United States: Spotlight On Upcoming Oral Arguments – December 2018

Monday, December 3, 2018

Advanced Marketing Systems v. Walgreen Co., No. 17-2288, Courtroom 402

Advanced Marketing Systems (AMS) appeals the Final Written Decisions in four CBM proceedings where the PTAB found that the challenged patents were eligible for CBM review and subsequently held that the challenged claims are unpatentable.  The claims are directed to a printed discount vehicle with a vehicle code and multiple coupons that enables a customer to receive a one-time financial discount for any items purchased that correspond to the coupons printed on the vehicle.  

AMS argues that the PTAB in its CBM eligibility determination improperly applied the invalidated "incidental" or "complementary" to a financial activity test.  AMS further argues that the claims are directed to a technological feature that solves a technical problem using a technical solution, and thus the claims fall within the scope of the "technological invention" exception.  Walgreen argues that the PTAB properly found that the claims were "financial in nature" because the claims are directed to a discount vehicle that is presented during a retail transaction to obtain discounts.  Walgreen further argues that the claims do not fall within the "technological inventions" exception to CBM eligibility because the claims require nothing more than a generic barcode and the technology used to scan and process the barcode is not encompassed by the claims.

Tuesday, December 4, 2018

Unisone Strategic IP, Inc. v. Life Technologies Corp., No. 17-2471, Courtroom 402

In this appeal, Unisone seeks reversal of the PTAB's CBM eligibility determination.  The PTAB determined that the challenged claim, which is directed to database structures for inventory management, was eligible for CMB review.  Unisone contends that the PTAB erred in finding the challenged claim eligible for CBM review merely because the claim recites the term "cost" and might facilitate a sale.  Unisone argues that the challenged claim does not require or claim any sales and the fact that users may consummate a commercial transaction is insufficient.  Unisone further argues that the core of the challenged claim is the novel database structure, which is a technological invention.  Life Technologies argues that Unisone is collaterally estopped from challenging the PTAB's CBM eligibility finding because the Unisone did not appeal a prior PTAB decision determining that a claim with similar limitations was eligible for CBM review.  Life Technologies further argues that the challenged claim is financial in nature as it is directed to ordering inventory, which is plainly a financial activity and that any novel feature of the claim is not technological in nature.

Wednesday, December 5, 2018

In Re Lawrence Foods, Inc., No. 18-1060, Courtroom 402

This appeal arises from a TTAB decision denying registration for the Mark "CHOCOLATE GLAÇAGE" as generic under 15 U.S.C. § 23(c).  Lawrence Foods, Inc. (LFI) argues, inter alia, that the TTAB improperly took judicial notice of the definition of the term "glaçage" from a dictionary of international food and cooking terms.  LFI argues that the dictionary relied upon by the TTAB is a foreign, specialized dictionary, and that there is no evidence that U.S. consumers would readily understand the meaning of the term.  In response, the PTO argues that the dictionary definition of the term "glaçage" was only one piece of evidence among many that the TTAB considered in finding the Mark generic.  The PTO further argues that information that originates outside the country, but that is accessible in the U.S. can be probative of the understanding of U.S. consumers.

Thursday, December 6, 2018

Glasswall Solutions Limited v. Clearswift Ltd., No. 18-1407, Courtroom 201

This appeal arises from a W.D. of Washington decision finding Glasswall's patents invalid under 35 U.S.C. § 101.  The district court found that the patents were directed to the abstract idea of filtering electronic files and data.  Glasswall contends the patents are directed to a concrete, non-abstract solution to a problem unique to electronic communications in the computer environment.  Glasswall explains that the claimed invention eliminates the spread of computer viruses and malware by analyzing the behavior of incoming electronic files for conformity with allowable standards.  Glasswall argues that this constitutes an improvement in computer functionality that has previously been deemed patent-eligible.  Conversely, Clearswift argues that the claims are directed to the abstract concept of parsing files and forwarding a re-generated copy with only allowable content.  Clearswift further argues that the claims simply require the use of a generic computer to perform generic computer functions.

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Events from this Firm
18 Dec 2018, Webinar, Washington, DC, United States

As part of Strafford Publications’ webinar series, Finnegan attorneys Adriana Burgy, Chris Johns, and Show Summary

2 Jan 2019, Conference, Washington, DC, United States

Finnegan is a Silver sponsor of the 36th annual National CLE Conference. Finnegan partner Erika Arner will co-present “The Interplay Between IPRs and Other PTAB Trial Proceedings and Litigation—Strategy and Lessons.

6 Jan 2019, Webinar, Washington, DC, United States

As part of Strafford Publications’ webinar series, Finnegan attorneys Virginia Carron and Jessica Marks will consider patent eligibility issues with engineered natural products.

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