1. Zero Sum Game For Beverage Companies

    Posted on 24.07.18 Shin Hee Lee, on Articles, Patent Related Court Rulings, Recent News & Articles

    On June 20, 2018, the Federal Circuit decided against the soft drink giant The Coca-Cola Company in their long-standing battle with Royal Crown Cola Company and Dr Pepper/Seven Up Inc.  These parties had opposed Coca-Cola’s registration of the “Zero” trademark, for various Coca-Cola products. See, cafc.uscourts.gov/sites/default/files/opinions-orders/16-2375.Opinion.6-20-2018.pdf

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  2. Does USPTO Memo on Patent Eligibility Bring Confusion?

    Posted on 17.07.18 David Puleo, on Patent Related Court Rulings, Patent Trends & Activity

    In April, the USPTO published a memorandum that revises procedures set forth in MPEP §2106.05. The memorandum was issued in response to the Federal Circuit’s decision in Berkheimer v. HP Inc. Now that the Federal Circuit denied the request for en banc rehearing of the decision, we thought it would be a good time to offer some thoughts on the memo.

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  3. Stone Basket Innovations v. Cook Medical LLC : When Is a Case “Exceptional” for the Purposes of §285?

    Posted on 26.06.18 Thomas Pia, on Patent Related Court Rulings, Patent Resources

    Stone Basket Innovations (SBI) sued Cook Medical LLC (Cook) for infringement of its patent, U.S. Patent No. 6,551,327 (‘327 Patent) in the U.S. District Court for the Eastern District of Texas.[1]  Subsequently, the case was transferred to the U.S. District Court for the Southern District of Indiana (Southern District).[2]  The subject patent related to stone extraction medical devices for removing stones from biological systems, and contained elements directed to a “support filament,” “a handle comprising a sheath moving element,” and a “collapsible wire basket.”[3]  At deposition, in a moment that SBI’s attorneys’ will probably dream of again and again in a kind of horrible Groundhog Day remake, when questioned about the addition of the sheath movement element during prosecution, the inventor of the ‘327 replied, “I realize there is nothing novel about it.”[4]  Yikes!  But this is exactly what happened in Stone Basket Innovations, LLC v. Cook Medical LLC, 2017-2330 (Fed. Cir. June 11, 2018).

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  4. From A[pple] to Z[eroclick]: The Federal Circuit Overrules District Court in Zeroclick, LLC v. Apple, Inc.

    Posted on 11.06.18 William Reid, on Patent Related Court Rulings, Patent Trends & Activity, Recent News & Articles

    In Zeroclick, LLC v. Apple Inc., 2017-1267 (Fed. Cir. June 1, 2018), the Federal Circuit overruled the U.S. District Court for the Northern District of California for improperly interpreting claims regarding the application of 35 U.S.C. §112, ¶ 6.  The case related to an appeal from an action where Zeroclick had sued Apple for infringement of claims 2 and 52 of U.S. Patent No. 7,818,691 (‘691 Patent) and claim 19 of U.S. Patent No. 8,549,443 (‘443 Patent).  The district court had found the claims invalid as being indefinite.[1]  The court had construed the claims as reciting means-plus-function elements but did not find correspondingly sufficient structure in the specification.[2]

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  5. Will Alice Become the New Markman?

    Posted on 10.05.18 Michael Hinrichsen, on Articles, Patent Related Court Rulings, Recent News & Articles

    Buried amidst the flurry of recent Federal Circuit subject matter eligibility decisions is a question that could significantly change how Section 101 is applied in patent litigation.  Specifically, the issue is whether performing Step 2 of the Mayo/Alice test can require a factual inquiry.  If upheld, this interpretation of Alice could make patent litigation much more complicated and expensive.  In fact, Section 101 inquiries could become convoluted mini-trials in their own right – similar to how Markman hearings are performed today.

