IP Blog
The Software IP Report and the Claims Interpreted Report.
Federal Circuit Upholds District Court Inventorship Ruling
By Mark St. Amour
04/27/2024
Categories: Claim Construction, Patent Civil Procedure, Patent Prep and Pros Best Practices, Patent Standards, The Claims Interpreted Report
In Tube-Mac Indus. v. Campbell, the Federal Circuit upheld a district court ruling mandating a correction of inventorship for US Patent 9,376,049. While nonprecedential, the Federal Circuit opinion nonetheless provided a refresher on requirements of inventorship and the standard used when inventorship is challenged. The ‘049 patent is directed toward a container for transporting refrigerated gaseous fluids and originally named...
Federal Circuit Again Address Whether “A” is a Singular-Only or Plural-Allowing Interpretation: ABS Global, Inc. v. Cytonome/ST, LLC
In ABS Global, Inc. v. Cytonome/ST, LLC, No. 22-1761 (Fed. Cir. Oct. 19, 2023), the Federal Circuit determined that the PTAB erred in its claim construction of a limitation common to all challenged claims (claims 1, 2, 6, 8, and 9) of U.S. Patent No. 10,583,439 (“the ‘439 patent”). Ultimately, the court reversed the Board’s written decision with respect to...
Federal Circuit Affirms the Board’s Claims Construction and Denial of Revised Motion to Amend: Sisvel Int’l v. Sierra Wireless, Inc.
In Sisvel Int’l v. Sierra Wireless, Inc., No. 2022-1387 (Fed. Cir. Sep. 1, 2023), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that claims 10, 11, 13, 17, and 24 of U.S. 7,433,698 (“the ‘698 patent”) and claims 1, 2, 4, and 13-18 of U.S. 8,364,196 (“the ‘196 patent”) were unpatentable as anticipated and/or obvious over certain...
Federal Circuit Affirms Grant of Summary Judgement Relating to Invalidity for Lack of Enablement Using Amgen Reasoning: Baxalta Inc. v. GenenTech, Inc.
In Baxalta Inc. v. GenenTech, Inc., No. 2022-1461 (Fed. Cir. Sep. 20, 2023), Baxalta Inc. and Baxalta GmbH (“Baxalta”) appealed from the U.S. District Court for the District of Delaware a grant of summary judgement that claims 1-4, 19, and 20 of U.S. Patent No. 7,033,590 (“the ‘590 patent”) are invalid for lack of enablement. The Federal Circuit affirmed. Baxalta...
Fed. Cir. Focuses on the Facts in PTAB Appeal
By Mark St. Amour
10/23/2023
Categories: 35 U.S.C. §§ 102, 103, The Claims Interpreted Report, The Software IP Report, USPTO Post-Issue Proceedings
The saga between Apple and Corephotonics continues in Corephotonics, Ltd. v. Apple Inc. where the Federal Circuit vacated and remanded final decisions of the PTAB concluding that challenged claims of 9,661,233 (“’233 patent”), 10,230,898 (“’898 patent”), 10,326,942 (“’942 patent”), and 10,356,332 (“’332 patent”) (collectively, the “Challenged Patents”) are unpatentable as obvious. In vacating the decisions, the Federal Circuit point to...
Fed. Cir. Claim Construction Focuses on Meaning of “A”
By Mark St. Amour
09/27/2023
Categories: Claim Construction, Patent Infringement, Patent Prep and Pros Best Practices, The Claims Interpreted Report, The Software IP Report
In Apple v Corephotonics, the Federal Circuit vacated and remanded a final decision of the PTAB holding that Apple failed to show that challenged claims of U.S. Patent No. 10,225,479 were obvious. Curiously, the Federal Circuit relied on patentee’s use of “a” when conducting claim interpretation of “a point of view (POV) of the Wide camera.” The ‘479 patent is...
Federal Circuit Affirms Eligibility of RFID Transponder Claims But Reverses Summary Judgment on Validity Based on RFID FOR DUMMIES
By David Hannon
02/06/2023
Categories: Patent Eligibility, The Software IP Report
In its December 16, 2022, precedential decision in ADASA, Inc. v. Avery Dennison Corp., the Federal Circuit addressed a range of issues, remanding the matter for resolution of facts relating to validity and for redetermination of the amount of a sanction. The relevant claims of the patent-in-suit, USPN 9798967, are directed to an RFID transponder. At the district court, the patent...
Federal Circuit Vacates PTAB Opinion in Google Application
By Bryan Hart
02/03/2023
Categories: 35 U.S.C. §§ 102, 103, Ex Parte PTAB Appeals, Patent Prep and Pros Best Practices, Software Patents, The Software IP Report
Google recently convinced a Federal Circuit panel to vacate a decision by the Patent Trial and Appeal Board that had found Google’s application obvious. The court decided that the Boardfailed to support the decision with sufficient reasoning. The claims in Google’s application pertained to delivering search results customized to an expected age of the searcher. The system calculates a “content...
Patent Office Introduces Deferred Responses for Subject Matter Eligibility Rejections
By Bryan Hart
01/10/2022
Categories: 35 U.S.C. § 101, Estoppel - Patent, Patent Eligibility, Patent Prep and Pros Best Practices, Software Patents, The Software IP Report
The Patent Office recently introduced a new pilot program called the Deferred Subject Matter Eligibility Response pilot program going into effect on February 1. As detailed in a Federal Register notice, the program permits applicants to delay responding to rejections for ineligible subject matter—e.g., that the claims are directed to an abstract idea or law of nature—until later in prosecution....
Federal Circuit Affirms Summary Judgement Relating to Self-Optimizing Network Technology and Network-Based Navigation: Traxcell Techs., LLC v. Sprint Communs. Co. LP
In Traxcell Techs., LLC v. Sprint Communs. Co. LP, Nos. 2020-1852, 2020-1854 (Fed. Cir. Oct. 12, 2021), the Federal Circuit affirmed a district court that granted summary judgement in favor Defendants, Sprint and Verizon, in a suit relating to alleged infringement of four of Plaintiff’s, Traxcell’s, patents: U.S. Patents 8,977,284 (“the ’284 patent”), 9,510,320 (“the ’320 patent”), 9,642,024 (“the ’024...