B2 Intellectual Property Report

The Software IP Report

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The Claims Interpreted Report

Patent Claim Preamble Not Limiting, Infringement Not Derailed

Here is a case illustrating the general rule that the preamble of a patent claim is rarely construed as a substantive claim limitation. In Georgetown Rail Equipment Co. v. Holland L.P.¸ No. 2016-2297 (Fed. Cir. Aug. 1,… Read More

Indirect Patent Infringement Requires Direct Infringement

Because “a finding of direct infringement is a predicate to any finding of indirect infringement,” the Federal Circuit reversed a district court’s findings of indirect patent infringement where the evidence did not… Read More

Patent Pleadings Standards and Divided Infringement

When a plaintiff accuses multiple defendants of cooperating to infringe a patent, a well-pled complaint must make clear which defendant controls an accused system, and how defendants cooperate to practice a claimed metho… Read More

Analogous Patent Prior Art from Different Field of Endeavor?

If you are trying to disqualify a prior art reference as non-analogous in either patent prosecution or litigation, here is a case to remind you of limitations of such arguments. In Smartdoor Holdings, Inc. v. Edmit Indus… Read More

Defendant Controlled Information Not Required in Pleadings

Does the fact that relevant information is “arguably within [the defendant’s] sole possession” affect the plaintiff’s burden in pleading a claim for patent infringement?  In Prowire, LLC v. Apple, Inc. , the Uni… Read More

Obviousness Upheld with Secondary Reference Unrelated to Field of Technology

When can prior art references be combined to invalidate patent claims as obvious under 35 U.S.C. § 103?  Here is one case providing a lesson on this question.  In Nidec Motor Corporation v. Zhongshan Broad Ocean Motor… Read More

IPR Petitioner Must Establish References are Patents or Printed Publications

In Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-00593, Paper 45 (PTAB Aug. 28, 2017), the Patent Trial and Appeal Board held Xactware did not establish that a document was a printed publication… Read More

Markman Construction of “Along” based on the Specification

In Stern v. Globus Medical in the District of Delaware (Civil Action No. 1:16-cv-91-RGA), theMarkman construction of the claim term “along a longitudinal axis” was “on line or course parallel or close to,” i.e.,… Read More

With License Ambiguous, Patent Exhaustion Heads to Jury

In Audio MPEG, Inc. v. Dell Inc., the Eastern District of Virginia denied summary judgment of patent exhaustion because it was ambiguous whether a license between Audio MPEG and Dell’s supplier Microsoft covered the al… Read More

No Patent-Eligibility for Biometric Identification System

Patent claims to “providing global biometric identification services to a plurality of remote parties” are directed to an unpatentable abstract idea under 35 U.S.C. § 101, said the court in IQS US Inc. v. Calsoft La… Read More

Upcoming Webinar

Business Methods and Patent-Eligibility at the USPTO
September 22, 2017 at 12:00 pm EDT
During the webinar, Charles Bieneman will discuss recent trends and current practices with respect to patent-eligibility at the USPTO’s business methods arts units – including a looks at how some cases are surviving Section 101 rejections. Register

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