SoCal IP Law Group

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Tag Archives: divided infringement

SoCal IP Institute :: October 27, 2014 :: Divided Infringement of System Claims and Pleading Inequitable Conduct

Our weekly SoCal IP Institute meeting on Monday, October 27, 2014 will be a discussion of two older cases. The first is a 2011 Federal Circuit case regarding divided infringement of a system claim and the second is a district court case on the requirements of pleading inequitable conduct after Therasense.

Centillion Data Systems, LLC v. Qwest Corp. Int’l et al., No. 2010-1110, 01131 (Fed. Cir. Jan 20, 2011) (available here).  Here, Centillion appealed a decision finding that there was no direct infringement of a system claim by Qwest.  In particular, Centillion’s claims included “backend” and “frontend” computer components such that the claims relied upon user’s computers to cause the backend components (servers, etc.) to begin to function.

On appeal, while discussing “use” infringement under 271(a), the Federal Circuit held “that to ‘use’ a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.”  Qwest, as a matter of law, cannot use its own system that is reliant upon the personal computers of its users.  However, in this case, Qwest’s customers did use the system and were the direct infringers. However, Qwest did not vicariously infringe because “Qwest in no way directs its customers to perform nor do its customers act as its agents. While Qwest provides software and technical assistance, it is entirely the decision of the customer whether to install and operate this software on its personal computer data processing means.”

Cutsforth v. LEMM Liquidating, 2013 U.S. Dis. LEXIS 79385 (June 6, 2013) (available here).  Here, a defendant answered with a counterclaim of inequitable conduct and the plaintiff filed a motion to strike from the complaint.  The district court here found that LEMM Liquidating had adequately pled inequitable conduct where Cutsforth had previously asserted two patents during the pendency of a third and been presented with invalidity charts identifying several references that allegedly invalidated the patents.  That earlier case was soon thereafter dismissed prior to even an early meeting of counsel in the case.  Cutsforth submitted the references identified by that defendant in the then-pending patent, but did not provide the invalidity charts provided by that defendant to the PTO.  On that basis, the district court here found this withholding of the invalidity charts sufficient to meet the Therasense requirements at least at the pleading stage.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 27, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

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SoCal IP Institute :: April 29, 2013 :: ICANN’s gTLDs

Please join us for our weekly SoCal IP Institute meeting on Monday, April 29, 2013, for a presentation by Christine Kopitzke regarding ICANN’s new gTLDs. The articles listed below will provide some background for Monday’s discussion.

Launch of new generic top level domains – the Trademark Clearinghouse offers two new services to trademark owners to protect their brands” by Latham and Watkins.

What You Really Need to Know About ICANN’s Trademark Clearinghouse” by Doug Isenberg.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 29, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: April 22, 2013 :: Patent interference and patent ownership

Our weekly SoCal IP Institute meeting on Monday, April 22, 2013 will be a discussion of two Federal Circuit cases – one regarding patent ownership and the other regarding a patent interference.

Dawson v. Dawson and Bowman (Fed. Circ. March 25, 2013) (available here).

The Federal Circuit affirmed the BPAI’s decision in a patent interference case finding that UCSF failed to establish sole conception by Dr. Dawson, and that Dr. Dawson did not conceive of the claimed inventions by himself prior to his collaboration with Dr. Bowman.

In re Morsa (Fed. Cir. April 5, 2013) (available here).

The Federal Circuit affirmed in part and vacated and remanded in part a decision from the BPAI. Rejection by the Board of Patent Appeals and Interferences of inventor’s utility patent claims related to a benefit information match mechanism are: 1) affirmed in part, where substantial evidence supports the Board’s factual determinations, and the Board did not err in concluding that claims 181, 184, 188-203, 206, 210-25, 228, 232-47, 250, and 254-68 would have been obvious in light of the prior art; but 2) vacated and remanded in part, where the Board performed an incorrect enablement analysis when it determined that claims 271 and 272 were anticipated.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 22, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: March 25, 2013 :: Divided Infringement and Fair Use

We were lucky enough to have Young-Wook Ha , the President of Korean intellectual property firm firm Ha & Ha, visiting with us last week.  Mr. Ha provided some guidance on the differences between Korean and U.S. patent practice and recent changes to Korean practice.  As a result of Mr. Ha’s visit, we did not cover those cases that we had intended to cover. We will now cover those cases on Monday, March 25, 2013 in our weekly SoCal IP Institute meeting.

