Monthly Archives: June 2015

Patent Appeals Court Raises Bar on Functional Claiming

By Stephen C. Hall

Rarely has such a short word or phrase influenced patent claims to such a degree as the phrase, “means for.” This phrase sits at the intersection of function (what an invention accomplishes) and structure (the materials for accomplishing it). 35 U.S.C. § 112, para. 6 is the basis for its use in patent claims:

An element in a claim for a combination may be expressed as a means or step for performing a specific function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.1

bank vault opening mechanism to a vault.With this provision, Congress created a balance by permitting patentees the option to claim inventions with functional language, which tends to require fewer words. But in exchange for brevity in the claims, the specification must Continue reading Patent Appeals Court Raises Bar on Functional Claiming

Some Neutral Perspectives on “Net Neutrality”

By Mark Vorder-Bruegge

In less than thirty years, the Internet has evolved from a small consortium of military and educational research offices into a world-wide public system for communication, information-sharing, and business with millions of content providers such as Netflix and CBS News, thousands of connection service providers (ISPs) such as Comcast and AT&T, and billions of business and consumer customers, including you and me.

Net NeutralityThe phrases Net Neutrality and Open Internet are public policy labels used by the U.S. government to focus on some specific business practices applied to content providers by connection service providers (ISPs).

Earlier this year, the Federal Communications Commission (FCC) announced that it had greatly advanced the federal government’s Net Neutrality policy by adopting new regulations regarding telecommunication and information services.  These new regulations essentially control the ability of ISPs to apply variable pricing to content providers based upon the size and speed of the data flows they stream into the Internet for ultimate delivery to the ISPs’ business and consumer customers. As a simple example, if the movies and Continue reading Some Neutral Perspectives on “Net Neutrality”

Should You Worry About a Software Audit?

By Stephen C. Hall

It goes without saying that businesses use software ubiquitously. Perhaps easier to miss at times is how any given company utilizes software – who uses a particular program and how many machines have the program installed – changes on a monthly, weekly or even daily basis. Such fluidity could expose your company to potential liability if it inadvertently allows too many copies of licensed software on its machines.

softwareIn this respect, software licenses contain provisions that every IT and human resource department should understand. For example, software seat licenses limit the number of times the licensee can install – that is, “copy” – a program on its computers. Exceeding that number could result in copyright liability.

This is because valuable software programs are protected under copyright law, and they are sold as part of well-planned licensing programs. One aspect of those programs is enforcement – the ability to objectively determine how many times a program was installed. The sophisticated software publisher uses the license contract to Continue reading Should You Worry About a Software Audit?

A Year in Review: The Impact of Octane Fitness and Highmark on Attorney’s Fee Awards in Patent Cases

By Matthew M. Lubozynski and Amanda Warford Edge

Just over a year ago, on April 29, 2014, the U.S. Supreme Court issued two landmark patent opinions—Octane Fitness, LLC v. Icon Health & Fitness, Inc.1 and Highmark Inc. v. Allcare Health Mgmt. System, Inc.2 Both cases dealt with the Federal Circuit’s patent highlightapplication of 35 U.S.C. § 285, which permits courts to award attorney’s fees to the prevailing party in “exceptional” patent cases. Prior to these decisions, the Federal Circuit made “exceptional case” determinations under a fairly specific standard, finding an “exceptional case” only if it involved “material inappropriate conduct” or was both “objectively baseless” and “brought in subjective bad faith.” Further, to establish the “exceptional” nature of the case, the parties were required to produce clear and convincing evidence—and the Federal Circuit reviewed a lower court’s award of attorney’s fees de novo. In Octane Fitness and Highmark, however, the Supreme Court drastically changed these standards. As a result of these changes, many believed that a grant of attorneys’ fees under 35 U.S.C. § 285 would be much easier to attain.

As an initial matter, in Octane Fitness, the Court rejected the Federal Circuit’s “overly rigid” formula for exceptionality findings. According to the Court, the formula “superimposes an inflexible framework onto statutory text that is inherently flexible.” The Court instead held that Continue reading A Year in Review: The Impact of Octane Fitness and Highmark on Attorney’s Fee Awards in Patent Cases

United States Supreme Court Finds Belief in Invalidity Not a Defense to Inducement Claim

By Matt Lubozynski

Last week, the United States Supreme Court issued an important ruling in Commil USA, LLC v. Cisco Systems, Inc., concerning defenses available to a defendant accused of inducing infringement of a patent. PatentsGenerally, under 35 U.S.C. § 271, there are 3 ways one can be found liable for patent infringement. First, one can be found to directly infringe a patent, which many may be surprised to find is a strict liability offense, requiring no intent to infringe and no knowledge of the patent prior to suit being brought on the part of the accused infringer. One can also be found liable for indirect infringement of a patent, either through inducing infringement or contributory infringement of the patent. Both of these, contrary to direct infringement, require actual knowledge of the patent-in-suit and knowledge of infringement. Thus, as the Supreme Court emphasized, one can defeat a claim of inducement or contributory infringement by showing it did not know its acts were infringing the patent-in-suit.

The question presented to the United States Supreme Court in Commil was whether a belief that the patent-in-suit was invalid, versus not infringed, was a defense to a claim of inducement. The Federal Circuit Court of Appeals had previously held Continue reading United States Supreme Court Finds Belief in Invalidity Not a Defense to Inducement Claim