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No Respite On The Horizon For CBM Patents

No Respite On The Horizon For CBM Patents

The Patent Trials and Appeals Board (“PTAB”) and the Federal Circuit have continued their hostility to payment and financial technology patents, recently invalidating three patents and reversing a large damage award in Smartflash LLC v. Apple Inc., Case No. 2016-1059 (Fed. Cir. March 1, 2017 (Smartflash). Given this stance, it seems as though the Covered Business Method (“CBM”) patent review under the America Invents Act (“AIA”), along with the decision in Alice Corp. v. CLS Bank Int’l, have become the death knell for many such patents moving forward. In Smartflash, the Federal Circuit invalidated three patents held by Smartflash LLC (“Smartflash”) that were asserted against Apple Inc. (“Apple”) two years ago, resulting in a decision of $533 million in damages in favor of Smartflash.  However, the overturning of the two-year old verdict from the Eastern District of Texas seemed likely after the PTAB found, in multiple CBM patent reviews, that the… Continue Reading

Secure Axcess Denied Access in Third CBM Eligibility Decision by Federal Circuit

Secure Axcess Denied Access in Third CBM Eligibility Decision by Federal Circuit

As a result of the Federal Circuit’s decision in Secure Axcess, LLC v. PNC Bank National Association in late February, it is not likely that a flood of Covered Business Method (“CBM”) reviews will be coming any time soon.  By statute, CBM reviews are reserved for patents relating to “a financial product or service,” and under the Federal Circuit’s narrow reading of that statute, the number of CBM reviews will likely remain quite small relative to the number of Inter Partes Reviews (“IPR”).  Although relatively few in number, CBM reviews have generated a number of precedential Federal Circuit opinions recently. In Secure Axcess, the Federal Circuit reversed the Patent Trial and Appeals Board’s (“PTAB”) decision finding that claims relating to website authentication were eligible for CBM review.  No. 16-1353, slip op. at 3 (Fed. Cir. Feb. 21, 2017).  Although earlier precedent, such as Blue Calypso, LLC v. Groupon, Inc., could… Continue Reading

The Design Patent Train Hits a Cow

The Design Patent Train Hits a Cow

The design patent train has been chugging along ever since the Federal Circuit overhauled the test for determining design patent infringement back in September 2008, making it easier for design patent owners to establish infringement and signaling the start of a pro-design patent era.  Apple jumped on the design patent train by winning a $399 million (!) award at the expense of Samsung after Samsung’s smartphones were found to infringe Apple’s design patents relating to the front portion of Apple’s iPhone.  This high-profile litigation award heightened awareness of the value of design patents, and the design patent train kept chugging. However, the design patent train appears to have hit a cow on the tracks, the cow being a unanimous 8-0 decision by the U.S. Supreme Court in Samsung Elecs. Co. v. Apple Inc., No. 15-777, (Dec. 6, 2016), overturning Apple’s $399 million award. The $399 million award by the lower… Continue Reading

Don’t Worry – You Got This: the Federal Circuit Clarifies the PTAB’s Power to Review IPR decisions after Cuozzo.

Don’t Worry – You Got This: the Federal Circuit Clarifies the PTAB’s Power to Review IPR decisions after Cuozzo.

The Patent Trial and Appeals Board (PTAB) has authority to review institution decisions for inter partes reviews (IPRs), according to the Federal Circuit’s October 20 decision in Medtronic v. Robert Bosch Healthcare.1 This decision comes after Medtronic petitioned for rehearing after the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee.2 Background The Medtronic suit began in 2013 when Bosch alleged that Cardiocom, LLC (a subsidiary of Medtronic) infringed Pat. Nos. 7,769,605 and 7,870,249, directed to patient monitoring systems.  Cardiocom then petitioned for inter partes review (IPR) of the two patents. After those petitions were denied, Medtronic filed an additional three petitions for the same two patents, listing Medtronic as the sole real party in interest.  Even though Bosch argued that the petitions should be denied because Medtronic failed to name Cardiocom as a real party in interest as required under 35 U.S.C. § 312(a)(2), the PTAB instituted IPR proceedings. … Continue Reading

