Archive | Software Patents

PTAB Construes Patent Claim Terms as Subject to §112 ¶6 in IPR

The USPTO’s PTAB held that the term “drive module” was a means-plus-function limitation subject to 35 U.S.C. § 112, sixth paragraph (now 112(f))  in its decision to institute an Inter Partes Review (IPR) in Apple Inc., v. Immersion Corporation, IPR2016-01372 (January 11, 2017). The PTAB (Patent Trial and Appeal Board) raised the §112(6) issue sua […]

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PTAB Upholds Indefiniteness Rejection of Inferentially Claimed Element

One of the first rules often taught to a young patent attorney, especially for mechanical apparatus claims, is to avoid inferential claiming, i.e., avoid introducing a new element in the middle of a recitation of another element.  This type of drafting can lead to ambiguity about whether this new term is positively recited, and thus […]

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Functional Claims Can Survive Alice Challenges If They Seem “Technical”

Patent claims directed to providing portable storage devices with access to terminals have survived a motion for summary judgment that made a patent-eligibility challenge under 35 U.S.C. § 101 and Alice Corp. v. CLS Bank.  IOENGINE LLC v. Interactive Media Corp., No. 14-1571-GMS (D. Del. Jan. 4, 2017).  Claims of U.S. Patent No. 8,539,047 are […]

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No Fee Award Against Plaintiff Who Asserted Patents Invalidated Under Alice

A district court has roundly rejected a request for an award of attorney fees against a plaintiff who asserted business method patents later found invalid under 35 U.S.C. § 101 and Alice Corp v. CLS Bank.  O2 Media LLC v. Narrative Science Inc., No. 15-CV-05129 (N.D. Ill. Jan 3, 2017). After succeeding with a Rule […]

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PTAB Indefiniteness Standard Is Different than the Federal Circuit’s

In Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2015-00018 (Dec. 30, 2016), the PTAB found the phrase “substantially filled” indefinite under 35 U.S.C. § 112(b) on post-grant review (PGR). In the course of reaching this conclusion, the PTAB (Patent Trial and Appeal Board) explained that the USPTO uses a different standard than the federal courts to […]

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Federal Circuit Says a Seemingly Subjective Claim Term Is Not Indefinite under 35 USC § 112

The Federal Circuit has reversed the Northern District of Illinois’ conclusion that the phrase “visually negligible” renders a patent claim invalid under 35 U.S.C. § 112 as indefinite.   Sonix Technology Co., LTD. v. Publications International, LTD, No. 16-1449 (Fed. Cir. Jan. 5, 2017).  The district court’s ruling should hardly have come as a surprise since […]

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Intellectual Ventures’ Network Management and SMS Messaging Patents Invalidated under Alice

Claims of patents directed to network account management and messaging functionality recite patent-ineligible abstract ideas under the Mayo/Alice test, says Delaware’s Judge Stark. Intellectual Ventures I LLC v. AT&T Mobility LLC (D. Del., Dec. 30, 2016). Accordingly, Judge Stark granted Defendants’ Rule 12(c) Motion for Judgment on the Pleadings, holding claims of US Patent Nos. […]

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Post Grant Review and Section 112: A Curious Case

In a case where it strikingly relied on prior art sharing a specification with the patent at issue, the USPTO’s Patent Trial and Appeal Board (PTAB) invalidated the patent on several grounds, including lack of written description and enablement under 35 U.S.C. § 112. US Endodontics, LLC v. Gold Standard Instruments, LLC, PGR2015-00019 (PTAB December […]

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Another Reason Why Ex Parte Reexaminations May Not Be the Best Way to Challenge Patent Claims

Despite the defendant’s diligence in seeking an ex parte re-examination of the patent-in-suit by the USPTO shortly after being sued, a district court has denied the defendant’s motion for a stay.  Pro-Troll, Inc., v. Shortbus Flashers, Inc., No. 16-cv-04062-VC (N.D. Cal. Dec. 23, 2016).   The court’s reasoning included in an interesting comparison of ex parte […]

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