Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent opinion from the Federal Circuit Court of Appeals, the Court reiterated its position that the USPTO’s Subject Matter Eligibility Guidance articulated under former Director Iancu is not binding on the courts. In regards to the Guidance, the Federal Circuit stated, “We note that this guidance is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding on our patent eligibility analysis. … And to the extent the guidance contradicts or does not fully accord with our caselaw, it is our caselaw, and the Supreme Court precedent it is based upon, that must control. Direct words from the Federal Circuit. One may be able to procure a software patent through the Patent Office (assuming the Guidance does not change or is repealed), but that patent may not ultimately be enforceable in the courts. The standards need to be harmonized for clarity to stakeholders.

2. A recent decision in a patent case in the Southern District of California, the Court determined that the case was exceptional under 35 U.S.C. 285 and granted Domino’s Pizza’s motion for attorneys’ fees. The plaintiff had several of its patents invalidated in other proceedings, and a remaining patent in the Domino’s case. The Court, under Octane Fitness, found the plaintiff’s litigation position to be “especially weak,” and while noting that the plaintiff’s manner of litigation was not the stronger of the two elements of the exceptional case analysis, it was nonetheless sufficient to support the case being exceptional because the plaintiff shifted its position on significant issues in the litigation. There was likely an element of deterrence in the ruling as well given the Court’s emphasis on the litigation history of this particular plaintiff in the Southern District of California. The takeaway here is like the old Kenny Rogers’ song – you’ve got to know when to hold ‘em, and know when to fold ‘em.

3. In what may be slightly old news by now (3 weeks), the Federal Circuit Court of Appeals in an order on a petition for writ of mandamus registered a significant amount of irritation with Judge Albright in the Western District of Texas for delaying ruling on a motion to transfer while the case moved forward. The motion to transfer was fully briefed by the end of May of 2020, yet the Court had not issued a ruling, but rather, allowed the case to moved progress. The Federal Circuit, in surprisingly stern language said that, “the district court’s handling of the transfer motion up until this point in the case has amounted to egregious delay and blatant disregard for precedent.” The Federal Circuit reminded Judge Albright that once a motion to transfer is filed, it takes top priority. Thus, the Federal Circuit ordered Judge Albright to stay all proceedings until he rules on the transfer motion. A few days later, Judge Albright denied the motion to transfer. The takeaway here is interesting – if you are a defendant, you may be able to use this case to stay proceedings in a patent case while a transfer motion is pending. If you are a plaintiff, and you may be able to use this case to speed up the district court’s handling of a transfer motion so that the merits may be addressed more quickly.