IP Blog
The Software IP Report and the Claims Interpreted Report.
How Do You Draft a Consent Decree for Trademark Infringement to Account for Unknown Unknowns? The Sixth Circuit Says “The Usual Way” in Recent Ruling
In 1995, Amazon recently sold its first book and eBay was just getting off the ground. At that point, the idea of e-commerce marketplaces was in its infancy. It was unlikely that Jeff Bezos contemplated that I might be buying sunglasses, toothpaste, and an outdoor power tool in a single order while writing this blog (but I can, and I...
How Important is Compliance with the Marking Statute? The Federal Circuit Continues to Say It Is Pretty Important.
When an accused infringer admits to knowledge of potential infringement, but the commercial embodiment of the patent fails to comply with the marking statute, 35 U.S.C. § 287, what date should be used for calculating damages? The Federal Circuit says that if a product is not compliant with § 287, damages are calculated from the date of actual notice regardless...
Data Processing Claims Held Patent-Ineligible: Personal Web Technologies LLC v. Google LLC
By Charles Bieneman
08/14/2021
Categories: 35 U.S.C. § 101, Patent Eligibility, The Software IP Report
In a precedential decision, the Federal Circuit has held patent-ineligible, under 35 U.S.C. § 101 and the Alice/Mayo test, claims of three patents directed to “data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.” PersonalWeb Techs. LLC v. Google LLC, Nos. 2020-1543, 2020-1553, 2020-1554 (Fed. Cir. August 12, 2021) (Opinion by...
Lessons of Yu v. Apple: The Law of § 101 Patent-Eligibility Is Chaos
By Charles Bieneman
06/14/2021
Categories: 35 U.S.C. § 101, Patent Eligibility, The Software IP Report
Here is a case that both demonstrates the dysfunction of U.S. patent law with respect to eligible subject matter under 35 U.S.C. § 101, and offers lessons for practitioners wishing to buttress the patent-eligibility of their claims. In Yu v. Apple, Inc., NO. 2020-1760 (Fed. Cir. June 11, 2021)(precedential) a split Federal Circuit panel affirmed a district court’s holding of...
Federal Circuit Lets Patent Office Use Prosecution Laches Against Prolific Filer Hyatt
By Bryan Hart
06/09/2021
Categories: Miscellaneous, Patent Civil Procedure, The Software IP Report
The Federal Circuit recently ruled in favor of the Patent Office asserting the rarely used doctrine of prosecution laches against serial patent applicant Gil Hyatt. Hyatt had brought an action in district court to order the Patent Office to grant multiple long-standing applications. The district court found in Hyatt’s favor and refused to apply prosecution laches. The Federal Circuit reversed...
Prosecution Disclaimer Pitfalls
By Mark St. Amour
06/07/2021
Categories: Claim Construction, Estoppel - Patent, Patent Claim Interpretation, Patent Infringement, Patent Prep and Pros Best Practices, The Claims Interpreted Report, The Software IP Report
In Speedtrack, Inc. v. Amazon.com, Inc. (June 3, 2021), the Federal Circuit affirmed not only the district court’s findings relating to patent infringement, but also the importance of prosecution history when interpreting the claims. More specifically, the Federal Circuit affirmed a finding that Amazon.com et al. (“Amazon”) did not infringe U.S. Patent No. 5,544,360. The finding of infringement hinged on whether...
Internet Data Backup Not Patent-Eligible under § 101: WhitServe LLC v. DropBox, Inc.
By Charles Bieneman
05/04/2021
Categories: 35 U.S.C. § 101, Patent Eligibility, The Software IP Report
Patent claims directed to backing up data to a client’s computers where the data has been outsourced for processing via the Internet failed the patent-eligibility test under the Alice/Mayo test and 35 U.S.C. § 101. WhitServe LLC v. DropBox, Inc., No. 2019-2334 (Fed. Cir. April 26, 2021) (non-precedential; opinion by Judge Reyna, joined by Judges Schall and Wallach). Perhaps the most...
A Standalone Reference Must “Enable” Claims to Render them Obvious
By David Hannon
04/29/2021
Categories: The Software IP Report
In Raytheon Tech. Corp. v. General Electric Co., the Federal Circuit recently overturned the USPTO Patent Trial and Appeal Board’s ruling that Raytheon’s claims to a gas turbine engine (in USPN 9,695,751) were unpatentable as obvious. The Board’s ruling came in an IPR proceeding initiated by GE. The claims of the patent at issue are directed toward a gas turbine engine...
SCOTUS Reverses Copyright Infringement Against Google, Copying API was Fair Use: Google LLC v. Oracle America, Inc.
By Peter Keros
04/08/2021
Categories: Fair Use, The Software IP Report
In a long anticipated decision, the Supreme Court of the United States has held that Google’s copying of code of an Application Programming Interface (API) developed by Oracle is a fair use of that code. The Court held, 6-2, that Google only copied code “needed to allow programmers to put their accrued talents to work in a new and transformative...
Federal Circuit Holds Patent Claims to Software Functionality Indefinite: Rain Computing, Inc. v . Samsung Electronics Co., LTD
By Charles Bieneman
03/15/2021
Categories: 35 U.S.C. § 112, Software Patents, The Software IP Report
The Federal Circuit affirmed the invalidity based on indefiniteness under 35 USC § 112(b) of patent claims “directed to delivering software application packages to a client terminal in a network based on user demands.” Rain Computing, Inc. v . Samsung Electronics Co., LTD, 2020-1646, 2020-1656 (Fed. Cir. March 2, 2021) (precedential, opinion by Judge Moore, joined by Judges Lourie and...