IP Newsflash
Keeping you updated on recent developments in intellectual property law.
Filter by Category
Search Results
IP Newsflash
The Federal Circuit recently affirmed a Rule 12(b)(6) dismissal of patent claims directed to a graphical user interface that seeks to enhance how search
results are displayed to a user. The court agreed that the claims are patent ineligible under 35 U.S.C. § 101 because they do nothing more than identify,
analyze and present certain data to a user, without disclosing any technical improvement as to how computer applications are used.
results are displayed to a user. The court agreed that the claims are patent ineligible under 35 U.S.C. § 101 because they do nothing more than identify,
analyze and present certain data to a user, without disclosing any technical improvement as to how computer applications are used.
IP Newsflash
Judge Wu in the Central District of California recently granted dismissal of patent infringement claims directed to generating and sharing video content over a
social network because they are patent ineligible under 35 U.S.C. § 101. After deciding claim construction, the court held that the claims fail the Alice
two-step framework. Under Alice step one, the court found that the claims are directed to the abstract idea of prompting a user to record and share content
because the claimed steps involve generic actions without reciting any specific improvement to the claimed user interface or other computer technology.
Under Alice step two, the court found that the claims lack an inventive concept because they are results-oriented and they do not recite any specific means
of accomplishing the claimed results other than using existing, off-the-shelf computer technology.
social network because they are patent ineligible under 35 U.S.C. § 101. After deciding claim construction, the court held that the claims fail the Alice
two-step framework. Under Alice step one, the court found that the claims are directed to the abstract idea of prompting a user to record and share content
because the claimed steps involve generic actions without reciting any specific improvement to the claimed user interface or other computer technology.
Under Alice step two, the court found that the claims lack an inventive concept because they are results-oriented and they do not recite any specific means
of accomplishing the claimed results other than using existing, off-the-shelf computer technology.
IP Newsflash
Senior Circuit Judge Bryson of the Federal Circuit, sitting by designation in the District of Delaware, recently granted-in-part and denied-in-part a Rule 12(c)
motion for judgment based on patent eligibility under 35 U.S.C. § 101. The patents are directed to restricting access to computer files. The court found
certain claims eligible because they are directed to a problem arising in the realm of computers and they identify a specific improvement in computer
capabilities. The court found other claims ineligible because they broadly recite generic steps and results and they were not limited to the technical
advancement disclosed in the specification.
motion for judgment based on patent eligibility under 35 U.S.C. § 101. The patents are directed to restricting access to computer files. The court found
certain claims eligible because they are directed to a problem arising in the realm of computers and they identify a specific improvement in computer
capabilities. The court found other claims ineligible because they broadly recite generic steps and results and they were not limited to the technical
advancement disclosed in the specification.
IP Newsflash
Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (Feb. 24, 2023).
IP Newsflash
During a Markman hearing, a judge in the Eastern District of North Carolina denied a plaintiff’s request that the defendant be judicially estopped from arguing
claim constructions that were different from positions the defendant took in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board
(PTAB).
claim constructions that were different from positions the defendant took in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board
(PTAB).
IP Newsflash
The Federal Circuit reversed a summary judgment order of infringement after interpreting an asserted claim of U.S. Patent No. 9,736,689 (the “ʼ689 Patent”)
more narrowly than the district court. In short, the district court erred when, and despite claim language to the contrary, it treated certain claim elements as
“optional” in an effort to cover all disclosed embodiments. Because the patentee did not offer evidence of infringement under the correct construction, the
Federal Circuit ordered the district court to enter summary judgment of noninfringement.
more narrowly than the district court. In short, the district court erred when, and despite claim language to the contrary, it treated certain claim elements as
“optional” in an effort to cover all disclosed embodiments. Because the patentee did not offer evidence of infringement under the correct construction, the
Federal Circuit ordered the district court to enter summary judgment of noninfringement.
IP Newsflash
A federal judge in the Eastern District of Virginia granted defendant Amazon.com, Inc.’s motion for attorneys’ fees under 35 U.S.C. § 285, ordering plaintiff
Innovation Sciences, LLC to pay over $700,000 in fees that accrued after the court’s Markman order.
Innovation Sciences, LLC to pay over $700,000 in fees that accrued after the court’s Markman order.
IP Newsflash
On February 14, 2017, Judge Chhabria of the Northern District of California granted, in part, Apple’s motion to exclude the expert report of Unwired Planet’s
survey expert, Dr. Allenby. Dr. Allenby was hired to conduct a consumer survey to assess the value of the claimed method for “provisioning” a mobile
communication device. This process involves the mobile communication device connecting with a server and being authenticated to allow the user access to
certain services. According to the decision, Dr. Allenby’s report, however, relied on Unwired Planet’s proposed definition of “provisioning,” and not the court’s
construction. The expert had defined the term “provisioning” to mean something akin to “providing;” however, the court’s construction was far narrower.
survey expert, Dr. Allenby. Dr. Allenby was hired to conduct a consumer survey to assess the value of the claimed method for “provisioning” a mobile
communication device. This process involves the mobile communication device connecting with a server and being authenticated to allow the user access to
certain services. According to the decision, Dr. Allenby’s report, however, relied on Unwired Planet’s proposed definition of “provisioning,” and not the court’s
construction. The expert had defined the term “provisioning” to mean something akin to “providing;” however, the court’s construction was far narrower.
IP Newsflash
An Eastern District of Texas judge denied Defendants’ motion for judgment on the pleadings that the asserted claims are invalid under Alice concluding the
decision here is best left until after claim construction. The claims at issue relate to processing coupons. Defendants contend the asserted claims should be
invalidated because they are directed to the abstract idea of ‘offering, tracking, and processing discounts’—a concept Defendants contend is a longstanding
commercial practice.” Id. at 5. Defendants also argued that the discount vehicle claims are invalid under the printed matter doctrine because the claim term
“discount vehicle” can only be interpreted as paper with certain text and/or graphics printed on it. Plaintiff responded that making a decision at this stage is
inappropriate because there exists underlying factual disputes concerning the scope of the claims. Specifically, Plaintiff argued that “discount vehicle” is not
limited to a sheet or card as interpreted by Defendants.
decision here is best left until after claim construction. The claims at issue relate to processing coupons. Defendants contend the asserted claims should be
invalidated because they are directed to the abstract idea of ‘offering, tracking, and processing discounts’—a concept Defendants contend is a longstanding
commercial practice.” Id. at 5. Defendants also argued that the discount vehicle claims are invalid under the printed matter doctrine because the claim term
“discount vehicle” can only be interpreted as paper with certain text and/or graphics printed on it. Plaintiff responded that making a decision at this stage is
inappropriate because there exists underlying factual disputes concerning the scope of the claims. Specifically, Plaintiff argued that “discount vehicle” is not
limited to a sheet or card as interpreted by Defendants.