Federal Circuit Relies on Claim Construction and Precedent to Find Software Claims Patent Eligible

Federal Circuit Relies on Claim Construction and Precedent to Find Software Claims Patent Eligible

Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 15-1180 (Fed. Cir. Nov. 1, 2016) is the latest in a series of recent decisions in which the U.S. Court of Appeals for the Federal Circuit has reversed a district court’s finding of patent ineligibility under 35 U.S.C. § 101.  In Amdocs, the Federal Circuit addressed the application of the judicially created “abstract idea” exception to patent eligibility under the two-step framework set forth by the U.S. Supreme Court in Alice Corp. v. CLS Bank International 134 S. Ct. 2347 (2014) (following Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)). The district court in Amdocs invalidated the four patents asserted by Plaintiff-Appellant Amdocs (Israel) Ltd. as patent ineligible under § 101 using the two-step Alice/Mayo framework:  US Patent Nos. 7,631,065 (“’065 patent”); 7,412,510 (“’510 patent”); 6,947,984 (“’984 patent”); and 6,836,797 (“’797 patent”).  As discussed by the Federal Circuit, all… Continue Reading

The Federal Circuit Analyzes the Disavowal Exception to the General Claim Construction Rule

The Federal Circuit Analyzes the Disavowal Exception to the General Claim Construction Rule

On October 14, 2016, in Poly-America, L.P. v. API Industries (Appeal No. 16-1200, Fed. Cir. October 14, 2016), the Court of Appeals for the Federal Circuit (“the CAFC”) analyzed and applied one of two exceptions to the general claim construction rule that claim terms are generally given their ordinary and customary meaning.  Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).  This one exception states that the plain and ordinary meaning standard [of claim construction] is departed from when the patentee disavows the full scope of the claim term in the specification or during prosecution. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). The question before the CAFC in Poly-America was whether any of the terminology in the asserted patent, or any of patentee’s actions during its prosecution, could be interpreted as a disavowal of claim scope.  In answering this question,… Continue Reading

Federal Circuit Questions Use Of Common Sense in Obviousness Rejections

Federal Circuit Questions Use Of Common Sense in Obviousness Rejections

Is common sense good enough to make up for deficiencies of a cited reference in an obviousness analysis?  In Arendi S.A.R.L. v. Apple Inc., the Federal Circuit said “no,” by reversing a decision of the Patent Trial and Appeal Board (“PTAB”) to invalidate U.S. Patent No. 7,917,843 (the “Arendi patent”). When Arendi S.A.R.L., a Luxembourg company, brought patent infringement suits against several technology heavyweights, including Apple, Inc., Google, Inc., and Motorola Mobility LLC, these defendant companies struck back by filing a petition for an Inter Partes Review (“IPR”) seeking to invalidate the Arendi patent.  In the IPR proceeding, the PTAB invalidated the Arendi patent on the grounds of obviousness under 35 U.S.C. §103.  Arendi then appealed the case to the U.S. Court of Appeal for the Federal Circuit. The Arendi patent is directed to computer functions that allow a user to remain in a document displayed by a first computer… Continue Reading

The Federal Circuit Muddies The 101 Waters After BASCOM

The Federal Circuit Muddies The 101 Waters After BASCOM

On September 30, 2016, in Intellectual Ventures I LLC, v. Symantec Corp., No. 15-1769, 15-1770, 15-1771, the Court of Appeals for the Federal Circuit (CAFC) overturned a lower court’s finding of patent eligibility under 35 U.S.C. § 101 for a patent directed to using computer virus screening in a telephone network, while affirming the lower court’s finding of patent ineligibility under 35 U.S.C. § 101 for two other patents directed to methods of screening emails and other data files for unwanted content, and methods of routing e-mail messages based on specified rules.    The court analyzed each of the patents at issue separately using the Mayo/Alice two-part test for determining patent eligibility under 35 U.S.C. § 101, coming to the same conclusion each time. First, the court addressed U.S. Patent No.  6,460,050 (“the ‘050 patent”), which was held patent ineligible by the lower court.  The ‘050 patent is directed to filtering e-mails that have unwanted content by… 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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