Thursday, August 19th, 2010
- Inequitable Conduct: Selective withholding of material reference where a cover page is consistent but inside content is inconsistent with arguments made was remanded to the district court for a finding on scienter – deceptive intent – and inequitable conduct
- Joint Infringement: Establishing joint infringement of a process or system claim sufficient to support a jury verdict of joint infringement continues to require a “controlling party”, i.e., a “mastermind”
In Golden Hour Data v. emsCharts, a decision rendered by the Court of Appeals for the Federal Circuit on August 9, 2010, the Federal Circuit remanded the case to the district court for it to make detailed factual findings as to whether Applicant and/or patent counsel actually read a highly material brochure that they identified on an information disclosure statement but never produced to the Patent Office, knowing it to be material. The brochure cover was consistent with, but its inside contents were inconsistent with, prosecution arguments. Golden Hour Data, No. 2009-1306, slip op. at 26.
In this action involving charges of inequitable conduct during prosecution of a patent application, the Court explained that the failure to advise the PTO about the integrated billing disclosed in the brochure is explainable by either (1) the failure of Applicant or patent counsel to read the brochure or (2) the deliberate withholding by Applicant and/or patent counsel of damaging information on the inside of the brochure that they had read. Id. at 21 On the key question of whether Applicant and/or patent counsel in fact read the brochure the district court failed to make any finding of fact. Id. at 21 The Federal Circuit remanded this issue to the District Court since “it is not the task of the Federal Circuit to make factual findings [on materiality and deceptive intent]”. Id. at 12, 26-27.
The Federal Circuit also affirmed a grant of judgment as a matter of law (JMOL) with respect to joint infringement. The majority first considered the process claims and relied on Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) and BMC Resources, Inc. v. Paymentech, L.P, 498 F.3d 1373 (Fed. Cir. 2007), for the well established proposition that “control or direction” of one party by another is required for joint infringement of process claims. The Federal Circuit held the method claims not infringed because no one person exercised “control or direction” over the entire process. The system claims were likewise not infringed but only because the parties had agreed to submission of the system claims to the jury on a joint infringement theory based on the control or direction of Softech by emsCharts. Id. at 28 As stated by the Court “such a sale might well [have] create[d] liability on the part of emsCharts for the sale of the patented system, whether or not emsCharts controlled Softech.” Id.
The Juhasz Law Firm can help you to better understand the effect of Golden Hour Data on your patents. For more information regarding Golden Hour Data and advice on how this decision may affect your patents, please contact The Juhasz Law Firm.
Your patents may be your most important asset. To help you protect your patents contact Juhasz Law, the firm committed to Positioning Your Patent Beyond The Horizon℠.
For more on Golden Hour go to the August 2010 Juhasz Law Advisory.
Wednesday, July 28th, 2010
7/28/2010
The Supreme Court’s decision in Bilski was a welcome relief for the business, software, and medical diagnostic industries. Yet the Supreme Court has provided very little guidance on how to patent business, software, and medical diagnostics patents other than stating that an abstract business method is not patentable and that the method must include more than technological limitations or insignificant post-solution activity.
In the aftermath of Bilski, now more than ever, a practitioner needs to understand what structure or process makes a post-solution activity not insignificant. For software patents, it is no longer enough to tie the software to a computer or the internet. Software claims should recite computer architecture specially programmed and recite data representing physical and tangible and not abstract objects. For diagnostic method patents, claims should recite determining chemical levels by other than visual inspection and not rely on naturally occurring samples for patentability; rather reciting transformation of biological samples.
To help you better protect your patents, Juhasz Law is happy to make available a Special Edition of the Juhasz Law Advisory entitled Juhasz Law’s 20 Claim Drafting Tips – For Patenting Business, Software, and Medical Diagnostic Methods in the Aftermath of The Bilski Decision. This Special Edition of the Juhasz Law Advisory was released on a limited basis on July 17, 2010 but is now available on the Firm’s website. To receive your copy of this publication, go to the July 2010 Juhasz Law Special Edition Advisory .
Hope you find these drafting tips useful in your practice.
Your patents may be your most important asset. To help you protect your patents contact Juhasz Law, the firm committed to Positioning Your Patent Beyond The Horizon℠.
Posted by Paul R. Juhasz, President
Tuesday, June 29th, 2010
In re Bilski Decided – Supreme Court Upholds Business Method Patents
6/29/2010
In In re Bilski[1], a decision rendered by the U.S. Supreme Court on June 28, 2010, the Supreme Court held that business methods are not categorically outside of 35 U.S.C. §101. Still, the Supreme Court rejected the Bilski application under its precedents on the unpatentability of abstract ideas providing little further guidance on what constitutes a patentable “process” other than “pointing to the definition of the term in §100(b) and looking to the Benson, Flook, and Diehr precedent.” In re Bilski, No. 08-964, slip op. at 16.
The Benson precedent referred to by the Court is the holding that an algorithm is not a “process” but an unpatentable abstract idea. Id. at 13 A contrary holding “would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.” Id. at 13 In Flook, unlike the algorithm in Benson, the mathematical formula used for monitoring conditions during the catalytic conversion process in the petrochemical and oil-refining industries was limited so that it could still be freely used outside the petrochemical and oil-refining industries. Id. at 14 Nevertheless, the Flook Court rejected “[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process.” Id. at 14 As the Court later stated in Diehr, Flook stands for the proposition that the prohibition against patenting abstract ideas “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment” or adding “insignificant post solution activity”. Id. at 14. Finally, in Diehr involving a method for molding raw, uncured synthetic rubber into cured precision products using a mathematical formula to complete several of the steps by computer, the Court explained that “while an abstract idea, law of nature, or mathematical formula could not be patented, an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Id. at 14
In determining what business methods are not an abstract idea the Supreme Court has provided little guidance other than pointing to the definition of the term “process” in §100(b) and the trilogy precedent of the Court in Benson, Flook, and Diehr”. For more on Bilski and its likely impact on your patents, go to the June 2010 Juhasz Law Advisory .
As the Supreme Court noted “the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles”. Id. at 10 For today’s patent program to be successful, Companies must understand this balance and craft their business method claims so they are applied to structure or process defined by other than a limitation to a particular environment or by the addition of an insignificant post solution activity.
The Juhasz Law Firm can help you to better understand this balance and the effect of Bilski on your claims, including, if you are a patent holder, helping you craft claims to better weather a 35 U.S.C. §101 statutory challenge, or, if you are dealing with a third party patent, providing you with strategic counseling to help you understand whether asserted claims likely meet or fail to satisfy the statutory subject matter standard.
Your patents may be your most important asset. To help you protect your patents contact Juhasz Law, the firm committed to Positioning Your Patent Beyond The Horizon℠.
Posted by Paul R. Juhasz, President
[1] In re Bilski, No. 08-964, slip op. (S.Ct. Jun. 10, 2010);
__ U.S.
__ (2010).
