Monday, June 28, 2010

The U.S. Suprement Court Rules on Bilski: Business Methods May Fall Within Patentable Subject Matter

Bilski v. Kappos, No. 08-964 (S.Ct. June 28, 2010).

Justice Kennedy authored the opinion of the Court, concluding that petitioners’ claimed invention is not patent eligible. The Court held, however, that business methods could fall within patentable subject matter under Section 101.


(a) Section 101 specifies four independent categories of inventionsor discoveries that are patent eligible: “process[es],” “machin[es],”“manufactur[es],” and “composition[s] of matter.” The invention at issue is claimed to be a “process,” which §100(b) defines as a “proc-ess, art or method, and includes a new use of a known process, ma-chine, manufacture, composition of matter, or material.”

(b) The machine-or-transformation test is not the sole test for patent eligibility under §101.

(c) Section 101 similarly precludes a reading of the term “process” that would categorically exclude business methods.

(d) Even though petitioners’ application is not categorically outside of §101 under the two atextual approaches the Court rejects today,that does not mean it is a “process” under §101. Petitioners seek to patent both the concept of hedging risk and the application of that concept to energy markets. Under Benson, Flook, and Diehr, how-ever, these are not patentable processes but attempts to patent abstract ideas. Claims 1 and 4 explain the basic concept of hedging and reduce that concept to a mathematical formula. This is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook.

Sunday, June 20, 2010

35 U.S.C. § 120 Requires Each Application in a Priority Chain to Refer to the Prior Applications

Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., Nos. 2009-1544, -1545 (Fed. Cir. June 18, 2010).


35 U.S.C. § 120 requires an intermediate application in a priority chain to contain a specific reference to the earlier filed application. Slip op. at 7-8.

Relevant Facts:

The asserted patent has the priority claim as follows: “Continuation of application No. 10/103,814, filed on Mar. 25, 2002, which is a continuation of application No. 08/202,985, filed on Feb. 28, 1994, now Pat. No. 6,546,399, which is a continuation of application No. 08/113,955, filed on Aug. 31, 1993, now abandoned, which is a continuation of application No. 07/426,917, filed on Oct. 26, 1989, now Pat. No. 5,241,671.” The ’955 application did not contain a specific reference to the ’917 application. If the asserted patent is not entitled to the priority date of the ’917 application, then the ’917 application is prior art and anticipates the asserted patent. The district court held that the asserted patent is not entitled to the priority date of the ’917 application. The Federal Circuit affirmed.


The remaining question is whether the later asserted patent is entitled to any earlier priority date (e.g., Fed. 28, 1994 or Aug. 31, 1993). The district court said no, but the Federal Circuit decides to “leave [this question] for another day.” Slip op. at 13. It is likely, however, that the later asserted patent should be allowed to claim the priority date of Aug. 31, 1993, because that part of the priority chain is not defective.

Monday, June 14, 2010

False Marking: The Inference From a Knowingly False Statement IS Rebuttable With Evidence of Good Faith

Pequignot v. Solo Cup Co., No. 2009-1547 (Fed. Cir. June 10, 2010).


The combination of a false statement and knowledge that the statement was false creates a rebuttable presumption of intent to deceive the public, rather than irrebuttably proving such intent. Slip op. at 9.

An article covered by a now-expired patent is “unpatented” with the meaning of 35 U.S.C. § 292(a). Id.

Relevant Facts:

Peguignot brought a qui tam action under 35 U.S.C. § 292 against Solo for allegedly false marking its products with expired patents and the “may be covered” language. Solo claimed that it relied on counsel’s opinion in good faith for marking its products. The Federal Circuit affirmed the district court’s ruling that Solo has provided sufficient evidence that its purpose was not to deceive the public and thus is not liable for false marking.


Recently, private parties have brought a large number of false marking cases in qui tam actions. Here, the Federal Circuit recognizes that “[t]he bar for proving deceptive intent here is particularly high, given that the false marking statute is a criminal one, despite being punishable only with a civil fine.” Slip op. at 12. As a result, the outcome of this case may curb future qui tam actions under 35 U.S.C. § 292.

Wednesday, June 2, 2010

New Federal Circuit Opinions - June 2, 2010

Haemonetics, Corp. v. Baxter Healthcare Corp., No. 2009-1557 (Fed. Cir. June 2, 2010).

DTV Patent War Watch (11)

May 27, 2010: In light of the Federal Circuit decision holding that Vizio’s design around products do not infringe Funai’s patent, Vizio, Inc. v. Int'l Trade Comm'n, No. 2009-1386 (Fed. Cir. May 26, 2010), Vizio and Funai have settled all disputes between them over Funai’s DTV patents and entered cross-licenses. Click here to read the IP Law360 news article.