Jun 5, 2018Legal
Fresh From the Bench: Latest Federal Circuit Court Cases


Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No. 2017-1452 (Fed. Cir. May 31, 2018)


Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. May 31, 2018)

In these two, published, precedential orders denying rehearing en banc, the Federal Circuit paved the way for significantly more involved and prolonged litigation concerning whether patents claim ineligible subject matter under 35 U.S.C. § 101, and the likelihood that some juries may be called upon to decide patent eligibility issues.

In 2014, the Supreme Court articulated a two-part test for determining patent eligibility in AliceAlice instructed courts to determine (1) whether a patent claims abstract ideas, laws of nature, or natural phenomena; and (2) whether the claims can be implemented using well-understood, routine and conventional tools.  If the claims lack an “inventive concept,” they are ineligible for patent protection.  In most cases, the second step invoked concepts such as basic economics, fundamental computer systems, or other ideas that were so “well understood” that the courts could take judicial notice of such.  Because of this, and the fact that § 101 eligibility is a question of law, courts routinely made dispositive rulings on patent eligibility on the pleadings or on summary judgment.

Read More


In re: Timothy D. Durance, Appeal No. 2017-1486 (Fed. Cir. June 1, 2018)

In an appeal from a patent examination, the Federal Circuit reversed and remanded.  The examiner had held the claims invalid as obvious.  Durance appealed to the PTAB, which affirmed the examiner’s rejection.  The PTAB declined to consider certain evidence submitted by Durance in his reply brief, citing 37 C.F.R. § 41.41.  On appeal the Federal Circuit observed that the examiner’s arguments shifted numerous times during prosecution and held that “under these circumstances of multiple shifting articulations,” there was a lack of clarity about the basis of the Board’s ultimate finding.  The Court also held that the reply evidence should have been considered because it was submitted in response to new arguments raised for the first time in the examiner’s answering brief.

Opinion can be found here

Zeroclick, LLC v. Apple Inc., Appeal No. 2017-1267 (Fed. Cir. June 1, 2018)

In an appeal from a district court summary judgment ruling of invalidity for indefiniteness, the Federal Circuit reversed.   The district court had held that two claims terms that incorporated the terms “program” and “user interface code” to be means-plus-function terms under 35 U.S.C. § 112(f), and found that they failed to disclose sufficient structure, as required under 35 U.S.C. § 112(b), thus rendering the terms indefinite.  The Federal Circuit held that the terms were not means-plus-function terms.  The court also held that the terms were not “nonce” terms as used in the patent. 

Opinion can be found here.

Ericsson Inc. v. Intellectual Ventures I LLC, Appeal No. 2016-1671 (Fed. Cir. May 29 2018)

In an appeal from an inter partes review, the Federal Circuit reviewed the PTAB’s decision upholding the validity of a patent in the telecommunications field.  The PTAB had found 16 claims not invalid after finding the independent claim not invalid.  The Federal Circuit reversed, finding the independent claim both anticipated over a patent “sharing significant disclosure” and obvious over a combination of art.  The Court remanded for a determination of the patentability of the 15 dependent claims.  Judge Wallach dissented, opining that “[t]he majority improperly steps out of the appellate role and substitutes its own interpretation of the evidence for the PTAB’s.”  Judge Wallach also opined in a footnote that the majority opinion was not a holding but was entirely advisory, noting that, by finding the claims both anticipated and obvious, neither determination was necessary to its decision.

Opinion can be found here.


Written by: Scott D. Eads and Nika F. Aldrich, Schwabe Williamson & Wyatt

Contributors: Cristin Wagner and Angela Addae



Be the first to comment.