The Federal Circuit recently reversed and remanded a district court's denial of attorney's fees to ADS after Rothschild sued ADS for infringement.1 The Federal Circuit found that the lower court abused its discretion for (a) failing to consider Rothschild’s willful ignorance of the prior art; (b) misjudging Rothschild's conduct in other litigation and (c) improperly conflating Rule 11 with 35 USC § 285.
Authors: Minxi Rao, Ph.D., Cynthia M. Bouchez, Ph.D.
A proper invocation of §112 ¶ 6 means-plus-function claiming requires that the claim recite the functionality of the purported “means,” and not just structure, the Federal Circuit decided in Skky. Despite the presumption triggered by the word “means” in the claim term “wireless device means” and the Examiner’s understanding of the claim term as invoking §112 ¶ 6, the Court found that, because the full claim term recites structure and not function, it does not invoke §112 ¶ 6. The Court found that the claims did not recite any functions for the claimed “wireless device means” to perform, and that the term “wireless device” is commonly used to designate structure.
Before KSR, it was thought that obviousness under 35 USC § 103 could not be demonstrated by showing that a particular combination was obvious to try. The Supreme Court clarified that "when there is a . . . problem and there are a finite number of identified, predictable solutions," and if pursuing the known options leads to the anticipated success, "it is likely the product not of innovation but of ordinary skill and common sense. In that instance, the fact that a combination was obvious to try might show that it was obvious under § 103." Using the "obvious-to-try" rationale, in a recent opinion the Federal Circuit cited the patent application's own disclosure to uphold the USPTO's rejection of a method of treating cancer.
Over the past seven years, the Supreme Court decisions in Mayo, Myriad and Alice, and their impact on patent eligible subject matter, have dominated the intellectual property landscape for both patent practitioners and litigators. Former Chief Judge Michel even recently discussed the significant (and many consider, negative) impact that these decisions have had patents and innovation. Technologies ranging from personalized medicine and diagnostics, to DNA primers. to programs for monitoring electric power grids have all been found ineligible for patent protection under the current laws.