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  6. Rising Temperatures – Federal Circuit Warming to Patent Eligibility of Medical Diagnostics

    Posted on 18.04.18 Michael Hinrichsen, on Articles, Patent Related Court Rulings, Patent Trends & Activity

    For the first time since the Mayo Supreme Court decision of 2012, the Court of Appeals for the Federal Circuit (CAFC) in Exergen vs Kaz has ruled in favor of the patent eligibility of a medical diagnostic invention.  While nonprecedential, this 2-to-1 decision is noteworthy for the guidance it provides to patent professionals seeking to protect diagnostic inventions.  Specifically, it instructs that diagnostic methods may be eligible for patent coverage so long as they use unconventional methods for detecting analytes.  Additionally, the Exergen decision offers another endorsement of the view put forth recently by the CAFC in Berkheimer v. HP and Aatrix v. Green Shades, that the inventive concept analysis that can arise in step-2 of the Mayo/Alice test is at least in part a factual question and not just a question of law.  This factual vs legal debate continues to have reverberations throughout the patent law field, affecting both the manner in which courts conduct 101 examinations as well as the conclusions they reach.

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  7. Upcoming Free Webinar: Just What is the Federal Circuit Thinking?

    Posted on 16.04.18 Thomas Pia, on Announcements, Patent Related Court Rulings, Webinar

    Dr. Anthony Sabatelli & David Puleo will be presenting a free webinar on Thursday, April 19th at 1:00 PM (ET) for Dilworth IP, entitled, “Just What is the Federal Circuit Thinking? A Path Forward Amid Subject Matter Eligibility Variability.” Tens of millions spent on product development – how do you protect your company’s technology in an environment where the Federal Circuit redefines patent eligible subject matter on nearly a weekly basis, and where the USPTO’s application of these judgments is just as inconsistent? Is subject matter eligibility no longer a question of law and is it now morphing into a question of fact?

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  8. Court Begins Year with Consistent 101 Decisions, But Then Adds Confusion

    Posted on 28.02.18 Michael Hinrichsen, on Patent Related Court Rulings, Patent Trends & Activity, Recent News & Articles

    Since the start of the year, the CAFC has handed down four cases in rapid succession relating to patent subject matter eligibility – the precedential Finjan vs Blue Coat, Core Wireless vs LG electronics, and Berkheimer vs HP Inc. decisions and the non-precedential Move Inc. vs Real Estate Alliance decision.  In each, the validity of patents relating to software inventions was challenged, in part on the grounds that the inventions covered abstract ideas (an ineligible subject matter under 35 U.S.C. § 101).  In the first three cases released (Finjan, Core Wireless, and Move Inc.), the CAFC displayed refreshing consistency in their evaluation of the ‘abstractness’ of patents, offering a glimmer of hope that the court may finally be offering a clear path forward, in particular with regards to step one of the Alice/Mayo test.  Unfortunately, that hope was dashed in Berkheimer, in which the CAFC reverted to a different procedure for evaluating the abstractness of patents.  This inconsistency in the application of the Alice/Mayo test sows confusion in the patent field, and continues to make the drafting of ‘101 – resistant’ patents more difficult.

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  9. Be Specific: Further Thoughts from Two-Way Media to Avoid a 101 Misstep

    Posted on 30.01.18 Michael Hinrichsen, on Articles, Patent Related Court Rulings, Patent Trends & Activity

    Developments on the topic of patent subject matter ineligibility continue to progress rapidly.  In this piece we revisit the Federal Circuit Court decision in Two-Way Media v. Comcast.  This case provides comments in part on the role the patent specification should play when looking for inventive concepts in the second step of the Alice/Mayo test.  Two-Way also serves as an important reminder to patent professionals to avoid conflation of the § 101 subject matter eligibility inquiry with § 102 and § 103 novelty and obviousness considerations.

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  10. Dilworth IP’s David Puleo & Dr. Anthony Sabatelli Featured in the IP Litigator

    Posted on 11.01.18 Thomas Pia, on Announcements, Patent Related Court Rulings, Recent News & Articles

    Dilworth IP’s David Puleo and Dr. Anthony Sabatelli recently had an article featured in the bi-monthly publication IP Litigator. Their article, entitled “UK Supreme Court Redefines Patent Infringement,” considers the United Kingdom Supreme Court decision in Actavis UK Limited and others v. Eli Lilly and Company, and the implications it has on defining patent infringement.

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