fitzpatrick, cella, harper & scinto © 2011 | 1 the case therasense ǀ federal circuit (en...

FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com 1

The CaseTherasenseTherasense ǀǀ Federal Circuit (Federal Circuit (en bancen banc)) ǀǀ May 25, 2011May 25, 2011

我们即知产飞泽知识产权律师所


TherasenseTherasense ǀǀ IssueIssue

What must be shown in order to prove inequitable conduct?



TherasenseTherasense ǀǀ FactsFacts

Abbott filed a U.S. patent application for a disposable blood glucose test strip.

During prosecution, Abbott submitted a declaration to overcome a prior art rejection.

Declaration allegedly was contradicted by arguments that Abbott previously made during prosecution of European counterpart.

Abbott did not tell the PTO examiner about the earlier arguments.



TherasenseTherasense ǀǀ HoldingHolding

Inequitable conduct requires clear and convincing evidence that:

(1) the applicant specifically intended to deceive the PTO, e.g., the applicant knew of an undisclosed reference, knew that it was material, and made a deliberate decision to withhold it; and

(2) the alleged misconduct was but-for material, e.g., if the PTO had been aware of an undisclosed reference, it would not have allowed at least one claim.

Exception to but-for materiality in cases of affirmative egregious misconduct.



TherasenseTherasense ǀǀ LessonsLessons

#1#1 Patent owners: Use Therasense and Exergen to dispose of unfounded inequitable conduct allegations early in the case.

#2#2 Accused infringers: Inequitable conduct is still a potent defense, but some discovery may be needed before it can be adequately pled.

#3#3 Patent applicants: Duty of disclosure is alive and well. Familiarize yourself with PTO’s proposed new rule. When in doubt, disclose.

#4#4 Supreme Court may have the last word.



The CaseCyberSourceCyberSource ǀǀ Federal CircuitFederal Circuit ǀǀ Aug. 16, 2011Aug. 16, 2011



CyberSourceCyberSource ǀǀ IssueIssue

Whether claims 2 and 3 of CyberSource’s ’154 patent recite patent-eligible subject matter under 35 U.S.C. § 101?



CyberSourceCyberSource ǀǀ Claim 3 HoldingClaim 3 Holding

Claim 3 fails the Bilski “machine-or-transformation” test.

“All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper.”

A method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.



CyberSourceCyberSource ǀǀ Claim 2 HoldingClaim 2 Holding

Claim 2 is a “Beauregard” claim, i.e., a claim to a computer readable medium (e.g., a disk, hard drive, or other data storage device) containing program instructions for a computer to perform a process.

Court rejected CyberSource’s argument that coupling the method of claim 3 with a manufacture or machine renders it patent-eligible.

Must look to the underlying invention for patent-eligibility purposes.



The CaseUltramercialUltramercial ǀǀ Federal CircuitFederal Circuit ǀǀ Sep. 15, 2011Sep. 15, 2011



UltramercialUltramercial ǀǀ IssueIssue

Whether Ultramercial’s ’545 patent claims patent-eligible subject matter under 35 U.S.C. § 101?



UltramercialUltramercial ǀǀ HoldingHolding § 101’s expansive categories of patent eligible

subject matter―process, machine, article of manufacture and composition of matter―are no more than a “coarse eligibility filter.”

Patent claims a practical application of the abstract idea that advertising can serve as currency, including steps likely to require “intricate and complex computer programming.” Thus, patent- eligible.

“Unlike the claims in CyberSource, the claims here require, among other things, controlled interaction with a consumer via an Internet website, something far removed from purely mental steps.”



Cybersource & UltramercialCybersource & Ultramercial ǀǀ LessonsLessons

#1#1 Substance matters more than form: Beauregard claims do not necessarily recite patent-eligible subject matter.

#2#2 DO NOT claim methods that can be readily performed entirely in one’s head. DO claim methods directed to specific, practical applications or improvements to technologies in the marketplace.

#3#3 Ultramercial’s pro-software lean: “The digital computer may be considered by some the greatest invention of the twentieth century, and both this court and the Patent Office have long acknowledged that ‘improvements thereof’ through interchangeble software or hardware enhancements deserve patent protection. Far from abstract, advances in computer technology—both hardware and software—drive innovation in every area of scientific and technical endeavor.”

#4#4 Differing views of § 101’s role among Federal Circuit judges.



The CaseAkamai v. LimelightAkamai v. Limelight ǀǀ Federal Circuit (Federal Circuit (en bancen banc)) ǀǀ 20122012



Akamai v. LimelightAkamai v. Limelight ǀǀ IssueIssue

Rehearing en banc to take place on November 18, 2011 concerning the following issue:



Akamai v. LimelightAkamai v. Limelight ǀǀ FactsFacts

Akamai sued competitor Limelight for patent infringement.

Claimed methods recited some steps performed by Limelight, and an embedded object tagging step performed by Limelight’s customers.

Divided process was explicitly set forth in Limelight’s standard customer contract.

Limelight provided customers with instructions explaining how to utilize its content delivery service.



Akamai v. LimelightAkamai v. Limelight ǀǀ Vacated Panel DecisionVacated Panel Decision

Direct infringement requires single party to perform every step of a claimed method.

There can only be joint infringement:

(1) when there is an agency relationship between the parties who perform the method steps; or

(2) when one party is contractually obligated to the other to perform the steps.

No joint infringement because customers are not Limelight’s agents and contract does not obligate customers to perform any of the method steps.



The CaseMcKesson v. EpicMcKesson v. Epic ǀǀ Federal Circuit (Federal Circuit (en bancen banc)) ǀǀ 20122012



McKesson v. EpicMcKesson v. Epic ǀǀ IssueIssue

Rehearing en banc to take place on November 18, 2011 concerning the following issues:



McKesson v. EpicMcKesson v. Epic ǀǀ FactsFacts

McKesson sued Epic for inducing infringement of a patent directed to an electronic method of communication between healthcare providers and patients involving personalized web pages for doctors and their patients.

Epic licensed accused MyChart software to healthcare providers, who offered the software as an option for their patients. No healthcare providers required their patients to use the MyChart software.

Undisputed that asserted claims required at least one step performed by MyChart users, with other steps performed by the MyChart provider.



McKesson v. EpicMcKesson v. Epic ǀǀ Vacated Majority DecisionVacated Majority Decision

Followed Akamai and found no infringement because the MyChart users did not perform the claimed steps as agents for the MyChart providers, nor were they contractually obligated to perform the steps.

Rejected McKesson’s argument that the special nature of the doctor-patient relationship is something more than a mere arms-length relationship and is sufficient to attribute the patient’s actions to the doctor.



McKesson v. EpicMcKesson v. Epic ǀǀ Dissenting OpinionDissenting Opinion

Judge Newman: “A patent that cannot be enforced on any theory of infringement, is not a statutory patent right. It is a cynical, and expensive, delusion to encourage innovators to develop new interactive procedures, only to find that the courts will not recognize the patent because the participants are inde-pendent entities. From the error, confusion, and unfairness of this ruling, I respectfully dissent.”



Akamai & McKessonAkamai & McKesson ǀǀ LessonsLessons

#1#1 Patent applicants: Draft claims to capture infringement by a single party.

#2#2 Patent owners: Consider reissue for patents issued within the last two years.

#3#3 Accused infringers: If a claim implicates multiple parties, you may have a good noninfringement argument … at least for now.



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