Spotlight on Upcoming Oral Arguments – December 2016

Spotlight on Upcoming Oral Arguments – December 2016

Authors: Caitlin O’Connell
Editor: Lauren J. Dreyer

Monday December 5, 2016

Voxathon v. FCA, No. 16-1614, Courtroom 201

This decision arises from a E.D. Tex. case in which the court held that Voxathon’s claims directed to a telephone set with multiple call appearance buttons were ineligible under 35 U.S.C. § 101. Voxathon argues that the district court erred not only in holding that the claims were directed to an abstract idea, but also incorrectly shifted the burden for the second step of the § 101 analysis to Voxathon, the patentee, to establish that an inventive concept was present. Continue reading

Diligence Required for Antedating Prior Art Is Reasonably Continuous Diligence—Not Continuous Exercise of Reasonable Diligence

Author: Yoonhee Kim
Editor:  Jeff T. Watson

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., No. 15-2043 (Fed. Cir. Nov. 15, 2016), the Federal Circuit found the diligence standard the PTAB applied in an IPR “too exacting,” vacating the Board’s decision that patentee PST failed to antedate a reference because reasonable diligence towards reduction to practice was not shown. Continue reading

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A Broader View of Analogous Prior Art

Author: Jonathan J. Fagan
Editor: Lauren J. Dreyer

In Unwired Planet, LLC v. Google Inc., Nos. 2015-1810 & 1811 (Fed. Cir. Nov. 15, 2016), the Federal Circuit affirmed the PTAB’s holding that the patent was invalid as obviousness, agreeing that a cited prior art reference was analogous prior art. The patented method claimed “farther-over-nearer” search result prioritization. When a mobile device user searched for a service, the claimed device would display nearby service providers but would prioritize paying providers. The Court considered whether a primary reference—Brohoff—in view of a second reference—Galitz—rendered the claim obvious. Brohoff taught a wireless network returning location-based results of service providers, while Galitz discussed methods of displaying and organizing results, such as alphabetization. Continue reading

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