Federal Circuit Review

• Jurisdiction: United States,Federal
• Author: Glenn E. Von Tersch
• Publication year: 2014
• Citation: Vol. 39 No. 4

Federal Circuit Review

Glenn E. Von Tersch

Principal, SVPC

This column presents material from opinions issued by the United States Court of Appeals for the Federal Circuit, it may address other Intellectual Property subject matter under Federal Circuit jurisdiction.

ALICE V. CLS BANK

One of the biggest recent cases was Alice v. CLS Bank.¹ Suffice to say that Alice affirms that the Supreme Court was serious about its approach to abstract ideas in Mayo,² but does not provide a whole lot of guidance for how the lower courts should proceed. The Court adopts a two-part test in the Alice opinion, starting with (i) determining whether the claims are directed to an abstract idea, and (ii) whether there is anything else in the claims resulting in patentable subject matter.³ The Court notes that it must not allow the abstract idea analysis to swallow up patentability, as all claims may be construed as abstract ideas.⁴ The Court does not provide an identifiable boundary on this analysis.

DIGITECH V. EFI5—APPLYING ALICE ON APPEAL

Judge Reyna, providing an early post-Alice opinion, clarifies that at least part of the Federal Circuit intends to follow Alice. Digitech holds a patent related to profiles for devices that do image capture, allowing for correction for defects in image capture based on characteristics of the device stored in the profile.⁶ Digitech, sought broad protection with claims to device profiles (a data structure claim)⁷ and a method of using the device profiles.⁸ The opinion quickly dispenses with the device profile claims as being broader than the claims of Nuitjen⁹, and thus unlikely to be anything other than unpatentable subject matter.¹⁰ Moreover, the opinion also dismisses the relatively broad method claims as untethered to a specific structure or machine, and thus failing to provide anything beyond an abstract idea.¹¹ While the claim language unquestionably represents a general description of the alleged invention, it also applies to specifically measuring calibration characteristics of a device and combining two different sets of calibration characteristics to (arguably) provide a better result. What it would take to tie the claim language to a specific device is not clear from this opinion, bringing us back to the original issues with Alice as well.

STANDING STILL REQUIRED TO CHALLENGE PATENT ACTS

Another interesting case, but not the usual infringement appeal, arises out of Madstad Engineering, INC. v. United States Patent And Trademark Office et al.,___F.3d___, (Fed. Cir. 2014) (slip op. July 1, 2014). Madstad En gineering sued to overturn the first-inventor-to-file provision of the AIA as unconstitutional.¹² However, Madstad failed to allege any plans to apply for a patent or otherwise use the U.S. patent system under the new AIA standards.¹³ Madstad did allege that it had ongoing applications with pre-AIA filing dates as evidence it would apply for another patent sooner or later. This fatal flaw in the complaint led the Federal Circuit to affirm the District Court finding of lack of standing,¹⁴ thus clarifying that this challenge will not resolve any constitutional questions about the AIA. Whether someone with standing will challenge constitutionality of first-inventor-to-file is another question.

GOLDEN BRIDGE TECHNOLOGY V. APPLE INC.15—PROSECUTION DISCLAIMER

In another curious case, Golden Bridge Technology (GBT) found itself in a position of potentially inadvertent prosecution disclaimer. GBT initially asserted a patent in the Eastern District of Texas.¹⁶ GBT provided stipulated claim construction in that litigation, and submitted this information as part of an IDS in a continuation application.¹⁷ GBT then asserted the continuation and original patents in separate litigation in Delaware.¹⁸ The...