The Federal Circuit IP Blog Embarks on “The Terrible Twos” and Finds Patent Law Posts More Popular than Procedural Ones

Author: Tyler B. Latcham*
Editor: Elizabeth D. Ferrill

1. Federal Circuit Elaborates on § 101 Analysis Under Step Two of the Alice Test – Section 101 remains a hot topic, specifically as the Federal Circuit finds more claims directed toward computer technology patent-eligible subject matter. This blog summarized BASCOM Global v. AT&T, where the Federal Circuit found claims relating to “filtering Internet content” patent-eligible.

2. Graphical Indicator Patent Gets “Definite” Win Under § 112 ­– This post may have gained interest because the Federal Circuit reversed the district court decision finding a claim indefinite as purely subjective. The case clarifies the indefiniteness test as to allegedly subjective claim language.

3. FDA Request for Justification Found to Provide a Mere Research Suggestion¾Not Conception of Claimed Formulation – In February of this year, this blog covered a Federal Circuit opinion dealing with a generic pharmaceutical company’s unusual argument that the named inventor derived the invention from someone at the FDA based on communications between the inventor and the FDA.

4. Four Network Service Provider Patents Found Patent-Eligible Under § 101 – Continuing the trend of interest in § 101 challenges to computer-based claims, this blog post discussed the tricky “inventive concept” in the Alice Test.

5. Federal Circuit Clarifies Nexus Requirement of Objective Indicia of Nonobviousness – This post was by far the most popular blog post over the last year with close to 500 pageviews. Its popularity may be two-fold. First, the Federal Circuit clarified the nexus requirement in § 103 and found the Board erred when it gave objective indicia of nonobviousness no weight. Second, most patent blogs did not discuss this case at all.

Up-and-Comer:  TC Heartland: Supreme Court Makes Venue Shopping More Difficult for Patent Trolls – This blog post is on track to be the most popular blog we have published. With almost 300 views in less than two weeks after publication, it is already the 7th most popular blog post of the year. The blog covers the highly anticipated and discussed TC Heartland case dealing with venue and the meaning of 28 U.S.C. § 1400(b).


*Tyler B. Latcham is a Summer Associate at Finnegan.


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District Court’s Remand of Case Involving Patent Counterclaims to State Court Is Not Reviewable by Federal Circuit

Author: Victor H. Feng *
Editor: Jeff T. Watson

In Preston v. Nagel, No. 16-1524 (Fed. Cir. Jun. 1, 2017), the Federal Circuit dismissed Plaintiffs’ appeal of a district court’s decision to remand a case involving patent counterclaims to state court because 28 U.S.C. § 1447(d) bars review of that decision.  Continue reading

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Lack of Jurisdiction Flatlines Pulse’s Appeal

Author: Razi Safi*
Editor: Lily Robinson

The Federal Circuit in Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 16-2006 (May 26, 2017) held that it lacked jurisdiction under 28 U.S.C. §§ 1295(a)(1) and 1292(c)(2) to hear an appeal from a district court’s order regarding prejudgment interest because it was not a “final decision.” The district court awarded Halo prejudgment interest, post-judgment interest, and supplemental damages for direct infringement but did not set the total amount of prejudgment interest or the beginning date for interest calculations. Instead, it ordered Halo to prepare an updated calculation of the interest amounts. Pulse appealed the order to the Federal Circuit. The Federal Circuit concluded, however, that because the district court had not resolved the parties’ dispute, the order was not a final decision imparting jurisdiction under § 1295(a)(1). Moreover, the appeal was not proper under § 1292(c)(2), which provides an accounting exception to the finality requirement, because the prejudgment-interest award in the case was not final. Section 1292(c)(2), the Court noted, should be interpreted narrowly and thus does not allow the Court to hear an appeal arising from a non-final order, even if the order is related to the accounting. The Federal Circuit therefore dismissed the appeal for lack of jurisdiction.


*Razi Safi is a Summer Associate at Finnegan. Continue reading