January 2014

Federal Circuit Holds Medical Diagnostic Method Not Patent-Eligible

Patent claims directed to “guiding the selection of a treatment regimen for a patient with a known disease or medical condition” were held not patent-eligible under 35 U.S.C. § 101 by a unanimous Federal Circuit panel.  SmartGene, Inc. v. Advanced Biological Laboratories, S.A., No. 2013-1186 (Jan. 24, 2014). All claims of U.S. Patent Nos. 6,081,786 and 6,188,988 were held invalid.  Claim 1 of the ’786 patent was representative: 1. A method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition, said method comprising: (a) providing patient information to a computing device comprising: a first knowledge base comprising a plurality of different therapeutic treatment regimens for said disease or medical condition; a second knowledge base comprising a plurality of expert rules for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition; a third knowledge base comprising advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens; and (b) generating in said computing device a ranked listing of available therapeutic treatment regimens for said patient; and (c) generating in said computing device advisory information for one or more therapeutic treatment… Read More »Federal Circuit Holds Medical Diagnostic Method Not Patent-Eligible

Does a “Covered Business Method” Patent Review Warrant a Stay of Litigation?

A court in the Eastern District of Texas has declined to stay litigation where the United States Patent and Trademark Office is conducting a “Covered Business Method” review of the patent-in-suit under Section 18 of the America Invents Act.  VirtualAgility, Inc. v. Salesforce.com, Inc., Civil Action No. 2:13-cv-00011-JRG (E.D. Texas Jan. 9, 2014). The court succinctly summarized the procedural history prior to the defendants’ motion to stay: VirtualAgility filed  suit on January 4, 2013 against Salesforce and the other Defendants for allegedly infringing U.S. Patent No. 8,095,413 (the “‘413 Patent”). On May 24, 2013, Salesforce filed a petition for Covered Business Method (“CBM”) review of the ‘413 Patent under the AIA. On May 29, 2013, all Defendants jointly filed the instant motion seeking a stay of proceedings pending the PTO’s final resolution of the CBM review. On November 19, 2013, the Patent Trial and Appeal Board (“PTAB”) granted Defendants’ petition and instituted a CBM review of all claims of the ‘413 Patent. In determining whether to grant a stay, the court considered the four factors laid out in the statute as follows, first noting that Congress did not include an automatic stay provision in the CBM transitional program. The first… Read More »Does a “Covered Business Method” Patent Review Warrant a Stay of Litigation?

When Is a Document Publicly Available (and Therefore Prior Art)?

A document can qualify as “prior art” under 35 U.S.C. § 102 even when the document is what one might charitably describe as barely publicly available, and even when the document is incomplete. In re Enhanced Security Research LLC, No. 2013-1114 (Fed. Cir. Jan 13, 2014).  In this case, a divided Federal Circuit panel upheld an obviousness determination by the Patent Trial and Appeal Board (PTAB) that the combination of an incomplete product manual and a published academic article rendered a claimed invention obvious in the context of an ex parte re-examination proceeding.  The majority, in an opinion authored by Judge Dyk, found that the product manual was sufficient even if incomplete, and qualified as “publicly available” based on a declaration stating that a purchaser of a software product could have requested the manual.  Judge O’Malley dissented. The claims of United States Patent No. 6,119,236, as amended during re-examination, were directed to “a computer security device and method for preventing unauthorized individuals from gaining access to a local computer network.”  A manual for a software product called NetStalker disclosed all claim elements except “the automatic assignment of different weights to different types of attempted security breaches.”  The PTAB and the… Read More »When Is a Document Publicly Available (and Therefore Prior Art)?

When are Hardware AND Software Required to Infringe Patent Claims?

A district court properly construed patent claims as requiring both hardware and software, and properly granted summary judgment of non-infringement where the defendants’ products used  potentially infringing hardware, but did not license or use software that would have been necessary to complete the infringement.  Nazomi Communications, Inc. v. Nokia Corp., No. 2013-1165 (Fed. Cir. Jan. 10, 2014). Claims of U.S. Patent Nos. 7,080,362 and 7,225,436 were directed to apparatuses including “a hardware-based [Java Virtual Machine] capable of processing stack-based instructions, that also retains the ability to run legacy (i.e., register-based) applications without utilizing the JVM.”  The accused devices contained the “Jazelle” hardware capable of providing this functionality, but only with the “Jazelle Technology Enabling Kit,” i.e., software, that was neither included in the accused devices nor licensed by the defendants. The district court “construed the asserted claims to require a hardware and software combination capable of processing both register-based and stack-based instructions.”  Because the JTEK software was required in addition to the Jazelle processors for the Jazelle processors to process stack-based instructions, and the accused devices “do not include the necessary JTEK software, the district court found that the accused devices do not infringe.” The Federal Circuit, in a majority… Read More »When are Hardware AND Software Required to Infringe Patent Claims?