In anticipation of the Supreme Court’s decision in Cuozzo Speed Technologies v. Lee, which will determine the standard for claim construction during inter partes review before the Patent Trial and Appeal Board (PTAB), on April 19, 2016, the Federal Circuit reaffirmed that claim construction under the current broadest reasonable interpretation (BRI) standard “cannot be divorced from the specification and the record evidence.”
A district court in Virginia has found a patent related to a navigation system that assists users in locating stores to be directed to an unpatentable abstract idea. U.S. Patent No. 6,397,143 (the “’143 patent”), titled “Layout based method for map navigation” was issued to Inventor George Peschke in 2002. The patent is directed to a computer-based map navigation system that provides a “visual presentation of a shopping center” to the user and assists the user in locating stores and businesses in and around the shopping mall. Each store shown on the visual presentation can be clicked to view a description page about that store. Last year, Peschke sued Rouse Properties Inc. for infringement of the ’143 patent, alleging that Rouse’s website for a shopping mall uses a computerized mapping system. Rouse moved to dismiss the suit under Section 101. The court granted Rouse’s motion, finding that the asserted claims were directed toward an abstract idea.
On February 26, 2016, PTAB denied institution of Inter Partes Reviews (IPR) of two patents related to computer security software. Petitioner Symantec requested review of U.S. Patent Nos. 7,613,926 (the ’926 Patent) and 8,677,494 (the ’494 Patent), asserting that the patent did not properly establish their priority claims and, therefore, were invalid over prior patents issued to Patent Owner Finjan, Inc. The earlier of the two patents at issue, the ’926 Patent, is a continuation-in-part from an earlier patent owned by Finjan. The later of the two patents, the ’494 Patent is a continuation of the ’926 Patent and shares a common specification.
In a long-awaited en banc decision, the Federal Circuit ruled that the patent exhaustion doctrine does not apply to (1) initial sales with a single-use/no-resale restriction, or (2) foreign sales, whether restricted or not. In doing so, the court found that the Supreme Court’s Quanta and Kirtsaeng decisions did not overrule Federal Circuit precedent.
Lexmark sold its printer cartridges in the U.S. and abroad. Some of the foreign-sold cartridges and all of the U.S.-sold cartridges were sold subject to a “single-use/no-resale restriction.” Impression acquired and modified Lexmark’s cartridges for resale in violation of the Lexmark restriction. Impression not only resold the U.S. cartridges but imported the foreign-sold Lexmark cartridges for resale in the U.S.
In a case of first impression involving actual notice under 35 U.S.C. §154(d), the Federal Circuit affirmed the district court’s grant of summary judgment denying Plaintiff’s claim for pre-issuance damages.
Judge Gilstrap in the Eastern District of Texas recently held that plaintiff’s damages expert failed to properly apportion the royalty base “because he has failed to specify, distinguish, and then separate the value of BMC’s patented features from the unpatented features of ServiceNow’s products.” Plaintiff’s damages expert created his relevant royalty base by simply reducing defendant’s total revenue by 50%, then subtracting out the revenues he determined were subject to lost profits. The Court rejected plaintiff’s argument that the “original 50% reduction” was sufficient to isolate or apportion the incremental value associated with the infringement of the asserted patents. Although the Court recognized that the damages expert adequately identifies a portion of defendant’s revenue that is at risk, the Court rejected the asserted royalty base because the expert failed to apportion out any of the value of the unpatented features in the accused products. Relying on the Federal Circuit’s recent Ericsson opinion, the Court held that the “expert fails to provide an ultimate combination of royalty base and royalty rate based on the ‘incremental value that the patented invention adds to the end product.’” Ultimately, the Court carried defendant’s motion to exclude and ordered plaintiff to supplement its damages exert report to correct the deficiency within ten days, reserving the right to readdress this issue after supplementation.
In a January 22, 2016 decision, the Patent Trial and Appeal Board (PTAB) denied institution of covered business method (CBM) review of an ATM patent under 35 U.S.C. § 101. Petitioner NRT Technology sought review of U.S. Patent No. 6,081,792, which relates to a modified ATM terminal that allows a user to obtain cash from a bank account through one of multiple alternative networks. According to the patent, when a cardholder attempts to withdraw money via an ATM network and fails because she has exceeded her daily limit, the request is routed through a different type of transaction, such as a point-of-sale (POS) network. When the POS transaction is approved, the ATM terminal informs a nearby money location—for example, a hotel concierge or a cash window at a casino—of the approved transaction, and the cardholder obtains the money from that location instead of the ATM terminal itself.
On January 12, 2016, a District of Delaware judge granted defendant PetSmart’s Rule 12(c) motion for judgment on the pleadings that the asserted patent was invalid under 35 U.S.C. § 101. The asserted claims of U.S. Patent No. 5,612,527 disclose methods for redeeming discount sale offers by associating a machine-readable identification code, such as a barcode, with data stored in a database identifying which items are to be offered at a discounted price.