B2 IP Report

Charles Bieneman
The Software IP Report



Chris Francis
The Claims Interpreted Report

• Wireless Surveillance System with Generic Components is Patent-Ineligible: Sensormatic Elect., LLC, v. Wize Labs, Inc.
  by Nathan Smith
  September 25, 2020
  In granting a motion to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test, a court held that patent claims for multiple patents directed to “wireless surveillance systems for monitoring a target environment” are abstract ideas, and “merely implement[ing] the abstract idea of wireless communication and remote surveillance using well-known, generic computer components and functionalities” does not provide an inventive concept. Sensormatic v. Wyze Labs., No. 19-1543-CFC (D.… Read More »Wireless Surveillance System with Generic Components is Patent-Ineligible: Sensormatic Elect., LLC, v. Wize Labs, Inc.
• Case Dismissed Because Lack of Direct Infringement of Patent Claims Requiring a Mobile Device: Garrett v. TP-Link Research
  by Bryan Hart
  September 24, 2020
  A district court recently dismissed a complaint for failing to properly allege direct infringement with the mobile device recited in the patent claims. Garrett v. TP-Link Research America (N.D. Cal.). An app for installation on a mobile device does not count as a mobile device or as using a mobile device for showing direct infringement, and when pleading indirect infringement, direct infringement by an end user must be alleged. Garrett’s complaint against TP-Link failed… Read More »Case Dismissed Because Lack of Direct Infringement of Patent Claims Requiring a Mobile Device: Garrett v. TP-Link Research
• 35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.
  by Mark St. Amour
  September 20, 2020
  In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The ‘798 patent includes system claims, and the ‘725 and ‘751 patents include method claims.… Read More »35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.
• How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn
  by Charles Bieneman
  August 17, 2020
  A patent plaintiff saw its jury trial victory vacated when the court granted a defense motion for judgment as a matter of law under FRCP 50(b), finding that the plaintiff had not proved that the accused products had structure corresponding to claimed means.  SPEX Technologies, Inc. v. Apricorn, No. CV 16-07349 JVS (AGRx) (C.D. Cal. Aug. 10, 2020). The jury found infringement of claims 11 and 12 of U.S. Patent No. 6,088,802. Those claims… Read More »How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn
• Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 2 of 2)
  by Bryan Hart
  August 10, 2020
  The Federal Circuit recently denied a rehearing en banc in American Axle & Manufacturing v. Neapco Holdings, letting stand a panel decision invalidating a method of manufacturing driveline propeller shafts as ineligible subject matter under § 101. This post covers the multiple concurrences and dissents accompanying the rehearing denial, which reveal a splintered court. Part 1 covered the background and the modified panel decision, in which the court invalidated this claim as ineligible subject… Read More »Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 2 of 2)
• Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 1 of 2)
  by Bryan Hart
  August 5, 2020
  The Federal Circuit has modified a panel decision and denied a rehearing en banc in a closely watched § 101 case, American Axle & Manufacturing v. Neapco Holdings. The original decision had found all the claims, which were directed to a method of manufacturing driveline propeller shafts, ineligible subject matter (previously covered in this post). The new panel decision maintained that result for two of the independent claims but remanded on a third independent… Read More »Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 1 of 2)
• District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime
  by Bryan Hart
  July 27, 2020
  Indefiniteness was decided in a claim construction order from the Northern District of California in VTT Technical Research Centre of Finland v. SiTime. The court corrected a claim by inserting a missing element, but also invalidated all the claims for indefiniteness because the means-plus-function element “drive or sense means” lacked sufficient structure. VTT thus won a battle but lost the war. VTT is a Finnish state-owned nonprofit research company, including for microelectromechanical systems (MEMS).… Read More »District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime
• CAFC Split Favors Patent-Eligibility of Network Monitoring Claims: Packet Intelligence LLC v. NetScout Systems, Inc.
  by Charles Bieneman
  July 19, 2020
  A split Federal Circuit panel disagreed whether patent claims directed to network monitoring for whether received packets belong to a particular “conversational flow” are directed to an abstract idea. Judge Lourie was joined by Judge Hughes in affirming a district court’s findings of fact and conclusions of law rejecting a defense of patent-eligibility, under 35 U.S.C. § 101 and the Alice/Mayo test, of claims directed to determining whether received packets belong to a particular… Read More »CAFC Split Favors Patent-Eligibility of Network Monitoring Claims: Packet Intelligence LLC v. NetScout Systems, Inc.
