On Thursday the SCOTUS issued its opinion in Life Technologies Corp. v Promega Corp. Below is an excerpt from the Court’s Syllabus, and the full opinion is attached here 14-1538_p8k0
Congress enacted §271(f) …to fill a gap in the enforceability of patent rights by reaching components that are manufactured in the United States but assembled overseas. Consistent with Congress’s intent, a supplier may be liable under §271(f)(1) for supplying from the United States all or a substantial portion of the components of the invention or under §271(f)(2) for supplying a single component if it is especially made or especially adapted for use in the invention and not a staple article or commodity.
But, as here, when a product is made abroad and all components but a single commodity article are supplied from abroad, the activity is outside the statute’s scope.
In a 2-1 decision, a Federal Circuit panel held today that patent claims directed to a method of screening cancer therapeutics using isolated DNA sequences are drawn to patent-eligible subject matter. Association for Molecular Pathology v. Myriad Genetics, Inc., __ F.3d __ (Fed. Cir. 2012)(Lourie, J.) The same panel held that claims directed at methods involving merely “comparing” or “analyzing” DNA sequences are unpatentable as abstract ideas. The decision, came after the Supreme Court vacated and remanded a prior Federal Circuit ruling in the same case for reconsideration in view of the Supreme Court’s rationale in Collaborative Services v. Prometheus, Inc., 566 U.S. ___, 132 S. Ct. 1289 (2012).
It is hard to underestimate the importance of this decision. It is widely expected that this case will be back before the Supreme Court.
Tomorrow, the USPTO will conclude publication of all final rules and practice guides implementing the provisions of the Leahy-Smith America Invents Act which become effective on September 16, 2012. The final rule package (which also includes Final Rules published on August 6, 2012 and July 31, 20102) consist of:
In addition, the USPTO will also publish tomorrow its Office Patent Trial Practice Guide covering new procedures for inter partes review, post grant review and business method patent review proceedings commencing after September 12, 2102 as well as derivation proceedings commencing after March 16, 2013.
Summary: After several months of waiting, the US Supreme Court finally issued its opinion in the matter of In Re Bilski – which addresses the issue of what constitutes a patentable “process” under 35 USC Section 101. While the Court make clear that business methods and software are not per se unpatentable, the supremes level several material issues up for grabs. This panel discussion comprising three well respected Florida patent litigation attorneys will address application of In Re Bilski to our practices, how Florida district courts may apply this opinion, and how Florida patent practitioners should counsel clients as to subject matter concerns.
Our Panel (click for materials):
Ury Fischer, Lott & Friedland (Coral Gables)
Doug McDonald, Carlton Fields (Tampa)
Steve Peretz, Pertez, Chesel & Herrmann (Miami)
Magistrate Torres recently issued a Report and Recommendation in a Southern District patent case dealing with personal jurisdiction exclusively premised on the Defendant’s website. The Magistrate utilized, with reservations, the widely adopted Zippo Mfg. v. Zippo Dot Com, Inc., 952 F.Supp. 1119 (W.D.Pa. 1997) “sliding scale” test to determine that the defendant’s website was “interactive” where it merely provided links to resellers and distributors of accused products but allowed users to create an account to download software for use with the accused products.
The Court acknowledged that the Federal Circuit has not yet addressed the Zippo rationale but that several other circuits (3rd, 4th, 5th , 6th, 8th ,and 9th ) had adopted it to some extent. The Court also acknowledged that the 11th Circuit was split on the adoption of Zippo and joined in the criticism of Zippo, cautioning against over-reliance on the level of website interactivity in deciding jurisdictional question. Ultimately, the Magistrate refused to hold the outcome of the Zippo analysis dispositive, but found through a more traditional analysis that there were insufficient contacts between the Defendant and Florida and recommended granting the motion to dismiss.
Interestingly, the court referenced a click-wrap agreement that contained exclusive venue/jurisdiction provisions in its reasoning. The Court held that although the agreement could not bind the Plaintiff, it “nevertheless shows Intelligolf’s intention not to avail itself of a jurisdiction based on the use of the accounts other than in the state of California.”
In sum, this Report and Recommendation presents an excellent exposition of the status of Zippo and generally of website jurisdiction in Florida Federal courts.
By the way, congratulations to Jeffrey Kamenetsky who represents the prevailing Defendant.
In re Bilski has claimed its first victim (to my knowledge) in district court. In Cybersource Corporation v. Retail Decisions, Inc. No. C 04-03268 MHP (N.D. Cal. March 26, 2009), Plaintiff’s patent was declared invalid as not drawn to patent-eligible subject matter under 35 U.S.C. §101. The patent-in-suit was for a “method and system for detecting fraud in a credit card transaction between a consumer and a merchant over the internet.”
Using the rationale of the In re Bilski decision (545 F.3d 943 (Fed. Cir. Oct. 30, 2008)(en banc)) the court found, among other things, that:
- The “manipulation” of a credit card number (or other type of account number) does not meet the “transformation” requirement re-asserted in Bilski.
- An IP address is not a “visual depiction” of a computer in the sense required by Bilski and thus its “manipulation” also does not meet the “transformation” requirement.
- The recitation of “over the Internet” and “one or more processors” in a claim does not amount to limiting a claim to a “specific machine” as required by Bilski
Perhaps of most interest to patent litigators, the Court also held that “[T]here is at present no legal doctrine creating a special ‘Beauregard claim’ that would exempt [claims] from the analysis of Bilski.” A “Beauregard claim” is a claim drawn to “computer readable media” containing software, rather than the method steps implemented by the software itself. There has been much discussion as to whether a Beauregard claim, which would be considered an article of manufacture rather than a pure method claim, falls outside of the purview of Bilski. That question, it appears, has been answered with a resounding “no”, at least in the Northern District of California.
The opinion in this case comes from judge Marilyn H. Patel who is no lightweight (you may remember her as the judge in the RIAA v. Napster case) so this opinion will likely be persuasive outside of the 9th Circuit. Judge Patel expressed what many of us have wondered about the future of business method patents in the following quote:
In analyzing Bilski, one is led to ponder whether the end has arrived for business method patents, whose numbers swelled following the decision in State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). Without expressly overruling State Street, the Bilski majority struck down its underpinnings. This caused one dissenter, Judge Newman, to write that State Street “is left hanging,” while another dissenter, Judge Meyer, registered “an emphatic ‘yes’” to rejecting State Street, and a third, Judge Rader, queried whether the court was willing to decide that the entire field of business patents is “undeserving of incentives for invention.” 545 F.3d at 995, 998, 1014. Although the majority declined say so explicitly, Bilski’s holding suggests a perilous future for most business method patents.