Category Archives: Invalidity

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The Decision To Grant Rehearing En Banc In Apple v. Samsung

On October 7, 2016, the Federal Circuit issued another decision in the ongoing patent litigations between Apple and Samsung that began in the Northern District of California. The district court had found at summary judgment that Samsung infringed one of Apple’s patents.  The jury subsequently determined that Samsung infringed two others, and that the asserted … Continue reading this entry

Federal Circuit Finds Claims Implemented on a General Purpose Cellphone Not Patentable

In Alice Corp. v. CLS Bank International, the Supreme Court applied its two-part test for patent eligibility under 35 U.S.C. § 101 – i.e., (1) whether the claims are drawn on a law of nature, natural phenomenon or abstract idea, and (2) whether the claims provide sufficient “inventive concept.” In Alice, the Supreme Court ultimately … Continue reading this entry

Two Recent Decisions Put Alice "Step One" on Center Stage at The Federal Circuit

On May 12 and May 17, 2016, the Federal Circuit issued decisions in two § 101 cases, EnFish, LLC v. Microsoft Corp. and In re TLI Communications, LLC. Both authored by Judge Hughes, the decisions illustrate the difficult process of determining where to draw the line between a claim that is directed to an “abstract idea” under step … Continue reading this entry

The Threshold of Exceptionality: There Is a Line, and It Can Be Crossed

Non-practicing entity (“NPE”) plaintiffs beware and NPE defendants be delighted: sanctions for objectively unreasonable claims and conduct are alive and well. Defendants in NPE litigations, particularly in the Eastern District of Texas, received encouraging news recently when Judge Gilstrap granted $390,829 in fees to more than 20 defendants in response to motions for attorneys’ fees on … Continue reading this entry

Delaware Judges Are Finding Patent Claims Indefinite Post-Nautilus

It has been a little more than a year since the Supreme Court rendered its decision in Nautilus, lowering the standard for finding patent claim terms indefinite. Many commentators at that time predicted the decision would have broad implications for all patent cases where definiteness is at issue. Two recent cases from the District of Delaware demonstrate the … Continue reading this entry

Two Bites, Taken Together: Parallel and Serial IPR Petitions

As the body of institution and final decisions in inter partes review (IPR) trials grows, useful trends at both decision stages can be identified. One emerging trend is the relative likelihood that two petitions attacking one or more of the same claims will be more likely granted if filed in parallel (multiple petitions, simultaneously, on the same patent) as compared to … Continue reading this entry

Patent Eligibility Under Alice: Reliance on Lack of Routine or Conventional Use

Federal courts have continued to wrestle with the standard for patent eligibility under 35 U.S.C. § 101 set by the Supreme Court’s ruling in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). This is illustrated, for example, in two decisions – one from a district court and one from the … Continue reading this entry

Has the Machine-or-Transformation Test Returned to Prominence in Patent Cases?

The machine-or-transformation test was once the gatekeeper of patent eligibility, but that reign ended in 2010 when the Supreme Court stated in Bilski that it is not the sole test for determining patentability. By 2013 the test became largely ignored, for example in the Federal Circuit’s Ultramercial opinion. When that opinion was vacated and remanded by the Supreme … Continue reading this entry

New Guidance From the Federal Circuit on Motions to Stay Litigation Pending a PTAB Proceeding

In VirtualAgility Inc. v. Salesforce.com, Inc., No. 2014-1232 (July 10, 2014), the Federal Circuit issued its first opinion directed to the issue of when it is appropriate to grant a stay of a district court patent infringement lawsuit while a covered business method review proceeding (“CBM”) occurs. The case will have important ramifications for future cases … Continue reading this entry

The Supreme Court Defines New Indefiniteness Standard

Today the Supreme Court issued an opinion in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, which was previously discussed here. The unanimous court, in an opinion by Justice Ginsburg that looked to the language of the statute and Supreme Court precedent articulated the following standard: [A] patent is invalid for indefiniteness if its claims, read … Continue reading this entry

District Court: Notification of IPRs Necessary to Comply with Duty of Candor and Good Faith

On May 2, 2014, Judge Davis of the Eastern District of Virginia determined that counsel in a pending patent litigation “failed to comply with their general duty of candor and good faith to this Court” by not disclosing the fact that the defendant had filed petitions for inter partes review on the patents-in-suit while a … Continue reading this entry

Supreme Court Takes on the Federal Circuit's "Extravagant" Indefiniteness Standard

Yesterday, the Supreme Court heard oral argument in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369. Biosig sued Nautilus in 2004 over a patent covering heart rate monitor technology associated with exercise equipment. The district court invalidated the claims for being indefinite, however the Federal Circuit reversed concluding that the claims would have been understood … Continue reading this entry

