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Therasense
ǀ
The Case
Federal Circuit (en banc)
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May 25, 2011
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Therasense ǀ Issue
What must be shown in order to prove inequitable
conduct?
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Therasense ǀ Facts
 Abbott filed a U.S. patent application for a disposable blood
glucose test strip.
 During prosecution, Abbott submitted a declaration to
overcome a prior art rejection.
 Declaration allegedly was contradicted by arguments that
Abbott previously made during prosecution of European
counterpart.
 Abbott did not tell the PTO examiner about the earlier
arguments.
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Therasense ǀ Holding
 Inequitable conduct requires clear and convincing evidence
that:
(1) the applicant specifically intended to deceive the PTO,
e.g., the applicant knew of an undisclosed reference, knew
that it was material, and made a deliberate decision to
withhold it; and
(2) the alleged misconduct was but-for material, e.g., if the
PTO had been aware of an undisclosed reference, it would
not have allowed at least one claim.
 Exception to but-for materiality in cases of affirmative
egregious misconduct.
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Therasense ǀ Lessons
#1 Patent owners: Use Therasense and Exergen to dispose of
unfounded inequitable conduct allegations early in the case.
#2 Accused infringers: Inequitable conduct is still a potent
defense, but some discovery may be needed before it can be
adequately pled.
#3 Patent applicants: Duty of disclosure is alive and well.
Familiarize yourself with PTO’s proposed new rule. When in
doubt, disclose.
#4 Supreme Court may have the last word.
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CyberSource
ǀ
The Case
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Federal Circuit
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Aug. 16, 2011
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CyberSource ǀ Issue
Whether claims 2 and 3 of
CyberSource’s ’154 patent
recite patent-eligible
subject matter under 35
U.S.C. § 101?
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CyberSource ǀ Claim 3 Holding
 Claim 3 fails the Bilski “machineor-transformation” test.
 “All of claim 3’s method steps
can be performed in the human
mind, or by a human using a
pen and paper.”
 A method that can be performed
by human thought alone is
merely an abstract idea and is
not patent-eligible under § 101.
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CyberSource ǀ Claim 2 Holding
 Claim 2 is a “Beauregard” claim,
i.e., a claim to a computer readable
medium (e.g., a disk, hard drive, or
other data storage device)
containing program instructions for
a computer to perform a process.
 Court rejected CyberSource’s
argument that coupling the method
of claim 3 with a manufacture or
machine renders it patent-eligible.
 Must look to the underlying
invention for patent-eligibility
purposes.
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Ultramercial
ǀ
The Case
Federal Circuit
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Sep. 15, 2011
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Ultramercial ǀ Issue
Whether Ultramercial’s
’545 patent claims patenteligible subject matter
under 35 U.S.C. § 101?
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Ultramercial ǀ Holding
 § 101’s expansive categories of patent
eligible subject matter―process, machine,
article of manufacture and composition of
matter―are no more than a “coarse
eligibility filter.”
 Patent claims a practical application of the
abstract idea that advertising can serve as
currency, including steps likely to require
“intricate and complex computer
programming.” Thus, patent- eligible.
 “Unlike the claims in CyberSource, the
claims here require, among other things,
controlled interaction with a consumer via
an Internet website, something far removed
from purely mental steps.”
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Cybersource & Ultramercial ǀ Lessons
#1 Substance matters more than form: Beauregard claims do not necessarily
recite patent-eligible subject matter.
#2 DO NOT claim methods that can be readily performed entirely in one’s head.
DO claim methods directed to specific, practical applications or
improvements to technologies in the marketplace.
#3 Ultramercial’s pro-software lean: “The digital computer may be considered
by some the greatest invention of the twentieth century, and both this court
and the Patent Office have long acknowledged that ‘improvements thereof’
through interchangeble software or hardware enhancements deserve patent
protection. Far from abstract, advances in computer technology—both
hardware and software—drive innovation in every area of scientific and
technical endeavor.”
#4 Differing views of § 101’s role among Federal Circuit judges.
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Akamai
The Case v. Limelight ǀ
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Federal Circuit (en banc)
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2012
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Akamai v. Limelight ǀ Issue
Rehearing en banc to take place on November 18,
2011 concerning the following issue:
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Akamai v. Limelight ǀ Facts
 Akamai sued competitor Limelight for patent infringement.
 Claimed methods recited some steps performed by Limelight,
and an embedded object tagging step performed by Limelight’s
customers.
 Divided process was explicitly set forth in Limelight’s standard
customer contract.
 Limelight provided customers with instructions explaining how
to utilize its content delivery service.
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Akamai v. Limelight ǀ Vacated Panel Decision
 Direct infringement requires single party to perform every step
of a claimed method.
 There can only be joint infringement:
(1) when there is an agency relationship between the parties
who perform the method steps; or
(2) when one party is contractually obligated to the other to
perform the steps.
 No joint infringement because customers are not Limelight’s
agents and contract does not obligate customers to perform any
of the method steps.
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McKesson
v. Epic ǀ
The Case
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Federal Circuit (en banc)
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2012
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McKesson v. Epic ǀ Issue
Rehearing en banc to take place on November 18,
2011 concerning the following issues:
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McKesson v. Epic ǀ Facts
 McKesson sued Epic for inducing infringement of a patent
directed to an electronic method of communication between
healthcare providers and patients involving personalized web
pages for doctors and their patients.
 Epic licensed accused MyChart software to healthcare
providers, who offered the software as an option for their
patients. No healthcare providers required their patients to use
the MyChart software.
 Undisputed that asserted claims required at least one step
performed by MyChart users, with other steps performed by the
MyChart provider.
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McKesson v. Epic ǀ Vacated Majority Decision
 Followed Akamai and found no infringement because the
MyChart users did not perform the claimed steps as agents for
the MyChart providers, nor were they contractually obligated to
perform the steps.
 Rejected McKesson’s argument that the special nature of the
doctor-patient relationship is something more than a mere
arms-length relationship and is sufficient to attribute the
patient’s actions to the doctor.
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McKesson v. Epic ǀ Dissenting Opinion
 Judge Newman: “A patent that cannot be enforced on any
theory of infringement, is not a statutory patent right. It is a
cynical, and expensive, delusion to encourage innovators to
develop new interactive procedures, only to find that the courts
will not recognize the patent because the participants are independent entities. From the error, confusion, and unfairness of
this ruling, I respectfully dissent.”
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Akamai & McKesson ǀ Lessons
#1 Patent applicants: Draft claims to capture infringement by a
single party.
#2 Patent owners: Consider reissue for patents issued within
the last two years.
#3 Accused infringers: If a claim implicates multiple parties,
you may have a good noninfringement argument … at least
for now.
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