTER G. PHILLIPS, ESQ. on behalf of the Petitioners: [Listen]
- ORAL ARGUMENT OF MARK A. PERRY, ESQ. on behalf of the Respondents: [Listen]
- ORAL ARGUMENT OF DONALD B. VERRILLI, JR., ESQ. on behalf of the United States, as amicus curiae, supporting Respondents: [Listen]
- REBUTTAL ARGUMENT OF CARTER G. PHILLIPS, ESQ. on behalf of the Petitioners: [Listen].
For reference, one of the claims at issue is claim 26 from US Patent 7,725,375:
26. A data processing system to enable the exchange of an obligation between parties, the system comprising:
a communications controller,
a first party device, coupled to said communications controller,
a data storage unit having stored therein
(a) information about a first account for a first party, independent from a second account maintained by a first exchange institution, and
(b) information about a third account for a second party, independent from a fourth account maintained by a second exchange institution; and
a computer, coupled to said data storage unit and said communications controller, that is configured to
(a) receive a transaction from said first party device via said communications controller;
(b) electronically adjust said first account and said third account in order to effect an exchange obligation arising from said transaction between said first party and said second party after ensuring that said first party and/or said second party have adequate value in said first account and/or said third account, respectively; and
(c) generate an instruction to said first exchange institution and/or said second exchange institution to adjust said second account and/or said fourth account in accordance with the adjustment of said first account and/or said third account, wherein said instruction being an irrevocable, time invariant obligation placed on said first exchange institution and/or said second exchange institution.
Briefing Continues in Limelight v. Akamai
March 31st, 2014The briefing continues in the Supreme Court case of Limelight v. Akamai with respect to the issue of divided infringement. Akamai filed its brief last week. The ABA site has all the briefs, including amicus briefs.
Limelight’s opening brief is available [here].
Akamai’s brief is available [here].
Limelight’s reply brief is due in a few weeks.
Should you be able to tax an abstract idea?
March 30th, 2014I have been trying to think about how the definition ultimately given to an “abstract idea” might affect other areas of the law. For example, if software is deemed an abstract idea, it seems inevitable that someone will argue that you shouldn’t be able to tax software as an abstract idea. Similarly, if software is deemed an abstract idea, it seems inevitable that someone will argue that “market power” under the antitrust laws can’t exist in something that is abstract. Moreover, if software is deemed an abstract idea, it seems likely that someone will argue that the UCC does not apply to transactions of something that is abstract.
I kind of like the taxability issue as a tool for assessing patent eligibility. Namely, if you can tax the full extent of the goods or services embodied in a patent claim, then it should not be deemed abstract.
“Gramm v. Deere” for the 21st Century
March 25th, 2014In case there was any doubt that history repeats itself, a new case was filed last week captioned Gramm v. Deere and Co. Alright, not quite Graham v. John Deere and Co.; but, close enough.
The case illustrates that in 21st century patent litigation even patents on farm machinery recite controllers and sensors. They probably even rely on . . . software . . . oh, the horror!
Oral Argument of the Week: Compression Technology Solutions v. EMC
March 22nd, 2014The oral argument of the week is from COMPRESSION TECHNOLOGY SOLUTIONS, LLC v. EMC CORPORATION, No. 2013-1513 (Fed. Cir. Mar. 10, 2014). The case was argued on March 4, 2014 and resulted in a Rule 36 affirmance. The oral argument addresses patent eligibility issues under 35 U.S.C. §101.
With Alice v. CLS to be decided by the Supreme Court in a mere 3.5 months, it is interesting that the panel decided this case so promptly.
You can listen to the oral argument here: [Listen].
You can review the Rule 36 opinion here: [Link].
Reply Brief in Alice v. CLS Bank
March 20th, 2014The Reply Brief in Alice v. CLS Bank is now available. You can download it [here].
Overview of Alice v. CLS
March 20th, 2014Professor Mann of the SCOTUSblog has a nice evenhanded overview of the Alice v. CLS case: [Link].
I believe Alice’s reply brief is due today or tomorrow. I’ll post it when it becomes available.
