A number of district court decisions have held patent claims to be ineligible under Section 101 during motions brought at the start of litigation or on motions for summary judgment. However, two recent Federal Circuit decisions indicate that factual disputes over aspects of the two-step test for assessing patent eligibility established by the Supreme Court, including the tangibility of claims, may hinder such early or summary Section 101 determinations.
In a recent case, the US Court of Appeals for the Fourth Circuit held that an internet service provider (ISP) was not entitled to the safe harbour of 17 USC Section 512(a) of the Digital Millennium Copyright Act. In so holding, the Fourth Circuit rejected the ISP's argument that the safe harbour requires that an ISP take action only against subscribers who are adjudged in court to be 'repeat infringers'.
The Federal Circuit recently handed down a decision in which it clarified that wilful infringement is an issue to be decided by a jury, rather than a district court. It held that the district court had erred in excluding as unreasonable prior art evidence concerning the defendant's litigation defences, because that evidence may also have been relevant to its subjective intent or knowledge at the time of the alleged infringement.
The US Court of Appeals for the Federal Circuit sitting en banc recently issued a majority opinion holding that a determination made by the Patent and Trademark Office concerning whether a petition for an inter partes review is time barred is subject to judicial review. Specifically, the majority held that the limit on judicial review pertaining to institution decisions does not apply to time bar determinations under 35 USC Section 315(b).
A three-judge panel of the Court of Appeals for the Federal Circuit recently held that although the mark FUCT comprises immoral or scandalous matter, it is still federally registrable because the bar on registering such marks set out in Section 2(a) of the Lanham Act is an unconstitutional restriction of free speech, thereby violating the First Amendment.