Daniel Hegner

Absolute or Equitable Intervening Rights, It Matters

Delaware District Court grants-in-part and denies-in-part patentee’s motion for summary judgment regarding accused infringer’s defense of intervening rights.  Sonos, Inc. v. D&M Holdings, Inc.,No. 14-1330-WCB (D. Del. Nov 7, 2017). The owner of a patent that survives reexamination “is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of the reexamined claims if the original and the reexamined claims are substantially identical.” Convolve, Inc. v. Compaq Comput. Corp.,812 F.3d 1313, 1322-23 (Fed. Cir. 2016). This case pertains to an issue of law not squarely addressed by the Federal Circuit—i.e., whether 35 U.S.C. § 252, second paragraph, first sentence extends to process claims (or only to product claims).  First, a little background… The first sentence of 35 U.S.C. § 252, second paragraph commonly is referred to as a defense of absolute intervening rights. This defense allows a party whose products infringe a reissued or reexamined patent to continue to use or sell specific products that were made, purchased, or used before the reissuance or reexamination, if the asserted claim was not in the original patent, so long as the accused infringer began its infringing activity before the patent was reissued or… Read More »Absolute or Equitable Intervening Rights, It Matters

Battery Charging Apparatus Held Patent Ineligible

N. District Court of California grants Apple’s 12(c) motion for judgment on the pleadings (following full briefing and oral argument) finding claims of U.S. Pat. No. 6,661,203 ineligible under 35 U.S.C. § 101 based on broad functional claim language that does not recite how to achieve the claimed process beyond what is known in the admitted prior art. Uniloc USA, Inc. v. Apple, Inc., Civil No. C 18-00358 WHA (N.D. Cal. May 18, 2018). Uniloc (Uniloc USA and Uniloc Luxembourg) sued Apple for infringement of its battery charging and discharging system.  The court considered the following apparatus and method claims in its analysis (although, it was disputed as to whether these claims were representative): An apparatus for exercising a battery, comprising     a charging circuit having a charging current output coupled to the battery;     a temperature sensor positioned to sense a temperature related to the battery temperature;     a discharging circuit having a discharging current input coupled to the battery; and     a controller coupled to said temperature sensor, said charging circuit, and said discharging circuit, said controller operable to set said charging current in accordance with said temperature, and operable to set said discharging current in accordance with… Read More »Battery Charging Apparatus Held Patent Ineligible

Plain and Ordinary Meaning Requires More Than a Mere Capability

The Eastern District of Texas has granted-in-part Defendant HTC’s motion to strike expert testimony based on application of improper legal principles, to wit, the expert had improperly extended the plain and ordinary meaning of claims of U.S. Pat. No. 5,802,467 to encompass a mere capability to do the thing.  Salazar v. HTC Corp., Civil No. 2:16-cv-01096-JRG-RSP (E.D. Tex. May 2, 2018). Individual Salazar sued HTC for infringement of a system using a smartphone to perform two-way communication with appliances.  A representative system claim recites, inter alia: a microprocessor for generating a plurality of control signals used to operate said system, said microprocessor creating a plurality of reprogrammable communication protocols, for transmission to said external devices wherein each communication protocol includes a command code set that defines the signals that are employed to communicate with each one of said external devices; … (emphasis added). Plaintiff’s expert witness testified that the communication protocol could include a ‘command code set’ could satisfy the claim.  More specifically, “when asked whether a communication protocol that did not include a command code set would satisfy this claim limitation, [the expert witness] responded, ‘[I]t’s a question of whether [the system] is capable of including a command code… Read More »Plain and Ordinary Meaning Requires More Than a Mere Capability

Lack of Inventive Support leads to Patent Ineligibility

E. District Court of Virginia grants summary judgment to Defendant Amazon finding claims of USRE46140 (reissue of U.S. Pat. No. 6,618,705) ineligible under 35 U.S.C. § 101 based on a lack of support in the specification for how the purportedly inventive aspect of the claims achieved its ‘switching’ results. Va. Innovation Sci. v. Amazon.com, Inc., Civil No. 1:16-cv-00861 (E.D. Va. Jul. 5, 2017). Virginia Innovation Sciences (VIS) sued Amazon for infringement of the claims of a number of patents; this article addresses only the reissued patent (hereafter, the ‘140 patent).  As described by in the district court opinion: The ‘140 patent is directed to securely processing credit card payments for online purchases by switching the user from a merchant server to a payment server.  A system allows users to purchase goods on the internet through a secure payment server.  In the system, the user sends a message that she wants to buy an item from a merchant website.  Once the purchase request has been made, the buyer is “shifted” from the merchant site to the secure payment server.  After the buyer is shifted to the secure payment server, the server performs the standard functions which would otherwise have been performed… Read More »Lack of Inventive Support leads to Patent Ineligibility

‘Internet protocol’ different than ‘internet protocol’

Court of Appeals for the Federal Circuit affirms obviousness rejection of Patent Trial and Appeal Board based on the Board’s construction of ‘Internet protocol’ and ‘internet protocol.’ AIP Acquisitions LLC v. Cisco Systems, Inc., Opinion 2016-2371 (Fed. Cir. 2017) (non-precedential). This case pertains to the Board’s construction of the phrases internet protocol and Internet protocol (also referred to herein as I/internet protocol).  The procedural posture of this case comprises Cisco instituting Inter Partes Review (IPR) and challenging AIP’s U.S. Patent 7,269,247 on obviousness grounds.  Among other things, the ‘247 patent claims a method for communication and a system for transmitting communications, in accordance with the representative claims reproduced below (emphasis added).  The Board held that the claims at issue in the IPR were unpatentable, and AIP appealed to the Federal Circuit. 1. A method for communication between two access devices via one or more networks, comprising the steps: receiving a transmission in a first format through a first communication network from a first access device, the first format comprising a telecommunication protocol for establishing and transmitting voice communication for a phone call in one of a digital telephone network, an analog telephone network, and a cellular network; performing a first… Read More »‘Internet protocol’ different than ‘internet protocol’

