SAS Institute, Inc., v. World Programming Limited, [2021-1542] (April 6, 2023), the Federal Circuit affirmed the district court’s determination that SAS failed to establish the copyrightability of its software.

SAS creates and sells a suite of software used for data access, data management, data analysis, and data presentation.  Users of the SAS System write commands in a SAS programming language .  World Programming Limited (“WPL”) created a competing system that uses the SAS programming language to allow users to complete analytics tasks.

Whether a particular component or element of a program is protected by a copyright depends on whether it qualifies as an expression of an idea, rather than the idea itself.  Other doctrines of copyright law detail what elements are not protectable, including scènes à faire elements, material in the public domain, factual material, and elements under the merger doctrine.  The literal elements of computer programs, for example: source and object codes, can be the subject of copyright protection, and as a general matter, and to varying degrees, copyright protection can extend beyond literal elements to nonliteral elements.

The appeal involves only nonliteral elements of the SAS System, i.e., those aspects that are not reduced to written code. These elements include the program architecture, structure, sequence and organization, operational modules, and user interface.  The Federal Circuit explained that using a literary novel as an analogy, the novel’s written words would be the literal elements (e.g., code) and the organization of the chapters, characters, and plot would be the nonliteral elements.  The Federal Circuit observed, that as one moves away from the literal elements to more general levels of a computer program, it becomes “more difficult” to distinguish between unprotectible ideas, processes, methods or functions, on the one hand, and copyrightable expression, on the other.

The Federal Circuit observed that the Second, Fifth, and Tenth Circuits, have adopted the abstraction-filtration comparison test, or method, to determine the scope of copyright protection for computer programs, including their nonliteral elements.  The abstraction-filtration-comparison method involves three steps: First, the court breaks down the allegedly infringed program into its constituent structural parts—abstraction. This step helps a court separate ideas and processes from expression and eliminate those portions of the work that are not eligible for protection.  Second, the court sifts out all non-protectable material—filtration.  The court examines the structural components at each level of abstraction” and “defining the scope of plaintiff’s copyright”.  Third, the trier of fact compares any remaining “core of protectable expression” with the allegedly infringing program to determine if there is in fact a substantial similarity—comparison. SAS contended that the district court legally erred in its application of the abstraction-filtration-comparison test.  The Federal Circuit rejected SAS’ argument that it satisfied its evidentiary burden once it demonstrated that the SAS System was covered by registered copyrights. The Federal Circuit also rejected SAS argument that the district court erred when it shifted the burden to SAS to establish that its asserted elements are protected by copyright law, noting that any plaintiff has to respond to any proof advanced by defendant.

In Dionex Softron GmbH v Agilent Technologies, Inc., [2021-2372] (January 6, 2023), the Federal Circuit affirmed the PTAB decision awarding priority to Agilent in an interference.

In the interference, the Board identified Dionex as the senior party and Agilent as the junior party, thereby requiring that Agilent prove priority by a preponderance of the evidence.

In its analysis, the Board applied the rule of reason and found that the testimony of Wolfgang Kretz, one of Agilent’s two co-inventors, was sufficiently corroborated by
two of his co-workers, Manfred Berndt and Martin Bäuerle, who had worked near Kretz during the relevant time. Berndt and Bäuerle testified that Kretz successfully tested
a prototype encompassing all limitations of the count by June 1, 2007.

Based on the foregoing, the Board entered judgment on priority for Agilent and against Dionex and refused Dionex’s claims. Dionex timely appealed.

The Federal Circuit said that the Board properly treated Agilent’s specification as
the “originating specification” for purposes of construing the disputed claim terms and evaluating the sufficiency of written description support for the claims. When a party
challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language.

The Federal Circuit said that the Board did not err in concluding that Agilent’s specification provided adequate written description support. Dionex’s arguments on this point depend entirely on our adopting Dionex’s proposed claim construction. In other words, Dionex contends there is not adequate written description support for its ordered steps construction of the claim, but we have rejected this proposed construction. Since the Federal Circuit affirmed the Board’s claim construction, Dionex’s written description arguments necessarily failed.

The Board did not err in awarding priority to Agilent. Substantial evidence supports the Board’s findings that Agilent’s actual reduction to practice was sufficiently corroborated
and occurred prior to Dionex’s earliest conception date. The Board’s finding of corroboration, under the rule of reason, is supported by substantial evidence.

There are more than 20000 patents that relate to or at least mention Christmas, but only one that mentions all of the gifts in the 1780 song The Twelve Days of Christmas: U.S. Patent No. 3,867,237, issued in 1972 on a Pear Tree Decoration . The pear tree has detachable branches and twelve numbered packages containing artificial miniature items corresponding to the items referred to in the Christmas carol.

The patent explains that:

The twelve days of Christmas start tomorrow, and run until the Epiphany on January 6. However, the ‘237 Patent suggests a different timing: “It is intended that the package No. 1 containing the pears and partridge will be opened on December l3. The package No. 2 will be opened on December 14th. The package No. 3 will be opened on December 15th, and so on with another package opened each day in numbered succession so that the package No. 12 will be opened on the 12th day after starting on December 13th. The kit invention 20 designed principally for the entertainment of children, with young children particularly enjoying the excitement of each day placing a new set of decorations or items in the package 30 onto the pear tree 21, starting on December l3th and ending on December 24th, Christmas Eve.

