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Collateral Estoppel is Allowed to Apply to Rule 36 Affirmances of the PTAB

The Federal Circuit has affirmed that a Rule 36 judgment may serve as a basis for collateral estoppel in Patent Trial and Appeal Board (PTAB) proceedings, in addition to district court proceedings. In VirnetX Inc. v. Apple, Inc., Nos. 2017-2490, 2017-2494 (Fed. Cir. Dec. 10, 2018), the Federal Circuit affirmed the PTAB’s determination in two Inter Partes Reviews (IPRs) that a prior art document was a printed publication. While the PTAB’s final written decision did not reach the merits of any collateral estoppel argument,[1] the Federal Circuit affirmed the PTAB’s determination in those two IPRs that a prior art document was a printed publication expressly on the basis of collateral estoppel in view of a Rule 36 affirmance.[2] How did we get here? Apple challenged U.S. Patent No. 8,504,696 (the ’696 Patent), owned by VirnetX, in two IPR proceedings (IPR2016-00331 and IPR-2016-00332).[3] In IPR2016-00331, and in the companion case IPR2016-00332,… Continue Reading

Mastermine v. Microsoft: Following Precedent or Pivoting Away?

At the end of October, in Mastermine Software, Inc. v. Microsoft Corp., No. 2016-2465 (Fed. Cir. Oct. 30, 2017), the Federal Circuit reversed a district court’s determination that a system claim was invalid for indefiniteness. The Federal Circuit disagreed with the district court’s conclusion that certain claims were indefinite for improperly claiming two different classes of subject matter.[1] The court found that the claims informed those skilled in the art with “reasonable certainty”[2] in conformity with the Nautilus guidance, specifically on the basis that one can determine when infringement occurs.[3] Overview of the District Court’s decision Mastermine asserted U.S. Patent Nos. 7,945,850 and 8,429,518 against Microsoft in the U.S. District Court for the District of Minnesota. In its claim construction order, the District Court held that claims in both patents were invalid for indefiniteness for claiming two different classes – apparatus and method.[4] Claim 8 of the ’850 Patent recites,… Continue Reading

The Few, The Proud, The Patent-Eligible Software Claims

The Few, The Proud, The Patent-Eligible Software Claims

It is no secret that it is difficult for software technology patent claims to be deemed subject matter eligible under 35 U.S.C. § 101 on appeal, as only a handful of cases involving software technology have passed § 101 scrutiny by the Federal Circuit since the Supreme Court’s decision in Alice v. CLS Bank[1]: Until recently, there have been only three such cases: DDR Holdings, LLC v. Hotels.com, L.P.,[2] Enfish LLC v. Microsoft Corp.,[3] and BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC.[4] However, now a fourth case may be added to those ranks. On September 13, 2016, the Federal Circuit decided McRO, Inc. v. Bandai Namco Games America Inc.,[5] ruling that claims directed to automating part of a preexisting 3-D animation method were patent-eligible under § 101. Below is a review of the McRO case facts, the legal reasoning of the Federal Circuit in reaching its conclusion, and… Continue Reading

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