On Thursday, February 8, the Federal Circuit decided Berkheimer v. HP Inc. It ruled, for the first time, that a district court had engaged in improper fact finding when deciding a patent claimed ineligible subject matter under the Supreme Court’s Alice Corp. v. CLS Bank decision a motion for summary judgment. This case has the potential to impact on the common strategy of seeking early dismissals under 35 U.S.C. § 101 and Alice. READ MORE
Some of Will's notable representations include:
- Wi-LAN, Inc. v. Apple Inc. – Will served as a key member of the appellate team that obtained victory on behalf Apple. The Orrick team prevailed on both Wi-LAN’s appeal and Apple’s cross appeal, resulting in the asserted wireless communications patent being ruled not infringed and invalid.
- Good Technology Corp. v. MobileIron, Inc. – Will was part of a trial team that successfully defended MobileIron in a patent infringement lawsuit brought by Good Technology Corporation involving mobile device management technology. He contributed extensively to pre-trial briefing which substantially narrowed the scope of potential liability and damages in the case. After a two-week trial in the Northern District of California, a jury returned a complete defense verdict, finding that MobileIron did not infringe any of Good Technology's patents and that several of Good Technology's patents were invalid.
- Recognicorp, LLC v. Nintendo Co., Ltd. – Will served as the principal drafter of a successful pre-claim construction motion on the pleadings, resulting in the plaintiff’s software patent being ruled ineligible under Section 101 of the Patent Act.
- RBIDR, LLC v. Airbnb, Inc. – Will served as the principal drafter of a motion to dismiss RBIDR’s software patent infringement claims under Section 101 of the Patent Act. Following the filing, the parties settled favorably.
- Clear with Computers, LLC v. Dick’s Sporting Goods, Inc. – Will served as a member of a joint defense team that successfully obtained a judgment that the asserted e-commerce patent was ineligible under Section 101 of the Patent Act. He also worked on the case’s appeal, which settled favorably after the defendants filed their responsive brief.
Posts by: Will Melehani
On Friday, the Federal Circuit decided Arctic Cat Inc. v. Bombardier Recreational Products, Inc. and clarified the burden of proof for the failure to mark defense. Under 35 U.S.C. § 287, a patentee’s pre-suit damages can be limited if the patentee (or its licensee) didn’t mark previously sold “patented articles.” Parties often dispute whether an unmarked product is a “patented article” that actually practices the claim limitations of a patent. The Arctic Cat decision holds that once the alleged infringer identifies the unmarked products, it becomes the patentee’s burden to prove that those unmarked products aren’t “patented articles.” READ MORE
The Federal Circuit’s decision last week to invalidate all of the claims of two audio and video streaming patents as claiming no more than an abstract concept exemplifies a new type of analysis appearing more often in its subject matter eligibility decisions involving computer-implemented functionality. READ MORE
Magistrate Judge Roy Payne’s recent Report and Recommendation in Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. shines a spotlight on potential inconsistencies in Fed. Cir. precedent regarding patent marking, and provides some valuable insight to plaintiffs and defendants who may be involved in litigation over a patent’s method claims. READ MORE