IP Blog
Patent Infringement
Prosecution Disclaimer Pitfalls
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...
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,...
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...
Providing Software for User Device Insufficient to Adequately Plead Infringement of Method Claim
The Northern District of California dismissed a complaint of patent infringement for failing to adequately plead direct or joint infringement. Sentius Int’l LLC v. Apple Inc., No. 4:20-cv-00477 (N.D. Cal. June 2, 2020). The Court held that merely selling software did not constitute direct infringement and that Sentius did not adequately allege the requisite direction or control required for joint...
Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco
In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the...
The Doctrine of Equivalents Fails to Save Patent Infringement Suit: Ethicon Endo-Surgery, Inc., et al, v. Covidien LP
Following a bench trial, the District Court of Massachusetts held that Ethicon’s “shepherd’s hook” design for finger actuation of a forceps is not equivalent to a “finger loop” claimed by Covidien’s patent no. 9,241,759, and thus Covidien had failed to establish infringement for Ethicon’s Enseal X1 Large Jaw vessel sealer. Ethicon Endo-Surgery, Inc. v. Covidien LP, No. 16-12556-LTS (D. Mass.,...
Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent
A provisional patent application must include sufficient description to allow a person having ordinary skill in the art to make an invention as claimed in an asserted patent claiming priority to the provisional application, as recently upheld in Speedfit LLC et al v. Woodway USA, Inc. et al, No. 2-13-cv-01276 (E.D.N.Y. Jan. 9, 2020). Plaintiff Speedfit, LLC owns U.S. Patent...
Federal Circuit Upholds Noninfringement Because of Claim Construction of “Extruded Parison”: Plastic Omnium v. Donghee America
The Federal Circuit recently upheld a summary judgment of noninfringement based on an undisputed claim construction in Plastic Omnium v. Donghee America. The dispute centered on manufacturing plastic fuel tanks by blow molding. Plastic Omnium is a French automotive supplier specializing in plastics. Donghee America is also an automotive supplier that makes plastic parts for Hyundai and Kia. Plastic Omnium...
Absolute or Equitable Intervening Rights, It Matters
Delaware District Court grants-in-part and denies-in-part patentee’s motion for summary judgment regarding accused infringer’s defense of intervening rights. Sonos, Inc. v. D&M Holdings, Inc.,No. 14-1330-WCB (D. Del. Nov 7, 2017). The owner of a patent that survives reexamination “is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date...
Plain and Ordinary Claim Construction
In Wisconsin Alumni Research Foundation v. Apple, No. 2017-2265 (Fed. Cir. Sept. 20, 2018), the Federal Circuit construed a pair of claim terms under their plain and ordinary meaning in reversing summary judgment that Apple was not entitled to a pre-trial finding of non-infringement of U.S. Patent 5,781,752, while affirming a summary judgment that the ‘752 patent was not anticipated. The...