Fordham IP Institute

On October 5, for the first time since 2007, the U.S. Court of Appeals for the Federal Circuitsat in session in New York City. A three-judge panel from the court based in Washington, D.C. held oral arguments at Fordham University School of Law. Circuit Judges Alan D. Lourie, Kathleen M. O’Malley, and Richard G. Taranto presided over four patent law cases (summarized below by IP Institute Research Assistant Jonathan Mui).

Dean Matthew Diller welcomed the court to Fordham, highlighting the law school’s student-run IP journal, IP clinic, Center for Law and Information Policy (CLIP), and the Institute’s long-running Fordham Intellectual Property Law & Policy Conference. Following the oral arguments, Prof. Hugh C. Hansen (Director, Fordham IP Institute) moderated a Q&A with the judges.  Prof. Hansen led a discussion with the judges about how their varied legal experiences inform their judicial decision-making and the merits of judicial clerkships.

For more details on this event, please see the Fordham Law News report.

Summaries of cases heard at oral argument:

BASF Corporation v. Johnson Matthey, Inc.
In this case, BASF alleged that Johnson Matthey infringed its patent for a molecular filter, which could selectively catalyze reduction and oxidation reactions. The District Court found the patent claims were substantially indefinite because they used terms such as “material composition A” without describing that exact composition.

Travel Sentry Inc. v. Tropp
Here, Tropp alleged that Travel Sentry infringed his two method patents for luggage screening utilizing a dual-access lock. Notably, the entire method described in Tropp’s patent was not performed by Travel Sentry. The last step in the method was performed by the TSA, who had contracted with Travel Sentry to describe this method and provide locks. A parallel case, Akamai v. Limelight decided that direct infringement could be found where one actor performs most steps of a method patent and obligates a second actor to perform the remaining steps, contingent on the receipt of some benefit and dictating the exact manner of performance. The key issue before the Federal Circuit was whether Travel Sentry’s contract with the TSA and alleged infringement match the definition outlined in the Akamai case.

University of Maryland Biotechnology Institute v. Presens Precision SensingGmbH
This case involved a challenge to UMD’s patent for a bioreactor. The patent examiner rejected the patent on the basis of Section 314, written description, enablement, anticipation, indefiniteness, and obviousness rejections. On appeal, the Patent Trials and Appeals Board reversed all the examiners rejections except obviousness rejection, which was obvious in light of prior art.

ART+COM Innovationpool GmbH v. Google, Inc
ACI’s complaint alleged that Google Earth infringed upon ACI’s patent for a program for creating pictorial representations of geography. In the District Court, ACI’s patents were declared invalid because of a prior public use of a substantially similar program. On appeal, the Federal Circuit had to consider whether the prior use of the program constituted a public use, which would anticipate ACI’s claims.

Fordham IP Institute