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). […]
Archive | April, 2014
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 […]
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 […]
PTAB Finding of Invalidity Does Not Trump Federal Court’s Final Judgment
By Charles Bieneman on April 23, 2014 in America Invents Act, Civil Procedure, Covered Business Method Patent Review, Litigation
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 […]
Financial Business Method Claims Held Not Patent-Eligible (and Invalid for Indefiniteness)
By Charles Bieneman on April 20, 2014 in Indefiniteness, Patentable Subject Matter, Section 112, Software Patents
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 […]
Abandonment of Android Trademark Makes Google the Senior User
After the owner of a registration for the “Android Data” trademark alleged that Google infringed the mark, the Seventh Circuit has affirmed the district court’s entry of summary judgment, based on a finding that the “Android Data” mark had been abandoned. Specht v. Google, Inc., No. 11-3317 (7th Cir. April 4, 2014). Erich Specht’s application […]
Patent Infringement Claims Requiring a Combination of the Covered Product and Other Components Excluded From Indemnification
A recent decision from the U.S. Court of Appeals for the Eleventh Circuit, Am. Family Life Assur. Co. v. Intervoice, Inc., No. 12-13210, 2014 U.S. App. LEXIS 5585 (11th Cir., March 27, 2014), illustrates the need for careful consideration of intellectual property infringement indemnification clauses, and exclusions thereto, especially for products that do not work […]
Customer Suits Alone Do Not Confer Declaratory Judgment Jurisdiction
By Charles Bieneman on April 8, 2014 in Civil Procedure, Declaratory Judgments, Litigation, Software Patents
DataTern, Inc. sued Microsoft’s and SAP’s customers alleging infringement of U.S. Patent Nos. 5,937,402 and 6,101,502. Microsoft and SAP then brought actions against DataTern seeking declaratory judgments of non-infringement. The Federal Circuit affirmed the district court’s finding that it had jurisdiction over all claims except Microsoft’s claims against the ‘402 patent, because DataTern’s claim charts […]
Writ of Mandamus in Patent Infringement Venue Transfer Motion
AVS sued Toyota and Gulf States—a Texas-based Toyota dealer—for patent infringement in the Eastern District of Texas. Toyota and Gulf States filed a motion (1) to sever the claims against Gulf States; (2) to transfer the claims against Toyota to a more convenient forum under 28 U.S.C. § 1404(a); and (3) to stay the claims […]
Investors in a Separate Corporation that Files an IPR Petition Are Not Real-Parties-in-Interest
Clouding IP is the assignee of U.S. Patent No. 6,738,799 (the ‘799 patent). The ‘799 patent is related to a method of file synchronization using a signature list. Clouding asserted the ‘799 patent in a host of lawsuits, including one against Google. More than one year after the Google case was filed, Unified Patents filed […]