Recently, in a non-precedential decision, the United States Court of Appeals for the Federal Circuit remanded Apple, Inc. v. Samsung Electronics Co. back to Judge Lucy Koh (shown left) of the United States Federal District Court for the Northern District of California. In December 2016, the Supreme Court overturned a $400 million damages award for design patent infringement. In its ruling, the Supreme Court explained that damages may be limited to revenues attributable to a component of an article of manufacture and not the entire article itself. See Samsung Electronics Co. v. Apple, Inc.
Apple requested that the Federal Circuit keep the case and the panel review the decision in light of the Supreme Court’s ruling, while Samsung requested that the Federal Circuit remand the matter to the district court for a new trial on damages. The Federal Circuit adopted neither suggestion. Instead, the Federal Circuit chose to remand the case for further proceedings, which the panel explained may or may not include a new trial on damages. Judge Koh will decide whether a new trial on damages is necessary.
Beginning in May 2016 with the Federal Court’s decision in Enfish, carrying over into the July decision in BASCOM, and then into the Court’s Fall decision in McRO (sometimes referred to as “the Blue Planet case”), the patent stakeholder community finally started receiving some much-needed guidance with respect to patent eligibility of computer-implemented inventions.
While decisions where claims have been ruled patent eligible have been helpful, decisions finding claims patent ineligible have been at least as informative, at least from a patent drafting standpoint. Indeed, as important as the aforementioned pro-patent-eligible decisions are two decisions where the Federal Circuit found the claims to be patent ineligible. In TLI Communications and then more recently in FairWarning IP, LLC v. Iatric Systems, Inc., the Federal Circuit distinguished the claims at hand from those that have been held patent eligible, which help identifies brighter lines and nuances of software practice.
The United States Patent and Trademark Office issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to the patent examining corps from Robert Bahr, Deputy Commissioner for Patent Examination Policy, provides examiners with a discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility. What follows is my summary of these two important cases.
BASCOM v. AT&T (Decided June 27, 2016)
The claims generally recited a system for filtering Internet content. The claimed filtering system is located on a remote ISP server that associates each network account with (1) one or more filtering schemes and (2) at least one set of filtering elements from a plurality of sets of filtering elements, thereby allowing individual network accounts to customize the filtering of Internet traffic associated with the account. The patent explains that the advantages of the invention are found in the combination of the then-known filtering tools in a manner that avoids their known drawbacks. The claimed filtering system avoids being “modified or thwarted by a computer literate end-user,” and avoids being installed on and dependent on “individual end-user hardware and operating systems” or “tied to a single local area network or a local server platform” by installing the filter at the ISP server. Thus, the claimed invention is able to provide individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks.
The United States Court of Appeals for the Federal Circuit recently issued a non-precedential decision in a patent infringement action involving Justin Timberlake and Britney Spears and their production companies. The Federal Circuit’s decision vacated an earlier award of attorneys’ fees to Timberlake, Spears and the other defendants based on a finding that the case was exceptional within the meaning of 35 U.S.C. 285.
The original action in this patent infringement litigation was filed by Large Audience Display Systems (LADS), who alleged that Timberlake, Spears and their production companies infringed upon U.S. Patent No. 6,669,346, titled Large-Audience, Positionable Imaging and Display System for Exhibiting Panoramic Imagery, and Multimedia Content Featuring a Circularity of Action. This patent protects a panoramic imaging and display system in which an array of speakers is positioned around a perimeter of the system’s screen to provide audible sound which pans in such a way that can be synchronized with the movement of objects on the screen. (more…)
On August 10, 2016, the Federal Circuit issued an important ruling in Arendi S.A.R.L. v. Apple, Inc.
The dispute dates back several years to December 2, 2013, when Apple Inc., Google, Inc. and Motorola Mobility LLC (collectively “Appellees”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 7,917,843, which is owned by appellant Arendi S.A.R.L. After conducting the administrative trial proceeding, the Patent Trial and Appeal Board (“Board”) issued a decision finding claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 obvious.
The Federal Circuit panel (Judges Moore, Linn and O’Malley) determined that the Board misapplied the law on the permissible use of common sense in an obviousness analysis and reversed.