Federal Circuit Finds Disclaimer Based on “Object of Invention” Language

The Federal Circuit’s recent decision in Pacing Technologies, LLC v. Garmin International, Inc.  (No. 2014-1396) provides patent litigators with a new tool for claim construction arguments and may make patent prosecutors reconsider their drafting techniques. The Federal Circuit held that a patent specification’s characterization of disclosed “objects of the invention”—a phrase commonly used by patent drafters—effected a disclaimer in claim scope.

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Federal Circuit Limits Patent Exhaustion Doctrine for Complementary Technology


In its 2013 decision in Keurig, Inc. v. Sturm Foods, Inc., the Federal Circuit held that a purveyor of coffee cartridges did not infringe Keurig’s coffee brewing patents because Keurig had already made an unrestricted sale of its brewing machines to end users, such that any further use of those machines was protected by the doctrine of patent exhaustion. Yet, in its February 10, 2015 decision in Helferich Patent Licensing, LLC v. The New York Times Company, et al., the Federal Circuit held that, under certain circumstances, purveyors of media content to users of handheld mobile devices could be found liable for infringement even where the mobile device manufacturers had already paid for a license under the asserted patents. In reaching this conclusion, the Federal Circuit purported to harmonize long-standing principles of patent exhaustion, but many observers will likely view the Helferich decision as narrowing the scope of the defense. In particular, the Federal Circuit has now held that in the context of complementary technology – such as a machine and one of its components, or a computer and its software – the patent exhaustion defense only operates to protect so-called “authorized acquirers” of the technology, while leaving out in the cold any third parties who provide complementary components or services that are separately patented. Continue reading this entry

Patent Eligibility Under Alice: Reliance on Lack of Routine or Conventional Use

Federal courts have continued to wrestle with the standard for patent eligibility under 35 U.S.C. § 101 set by the Supreme Court’s ruling in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). This is illustrated, for example, in two decisions – one from a district court and one from the Federal Circuit – in which the courts reached opposite conclusions on computer-related patents, showing that not all such patents are the same for purposes of determining patent eligibility.

Alice created a two-step process to determine whether a claim is directed to patent-eligible subject matter under § 101. 134 S. Ct. at 2355. First, a court must “determine whether the claims at issue are directed to [a] patent-ineligible concept[]” by evaluating the claims “[o]n their face” to determine to which “concept the claims are ‘drawn.’” Id. at 2355-56. Then, the court “search[es] for an inventive concept – i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Id. at 2355. The Supreme Court clarified that for an abstract idea to be considered patent-eligible, “the claim ha[s] to supply a ‘new and useful’ application of the idea” and that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent eligible invention.” Id. at 2357-58. Continue reading this entry

FTC Fails to Prove Green Guides' Meaning of "Biodegradable"

In an Initial Decision announced February 6, 2015, Chief Administrative Law Judge D. Michael Chappell of the Federal Trade Commission (“FTC”) held that ECM BioFilms, Inc. d/b/a Enviroplastics International (“ECM”) made false and unsubstantiated claims that plastics made with its additive “would completely biodegrade, including in a landfill, in a time period ranging from 9 months to 5 years.” Decision at 318. Accordingly, Chief Judge Chappell entered an order barring ECM from making claims “that any product or package will completely biodegrade within any time period, or that tests prove such representation, unless such representation is true, not misleading, and, at the time it is made, [substantiated].” Id. at 321. Importantly, however, Chief Judge Chappell also held that the FTC failed to prove that the unqualified claim “biodegradable,” when used with plastics, carries the implied message that such plastic will “completely biodegrade into elements found in nature, including in a landfill, within one year”—a meaning the FTC ascribed to the term in its 2012 Guides For The Use Of Environmental Marketing Claims (“Green Guides”). See id. at 316; 16 C.F.R. 260.8(c) (2014).

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Has the Machine-or-Transformation Test Returned to Prominence in Patent Cases?

The machine-or-transformation test was once the gatekeeper of patent eligibility, but that reign ended in 2010 when the Supreme Court stated in Bilski that it is not the sole test for determining patentability. By 2013 the test became largely ignored, for example in the Federal Circuit’s Ultramercial opinion. When that opinion was vacated and remanded by the Supreme Court, however, the new Federal Circuit Ultramercial opinion issued in November 2014 devoted a large discussion to the test. Given the renewed emphasis by the Federal Circuit on the machine-or-transformation test, practitioners would do well to study the intricacies of the two prongs of the test. Continue reading this entry