Amdocs v. Openet: Federal Circuit Finds Network Patents Eligible Under § 101

The Federal Circuit this month issued another decision finding claims to a computer-implemented invention to be patent-eligible under 35 U.S.C. § 101. In Amdocs (Israel) Ltd. v. Openet Telecom, Inc. (Fed. Cir. Nov. 1, 2016), the Federal Circuit held that claims directed to a distributed architecture for collecting and processing computer network data close to its source met the requirements of the Alice/Mayo framework, and therefore recited patent-eligible subject matter.

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USPTO Provides Guidance to Examiners on Recent Federal Circuit Decisions Relating to Patent Eligibility of Software Claims

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Over the past six years, the U.S. Supreme Court has issued a series of decisions—Bilski, Mayo, Myriad, and Alice—that have significantly impacted patent eligibility law, particularly in the areas of software and biotechnology. On November 2, 2016, the United States Patent and Trademark Office (USPTO) published a memorandum to patent examiners, discussing two recently-issued Federal Circuit decisions, namely McRO, Inc. v. Bandai Namco Games America Inc.[1] and BASCOM Global Internet Services v. AT&T Mobility LLC[2]. In these cases, software-related claims were deemed patent eligible—a seemingly rare occasion in view of the Supreme Court precedent (for discussion of the McRO and BASCOM decisions, please see details in our previous post). The November 2nd memorandum is the latest of three memoranda[3] discussing various Federal Circuit decisions concerning subject matter eligibility since the USPTO last updated its official guidelines on May 4, 2016. As in previous memoranda, the USPTO reiterates that the Federal Circuit decisions do not alter the current eligibility framework, but provide additional tools for finding patent eligible subject matter in software claims. In addition to discussing the McRO and BASCOM decisions, the November 2nd memorandum identifies several notable points to be considered by patent examiners. Continue reading

EPO Begins Enforcing Dual-Party Execution of Assignments

We have previously noted that assignments executed solely by the assignor (e.g., an inventor when assigning rights to their employer) are technically deficient in Europe due to a difference between U.S. and European law. In particular, Article 72 of the European Patent Convention (EPC) requires assignments to bear “the signature of the parties to the contract,” while contract law in the U.S. considers a contract signed only by the conveying party to be valid for this type of one-way conveyance.

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Federal Circuit Clarifies Pleading Requirements for Joint Infringement

Earlier this year, we discussed the potential ramifications of the December 2015 amendments to the Federal Rules of Civil Procedure on the pleading standard of infringement following the decision in Rembrandt Patent Innovations LLC v. Apple Inc. In Rembrandt, the U.S. District Court in the Northern District of California applied the Twombly/Iqbal standard of pleading to infringement contentions following the abrogation of Rule 84 of the Federal Rules of Civil Procedure and Form 18.

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U.S. Commerce Department Releases Updated Report Showing Intellectual Property-Intensive Industries Contribute $6.6 Trillion and 45.5 Million Jobs to U.S. Economy

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The U.S. Commerce Department recently released a comprehensive report, entitled “Intellectual Property and the U.S. Economy: 2016 Update” (the “Report”). The Report, which was co-authored by the Economics & Statistics Administration and the United States Patent and Trademark Office, builds upon an earlier 2012 report, finding that “IP-intensive industries continue to be a major, integral and growing part of the U.S. economy.” The Report provides a wealth of quantitative information and analysis on the value of trademarks, copyrights, and patents to the U.S. economy. Key findings include:

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TTAB Rules Changes Confirmed – Effective January 14, 2017

The public comments have been considered and the Trademark Trial and Appeal Board rule changes proposed in April 2016 and summarized in this blog post have been confirmed with only minor exceptions. The new rules will be effective on January 14, 2017, and will apply to all opposition and cancellation proceedings active on that date or subsequently filed.

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Ice Cream and Talking Pictures: Brandeis on Patents

“Infringement, whether direct or contributory, is essentially a tort,
and implies invasion of some right of the patentee.”

Portrait Of Louis Brandeis

Hulton Archive/Getty Images

Louis D. Brandeis took his seat on the bench of the United States Supreme Court for the first time on Monday, October 9, 1916. That opening day of the new term included the swearing in of Associate Justice John H. Clark and oral argument on several motions. It also marked the beginning of Justice Brandeis’s twenty-three-year tenure (1916-1939) on the high court, which is now considered one of the most important in American jurisprudence. Justice Brandeis was not only the first Jewish jurist to sit on the Supreme Court, but he impressed upon his colleagues that the law had to reflect economic and societal realities. In essence, he brought the principles that guided him in the practice of law to the bench.

Nutter was co-founded by Justice Brandeis in 1879 and his legacy continues as a source of pride and inspiration for us today. To honor the hundredth anniversary of Justice Brandeis’s first session, we have summarized several of the patent opinions he authored below. Continue reading

McRO v. Bandai: Latest Federal Circuit § 101 Decision Breathes New Life into Software Patents

The Federal Circuit last week handed down the latest in a series of decisions finding computer-implemented inventions to be patent-eligible under 35 U.S.C. § 101. In McRO, Inc. v. Bandai Namco Games America, Inc. et al. (Fed. Cir. Sept. 13, 2016), the Federal Circuit held that claims directed to software for automatically animating lip synchronization and facial expressions of animated characters were not directed to an abstract idea under the first prong of the Alice test, and therefore recited patent-eligible subject matter. McRO joins a growing list of Federal Circuit cases that find computer-implemented inventions to be non-abstract, including DDR Holdings, Enfish, and BASCOM.

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A Common Cue Creates No Confusion

Car stereo

Cue, Inc. sells high-end home audio equipment (e.g., table radios and speakers). In 2007, it applied to register the trademark CUE ACOUSTICS, and in late 2009 the USPTO allowed its application. Cue’s CUE ACOUSTICS mark was registered in August 2012, and later that year, its application for a separate mark—CUE—was allowed. Cue filed a Statement of Use for the CUE mark in November 2015.

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Common Sense Is Not So Common-ly Obvious

Almost a decade has elapsed since the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc. altered the law of patent obviousness. In reversing the judgment of the Federal Circuit, the Court in KSR limited the “teaching, suggestion, motivation” test and loosened the standards that both courts and the USPTO use to assess validity under 35 U.S.C. § 103. In particular, the Court expressly rejected the application of any inflexible obviousness rule that excluded consideration of, among other things, common sense.

The Federal Circuit, however, recently confirmed that common sense alone cannot suffice to establish obviousness. In Arendi S.A.R.L. v. Apple, Inc., the court held that the Patent Trial and Appeal Board (the PTAB) erred when it used common sense to supply a missing limitation in the prior art to arrive at the claimed invention. Not only is this case surprising in that factual findings of the PTAB are rarely overturned on appeal, but it also marks some constraints on the broad obviousness standard articulated in KSR. Continue reading

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