On May 19, 2016, the USPTO issued an update to patent examiners on patent eligibility regarding the Federal Circuit's decision in Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive, LLC. In Enfish, the Federal Circuit held that a claimed database software designed as a specific database structure (a "self-referential table") is patent eligible because the claims are directed to a specific solution to a problem in the software arts and improve the way a computer stores and retrieves data in its memory. In contrast, the Federal Circuit in TLI Communications found claims directed to the steps of recording, administration and archiving of digital images to be abstract ideas as claims described generalized steps to be performed on a computer using conventional computer activity and not directed to a specific improvement to computer functionality. The court explained that the specification (1) does not describe any new apparatus; (2) fails to provide any technical details; and (3) generally describes in purely functional terms the system and methods.
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On May 11, 2016, President Obama signed into law the "Defend Trade Secrets Act of 2015" providing for a federal civil remedy for trade secret misappropriation. The law provides a private cause of action and details the procedures for civil seizure orders, injunctive relief and damages for trade secret misappropriation and unjust enrichment relating to "a product or service used in, or intended for use in, interstate or foreign commerce."
The Federal Circuit upheld PTAB's finding of non-obviousness in an IPR for lack of motivation to combine references. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., No. 2015-1693 (Fed. Cir. May 9, 2016). In this case, IBS petitioned for IPR of Illumina's patent and the PTAB instituted review on obviousness grounds and found that IBS failed to prove the claims were obvious. In reaching its decision, PTAB refused to consider IBS' reply brief and accompanying expert declaration as new arguments in violation of 37 CFR 42.23(b) and 42.6(a)(3). The Federal Circuit affirmed the PTAB's decision finding that the PTAB did not err in refusing the reply brief because of the expedited nature of IPRs which places an obligation on the petitioners to maker their case in their petition to institute.
On May 4, 2016, the USPTO issued new guidance memo providing instructions to patent examiners on how to formulate a Section 101 subject matter eligibility rejection and evaluate responses to it. The guidance provides numerous examples including examples of diagnostic methods. The memo requires examiners to follow the 2-step eligibility analysis set forth in the 2014 Interim Guidance but requires them now to explain why "the additional elements [in the claim] taken individually, and also taken as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception."
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Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.
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