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CAFC: Obviousness and Design Patents: Spigen Korea Co., LTD. v. Ultraproof, Inc.

The Federal Circuit, in reversing a court’s decision to grant summary judgment of invalidity of claims of three design patents, held that the identification of multiple differences between the claimed design and a cited reference created a factual issue as to “whether [the cited reference] is a proper primary reference” to support an obviousness inquiry for design patents. Spigen Korea Co., LTD. v. Ultraproof, Inc., 2019-1435 (Fed. Cir. Apr. 17, 2020) (patents-in-suit are U.S. Design Patent Nos. D771,607; D775,620; and D776,648). This was a precedential opinion authored by Judge Reyna and joined by Judge Newman. Judge Lourie dissented without opinion. The court first noted that “[s]ummary judgment of obviousness is appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these…

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Lack of Antecedent Basis Renders Claim Indefinite, but Subjective Claim Terms Found Not Indefinite Under § 112

During a Markman hearing, the Eastern District of Texas ruled claim 12 of U.S. Patent No. 7,865,920 invalid for indefiniteness under 35 U.S.C. § 112 because “[t]here is no antecedent reference to ‘storage locations’ or ‘identified storage locations’ supporting ‘said identified storage locations’ in the wherein clause. Personalized Media Communications, LLC v. Google LLC, et. al, No. 19-CV-00090-JRG (E.D. Tex. Apr. 3, 2020). Further, the court ruled that multiple claims of U.S. Patent No. 7,747,217 were not invalid for indefiniteness under 35 U.S.C. § 112 because the meaning of the “explaining significance” terms is reasonably certain. Id. Claim 12 of the ‘920 patent is reproduced here (emphasis added):      An intermediate transmission station, comprising:      a first receiver that receives from one or more remote programming origination stations a plurality of units of audio or video programming and data that identify said units of audio or video programming or a…

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Anticipation of Software Patent Claims: Arguments Must Be Consistent with Court’s Claim Construction

In a decision instructive on patent claim interpretation and anticipation analysis in software cases, claims directed to “computerized fitness equipment” that “simulates… actual race conditions with other users” were held invalid because as anticipated by prior art. VR Optics, LLC v. Peloton Interactive, Inc, No. 16-cv-6392 (JPO) (S.D.N.Y. Apr. 2, 2020) (patent-in-suit is U.S. Patent No. 6,902,513). The court noted that “[a]nticipation requires ‘that a single prior art reference disclose each and every limitation of the claimed invention, either expressly or inherently.’” SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1306 (Fed. Cir. 2019). Peloton identified U.S. Patent No. 6,997,852 as a single prior art reference and there was “no dispute that the [‘852] patent discloses all of the independent claims’ limitations, save one.” The disputed independent claim limitation is reproduced here: logic configured to drive the display in response to both the first and second performance parameters,…

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Determining a Discount to Encourage Participation in an Electronic Trading System is Ineligible

The District of Delaware held that patent claims for multiple patents directed to “electronic trading and settlement systems” are abstract ideas, and “[e]ncouraging participation in a system in which all parties need to utilize similar technology through the well-known concept of discounting” does not provide an inventive concept,  granting a motion to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test. Fast 101 PTY LTD. v. Citigroup Inc., et al., No. 19-1819-RGA (D. Del. Jan. 30, 2020). U.S. Patent Nos. 8,515,867; 8,660,947; 8,762,273; and 10,115,098 are directed to “‘an invoiceless trading system that creates incentives for customers to pay suppliers within a predetermined period of time.’” The court identified claim 1 of the ‘867 patent as representative of all claims in the asserted patents. Independent claim 1 of the ‘867 patent is reproduced here:        1. A system configured for electronic settlement of an…

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CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

The Federal Circuit affirmed a decision by the PTAB finding that the claims of U.S. Patent No. 7,529,806 are “obvious over [the prior art] in light of the general knowledge of a skilled artisan.” Koninklijke Philips N.V. v. Google LLC, et al., No 19-1177, (Fed. Cir. Jan. 31, 2020). The claims of the ‘806 patent are directed towards “download[ing] the next file [of a media presentation] concurrently with playback of the previous file.” Philips argued that the Board erred in instituting an IPR “because 35 U.S.C. § 311(b) expressly limits inter partes reviews to ‘prior art consisting of patents or printed publications,’ and because…§ 311(b) prohibits use of general knowledge to supply a missing claim limitation in an inter partes review.” The court found that the Board did not err “in relying on ‘general knowledge’” to institute an IPR because “[a]lthough the prior art that can be considered in inter…

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