Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. The Federal Circuit Court of Appeals seems, at times, to treat the Section 101/Alice/abstract idea issue in the same way Justice Potter Stewart treated the issue of whether something was pornography as reflected in his famous quote from Jacobellis v. Ohio – “I know it when I see it.” In a recent opinion, the Federal Circuit reviewed a denial of a motion to dismiss from the Northern District of California on a Section 101/Alice issue in connection with an invention that seems to be near the not-so-clear dividing line between abstract and non-abstract, and reversed, invalidating the patent. The Federal Circuit continues, at times, to just “shoe-horn” subsequent cases into previous case holdings (or distinguish them from previous case holdings), rather than establishing clear principles for what is or is not abstract under Section 101. The Court found a patent directed to a system providing a mobile phone user with targeted advertisements deemed relevant to a user based on data gathered from the user’s television to be abstract and lacking an inventive concept, even though an argument can be made that the patent was directed to an unconventional or atypical use of conventional computer technology to accomplish its result. The deficiency in the Court’s reasoning can be seen on page 19 of the slip opinion where the Court stated, “Processing an ‘embedded object’ of claim 1 or rendering targeted data ‘through a sandboxed application of a mobile device’ of claim 10 are not the kind of ‘additional features that provide practical assurance that the [claim] is more than a drafting effort designed to monopolize the [abstract idea] itself.’” There is little reasoning, just recitation of case law as justification for the Court’s position. While the panel was unanimous, the invention at issue seemed close to the “line” between abstract and non-abstract. At any rate, the Section 101/Alice lack of clarity continues, and it is time for Congress to step in and fix the situation.
2. In a recent opinion from the Federal Circuit Court of Appeals, the Court upheld a finding of implicit claim scope disavowal based on statements in the specification that defined the “present invention” as having a “universal folding boom trailer” on vehicle towing devices. Essentially, the patent described the “present invention” as always having the “universal folding boom trailer” element, without variation. As such, the Federal Circuit upheld a claim construction requiring this element in all claims, even claims that lacked this element. The takeaway here is that patent prosecutors must be extremely careful if language such as the “present invention” is used at all, and even if not, they should be careful where possible to avoid describing an invention in such a limiting manner. In addition, it seems that the Federal Circuit is amenable to finding claim scope disavowal in broader, less invention, less explicit circumstances, which is noteworthy.
3. In a recent opinion from the Federal Circuit Court of Appeals, the Court reversed a dismissal for lack of personal jurisdiction in a declaratory judgment case where jurisdiction was based on a series of communications between the patent owner and the declaratory judgment plaintiffs. The Federal Circuit’s earlier Red Wing case essentially held that a cease and desist letter into a forum state, even followed by a few communications, is insufficient for personal jurisdiction over the patent owner in a declaratory judgment context. In this case, there were more than a few communications between the parties – 22 over a three-month period, and the Federal Circuit also noted that Supreme Court’s more recent case law permitting a broader look at the minimum contacts needed for personal jurisdiction. Taken together, the Federal Circuit found that personal jurisdiction existed. In doing so, it did not overrule Red Wing, but limited its applicability to situation where there are fewer communications between the patent owner and the alleged infringer in the forum state. The takeaway here is that protracted communications following a cease and desist letter will likely expose a patent owner to personal jurisdiction in the accused infringer’s home state. To avoid that, perhaps file a complaint in a preferred forum before sending the cease and desist letter.