Mealey's Patents

  • May 24, 2024

    Federal Circuit Undoes Patent Priority Determination, Endorses 2-Way Test

    WASHINGTON, D.C. — A motion by the owner of a junior patent for a finding that a senior patent application was time-barred was wrongly rejected by the Patent Trial and Appeals Board in an interference proceeding, the Federal Circuit U.S. Court of Appeals held May 23, vacating and remanding the board’s subsequent decision to award priority to the patent applicants.

  • May 23, 2024

    Squabble Over Subpoena In Semiconductor Substrate Patent Row Sent To Texas

    BOSTON — A federal magistrate judge in Massachusetts on May 22 did not reach the merits of a motion to quash a subpoena served on a wafer manufacturer, instead transferring the request to the Texas federal court where an infringement action over semiconductor products incorporating the wafers is already under way. 

  • May 22, 2024

    DISH Can Amend Patent Complaint; FuboTV Denied Dismissal In Delaware

    WILMINGTON, Del. — Litigation over a series of adaptive bitrate streaming patents will proceed in Delaware, a federal judge there ruled May 21, granting a motion by the patent owner and exclusive licensee to amend their complaint to add more than 100 patent claims allegedly infringed by the sports streaming service fuboTV Media Inc.

  • May 21, 2024

    En Banc Court Overrules Rosen-Durling, Endorses Graham For Design Patents

    WASHINGTON, D.C. — In a May 21 en banc holding, the Federal Circuit U.S. Court of Appeals said the “same conditions for patentability that apply to utility patents apply to design patents” and declared their decades-old approach to determining design patent obviousness “improperly rigid” and no longer good law.

  • May 21, 2024

    Board Distinguishes Dell Patent Application From AI Example In Revised Guidance

    ALEXANDRIA, Va. — An examiner’s determination that a machine learning model for providing improved forecasting of market behavior is unpatentable will not be disturbed, the Patent Trial and Appeal Board said May 20, rejecting reliance by real party-in-interest Dell Products L.P. on a neural network-based example in the U.S. Patent and Trademark Office’s updated guidance on patent eligibility.

  • May 21, 2024

    Divided Panel: ‘Own Time’ Language In Patent Invention Agreement Is Ambiguous

    WASHINGTON, D.C. — Findings by a federal judge in California that a 2011 assignment by an inventor to his company of rights to a bandwidth optimization patent was ineffective because of an invention agreement he signed with a former employer more than two decades earlier must be revisited, a divided Federal Circuit U.S. Court of Appeals concluded May 21.

  • May 20, 2024

    Divided Panel Clarifies Scope Of Recoverable Fees Under Section 285

    WASHINGTON, D.C. — Four years after reversing a determination that defendants DISH Network L.L.C. and Sirius XM Radio Inc. (SXM) did not qualify as prevailing parties in a patent infringement action, a divided Federal Circuit U.S. Court of Appeals panel on May 20 affirmed a Delaware federal judge’s finding on remand that DISH and SXM cannot recoup the attorney fees they incurred during a “voluntary” and “parallel” proceeding before the Patent Trial and Appeal Board (PTAB).

  • May 20, 2024

    Defamation Claims Over Infringement Warnings Preempted By Patent Law

    MIAMI — A patent owner should be awarded summary judgment on counterclaims of defamation and tortious interference leveled by an infringement defendant that alleged, among other things, that the defamatory statements caused it to lose out on profits it could have made in Russia’s war on Ukraine, a federal magistrate judge in Florida ruled May 17.

  • May 17, 2024

    In Win For Invisalign Maker, ‘Showdown’ Remote Dentistry Patent Claims Held Ineligible

    SAN FRANCISCO — When “stripped of excess verbiage and techno-jargon,” two “showdown” patent claims directed to a deep learning device for monitoring the progress and performance of an orthodontic aligner recite abstract ideas, and their introduction of “generic neural networks” to the field of remote dentistry, “without more,” is not enough to transform the ideas into patent eligible subject matter, a federal judge in California concluded May 16.

  • May 17, 2024

    Illinois Federal Judge: Fix For ‘Technological Hiccup’ Satisfies Alice Step 2

    CHICAGO — Although agreeing with an infringement defendant that four web chat patents recite the abstract idea of organizing conversations, a federal judge in Illinois on May 16 said that because the patents are directed to a sufficiently inventive solution to the “technological hiccup” of statelessness when communicating in a hypertext transfer protocol (HTTP) web browser, they survive an early patent eligibility challenge.

  • May 16, 2024

    Fees, Sanctions Wrongly Awarded, Patent Owner Tells Federal Circuit

    WASHINGTON, D.C. — A federal judge in California, assigned to a patent case after it had already been closed, erred in granting a Google LLC request for attorney fees to the tune of $191,302.18 and in subsequently sanctioning counsel for the patent owner $63,525.30, the patent owner tells the Federal Circuit U.S. Court of Appeals.

  • May 15, 2024

    PUMA Design Patent Claim Survives Early Challenge In Washington

    SEATTLE — A motion for judgment on the pleadings by Brooks Sports Inc. was partly granted May 14 when a federal judge in Washington ordered a purported trademark licensor to be joined to an infringement action initiated by a rival athletic footwear company.

