Patent Litigation

In ClassCo, Inc. v. Apple, Inc. the Federal Circuit upheld a decision from the Patent Trial and Appeal Board (“the Board”), which invalidated several claims of ClassCo’s US Patent No. 6,970,695 (“the ’695 patent”) that discussed caller ID technology that would verbally announce the name of an incoming caller before the call is connected.

The Federal Circuit reversed the invalidation of two patents directed to providing security for credit card purchases in an opinion released earlier today.  The patents at issue, U.S. Patent Nos. 7,840,486 and 8,036,988, disclose methods for effecting secure credit-card purchases by minimizing merchant access to credit card numbers.

The plot just thickened in the long-running debate over where patent cases should be litigated.

The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board.

The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents.

On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of reasonable diligence,” was too exacting and in conflict with Federal Circuit precedent.

Earlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101.  Both patents—the ’050 and the ’610—are directed to filtering email or file content.

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same portions to hold the claims unpatentable.

On November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously discussed at Global IP Matters.

Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings.

Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.

On October 19, 2016, the ITC instituted Investigation No. 1025, based on a complaint filed on May 26, 2016, by Silicon Genesis Corporation (SiGen), against Soitec, S.A. (Soitec). As part of the institution, the ITC ordered that the ALJ issue an early initial determination regarding whether SiGen “has satisfied the economic prong of the domestic industry requirement.”

The Federal Circuit reaffirmed last week that the Patent Trial and Appeal Board’s (PTAB’s) decision to discontinue inter partes review (IPR) proceedings is not reviewable on appeal.

The Patent Trial and Appeal Board (PTAB) recently designated Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016), as precedential.  In this decision the Board clarified how to interpret method and system claims that include conditional language.

Plaintiffs bringing patent infringement complaints under the Iqbal/Twombly pleading standard should take notice.  On September 30, 2016, a panel of the Federal Circuit affirmed a district court’s dismissal of a deficient complaint under Rule 12(b)(6).

As a patent owner involved in patent litigation, you must consider numerous factors when negotiating a settlement agreement. An important contemplation is timing, because finalizing a settlement agreement at the wrong juncture of your legal proceedings can have devastating results.

The Federal Circuit recently determined that it lacked jurisdiction to review the Patent Trial and Appeal Board’s determination that assignor estoppel has no affect in an inter partes review (“IPR”).

The Federal Circuit relied on Nautilus to preserve functional language of a method claim in a decision published last Friday.  In Cox Comm, Inc. v. Sprint, No. 2016-1013, the Federal Circuit held that the term “processing system” did not render the asserted claims indefinite.

On remand from the Supreme Court’s decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016), the Federal Circuit recently issued a revised decision in Stryker Corp. v. Zimmer, Inc., No. 2013-1668 (Fed. Cir. 2016). The decision provides insight into the court’s interpretation of the Halo standard and enhanced damages.

Two years after the Central District of California invalidated two 3-D animation patents under Section 101, the Federal Circuit reversed that court’s decision, finding that the lower court oversimplified the claims of a computer-related invention.