IP Blog
Patent Civil Procedure
Federal Circuit Upholds District Court Inventorship Ruling
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 While nonprecedential, the Federal Circuit opinion nonetheless provided a refresher on requirements of inventorship and the standard used when inventorship is challenged.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 Lets Patent Office Use Prosecution Laches Against Prolific Filer Hyatt
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...
No Stay for Supreme Court Petition in American Axle & Mfg. v. Neapco Holdings
In the latest episode of the closely watched case American Axle v. Neapco, the Federal Circuit denied American Axle’s motion to stay pending its petition for writ of certiorari to the Supreme Court. The case started as an infringement action for U.S. Patent No. 7,774,911, covering a method of manufacturing driveline propeller shafts. In a panel decision, the Federal Circuit...
Case Dismissed Because Lack of Direct Infringement of Patent Claims Requiring a Mobile Device: Garrett v. TP-Link Research
A district court recently dismissed a complaint for failing to properly allege direct infringement with the mobile device recited in the patent claims. Garrett v. TP-Link Research America (N.D. Cal.). An app for installation on a mobile device does not count as a mobile device or as using a mobile device for showing direct infringement, and when pleading indirect infringement,...
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...
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,...
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...
Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules
In the latest development in extensive litigation between Shure and ClearOne over audio and conferencing equipment, the District of Delaware rejected a motion to dismiss Shure’s claims over multiple civil procedure grounds, including as compulsory counterclaims to an earlier suit and as failing to be the first to file. The conflict between Shure and ClearOne began not in the District...
Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)
The sins of the parent patent will not be visited on the child patent, at least in the Western District of Texas. An earlier determination of ineligible subject matter does not trigger claim preclusion against an infringement suit asserting a patent issued from a continuation application from the earlier patent. VideoShare, LLC v. Google LLC, Civ. No. 6-19-CV-00663-ADA (W.D. Tx....
Federal Circuit Holds Telecommunications System Access Control Patent-Ineligible: Ericsson Inc. v. TCL Comm. Tech. Holdings, Ltd.
Patent claims directed to “limiting and controlling access to resources in a telecommunications system” failed the 35 U.S.C. § 101 and the Alice/Mayo patent-eligibility test, held a split Federal Circuit panel, reversing the Eastern District of Texas’s denial of summary judgment. Ericsson Inc. v. TCL Comm. Tech. Holdings, Ltd. (Fed. Cir. April 14, 2020) (opinion by Chief Judge Prost joined by...