IP Blog
The Software IP Report and the Claims Interpreted Report.
Internet Data Backup Not Patent-Eligible under § 101: WhitServe LLC v. DropBox, Inc.
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 Cir. April 26, 2021) (non-precedential; opinion by Judge Reyna, joined by Judges Schall and Wallach).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
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.
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
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...
Are E-commerce Sites Liable for Trademark Infringement? The Sixth Circuit Gives Guidance
Can an e-commerce facilitator be liable for trademark infringement when the products they sell are designed by a third-party? The Sixth Circuit says it depends on the degree of control the e-commerce facilitator has over manufacturing, quality, and delivery of product to consumers. Digital marketplaces such as Amazon and eBay are typically not liable for trademark-infringing goods sold through their...
A Photobooth Can Screen for Skin Cancer, But Federal Circuit Says it is Unpatentable Under § 103
Can you succeed in an argument for obviousness by combining a skin cancer detection device with a device for creating made-to-measure clothing or custom avatar? The Federal Circuit says yes. In a precedential opinion, the Federal Circuit reversed the decision of the Patent Trial and Appeal Board (PTAB), holding that a series of references related to imaging the surfaces of...
Conflicting Interpretations Invalidate Patent for Indefiniteness: Infinity Computer Prods., Inc. v. Oki Data Americas, Inc.
What is a computer, when recited in a patent claim? The Federal Circuit recently discussed whether a recitation of a “computer” in a claim was indefinite under 35 U.S.C. § 112 in light of conflicting interpretations by the patentee. Infinity Computer Prods., Inc. v. Oki Data Americas, Inc. 2020-1189 (Fed. Cir. Feb. 10, 2021). Plaintiff Infinity asserted several patents against...
Automated Crop Growing and Monitoring Patents Pass Alice Test: Vineyard Investigations v. E. & J. Gallo Winery
In denying a motion to dismiss for lack of patent-eligible subject matter under 35 U.S.C. § 101, a court determined that U.S. Patents 8,528,834 and 6,947,810, relating to using sensors and data for growing and automated monitoring of crops, specifically grapevines, were not directed toward abstract ideas and sufficiently stated an inventive concept to be patent eligible. Vineyard Investigations v....
Attacking Individual References of an Obviousness Combination
In re: CSP Technologies (Fed. Cir., Jan. 21, 2021) is a nonprecedential opinion that nevertheless provides us with a good excuse to discuss In Re Keller, 642 F.2d 413 ( CCPA 1981) which is cited from time-to-time by Examiners during patent prosecution. This case is an appeal of an ex parte PTAB decision for US Patent Application No. 12/992,749. The...
References Still “Printed Publications” and Publicly Accessible under § 102 on a Poorly Designed Website
In a precedential opinion, the Federal Circuit upheld the decision of the USPTO’s Patent Trial and Appeal Board (PTAB) that documents presented at an industry task force meeting and later made available on the task force website qualify as printed publications under 35 USC § 102. M & K Holdings v. Samsung Elecs. Co., 2020-1160, (Feb. 1, 2021; Opinion by...