Patent Law Blog

In MarcTec, LLC v. Johnson & Johnson, No. 2010-1285, (Fed. Cir. Jan. 3, 2012), the Federal Circuit affirmed the United States District Court for the Southern District of Illinois’ award of $3,873,865.01 in attorneys’ fees under 35 U.S.C. § 285 and $809,788.02 in expert fees under its inherent authority to award reasonable expert fees in excess of the § 285 statutory limit.  On appeal to the Federal Circuit, patent holder-plaintiff, MarcTec LLC (“MarcTec”), argued that the case was not “exceptional” under § 285, and that the district court abused its discretion in awarding expert fees.  The Federal Circuit nevertheless affirmed. Read more...

In Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011), the Federal Circuit affirmed a finding of noninfringement where the patent claims relied on functional limitations and the accused device did not actually carry out the functions, but was merely capable of being programmed or configured to do so. Read more...

In Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. 2011), the Federal Circuit further refined patentable subject matter, and the ineligibility of “abstract principles,” by stating it “does not presume to define ‘abstract’ beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.”  Read more...

In CyberSource Corporation v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), the Federal Circuit provides additional guidance on patentable subject matter stating that when a method can be performed mentally, or where the method is the equivalent of human mental work, such methods recite unpatentable abstract ideas.  The appeal was decided on August 16, 2011 and involved U.S. Patent No. 6,029,154 which, in part, recites a “method and system for detecting fraud in a credit card transaction between [a] consumer and a merchant over the Internet.”  CyberSource Corporation (“CyberSource”) initiated this lawsuit against Retail Decisions, Inc. (“Retail Decisions”) in August 2004.   Read more...

In CBT Flint Partners, LLC v. Return Path, Inc., Nos. 2010-1202, -1203, 2011 WL 3487023 (Fed. Cir. Aug. 10, 2011) a Federal Circuit panel (Lourie, Bryson, and Linn) provided further guidance as to when a district court may correct so-called “obvious” errors in an issued patent. The court had previously held that “[a] district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). In reversing, the Federal Circuit essentially held that the subject of “reasonable debate” is not as to whether or not there are different possible corrections, but rather, the meaning of any different possible corrections. Read more...