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Federal Circuit Finds Claims Patentable in HTC v. Cellular Communications

The Federal Circuit agreed with the Patent Trial and Appeals Board (PTAB) that the claims in the 7,941,174 patent of HTC Corporation v. Cellular Communications Equipment were not anticipated or obvious over the cited references. The court found a possibility was not enough to anticipate, holding "HTC failed to identify evidence showing that Baker transmits EDCH messages. Without such evidence, HTC has only shown that it is possible for the start of a frame preceding an ACK/NACK signal to correspond to the start of a message transmission. This possibility, however, is not enough to find that Baker necessarily discloses the “start of a message transmission” limitation in independent claims 1, 9 and 18 of the ’174 patent. As such, substantial evidence supports the Board’s finding that Baker does not inherently anticipate the challenged claims of the ’174 patent. Cont’l Can, 948 F.2d at 1269 (“Inherency, however, may not be established by probabilities or possibilities." The court also found "In addition, the Board found that Reed discloses determining power headroom for an entire mobile device only when the device is assigned one code, not a plurality of codes." Read the decision here.

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Research Corporation Technologies Inc. v. Microsoft Corp.

This decision is an old one, but it is included in the USPTO's list of decisions with subject matter eligible claims. The court found that claims 1 and 2 of the 5,111,310 patent were patentable subject matter.

"With that guidance, this court also will not presume to define “abstract” beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act. In that context, this court perceives nothing abstract in the subject matter of the processes claimed in the ′310 and ′228 patents. The ′310 and ′228 patents claim methods (statutory “processes”) for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask."


1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random nondeterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.

Secondary Indicia Doesn't Overcome Prima Facie Obviousness

The Federal Circuit agreed in a split decision that even a compelling secondary indicia was not enough to overcome a prima facie case of obviousness. In reviewing the district court's summary judgement finding of obviousness in Intercontinenntal Great Brands v. Kellogg, the court agreed that the great commercial success of cookie packaging was not enough to overcome the prima facie obviousness.  The court quoted Ohio Willow “[W]here a claimed invention represents no more than the predictable use of prior art elements according to established functions, as here, evidence of secondary indicia are frequently deemed inadequate to establish nonobviousness.” Read the decision here.

Remote Employees Not a Place of Business

The Eastern District of Texas ruled that it was not a proper venue for a suit against Nutanix Inc. although Nutanix had remote employees withing the District. This seems to close another possible avenue for taking advantage of the District's very favorable rules in patent litigation.

Federal Circuit Finds Teaching Away Only If for All Embodiments

In Owens Corning v. Fast Felt Corp, the Federal Circuit found that a reference teaches away only if it teaches away from all embodiments. The Patent Trial and Appeal Board (PTAB) had found that Fast Felt's 8,137,757 patent was not obvious because a Lassiter reference taught away from using heat or pressure to add reinforcement because doing so would destabilize asphalt roof materials and so would be difficult to modify. The court disagred, finding that the full scope of the claims covered building dover material. 

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