Practical Points From The Supreme Court’s Alice Decision

John Kong | June 26, 2014

Alice Corp. v. CLS Bank Int’l

June 19, 2014

Summary: 

The Supreme Court’s Alice decision does not eliminate software patents as per se ineligible subject matter under 35 USC §101. The Court confirms the application of Mayo’s two step §101 analysis and provides some new considerations for addressing patent eligibility issues for computer-implemented inventions.  Unfortunately, the Supreme Court’s admonition that the mere addition of “conventional” computer functionality to an abstract idea does not transform the claim into patent eligible subject matter conflates the §101 analysis with patentability issues under 35 USC §§102 and 103.


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The Effect of an Expiration Date on Obviousness-Type Double Patenting

Bernadette McGann | June 25, 2014

Gilead Sciences, Inc. v. Natco Pharma Ltd. 

April 22, 2014

Panel: Rader, Prost and Chen.   Opinion by Chen. Dissent by Rader.

Summary: 

An objective of the obviousness-type double patenting doctrine is to preserve the public’s right to use not only the exact invention claimed by an inventor when his patent expires, but also obvious modifications of that invention that are not patentably distinct improvements.  Thus, a patent that issues after but expires before another patent may qualify as a double patenting reference for that other patent.


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PTAB Finally Considers “Processor” As Clearly Structure

John Kong | June 19, 2014

Ex Parte Cutlip

June 2, 2014

Panel: Lorin, Mohanty and Hoffman.

Summary:

After the debacle of three March 2013 PTAB decisions by a five judge PTAB panel relying on a strange American Heritage dictionary definition of “processor” as being software, this PTAB decision sets the record straight about a “processor” as clearly being structure.


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BEWARE OF A SURPRISE CO-OWNER OF A PATENT WHO DOES NOT WANT TO ENFORCE ITS PATENT

Sung-Hoon Kim | June 12, 2014

STC.UNM v. Intel Corp.

June 6, 2014

Panel: Rader, Dyk, and Newman. Opinion by Rader. Dissent by Newman

Summary:

The ‘998 patent was a CIP of the ‘312 patent, which was jointly owned by STC.UNM and Sandia.  Because a terminal disclaimer (which required a common ownership of both patents) was filed during prosecution of the ‘998 patent, STC.UNM and Sandia are co-owners of the ‘998 patent even if Sandia did not make any contribution to the ‘998 patent.  STC.UNM filed an infringement suit concerning the ‘998 patent against Intel, and Sandia refused to join the lawsuit.  The district court dismissed the case for a lack of standing, and the CAFC affirmed by holding that all co-owners must ordinarily consent to join as plaintiffs in an infringement suit.  Furthermore, both the district court and the CAFC refused to involuntarily join Sandia to the case as a necessary party (FRCP Rule 19).

본사건은연방지방법원뉴멕시코지원의판결에불복하여 STC/UNM이연방순회항소법원 (CAFC)에항소한사건이다.  CAFC는연방지방법원과같이‘312 특허를바탕으로일부계속출원된특허 (continuation-in-part)인‘998 특허심사도중원고STC/UNM가존속기간포기서 (terminal disclaimer)를제출함으로써특허심사거절을극복하였으므로, STC/UNM과 Sandia는‘998 특허의공동소유자(co-owners)라고판단하였다 (Sandia는‘998 특허발명에공헌을하지않았다).  또한CAFC는 Sandia의소송참여의사에상관없이 STC/UNM이인텔을상대로‘998 특허침해소송을제기한것에대해STC/UNM은원고적격(standing)이없다고판단하여소송을기각하였다.  왜냐하면특허침해소송에서는특허의모든공동소유자가원고로참여해야하지만Sandia는소송참여를하지않기로결정하였기때문이다.  마지막으로CAFC는연방지방법원과마찬가지로본사건은연방민사소송규칙 19조의involuntary joinder rule이적용되지않아Sandia를원고로강제참여시킬수없다고판단하였다.


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