Archive | June, 2014

New Patent Prosecution Standard? USPTO Provides Preliminary Post-Alice Corp. Guidelines for Evaluating Patent-Eligibility

In the wake of Alice Corp. v. CLS Bank Int’l., the U.S. Patent and Trademark Office has issued “preliminary instructions effective today to the Patent Examining Corps relating to subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, under 35 U.S.c. § 101.”  At the same time, the USPTO is clearly struggling […]

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Ninth Circuit Affirms Inapplicability of Copyright First Sale Doctrine to Restrictive Software License

The Ninth Circuit has affirmed a district court decision (reported in this blog) holding that a restrictive software license is not a “sale” for purposes of the federal copyright laws, and that the license could not be used to assert a defense to copyright infringement based on the first sale doctrine.  Adobe Systems Inc. v. […]

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Inter Partes Review Barred by Real Party in Interest Requirement

The USPTO’s Patent Trial and Appeal Board (PTAB) has dismissed RPX Corporation’s multiple petitions for inter partes review (IPR) of four patents owned by Virnetx, Inc., holding that Apple, Inc., whose ability to bring the IPR petitions was time-barred, was the real party in  interest.  RPX Corp. v. Virnetx, Inc., Cases IPR2014-171 to 177 (PTAB […]

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Should Nautilius v. Biosign Instruments Change How Patent Applications Are Drafted?

A patent claim is invalid for indefiniteness if it cannot be construed by one of ordinary skill in the art with “reasonable certainty,” the U.S. Supreme Court has unanimously held in Nautilus, Inc. v. Biosign Instruments, Inc., No. 13–369 (June 2, 2014).  The Court thus replaced the Federal Circuit’s “insolubly ambiguous” standard, which risked creating […]

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Attorneys’ Fees Awarded in Light of Octane Fitness

A plaintiff had licensed a patent to defendants, including a right to sub-license, but excluded certain uses of the claimed method.  The plaintiff then sued the defendants based on those excluded uses.  The defendants were awarded attorneys’ fees under 35 U.S.C. § 285 where, among other things, the plaintiff had attempted to enforce the patent […]

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Usenet Post Qualifies as “Printed Publication” Prior Art

A post to an Internet newsgroup nine months before the priority date of U.S. Patent No. 6,081,835 qualified as a “printed publication” that could be used as invalidating prior art.  Suffolk Technologies, LLC v. AOL, Inc., No. 2013-1392 (Fed. Cir. May 27, 2014).  This holding was one of the bases on which the Federal Circuit […]

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