Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. The STRONGER Patents Act (S. 2082), introduced in the Senate in July, remains on the table for debate and discussion in the Senate. Details regarding the bill, and its language, can be found here. The bill notes the benefits of patents to the economy and to business, as well as some challenges that the America Invents Act created. The language of the bill, among other things, proposes to statutorily change the claim construction standard in Patent Trial and Appeal Board (PTAB) proceedings to the same as is used in district court cases, reestablish injunctive relief as a presumed remedy for valid, infringed patents, and federalizing bad faith demand letters. This is important legislation to re-establish the benefits that come from a strong patent system.
2. In an interesting opinion in a patent case in the District of New Mexico, a district judge has denied a motion for summary judgment on Section 101 grounds concerning a patent directed to security systems. The opinion is here. The Court noted that the defendant described the technology “at too a high level of abstraction” (a common issue/tactic directed to demonstrating a Section 101 issue). The Court then analyzed the patent and found that the claims at issue were not directed to an “abstract idea” under Step 1 of the Section 101 analysis because they represented a “new way of interacting with the information conveyed by an alarm system.” The Court could have stopped there, but decided to address the question of even if the asserted claims were found to be directed to an abstract idea, is there something more that would transform the subject matter into a patent eligible invention. The Court concluded there was, and interestingly, the Court relied upon the USPTO Examiner’s finding that the claimed invention was novel and non-obvious (a required result for a patent to be granted), and the PTAB’s refusal to institute an inter partes review on obviousness grounds, to find that the claimed subject matter was not well-known or conventional for purposes of Step 2 in the Section 101 analysis. If this opinion, and its rationale on Step 2 of the Section 101 analysis holds up, this case will support the argument that the PTAB’s refusal to institute review of a patent is good evidence under Step 2 of the Section 101 analysis that the technology is not well-known, conventional, or routine.
3. The Federal Circuit issued an opinion in the design patent context that clarifies the scope of design patent protection. In the case, the design patent applicant sought to cover a pattern in an overlapping “Y” design shown on page 3 of the slip opinion. The original application referred to the design as a pattern for furniture and a design for a furniture part. None of the figures in the design patent, which typically govern what a design patent covers, should an item of furniture or any furniture part. The application was rejected by the Patent Office which, following its Rules, required the title of the application to recite a particular article for the design. The patent Examiner proposed a “Pattern for a Chair,” which was accepted by the applicant, and the design patent ultimately issued. The design patent owner then filed a lawsuit against a company making baskets using the same or similar overlapping “Y” pattern. The defendant filed a motion to dismiss for failure to state a claim arguing that a design patent for a pattern applied to a chair could not be infringed by a basket having the same or similar pattern. The district court granted the motion to dismiss finding that the design patent covered the pattern as applied to a chair, and as such, the pattern on a basket could not infringe the design patent. On appeal, the Federal Circuit affirmed, finding that allowing design patents on what would essentially amount to a two-dimensional surface would turn design patent law on its head. The Federal Circuit held that, “claim language [in a design patent] can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.” In other words, because a design patent can only be obtained for an article of manufacture, and because the scope of a design patent is typically determined by its drawings, in a situation where the drawings do not show an article of manufacture, the recitation of an article of manufacture in the claim can serve to limit the design depicted in the drawings to a particular application. The Federal Circuit relied on Supreme Court precedent, long-standing Patent Office practice, and CFRs (Code of Federal Regulations) in force for many years to reject the argument about extending design patent protection to design patterns irrespective of how such patterns are applied. Interestingly, the plaintiff asserted for the first time in its reply brief that its design is akin to a “panel,” which could be the article of manufacture as in the Apple v. Samsung litigation. The Court found that the plaintiff waived this argument by arguing for the first time on appeal, but also disposed of the argument by distinguishing the alleged “panel” in this case from the “panel” in Apple v. Samsung. The takeaway is that design patents are defined by the article of manufacture shown in the drawings, but if there is no article of manufacture in the drawings (e.g., the drawings only show a pattern to be applied to an article of manufacture), the title of the design patent, or reference in the claim, to an article of manufacture will limit the design patent to the recited article of manufacture.
