Software Licensee’s Creation of Derivative Work Results in an Injunction

In case you doubted it, seemingly boilerplate provisions in software license agreements that prohibit the creation of derivative works do mean something, as exemplified in EyePartner, Inc. v. Kor Media Group LLC, No. 4:13-10072 (S.D. Fla. July 15, 2013). The court in this case granted a preliminary injunction based on such an anti-modification provision, as […]

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When Are Patent Claims Standard-Essential?

The question of whether claims from 23 different patents were “essential” to the IEEE 802.11 standard (popularly known as Wi-Fi) was presented to the court in In re Innovatio Ip Ventures, MDL Docket No. 2303, Case No. 11 C 9308 (N.D. Ill. July 26, 2013). In evaluating these claims, the court addressed a number of […]

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Two More Courts Hold Patent Claims Invalid for Lack of Patent-Eligible Subject Matter

July 31, 2013, was a big day for 35 U.S.C. § 101; the statute was used in two different cases as a basis for finding that patent claims failed to recite patent-eligible subject matter, and were thus invalid. The patent claims in Digitech Image Techs., LLC v. Fujifilm Corp., No. 8:12-cv-1679-ODW(MRW) (C.D. Cal. July 31, […]

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Providing a Guaranty of Online Transactions Not Patent-Eligible, Says Delaware Court

Claims of a patent directed to “providing a guaranty service for online transactions” are not patent-eligible under 35 U.S.C. § 101, according to the court in Buysafe, Inc. v. Google Inc., C.A. No. 11-1282-LPS (D. Del. July 29, 2013). Accordingly, the court granted the defendant’s motion for judgment on the pleadings pursuant to Federal Rule […]

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Use of Software After Expiration of License Is Copyright Infringement

A software owner was granted summary judgment of copyright infringement where its licensee had breached the applicable software license agreement, and continued to use the software after the agreement expired. Clinical Insight v. Louisville Cardiology Med. Group, No. 11-CV-6019T (W.D.N.Y. July 12, 2013). The licensee could not be saved by its allegation that it had […]

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Enforcement of a Click-wrap License Agreement

Consumers who casually, even blindly, accept “click-wrap” or “browse-wrap” license agreements will be bound by those agreements so long as the user had a reasonable opportunity to accept or reject the proffered license. A recent case provides a blueprint for how to offer, and then how to enforce, a click-wrap agreement. In Zaltz v. JDate, […]

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Pleading Implied License as an Affirmative Defense to Patent Infringement

An implied license is an affirmative defense to patent infringement. Because the defense is, by definition, highly fact-specific, it is not always clear what allegations are required to adequately plead the implied license defense. However, requirements for pleading the defense, e.g., under an estoppel theory, are not unduly onerous.  The court’s denial of a motion […]

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When Is a Covenant Not to Sue Like a Patent License?

Although parties often go to great pains to distinguish covenants not to sue from patent licenses, those two legal constructs may not be treated any differently by the courts. For example, in Innovus Prime, LLC v. Panasonic Corp. & Panasonic Corp. of N. Am., Inc., No. C-12-00660-RMW (N.D. Cal. July 2, 2013), the court accepted […]

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The More Patent-Eligible Subject Matter Changes, the More It Stays the Same

Perhaps the most apt characterization of the current state of the law on patent-eligible subject matter under 35 U.S.C. § 101 is attributable (albeit perhaps apocryphally) to the ancient Greek philosopher Heraclitus: everything flows. (Everything, ebbs, too.) Recent activity in the courts as well as in the USPTO’s Patent Trial and Appeal Board (PTAB) certainly […]

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