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Fed. Cir. Roundup: Patent Infringements All Around

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By Mark Wilson, Esq. on October 14, 2014 5:48 PM

Ah, the Federal Circuit. It's like the spooky basement of the federal judiciary, that place where even seasoned appellate attorneys are afraid to go. "There might be ... patent litigation down there!" they exclaim.

And, in truth, since the last time we covered the Federal Circuit, there has been a bit of patent litigation. So here's a roundup of what's been going on in the Spooky Basement Circuit Court of Appeals.

Benefit Funding Systems v. Advance America Cash

Patent No. 6,625,582 is a business method patent covering automatically transferring funds into and out of a retirement plan beneficiary's retirement plan account. (This appears to be linked to a new type of payday lending in which retirees borrow against their future expected retirement benefits.) US Bancorp, one of the appellees, filed a petition with the Patent and Trademark Appeal Board seeking review of the patent, which stayed the patent infringement litigation. In what may turn out to be another post-Alice action, PTAB said it was "more likely than not" that the business method is unpatentable. (In a footnote, it was mentioned that the PTAB did find the claims unpatentable.)

The Federal Circuit held that PTAB could conduct a review on Section 101 grounds -- i.e., that the business method didn't meet the statutory requirements. The court also said the district court properly granted the stay pending PTAB review.

Robert Bosch, LLC v. Snap-On Inc.

Robert Bosch holds a patent on a device that determine whether a car's computer needs to be reprogrammed. Bosch sued Snap-On for infringement. Snap-On retorted that two of the claim terms in Bosch's patent -- "program recognition device" and "program recognition device" -- were invalid as indefinite means-plus-function terms under 35 USC § 112.

The Federal Circuit agreed with the district court that Bosch's patent did contain a means-plus-function term and that the term didn't identify what a "program loading device" was or how it worked, making it indefinite and, consequently, making the claims in the patent invalid.

American Calcar, Inc. v. American Honda Motor Co.

Calcar holds patents dating back to 1997 describing a "multimedia system for use in a car to access vehicle information and control vehicle functions." Honda alleged inequitable conduct on Calcar's part, owing to the actions of Calcar's founder, Obradovich. Honda claimed that it developed a navigation system for its Acura RL in 1996 and that Obradovich drove the Acura and operated the navigation system as part of Calcar's business of publishing booklets condensing car owner manual information. Honda claimed that Calcar never disclosed in its patent application that Obradovich's photos of the navigation system and owners' manual.

Even though a jury found for Honda, the Federal Circuit was called in this case to apply the newer, narrower test for inequitable conduct from Therasense v. Becton, Dickinson & Co., which came out while the appeal from the jury verdict was pending. Applying the Therasense elements of materiality and intent, the Federal Circuit upheld the invalidation of Calcar's patent. Judge Pauline Newman dissented, finding no inequitable conduct because, after a patent re-examination, Obradovich provided the photographs he took, thus there was no intent to deceive.

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