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The Software IP Report
Federal Circuit Affirms Eligibility of RFID Transponder Claims But Reverses Summary Judgment on Validity Based on RFID FOR DUMMIES
In its December 16, 2022, precedential decision in ADASA, Inc. v. Avery Dennison Corp., the Federal Circuit addressed a range of issues, remanding the matter for resolution of facts relating to validity and for redetermination of the amount of a sanction. The relevant claims of the patent-in-suit, USPN 9798967, are directed to an RFID transponder. At the district court, the patent...
Federal Circuit Vacates PTAB Opinion in Google Application
Google recently convinced a Federal Circuit panel to vacate a decision by the Patent Trial and Appeal Board that had found Google’s application obvious. The court decided that the Boardfailed to support the decision with sufficient reasoning. The claims in Google’s application pertained to delivering search results customized to an expected age of the searcher. The system calculates a “content...
Patent Office Introduces Deferred Responses for Subject Matter Eligibility Rejections
The Patent Office recently introduced a new pilot program called the Deferred Subject Matter Eligibility Response pilot program going into effect on February 1. As detailed in a Federal Register notice, the program permits applicants to delay responding to rejections for ineligible subject matter—e.g., that the claims are directed to an abstract idea or law of nature—until later in prosecution....
Federal Circuit Affirms Summary Judgement Relating to Self-Optimizing Network Technology and Network-Based Navigation: Traxcell Techs., LLC v. Sprint Communs. Co. LP
In Traxcell Techs., LLC v. Sprint Communs. Co. LP, Nos. 2020-1852, 2020-1854 (Fed. Cir. Oct. 12, 2021), the Federal Circuit affirmed a district court that granted summary judgement in favor Defendants, Sprint and Verizon, in a suit relating to alleged infringement of four of Plaintiff’s, Traxcell’s, patents: U.S. Patents 8,977,284 (“the ’284 patent”), 9,510,320 (“the ’320 patent”), 9,642,024 (“the ’024...
How Do You Draft a Consent Decree for Trademark Infringement to Account for Unknown Unknowns? The Sixth Circuit Says “The Usual Way” in Recent Ruling
In 1995, Amazon recently sold its first book and eBay was just getting off the ground. At that point, the idea of e-commerce marketplaces was in its infancy. It was unlikely that Jeff Bezos contemplated that I might be buying sunglasses, toothpaste, and an outdoor power tool in a single order while writing this blog (but I can, and I...
How Important is Compliance with the Marking Statute? The Federal Circuit Continues to Say It Is Pretty Important.
When an accused infringer admits to knowledge of potential infringement, but the commercial embodiment of the patent fails to comply with the marking statute, 35 U.S.C. § 287, what date should be used for calculating damages? The Federal Circuit says that if a product is not compliant with § 287, damages are calculated from the date of actual notice regardless...
Data Processing Claims Held Patent-Ineligible: Personal Web Technologies LLC v. Google LLC
In a precedential decision, the Federal Circuit has held patent-ineligible, under 35 U.S.C. § 101 and the Alice/Mayo test, claims of three patents directed to “data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.” PersonalWeb Techs. LLC v. Google LLC, Nos. 2020-1543, 2020-1553, 2020-1554 (Fed. Cir. August 12, 2021) (Opinion by...
Lessons of Yu v. Apple: The Law of § 101 Patent-Eligibility Is Chaos
Here is a case that both demonstrates the dysfunction of U.S. patent law with respect to eligible subject matter under 35 U.S.C. § 101, and offers lessons for practitioners wishing to buttress the patent-eligibility of their claims. In Yu v. Apple, Inc., NO. 2020-1760 (Fed. Cir. June 11, 2021)(precedential) a split Federal Circuit panel affirmed a district court’s holding of...
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...
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...