We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, March 12, 2012. Brief synopses are presented below.
Myspace, Inc. v. GraphOn Corp., Case No. 2011-1149 (Fed. Cir. Mar. 2, 2012) (attached). GraphOn had a patent relating to the ability to create, modify and store database records over a computer network. The district court’s grant of summary judgment of invalidity of the patents-in-suit is affirmed, as all the claims were either anticipated or rendered obvious by the prior art. The Federal Circuit found that the district court’s broad construction of the claim term “database” was both reasonable and supported by the context. The broad definition of the “database” term adequately supported the court’s assessment that there was no triable issue of fact, and that the prior art was considered a database and within the scope of the claims in the patents-in-suit.
The majority states that courts should exercise their inherent power to control the process of litigation by initially addressing patent invalidity issues in terms of §§ 102, 103 and 112, instead of getting involved in the “murky morass that is § 101 jurisprudence.”
Judge Mayer, in a dissenting opinion, arrives at the same conclusion of invalidity of the patents-in-suit, but through a failure to meet the requirements of § 101. The dissent argues that 35 U.S.C. § 101 is an antecedent question that must be addressed before the court considers obviousness or anticipation.
In re Staats, Case No. 2010-1443 (Fed. Cir. Mar. 5, 2012) (attached). The court reversed a decision of the Board of Patent Appeals and Interferences, which limited the scope of claims filed in continuation broadening reissue applications filed after the two-year period of 35 USC § 251. The court held that when an earlier broadening reissue application is filed within the two-year statutory period of 35 USC § 251, an applicant can make further broadening changes after the two-year period in the course of the prosecution of the reissue application, even in situations where the later broadened claims are not related to, nor directed to the same embodiment as in the original application.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 12, 2012 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 Amanda Jones by 9 am Monday morning.