United States: Spotlight On Upcoming Oral Arguments – February 2018

Monday, February 5, 2018 

Blue Spike, LLC v. Adobe Systems Inc., No. 16-1075, Courtroom 201

In this appeal, the Federal Circuit has been asked to decide whether the district court abused its discretion in denying Adobe's request for attorney's fees under 35 U.S.C. § 285. Blue Spike argues that the district court failed to apply the Octane Fitness totality of the circumstances standard and instead applied the "overly rigid" Brooks Furniture objective baselessness standard by focusing solely on affirmative proof of non-infringement. Adobe argues that under the Octane Fitness standard, the district court is free to make discretionary a judgment based on the totality-of-the-circumstances in determining whether a case is "exceptional."  Adobe argues that fee awards are not intended to be a penalty for losing, and therefore, the district court did not abuse its discretion in finding that this was not an "exceptional" case.

Tuesday, February 6, 2018

James v. j2 Cloud Services, LLC, No. 17-1506, Courtroom 203

In this appeal, the Federal Circuit will address whether the hired-to-invent doctrine can divest an inventor of legal title, and therefore, the requisite ownership to maintain an action under 35 U.S.C. § 256.  James argues that only equitable title was conveyed under the hired-to-invent doctrine, and that he was not divested of his legal title to the patent.  Thus, James argues that his legal title conveys the requisite standing to maintain a suit for monetary damages.  j2 Cloud Services argues that under James' contractual arrangement and the hired-to-invent doctrine, he lacks an ownership or financial interest in the patent, and therefore, lacks Article III standing to bring a § 256 correction-of-inventorship claim.

Wednesday, February 7, 2018

In re Burgos, No. 17-1714, Courtroom 402

This appeal arises from a PTAB decision holding that the claims of Burgos' application are patent ineligible under § 101 because they are directed to natural phenomena or laws of nature.  The claims are directed to extracts comprising anthocyanins and anthocyanidins, wherein at least 35% of the composition, by weight of certain pigments.  Burgos argues that no known plant has anything remotely near 35% by weight of these pigments; therefore, the composition is made by man, not nature. Burgos further argues that the claimed composition reduces hyperglycemia, thus it provides a benefit not obtainable form any known fruit.  The PTO argues that anthocyanins and anthocyanidins are naturally-occurring and combining them in particular concentrations does not render the claims patent eligible.  The PTO further argues that the specification provides no evidence to show that the claimed combinations have markedly different characteristics from those pigments individually or in combination in nature.

Thursday, February 8, 2018

Schlafly v. The Saint Louis Brewery, LLC, No. 17-1468, Courtroom 201

This appeal arises from a decision by the TTAB finding Saint Louis Brewery's SCHLAFLY mark had acquired distinctiveness for its beer under Section 2(f) of the Lanham Act.  Appellants Bruce S. Schlafly and Phyllis Schlafly Revocable Trust ("Schlafly") argue that trademark registration in a surname is proper only upon proofs of a change in "significance to the public" of the recognition of the applied-for mark, from being known as a surname to becoming known as a mark for goods.  Schlafly further argues that evidence of self-promotion and public relations efforts alone are insufficient to establish the necessary shift in public perception.  The Saint Louis Brewery argues that its evidence of the length of continuous exclusive use, sales, revenue, advertising, awards, and third-party recognition all demonstrate the public's perception and association of the term SCHLAFLY with Saint Louis Brewery's beer.

01 Communique Laboratory, Inc. v. Citrix Systems, Inc., No. 17-1869, Courtroom 201

Communique appeals a Northern District of Ohio jury decision in which the jury held that Citrix did not infringe Communique's patent.  Citrix argued that its accused service, GoToMyPC, was exactly the same as an older service it had offered, BuddyHelp, and therefore, either BuddyHelp invalidated the '479 patent or GoToMyPC did not infringe.  Communique argues that Citrix presented an improper "practicing-the-prior-art defense," and did not compare the prior art against the claims of the asserted patent.  Communique argues that proof that the prior art is identical to the accused product does not constitute clear and convincing evidence of invalidity.   Citrix argues that its invalidity theory was rooted in a limitation-by-limitation comparison of the prior art to the claims of the asserted patent.  Citrix further argues that it never compared GoToMyPC to the prior art as part of its noninfringement defense, but rather argued that GoToMyPC did not practice key claim elements. 

Friday, February 16, 2018

Cave Consulting Group, LLC v. OptumInsight, Inc., No. 17-1060, Courtroom 201

This appeal addresses the issue of whether a prior sale by the patent owner, Cave Consulting, triggers the § 102(b) on-sale bar defense.  OptumInsight appeals a decision from the Northern District of California granting summary judgment of no invalidity finding that the § 102(b) defense did not apply.  OptumInsight argues that the prior sale was public, as evidenced by Cave's press releases announcing sales and a publicly-available website targeting customers and potential customers.  Cave Consulting argues that its Impact Analysis methodology, which constitutes the inventive method, was practiced internally and only the outputs were made available to customers.  Therefore, Cave Consulting argues that the prior sales fall into the "third-party-secret-method" exception to the § 102(b) on-sale bar.  OptumInsight counters that there is no "confidentiality distinction" to the § 102(b) on-sale bar, and thus, the district court erred in holding that the on-sale bar was inapplicable due to the confidentiality provisions in the license agreements.  Cave Consulting responds that OptumInsight's argument is flawed because its contracts contained confidentiality provisions to maintain the secrecy of the Impact Analysis methodology.

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