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.

APPLE. INC. V. SAMSUNG ELECTRONICS CO., LTD

• (Nexus between infringement and irreparable harm.) We hold that the district court was correct to require a showing of some causal nexus between infringement and the alleged harm to [the patentee] as part of the showing of irreparable harm. To show irreparable harm, it is necessary to show that the infringement caused harm in the first place. Sales lost to an infringing product cannot irreparably harm a patentee if consumers buy that product for reasons other than the patented feature. If the patented feature does not drive the demand for the product, sales would be lost even if the offending feature were absent from the accused product. Thus, a likelihood of irreparable harm cannot be shown if sales would be lost regardless of the infringing conduct.

• (Nexus between infringement and irreparable harm.) While the evidence that [the accused infringer's] employees believed it to be important to incorporate the patented feature into [its] products is certainly relevant to the issue of nexus between the patent and market harm, it is not dispositive. That is because the relevant inquiry focuses on the objective reasons as to why the patentee lost sales, not on the infringer’s subjective beliefs as to why it gained them (or would be likely to gain them). 
• (Delay in bringing suit and irreparable ham.) [I]t was reasonable for the district court to consider the issue of delay and to find that [the patentee] had not proceeded as quickly as it could have in seeking preliminary injunctive relief. The district court correctly noted that delay in bringing an infringement action and seeking a preliminary injunction are factors that could suggest that the patentee is not irreparably harmed by the infringement. 

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)

Mayo v. Prometheus

• To put the matter more succinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well­understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.  For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities.

• [T]o transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.”
• The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws?
• If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.

CLS BANK v. ALICE CORP.

• The abstractness of the “abstract ideas” test to patent eligibility has become a serious problem, leading to great uncertainty and to the devaluing of inventions of practical utility and economic potential.

• Notwithstanding these well intentioned efforts and the great volume of pages in the Federal Reporters treating the abstract ideas exception, the dividing line between inventions that are directed to patent ineligible abstract ideas and those that are not remains elusive.

• While every inventor is granted the right to exclude, or “pre-empt,” others from practicing his or her claimed invention, no one is entitled to claim an exclusive right to a fundamental truth or disembodied concept that would foreclose  every future innovation in that art.

• [T]he essential concern is not preemption, per se, but the extent to which preemption results in the foreclosure of innovation.  Claims that are directed to no more than a fundamental truth and foreclose, rather than foster, future innovation are not directed to patent eligible subject matter under § 101.  No one can claim the exclusive right to all future inventions.

• The mere implementation on a computer of an otherwise ineligible abstract idea will not render the asserted “invention” patent eligible. 

• It can ... be appreciated that a claim that is drawn to a specific way of doing something with a computer is likely to be patent eligible whereas a claim to nothing more than the idea of doing that thing on a computer may not.

• But even with that appreciation, great uncertainty remains, and the core of that uncertainty is the meaning of the “abstract ideas” exception.

• Any claim can be stripped down, or simplified, removing all of its concrete limitations, until at its core, something that could be characterized as an abstract idea is revealed.  But nothing in the Supreme Court’s precedent, nor in ours, allows a court to go hunting for abstractions by ignoring the concrete, palpable, tangible, and otherwise not abstract invention the patentee actually claims.  It is fundamentally improper to paraphrase a claim in overly simplistic generalities in assessing whether the claim falls under the limited “abstract ideas” exception to patent eligibility under 35 U.S.C. § 101.  Patent eligibility must be evaluated based on what the claims recite, not merely on the ideas upon which they are premised. 

• In light of the foregoing, this court holds that when—after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101.

• Unless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to a specific application, it is inappropriate to hold that the claim is directed to a patent ineligible “abstract idea” under 35 U.S.C. § 101.

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.

FORT PROPERTIES, INC. V. AMERICAN MASTER LEASE LLC.

• The computer limitation [in this case] … does not play a significant part in permitting the claimed method to be performed. … At the claim construction stage, AML agreed that “using a computer” merely meant “operating an electronic device that features a central processing unit.” Such a broad and general limitation does not impose meaningful limits on the claim’s scope. AML simply added a computer limitation to claims covering an abstract concept—that is, the computer limitation is simply insignificant post-solution activity.

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.

Bancorp Services v. Sun Life Assurance

• To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.
• Using a computer to accelerate an ineligible mental process does not make that process patent-eligible.