PTAB Finding of Invalidity Does Not Trump Federal Court’s Final Judgment

The Covered Business Method Patent review procedure created by the America Invents Act may be a powerful tool for attacking business method patents, but CBM cannot overcome all court proceedings, at least if Versata Software, Inc. v. SAP America, Inc., No. 2:07cv153-RSP (April 21, 2014), is any guide.  In this case, Magistrate Judge Payne held […]

Read full story

Financial Business Method Claims Held Not Patent-Eligible (and Invalid for Indefiniteness)

The clear trend of district courts invalidating business method patent claims has continued in Intellectual Ventures I, LLC v. Capital One Financial Corp., No. 1:13-cv-00740 (E.D. Va. April 16, 2014).  Further, the court provided some lessons for claim drafters in holding claims of one patent invalid for indefiniteness under 35 U.S.C § 112. Intellectual Ventures […]

Read full story

Abandonment of Android Trademark Makes Google the Senior User

After the owner of a registration for the “Android Data” trademark alleged that Google infringed the mark, the Seventh Circuit has affirmed the district court’s entry of summary judgment, based on a finding that the “Android Data” mark had been abandoned.  Specht v. Google, Inc., No. 11-3317 (7th Cir. April 4, 2014). Erich Specht’s application […]

Read full story

Patent Infringement Claims Requiring a Combination of the Covered Product and Other Components Excluded From Indemnification

A recent decision from the U.S. Court of Appeals for the Eleventh Circuit, Am. Family Life Assur. Co. v. Intervoice, Inc., No. 12-13210, 2014 U.S. App. LEXIS 5585 (11th Cir., March 27, 2014), illustrates the need for careful consideration of intellectual property infringement indemnification clauses, and exclusions thereto, especially for products that do not work […]

Read full story

Customer Suits Alone Do Not Confer Declaratory Judgment Jurisdiction

DataTern, Inc. sued Microsoft’s and SAP’s customers alleging infringement of U.S. Patent Nos. 5,937,402 and 6,101,502.  Microsoft and SAP then brought actions against DataTern seeking declaratory judgments of non-infringement.  The Federal Circuit affirmed the district court’s finding that it had jurisdiction over all claims except Microsoft’s claims against the ’402 patent, because DataTern’s claim charts […]

Read full story

Writ of Mandamus in Patent Infringement Venue Transfer Motion

AVS sued Toyota and Gulf States—a Texas-based Toyota dealer—for patent infringement in the Eastern District of Texas.  Toyota and Gulf States filed a motion (1) to sever the claims against Gulf States; (2) to transfer the claims against Toyota to a more convenient forum under 28 U.S.C. § 1404(a); and (3) to stay the claims […]

Read full story

Investors in a Separate Corporation that Files an IPR Petition Are Not Real-Parties-in-Interest

Clouding IP is the assignee of U.S. Patent No. 6,738,799 (the ‘799 patent).  The ‘799 patent is related to a method of file synchronization using a signature list.  Clouding asserted the ‘799 patent in a host of lawsuits, including one against Google.  More than one year after the Google case was filed, Unified Patents filed […]

Read full story

Fee Award Under 35 U.S.C. § 285 Supported by Evidence of Subjective Bad Faith and Objective Baselessness

Awards of attorneys fees under 35 U.S.C § 285 may seem difficult to obtain, given the dual requirement of proving a party’s subjective bad faith, as well as the objective baselessness of its position.  However, as demonstrated in Gabriel Technologies Corp. v.  Qualcomm Inc., No. 2013-1205 (Mar. 18, 2014), some conduct is so egregious that […]

Read full story

FRCP 12 and 35 U.S.C. § 101

Three recent district court cases illustrate the viability, and the limitations, of bringing a motion to dismiss and/or for judgment on the pleadings, under Federal Rule of Civil Procedure 12, based on a failure of patent claims to define eligible subject matter under 35 U.S.C § 101.  In each of these cases, courts considered the […]

Read full story

Federal Circuit Reverses Software System Patent Claim Construction

In an opinion authored by Chief Judge Rader, and joined by Judges Dyk and Taranto, the Federal Circuit has reversed and vacated a summary judgment of non-infringement in favor of Google, finding that the district court based its finding of non-infringement on an erroneous claim construction.  Vederi, LLC v. Google, Inc., No. 13-1057 (Fed. Cir. […]

Read full story