IP News

The Federal Circuit then addressed the likelihood of success prong of a preliminary injunction analysis, even though “having held that the district court's irreparable harm determination was an abuse of discretion, [the court] would ordinarily refrain from addressing other issues.” Id. at 12. The Federal Circuit also addressed a claim construction issue, holding that the district court erred in determining that “each” modifies “plurality of heuristic modules” on the ground that it contravened the plain meaning of the claim because the two terms are separated by a “wherein” clause. Id. at 15. The case was remanded to the district court.

Federal Circuit to Clarify Patentable Subject Matter for Software Claims

On Oct. 9, 2012, the Federal Circuit ordered a rehearing en banc of the appeal in CLS Bank Int'l v. Alice Corp., No. 11-1301. Judge William C. Bryson authored the majority opinion of the three-judge panel, which has been vacated. Judge Bryson's opinion suggests that ' 101 issues should only be reached when subject matter ineligibility is “manifestly evident.” Slip Op. at 20. The en banc order presents the following questions: 1) What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?; and 2) In assessing patent eligibility under 35 U.S.C. ' 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for ' 101 purposes?

Supreme Court to Consider Two Patent Cases

On Oct. 5, 2012, the U.S. Supreme Court granted petition for a writ of certiorari in Gunn v. Minton, No. 11-1118, and will decide whether federal courts have exclusive “arising under” jurisdiction when the sole substantive issue is the application of a patent law doctrine which is an essential element of Minton's legal malpractice claim. The appeal was taken from the Texas Supreme Court, which held that inventor Vernon Minton's patent malpractice claims must be heard in federal court pursuant to Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld LLP, 504 F.3d 1262 (Fed. Cir. 2007). Prior Federal Circuit precedent has indicated that because patent malpractice claims inherently involve substantial questions of patent law, federal jurisdiction exists.

The Supreme Court also announced on Oct. 5 that it would hear case No. 11-796, Bowman v. Monsanto Co., and would determine whether the Federal Circuit erred by: 1) refusing to find patent exhaustion in patented seeds that were sold for planting; and 2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies. The Federal Circuit case, 657 F.3d 1341, held that Monsanto's patented seeds were not exhausted when they were sold to grain elevators, and later to growers like Bowman. Id. at 1347. The Federal Circuit held that there was no exhaustion because there was an express provision in an agreement that the progeny of licensed seeds were never to be sold for planting. Id. The Federal Circuit went on to hold that, even if there had been patent exhaustion, the next generation of seeds are newly infringing articles. “Even if Monsanto's patent rights in the commodity seeds are exhausted, such a conclusion would be of no consequence because once a grower, like Bowman, plants the commodity seeds containing Monsanto's Roundup Ready' technology and the next generation of seed develops, the grower has created a newly infringing article.” Id. at 1348.

Jeffrey S. Ginsberg is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.

Federal Circuit Reverses Apple Injunction Against Samsung

On Oct. 11, 2012, the Federal Circuit issued an opinion in Apple Inc. v. Samsung Electronics Co., Ltd., et al., No. 2012-1507, reversing Judge Lucy H. Koh's grant of preliminary injunctive relief to Apple. The appeal involved one patent, 8,086,604, directed to an apparatus that searches multiple storage locations. Slip Op. at 3. Judge Koh of the U.S. District Court for the Northern District of California had granted a preliminary injunction for infringement of this patent, halting sales of Samsung's Galaxy Nexus.

The Federal Circuit panel of Judges Sharon Prost, Kimberly A. Moore and Jimmie V. Reyna held that the district court abused its discretion in finding that Apple had established a causal nexus between the harm alleged and the infringing conduct. Id. at 6. The court stated: “It is not enough for the patentee to establish some insubstantial connection between the alleged harm and the infringement.” Id. at 8. Apple had presented no evidence that directly tied demand for the Galaxy Nexus to its allegedly infringing feature, and instead made its case for nexus circumstantially by basing it on the popularity of Apple's Siri application. Id. The Federal Circuit noted that this theory was flawed, and that the causal nexus test is not satisfied “simply because removing an allegedly infringing component would leave a particular feature, application, or device less valued or inoperable.” Id. at 10. “To establish a sufficiently strong causal nexus, Apple must show that consumers buy the Galaxy Nexus because it is equipped with the apparatus claimed in the '604 patent ' not because it can search in general, and not even because it has unified search.” Id.

The Federal Circuit then addressed the likelihood of success prong of a preliminary injunction analysis, even though “having held that the district court's irreparable harm determination was an abuse of discretion, [the court] would ordinarily refrain from addressing other issues.” Id. at 12. The Federal Circuit also addressed a claim construction issue, holding that the district court erred in determining that “each” modifies “plurality of heuristic modules” on the ground that it contravened the plain meaning of the claim because the two terms are separated by a “wherein” clause. Id. at 15. The case was remanded to the district court.

Federal Circuit to Clarify Patentable Subject Matter for Software Claims

On Oct. 9, 2012, the Federal Circuit ordered a rehearing en banc of the appeal in CLS Bank Int'l v. Alice Corp., No. 11-1301. Judge William C. Bryson authored the majority opinion of the three-judge panel, which has been vacated. Judge Bryson's opinion suggests that ' 101 issues should only be reached when subject matter ineligibility is “manifestly evident.” Slip Op. at 20. The en banc order presents the following questions: 1) What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?; and 2) In assessing patent eligibility under 35 U.S.C. ' 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for ' 101 purposes?

Supreme Court to Consider Two Patent Cases

On Oct. 5, 2012, the U.S. Supreme Court granted petition for a writ of certiorari in Gunn v. Minton, No. 11-1118, and will decide whether federal courts have exclusive “arising under” jurisdiction when the sole substantive issue is the application of a patent law doctrine which is an essential element of Minton's legal malpractice claim. The appeal was taken from the Texas Supreme Court, which held that inventor Vernon Minton's patent malpractice claims must be heard in federal court pursuant to Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld LLP , 504 F.3d 1262 (Fed. Cir. 2007). Prior Federal Circuit precedent has indicated that because patent malpractice claims inherently involve substantial questions of patent law, federal jurisdiction exists.

The Supreme Court also announced on Oct. 5 that it would hear case No. 11-796, Bowman v. Monsanto Co., and would determine whether the Federal Circuit erred by: 1) refusing to find patent exhaustion in patented seeds that were sold for planting; and 2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies. The Federal Circuit case, 657 F.3d 1341, held that Monsanto's patented seeds were not exhausted when they were sold to grain elevators, and later to growers like Bowman. Id. at 1347. The Federal Circuit held that there was no exhaustion because there was an express provision in an agreement that the progeny of licensed seeds were never to be sold for planting. Id. The Federal Circuit went on to hold that, even if there had been patent exhaustion, the next generation of seeds are newly infringing articles. “Even if Monsanto's patent rights in the commodity seeds are exhausted, such a conclusion would be of no consequence because once a grower, like Bowman, plants the commodity seeds containing Monsanto's Roundup Ready' technology and the next generation of seed develops, the grower has created a newly infringing article.” Id. at 1348.

Jeffrey S. Ginsberg is a partner and Joseph Mercadante is an associate in the New York office of Kenyon & Kenyon LLP.