Absolute or Equitable Intervening Rights: It Matters

A Delaware District Court grants-in-part and denies-in-part patentee’s motion for summary judgment regarding accused infringer’s defense of intervening rights.  Sonos, Inc. v. D&M Holdings, Inc., No. 14-1330-WCB (D. Del. Nov 7, 2017). The owner of a patent that survives reexamination “is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of the reexamined claims if the original and the reexamined claims are substantially identical.” Convolve, Inc. v. Compaq Comput. Corp., 812 F.3d 1313, 1322-23 (Fed. Cir. 2016).  This case pertains to an issue of law not squarely addressed by the Federal Circuit—i.e., whether 35 U.S.C. § 252, second paragraph, first sentence extends to process claims (or only to product claims).  First, a little background… The first sentence of 35 U.S.C. § 252, second paragraph commonly is referred to as a defense of absolute intervening rights. This defense allows a party whose products infringe a reissued or reexamined patent to continue to use or sell specific products that were made, purchased, or used before the reissuance or reexamination, if the asserted claim was not in the original patent, so long as the accused infringer began its infringing activity before… Read More »Absolute or Equitable Intervening Rights: It Matters

Pleading Patent Infringement Does Not Require Proofs

Federal Circuit addressed the pleading standards for patent infringement in Lifetime Indus., Inc. v. Trim-Lok, Inc., No. 3:13-cv-00819-RLM-MGG (N.D. Indiana September 7, 2017).  Reversing and remanding a decision of the district court, the CAFC held that Lifetime Industries adequately pled facts sufficient to support claims of direct, indirect, and contributory patent infringement.   Patentee Lifetime makes seals for slide-out rooms in recreational vehicles (RVs) as shown in FIGS. 1-2 of the patent at issue (U.S. Pat. 6,966,590).  Among other things, the claims of the ‘590 patent require a resilient seal (having two portions—a mounting portion and a separate bulb portion), wherein the seal is used in combination with a mobile living quarters having a slide-out room.  Lifetime’s pleadings included the following allegations: Two Lifetime engineers—with knowledge of the ‘590 patent—left Lifetime and began working for Defendant Trim-Lok. Soon after these two engineers began working for Trim-Lok, Trim-Lok began offering for sale a two-part seal for an RV with a slide-out room. A Lifetime representative discovered the two-part Trim-Lok seal installed on an RV with a slide-out room at an RV manufacturer (Forest River, Inc.). That Trim-Lok caused the installation at Forest River for purposes of testing and/or soliciting sales. That… Read More »Pleading Patent Infringement Does Not Require Proofs

No Covered Business Method Patent Review for Software Based Trading Turret

The Patent Trial and Appeal Board (PTAB) has denied institution of covered business method patent review, as a claimed trading turret system did not constitute a financial activity.  Cloud9 Tech. LLC v. IPC Systems, Inc., CBM2017-00037 (Pat. 8, 189,566 B2). Cloud9 sued IPC for patent infringement and in response, IPC petitioned for covered  business method patent review.  The test of whether a patent qualifies for covered  business method patent review includes two distinct aspects: (1) the “financial product or service” inquiry; and (2) the “technological invention” exception.  The PTAB focused its analysis on the first element, finding it dispositive here. The ‘566 patent, titled “Software based trading turret,” recites (emphasis added): A communication system, comprising: a turret switching system constructed to communicate to a Web server, a turret device, and to a remote communications device via a first communications network, the Web server being constructed to communicate to a client device via a second communications network, and the client device constructed to control switching across a plurality of lines; and an interface having a button sheet corresponding to a plurality of line selectors and constructed to seize a corresponding line by causing the client device to communicate a predetermined message to the turret… Read More »No Covered Business Method Patent Review for Software Based Trading Turret

Federal Circuit Reverses E.D. Texas on Exceptional Case

Reversing a decision from the Eastern District of Texas, the Federal Circuit held that AdjustaCam unreasonably litigated its Camera Clip patent (U.S. Pat. No. 5,855,343) and that its case was objectively baseless—holding the case to be exceptional under 35 U.S.C. § 285.  AdjustaCam LLC. v. Newegg, Inc., No. o.   6:10-cv-00329-JRG (E.D. Texas July 5, 2017). AdjustaCam sued Newegg and dozens of other defendants for infringement of its ‘343 patent.  While it voluntarily dismissed many defendants early in litigation, it continued to litigate against Newegg (beyond a Markman order (April 2012) and extended expert discovery).  The district court determined that Newegg’s accused products used a ball-and-socket joint—facilitating rotation about multiple axes, and, per the Markman hearing, that AdjustaCam’s claims describe “rotatably attached” objects as rotating over a single axis.  Claim 1 is reproduced below with emphasis added. Apparatus for supporting a camera, having a lens, on any generally horizontal, substantially planar surface and on an object having a first sur-face and a second surface and an edge intersecting the first surface and the second surface, comprising: a hinge member adapted to be rotatably attached to the camera, said camera, when the hinge member is so attached, rotating, about a first axis… Read More »Federal Circuit Reverses E.D. Texas on Exceptional Case