June 9, 2016
Eric P. Carnevale Robert L. Lichter
June Federal Circuit Review
For only the second time since the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank, the Federal Circuit found a software patent to cover patent-eligible subject matter under Section 101 of the Patent Act.
Enfish is the owner of several patents related to “self-referential” databases. According to Enfish, traditional databases relied on a “relational” model, wherein different types of data were stored in separate tables, with static columns defining the information contained in each table. Enfish’s self-referential model differed from this in two ways: 1) all of the information in the database could be stored in a single table; and 2) a user could dynamically create new table columns by adding a new row defining the column.
Enfish sued Microsoft, alleging it infringed the self-referential database patents. Microsoft defended, in part, by arguing that the patents were directed to an abstract idea, and were therefore not patent eligible subject matter.
The district court agreed with Microsoft, invalidating the asserted claims using the Supreme Court’s Alice framework for evaluating patentable subject matter challenges under Section 101. In the first step of the Alice test, the court defined the abstract idea as “storing, organizing, and retrieving memory in a logical table” or more simply “the concept of organizing information using tabular formats.” In the second step, the court found that the claim limitations individually and as an ordered whole did not transform the nature of the claim into a patent-eligible invention.
On appeal, the Federal Circuit objected to the district court’s description of the abstract idea as too untethered from the claim language. The claims were not directed to any form of storing tabular data, but to a specific self-referential table for a computer database. This constituted a specific improvement to computer functionality, and not the abstract use of a mathematical formula on any general purpose computer. It also mattered, for the court’s analysis, that the claims incorporated two means-plus-function limitations, which the district court had construed to each require detailed multi-step algorithms to perform. Because the claims were not abstract under Alice step 1, the Federal Circuit did not proceed to step 2.
Claims directed to a specific type of database data structure were patent eligible, and not merely an abstract idea performed on a general purpose computer. Means-plus-function claim limitations may help support the patentability of the claims.
Patent Owner Bears the Burden of Showing with Particularity that Amended Claims in IPR are Patentable
In Aqua Products, the Federal Circuit held that the Patent Trial and Appeal Board did not abuse its discretion in an inter partes review by placing the burden on the patentee to prove its proposed substitute claims were patentable over the prior art of record.
Aqua Products is the assignee of a patent for an automated swimming pool cleaner having an angled jet drive propulsion system, which became the subject of a petition for IPR filed by a competitor. Aqua Products moved to amend its independent claims, adding to a vector limitation, in which the jet drive has a downward vector force, and a directional movement limitation, in which the wheels control the direction of movement of the pool cleaner. Two of the independent claims were further amended to add additional limitations. Aqua Products only argued that the prior art did not teach the vector limitation. It referenced the other amendments, but presented no arguments that they would have been non-obvious.
The Board denied Aqua Products’ motion to amend. It found the prior art of record taught the vector limitation. The Board dismissed Aqua Products’ other amendments, concluding without analysis or evidence that they were within the ordinary skill of an artisan.
Aqua Products appealed to the Federal Circuit, arguing that the PTAB impermissibly placed the burden on the patentee to show non-obviousness, and that the PTAB abused its discretion by denying the motion to amend without considering all of the new limitations.
The Federal Circuit affirmed the Board’s decision. Patent Office regulations place the burden for any motion to amend on the patentee to show that proposed amendments would make the claims patentable over the prior art of record. Also, the Board is only required to fully consider the particular arguments presented by the patentee and to provide a reasoned explanation why those particular arguments are unpersuasive. To hold otherwise would require the Board to fully reexamine the proposed claims, effectively shifting the burden from the patentee to the Board. Thus, the court held that there was no abuse of discretion in denying the motion to amend because Aqua Products’ sole argument regarding the vector limitation was rebutted.
Arguments regarding the patentability of substitute claims in an IPR must address all patentable features and any objective indicia of non-obviousness. The Board need only respond to the particular arguments presented by the movant.
Boilerplate Reservation of Right to Assert Doctrine of Equivalents Failed to Satisfy Local Patent Rules
In Howmedica Osteonic, the Federal Circuit held that a district court did not abuse its discretion in applying its local rules to preclude the patentee from alleging infringement under doctrine of equivalents, even though the patentee reserved the right to argue equivalents.
Howmedica sued certain medical technology companies, including Zimmer, Inc., for infringement of a patent for a hip implant. Howmedica’s initial infringement contentions asserted literal infringement and included boilerplate language stating that, to the extent any claim limitations were not deemed to be literally infringed, they were infringed under the doctrine of equivlents (“DOE”).
The New Jersey District Court’s Local Patent Rules require a patentee’s infringement contentions to state whether each limitation of each asserted claim is alleged to be literally present or present under the DOE. The patent rules also allow the patentee to amend its infringement contentions for good cause, such as when the court’s claim construction is different from the construction relied on by the patentee when drafting its contentions.
Howmedica did not move to amend its contentions, but argued that its boilerplate reservation was sufficient to support its argument that Zimmer infringed under the DOE. The district court found that the boilerplate language did not satisfy the local rules, and granted summary judgment of no infringement to Zimmer. Howmedica appealed.
The Federal Circuit affirmed the district court’s claim construction and grant of summary judgment. In so holding, the court supported the district court’s finding that a boilerplate reservation of rights failed to comply with the local rules regarding the assertion of infringement under the DOE. A court is entitled to require early disclosure of infringement and invalidity contentions, and require amendments to contentions to be filed with diligence.
Where a district court’s local rules require particularized allegations of infringement under the doctrine of equivalents, boilerplate language reserving the right to assert a DOE theory will likely not be sufficient.
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