Weekly IP Takeaways

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

1. In a recent decision from the District of South Carolina, Charleston Division (a beautiful courthouse), the Court denied a motion to dismiss copyright and DMCA claims concerning a photograph appearing on several real estate company web pages. The defendants noted that the photograph had “Keller Williams Realty” referenced on them, suggesting that somehow the alleged copying or removal of alleged copyright management information was not their fault. The Court, however, noted that the web pages titles and URLs referenced the Defendants, and thus, found that the facts pled, to be taken as true, stated viable claims for copyright infringement and a DMCA violation. The Court noted that Defendants’ attempt to implicate Keller Williams Realty could be raised on summary judgment after discovery. The takeaway here is that motions to dismiss are difficult to obtain on issues where, as here, the facts (or the implications of the facts) are unclear or in dispute.

2. In a recent decision out of the District of Delaware, Judge Colm Connolly denied a motion to dismiss several patents directed to parasthesia-free pain relief spinal cord stimulation devices based on Section 101/Alice. The Court found that the claimed devices “incorporated a natural phenomenon, not the natural phenomenon itself.” The patents also required the generation of therapeutic electrical pulses having specific parameters. The Court found that there is a difference between claiming a natural phenomenon and applying a natural phenomenon to a useful end. The Court also found that the systems and methods claimed in the asserted patents were specialized medical devices having particular signal properties, and delivered electrical pulses to the spinal cords of patients. In short, the Court denied the motion to dismiss under Section 101/Alice, and stated that the Defendants’ arguments went too far vis-à-vis Alice. The takeaway here is that there is a difference between a patent claiming a natural phenomenon versus a patent applying a natural phenomenon to a useful end.

3. In a recent opinion from the Federal Circuit Court of Appeals, the Court upheld a written description/priority date finding in an inter partes review (IPR) in connection with a challenge based on intervening prior art. Typically, a written description issue under 35 U.S.C. 112 is not an issue that can be raised in an IPR. In this case, however, the challenged patent claims were in a fifth continuation application, and the argument was that there was a lack of written description for certain ranges of weight of a polymer in the original disclosure, and thus, the intervening prior art anticipated the claims with the challenged range. To answer the question as to whether or not the claims were anticipated (which is a proper question in an IPR), the Patent Trial and Appeal Board (PTAB) needed to answer the question of whether there was adequate written description dating back to the earliest filing date of the patent family. The PTAB found a lack of adequate written description, found the challenged range claims anticipated, and the Federal Circuit affirmed. The takeaway here is that while a direct Section 112 written description issue may not be raised in an IPR, if such an issue is germane to the anticipation or obviousness arguments raised by the IPR, the PTAB may still rule on the Section 112 written description issue.