The precedential opinions of this week include the first opinion in which the CAFC, after Bilski, provides some guidance as to what is or is not an abstract idea, an opinion involving obviousness and an opinion providing an example of the effect of prosecution history on claim interpretation.
In Research Corp. Technologies v. Microsoft Corp., the CAFC provides the first opinion offering a glimpse on the considerations to be applied in determining whether a method relates to an abstract idea. Research Corporation (RCT) owns several patents relating to a technology developed at the University of Rochester for halftone printing, “the blue noise mask” (as a matter of full disclosure, I know the inventors of the blue noise mask and had investigated applying the technique for printing). RCT sued Microsoft for infringement of those patents. Before the Supreme Court decision on Bilski, the District Court had granted Microsoft summary judgment of invalidity for two of the patents, based on the claims not satisfying the machine or transformation test. The CAFC reversed the District Court’s grant of summary judgment of invalidity. In reversing the summary judgment of invalidity, the CAFC provided some examples (and perhaps guidance) of the factors in the determination of whether a method relates to an abstract idea. The CAFC found that the blue noise mask method had an application in computer technology, and that some of the claims required systems or components such as film, printers, etc. Although some claims included mathematical formulas, the CAFC, referring to prior Supreme Court cases, restates that an invention does not lose eligibility just by including mathematical equations into steps of the claim. The CAFC also considered the decision of the District Court, determining that the asserted claims of two other patents in the blue noise mask group of patents could not claim the benefit of the parent application’s filing date. The CAFC upheld the inability to claim benefit of parent application’s filing date for one patent and reversed the decision for the other patent.
In ERBE Elecktromedizin GmbH et al. v. Canady Tech. LLC, ERBE and ConMed own patents related to electrosurgical products and sued Canady for infringement, as well as trademark and trade dress infringement. Canady countersued for antitrust violations. The District Court granted summary judgment of non-infringement for Canady, both for the patents and the trade dress and trademark, and granted summary judgment for ERBE and ConMed on the antitrust violations. ERBE appealed to the CAFC and Canady cross-appealed, asking for review of the summary judgment on the antitrust violations. The CAFC affirmed the District Court decision. The appeal of the judgment of non-infringement of the patents asked for a review of the District Court claim construction of the term “low flow rate.” ERBE argued that the term should be given its customary meaning, while the District Court had taken “low flow rate” to mean a rate of flow less than about 1 liter/minute, and producing flow velocities less than 19 km/hour. ERBE also presented arguments based on claim differentiation. The CAFC found that the District Court had properly based their claim construction on arguments made by ERBE during patent prosecution in order to distinguish their invention from prior art. The CAFC stated “that may be helpful in some cases, but it is just one of many tools,” and the arguments made during patent prosecution restricted and determined the claim interpretation. This opinion presents a good example of the effect of arguments made during patent prosecution on the interpretation of the claims.
In Western Union v. MoneyGram, Western Union owns a number of patents directed to a system for performing money transfers and sued MoneyGram for infringement. At District Court, a jury found that the patents infringed and were not invalid due to obviousness. The CAFC reversed, finding the patents invalid due to obviousness. This decision presents a good example of obviousness analysis after KSR, especially when put in the hands of a good litigator. Prior to filing the patents, Western Union had acquired Orlandi Valuta, a company that had a prior system for money transfers and improved the system by adding “(1) the “code” that is established for use by the sender during the send transaction; (2) an ETFD [which the specification describes as ‘an electronic transaction fulfillment device, such as an electronic terminal having a keypad’]; and (3) the use of the Internet.” The CAFC stated that those improvements could be classified as adding known elements that have predictable results, a condition that is likely to result in obviousness according to KSR.