Our weekly SoCal IP Institute meeting on Monday, July 20, 2015 will be a discussion of the following cases:

Versata Dev. Group, Inc. v. SAP America, et al., , Case No. 2014-1194, (Fed. Cir. July 9, 2015) (available here).  This is an appeal to the Federal Circuit after an SAP request to review a Versata patent as a covered business method (“CBM”) patent.  This appeal follows a final decision, but reviews a number of issues including whether the Federal Circuit can review whether claims cover a “covered business method” and, if so, whether the final decision was correct.

The claims deal with a “method for determining a price of a product . . . .” After determining that the claims were directed to a covered business method, the USPTO instituted proceedings and expedited the Section 101 review, finally deciding that the relevant claims 17 and 26 were invalid under Section 101.  Versa sought rehearing, which was denied.  Appeal to the Federal Circuit of the final decision was taken.  Versata sued the USPTO simultaneously, to overturn the decision to institute the CBM review.  The district court dismissed that suit.

Here, the Federal Circuit indicates that it expressly cannot review the original decision to grant CBM review. Instead, it is the court of review of a final decision of the PTAB. The distinction being that, once a decision is final, then the Federal Circuit can review the grounds for beginning the review (whether it was a CBM patent in the first place) in addition to the whether the decision was correctly decided. Before the decision is final at the PTAB, no judicial review of any kind is envisioned by the statute.

The Federal Circuit, primarily referring to the regulatory authority provided to the PTO, found that the determination that the claims were directed to a covered business method was correct.  The Federal Circuit generally affirmed some claim construction issues.  Using some gymnastics, the Federal Circuit determined that Section 101 is available as a proper grounds of review during a CBM process and, after re-applying the Alice framework, found that the clams did indeed fall outside of Section 101 and were, thus, patent ineligible. The decision of the PTAB was affirmed.

Shammas v. Focarino, Case No. 14-1191, (4th Cir. April 23, 2015) (available here). This decision relates to the availability of attorneys fees (and other expenses) in a de novo review at the district court of the refusal to register a trademark by the USPTO, whether or not the applicant succeeds in the case.  The relevant text is “unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not.”

The thrust of this case is whether “expenses” that are due include USPTO attorneys’ fees.  The district court found that it does and the Fourth Circuit here affirmed.  Though, the relevant statutory text seems less-than-clear, the Fourth Circuit here found that the intent was, apparently, to run contrary to the “American” rule regarding attorneys’ fees.  The dissent disagreed, finding that the American rule should prevail, where there is any question.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 20, 2015 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.