• August 5, 2019

Regular Minnesota Litigators know how enthusiastically we celebrate significant triumphs in Minnesota civil litigation but, in the same posts in which we praise the winners, we try to remember to warn against gloating. We highlight the ever-present risk of reversal (see here, for example).

(And we have experienced the thrill of victory followed by the agony of defeat in a single case first-hand. See here and here.)

Somehow, we missed congratulating the excellent lawyers at Greene Espel, a Minneapolis civil litigation boutique/powerhouse, for their trial win in a patent case last year against USBank and its formidable lawyers at Dorsey & Whitney and Jones Day. It certainly was not because we had a sense that the multi-million dollar verdict was vulnerable on appeal.

But it was.

For those of our readers who practice in patent litigation (or even patent prosecution (why are you reading this? what is wrong with you?)), the Solutran v. Elavon and USBank decision will be of interest for its discussion of “patent ineligibility.”

For the rest of you, in a nutshell, an “abstract idea” or “an idea of itself” is not patentable. Valid patents must “contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent eligible application” (here at p. 7).

The three-judge panel of the U.S. Court of Appeals for the Federal Circuit conceded: “We understand that it may be difficult at times to determine what the correct level of abstraction is to characterize the claims. After all, all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” But here, the panel continued, “the abstract idea tracks the claim language and accurately captures what the patent asserts to be the focus of the claimed advance over the prior art” (here at p. 11).

Though we’re not I.P experts ourselves, it seems that the Federal Circuit got this one right. Solutran’s patent describes its invention as a system and method of electronically processing checks that basically allows merchants to get their money faster (here at p. 4). Solutran did not come up with some new “thing” or any novel concept. It claimed “basic steps of electronic check processing,” as an invention — an entrepreneurial innovation, not a technological one.

We sympathize with the once-winning lawyers and, again, emphasize that successful civil litigators are playing a numbers game. All great civil litigators lose cases. Congratulations to the defendants and their lawyers at Dorsey & Whitney and Jones Day (at least pending U.S. Supreme Court review?).

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