Thursday, December 15, 2016

In Determining 35 U.S.C. § 101 Eligibility, Court May Consider Specification of Parent Patent Incorporated by Reference​

The court denied defendant's motion for judgment on the pleadings on the ground that plaintiff’s malicious code monitoring patent encompassed unpatentable subject matter and found that it could look to a parent patent incorporated by reference to determine eligibility. "This case presents an interesting scenario where the claims themselves are basic and broad, but significant clarifying detail is provided in a specification that belongs not to the [patent-in-suit] itself, but to a parent patent . . . which the [patent-in-suit] identifies and declares to be 'hereby incorporated by reference.'. . . As with any matter involving the scope of the patent grant, '[t]he § 101 inquiry must focus on the language of the Asserted Claims themselves.'. . . Nevertheless, the specification, as a helpful tool in understanding claim scope, is not to be ignored entirely. . . . Because the Court must construe the pleadings in favor of [plaintiff], the Court must err on the side of incorporating more -- not less -- particularities from the specification into its understanding of the claims, while still refraining from importing limitations from the specification into the claim. . . . Here, the [patent-in-suit] identifies the material it is incorporating with sufficient particularly: it indicates that it is incorporating the entire [parent] patent, and provides enough information for the reader to locate this information. . . . Accordingly, the Court is persuaded that the [patent-in-suit] successfully incorporates the entirety of the [parent] patent’s disclosure by reference."

Finjan, Inc. v. Blue Coat Systems, Inc., 5-15-cv-03295 (CAND December 13, 2016, Order) (Freeman, USDJ)

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