Oct 24, 2022

Fresh From the Bench: Latest Federal Circuit Court Case

CASE OF THE WEEK

International Business Machines Corp. v. Zillow Group, Inc. et al., Appeal No. 2021-2350 (Fed. Cir. 2022)

In this week’s Case of the Week, the Federal Circuit affirmed a Rule 12(c) judgment on the pleadings that IBM’s U.S. Patent Nos. 9,158,789 (the ’789 patent) and 7,187,389 (the ’389 patent) are drawn to patent-ineligible subject matter under 35 U.S.C. § 101. Notably, the Court in this case affirmed the district court’s judgment and dismissal of the claims, notwithstanding that IBM’s Amended Complaint was accompanied by an expert declaration purporting to explain why the patents claimed eligible subject matter. The same panel of judges—Judges Reyna, Hughes, and Stoll—also considered § 101 patentability issues last week in Weisner v. Google LLC, our write-up of which is available here.

By Jason A. Wrubleski

ALSO THIS WEEK

Nature Simulation Systems Inc. v. Autodesk, Inc., Appeal No. 2020-2257 (Fed. Cir. Jan. 27, 2022; reissued Oct. 17, 2022)

This week, a panel of the Federal Circuit reissued its January 27, 2022 opinion in Nature Simulation Systems Inc. v. Autodesk, Inc. regarding the standard for claim indefiniteness, following a petition for rehearing filed by appellee Autodesk. Our write-up of the January 27 opinion can be found here. In the January 27 opinion, despite patent indefiniteness being a question of law and reviewed de novo, the Federal Circuit appeared to give substantial deference to the actions of the patent examiner during prosecution. The January 27 opinion relied in part on clarity the majority found in the specification and prosecution history, and in part on the patent examiner’s analysis, stating that “[a]ctions by PTO examiners are entitled to appropriate deference,” and finding it relevant that the claims at issue “were held by the examiner” to be definite. The October 17 modified opinion still reversed the district court’s holding of invalidity, but removed all deference to the patent examiner, and instead further emphasized that the requisite definiteness was found in the specification and prosecution history. The January 27 opinion contained a lengthy dissent by Judge Dyk. The modified opinion did not convince Judge Dyk, who still found nothing in the specification or prosecution history to clarify the meaning of the claim language at issue.

The full text of the reissued opinion can be found here.

By Tyler Hall