Claims Directed to Encoding and Decoding Image Data Held Patent-Ineligible

RecogniCorp, LLC v. Nintendo Co., Ltd., No. 2016-1499 (Fed. Cir. April 28, 2017) (precedential).  On appeal from W. D. Wash. Before Lourie, Reyna, and Stoll. Takeaway: Adding one abstract idea (mathematical equation) to another abstract idea (encoding and decoding) does not render the claim non-abstract. A claim directed to an abstract …

Web Page Authentication Patent is Outside the Scope of CBM Review

SECURE AXCESS v. PNC BANK: Feb. 21, 2017. Before Lourie (dissenting), Plager, and Taranto. Takeaway: To qualify for CBM review, a patent must claim “the practice, administration, or management of a financial product or service.” Claims that are only “incidental to a financial activity” do not qualify. Procedural Posture: Secure …

The Term “Visually Negligible” Found Not Indefinite Where the Written Description Provided a Skilled Artisan With an Understanding, with Reasonable Certainty, of What it Means

SONIX TECH. CO. v. PUBLICATIONS INT’L, LTD.: Jan. 5, 2017. Before Lourie, O’Malley, and Taranto. Takeaway: Claims involving terms of degree are not inherently indefinite, and have been found definite where they provide enough certainty to one of skill in the art when read in the context of the invention. …

Obviousness Rejection Over a Combination of Prior Art References May be Proper Even Where There Was No Explicit Teaching, Suggestion, or Motivation to Combine

IN RE ETHICON: Jan. 3, 2017. Before Newman (dissenting), Lourie, and Dyk . Takeaway: An explicit teaching, suggestion, or motivation to combine is not necessary under KSR for obviousness. Procedural Posture: Ethicon appealed PTAB’s affirmance of an examiner’s obviousness rejection during inter partes reexamination. CAFC affirmed. Synopsis: Obviousness: the CAFC …

Plaintiff Unable to Meet Relaxed Standard Under Akamai for Direct Infringement of Method Claims

MEDGRAPH v. MEDTRONIC: Dec 13, 2016. Before Lourie, Plager, and Taranto.  Takeaway: Under Akamai V, infringement of a method claim requires the plaintiff to show that the defendant conditioned the use of, or receipt of a benefit from, defendant’s system on the performance of all of plaintiff’s method steps. Procedural …