Memorial Day was originally known as Decoration Day, holiday started by the Grand Army of the Republic, an organization of Union Veterans of the Civil War to remember their deceased comrades in arms by decorating their graves. The first Decoration Day was celebrated May 30, 1868, and by 1890, the holiday had been adopted by all of the former Union States.

The earliest mention of Decoration Day in the patent literature is US489218 from 1893 on a Floral Figure, which can be placed on graves “on Decoration Day or other occasions.”

As time passed “Memorial Day” began to replace “Decoration Day” as the day became a day to honor all fallen American soldiers, and not just those from the Civil War. In 1949, Plant Patent 875 used the terms interchangeably, noting that the subject Geranium plant would bloom “a hundred percent prerectly for Memorial Day” and later that it “easily comes into bloom for Decoration Day.”.

In 1958, U.S. Patent No. 2,857,507,disclosed an Electric Lawn Ornament that could be used on Decoration Day:

In 1968 the Uniform Monday Holiday Act codified the name “Memorial Day” into law, and he first Memorial Day was celebrated in 1971.

U.S. Patent No. 5,435,099 coveres a Memorial-Stone-Attached Container useful for

U.S. Patent No. 7,059,082 covers a Memorial Vase Insert Artificial Flower and Helium Balloon Holder that can be used to celebrate Memorial Day.

In Mitek Systems, Inc., v. United States Automobile Association, [2021-1989] (May 20, 2022), the Federal Circuit affirmed a California district court decision transferring Mitek’s DJ action to Texas, and vacated the Texas District Court’s dismissal of the DJ action, and remanded.

USAA owns U.S. Patent Nos. 8,699,779, 9,336,517, 8,977,571, and 9,818,090, all of which address the use of a mobile device to capture an image of a bank check and to transmit it for deposit. After more than 1000 notice letters to its clients, and an infringement trial against one of its customers, Mitek filed a declaratory judgment action against USAA in the Northern District of California.

USAA moved for dismissal under Rule 12(b)(1) for lack of subject-matter jurisdiction, or for dismissal based on the discretion granted to the district court by the Declaratory Judgment Act. In the alternative, USAA sought transfer to the Eastern District of Texas. The California district court granted USAA’s motion to transfer the declaratory-judgment action to the Eastern District of Texas, without ruling on the motion to dismiss, After transfer of the case, the Texas court took up the motion to dismiss, granting it because there was
no case or controversy between the parties. The Court determined the neither the customer litigation, nor the cease and desist letters were sufficient to support jurisdiction, and even if they did, the court would exercise its discretion to decline jurisdiction.

The Federal Circuit found the district court’s analysis incomplete, among other things no considering contributory and inducement of infringement. The Federal Circuit also found that the district courts analysis under 12(b)(1) failed to distinguish between a facial or a factual challenge.

The Federal Circuit said that on remand the district court’s primary task regarding Mitek’s first asserted basis for establishing a case or controversy will be to ascertain the alleged role of the Mitek technology in the banks’ applications and the alleged role that the Mitek technology plays in infringement claims. Making those core determinations, and considering any other pertinent issues, will supply a fuller basis for the bottom-line assessment of Mitek’s first theory of Article III jurisdiction.

With respect to Mitek’s alternative basis for jurisdiction the USAA’s letters to Mitek customers combined with subsequent indemnification demands — the Federal Circuit also found the district court analysis inadequate. The district court observed that Mitek had submitted only one letter with the Complaint — a letter that came from USAA’s licensing counsel and that did not threaten litigation, include claim charts for the patents-in-suit,
or identify Mitek or particular products as infringing. The Federal Circuit concluded that
the allegations in Mitek’s complaint concerning USAA’s letter campaign and the attached example letter, viewed in light of the Wells Fargo litigation, were sufficient to show a controversy between USAA and Mitek’s customers who received letters.

The Federal Circuit said that a communication from a patent owner to another party, merely identifying its patent and the other party’s product line, without more, does not suffice, but the Court said that here, there is just enough “more.” Given the additional detail in the claim and the customer suit against Wells Fargo, the Federal Circuit said under the totality of the circumstances, there is enough for Mitek’s other customers to reasonably interpret USAA’s actions as an implicit assertion of infringement based on incorporation of Mitek technology. As to the showing of a demand for an indemnity, the Federal Circuit said that this was met too, and that it was not necessary that Mitek further concede liability under the indemnity obligation.

On remand, the Federal Circuit instructed the district court should first determine which Rule
12(b)(1) framework to apply, i.e., determine whether USAA mounted a factual attack on the indemnity allegations of Mitek’s complaint. If it finds that USAA has not mounted a factual attack, the court must closely analyze the relevant indemnity allegations, to determine whether they suffice. If it finds that USAA has mounted a factual attack, the district court must decide how to proceed, including whether the parties should have the opportunity to present additional evidence, and to address issues concerning post-complaint events.

Regarding the discretionary decision to dismiss, the Federal Circuit said that where a discretionary decision rests on an inadequate explanation and might well be different without the deficiencies, it may vacate the decision and remand for reconsideration. In any event, there must be well-founded reasons for declining to entertain a declaratory judgment action. The Federal Circuit said that the district court did not give reasons independent of its reasons for its jurisdictional dismissal, which it held to be deficient in various respects, and cannot stand. The Federal Circuit vacated the discretionary dismissal.