Intellectual Property and Tech Law Reports

Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility

Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility

The principal objective of these guidelines is to assist examiners in determining, on a case-by-case basis, whether a claimed invention falls within a judicial exception to statutory subject matter (i.e., is nothing more than an abstract idea, law of nature, or natural phenomenon), or whether it is a practical application of a judicial exception to statutory subject matter. The guidelines explain that a practical application of a 35 U.S.C. § 101 judicial exception is claimed if the claimed invention physically transforms an article or physical object to a different state or thing, or if the claimed invention otherwise produces a useful, concrete, and tangible result.

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Sicom Sys. v. Agilent Tech.

Plaintiff-Appellant Sicom Systems Ltd. (“Sicom”) appeals the dismissal of its infringement action against Agilent Technologies, Inc. (“Agilent”), Tektronix, Inc. (“Tektronix”), and LeCroy Corporation (“LeCroy”) (collectively “Appellees”) by the United States District Court for the District of Delaware. Sicom Sys. v. Agilent Techs., No. 03-1171-JJF (D. Del. Sept 30, 2004). On appeal, Sicom argues that the district court erred in concluding that Sicom did not qualify as an “effective patentee” and therefore lacked standing under the Patent Act to sue for infringement of U.S. Patent No. 5,333,147 (“the ’147 patent”) in this action. Because we hold that the assignor, “Her Majesty the Queen in Right of Canada as represented by the Minister of Defence, Canada” (“Canada”), did not convey all substantial rights in the patent to Sicom despite its conveyance to Sicom of the exclusive right to sue for commercial infringement, we affirm.

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Medimmune, Inc. v. Genentech, Inc.

MedImmune, Inc., a licensee in good standing under a patent owned by Genentech, Inc. and City of Hope (collectively "Genentech"), seeks by declaratory action to challenge the validity and enforceability of the licensed patent on various grounds flowing from the settlement of a patent interference between Genentech and Celltech R&D, Ltd. The United States District Court for the Central District of California held that because MedImmune continues to comply fully with the license terms, leaving no possibility of infringement suit or license cancellation by Genentech, there is no "case of actual controversy" as required by the Declaratory Judgment Act, 28 U.S.C. §2201. The district court also dismissed MedImmune's antitrust and unfair competition counts. We affirm the judgment.

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Andretti v. Borla

RALPH B. GUY, JR., Circuit Judge. This case involves a dispute over Mario Andretti’s right of publicity. Mario Andretti and Car Sound Exhaust System, Inc. (Car Sound) entered into a contract in which Andretti agreed to be Car Sound’s corporate spokesperson. During the contract period, defendant Borla Performance Industries, Inc. (Borla) advertised a statement Andretti had made about Borla’s product. Andretti had no prior knowledge and did not give Borla permission to use his name or quotation. Andretti and M.A. 500, Inc. (collectively, “Andretti”) sued Borla, seeking a permanent injunction and damages for violating Andretti’s right to publicity, tortiously interfering with a business relationship, violating the Michigan Consumer Protection Act, quantum meruit, violating the Lanham Act §§ 1125(a) and 1125(c), and unfair competition. The district court granted summary judgment to Borla on all the damage claims, but issued the permanent injunction against Borla sought by Andretti. The court then awarded Rule 11 sanctions against Andretti, ordered Andretti to pay the costs incurred by Borla after it made an unsuccessful Rule 68 offer of judgment, denied Borla’s other requests for costs and fees, and denied Andretti’s request for costs. We affirm the district court’s rulings on every issue.

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Invitrogen Corp. v. Biocrest Mfg.

