No Need to Ask Alice: Districts Continue to Invalidate Patent Claims Based on Ineligible Subject Matter

The patent community is awaiting the U.S. Supreme Court’s decision in Alice Corporation Pty. Ltd. v. CLS Bank International. This decision may or may not clarify standards for determining patent-eligibility under 35 U.S.C. § 101.  Meanwhile, district courts continue to consider, and generally agree with, defendants’ arguments that software patents do not recite patentable subject […]

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Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions To Initiate Inter Partes Review

In In re The Procter & Gamble Company. LLC, No. 121 (Fed. Cir. Apr. 24, 2014), Clio filed a declaratory judgment action against Procter & Gamble (“P&G”), asserting three P&G patents were invalid.  After unsuccessfully moving to stay an already-pending P&G lawsuit for patent infringement against a Clio customer, Clio dismissed its complaint without prejudice […]

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Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions Not To Initiate Inter Partes Review

In In re Dominion Dealer Solutions. LLC, No. 109 (Fed. Cir. Apr. 24, 2014), Dominion petitioned the Patent Office Trial and Appeal Board (“PTAB”) to institute inter partes review of five patents.  The PTAB denied them all.  Dominion petitioned the Federal Circuit for a writ of mandamus.  Id. at 2. The Federal Circuit denied Dominion’s […]

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Federal Circuit Will Not Allow Appeals Of PTAB Decisions Not To Initiate Inter Partes Review

In St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp., No. 2014-1183 (Fed. Cir. Apr. 24, 2014), St. Jude sued Volcano for patent infringement.  Volcano counterclaimed against St. Jude, asserting St. Jude was infringing a Volcano patent.  Two years later, the district court dismissed all claims against St. Jude relating to the Volcano patent.  Six […]

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A Rare Case? Motion for Judgment on the Pleadings Granted Based on Unpatentable Subject Matter

Patent claims directed to “the offer and sale of items to players in the course of gaming” recited an “unpatentable abstract idea,” held the court in Gametek LLC v. Zynga, Inc., No. CV 13-2546 RS (N.D. Cal. April 25, 2014).  This holding came in response to defendants’ motions under FRCP 12 for judgment on the […]

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Supreme Court Rejects Federal Circuit’s Exceptional Patent Case Standard

A unanimous Supreme Court announced that the Federal Circuit’s “objectively baseless” test for awarding attorney fees to the prevailing party in patent cases is “unduly rigid, and it impermissibly encumbers the statutory grant of discretion to district courts.”  Octane Fitness, LLC v. Icon Health & Fitness, No. 12-1188, at 7 (U.S. Sup. Ct. Apr. 29, 2014). […]

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Claims Directed to Encoding Digital Data Held to Be Patent-Eligible

A summary judgment motion alleging that claims of U.S. Patent No. 5,446,747 do not recite patent-eligible subject matter has been denied in France Telecom S.A. v. Marvell Semiconductor, Inc., No. 12-cv-04967-WHO (ND Cal. April 14, 2014).  The claims at issue were directed to coding and decoding digital data. In resolving § 101 issues following the […]

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PTAB Invalidates First Design Patent in Inter Partes Review

On April 22, 2014, the Patent Trial and Appeals Board (“PTAB”) ruled that a design patent claim in U.S. Patent No. D617,465 (the ‘465 Patent) is unpatentable as obvious.  Munchkin, Inc. v. Luv N’ Care Ltd., No. IPR2013-00072 at 2.  The PTAB’s decision comes less than a year after the proceeding was initiated, and is […]

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PTAB Finding of Invalidity Does Not Trump Federal Court’s Final Judgment

The Covered Business Method Patent review procedure created by the America Invents Act may be a powerful tool for attacking business method patents, but CBM cannot overcome all court proceedings, at least if Versata Software, Inc. v. SAP America, Inc., No. 2:07cv153-RSP (April 21, 2014), is any guide.  In this case, Magistrate Judge Payne held […]

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Financial Business Method Claims Held Not Patent-Eligible (and Invalid for Indefiniteness)

The clear trend of district courts invalidating business method patent claims has continued in Intellectual Ventures I, LLC v. Capital One Financial Corp., No. 1:13-cv-00740 (E.D. Va. April 16, 2014).  Further, the court provided some lessons for claim drafters in holding claims of one patent invalid for indefiniteness under 35 U.S.C § 112. Intellectual Ventures […]

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