Bryan Hart

No Stay for Supreme Court Petition in American Axle & Mfg. v. Neapco Holdings

In the latest episode of the closely watched case American Axle v. Neapco, the Federal Circuit denied American Axle’s motion to stay pending its petition for writ of certiorari to the Supreme Court. The case started as an infringement action for U.S. Patent No. 7,774,911, covering a method of manufacturing driveline propeller shafts. In a panel decision, the Federal Circuit invalidated one independent claim under § 101 as directed to a natural law and remanded another independent claim to the district court to determine whether the claim was invalid as directed to an abstract idea (previously covered here). The Federal Circuit also denied rehearing en banc in a contentious 6-6 decision (previously covered here). The test for a stay pending a writ of certiorari requires (1) a “reasonable probability” that cert is granted, (2) a “fair prospect” of reversal by the Court, and (3) a likelihood of irreparable harm from denying the stay. The order by Judge Dyk set aside the first two prongs and denied the stay based on a lack of irreparable harm. American Axle pointed to the significant litigation expenses of continuing to litigate the case in the district court for the remanded independent claim, but precedent… Read More »No Stay for Supreme Court Petition in American Axle & Mfg. v. Neapco Holdings

Case Dismissed Because Lack of Direct Infringement of Patent Claims Requiring a Mobile Device: Garrett v. TP-Link Research

A district court recently dismissed a complaint for failing to properly allege direct infringement with the mobile device recited in the patent claims. Garrett v. TP-Link Research America (N.D. Cal.). An app for installation on a mobile device does not count as a mobile device or as using a mobile device for showing direct infringement, and when pleading indirect infringement, direct infringement by an end user must be alleged. Garrett’s complaint against TP-Link failed on these scores, so the court granted TP-Link’s motion to dismiss the complaint, without prejudice. Garrett, an individual, sued TP-Link over its line of a security cameras for infringement of U.S. Patent Nos. 9,854,207 and 10,511,809. All the claims of the patents require a “mobile device” and a “camera,” and some of the claims further require a “server.” The court used claim 19 of the ’207 patent and claim 10 of the ’809 patent as representative: 19. A mobile surveillance system, comprising: a mobile device configured to communicate with at least one camera positioned at a surveillance area, wherein the at least one camera captures surveillance data of the surveillance area; and the mobile device is configured to control activation of the mobile surveillance system, and… Read More »Case Dismissed Because Lack of Direct Infringement of Patent Claims Requiring a Mobile Device: Garrett v. TP-Link Research

Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 2 of 2)

The Federal Circuit recently denied a rehearing en banc in American Axle & Manufacturing v. Neapco Holdings, letting stand a panel decision invalidating a method of manufacturing driveline propeller shafts as ineligible subject matter under § 101. This post covers the multiple concurrences and dissents accompanying the rehearing denial, which reveal a splintered court. Part 1 covered the background and the modified panel decision, in which the court invalidated this claim as ineligible subject matter: 22. A method for manufacturing a shaft assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, the shaft assembly being adapted to transmit torque between the first driveline component and the second driveline component, the method comprising: providing a hollow shaft member; tuning a mass and a stiffness of at least one liner; and inserting the at least one liner into the shaft member; wherein the at least one liner is a tuned resistive absorber for attenuating shell mode vibrations and wherein the at least one liner is a tuned reactive absorber for attenuating bending mode vibrations. The court split 6-6 on whether to grant a rehearing, with the tie vote leading to a denial.… Read More »Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 2 of 2)

Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 1 of 2)

The Federal Circuit has modified a panel decision and denied a rehearing en banc in a closely watched § 101 case, American Axle & Manufacturing v. Neapco Holdings. The original decision had found all the claims, which were directed to a method of manufacturing driveline propeller shafts, ineligible subject matter (previously covered in this post). The new panel decision maintained that result for two of the independent claims but remanded on a third independent claim. (Stay tuned for a follow-up post on the en banc denial, which revealed a fractured court with multiple concurrences and dissents and a 6-6 tie vote.) Much of the controversy centered on the subject matter of the patent at issue, U.S. Patent No. 7,774,911—not software or medical diagnostics, as in most applications of § 101, but instead a purely mechanical invention. All three independent claims were for “a method for manufacturing a shaft assembly of a driveline system.” The patent focused on the problem of vibrations in the driveshaft, by making a liner to fit inside the driveshaft. Vibrations came in three flavors: bending mode, which involves vibrations curving the shaft along its length; torsion mode, twisting the shaft; and shell mode, flexing circumferentially around… Read More »Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 1 of 2)

District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime

Indefiniteness was decided in a claim construction order from the Northern District of California in VTT Technical Research Centre of Finland v. SiTime. The court corrected a claim by inserting a missing element, but also invalidated all the claims for indefiniteness because the means-plus-function element “drive or sense means” lacked sufficient structure. VTT thus won a battle but lost the war. VTT is a Finnish state-owned nonprofit research company, including for microelectromechanical systems (MEMS). SiTime is a MEMS manufacturer. VTT is suing for infringement of U.S. Patent No. 8,558,643, covering a MEMS device used in semiconductors to reduce deformation as a result of temperature fluctuations. Independent claim 29 states: 29. A method for designing a micromechanical device comprising a semiconductor element capable of deflecting or resonating and comprising at least two regions having different material properties, drive or sense means functionally coupled to said semiconductor element, the method comprising choosing a basic semiconductor material for the semiconductor element, choosing at least one n-dopant to be added to the semiconductor material, designing the inner structure of the semiconductor material, wherein said designing of the inner structure comprises determining at least two n-dopants, n-dopant concentrations and/or crystal orientations of n-doped material, and… Read More »District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime

Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules

In the latest development in extensive litigation between Shure and ClearOne over audio and conferencing equipment, the District of Delaware rejected a motion to dismiss Shure’s claims over multiple civil procedure grounds, including as compulsory counterclaims to an earlier suit and as failing to be the first to file. The conflict between Shure and ClearOne began not in the District of Delaware but in the Northern District of Illinois. In 2017, Shure filed a declaratory judgment of noninfringement of ClearOne’s U.S. Patent No. 9,635,186, and ClearOne responded with counterclaims for infringement of the ’186 patent and of U.S. Patent No. 9,813,806. Both patents relate to beamforming microphones in ceiling arrays, an area in which the parties compete. ClearOne got a preliminary injunction for the ’806 patent (but not the ’186 patent), specifically against Shure’s MXA910 product “in its drop-ceiling mounting configuration.” In 2019, ClearOne filed a second infringement suit against Shure in the Northern District of Illinois over U.S. Patent No. 9,264,553, also related to beamforming microphones. Shure got an inter partes review instituted by the Patent Trial and Appeal Board against the ’553 patent, but the PTAB ended up upholding the challenged patent claims. In this District of Delaware… Read More »Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules

Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the defendants had offered of embodiments that were not enabled by the patent. McRO owns the sole patent at issue, U.S. Patent No. 6,611,278, which covers a “method for automatically animating lip synchronization and facial expression of animated characters.” The patent describes automating the modeling of an animated character’s mouth according the phoneme being spoken by the character. A phoneme is the smallest unit of spoken speech, i.e., a single sound. For each phoneme, a “morph target” is applied to a model of the neutral position of the character’s mouth. Each morph target is a set of “deltas,” each of which is a vector representing the change in position of a vertex of the mouth model from the neutral position to a phoneme-specific position. Each delta can be scaled by a “morph weight” between 0 and 1. Here is a representative… Read More »Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)

The sins of the parent patent will not be visited on the child patent, at least in the Western District of Texas. An earlier determination of ineligible subject matter does not trigger claim preclusion against an infringement suit asserting a patent issued from a continuation application from the earlier patent. VideoShare, LLC v. Google LLC, Civ. No. 6-19-CV-00663-ADA (W.D. Tx. May 4, 2020). Because this case involves claim preclusion (or res judicata, if you like Latin), the conflict necessarily started in an earlier case. Back in 2013, VideoShare sued Google in the District of Delaware for infringing U.S. Patent No. 8,464,302, “Method and System for Sharing Video with Advertisements over a Network.” The accused product was YouTube. The court invalidated the ’302 patent as ineligible subject matter under § 101, and the Federal Circuit confirmed the result. The current case features the same parties and the same accused product, with the case now relocated to the Waco, Texas. VideoShare accused Google—specifically YouTube—of infringing U.S. Patent No. 10,362,341. The ’341 patent is a continuation of the ’302 patent from the Delaware case. During prosecution of the ’341 patent, VideoShare had to use a terminal disclaimer to overcome a double-patenting rejection over… Read More »Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)

When Are Preambles Limiting?

In his recent article Without Preamble, Stanford professor Mark Lemley surveys the morass of law on determining when patent claim preambles are limiting, and he predicts that it will be swept away if the Supreme Court ever faces the issue. Given that possibility, how should practitioners think about drafting preambles when applying for a patent? Much of legal academic literature provides little use for practitioners, instead proposing grand constitutional theories, doing social science on legal institutions, or setting out policy arguments for changing the law. Professor Lemley’s article falls under the more useful category of doctrinal analysis: surveying a field of law and offering some original points that practitioners would do well to think about. The field of law in this article is claim construction when applied to the preamble of the claim. The preamble is the introduction to a patent claim, typically followed by a transition term like “comprising” or “consisting of” and then the body of the claim. The body recites the substantive limitations making up the invention. By default, the preamble is not limiting, meaning that it is given no weight in anticipation, obviousness, or infringement. A prior art reference can anticipate a claim even if what… Read More »When Are Preambles Limiting?

EDTx Hands Down Indefiniteness Ruling in Semcon v. TCT Mobile

The Eastern District of Texas recently issued a claim construction ruling with a couple interesting rulings on indefiniteness in the case of Semcon IP v. Louis Vuitton and TCT Mobile (April 29, 2020). TCT Mobile is a mobile communication company whose brands include Alcatel, Blackberry, and TCL Communications. Semcon IP is a patent assertion entity whose patents cover “fundamental technology for adjusting the processor clock and voltage to save power based on the operating characteristics of the processor.” The patents include Nos. 7,100,061; 7,596,708; 8,566,627; and 8,806,247, all part of the same family. Semcon sued TCT Mobile, along with fashion brand Louis Vuitton, for infringement as part of an assertion campaign against multiple companies in the Eastern District of Texas. While the court construed twelve terms in its 64-page ruling, the most interesting rulings were on indefiniteness of two terms appearing in dependent claims of the asserted patents. The court found “sleep state” definite but “said change in operating conditions” indefinite. The basis for questioning the term “sleep state” is that the term only appears unqualified in the claims, not the description. Instead, the description only discusses a “deep sleep state.” Semcon contended that the deep sleep state discussed in… Read More »EDTx Hands Down Indefiniteness Ruling in Semcon v. TCT Mobile