On remand from this court, the United States District Court for the Western District of Texas, on summary judgment, determined that Biocrest Manufacturing, L.P., Stratagene Holding Corporation, and Stratagene, Inc. (collectively Stratagene) infringed Invitrogen Corporation’s (Invitrogen’s) U.S. Patent No. 4,981,797 (issued Jan. 1, 1991) (the ’797 patent), and that the ’797 patent was not invalid for indefiniteness, although it was invalid because of public use under 35 U.S.C. § 102(b). Invitrogen Corp. v. Biocrest Mfg., No. A-01-CA-167-SS (W.D. Tex. Feb. 12, 2004) (Invitrogen II). Although not specifically enumerating all of the counterclaims on which judgment was obviated due to its holding on invalidity, the trial court rendered final judgment sufficient to give this court jurisdiction under 28 U.S.C. § 1295(a)(1) (2000). See Pandrol v. Airboss, 320 F.3d 1354, 1362-63 (Fed. Cir. 2003) (“What essentially is required is some clear and unequivocal manifestation by the trial court of its belief that the decision made, so far as it is concerned, is the end of the case.”). This court affirms the trial court’s decisions on infringement and on non-invalidity due to indefiniteness. Because the district court relied on an incorrect understanding of public use, this court reverses the trial court’s judgment of invalidity on that ground and remands.

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JVW Enter. v. Interact Accessories, Inc.

CONCLUSION

The district court erred in its construction of the function of the means-plus-function limitation. Because using the correct claim construction no reasonable fact-finder could conclude that the means-plus-function limitation does not read on the V3, we reverse the judgment that the V3 does not infringe any claim of the ’754 patent. Because the district court did not clearly err in determining that the means-plus-function limitation does not read on the V4, we affirm the judgment that the V4 does not infringe any claim of the ’754 patent. We remand the case to the district court for further proceedings not inconsistent with this opinion.

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Lizardtech, Inc. v. Earth Res. Mapping, Inc.

LizardTech, Inc., appeals the final judgment of the United States District Court for the Western District of Washington in this patent case. On the motion of defendants Earth Resource Mapping, Inc., and Earth Resource Mapping Pty Ltd. (collectively “ERM”), the district court granted summary judgment, holding that ERM did not infringe U.S. Patent No. 5,710,835 (“the ’835 patent”), and that the patent was invalid. LizardTech, Inc. v. Earth Res. Mapping, Inc., No. C99-1602C (W.D. Wash. Mar. 14, 2004). We affirm.

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Union Carbide v. Shell Oil Co.

In conclusion, because substantial evidence supports the jury verdicts of infringement and no willfulness, this court affirms those verdicts. However, because the district court erred in concluding § 271(f) does not apply to process claims, this court finds it abused its discretion in excluding Shell’s exported catalysts as part of its damages calculation. The case is remanded to the district court for a new determination of damages.

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Novo Nordisk Pharm. v. Bio-Tech. Gen. Corp.

Conclusion

In sum, we affirm the district court’s holding that claim 1 of the '352 patent is invalid based on anticipation under 35 U.S.C. § 102(a), as well as its holding that the '352 patent is unenforceable due to inequitable conduct. However, we vacate the court’s ruling that claim 2 of the '352 patent is invalid based on anticipation under 35 U.S.C. § 102(a).

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SBA's Small Business FAQ Updated

Small business statistics highlighted in the 2005 Small Business FAQ
include:

*  Small businesses represent 99.7 percent of all employer firms.
*  Over the past decade, small business net job creation fluctuated between 60 and 80 percent.
*  Small businesses generate more than 50 percent of the nonfarm private gross domestic product (GDP).
*  Two-thirds of new employer establishments survive at least two years after start-up, and 44 percent survive at least four years.
*  Small businesses employ half of all private sector employees.
*  Very small firms with fewer than 20 employees spend 45 percent more per employee than the largest firms to comply with federal regulations.
*  Minorities own 4.1 million firms that generate $694.1 billion in revenues and employ 4.8 million workers.
*  Women own 6.5 million businesses that generate $950.6 billion in revenues, and employ 7.2 million workers.
*  In 2004, an estimated 580,900 employer firms opened while an estimated 576,200 closed.

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