Archive | March, 2012

Divided Infringement and Non-Infringement

A patent claim for configuring a “satellite” credit card of a main credit card was not infringed directly by any defendant, nor was the claim directly infringed by any third party, and therefore it could not be indirectly infringed.  Spendingmoney LLC v. American Express Co., No. 3:08cv1376 (D. Conn. March 27, 2012).  The claim of […]

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Notice Pleading Patent Infringement Requires Some Specificity

Even after bringing suit against 33 parties just before the America Invents Act’s prohibition on joining unrelated defendants took effect, the notice pleading requirements of the Federal Rules of Civil Procedure still required that a plaintiff identify specific ways in which infringement was alleged to take place.  Select Retrieval, LLC v. American Apparel, LLC, No. 11cv2158 […]

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Enforceability of a Forum Selection Clause in a Clickwrap Agreement

Here are two cases that provide a further reminder of the power of clickwrap agreements, and that a party offering a clickwrap agreement can avail itself of that power only by properly presenting essential clickwrap agreement terms.  In Rassoli v. Intuit, Inc., Civil No. H-11-2827 (S.D. Tex. March 19, 2012), the court enforced a forum […]

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Software Claims Held Patent Eligible

A Northern District of California court has rejected an argument that “a method of executing an instruction” was not patent eligible subject matter.  Nazomi Communications, Inc. v. Samsung Telecommunications, Inc., No. C-10-05545 (N.D. Cal. March 21, 2012).  The representative claim, reproduced below, recited a method by which a Java interpreter could more efficiently access byte […]

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Inequitable Conduct After Therasense Does Not Always Require “But-for” Materiality

Even under the heightened “but-for” materiality standard for proving inequitable conduct in patent prosecution set forth by the Federal Circuit in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1287 (Fed. Cir. 2011) (en banc), a pleading would be sufficient that set forth “affirmative egregious misconduct, such as the filing of an unmistakably […]

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How Far Do the DMCA’s Anti-circumvention Provisions Go?

Taking a practical “I-know-it-when-I see-it” approach, a Nevada court considered the applicability of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 1201(a)(2), and other statutes, to mechanisms that allowed users to receive proprietary satellite programming for free.  The court entered a preliminary injunction, and authorized impoundment of devices and codes used to access the […]

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Software Patent (and Other) Lessons From Prometheus v. Mayo

In addressing claims directed to medical diagnoses, the Supreme Court’s opinion in Mayo Collaborative Services v. Prometheus Laboratories, Inc. may actually lend some clarity to questions of patentability pertaining to software patents.  True, a clearer understanding of software patentability might not be the most obvious take-away from Prometheus.  And we are still a long way from […]

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Amending Patent Infringement Contentions

When do the results of claim construction proceedings justify a patent plaintiff in amending its infringement contentions?  A court in the Eastern District of Texas allowed the plaintiff to accuse certain software components for the first time following the conclusion of claim construction proceedings.  SSL Services, LLC v. Citrix Systems, Inc., No. 2:08-cv-158-JRG (E.D. Texas […]

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Enforcing Trade Secrets and IP Contract Rights

What happens when parties to a joint development agreement don’t follow agreed-to procedures for identifying technology created under the agreement?  Lawyers can ensure that joint development agreements are larded with procedures under which rights in joint technology are protected.  But do we do enough — and can we do enough — to ensure that such […]

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Misrepresenting Infringement Under the DMCA

A pro se plaintiff was unable to plead adequately that Viacom had knowingly misrepresented that the plaintiff infringed Viacom’s copyrights when Viacom sent DMCA takedown notices to various content providers.  Ouellette v. Viacom International, Inc., No. CV 10-133-M-DWM-JCL (D. Mont. March 13, 2012).  Therefore, the court granted Viacom’s motion for judgment on the pleadings under […]

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