• Changing a Game Risk/Reward Parameter Fails Patent-Eligibility at Summary Judgment: Bot M8 LLC v. Sony Corp. of America
  by Mike McCandlish
  July 13, 2020
  A patent claim directed to adjusting an individual gaming machine control parameter (i.e., the risk/reward level) based on aggregate gaming machine results was held patent-ineligible at summary judgment under 35 U.S.C. § 101 and the Alice/Mayo test. Bot M8 LLC v. Sony Corporation of America, et al, No. C 19-07027 WHA (N.D. Cal., June 10, 2020.) Background The plaintiff Bot M8 sued defendant Sony for infringement of Bot M8’s Patents US 7,338,363 and US… Read More »Changing a Game Risk/Reward Parameter Fails Patent-Eligibility at Summary Judgment: Bot M8 LLC v. Sony Corp. of America
• Patent Claims to Authenticating Users in Transactions Lack Technical Improvement, Fail Patent-Eligibility: Universal Secure Registry LLC v. Apple Inc.
  by Charles Bieneman
  July 7, 2020
  Claims directed to authenticating users for a transaction are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo patent-eligibility test, and therefore the court granted a Rule 12(b)(6) motion to dismiss in Universal Secure Registry LLC v. Apple Inc., Civ. No. 17-585-CFC-SRF (D. Del. June 30, 2020). The court overruled a Magistrate Judge’s report and recommendation that the motion be denied, and came just a week after another decision by the same judge (Colm Connolly)… Read More »Patent Claims to Authenticating Users in Transactions Lack Technical Improvement, Fail Patent-Eligibility: Universal Secure Registry LLC v. Apple Inc.
• Conclusory Legal Statements are not Factual Allegations to Survive Section 101 Eligibility: Dropbox Inc. v. Synchronoss Techs, Inc.
  by Peter Keros
  July 1, 2020
  Conclusory legal statements that attempt to invoke a factual allegation do not sufficiently allege an inventive concept to satisfy patent eligibility under 35 U.S.C. § 101. Dropbox Inc., Orcinus Holdings, LLC v. Synchronoss Techs. Inc, 2019-1765, 2019-1767, 2019-1823 (Fed. Cir. June 19, 2020) (nonprecedential). Plaintiff Dropbox asserted infringement of U.S. Patent Nos. 6,178,505, 6,058,399, and 7,567,541 against Defendant Synchronoss. The patents are directed to data security and data uploading to websites and networks. The… Read More »Conclusory Legal Statements are not Factual Allegations to Survive Section 101 Eligibility: Dropbox Inc. v. Synchronoss Techs, Inc.
• Claimed Improvement Not Patent-Eligible Where Reducible to Mental Steps: Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc.
  by Charles Bieneman
  June 29, 2020
  A Rule 12 motion to dismiss was granted where patent claims directed to “authenticating a user to a transaction at a terminal” failed the 35 U.S.C. § 101 and Alice/Mayo patent-eligibility test. Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc., Civil Action No. 18-1477-CFC (D. Del. June 24, 2020). Notably, the plaintiff attempted to rely on a purported improvement to computing technology that the court discounted because the purported improvement… Read More »Claimed Improvement Not Patent-Eligible Where Reducible to Mental Steps: Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc.