PTAB Terminates IPR Sua Sponte Where Claims Are Indefinite

As dictated by 35 U.S.C. § 311, a petitioner can pursue inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB” or “Board”) based on certain grounds of anticipation or obviousness under 35 U.S.C. §§ 102 or 103, respectively. This prior-art based inquiry generally involves an evaluation of patents or printed publications that the petitioner relies on … Continue reading this entry

Supreme Court Hears Argument on Software Patents

The Supreme Court heard arguments this morning in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, which concerns the patent eligibility of computer-implemented inventions. This is the fourth recent Supreme Court case addressing patent eligibility under 35 U.S.C. § 101, following Bilski, Mayo and Myriad–however none of those cases explicitly addressed § 101 as applied to computer-implemented … Continue reading this entry

"Patent Reform 2014" White Paper Available for Download

Over the past 2 years I’ve been closely following the slew of patent reform proposals in Congress, the Executive Branch, the Courts, and the 50 States.  I have yet to find a document that lists–much less explains–all the many, many proposals percolating in DC and across the country. So I wrote one: “PATENT REFORM 2014:  A Comprehensive Guide to Current … Continue reading this entry

Are Computer-Implemented Inventions Patent Eligible?

On March 31, the Supreme Court will hear arguments in Alice Corp. Pty. Ltd. v. CLS Bank Int’l (Supreme Court Docket No. 13-298). At issue is the scope of § 101 patent-eligible subject matter, with the patent eligibility of computer-implemented inventions hanging in the balance. Special interest groups have shown significant interest in the outcome … Continue reading this entry

PTAB Invalidates Patent Despite Settlement

As more and more AIA post-grant review decisions are being issued, practitioners should be aware that the Patent Trial and Appeal Board (PTAB) may rule on the validity of the patent at issue despite settlement by the parties. Unlike ex parte and inter partes reexamination proceedings, AIA statutory provisions allow for settlement of post-grant trials … Continue reading this entry

District Courts Staying Cases Pending CLS Bank, but the Federal Circuit Decides One

In December, the Supreme Court granted certiorari in CLS Bank Int’l v. Alice Corp., No. 13-298, in which the question presented by the petitioner is “[w]hether claims to computer-implemented inventions — including claims to systems and machines, processes, and items of manufacture — are directed to patent-eligible subject matter within the meaning of 35 U.S.C. … Continue reading this entry

Federal Circuit Upholds Invalidity Under 35 U.S.C. § 112 ¶ 2.

The Federal Circuit’s recent decision in Juxtacomm-Texas Software, LLC v. Tibco Software, Inc., Nos. 2013-1004, -1025 (Sept. 30, 2013) (nonprecedential) serves as a reminder of the vulnerability of patent claims that drift beyond the scope of what an applicant regarded as its invention: The decisions of the district court … construing the relevant claim language of U.S. Patent No. … Continue reading this entry

Federal Circuit Addresses Design Patent Invalidity Standards

Practitioners working in the area of design patent litigation should take note of the Federal Circuit’s recent decision in High Point Design LLC v. Buyers Direct, Inc., No. 2012-1455 (Sept. 11, 2013), which provides guidance and instructions concerning design patent invalidity that are of the utmost importance to anyone seeking to invalidate or assert a design … Continue reading this entry

Federal Circuit Clarifies Double Patenting Safe Harbor Provision

Earlier this month, in St. Jude Medical, Inc. v. Access Closure, Inc., No. 2012-1452 (Sept. 11, 2013) the Federal Circuit clarified the double patenting safe harbor provision in 35 U.S.C. § 121. The safe harbor provision is designed to prevent the inherent unfairness that would occur if claims found to be patentably distinct by the … Continue reading this entry

Be Aware of Invalidating Offers-for-Sale by Manufacturing Partners

UPDATED (Originally Published on Aug 27, 2013) The Federal Circuit’s recent decision in Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc., Appeal No. 2012-1581 illustrates the danger to patent holders of potentially triggering an “on-sale” bar when outsourcing product manufacturing, or even product development, to third-parties that may themselves make invalidating offers for sale. Hamilton … Continue reading this entry

Federal Circuit Breathes New Life Into § 101 Challenges

Today, the Federal Circuit issued a fractured decision in CLS Bank v. Alice Corp. (Fed. Cir. 2013) that may breathe new life into challenges to patent validity under 35 U.S.C. § 101. Despite seven different opinions from the en banc Court, none of which garnered a majority, the Court affirmed that the software-oriented patent claims … Continue reading this entry