Fed. Cir. Examines Expert Declarations And Unasserted Claims In Recent § 101 Decision

Earlier this month, the Federal Circuit ruled on an interesting case that discussed (1) when a case or controversy exists as to unasserted patent claims, and (2) the extent expert declarations affect a patent eligibility determination.

Whether There is a Case or Controversy

Ameranth filed suit against Domino’s, including allegations that Domino’s infringed "at least" a long list of claims from the asserted patent. Domino’s filed counterclaims seeking declaratory judgment that the claims were unpatentable under § 101. The court ordered Ameranth to select no more than five claims to assert. Ameranth accordingly amended its disclosure of asserted claims and asserted only five claims. Ameranth later amended its disclosure again and asserted a different combination of five patent claims with some overlap from the earlier disclosures.