Follow the Aro
March 10th, 2014
In the briefing of Alice v. CLS, the two sides have noted that consideration must be given to all elements of a claim. Alice notes this in its brief on pages 29-35. CLS acknowledges this principle in its brief in footnote 6.
This general rule applies to many areas of patent law:
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Repair/ Reconstruction |
Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961). |
For if anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U. S., at 667; 320 U. S., at 684.[10] The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said: “That result may not be obviated in the present case by calling the combustion stoker switch the `heart of the invention’ or the `advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them when dealt with separately is protected by the patent monopoly.” 320 U. S., at 667. And in Mercoid Corp. v. Minneapolis-Honeywell Co., supra, the Court said: “The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.” 320 U. S., at 684. No element, not itself separately patented, that constitutes one of the elements of a combination patent is entitled to patent monopoly, however essential it may be to the patented combination and no matter how costly or difficult replacement may be. |
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§101 |
Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). |
In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. |
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§101 |
Bilski v. Kappos, 130 S. Ct. 3218, 3230 (2010). |
Diehr emphasized the need to consider the invention as a whole, rather than “dissect[ing] the claims into old and new elements and then . . . ignor[ing] the presence of the old elements in the analysis.” |
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§102 |
Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1101 (Fed. Cir. 1985). |
“Concepts” do not anticipate. The law looks to the particular inquiries set forth in 35 U.S.C. § 102(a)-(g), which focus on knowledge, use, sale, disclosure, etc., of the invention. Notions of “concept”, “essence”, “key”, “gist”, etc., are no more useful in the context of § 102 than elsewhere, because they divert the fact-finder’s attention from the subject matter of the invention as a whole. “Anticipation” for the purposes of § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in that claim”. Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed.Cir.1983). |
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§103 |
WL Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983). |
Each claimed invention must be considered as a whole. 35 U.S.C. § 103; Schenck, A.G. v. Nortron Corp., 713 F.2d 782, 218 USPQ 698, 700 (Fed.Cir.1983). In determining obviousness, there is “no legally recognizable or protected `essential’, `gist’, or `heart’ of the invention”. Aro, 365 U.S. at 345, 81 S.Ct. at 604. A court’s restriction of a claimed multi-step process to one step constitutes error, whether done at the behest of a patentee relying on that restriction to establish infringement by one who employs only that one step in a process otherwise distinct, or at the behest of an accused infringer relying on that restriction to establish invalidity by showing that one step in a prior art process otherwise distinct. |
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§112 |
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). |
There is “no legally recognizable or protected `essential’ element, `gist’ or `heart’ of the invention in a combination patent.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 604, 5 L.Ed.2d 592 (1961). “The invention” is defined by the claims on appeal. The instant claims do not recite only a pair of semi-circular lumens, or a conical tip, or a ratio at which the tip tapers, or the shape, size, and placement of the inlets and outlets; they claim a double lumen catheter having a combination of those features. |
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§271 |
Allen Engineering Corp. v. Bartell Industries, 299 F.3d 1336 (Fed. Cir. 2002). |
The district court’s opinion gives little consideration to the claim limitations of the asserted ‘220 patent. The court identifies the alleged “enhanced steering characteristics” of the ‘220 patent, which it implies are attributable to the “offset torque rod means,” as the “heart” of the invention. Allen Engineering, slip op. at 9. This is erroneous. It is well settled that “there is no legally recognizable or protected `essential’ element, gist or `heart’ of the invention in a combination patent.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592, 128 USPQ 354, 359 (1961). Rather, “`[t]he invention’ is defined by the claims.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d 1111, 1118 (Fed.Cir.1991). |
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Doctrine of Equivalents |
Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 29 (1997). |
Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety. |
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Doctrine of Equivalents |
Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 40 (1997). |
In our view, the particular linguistic framework used is less important than whether the test is probative of the essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention? |
Additional Amicus Briefs in Alice v. CLS
March 5th, 2014Additional amicus briefs have been filed in Alice v. CLS. You can access the briefs from Alice’s website: [Link].
I was trying to see if any of the briefs in support of CLS cite to the Aro I or Mercoid cases from the Supreme Court — so far, I have not found any that do so . . . .