November 1, 2022
Authored and Edited by Sneha Nyshadham; Gracie K. Mills; Esther H. Lim
The following telephone arguments will be available to the public live. Access information will be available by 9 AM ET each day of argument at: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.
Tuesday, November 1, 2022
Eurica Califorrniaa v. Vidal, No. 22-1640
This case involves a challenge to the USPTO’s patent term adjustment (“PTA”) calculation. Mr. Califorrniaa filed a patent application in March 2014. After receiving a Notice of Allowance in December 2018, Califorrniaa requested an examiner interview and proposed amendments. The Examiner accepted the amendments, and U.S. Patent No. 10,245,075 issued in April 2019. In calculating Califorrniaa’s PTA, the USPTO subtracted 51 days for the time that Califorrniaa’s after-allowance amendment was pending, finding Califorrniaa failed to engage in reasonable efforts to conclude prosecution of the application. Califorrniaa sought review in the Eastern District of Virginia, which affirmed the USPTO’s calculation on summary judgment.
On appeal, Califorrniaa challenges the USPTO’s subtraction of 51 days from its PTA for the ’075 patent. Califorrniaa argues none of the 51 days should have been subtracted because the amendment was his first opportunity to respond following an examiner’s amendment entered with the Notice of Allowance. Alternatively, Califorrniaa asks the court to award at least twenty-two, and not less than three, days of additional PTA, based on an amendment the USPTO made to its regulation governing calculation of PTA.
The USPTO responds that Califorrniaa failed to make this argument before the USPTO, and the USTPO correctly applied the regulation in effect at the time of the issuance of the patent, as the regulation was not amended until after the patent issued. It argues that the USPTO reasonably determined that the filing of an amendment after a Notice of Allowance constitutes a failure to engage in reasonable efforts to conclude prosecution of the application. It argues the after-allowance amendment does not become USPTO delay merely because the examiner entered an examiner’s amendment.
Wednesday, November 2, 2022
Trinity Info Media, LLC v. Covalent, Inc., No. 22-1308
Trinity asserted U.S. Patent Nos. 9,087,321 and 10,936,685 for a poll-based networking system against Covalent in the Central District of California. Covalent moved to dismiss for failure to state a claim, contending that the claims of the asserted patents are patent ineligible under 35 U.S.C. § 101. Following a hearing, the district court dismissed the case.
On appeal, Trinity argues that the district court erred in granting Covalent’s motion to dismiss. According to Trinity, the order fails to overcome the presumption of validity and Covalent’s arguments, unsupported by any claim construction or record evidence, failed to establish by clear and convincing evidence that every element of every claim of both asserted patents is ineligible under § 101. Trinity also argues that Covalent failed to show the claimed subject matter was routine, well-understood, or conventional to one of ordinary skill in the art as of the priority date. Lastly, Trinity argues that the district court’s order ignores the specification, omits crucial claim limitations, fails to consider claim construction, offers no evidentiary support, and relies solely on judicial argument.
Covalent responds that the district court correctly dismissed the case because the asserted claims of the asserted patents are all unpatentable under § 101. Under step one of Alice, Covalent argues that the claims are directed to the abstract idea of matching people who gave corresponding answers to a question. It argues the district court properly focused on the claim language, rather than details imported from the specifications. Under step two of Alice, Covalent argues that the asserted claims do not describe an inventive concept. Instead, Covalent argues the claim elements recite nothing more than generic computer components performing routine activities. Lastly, Covalent argues nothing in the other asserted claims changes the Alice analysis, and claim construction was unnecessary.
Monday, November 7, 2022
Kutt v. Apple, Inc., No. 20-1757
Mr. Kutt filed a complaint in the Eastern District of Texas alleging infringement of U.S. Patent No. 5,506,981 by Apple. The district court dismissed Kutt’s claim with prejudice, finding the ’981 patent expired in April 2013, more than six years before Kutt filed his lawsuit, rendering his claim untimely.
On appeal, Kutt argues his patent expired in October, not April, of 2013 because the patent’s term should be based on the application date for the continuation-in-part application, not the earliest application to which it claims priority.
Apple responds that Kutt’s claim was untimely, as the ’981 patent expired in April 2013. According to Apple, the patent’s term should be based on the earliest claimed priority date, even if some or all of the claims might not be entitled to priority based on that date.
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