Last Month at the Federal Circuit - October 2011

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In this issue: Use of “A” in Claim Language Does Not Always Mean “One or More Than One” in Open Ended Claims; Federal Circuit Reversed Improperly Narrowing Claim Construction; Advertising as Currency Falls Under the Scope of § 101; An Applicant Is Entitled to Reopen Prosecution or Request Rehearing When the Board Relies on New Facts Changing the Thrust of an Examiner’s Rejection; A License to “Use” a Patented Technology That Can Replicate Itself Does Not Necessarily Give a Purchaser the Right to Use Replicated Copies of the Technology; Waiver of Conflict Provision of Joint Defense Agreement Waives Potential Conflict with Counsel for Former Codefendant; Where Claims Were Anticipated as a Matter of Law, Federal Circuit Reverses Postverdict Grant of JMOL to the Contrary; Intervening Rights Triggered by Patent Owner’s Narrowing Arguments in Reexamination; Order Granting Stay of Claims Not an Appealable Final Judgment or Effectively an Injunction; District Court Has Authority to Clarify Claim Construction Following Jury Verdict; and Sales Authorized Under a License Do Not Become Unauthorized or Infringing Sales Just Because a Licensee Subsequently Delays Royalty Payments Due Under That License.

In Ultramercial, LLC v. Hulu, LLC, No. 10-1544 (Fed. Cir. Sept. 15, 2011), the Federal Circuit held that patent claims directed to a method for distributing copyrighted material over the Internet where the consumer receives the material for free in exchange for viewing an advertisement were patent eligible subject matter under 35 U.S.C. § 101.

While “any new, non-obvious, and fully disclosed technical advance” is eligible for patent protection, the Court noted only three categories that fall outside eligibility: (1) nature, (2) physical phenomenon, and (3) abstract ideas. Carefully considering the claims-at-issue with respect to the restriction of abstract ideas, the Court held that even though the idea of advertising used as a form of currency is abstract, the patent-in-suit “discloses a practical application” of the idea, and many of the claimed steps require complex programming and an extensive computer interface. The Court found that these factors, considered in total, are enough to place the claims-at-issue within the realm of § 101 subject matter.

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