IP Blog
Patent Standards
Means-Plus-Function Construction Can Lead to Indefiniteness
In Unicorn Global Inc. v. Golab, Inc. No. 3:19-CV-0754-N (N.D. Tex. May 26, 2020), the Northern District of Texas construed several disputed terms of U.S. Patent No. 9,376,155 and U.S. Patent No. 9,452,802, and found claims to be indefinite means-plus-function claims without having structure described in the specifications. The patents are directed to personal transportation devices known as hoverboards which include...
Claim Interpretation and Definiteness of Terms of Degree
In Kitsch LLC v. Deejayzoo, LLC (Case No. LA CV19-02556 JAK (RAOx)) the Central District of California interpreted claims of U.S. Patent No. 10,021,930 that included terms of degree as being sufficiently definite under 35 U.S.C. § 112. The case was initiated by Plaintiff Kitsch, who sought a judgment declaring invalidity of the ‘930 patent. The ‘930 patent is owned...
§ 112 Enablement and Written Description in Post-Grant Review
When are written description and enablement requirements of 35 U.S.C. § 112 met, and what is a Petitioner’s burden of showing those requirements are not met in a PTAB proceeding? In Instrumentation Laboratory Co. v. Hemosonics LLC, the Patent Trial and Appeal Board (PTAB) denied institution of post-grant review of U.S. Patent 9,977,039 (“the ‘039 patent”). The PTAB declined institution...
112 and the Zone of Uncertainty
In consolidated cases Niazi Licensing Corp. v. Boston Scientific Corp. and Niazi Licensing Corp. v. St. Jude Medical S.C. Inc. the district court found U.S. Patent 6,638,268 (“the ‘268 patent”) to be invalid under 35 U.S.C. § 112 for being indefinite and not particularly pointing out and distinctly claiming the subject matter which the inventor regards as the invention. The...
Finding of Improved Computer Functionally Supports Patent-Eligibility
In IDB Ventures, LLC v. Charlotte Russe Holdings, Inc. (2:17-CV-660-WCB-RSP), the Eastern District of Texas highlighted the effectiveness of showing that a patent claim is directed to a specific improvement to computer functionally for overcoming a challenge based on 35 U.S.C. § 101. Plaintiff IDB Ventures, LLC, (IDB) sued Defendant Charlotte Russe Holdings, INC., (Charlotte Russe) for infringement of U.S. Patent...
Motivation to Combine References Need Not be Explicit
How much motivation do you need to combine references to make something obvious? According to the Federal Circuit, enough to reasonably discern a proper path to combine the references. In Cablz, Inc. v. Chums, Inc., No. 2016-1823 (Fed. Cir. Sep. 12, 2017)(nonprecedential), the Federal Circuit Court of Appeals affirmed an obviousness rejection from the Patent Trial and Appeal Board of...
When Are Patent Claims Standard-Essential?
The question of whether claims from 23 different patents were “essential” to the IEEE 802.11 standard (popularly known as Wi-Fi) was presented to the court in In re Innovatio Ip Ventures, MDL Docket No. 2303, Case No. 11 C 9308 (N.D. Ill. July 26, 2013). In evaluating these claims, the court addressed a number of different issues related to determining...
Breach of Duty to Offer RAND Licensing Terms?
A lawsuit brought against a patent owner based on an alleged failure to offer a patent license on reasonable and nondiscriminatory (RAND) terms has largely survived the patent owner’s motion to dismiss. Realtek Semiconductor Corp. v. LSI Corp., No. C-12-03451 RMW (N.D. Cal. Oct. 10, 2012). The defendants, who contended that the patents at issue were essential for practicing the...
Must an Offer to License Be Reasonable and Non-Discriminatory?
What does a patent owner have to do to meet a requirement of a standards setting organization (SSO) that license terms be reasonable and non-discriminatory (RAND)? Does the patent owner simply need to be willing to license on RAND terms, or does the patent owner have to include RAND terms in its initial offer? In the continuing patent battle between...