Are E-commerce Sites Liable for Trademark Infringement? The Sixth Circuit Gives Guidance

By William Broman
03/08/2021

Categories: The Software IP Report

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...

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A Photobooth Can Screen for Skin Cancer, But Federal Circuit Says it is Unpatentable Under § 103

By William Broman
02/28/2021

Categories: 35 U.S.C. §§ 102, 103, The Software IP Report

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...

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Conflicting Interpretations Invalidate Patent for Indefiniteness: Infinity Computer Prods., Inc. v. Oki Data Americas, Inc.

By Peter Keros
02/18/2021

Categories: 35 U.S.C. § 112, Indefiniteness, The Software IP Report

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...

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Automated Crop Growing and Monitoring Patents Pass Alice Test: Vineyard Investigations v. E. & J. Gallo Winery

By Brittany Leigh
02/15/2021

Categories: 35 U.S.C. § 101, Patent Eligibility, The Software IP Report

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....

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Attacking Individual References of an Obviousness Combination

By Christopher Francis
02/12/2021

Categories: The Claims Interpreted Report

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...

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References Still “Printed Publications” and Publicly Accessible under § 102 on a Poorly Designed Website

By William Broman
02/10/2021

Categories: 35 U.S.C. § 101, 35 U.S.C. §§ 102, 103, The Software IP Report

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...

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Patent Office Responds to Senators’ Questions About Representation of Women in the Patent Bar

By Bryan Hart
01/26/2021

Categories: Diversity

The Patent Office recently sent a reply to a group of senators asking about the gender diversity of the patent bar, the patent agents and patent attorneys licensed to practice before the Patent Office. The Patent Office’s letter provides some new data confirming the disparity between men and women in the patent bar, while promising to consider some changes to...

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NantWorks, LLC v. Niantic, Inc.: Reconciling Transactions Between Players of an Online Video Game is not Patent-Eligible

By Peter Keros
01/18/2021

Categories: 35 U.S.C. § 101, Patent Eligibility, The Software IP Report

In Nantworks v Niantic., the Northern District of California held that peer-to-peer online transaction reconciliation that uses a physical location of one of the participants is an abstract idea that is not patent-eligible subject matter under 35 U.S.C. § 101. No. 20-cv-06262 (N.D. Cal. Jan. 4, 2021). Plaintiff NantWorks asserted U.S. Patent No. 10,614,477 against Niantic. The ‘477 patent is...

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Does a “Plurality A, B, and C” Require More than One A, More than one B, and More than One C?: An Interpretation of Disjunctive and Conjunctive Phrases

By Christopher Francis
01/15/2021

Categories: Patent Claim Interpretation, The Claims Interpreted Report

SIMO Holdings v. Hong Kong uCloudlink Network (Fed. Cir., Jan. 5, 2021) is a precedential opinion that touches on an interesting claim interpretation topic regarding disjunctive and conjunctive phrases.  Independent claim 8 is at issue: 8. A wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module...

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Simio, LLC v. FlexSim Software Products, Inc.: Important Precedent for § 101 Patent-Eligibility of Software (or Lack Thereof)

By Charles Bieneman
01/10/2021

Categories: 35 U.S.C. § 101, Patent Eligibility, The Software IP Report

The Federal Circuit ended 2020 with a precedential opinion holding that patent claims directed to providing a graphical user interface for controlling a software object’s behavior were patent-ineligible under the Alice/Mayo test and 35 USC § 101. Simio, LLC v. FlexSim Software Products, Inc., No. 2020-1171 (December 29, 2020; opinion by Chief Judge Prost, joined by Judges Clevenger and Stoll)....

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