2018 witnessed some of the most impactful IP moments that changed the patent landscape of the United States of America. In this blog post, I discuss the most iconic IP judgments which will shape the future of our perspective of patent litigation.
Berkheimer v. HP Inc.
On February 8, 2018, in a landmark judgement for Berkheimer vs. HP Inc., the Federal Circuit Court gave patent applicants an additional tool to push back against 101 rejections by stating that determination of whether a claim element is well-understood, routine and conventional to a person skilled in the art is a question of factual determination. The patent under question was US 7447713 B1 belonging to Berkheimer and is related to archiving of files.
The District Court had provided a summary judgment holding the claims of the patent as ineligible under 35 U.S.C. § 101 for indefiniteness. The Federal Circuit Court judged that applying a summary judgment to the case is improper as judging the claims for conventionality is a matter of material fact. Additionally, the Court held that just because something is disclosed on a piece of prior art does not mean it was well-understood, routine and conventional.
Impact: Soon after the decision, several other patent owners have begun citing Berkheimer increasingly in PTAB decisions as a factor to reverse an examiner’s 101 rejections.
Aatrix Software v. Green Shades Software
On February 14, 2018, the Federal Circuit Court decided that the District Court had erred in applying the Alice two-step validity test to Aatrix Software’s patents before allowing the plaintiff to present allegations.
The District Court of Florida had invalidated two of Aatrix Software’s patents US 717161 B2 and US 8984393 B2 after Green Shades argued that the patents were directed to patent ineligible subject matter based on Alice considerations. The District Court had also denied Aatrix a motion to file a second amended complaint.
Impact: The Federal Court held that the District Court granted dismissal before defining the scope of the claims. If the second amended complaint had been allowed to be filed, the claimed combination could have been established as inventive.
Oil States Energy Services, LLC v. Greene’s Energy Group, LLC
In 2012, Oil States Energy Services, LLC, filed an infringement lawsuit in the District Court of Texas against Greene’s Energy Group, LLC, over its patent US 6179053 B1 related to servicing equipment for oil and gas wells. Greene’s Energy filed an Inter Partes Review (IPR) to challenge two of the claims of Oil State’s patent. The District court judged in favor of Oil States. However, the IPR found the two challenged claims to be invalid.
In response, Oil States challenged the IPR judgment in the Federal Court claiming that IPR is unconstitutional as patents, being an individual right and should always be challenged in a jury trial and not in a private examination body like the Patent Office.
The Supreme Court pronounced its judgment on April 24, 2018, with a 7-2 holding that IPR does not violate the constitution of America as IPR is a mere reconsideration of the government’s decision to grant a public franchise and could be conducted by a government body privately.
Impact: This judgment established patents to be closer to a government franchise rather than an individual right.
SAS Institute Inc. v. Iancu (Director of USPTO)
SAS Institute had filed for an IPR petition against ComplementSoft’s patent US 7110936 B2. The Patent Office determined that SAS’s petition held merit to find at least one of the claims to be invalid, enough to begin the inter partes review (IPR). However, the Patent Office issued a “partial institution” power that only reviewed a subset of the claims, denying review of the rest.
After SAS Institute’s challenge in the Federal Court was rejected, it petitioned the Supreme Court which decided to hear the case alongside Oil States Energy Services, LLC vs. Greene’s Energy Group, LLC, considering both were related to IPR. The Court gave its decision on April 24, 2017, in a 5-4 ruling that reversed the decision of the Federal Circuit Court, stating that an IPR must rule on each claim challenged by petitioners.
Impact: The Supreme Court held that, when conducting inter partes review, the Patent Office needed to decide the patentability of all challenged claims by a petitioner. It stated that the Patent Office had no authorization to institute a partial IPR.
WesternGeco LLC v. ION Geophysical Corp.
In late 2007, ION began manufacturing components for its competing surveying system and shipping them to companies abroad. Those companies’ combined the components to create the surveying system that was indistinguishable from WesternGeco’s patented systems in US 7162967 B2. On June 22, 2018, the United States Supreme Court issued a 7-2 decision in WesternGeco LLC v. ION Geophysical Corp. ruling that a patent owner may recover lost foreign profits for infringement under 35 U. S. C. 271(f)(2).
Impact: It stated that a person who supplied any component of a patented invention from the United States without authority was liable for infringement.
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