Knobbe/Martens: Intellectual Property Law

Damien Howard

Visual Memory v. Nvidia – Configurability of memory system found to be a basis for patent-eligibility

September 11, 2017 Damien Howard and Ronald J. Schoenbaum

The Federal Circuit recently decided a patent subject-matter eligibility case relating to computer memory in Visual Memory LLC v. Nvidia Corp.   In a divided opinion, the Federal Circuit reversed the district court and held Visual’s patent relating to “an enhanced computer memory system” as patent eligible.

PTAB Designates As Precedential A Decision Finding Assignor Estoppel Is Not A Defense in IPRs

The PTAB recently designated as precedential its 2013 decision that assignor estoppel is not a defense for patent owners in IPR proceedings in Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290, Paper 18 (P.T.A.B. October 25, 2013) (designated precedential August 2, 2017).

Easyweb v. Twitter and the Rise of the Non-Precedential Opinion

July 5, 2017 Damien Howard and Lincoln S. Essig

In a non-precedential opinion, the Federal Circuit affirmed the district court’s ruling that the claims at issue in Easyweb Innovations, LLC. v. Twitter, Inc. (“Easyweb”) were directed to patent-ineligible subject matter. The parties agreed that claim 1, reproduced below, of the 7,685,247 patent represented the claims at issue.

PTAB Expunges Non-Compliant Motions for Observations on Cross-Examination

The PTAB expunged non-compliant motions for observations on cross-examination in Xilinx, Inc. v. Papst Licensing GMBH & Co., KG, IPR2016-00104, Paper 22 & IPR2016-00105, Paper 22 (P.T.A.B. May 3, 2017). 

PTAB Denies Institution of Sixth IPR Petition Filed Against Adaptive Headlamp’s Patent

The Patent Trial and Appeal Board (“PTAB”) invoked its discretion under 35 U.S.C. § 325(d) to deny Toyota’s IPR petition against Adaptive Headlamp’s U.S. Patent No. 7,241,034 (“the ’034 patent”) in Toyota Motor Co. v. Adaptive Headlamp Technologies, Inc., IPR2016-01740, Paper 7 (P.T.A.B. March 10, 2017).

Northern District of California Finds Claims Directed to Device Pairing Patent Eligible

March 6, 2017 Damien Howard and Michael L. Fuller

Is a patent directed to electronic communications between computing devices patent eligible?  As with many legal questions, the answer to this question is not black and white.  In the recent Fitbit, Inc. v. Aliphcom decision, the district court for the Northern district of California held that claims in Fitbit’s patent directed to a specific approach to pairing a wireless device to client or server is patent eligible.

Determining Patent Eligibility Pre-Claim Construction May Be Premature

November 17, 2016 Bridget A. Smith and Damien Howard

For the third time in two months, the Federal Circuit took on patent subject-matter eligibility in Amdocs (ISRAEL) Ltd. v. Openet Telecom, Inc.  In a divided opinion, the Federal Circuit reversed the district court and held Amdoc’s patent on “a system designed to solve an accounting and billing problem faced by network providers” to be patent eligible.

Impact of the USPTO Examination Guidelines on Software Patents Post-Alice

September 2, 2016 Lincoln S. Essig and Damien Howard

The Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014) (“Alice”) has had a significant impact on the patent eligibility of software-implemented inventions under 35 U.S.C. § 101.  In Alice, the Supreme Court held that patent claims relating to mitigating settlement risk in financial transactions using a computer system were patent ineligible. In doing so, the Court set forth a two-part patent eligibility test: 1) Are the claims directed to a patent ineligible concept (e.g., abstract idea); and 2) If so, do the claims amount to significantly more than the patent ineligible concept itself?

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