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Thursday, March 5, 2009

Machine or Transformation - PTO's new 101 Guidelines

Patently-O has a new entry discussing the Examining Corps' new instructions on applying Section 101 to claim rejections. It purports to apply the "clarification" provided in In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008), but some may disagree with their interpretation. As pointed out by Professor Crouch:

There are two corollaries to the machine-or-transformation test. First, a mere field-of-use limitation is generally insufficient to render an otherwise ineligible method claim patent- eligible. This means the machine or transformation must impose meaningful limits on the method claim's scope to pass the test. Second, insignificant extra-solution activity will not transform an unpatentable principle into a patentable process. This means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.

Tuesday, February 3, 2009

Death of the Rocket Docket: ED Tex. Declines Venue in 3 Patent Cases

Via Peter Zura's 271 Patent Blog by Two-Seventy-One Patent Blog on 2/2/09

Yesterday, Patently-O noted that the CAFC's TS Tech decision was beginning to have an impact on venue determinations in the ED Tex.

This morning's Docket Navigator Docket Report discloses that on January 29 and 30, the ED Tex. issued 3 orders declining venue in patent cases:

"Under the circumstances presented here, the convenience of witnesses and localized interests weigh in favor of transfer with the other factors neutral or weighing slightly in favor of transfer. . . . [T]here is little convenience to the parties for this case to remain in Texas, while there are several reasons why it would be more convenient for the parties to litigate this case in Oregon."
- Odom v. Microsoft Corporation, 6-08-cv-00331 (TXED January 30, Order).

"Plaintiff along with six of the seven named defendants have their principal places of business in California; the remaining defendant has its principal place of business in Washington. The original patent owner was also a California-based company. [Plaintiff] alleges direct infringement through the websites of the Defendants, none of which are located in this venue; most are located in California. It is likely that many witnesses for both [plaintiff] and Defendants reside in California and/or Washington, and that many documents related to this case are also located in California. The Court finds that the overall nature of this case, considering all of the involved parties, is
regional and would therefore be more conveniently handled by the Northern District of California."
- PartsRiver, Inc. v. Shopzilla, Inc., 2-07-cv-00440 (TXED January 30, 2009, Order).

"Plaintiff's first-filed patent infringement claim did not permit plaintiff to amend its complaint to seek a declaratory judgment concerning defendant's business torts claims that were previously filed in Missouri. "The original complaint involves claims for patent infringement of [plaintiff's] patent. The amended complaint, and the subject of the Missouri case, is for unfair competition and the Lanham Act based on [plaintiff's] alleged business conduct. The subject matter of these cases do not substantially overlap. The Missouri case, then, is the first filed case for the controversy regarding [plaintiff's] business conduct. [Plaintiff], therefore, violated the first to file rule when it amended its complaint in this action to add counts already asserted in the Missouri case."
- Catalina Marketing Corporation v. LDM Group, LLC, 2-07-cv-00477 (TXED January 29, 2009, Order)