USA - TEXAS Trends and Developments Contributed by: Danielle Healey and Matthew David, Spencer Fane LLP
expiring patent claim could not be invalidated based on a later-filed, earlier-expiring reference patent claim sharing a common priority date. In its opinion, the court stated, “the first-filed, first- issued patent in its family... is the patent that sets the maximum period of exclusivity for the claimed subject matter and any patentably indis- • Companies must be proactive in structuring continuation applications to avoid unintended ODP vulnerabilities. • Practitioners must carefully manage continu- ation applications and terminal disclaimers to avoid ODP challenges. Limiting software patentability: Mobile Acuity v Blippar In Mobile Acuity Ltd. v Blippar Ltd., the Federal Circuit continued to raise the bar software pat- entees face in protecting their inventions with utility patents, finding that Mobile Acuity’s claims were directed to an abstract idea and lacked an inventive concept sufficient to transform them into patent-eligible subject matter. tinct variants.” Key takeaways: In this case, the patent claims recited a method for storing and sharing images between users. The court found that the patent claims were framed at too high a level of abstraction. Mobile Acuity attempted to argue that its “technical solution” to image sharing should satisfy Alice Step 2, but the court rejected this argument, holding that merely stating how to apply an abstract idea using generic computing compo- nents is insufficient to be patent-eligible subject matter.
Key takeaways: • Courts are unlikely to find claims reciting functional software processes patent eligible without a specific technical implementation. • Disputes over patent eligibility that can be resolved at the beginning of the case on the face of the patent should be disposed of without delay. Deliberate delay in the patenting process can leave patent worthless: Google v Sonos In a rare invocation of the prosecution laches doctrine, the district court in Google v Sonos found that Sonos’ 13-year delay in prosecuting a continuation application amounted to an imper- missible abuse of the patent system. The court reasoned that allowing such a delay to extend the patent term would undermine the policy objectives of the Patent Act, particularly in light of modern patent term calculations that base the patent term on 20 years from the earliest filing date rather than 17 years from the issue date under the old rule. Multiple amici briefs have been filed, some sug- gesting that prosecution laches require “extraor- dinary and deliberate delay” rather than mere permissible continuation application activity. However, this decision signals renewed judicial willingness to police continuation application practices and curb excessive delays. Key takeaways: • Practitioners must ensure that continuation applications are filed and prosecuted diligent- ly to avoid laches challenges. • This ruling may encourage more aggressive challenges to patents with long prosecution histories.
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