Spotlight on Upcoming Oral Arguments – April 2018

Monday, April 2, 2018

Barco, N.V. v. EIZO Corporation, No. 17-2086, Courtroom 203

In this appeal from the Northern District of Georgia, the Federal Circuit will consider whether the district court erred in its application of the recapture rule to Barco’s reissue claims.  During prosecution of the original application, the examiner rejected several claims as obvious in light of the Mochizuki reference.  The district court found that Barco clearly and unambiguously disclaimed the subject matter subject to the rejection, and held that Barco’s reissue claims violated the recapture rule. 

Barco argues that it merely corrected the examiner’s misreading of the prior art and did not disclaim the subject matter. Barco further argues that the Court erred by extending the scope of any surrender to reissue claims that were not implicated by Barco’s discussion of Mochizuki during prosecution.  EIZO argues that the broader aspects of the reissue claims relate directly to subject matter surrendered during the original prosecution. It asserts that Barco relied on specific limitations to distinguish its claimed invention and overcome the examiner’s obviousness rejection and then recaptured the claim scope by securing reissue claims that omitted the limiting features.

SAP America, Inc. v. InvestPic LLC, No. 17-2081, Courtroom 402

InvestPic appeals from a Northern District of Texas decision finding the claims of its patent invalid under 35 U.S.C. § 101.  InvestPic’s claims are directed to a performance model of an investor’s portfolio through predictive computer simulation of investment behavior based on the application of user-defined investments under user-defined market conditions.  The district court found that the claims were directed to “nothing more than mathematical calculations and data manipulation.”

InvestPic argues that the district court erred because the claimed invention constitutes a patent-eligible advancement in the established technological field of data science. It asserts that the claims are directed to the improvement of a known computerized method and system using specific rules and user-defined criteria.  SAP argues that the claims are directed to the abstract idea of biased resampling to achieve an improved prediction of market behavior. It asserts that the invention is merely a mathematical solution to a data problem, amounts to mere data analysis, and fails to add meaningful limitations amounting to an inventive concept sufficient for patentability.

Thursday, April 5, 2018

Tinnus Enterprises, LLC v. Telebrands Corporation, No. 17-1726, Courtroom 402

This appeal arises from the first post-grant review decision issued by the PTAB based on indefiniteness under 35 U.S.C. § 112.  On appeal, the Federal Circuit has been asked to determine the appropriate indefiniteness standard to be applied in post-grant review proceedings. Tinnus argues that the Board erred in applying the stricter “unclear meaning” standard of In re Packard, which it asserts is limited to pre-issuance claims in patent examination, not post-issuance claims in post-grant review.  Tinnus argues that, instead, the PTAB should have applied the “reasonable certainty” standard articulated in Nautilus.  Telebrand argues that the Board correctly applied the Packard indefiniteness standard that is applied in all other Patent Office proceedings.  Telebrand asserts that the Nautilus standard is only applicable in district court litigation, where patents are entitled to a presumption of validity, and as a result, there is a higher evidentiary standard for parties seeking to invalidate a patent.

Friday, April 6, 2018

In Re Maatita, No. 17-2037, Courtroom 402

Maatita appeals from a PTAB decision affirming the Examiner’s rejection of his design patent claim under 35 U.S.C. § 112.  The PTAB found that the single, two-dimensional figure in Maatita’s application did not adequately depict the three-dimensional article that was claimed.  Maatita argues that his single figure adequately depicts his design for a shoe bottom and that any person skilled in the art could make his design based on his two-dimensional figure. The PTO argues that Maatita’s disclosure is indefinite and does not adequately enable an ordinary designer to make the claimed design because it would require speculation as to how the claimed design is applied in the context of a three-dimensional shoe bottom.

Medinol Ltd. v. Cordis Corporation, No. 15-1027, Courtroom 402

Medinol appeals from a Southern District of New York decision dismissing Medinol’s claims on the ground of laches, and further denying Medinol’s Rule 60(b) Motion for Relief from Judgment.  Medinol asserts that the Supreme Court “held unequivocally” in SCA Hygiene that laches is not a defense to claims for damages incurred within the 6-year period provided by 35 U.S.C. § 286.  Medinol further argues that the Supreme Court’s Petrella v. MGM decision “amounted to a seismic change” in the controlling law regarding claims for money damages for patent infringement under the Patent Act.

Cordis argues that the district court did not abuse its discretion in denying Medinol’s motion.  First, Cordis argues that the Petrella v. MGM decision could not provide a basis for vacating the judgment as the decision merely reaffirmed “fundamental principles on the availability of laches” and “adhered to general principles regarding the application of laches where there is a statute of limitations.”  Cordis further argues that Petrella v. MGM did not address the law on laches in patent cases, but rather, addressed the applicability of laches in copyright cases.