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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…

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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…

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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…

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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…

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‘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…

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