  • May 15, 2024

    Planned Hearing In Review Of Dissolvable Magnesium Patent Canceled

    ALEXANDRIA, Va. — The Patent Trial and Appeal Board will consider the patentability of dissolvable magnesium alloy technology used in the fracking industry without the benefit of oral argument, canceling a hearing that had been planned for May 31 in a contentious inter partes review (IPR) that has yielded threats of sanctions in connection with an expunged motion and invocation by a patent owner of an Executive Order signed by President Donald Trump.

  • May 14, 2024

    PREP Act Immunity In Swab Patent Row Not Ripe For Appeal, Federal Circuit Says

    WASHINGTON, D.C. — Denial by a federal judge in Maine of a swab maker’s motion to dismiss patent infringement allegations on grounds that it is immune from suit as part of the federal coronavirus response will not be reviewed, the Federal Circuit U.S. Court of Appeals said May 14.

  • May 13, 2024

    Patent Board Upholds Rejection By Examiner Of Regeneron Application

    ALEXANDRIA, Va. — An effort by Regeneron Pharmaceuticals Inc. to undo a final rejection of an application to patent a method of characterizing proteins failed May 13 when the Patent Trial and Appeal Board said it found no error in a determination by an examiner that substituting prior art neonatal fragment crystallizable receptor (FcRn) resins with Regeneron’s claimed protein A resins would have been obvious.

  • May 13, 2024

    Eligibility Of ‘Charge-Back’ Patents Debated At Federal Circuit Oral Arguments

    WASHINGTON, D.C. — Counsel for an appellant told the Federal Circuit U.S. Court of Appeals on May 10 that five patents were wrongly declared ineligible for patenting by a Georgia federal judge, calling the “point of the invention” an “unconventional data flow” that provides merchants cost savings and other benefits.

  • May 13, 2024

    Federal Circuit Exercises Jurisdiction Over Appeal Of Anti-Filing Injunction

    WASHINGTON, D.C. — An order by a federal judge in Delaware barring a frequent pro se litigant from filing future lawsuits against individuals she says conspired to tank her earlier patent infringement lawsuits satisfies the relevant test for retaining “arising under” appellate jurisdiction, the Federal Circuit U.S. Court of Appeals said May 10.

  • May 10, 2024

    Appellant: Patent Owner, Licensee Level ‘Meritless’ Allegations In Brief

    WASHINGTON, D.C. — A bamboo building products company held liable at a jury trial for patent infringement is denying allegations by the patent owner and patent licensee that its appeal to the Federal Circuit U.S. Court of Appeals improperly proposes a new construction of a disputed claim term.

  • May 09, 2024

    Magistrate Denies Motion For Indicative Relief In FCA Suit Alleging Overcharging

    SAN FRANCISCO — A California federal magistrate judge denied a relator’s motion for an indicative ruling that pursuant to the Ninth Circuit U.S. Court of Appeals’ decision in United States ex rel. Silbersher v. Valeant Pharms. Int’l, Inc., a similar False Claims Act (FCA) suit brought by the same relator, the magistrate judge should grant the relator “relief” from the judgment on appeal to the Ninth Circuit after dismissing his claims that pharmaceutical companies overcharged the federal government and states under Medicare and Medicaid.

  • May 08, 2024

    Panel Agrees: Domestic Industry Requirement Not Satisfied By Patent Owner

    WASHINGTON, D.C. — Findings by the International Trade Commission (ITC) that a patent owner failed to establish a domestic industry for its electronic stud finder technology were affirmed May 8 by the Federal Circuit U.S. Court of Appeals.

  • May 08, 2024

    Discretionary Denial Of Apple Petitions Warranted, Patent Owner Asserts

    ALEXANDRIA, Va. — Infringement litigation in Texas federal court over several fraud detection patents is too far along to institute inter partes review (IPR), the patent owner told the Patent Trial and Appeal Board on May 7, urging a discretionary denial of the challenges to its technology by Apple Inc.

  • May 07, 2024

    In Win For AI Company, Panel Upholds Cancellation Of Patent Claims By Board

    WASHINGTON, D.C. — Voice command technology allegedly infringed by an artificial intelligence (AI) company’s free and open-source software virtual assistant was confirmed unpatentable on May 6 by the Federal Circuit U.S. Court of Appeals.

  • May 07, 2024

    PTO Persuades Panel To Remand IFIT Appeal To Trademark Board

    WASHINGTON, D.C. — Over the objection of appellant iFIT Inc., the Federal Circuit U.S. Court of Appeals has remanded the fitness company’s appeal of its failed bid to block an application to register the “I-FIT FLEX” trademark in view of a concession by the U.S. Patent and Trademark Office (PTO) that the Trademark Trial and Appeal Board’s ruling was light on factual support, which the agency said could hamper appellate review.

  • May 06, 2024

    Amazon Patent Evaluation Submission Is Purposeful Direction, Panel Says

    WASHINGTON, D.C. — The initiation of an evaluation under the Amazon Patent Evaluation Express (APEX) system — which triggers the potential removal of an allegedly infringing product listing from if a seller fails to respond — constitutes a purposeful direction of activities at the seller’s forum state sufficient to confer specific personal jurisdiction, the Federal Circuit U.S. Court of Appeals has ruled. 

  • May 06, 2024

    Printed Matter Doctrine Wrongly Applied By Board, Federal Circuit Says

    WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on May 3 upheld a determination by the Patent Trial and Appeal Board that the vast majority of challenged claims in three patents directed to a tunneling client access point are unpatentable but said six claims in two of those same patents were wrongly deemed anticipated, following the board’s erroneous application of the printed matter doctrine.