Transfer of Venue

IN RE LINK_A_MEDIA DEVICES CORP. [ORDER]

• Writ of mandamus granted and district court ordered to transfer case.


• "[T]he district court placed far too much weight on the plaintiff’s choice of forum.... When a plaintiff brings its charges in a venue that is not its home forum ... that choice of forum is entitled to less deference."


• "Neither § 1404 nor [3rd Circuit case] list a party’s state of incorporation as a factor for a venue inquiry. It is certainly not a dispositive fact in the venue transfer analysis, as the district court in this case seemed to believe."


• "While advances in technology may alter the weight given to these factors [the convenience of the witnesses and the location of the books and records], it is improper to ignore them entirely."




• For similar cases, see In Re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); and In re TS Tech USA Corp., 551 .3d 1315, 1322 (Fed. Cir. 2008).

Prior Invention Under 102(g)(2)

TEVA PHARMACEUTICALS INDUSTRIES LTD. V. ASTRAZENECA PHARMACEUTICALS LP

• Prior invention under 102(g)(2) can be established by showing that the invention was first reduced to practice by another or that the invention was first conceived by another who then exercised reasonable diligence in reducing that invention to practice.




• Dow, Mycogen Plant Sciences, and Invitrogen are consistent applications of the same rule. To establish prior invention, the party asserting it must prove that it appreciated what it had made. The prior inventor does not need to know everything about how or why its invention worked. Nor must it conceive of its invention using the same words as the patentee would later use to claim it.

Injunction/Irreparable Harm

ROBERT BOSCH LLC. V. PYLON MANUFACTURING CORP.

• We take this opportunity to put the question to rest and confirm that eBay jettisoned the presumption of irreparable harm as it applies to determining the appropriateness of injunctive relief. In so holding, we join at least two of our sister circuits that have reached the same conclusion as it relates to a similar presumption in copy-right infringement matters.
  


• Although eBay abolishes our general rule that an in-junction normally will issue when a patent is found to have been valid and infringed, it does not swing the pendulum in the opposite direction. In other words, even though a successful patent infringement plaintiff can no longer rely on presumptions or other short-cuts to support a request for a permanent injunction, it does not follow that courts should entirely ignore the fundamental nature of patents as property rights granting the owner the right to exclude.
  


• [W]ithout additional facts showing that the presence of additional competitors renders the infringer’s harm reparable, the absence of a two-supplier market does not weigh against a finding of irreparable harm.
  


• Injuries that affect a “non-core” aspect of a patentee’s business are equally capable of being irreparable as ones that affect more significant operations.
  


• A district court should assess whether a damage remedy is a meaningful one in light of the financial condition of the infringer before the alternative of money damages can be deemed adequate. While competitive harms theoretically can be offset by monetary payments in certain circumstances, the likely availability of those monetary payments helps define the circumstances in which this is so.




• A party cannot escape an injunction simply because it is smaller than the patentee or because its primary product is an infringing one.

Intervening Rights

MARINE POLYMER TECHNOLOGIES, INC. V. HEMCON, INC.

• The doctrine of absolute intervening rights protects an accused infringer’s right to continue using, selling, or offering to sell specific products covered by reissued or reexamined claims when the particular accused product had been made before the date of the reissue or reexamination and the scope of the claims is substantively changed.
  
• The doctrine of equitable intervening rights protects an accused infringer’s ability to make, sell, offer to sell, or use particular items of the same type that the accused infringer had made, purchased, or used before the reexamination even if the particular item was produced thereafter. It also protects a newly created product that was not of a type produced before the reexamination if the accused infringer made “substantial preparations” for manufacture of the product before the reissue or reexamination.

Unpatentable Subject Matter (abstract ideas)

CLASSEN IMMUNOTHERAPIES, INC. V. BIOGEN IDEC

• Methods that simply collect and compare data, without applying the data in a step of the overall method, may fail to traverse the §101 filter.



• The ’283 claims do not include putting this knowledge to practical use, but are directed to the abstract principle that variation in immunization schedules may have consequences for certain diseases. In contrast, the claims of the ’139 and ’739 patents require the further act of immunization in accordance with a lower-risk schedule, thus moving from abstract scientific principle to specific application.

ULTRAMERCIAL, LLC. V. HULU, LLC.

• Viewing the subject matter as a whole, the invention involves an extensive computer interface. This court does not define the level of programming complexity required before a computer-implemented method can be patent-eligible. Nor does this court hold that use of an Internet website to practice such a method is either necessary or sufficient in every case to satisfy § 101. This court simply finds the claims here to be patent-eligible, in part because of these factors.

Offer For Sale

AUGUST TECH CORP v. CAMTEK LTD

• Section 102(b) requires that “the invention was . . . on sale in this country” before the critical date. The Supreme Court has explained that the § 102(b) on-sale bar applies when two conditions are met before the critical date: (1) the product is the subject of a commercial offer for sale, and (2) the invention is ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).




• The issue presented in this case is whether the invention must be ready for patenting at the time the alleged offer is made. We conclude that it does not.
  


• While the invention need not be ready for patenting at the time of the offer, consistent with our cases, we hold that there is no offer for sale until such time as the invention is conceived.


• Therefore, we conclude that an invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.

Unpatentable Subject Matter (mental processes)

CYBERSOURCE CORP. V. RETAIL DECISIONS, INC.

• Mental processes are not patent-eligible subject matter because the application of only human intelligence to the solution of practical problems is no more than a claim to a fundamental principle.
  


• It is clear that unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algorithms are disclosed in the … specification.
  


• Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101. Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental method steps as part of a process containing non-mental steps but rather because computational methods which can be performed entirely in the human mind are the types of methods that embody the basic tools of scientific and technological work that are free to all men and reserved exclusively to none.
  


• We have never suggested that simply reciting the use of a computer to execute an algorithm that can be per-formed entirely in the human mind falls within the Alappat rule.
  


• We agree with the district court that the claimed process manipulates data to organize it in a logical way such that additional fraud tests may be performed. The mere manipulation or reorganization of data, however, does not satisfy the transformation prong.
  


• As we stated in Bilski, to impart patent-eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine must impose meaningful limits on the claim’s scope. In other words, the machine must play a significant part in permitting the claimed method to be performed. Here, the incidental use of a computer to perform the mental process of claim 3 does not impose a sufficiently meaningful limit on the claim’s scope.


• [M]erely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.