Irwin IP Case Of The Week

The Alice Pendulum Swings Back, Knocks Cisco Flat

On March 20, 2019, a divided panel of the Federal Circuit Court of Appeals held, among other things, that two network security patents asserted by SRI International, Inc. (“SRI”) against Cisco Systems, Inc. (“Cisco”) were not directed towards an abstract idea, thus affirming the District of Delaware’s denial of summary

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Whimsical Fair Use Ruling Undermines Copyright Law

Places You’ll Boldly Go!”— a self-described “mashup” of the Dr. Seuss copyrighted publication “Oh, the Places You’ll Go!” and Star Trek—is fair use of the Dr. Seuss elements. Despite the Defendants admitting that they copied liberally from the copyrighted work, and admittedly not having a license for the Star Trek

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Failure to Disclose Algorithm Fatal on Two Fronts

The Federal Circuit affirmed a decision finding that patents directed to virtual slot machines were invalid as improper means-plus-function claims and as being directed to an abstract idea.  Failure to disclose an algorithm performing the function recited in means-plus-function claim limitations can not only fail the requirement to disclose the

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“Registration or Bust: Supreme Court Resolves Copyright Circuit Split “

The Supreme Court handed down a judgment resolving an ongoing circuit split and issued a rare black- letter rule, both relieving the uncertainty of the “copyright registration question” and sounding a death knell for those representing plaintiffs in copyright infringement cases based upon unregistered works.1 In an opinion written by

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It’s All Fun and Games until Someone Falsifies CMI

On February 26, 2019, the United States District Court for the Northern District of Illinois entered judgment in favor of GC2 Incorporated (“GC2”), an Illinois developer of wagering games and associated artwork, in the amount of over $16 million against a number of wholly owned subsidiaries of International Game Technology

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“Surviving a Challenge Under Alice v. CLS Bank May Preclude CBM Review”

The Federal Circuit vacated decisions of the Patent Trial and Appeal Board (the “Board”) regarding four patents directed to a graphical user interface (“GUI”) on the basis that the patents are for “technological inventions” and thus not subject to covered business method (“CBM”) review.  According to the Leahy-Smith America Invents

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If Public Sale, Then Public Domain

On January 22, 2019, the Supreme Court held that an offer for sale or sale of a product embodying an invention is prior art and triggers the on-sale bar against receiving a patent under 35 U.S.C. § 102 (post- America Invents Act) even if the offer or sale did not

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Federal Circuit Affirms Decision Allowing Amended Claims

The Federal Circuit recently affirmed, without opinion, a decision of the Patent Trial and Appeal Board (the “Board”) that found substitute claims submitted in a contingent motion to amend to be patentable.  This case is important because it is one of the few instances in which the Board has allowed

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