Weekly IP Takeaways

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

1. In what is probably old news at this point, Judge Alan Albright of the Western District of Texas was again ordered by the Federal Circuit Court of Appeals to transfer multiple cases out of his district. The battle between the Federal Circuit and Judge Albright is white hot. The Federal Circuit is accusing Judge Albright of using reasons to reject transfer that the Federal Circuit has already rejected. Judge Albright has accused the Federal Circuit of not following its own precedents on transfer. These cases went to the Northern District of California. As noted in a recent post (Takeaway No. 3), the Federal Circuit is tightening the screws on Judge Albright and venue in the Western District of Texas, and while many plaintiffs will still file there, they should budget writs of mandamus costs into their calculus. It would seem reasonable that filings in that district would start dropping much like filings in the Eastern District of Texas did after the Federal Circuit and Supreme Court stiffened the venue rules.

2. In a recent opinion from the Federal Circuit Court of Appeals, the Court affirmed a grant of summary judgment out of the Western District of North Carolina where the plaintiff sued for correction of inventorship under 35 U.S.C. 256, but failed to provide sufficient corroboration of her claim that she was a joint inventor. For a correction of inventorship or joint inventorship claim, the party pressing the issue must show by clear and convincing evidence that he or she contributed to some portion of the claimed invention. The requirement for corroboration (i.e., evidence beyond the party merely saying he or she contributed to the claimed invention) is to prevent fraudulent, unfounded claims of inventorship. Here, the plaintiff did not have sufficient evidence to corroborate her claim, and thus, the Federal Circuit affirmed summary judgment for the defendants. The takeaway here is that for claims of correction of inventorship or joint inventorship, the standard of proof and requirement for corroboration make proving such claims very challenging. Thus, before moving forward with such claims, make sure your “ducks are in a row.”

3. In another recent opinion from the Federal Circuit, the Court, in a relatively rare case, reversed the grant of a motion to dismiss based on Section 101/Alice challenge by Judge Stark out of the District of Delaware. The patented technology related to mobile radio dynamic bandwidth allocation, which Judge Stark found was directed to an abstract idea, and thus, he dismissed the case. The Federal Circuit reversed finding that the invention was an improvement of existing computer technology that changes how the system shifts bandwidth allocation. The Federal Circuit noted that the invention was not generalized steps implemented on a computer or data manipulation, but rather, a specific method of mobile radio bandwidth allocation with claims directed to the technology. The Federal Circuit further noted that there was a lot of invention detail in the specification of the patent, which was “of particular importance.” Thus, the Federal Circuit reversed the Section 101/Alice dismissal. The takeaway here is that software inventions directed to improvements in the technology itself are more likely to be patentable. Including a significant amount of inventive details and the problems solved by the technology are very important as well for avoiding an Alice dismissal.