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Last week, the U.S. District Court for the Northern District of Illinois granted defendant Rocco Mossuto's Motion for Summary Judgment on plaintiff St. Xavier University's ("SXU") Lanham Act False Designation of Origin claim. Mossuto had been terminated as head baseball coach for SXU after ten years. Shortly after being terminated, Mossuto used the SXU Twitter Account to tweet regarding, among other topics, the circumstances leading up to his termination. Mossuto moved for summary judgment on the grounds that use of the Twitter Account to provide information did not constitute a "commercial use" because it was not in connection with goods or services as required by Section 43(a) of the Lanham Act. The Court agreed and granted Mossuto summary judgment on those grounds. In so holding, the Court rejected SXU's argument that posting information on a social media service in connection with a trademark is commercial speech subject to the Lanham Act. The Court observed that the alleged trademark infringement only took place for a few hours. The Court further commented as follows: "The real issue seems to be that Mossuto used the Twitter Account as a platform to criticize SXU's reasons for terminating his employment. Such a use is not actionable under the Lanham Act." The Court appears to have viewed the short-lived duration of the accused activity, together with the nature of the tweets, as not warranting a trial in the case, because the Opinion seems to misapply the law. Providing information through a social media account such as Twitter certainly seems to be a "service" for Lanham Act purposes. Further, providing entertainment services through a social media account (which Mossuto's tweets also may be characterized as) likewise constitutes a "service." These principles may be confirmed by searching the Trademark ID Manual for phrases such as "providing information" and "entertainment services."

In Apple v. MPH Tech., Apple appealed the PTAB's denial of its IPR petition, which had challenged on obviousness grounds several claims of MPH's patent directed to methods for ensuring secure forwarding of a message in a telecommunication network. The Federal Circuit affirmed the PTAB's denial of Apple's IPR petition. The Court held that Apple was precluded from challenging the PTAB's claim construction because it had stipulated to the correctness of the construction before the PTAB. The Federal Circuit's opinion provides a helpful reminder, whether in a patent case or otherwise, to avoid if at all possible taking positions that may limit the arguments available on appeal. Even if Apple did not wish to expend significant resources litigating the claim construction issue at the PTAB, it would have been more prudent to propose the alternative claim construction and then argue that, even if one were to accept MPH's claim construction, the challenged claims would have been obvious.

In USC v. Facebook, the Western District of Texas (by Judge Albright) granted defendant Facebook summary judgment and held the asserted patent claims invalid under Section 101 for being directed to patent ineligible subject matter. The asserted patent claims were directed to methods for predicting intent of a visitor to a website. The asserted method claims involved a series of steps that included, generally, processing activity of a website visitor on the website, inferring the user's intent based on that activity, requesting that the user confirm that inferred intent, processing the associated data related to confirmed intent, making recommendations for web pages to visit based on the data so compiled, requesting that the user rank the quality of the recommendations, and storing the associated data regarding the quality of the recommendations. The Court held that the asserted patent claims were directed to ways of organizing information based on a user's intent in a manner analogous to a librarian identifying books for a student in a school library. The Court observed that the asserted patent did not disclose technological improvements to a computer or to a network platform. In so holding, the Court highlighted the absence of technical details regarding how the method would be implemented. The Court repeatedly noted that the claims, and the specification, referred merely to generalized, functional results. This case highlights the importance in patent application drafting in the computer software space of including technical detail regarding how claimed processes will work. Perhaps one helpful way to interpret this Opinion is that, if a layperson without training in computer programming or computer science can fully understand the disclosure, then the level of abstraction may be too high and the patent may be particularly vulnerable to being invalidated under Section 101. Of course it may still remain to be seen whether or not the Federal Circuit agrees with Judge Albright's analysis in this case.

The Federal Circuit's decision last week in Qiagen provides a helpful reminder that conclusory assertions of reasonable expectation of success, even when offered by a qualified expert, are insufficient to support an obvious challenge. A viable reasonable expectation of success argument requires evidentiary support or, at the very least, sound reasoning grounded in fact.

The Federal Circuit's opinion in Raytheon v. GE, issued on April 16, contains an excellent discussion of the requirement that the prior art must enable a claimed invention in order to invalidate the claim(s). The opinion clarifies that, for an obviousness attack, it is the combination of prior art teachings relied upon that must enable the claimed invention and that it is not necessary that each reference in the prior art combination enable the claimed invention; nor is it necessary that each reference be self-enabling. The opinion observes, however, that where a single reference is relied upon for an obviousness argument, then the portion of the reference relied upon must be self-enabling and must enable the claimed invention. For these purposes, there is no distinction between between anticipation and single-reference obviousness; i.e., in both, the portion of the reference relied upon must be both self-enabling and must enable the claimed invention.

