Case No. 23-1336, Precedential, (Fed. Cir. July 31, 2024) Dyk, Clevenger, Stoll Facts/Background: November 17 – December 8, 2016: Inventor offers to sell HyperDrive to Sanho, Sanho orders and tenders payment. No evidence HyperDrives delivered. December 13, 2016: Effective filing date of US 2018/0165053 (Kuo). April 27, 2017: Parent of US 10,572,429 filed (patent at issue). In […]
Case No. 23-2367, Precedential, (Fed. Cir. July 16, 2024) Prost, Hughes, Stoll Facts/Background: IP Edge and Mavexar create shell companies operated (in name) by unsophisticated individuals. IP Edge is allegedly using these shell companies as proxies for hundreds of lawsuits. LaPray is one of these individuals. This conduct comes to light when defendants and district […]
A Notice by the Patent and Trademark Office on 07/17/2024 Background: While the Alice/Mayo test for analyzing subject matter eligibility has not changed, this guidance update provides a discussion of how to evaluate AI inventions under Step 2A, Prong One and Prong Two. Three examples (Examples 47-49) are provided. Example 49 is discussed here. Claims […]
Case No. 23-1107, Precedential, (Fed. Cir. Sept. 3, 2024) Dyk, Reyna, Stark Facts/Background: Broadband sued Amazon alleging patent infringement. Amazon sought summary judgment that the asserted claims are patent ineligible under 35 U.S.C. § 101. District court agreed with Amazon. Federal Circuit affirmed. Two patent families (‘026 and ‘825) at issue. The ‘026 family is […]
Case No. 22-1654, Precedential, (Fed. Cir. Sept. 9, 2024) Prost, Schall, Reyna Facts/Background: Contour sued GoPro for infringing its patents directed to a point-of-view (POV) digital video camera. GoPro sought summary judgment that the asserted claims are patent ineligible under 35 U.S.C. § 101. District court agreed with GoPro. Federal Circuit reversed and remanded. The […]
Case No. 24-1061, Precedential, (Fed. Cir. Aug. 13, 2024) Lourie, Dyk, Reyna Facts/Background: Allergan sued Sun for patent infringement. District court decided that claim 40 of the ‘356 patent asserted against Sun is invalid under the doctrine of obviousness-type double patenting (ODP). Federal Circuit reversed. Sun argued that claim 40 of the ‘356 patent is […]
Case No. 23-1005, Precedential, (Fed. Cir. July 26, 2024) Lourie, Bryson, Reyna Facts/Background: Ex parte reexam, inter partes reexams, and inter partes review instituted with respect to US 7,461,353. Ex parte reexam and inter partes review proceedings stayed pending resolution of inter partes review. Inter partes review invalidates 18 claims. Other proceedings resume with respect to […]
By: Aikaterina (Katina) Assimacopoulos Fed. Cir. No. 23-1001 (May 21, 2024) (Taranto, Dyke, and Mayer) Issue: Is the phrase “entirely on [one’s] own time” unambiguous in an employment contract? Holding: No. “Entirely on [one’s] own time” could reasonably be interpreted to refer to all ‘off-the-clock’ time, or only a portion of it, and, thus, interpretation […]
By: Aikaterina (Katina) Assimacopulous Fed Cir. No. 22-1621 (May 20, 2024) (Moore, Stoll, and Bencivengo) Issues: Does § 285 extend recovery to IPR proceedings or liability to counsel? Holding: No. § 285 entitles a petitioner neither to recover fees incurred in parallel IPR proceedings nor to hold counsel jointly and severally liable. Background: Dragon sued […]
By: Aikaterina (Katina) Assimacopulous Fed. Cir. No. 2021-2349 ( May 21, 2024) (en banc) Issue: Does Supreme Court precedent overrule the Rosen-Durling test for design patent obviousness? Holding: Yes. Obviousness requires neither (1) the primary reference be “basically the same” as the claimed design; nor (2) any secondary reference be “so related” to the primary […]