Here is an interesting case addressing whether the affirmative defense of inequitable conduct was adequately plead as an affirmative defense in answer to a complaint for patent infringement. In Music Choice v. Stingray Digital Group Inc., 2-16-cv-00586 (E.D. Texas May 2, 2017), Magistrate Judge Payne recommended denying a motion to dismiss affirmative defenses and counterclaims […]
Functional Claiming Can Spell Patent-Eligibility Doom
Granting a Rule 12 motion to dismiss, a court held patent-ineligible, under the Alice abstract idea test and 35 U.S.C. § 101, a patent claim that recited “determining automatically an optimal exposure level.” SungKyunKwan University v. LMI Technologies USA Inc., Case No. 16-cv-06966-VC (N.D. Cal. May 3, 2017). Claim 1 of U.S. Patent No. 7,957,639 […]
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Markman Construction of “Controller” in the District of Delaware
The order for the Markman construction in Avid Technology, Inc. v. Harmonic Inc. (DED, Docket 12-627) was issued on May 2, 2017. The case involves U.S. Patent No. 5,495,291 titled “Decompression system for compressed video data for providing uninterrupted decompressed video data output.” The Court construed the term “controller” to mean “a component or subsystem […]
On-Sale Bar and the AIA: New Language, Same Meaning
Despite a change in statutory language, the applicability of the on-sale bar to pursuing patent rights under the America Invents Act (AIA) is unchanged from prior law, said the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. Here, the Federal Circuit held that the on-sale bar of the AIA applies to commercial […]
Court Construes “Coupled” and “Extending Continuously” in Markman
The terms “coupled” and “continuously” both find their way into mechanical patent claims, and often times have specific meanings intended by the drafter. The order for the Markman construction in Swimways Corp. v. Aqua-Leisure Industries (EDVA, Docket 2:16cv260) was issued on April 24, 2017 and gives an example of claim construction of these terms. With respect to “coupled,” the […]
Disclaimer Stops CBM Review for Electronic Billboard Patent
Here is another case showing how patent owners are effectively using statutory disclaimers to defend their patents at the PTAB – and showing that the USPTO’s Patent Trial and Appeal Board (PTAB) continues to decline to take an expansive view of what is a “covered business method patent.” In Broadside International LLC v. T-Rex Property […]
The Latest USPTO Patent-Eligibility Guidance (April 2017)
As you probably know, the USPTO maintains a “subject matter [patent-]eligibility” web page with a plethora of information. Most recently, on April 26, 2017, the Office posted a “quick reference sheet” illustrating decisions bearing on patent-eligibility analysis under 35 U.S.C. § 101 and the Mayo/Alice test. Other documents, if you haven’t already taken a look, […]
“Substantially” is a Definite Term in Recent PTAB Decisions
By Chris Francis on April 28, 2017 in Patent Appeals, Patent Claim Interpretation, PTAB, Uncategorized
Many practitioners view words of approximation, such as “substantially,” as useful tools to broaden claim language. MPEP §2173.05(b) states that words of approximation are acceptable if one of ordinary skill in the art would understand what is claimed, in light of the specification. In fact, MPEP §2173.05(b)III discusses the acceptable use of various words of […]
PTAB in CBM Kills Internet Advertising Click-Fraud Patent
By Charles Bieneman on April 27, 2017 in Covered Business Method Patent Review, Patentable Subject Matter, Software Patents
Claims of a patent directed to detecting click-fraud in Internet advertising were eligible for Covered Business Method (CBM) Review, and moreover were patent-ineligible under the Mayo/Alice test and 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a Final Written Decision in Google, Inc. v. Zuili, CBM2016-00008 (Patent 8,671,057 B1) (PTAB […]
E.D. Texas Splits Patent-Eligibility of E-Mail Patents
Considering two patents directed to e-mail applications, Judge Gilstrap of the Eastern District of Texas deferred a patent-eligibility determination of one of the patents as premature prior to claim construction, but held that claim construction was not required for claims of the second patent to be deemed patent-ineligible under the Mayo/Alice patent-eligibility test. Umbanet, Inc. […]