Weekly IP Takeaways

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

1. In an interesting opinion in terms of the not-so-“hidden” message in it, the Court of Appeals for the Federal Circuit invalidated another patent covering a medical diagnostic test. This recent trend of invalidating medical diagnostic test patents under 35 U.S.C. Section 101 as essentially a law of nature began with the Ariosa v. Sequenom panel decision in the Federal Circuit, the Federal Circuit’s denial of rehearing en banc, and the Supreme Court’s ultimate denial of certiorari. The interesting aspect of this latest decision, which pertains to a patent directed to diagnosing myasthenia gravis, is that the majority in footnote 4 noted that patents on medical diagnostic tests serve the underlying purpose of the patent laws, but that precedent compelled the invalidation of the patent. Judge Newman, in dissent, was quite bold in writing (in bold and italics in the original) that, “[t]he claims are for a multi-step method of diagnosis, not a law of nature.” Basically, the opinion is an invitation to Congress or the Supreme Court to change the law.

2. In another Federal Circuit opinion, that is garnering attention, not all positive, the Federal Circuit decided not reconsider en banc the denial of a writ of mandamus filed by Google regarding whether the presence of its servers in a third party company’s facility in the Eastern District of Texas was sufficient to support proper venue in East Texas. The Federal Circuit decided 9-3 not to reconsider the decision en banc, largely on procedural grounds. A vocal dissent, however, suggested that the issue was one of particular importance and likely recurrence in today’s e-commerce-driven economy such that the Federal Circuit should decide the issue. A number of district courts have addressed the issue, and the dissent believes the Federal Circuit missed an opportunity to conclusively address the issue with this case.

3. In still another Federal Circuit opinion, the Federal Circuit went through a rather detailed recitation of its claim construction analysis, not so much to revise the claim construction rules, but to reaffirm the existing rules in a single case, and also, to reiterate that limitations are not to be imported from the specification of the patent into the claims, unless the patentee clearly intended to so limit its claims. The Federal Circuit noted the challenge of reading the claims in light of the specification versus importing limitations from the specification into the claims. It said that the key to avoiding improperly importing limitations from the specification into the claims is “to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.” How this latter statement might impact claim construction moving forward remains to be seen. In all likelihood, patentees will generally push for broader claims to prove infringement, and accused infringers narrower claims to avoid infringement.

4. In an interesting, recent development, Apple is apparently moving, or contemplating moving, its retail stores out of the Eastern District of Texas, in order to avoid being subject to lawsuits in what has generally been known as a plaintiff-friendly federal judicial district. One article describing this is here. While your humble “blogger” believes that the “patent troll” narrative has been and now is overblown, if the Eastern District of Texas has not been kind to you, moving your physical locations out of the district is not a bad idea. Apple has a right to put its stores where it wants, even if it is to serve the relatively obvious purpose of avoiding the Eastern District of Texas court.