Archive | November, 2015

Surviving Alice

Recent cases in which patent claims survived challenges under 35 U.S.C. § 101 provide lessons, albeit perhaps narrow ones, to both patent owners and defendants navigating the law of patent-eligibility after Alice Corp. v. CLS Bank. These lessons are perhaps not news: venue and procedural posture both matter, and unpredictability still reigns. Perhaps least surprising […]

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Broadest Reasonable Interpretation Has Limits

Every patent practitioner has felt the frustration that the USPTO’s “broadest reasonable interpretation” standard for claim construction seems to mean that claims say whatever the Patent Office wants them to mean. However, the Federal Circuit has reaffirmed that the standard does have limits. In Straight Path IP Group, Inc. v. Sipnet EU S.R.O., No. 15-1212 […]

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PTAB Finds Means-Plus Function Indefiniteness

Following Williamson v. Citrix Online, LLC, the Patent Trial and Appeal Board has held means-plus-function patent claims indefinite under 35 U.S.C. § 112 for failing to “disclose sufficient corresponding structure for the [means-plus-function claim] limitation.”  Boku Account Services, Inc. v, Xilidev, Inc., Cases CBM2014-00140 and CBM2014-00148 (US Patent 7,273,168) (Nov. 2, 2015).  Even assuming the […]

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Multi-Player Gaming System Survives Patent-Eligibility Challenge

Finding that patent claims reciting hardware elements and functionality of a multi-player gaming system encompassed more than an abstract idea, and, moreover, claimed an innovative concept, a court denied a motion to dismiss for lack of patent-eligible subject matter under Federal Rule of Civil Procedure 12(b)(6). Timeplay, Inc. v. Audience Entertainment LLC, No. CV 15-05202 […]

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Suit Tossed on Alice Grounds Does Not Merit Attorneys Fees Under Octane Fitness

A California district court recently considered the intersection between the patent-eligibility law of Alice and the fee award standard of Octane Fitness, set against the backdrop of a (mostly) successful challenge to the patent-in-suit’s claims before the Patent Trial and Appeal Board.  In Credit Acceptance Corp. v. Westlake Servs., LLC, No. CV 13-01523 SJO (MRWx) […]

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A Reminder to Patent Drafters: Consistent and Well-Defined Terminology Is Important

Because the patent specification inconsistently referred to, and failed to define, a critical claim term, the court granted a motion for summary judgment of indefiniteness under 35 U.S.C. § 112, ¶ 2, concerning claims of U.S. Patent No. 5,463,374.  Signal IP, Inc. v. Mazda Motor of North America, Inc., (C.D. Cal. Nov. 2, 2015.)  The […]

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All Want Clarity and Predictability in Patent-Eligibility Debate, but Agreement Ends There

As detailed in this (paywalled) article, the public comments responding to the U.S. Patent and Trademark Office’s “2015 Update on Subject Matter Eligibility” have two overriding themes.  First, the USPTO’s Section 101 examination “Guidance” lacks consistency and clarity to allow practitioners to predict whether claims will be rejected under 35 U.S.C. § 101.  Second, even […]

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Beware: An Enabling Specification Can Also Enable Prior Art

The Federal Circuit has held that a prior art reference was enabled in part because admissions in an applicant’s own specification explained what would have been known to one of ordinary skill in the art.  In re Morsa, No. 2015-1107 (Fed. Cir. Oct. 19, 2015).  Pointing out knowledge of one skilled in the art can […]

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