We will discuss one Federal Circuit case regarding patent divided infringement and one 9th Circuit case regarding copyright fair use that were first outlined last week. Brief synopses of the cases appear below.

Aristocrat Technologies Australia PTY Ltd. et al. v. IGT, Case No. 2010-1426 (Fed. Cir. March 13, 2013) (available here).

This is a gambling-related patent suit stemming from a method of offering a patron a reward from a secondary game after a patron has taken part in a first game.  One of the steps of the process is “making a wager at a particular gaming machine in the network of gaming machines,” which the district court construed as requiring the patron to place a bet.  As a result, the district court granted IGT’s motion for summary judgment because all claims require two separate actors, the operator of the gaming machine and the player.  Aristocrat appealed the claim construction and the divided infringement decision.

On appeal, the Federal Circuit agreed with the district court’s construction of the “making a wager” limitation.  Next, they indicated that no single actor performs all of the required step and, therefore, there can be no direct infringement.  However, the Federal Circuit remanded the case for a determination whether here was indirect infringement of the patent under the recent Akamai decision.  The case was, therefore, affirmed in part, vacated and remanded in part.

SOFA Entertainment, Inc. v. Dodger Prod., Inc. Etc. D.C. No. 2:08-cv-02616 (9th Cir. March 11,, 2013) (available here).

This 9th Circuit decision affirmed the district court’s grant of summary judgment and award of attorneys’ fees in a copyright infringement suit regarding a seven-second clip of Ed Sullivan’s introduction of the Four Seasons on The Ed Sullivan Show.  The panel held that the defendants were entitled to prevail on their fair use defense as a matter of law.

The defendants used the clip in Jersey Boys, a musical about the Four Seasons, to mark a historical point in the band’s career. The panel held that this was a fair use because by using the clip for its historical significance, the defendants had imbued it with new meaning and had done so without usurping whatever demand there was for the original clip.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 18, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: March 18, 2013 :: Divided Infringement and Fair Use

Our weekly SoCal IP Institute meeting on Monday, March 18, 2013 will be a discussion of one Federal Circuit case regarding patent divided infringement and a 9th Circuit case regarding copyright fair use.  Brief synopses of the cases appear below.

Aristocrat Technologies Australia PTY Ltd. et al. v. IGT, Case No. 2010-1426 (Fed. Circ. March 13, 2013) (available here).

This is a gambling-related patent suit stemming from a method of offering a patron a reward from a secondary game after a patron has taken part in a first game.  One of the steps of the process is “making a wager at a particular gaming machine in the network of gaming machines,” which the district court construed as requiring the patron to place a bet.  As a result, the district court granted IGT’s motion for summary judgment because all claims require two separate actors, the operator of the gaming machine and the player.  Aristocrat appealed the claim construction and the divided infringement decision.

On appeal, the Federal Circuit agreed with the district court’s construction of the “making a wager” limitation.  Next, they indicated that no single actor performs all of the required step and, therefore, there can be no direct infringement.  However, the Federal Circuit remanded the case for a determination whether here was indirect infringement of the patent under the recent Akamai decision.  The case was, therefore, affirmed in part, vacated and remanded in part.

SOFA Entertainment, Inc. v. Dodger Prod., Inc. Etc. D.C. No. 2:08-cv-02616 (9th Cir. March 11,, 2013) (available here).

This 9th Circuit decision affirmed the district court’s grant of summary judgment and award of attorneys’ fees in a copyright infringement suit regarding a seven-second clip of Ed Sullivan’s introduction of the Four Seasons on The Ed Sullivan Show.  The panel held that the defendants were entitled to prevail on their fair use defense as a matter of law.

The defendants used the clip in Jersey Boys, a musical about the Four Seasons, to mark a historical point in the band’s career. The panel held that this was a fair use because by using the clip for its historical significance, the defendants had imbued it with new meaning and had done so without usurping whatever demand there was for the original clip.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 18, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.