Friday, August 15, 2014

I/P Engines, Inc. v. AOL, Google et al. Federal Circuit Holds US Patents Invalid & Stock Drops 70%

One of the more interesting software patent cases decided this year is I/P Engines, Inc. v. AOL, Google, et. al., because of the large damages at stake that led extensive arguments related to patent defenses (e.g., invalidity, non-infringement, laches, etc.).

Today, Mr. Joe Mullin reports the Federal Circuit (CAFC) agreed with some of the arguments and reversed Vringo's $30M damages and cut off future royalties on Google Ad words. See Mr. Mullin's article: After years of hype, patent troll Vringo demolished on appeal: Vringo stock drops 70%, as Google shuts down dreams of a billion-dollar payday. Note Vringo established I/P Engines as a patent holding company.

For a PDF copy of the CAFC decision: I/P Engines, Inc. v. AOL, Google, et al.

Although this per curiam decision is non-precedential, it reminds that sufficient legal resources can overturn even fact findings underlying a judgment of non-obviousness.

The concurrence showed how 35 USC 101 and 103 analysis continues to be conflated: "There is, of course, some 'overlap' between the eligibility analysis under section 101 and the obviousness inquiry under 35 U.S.C. § 103. Section 103, however, asks the narrow question of whether particular claims are obvious in view of the prior art. By contrast, the section 101 inquiry is broader and more essential:  it asks whether the claimed subject matter, stripped of any conventional elements, is ‘the kind of discovery that the patent laws were intended to protection."

Software patent cases such as this one may be difficult to decide, but it's hard to applaud rewriting a claim, concluding "the claim" is a patent-ineligible abstract idea, and labeling that activity as defending our Constitution. Is it just a concurring judge or the precursor of 35 USC 101 analysis?

Copyright © 2014 Robert Moll. All rights reserved.