Johnny Lam, Associate

Publications & Media

Federal Circuit Court Decisions for Week Ending May 9, 2014

Microsoft Corp. v. Datatern, Inc., No. 2013-1184 (May 5, 2014) (precedential) (2-0) Patent Nos. 5,937,402 and 6,101,502

Key points:

  • A supplier has established that a substantial controversy exists for a declaratory judgment action when the patentee sued customers of the supplier using claim charts showing that the supplier provides the customers with the necessary components to infringe and with instruction manuals for using the components in an infringing manner.
  • The scope of declaratory judgment jurisdiction is determined on a product-by-product basis according to the claim charts used in customer suits.

In re Thomas G. Packard (May 6, 2014) (precedential) (Per curiam) Patent Application Serial No. 12/004,324

Key points:

  • When the USPTO issues a rejection that identifies ways in which claim language is ambiguous, and the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the requirements of 35 U.S.C. § 112(b).
  • A satisfactory response from the applicant may be a modification of the language identified as unclear, a separate definition of the unclear language, or in an appropriate case, a persuasive explanation for the record of why the language at issue is not unclear.

In re Roslin Institute (Edinburgh), No. 2013-1407 (May 8, 2014) (precedential) (3-0) Patent Application Serial No. 09/225,233

Key points:

  • A cloned animal’s genetic identity to its donor parent does not necessarily render the clone as ineligible subject matter under § 101 in every case.
  • Claims that merely recite the clone itself and do not recite any markedly different characteristic from its donor parent, constitute ineligible subject matter under § 101.

General Electric Co. v. Mitsubishi Heavy Industries Ltd., No. 2013-1170 (May 8, 2014) (precedential)(3-0) Patent Nos. 6,921,985 and 6,924,565

Key point:

  • In order to apply the “rule of reason” to inventorship testimony, the putative inventor must first provide credible testimony that only then must be corroborated.

InTouch Technologies, Inc., v. VGo Communications, Inc., No. 2013-1201 (May 9, 2014) (precedential) (3-0) Patent Nos. 6,346,962, 6,925,357, and 7,593,030

Key points:

  • Expert testimony proffered to invalidate patent for obviousness must identify motivation to combine prior art references, focus on the relevant time frame at the time of the patented invention, and consider objective evidence of nonobviousness.
  • Substantial evidence must support jury finding of non-infringement.

Oracle America, Inc., v. Google, Inc., No. 2013-1021 (May 9, 2014) (precedential) (3-0)

Key point:

  • An original work, even if it serves a function, is copyrightable as long as the author had multiple ways to express the underlying idea.

Monsanto Company v. E.I. DuPont De Nemours and Co., No. 2013-1349 (May 9, 2014) (precedential) (3-0) Patent No. RE 39,247E

Key point:

  • Statements by a party directed to its subjective belief as to the meaning of a license, made by a party seeking reformation of the license after the district court granted partial judgment on the pleadings that the license was unambiguous, are not legal arguments, but related to issues of material fact, and subject to sanctions for misrepresentation.

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