Brian Hubbard presented on recent developments in obviousness law in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) and Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373 (Fed. Cir. 2016). As Brian explained, the Federal Circuit held in Arendi that “common sense” generally cannot be used to supply a claim limitation that is not disclosed in a reference. The Federal Circuit distinguished Perfect Web Techs. v. InfoUSA, Inc. 587 F.3d 1324 (Fed. Cir. 2009), as supplying a missing limitation where the claimed technology was “unusually simply and . . . particularly straightforward.” Brian also discussed Allied Erecting’s holding that the obviousness test does not require references to be physically combinable. As the Federal Circuit explained, references can be combinable where a skilled artisan would have been motivated to combine the art’s teachings to achieve the claimed invention, even if the overall combination of the references was allegedly inoperable.
Brian also discussed developments in continuation practice. The Federal Circuit held in Immersion Corp. v. HTC Corp., 826 F.3d 1357 (Fed. Cir. 2016) that under 35 U.S.C. § 120 a continuation patent application can claim priority to an earlier application that issues as a patent on the same day that the continuation application was filed.
Michael presented on issues regarding eligible subject matter under 35 U.S.C. § 101 and indefiniteness under 35 U.S.C. § 112, ¶6, now 35 U.S.C. 112, ¶(f). Michael explained that in Electric Power Group v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016), the Federal Circuit held that a patent claim for real-time performance monitoring of an electric power grid did not claim eligible subject matter because the claimed lacked an inventive means for achieving the result. Likewise, in Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), the Federal Circuit held that a series of patents claimed ineligible subject matter. For example, one patent claim for filtering email amounted to an abstract idea applied to a generic computer. In contrast, the Federal Circuit held in MCRO v. Bandai Namco Games, 837 F.3d 1299 (Fed. Cir. 2016), that a claim for automatically animating lip synchronization and facial expression of three-dimensional characters claimed eligible subject matter because the claim recited “specific” rules for synchronization. Likewise, in Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016), the Federal Circuit held that a claim for a “computer program” for using accounting information claimed eligible subject matter because the claimed invention provided an unconventional technical solution (e.g., enhancing data in a distributed fashion), to a technical problem, (e.g., massive record flows requiring massive databases).
With respect to indefiniteness, the Federal Circuit held in Alfred E. Mann Found. v. Cochlear Corp., 841 F.3d 1334 (Fed. Cir. 2016) that the claim limitation “means for generating data indicative of an audio signal” was indefinite because the patent specification failed to disclose an algorithm for accomplishing the claimed function. Although the patent disclosed that a logarithmic function could be used, the Federal Circuit held that this was insufficient because the logarithmic function itself was not disclosed. Similarly, in Advanced Ground Info. Sys., Inc. v. LIFE360, Inc., 830 F.3d 1341 (Fed. Cir. 2016), the Federal Circuit held that the claim term “symbol generator” was indefinite. The Federal Circuit reasoned that the term was subject to the means-plus-function provision because the term does not denote specific structure and was indefinite because the specification did not disclose an algorithm for the “symbol generator.”
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