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Lismont v. Alexander Binzel Corp. (Fed. Cir. 2016)

Laches Bars Claim to Change Inventorship on Issued U.S. Patent - On February 16, 2016, the Federal Circuit issued an opinion in a case captioned Hedwig Lismont v. Alexander Binzel Corp. This appeal arises from an...more

Gonzalez v. Infostream Group, Inc. (E.D. Tex. 2016)

Producing "digital labels" is Patent Eligible under § 101 - On February 6, 2016, the U.S. District Court for the Eastern District of Texas (Marshall Division) issued a decision in a case captioned Gonzalez v. Infostream...more

Convolve, Inc. v. Compaq Computer Corp. (Fed. Cir. 2016)

Despite Amendments during Reexamination, Intervening Rights Not Found - On February 10, 2016, the Federal Circuit issued an opinion in a case captioned Convolve, Inc., and Massachusetts Institute of Technology v. Compaq...more

Driessen v. Sony Music Entertainment (Fed. Cir. 2016)

On February 10, 2016, the Federal Circuit issued a nonprecedential opinion in a case captioned Driessen v. Sony Music Entertainment, Best Buy Stores, Fye, & Target Corp. addressing issues related to means-plus-function claims...more

Avid Technology, Inc. v. Harmonic, Inc. (Fed. Cir. 2016) - Lesson for Defendant-Appellee's: Provide Responsive Arguments on Appeal

On January 29, 2016, the Federal Circuit issued an Opinion in Avid Technology, Inc. v. Harmonic, Inc. in which the judgment of the District Court was vacated, and the case was remanded for a new trial on infringement. Avid...more

Motivation Innovations, LLC v. Petsmart, Inc. (D. Del. 2016)

Coupon Patent Easily Found Invalid under § 101 - On January 12, 2016, the District Court for the District of Delaware issued an opinion in a case captioned Motivation Innovations, LLC v. Petsmart, Inc. Plaintiff,...more

NRT Technology Corp. v. Everi Payments, Inc. (PTAB 2016)

Business Method Patent Survives PTAB Review - On January 22, 2016, the U.S. Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a covered business method (CBM) patent review in a case captioned...more

Mortgage Grader, Inc. v. First Choice Loan Services Inc. (Fed. Cir. 2016)

Financial Services Patent Claims Invalid - On January 20, 2016, the Federal Circuit issued an opinion in the case captioned Mortgage Grader, Inc. v. First Choice Loan Services Inc., NYLX, Inc. This case involves patent...more

Genband US LLC v. Metaswitch Networks Corp. (E.D. Tex. 2016)

Genband US LLC sued Metaswitch for infringement of claims of U.S. Patent No. 6,772,210 ("the '210 Patent") and U.S. Patent No 7,047,561 ("the '561 Patent") in the U.S. District Court for the Eastern District of Texas...more

Recognicorp, LLC v. Nintendo Co. (W.D. Wash. 2015)

Generic Software Claims Found Ineligible under § 101 - A common theme found in recent patent litigation is that software claims lacking detail are more likely to be found invalid under 35 U.S.C. § 101. The U.S....more

01 Communique Laboratory, Inc. vs. Citrix Systems, Inc., (N.D. Ohio 2015)

Patent Eligibility Requires Consideration of the Claim as a Whole - The U.S. District Court for the Northern District of Ohio (Eastern Division) issued an opinion on December 21, 2015 in the case captioned 01 Communique...more

Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC (Fed. Cir. 2015)

Patent Claims (and Specification) Lacking in Detail Fail under 35 U.S.C. § 101 - The Federal Circuit issued an opinion on December 28, 2015 in the case captioned Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA,...more

Claim Drafting Strategies -- Functional Claiming and Reciting User-Action

On December 1, 2015, the International Trade Commission (ITC) rendered an opinion In the Matter of Certain Vision-Based Driver Assistance System Cameras, Components Thereof, and Products Containing the Same, investigation no....more

"Software" Claims Reciting No Structural Components and Having Questionable Novelty Struck Down under 35 U.S.C. § 101

Two recent District Court decisions show examples of "weak" claims, which in the past would likely be found invalid as lacking novelty or being obvious, but today are struck down as being unpatentable under § 101. The cases...more

Ex parte Jung (PTAB 2015) - Computer-Readable Medium Claims vs. Printed Matter

Most software or computer-related patent applications today include a number of different types of claims, such as method claims, device claims, and computer-readable medium (CRM) claims. Such CRM claims are usually directed...more

PTAB Issues Questionable 101 Decision

The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office has likely seen an increase in the number of appealed rejections under 35 U.S.C. § 101 due to the Supreme Court's decision in Alice Corp. Pty. Ltd. v....more

In re Steed (Fed. Cir. 2015) - Swearing Behind Reference Still Requires Proof of (Timely Filed) Evidence

Thomas Steed, Sourav Bhattacharya, and Sandeep Seshadrijois (collectively "Steed") filed a patent application entitled "Web-Integrated On-Line Financial Database System and Method for Debt Recovery," on April 6, 2004, with...more

R+L Carriers, Inc. v. Qualcomm, Inc. (Fed. Cir. 2015) - Be Wary of Claim Amendments During Reexamination

Traditional patent law holds that a patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of...more

Media Rights Technologies, Inc. v. Capital One Financial Corp. (Fed. Cir. 2015) - Broad Claim Terms and Inadequate Support in...

In Media Rights Technologies, Inc. v. Capital One Financial Corp. (September 4, 2015), the Federal Circuit first transformed a broadly described element in a claim into a means-plus-function claim term, and then found the...more

Inline Plastics Corp. v. EasyPak, LLC (Fed. Cir. 2015) - Claim Terms Not Limited to Specific Embodiment

In Inline Plastics Corp. v. EasyPak, LLC, the Federal Circuit offered some bits of wisdom for patent application specification drafting, while applying well-known case law to conclude that claims are not limited to a specific...more

Standard Essential Patents Unenforceable on Theory of Indirect Infringement

A recent decision by the Federal Circuit in JVC Kenwood Corp. v. Nero, Inc., decided August 17, 2015, involves nuanced details of standard-essential patents, but arrived at a common sense result: either the patents at issue...more

Software Patents Are Still Very Useful Despite Alice, But Are Business Method Patents?

Patents generally describe new inventions in terms of a unique structure, function, or combination of structure and function. Those patents that focus on functions of computers or computer-implemented functionality are often...more

MBHB Snippets: Review of Developments in Intellectual Property Law: Fall 2014 - Vol. 12, Issue 4

In This Issue: - Prior Art Redefined Under the AIA - PTAB Holds a Firm Line on Additional Discovery - The Art of Prior Art Searching - Anticipating a Federal Trade Secret Law - Trademark...more

The Art of Prior Art Searching

Prior to filing a patent application at the United States Patent and Trademark Office (“USPTO”), an applicant seeking patent protection for an invention should consider conducting a prior art search. Also known as a...more

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