Cantor Colburn February / March 2015 Newsletter
Definitely not: Patent rejected for indefiniteness
To satisfy the definiteness standard, a patent must provide objective boundaries that convey the invention’s scope to those skilled in the field with reasonable certainty. But how do courts make such a determination? This article discusses an infringement case in which a district court found the patents invalid because terms used in the patent claims’ language — “in an unobtrusive manner” and “does not distract” — were indefinite. The appeals court noted that, while terms of degree aren’t inherently indefinite, the ones used in this case were indeed too subjective. A sidebar explains how the simple use of the term “e.g.,” instead of “i.e.,” played a role in the outcome.
Interval Licensing LLC v. AOL, Inc., Nos. 2013-1282, -1283, -1284, -1285, Sept. 10, 2014 (Fed. Cir.)
Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, June 2, 2014 (Supreme Court)
Deliberate deception in a false advertising case
Demonstrating the competitive injury and lost sales required to recover damages on a false advertising claim often proves difficult in court. But doing so just got a little bit easier, thanks to a recent ruling in a case in which the court clarified some presumptions that may be made in false advertising claims where deliberate deception is established. This article explains why the defendant’s arguments were found wanting.
Merck Eprova AG v. Gnosis S.p.A., Nos. 12‐4218‐cv(L), 13‐513‐cv(Con), July 29, 2014 (2nd Cir.)
Another one bites the dust
Federal Circuit rejects business method claim
The U.S. Supreme Court has long held that laws of nature, natural phenomena and abstract ideas — “no matter how groundbreaking, innovative or even brilliant” — aren’t patentable under Section 101. So, as this article explains, an appeals court wasn’t impressed by a patent that claimed methods and machine-readable media encoded to perform steps for guaranteeing a party’s performance of its end of an online transaction. The court concluded that the invocation of computers added no inventive concept to the idea of a transaction performance guaranty.
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, June 19, 2014 (Supreme Court)
buySAFE, Inc. v. Google, Inc., No. 2013-1575, Sept. 3, 2014 (Fed. Cir.)
What if …?
The very real case of a hypothetical license
It’s hard enough to recover copyright damages under the clearest of circumstances. But this article looks at a particularly tricky case, in which the court answered the difficult question of whether a copyright holder could recover infringement damages based on a “hypothetical” license — that is, one it never granted.
Oracle Corp. v. SAP AG, No. 12-16944, Aug. 29, 2014 (9th Cir.)
