Fresh From the Bench: Latest Federal Circuit Court Case

CASE OF THE WEEK

Best Medical International, Inc. v. Elekta Inc., Appeal Nos. 2021-2099, -2100 (Fed. Cir. Aug. 26, 2022)

In this week’s Case of the Week, the Federal Circuit addressed issues of jurisdiction where a challenged claim was canceled through ex parte reexamination during pending inter partes review proceedings, and otherwise affirmed the Patent Trial and Appeal Board’s determination that challenged claims were obvious over the prior art. The Court’s decision turned in part on an analysis of the level of skill in the art that is appropriate for an obviousness analysis.

Read more.

By Annie White

ALSO THIS WEEK

n Re: Jeffrey A. Killian, Appeal No. 2021-2113 (Fed. Cir. Aug. 23, 2022)

In this case, the Federal Circuit affirmed a patent examiner’s rejection of application claims as patent-ineligible under 35 U.S.C. § 101. The claims were directed to a method of determining eligibility for Social Security benefits using a computer to compare information from state and federal databases, and the Court agreed that they were directed to generalized and conventional steps performed with a computer and were ineligible for patenting under the Alice/Mayo analysis. On appeal, the applicant launched “myriad” arguments “directed not to the specifics of [his] application to the corpus of § 101 jurisprudence.” The Court gamely addressed and rejected arguments that the Supreme Court’s standards promulgated in Alice and Mayo were vague, ambiguous, and ran afoul of the Administrative Procedures Act and the Fifth Amendment Due Process Clause in various particulars of application. The Court defended the standards and collected examples of guidance provided in its precedent, but also concluded it was bound to apply them in any event until they were overturned by the Supreme Court. The Patent Trial and Appeal Board’s decision affirming the rejections was affirmed.

The opinion can be found here.

By Jason A. Wrubleski

Edited by Nika Aldrich and Scott D. Eads, Schwabe, Williamson & Wyatt