IP Blog
The Software IP Report and the Claims Interpreted Report.
35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.
In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The...
How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn
A patent plaintiff saw its jury trial victory vacated when the court granted a defense motion for judgment as a matter of law under FRCP 50(b), finding that the plaintiff had not proved that the accused products had structure corresponding to claimed means. SPEX Technologies, Inc. v. Apricorn, No. CV 16-07349 JVS (AGRx) (C.D. Cal. Aug. 10, 2020). The jury...
Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 2 of 2)
The Federal Circuit recently denied a rehearing en banc in American Axle & Manufacturing v. Neapco Holdings, letting stand a panel decision invalidating a method of manufacturing driveline propeller shafts as ineligible subject matter under § 101. This post covers the multiple concurrences and dissents accompanying the rehearing denial, which reveal a splintered court. Part 1 covered the background and...
Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 1 of 2)
The Federal Circuit has modified a panel decision and denied a rehearing en banc in a closely watched § 101 case, American Axle & Manufacturing v. Neapco Holdings. The original decision had found all the claims, which were directed to a method of manufacturing driveline propeller shafts, ineligible subject matter (previously covered in this post). The new panel decision maintained...
District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime
Indefiniteness was decided in a claim construction order from the Northern District of California in VTT Technical Research Centre of Finland v. SiTime. The court corrected a claim by inserting a missing element, but also invalidated all the claims for indefiniteness because the means-plus-function element “drive or sense means” lacked sufficient structure. VTT thus won a battle but lost the...
CAFC Split Favors Patent-Eligibility of Network Monitoring Claims: Packet Intelligence LLC v. NetScout Systems, Inc.
A split Federal Circuit panel disagreed whether patent claims directed to network monitoring for whether received packets belong to a particular “conversational flow” are directed to an abstract idea. Judge Lourie was joined by Judge Hughes in affirming a district court’s findings of fact and conclusions of law rejecting a defense of patent-eligibility, under 35 U.S.C. § 101 and the...
Changing a Game Risk/Reward Parameter Fails Patent-Eligibility at Summary Judgment: Bot M8 LLC v. Sony Corp. of America
A patent claim directed to adjusting an individual gaming machine control parameter (i.e., the risk/reward level) based on aggregate gaming machine results was held patent-ineligible at summary judgment under 35 U.S.C. § 101 and the Alice/Mayo test. Bot M8 LLC v. Sony Corporation of America, et al, No. C 19-07027 WHA (N.D. Cal., June 10, 2020.) Background The plaintiff Bot...
Patent Claims to Authenticating Users in Transactions Lack Technical Improvement, Fail Patent-Eligibility: Universal Secure Registry LLC v. Apple Inc.
Claims directed to authenticating users for a transaction are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo patent-eligibility test, and therefore the court granted a Rule 12(b)(6) motion to dismiss in Universal Secure Registry LLC v. Apple Inc., Civ. No. 17-585-CFC-SRF (D. Del. June 30, 2020). The court overruled a Magistrate Judge’s report and recommendation that the motion be denied,...
Conclusory Legal Statements are not Factual Allegations to Survive Section 101 Eligibility: Dropbox Inc. v. Synchronoss Techs, Inc.
Conclusory legal statements that attempt to invoke a factual allegation do not sufficiently allege an inventive concept to satisfy patent eligibility under 35 U.S.C. § 101. Dropbox Inc., Orcinus Holdings, LLC v. Synchronoss Techs. Inc, 2019-1765, 2019-1767, 2019-1823 (Fed. Cir. June 19, 2020) (nonprecedential). Plaintiff Dropbox asserted infringement of U.S. Patent Nos. 6,178,505, 6,058,399, and 7,567,541 against Defendant Synchronoss. The...
Claimed Improvement Not Patent-Eligible Where Reducible to Mental Steps: Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc.
A Rule 12 motion to dismiss was granted where patent claims directed to “authenticating a user to a transaction at a terminal” failed the 35 U.S.C. § 101 and Alice/Mayo patent-eligibility test. Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc., Civil Action No. 18-1477-CFC (D. Del. June 24, 2020). Notably, the plaintiff attempted to rely on...