VASLAW Intellectual Property

Ericsson Constructs a Victory on Appeal

The Examiner rejected claims, arguing that a reference met the claim limitation "measurement configuration constructed". The patent trial and appeal board (PTAB) found that the reference taught maintaining rather than constructing and reversed the Examiner.

See the decision at:

developer.uspto.gov

Nike is striking out at the Court of Appeals for the Federal Circuit (CAFC) in its Inter Partes Review involving Adidas. This is the third appeal Nike has lost. Is this over? We will see.

Here is the decision:

cafc.uscourts.gov

Today the United States Court of Appeals for the Federal Circuit (CAFC) decided INVT SPE LLC, v. ITC and HTC America and HTC Corp. (Intervenors).

See the decision at

Here is the holding (see below), which is interesting because of the holding that a computer-implemented claim cannot be infringed without some showing that the computer-implemented device is programmed to perform the claimed function when in operation:

We affirm the Commission’s determination that there was no section 337 violation with respect to the ’439 patent because INVT failed to show infringement and the existence of domestic industry. We agree with INVT’s argument on appeal that the asserted ’439 claims are drawn to “capability.” However, we disagree with INVT on infringement.

For infringement purposes, a computer-implemented claim drawn to a functional capability requires some showing that the accused computer-implemented device is programmed or otherwise configured, without modification, to perform the claimed function when in operation. We affirm the noninfringement finding in this case because INVT failed to introduce any evidence to establish that the accused devices, when put into operation, will ever perform the particular functions recited in the asserted claims.

We find the Commission’s determination with respect to the ’590 patent moot based on the patent’s expiration, and thus vacate and remand as to that patent.

cafc.uscourts.gov

Today Dropbox obtained a reversal of an Examiner's rejection of claims 1-21 by arguing that the Examiner's rejection under 103 (obviousness) didn't meet the burden of proof of showing the combination of references met the claim language. This decision could be usefully cited whenever an examiner is twisting prior art and reading it so broadly that it seems crazy (happens quite a bit).

See the decision at

developer.uspto.gov