Federal Circuit Opinions: May 13, 2015

May 13, 2015

Non-Patent Cases

Patent Cases

... the subsequent disclosure or use of information obtained from an exempt clinical study, even for purposes other than regulatory approval, does not repeal that exemption of the clinical study, provided that the subsequent disclosure or use is itself not an act of infringement of the asserted claims.

The CAFC vacated and remanded for the district court to determine whether those subsequent activities are themselves acts of infringement, but it's pretty difficult to infringe with just that data unless you're using it to create an entirely new product:

In [Telectronics Pacing Sys. v. Ventritex, Inc., 982 F.2d 1520, 1523–24 (Fed. Cir. 1992)], the patentee conceded that the dissemination of information derived from an exempt clinical study, including the activities of “presenting clinical trial data at a cardiology conference, reporting clinical trial progress to investors, analysts and journalists, and describing clinical trial results in a private fund-raising memorandum,” did not, in and of itself, constitute an act of infringement in that case.

The Hatch-Waxman Act gives a wide berth to sNDA applicants to test the regulatory and financial waters of a patented drug.

This is a huge case because it affects how a lot of cloud-computing and web-tech oriented inventions are going to be interpreted in litigation. Offsetting processing onto clients is increasingly the name of the game.

Between Akamai and Alice, it's getting harder and harder to be a software patent prosecutor these days. Not only would you have to phrase claims in a sufficiently definite manner to pass § 101 scrutiny, but now you're encouraged to abstract every step not only so it can be parallelized or distributed in a cloud embodiment, but also abstracted to "user-provided" content.

While it certainly makes a good software claim drafter that much more valuable, it may also provide a decent framework to resolving the patent system's software woes. If the best claims are abstract enough to encompass asking for users to perform them, then it's going to be that much more difficult to get effective protection for PTNSHBI - Patents That Never Should Have Been Issued. Which, of course, is the real problem- the real elephant in the room when people speak of Patent Trolls. The real problem with Patent Trolls is the PTNSHBI that enable them.

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