The Federal Circuit, in In re Board of Trustees of the Leland Stanford Junior Univ. issued on Thursday, rejected an argument that a computerized algorithm that improves the accuracy of formulas in the prior art for determining "haplotype phase in a collection of unrelated individuals" is patent eligible. The Court left upon the question of whether the claimed computerized algorithm might be patent eligible on the grounds that it increases the computing efficiency of prior art algorithms. This is an informative opinion that provides valuable guidance for both patent owners and parties challenging patents on 101 grounds.

This Federal Circuit on Friday issued this precedential opinion in Synchronoss Techs. v. Dropbox. The Court held that the asserted claims were invalid for indefiniteness because they recited what was technologically impossible. Specifically, the Court held that the asserted claims, which required that digital media files contain directories of digital media files, constituted an impossibility and were "nonsensical." The patentee contended that those skilled in the art would understand what this claim language meant. The Court reasoned that, even if that is true, claims that fail to recite what the patentee claims as the invention are indefinite. In the discussion of this issue, the Court notes that the patentee did "not dispute that the claims contain an impossibility." One might consider whether the holding would have been the same without this concession by the patentee; e.g., if the patentee argued that, based on its proposed claim construction, the claims did not in fact contain an impossibility. This could be viewed as a matter of semantics but it also could potentially have been the difference between the claims surviving this indefiniteness argument. Courts, understandably and justifiably, take every opportunity to base their holdings on admissions by the parties.

The Fed. Cir. reversing the district court, held today that a party may properly move for an award of attorneys' fees and costs after the filing of a joint stipulated voluntary dismissal with prejudice.

The CAFC's opinion in In re Clarke (issued yesterday) contains a useful point to keep in mind when prosecuting patent applications - that arguing prosecution history disclaimer is not an option during prosecution but rather only once the patent has issued.

In this precedential opinion, the CAFC held, among other things, that an IPR petitioner may not join to its IPR petition, its own, second, IPR petition directed to the same patent. In so holding, the CAFC held that the PTAB’s decision in Proppant, issued by the PTAB's POP, which held that such “same-party joinder” was permissible, was decided incorrectly. Facebook had filed its second IPR petition after the patent-holder Windy City had identified which patent claims it was asserting against Facebook in the related district court litigation. The CAFC also held that the governing statute (35 U.S.C. §315(c)) does not permit an IPR petitioner to join new issues into its own pending IPR petition, including new issues that would otherwise be time-barred.

In Quest Integrity v. Cokebusters (issued today), the Federal Circuit noted that the on-sale bar applies to the rendering of services, for compensation, using a claimed computer-readable medium or system that generates a “product.”

In a patent-holder friendly decision today in Endo v. Actavis, the Federal Circuit, in affirming the district court’s rejection of Defendants’ obviousness argument, held that disclosure of the claimed purity level in prior art FDA correspondence did not bridge the gap where the allegedly invalidating prior art combination was not otherwise determined to provide for a reasonable expectation of success. In reaching its decision, the Court reasoned as follows: “The FDA communications introduced a market force incentivizing purification of oxymorphone to the level of the oxymorphone claimed by the Asserted Claims. However, the FDA communications recite a goal without teaching how the goal is attained.” (P. 20)(internal citations omitted).

In ThermoLife Int’l v. GNC Corp. handed down today, the Federal Circuit affirmed the district court’s exceptional case finding based upon Plaintiffs having conducted an inadequate pre-suit investigation and Plaintiffs having asserted the patents-in-suit in other cases against more than six dozen defendants where the evidence “strongly suggest[ed]” that Plaintiffs failed to “carefully review[]” their infringement claims prior to filing the cases. (P. 13). What is particularly interesting about this case is that it went to trial only on defendants’ invalidity and unenforceability claims; no judgment was ever rendered on infringement (against any defendant, in any of the cases). And yet Defendants prevailed on their argument that, had Plaintiffs properly investigated their infringement claims prior to bringing the case, it would have been clear based on the product labels for the accused products together with some simple testing of the accused products (which were publicly available), that Defendants’ accused products did not infringe.

In Trading Techs. Int’l v. IBG, issued by the Federal Circuit on Tuesday, the Court held that claims directed to a method for displaying profit and loss information specific to a particular trade along a value axis on a graphical user interface were patent ineligible. The Court highlighted that the technological aspect of the claims merely involved the use of a generic computer as a tool for presenting the P&L data. In arriving at its decision, the Court reasoned that “the purported advance is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.” (PP. 9-10) (internal citations and quotations omitted).

Posted on LinkedIn on May 6, 2019, at 5:02 pm (CDT). In the Federal Circuit’s recent decision in Rosetta-Wireless v. Samsung, the Court held that the patent-holder failed to establish the required nexus between the alleged objective indicia of nonobviousness (industry praise and NIH funding) and the specific features of the allegedly inventive technology recited in the claims (as opposed to the technology more generally).