johnkong : CAFC Alert

The Alice in Wonderland En Banc Decision by the Federal Circuit in CLS Bank v. Alice

John Kong | May 13, 2013

CLS Bank v. Alice Corporation (en banc)

May 10, 2013

After the Federal Circuit issued its en banc decision on May 10, 2013 in CLS Bank v. Alice Corp, the patent owner Alice Corp must be feeling like Alice in Alice in Wonderland, bewildered and frightened by the fantastical situation in which they find themselves:

(1) “bewildered” because an equally divided Federal Circuit affirmed the district court’s holding that Alice’s claimed system to tangible machine components including a first party device, a data storage unit, a second party device, a computer, and a communications controller, programmed with specialized functions consistent with detailed algorithms disclosed in the patent, constitutes a patent ineligible “abstract idea;”

(2) “frightened” because, as Judge Moore puts it, “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents” (Moore Op. at 2); and

(3) “fantastical” because, as Judge Newman puts it, the en banc court was tasked to provide objective standards for 35 USC §101 patent-eligibility, but instead has “propounded at least three incompatible standards, devoid of consensus, serving to add to the unreliability and cost of the [patent] system…[such that] the only assurance is that any successful innovation is likely to be challenged in opportunistic litigation, whose result will depend on the random selection of the panel” (Newman Op. at 1-2).

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Method Claim Survives Over MPF Claim’s Demise Under Aristocrat

John Kong | November 28, 2012

ePlus, Inc. v. Lawson Software, Inc.

November 21, 2012

Dyk, Prost, O’Malley.  Opinion by Prost.


This case serves as a reminder of the importance of having different claim types.  ePlus’ jury verdict of infringement of two systems claims was vacated because the Federal Circuit found one means-plus-function element recited therein to lack the requisite corresponding structure being disclosed in the specification, thereby rendering the claims indefinite under 35 USC §112, second paragraph.  However, the infringement of a similar method claim reciting the same function as the means-plus-function element was affirmed.

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Rule 4(k)(2) Personal Jurisdiction Over a Foreign Defendant

John Kong | June 13, 2012

Merial Limited v. Cipla Limited

May 31, 2012

Panel:  Lourie, Schall, and Reyna.  Opinion by Lourie.  Dissent by Schall.


Foreign defendant Cipla chose not to respond to plaintiff Merial’s 2007 lawsuit for patent infringement because Cipla believed there was no personal jurisdiction under Georgia’s long arm statute.  The Georgia district court entered a default judgment and permanent injunction against Cipla.  During a subsequent contempt proceeding to enforce the injunction, the Georgia court found that Cipla was subject to personal jurisdiction pursuant to Federal Rule of Civil Procedure 4(k)(2) instead of the Georgia long-arm statute.  Cipla’s consent to jurisdiction in another forum (the Northern District of Illinois) during the contempt proceedings did not defeat the Georgia court’s reliance on Rule 4(k)(2) because the Federal Circuit held that Cipla failed to show that jurisdiction would have been proper in that other forum at the time of filing of the complaint in Georgia, regardless of Cipla’s later consent to jurisdiction in Illinois.  This Federal Circuit decision clarifies that a foreign defendant, to defeat personal jurisdiction under Rule 4(k)(2), must not only identify another forum where suit is possible, but also show that suit is possible in that other forum at the time the suit was filed.  A later consent to jurisdiction in another forum may not be enough to defeat personal jurisdiction under Rule 4(k)(2).

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KSR Reigned In For A Preliminary Injunction

John Kong | January 18, 2012

Celsis in Vitro, Inc. v Cellzdirect, Inc. and Invitrogen Corp.

January 9, 2012

Panel:  Rader, Gajarsa, and Prost.  Opinion by Rader; Dissent by Gajarsa.


While Rader’s majority opinion affirmed the district court’s grant of a preliminary injunction despite defendant’s obviousness challenge, Gajarsa’s dissenting opinion asserts that the majority’s decision disregards the Supreme Court’s KSR flexible guidelines regarding the finding of obviousness in the mere repetition of well-known techniques to achieve a desired result, and in the application of “obvious to try.”  Gajarsa’s dissent also notes that this is a preliminary injunction, and the standard is not whether defendant has shown obviousness by clear and convincing evidence, but rather, whether defendant has shown a “substantial question of invalidity” to defeat a preliminary injunction.  Perhaps, the strongest position for the majority opinion is its consideration of the showing of a “teaching away” in the record, as well as deference given to the district court’s determinations of credibility of the parties’ expert witnesses.

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