• INTELLECTUAL PROPERTY RIGHTS

Bilski et al. v. Kappos

US Court of Appeals for the Federal Circuit (Decided on 28.06.2010)

Software Patent - Protection for a claimed invention - Application explains how commodities buyers and sellers in the energy market can protect, or hedge, against the risk of price changes - The patent examiner rejected the Application on the grounds that the invention is not implemented on a specific apparatus, merely manipulates an abstract idea, and solves a purely mathematical problem - Whether an invention is a patent eligible process under 35 U.S.C. Section 101 ?

Held ,the Supreme Court affirmed the invalidity of claims. The Supreme Court declined to generally invalidate software patents and instead held that the Federal Circuit's Machine-or-Transformation test is not the exclusive test for determining if a method is statutory. Court noted that Section 101 specifies four independent categories of inventions or discoveries that are patent eligible: "process[es]," "machine[es]," "manufactur[es]," and "composition[s] of matter. Court relied on earlier decision of Diamond v. Chakrabarty, that in choosing such expansive terms, Congress plainly contemplated that the patent laws would be given wide scope in order to ensure that ingenuity should receive a liberal encouragement. The Court's precedents provide three specific exceptions to Section 101's broad principles: "laws of nature, physical phenomena, and abstract ideas. Court found the U.S. patent system to be open, flexible and inclusive for all forms of innovation. Thus, the Court indicated they could accept a level of ambiguity regarding what was patentable to preclude foreclosing future technology.

Daryl Murphy v. Eddie Murphy production, Incorporated, et al 

US Court of Appeals for the First Circuit (Decided on 01.07.2010)

Copyright claim - District Court dismissed the suit as res judicata - Extension of time to file an amended complaint - Whether the District Court properly denied motion for an extension of time to file an amended complaint?

Held extensions are governed by Rule 6 of the Federal Rules of Civil Procedure, which sets separate standards for motions filed before and after the original deadline. A motion filed before the deadline may be granted for good cause, a motion made after the time has expired may be granted only if the party failed to act because of excusable neglect.

Lincoln National Life Insurance Company v. Transamerica Life Insurance Company 

US Court of Appeals for the Federal Circuit (Decided on 23.06.2010)

Patent Infringement - Plaintiff filed the case of infringement - Plaintiff was using a computerized method for administering a variable annuity plan - Defendants claim that its method of administering GMWB riders does not infringe any claim of 201 Patent - Defendant sought declaratory judgment that the '201 patent was invalid under 35 U.S.C. Sections 102, 103, and 112 - Court denied Defendants motions and entered a permanent injunction against them - Whether the District Court abused its discretion by refusing the Defendants to grant leave to amend its complaint to assert a claim for invalidity under 35 U.S.C. Section 101 ?

Held, as Defendants' computerized system was specifically configured such that it does not make a payment if an account is exhausted, it was agreed that it does not perform step (e). The Court instructed the jury that rider sales are "evidence of infringement to the extent that the sale of the riders or annuities necessarily requires or obligates defendants to practice each and every step of the claimed invention. Claim 35 is not directed to the concept of guaranteed minimum payment variable annuities, but to a computerized method of administering the same. As there was no record evidence showing that defendants performed step (e) of claim 35, the evidence adduced at trial is entirely insufficient to support the verdict of infringement." District Court erred in denying its motion for JMOL of non infringement. Hence, case was remanded to District Court for entry of judgment of non infringement in favor of Defendants.