IP News

The Federal Circuit recognized that under In re Doll, 419 F.2d 925 (C.C.P.A. 1970) (en banc) an applicant is “not barred from making further broadening changes after the two year period in the course of the prosecution of the reissue application.” Slip Op. at 9-10. The court noted that under 35 U.S.C. ' 120, subsequently filed applications may relate back to previously filed applications if the continuation was filed while the parent application was still pending. Id. However, it rejected the Board's argument that Doll should be limited to situations where the subsequently filed application relates to the subject matter of the timely filed parent broadening reissue application. Id. The court noted that by definition every claim must be different in scope than other claims in a patent. Moreover, requiring new claims to relate back to the embodiment of the original claims would be difficult to administer. Id.

Abstract Method for Real Estate Investment Found Ineligible for Patent
Protection

On Feb. 27, 2012, the Federal Circuit issued an opinion in Fort Properties, Inc. v. American Master Lease LLC, Docket No. 2009-1242, upholding the district court's finding that the patent was invalid as non-eligible subject matter under ' 101 of the Patent Act.

The patent claims at issue pertain to methods for avoiding taxes incurred in selling real estate by encumbering the property with a contract and then dividing up deed shares of the property subject to the contract. The method aimed to take advantage of tax exemptions pursuant to 26 U.S.C. ' 1031. The district court invalidated all the claims applying the machine-or-transformation test and found the claims were not tied to a particular machine or apparatus nor did they transform anything. Slip Op. at 5.

The Federal Circuit affirmed, holding that the claimed real estate investment tool is an abstract concept that “cannot be transformed into patentable subject matter merely because of connections to the physical world through deeds, contracts, and real property.” Id. at 10. Further, the court found that merely adding a computer limitation that required the method to be performed by a computer would not transform the abstract idea into patentable subject matter. Id. at 12-13.

Jeffrey S. Ginsberg is a partner in the New York office of Kenyon & Kenyon LLP. Erik Kane is an associate in the firm's Washington, DC, office.

Broadening Reissue Patent Application Entitled to Benefit of Filing Date of Earlier Application

On March 5, 2012, the U.S. Court of Appeals for the Federal Circuit issued an opinion in In re Staats, Docket No. 2010-1443, reversing the USPTO decision rejecting claims of a broadening reissue application as being untimely filed pursuant to 35 U.S.C. ' 251. While ' 251 imposes a two-year time limit on filing for a broadening reissue patent, the court determined that it will look back to the earliest filed broadening reissue application filing date and not the filing date of the subject application.

Staats was issued a patent pertaining to management of isochronous data transfer, such as transfer of real-time video data. As originally issued, the patent disclosed two embodiments, but the claims were directed solely to the first embodiment. Within the two-year window after issuance, Staats filed a first broadening reissue application relating to the first embodiment. During pendency of the first broadening reissue application, Staats filed a second broadening reissue application as a continuation from the first broadening reissue application that again related to the first embodiment. While the second broadening reissue application was pending, Staats filed a third broadening reissue application as a continuation of the second application. However, claims in this application were directed to the second embodiment.

The Federal Circuit recognized that under In re Doll, 419 F.2d 925 (C.C.P.A. 1970) (en banc) an applicant is “not barred from making further broadening changes after the two year period in the course of the prosecution of the reissue application.” Slip Op. at 9-10. The court noted that under 35 U.S.C. ' 120, subsequently filed applications may relate back to previously filed applications if the continuation was filed while the parent application was still pending. Id. However, it rejected the Board's argument that Doll should be limited to situations where the subsequently filed application relates to the subject matter of the timely filed parent broadening reissue application. Id. The court noted that by definition every claim must be different in scope than other claims in a patent. Moreover, requiring new claims to relate back to the embodiment of the original claims would be difficult to administer. Id.

Abstract Method for Real Estate Investment Found Ineligible for Patent
Protection

On Feb. 27, 2012, the Federal Circuit issued an opinion in Fort Properties, Inc. v. American Master Lease LLC, Docket No. 2009-1242, upholding the district court's finding that the patent was invalid as non-eligible subject matter under ' 101 of the Patent Act.

The patent claims at issue pertain to methods for avoiding taxes incurred in selling real estate by encumbering the property with a contract and then dividing up deed shares of the property subject to the contract. The method aimed to take advantage of tax exemptions pursuant to 26 U.S.C. ' 1031. The district court invalidated all the claims applying the machine-or-transformation test and found the claims were not tied to a particular machine or apparatus nor did they transform anything. Slip Op. at 5.

The Federal Circuit affirmed, holding that the claimed real estate investment tool is an abstract concept that “cannot be transformed into patentable subject matter merely because of connections to the physical world through deeds, contracts, and real property.” Id. at 10. Further, the court found that merely adding a computer limitation that required the method to be performed by a computer would not transform the abstract idea into patentable subject matter. Id. at 12-13.

Jeffrey S. Ginsberg is a partner in the New York office of Kenyon & Kenyon LLP. Erik Kane is an associate in the firm's Washington, DC, office.