In Re Lewis Ferguson, Darryl Costin & Scott C. Harris Federal - PDF document

The Sughrue Review Volume 1, Issue 4 May 1, 2009 Nartron Corp., v. Schukra U.S., Inc., Inside this issue: Federal Circuit 2008-1363, March 5, 2009 Nartron Corp., v. Schukra 1 In this case, the Federal The Federal Circuit ex- be considered an inven- Circuit explains the re- plains that inventorship tor. In Re Lewis Ferguson, Darryl 1 - quirements of inventor- requires a contribution in 2 Costin and Scott Harris Applying these concepts, ship through the use of an a significant manner to the the Federal Circuit held infringement dispute. conception or reduction to ICU Medical v. Alaris Medical 2 - that Benson was not an Nartron argued that the 3 Systems, Inc. practice of the invention. inventor because the fea- District Court erred in The contribution must be tures of the dependent 3 - Crown Packaging Tech., Inc. v. granting summary in more than insignificant 4 claims were known in the Rexam Beverage Can Co. judgment in favor of when measured against related art, and thus, Ben- Schukra because Benson, the dimension of the full Bishop v. Flourney 4 son’s contribution was an employee of Schukra, invention. Therefore, one only an exercise of a per- was not named as a co- Article placements and An- 5 who simply provides the son with ordinary skill in inventor of a dependent nouncements inventor with well-known the art. The Federal Cir- claim in the patent at is- principles or explains the cuit further stated that sue. All the inventors state of the art is not con- Benson’s contributions listed on the patent were sidered an inventor. In were insignificant when employees of Nartron, order to be considered an measured against the full and all admitted that none inventor, the potential co- dimension of the inven- invented the features of inventor must suggest a tion. the dependent claim. non-obvious combination Benson claims to have of prior art elements. provided Nartron with the Merely suggesting an ob- idea covering the subject vious combination of the matter of the dependent invention and prior art claim. elements is not enough to In Re Lewis Ferguson, Darryl Costin & Scott C. Harris Federal Circuit 2007-1232, March 6, 2009 The Federal Circuit con- the USPTO was inundated and method claims di- matter under 35 USC §101. with patents from every rected to a marketing In light of Bilski , The Court tinues to reaffirm the Bilski corner of industry, espe- company, Ferguson, Cos- affirmed the Board’s deci- decision by applying the machine or transformation cially the IT sector. With ton, and Harris appealed sion. test as the singular test for everyone trying to drum from a Board of Patent Ap- up business, the parties in peals decision sustaining a process claim under the present case decided the rejection of all 68 Claims 1-23 and 36-68 are §101. In Re Ferguson pre- sents an interesting exam- to try their hand at getting claims, where the Board method claims and claims ple of unusual patent some “novel” patents. held that none of the 24-35 are paradigm Still fighting to this day for claims were directed to claims. In the late 90s, claims. The method their “paradigm claims” patent-eligible subject during the dot-com boom,

The Sughrue Review Page 2 In Re Lewis Ferguson, Darryl Costin and Scott C. Harris (cont.) claims were generally drawn to a of a “shared marketing force.” How- The Federal Circuit also rejected method of marketing a product com- ever, this was not a machine or ap- Applicant’s paradigm claims be- prising, developing a shared mar- paratus. In In re Nuijten , the Federal cause they did not fit into any of the keting force, using the shared mar- Circuit held that a machine “is a four statutory subject matter catego- keting force to market different concrete thing, consisting of parts, ries. Applicant argued that a com- products, obtaining a share of total or of certain devices and combina- pany is a physical thing, so it is profits from each company, and ob- tion of devices.” The Federal Circuit analogous to a machine. The Fed- taining exclusive rights to market also reaffirmed the Bilski principle eral Circuit disagreed, and the ap- each product in return for using a that transformation or manipulations plicant admitted that “you cannot shared market force. The paradigm of public or private legal obligations touch the company.” The Federal claims were directed to a paradigm or relationships do not suffice as Circuit decided in the end that the for marketing software comprising a transformation of article into a differ- idea was too “paradigmatic” and marketing company that markets ent state or thing. Nor do legal obli- abstract, thus not patentable. software. gations/relationships etc represent physical objects or substances. Judge Newman - Concurring Opin- Judge Gajarsa writing for the Court ion. The Federal Circuit also rejected the The issue was whether the claims Judge Newman concurred with the viability of the “useful, concrete, and were drawn to patent-eligible sub- decision, but took issue with the tangible result” test from State Street ject matter under §101. The Federal Dicta and overreaching of the opin- Bank , because it inappropriately Circuit applied Bilski , stating that the ion. Judge Newman believed that focuses on the result of the claimed Supreme Court’s machine or trans- the opinion defined abstract ideas invention rather than the invention formation test is the definitive test to too broadly as anything that does itself. Applicant’s also asked the determine whether a process claim not meet the Bilski machine or trans- court to consider a new test: whether is narrowly tailored enough to only formation test, and this would impact the claimed subject matter requires encompass a particular application future technological advancements. that the product or process has more of a fundamental principle rather Judge Newman only concurred with than a scintilla of interaction with the than to pre-empt the principle itself. the opinion because she agreed real world in a specific way.” The with the Examiner’s position that the Federal Circuit declined to adopt marketing method was obvious un- this test because it would lead to Specifically, the method claims 1-23, der §103. ambiguity and conflict with Bilski , and 36-68 were not tied to a machine reaffirming the machine or transfor- or apparatus. The Applicant argued mation test as the singular test for a that the claims were tied to the use process claim under §101. ICU Medical v. Alaris Medical Systems, Inc. Federal Circuit No. 2008-1077, March 13, 2009 The Federal Circuit held that the trict Court construed the term spike medical valves used in the transmis- written description is crucial in con- unfavorably to ICU, specifically rely- sion of fluids to or from a medical struing claim terms and is relied on ing on the specification. ICU Medi- patient, i.e., when using an IV. This heavily as a guidance as to the cal appealed from the District Court summary addresses the summary meaning of the claims. This case decision granting partial summary judgment of non-infringement and relates to claim construction of the judgment of non-infringement, inva- invalidity based on a lack of written term “spike” in the context of medi- lidity, attorney fees and Rule 11 description. cal valves. ICU Medical originally sanctions, all in favor of Alaris Medi- attempted to obtain a judgment cal. The Federal Circuit affirmed the Summary Judgment of Noninfringe- against Alaris medical, for infringing District Court’s decision. The tech- ment of “spike Claims” of ICU Patent on their patents. However, the Dis- nology in this matter concerned