• Means-Plus-Function Construction Can Lead to Indefiniteness
  by Mark St. Amour
  June 22, 2020
  In Unicorn Global Inc. v. Golab, Inc. No. 3:19-CV-0754-N (N.D. Tex. May 26, 2020), the Northern District of Texas construed several disputed terms of U.S. Patent No. 9,376,155 and U.S. Patent No. 9,452,802, and found claims to be indefinite means-plus-function claims without having structure described in the specifications. The patents are directed to personal transportation devices known as hoverboards which include a divided platform with wheels on opposite ends. A rider stands on the platform… Read More »Means-Plus-Function Construction Can Lead to Indefiniteness
• Patent Claims for “Two-step Pick and Place” fail § 101 at Rule 12 stage.
  by Mike McCandlish
  June 22, 2020
  Patent claims directed to a two-step “pick and place” operation for attaching electronic parts to a circuit body (a “die attach” method) were held ineligible on a Rule 12(c) motion for judgment on the pleadings under 35 U.S.C. §101 and the Alice/Mayo test. Palomar Technologies, Inc., v MRSI Systems, LLC, Case no. 18-10236-FDS (D. Mass., May 28, 2020.) Background The plaintiff Palomar sued defendant MRSI for infringement of Palomar’s U.S. Patent No. 6,776,327. MRSI… Read More »Patent Claims for “Two-step Pick and Place” fail § 101 at Rule 12 stage.
• Use of Passive Voice Insufficient to Connote Structure in MPF Analysis
  by Tyson Benson
  June 18, 2020
  The District Court for the Northern District of California recently issued a claim construction order in Zoho Corporation v. Sentius International, LLC, finding that the claim limitation “means for compiling the source material image from at least the plurality of discrete pieces” was indefinite.  The present action arose from a declaratory judgement action brought about by Zoho alleging that it did not infringe Reissued Patent No. RE43,633.  While both parties agreed that 35 U.S.C.… Read More »Use of Passive Voice Insufficient to Connote Structure in MPF Analysis
• Providing Software for User Device Insufficient to Adequately Plead Infringement of Method Claim
  by Peter Keros
  June 17, 2020
  The Northern District of California dismissed a complaint of patent infringement for failing to adequately plead direct or joint infringement. Sentius Int’l LLC v. Apple Inc., No. 4:20-cv-00477 (N.D. Cal. June 2, 2020). The Court held that merely selling software did not constitute direct infringement and that Sentius did not adequately allege the requisite direction or control required for joint infringement. Plaintiff Sentius alleged infringement of U.S. Patent Nos. RE43633 and 7,672,985 by Defendant… Read More »Providing Software for User Device Insufficient to Adequately Plead Infringement of Method Claim
• Willful Infringement Allegations Require More Than Conclusory Statements
  by Tyson Benson
  June 15, 2020
  In a recent decision from the United States District Court for the District of Nevada, the court granted a motion to dismiss willful infringement allegations for lacking plausible factual allegations. IP Power v. Westfield , No. 2:19-cv-01878-MMD-NJK (D. Nev. June 4, 2020). This case centers around U.S. Patent No. 6,817,671, which is directed to a collapsible, reclining camp chair with a footrest and cupholders.  The plaintiff sued the defendant after multiple correspondences were exchanged… Read More »Willful Infringement Allegations Require More Than Conclusory Statements
• Barcode Patent Fails Alice § 101 Test: Coding Technologies, LLC v. Mississippi Power Co.
  by Charles Bieneman
  June 11, 2020
  Patent claims directed to scanning a code pattern for billing information and then processing a bill based on billing information obtained thereby have been held ineligible under 35 U.S.C. § 101 and the  Alice/Mayo test. In Coding Technologies, LLC v. Mississippi Power Co., No. 1:19-CV-994-LG-RHW (S.D. Miss. June 4, 2020), the court granted a Rule 12(b)(6) motion to dismiss based on § 101 invalidity of U.S. Patent No. 9,240,008. Claim 1 of the ’008 patent… Read More »Barcode Patent Fails Alice § 101 Test: Coding Technologies, LLC v. Mississippi Power Co.
• Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules
  by Bryan Hart
  June 8, 2020
  In the latest development in extensive litigation between Shure and ClearOne over audio and conferencing equipment, the District of Delaware rejected a motion to dismiss Shure’s claims over multiple civil procedure grounds, including as compulsory counterclaims to an earlier suit and as failing to be the first to file. The conflict between Shure and ClearOne began not in the District of Delaware but in the Northern District of Illinois. In 2017, Shure filed a… Read More »Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules
• CAFC Easily Invalidates Mobile Device Search Patent under Alice: British Telecommunications PLC v. IAC/InterActiveCorp.
  by Charles Bieneman
  June 4, 2020
  Patent claims directed to presenting a user with a “short list” of  “information sources” for selection based on a user location are patent-ineligible under 35 U.S.C. § 101 and the  Alice/Mayo test. British Telecommunications  PLC v. IAC/InterActiveCorp., No. 2019-1917 (Fed. Cir. June 3, 2020) (opinion by Judge Taranto, joined by Judges Dyk and Hughes) (non-precedential). The Federal Circuit panel upheld the district court’s decision, on a Rule 12(b)(6) motion to dismiss, that all claims of… Read More »CAFC Easily Invalidates Mobile Device Search Patent under Alice: British Telecommunications PLC v. IAC/InterActiveCorp.
• Attorney-Client Privilege Granted to Canadian In-House Counsel on U.S. Law
  by Peter Keros
  June 1, 2020
  The District of Kansas held that documents produced by a Canadian attorney working as in-house counsel on U.S. patent infringement matters qualify for attorney-client privilege in a U.S. patent infringement case. Sudenga Indus., Inc. v. Global Industries, Inc., No. 18-2498-DDC (D. Kan. May 15, 2020). Plaintiff Sudenga Industries sent a cease and desist letter alleging patent infringement to Defendant Global Industries. Defendant is based in Canada, and their General Counsel is licensed in Canada,… Read More »Attorney-Client Privilege Granted to Canadian In-House Counsel on U.S. Law
• Patent Claims to 3D Virtual Environment Held Ineligible at Pleadings Stage: Barbaro Technologies, LLC v. Niantic Inc.
  by Charles Bieneman
  May 28, 2020
  Patent claims directed to a 3D virtual game environment were held ineligible on a Rule 12(c) motion for judgment on the pleadings under 35 U.S.C. § 101 and the  Alice/Mayo test. Barbaro Technologies, LLC v. Niantic Inc., Case No. 18-cv-02955-RS (N.D. Cal. May 21, 2020). The plaintiff had alleged that defendants infringed claims of two patents, US Patent 7,373,377 and US Patent 8,228,325. Asserted claims of the ’325 patent were held ineligible. Claim 1 of… Read More »Patent Claims to 3D Virtual Environment Held Ineligible at Pleadings Stage: Barbaro Technologies, LLC v. Niantic Inc.
• On Remand, Software Patents Held Invalid for Lacking Sufficient Factual Allegations
  by Peter Keros
  May 26, 2020
  While software patents have recently survived Rule 12 motions to dismiss on the pleadings, a lack of an inventive concept doomed a set of software patents as ineligible under 35 U.S.C. § 101. MyMail Ltd. v. ooVoo, LLC, 17-cv-04487 (N.D. Cal. May 7, 2020). Plaintiff MyMail sued Defendants ooVoo and IAC for infringement of U.S. Patent Nos. 8,275,863 and 9,021,070. After remand by the Federal Circuit vacating the Court’s judgment on the pleadings for… Read More »On Remand, Software Patents Held Invalid for Lacking Sufficient Factual Allegations
• Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco
  by Bryan Hart
  May 22, 2020
  In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the defendants had offered of embodiments that were not enabled by the patent. McRO owns… Read More »Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco
• CAFC Holds Patent-Ineligible Claims to Ranking Stations in Ad-hoc Radio Network: Cisco Systems, Inc. v. Uniloc 2017
  by Charles Bieneman
  May 21, 2020
  Patent claims directed to “determining a master/slave rank of each station” in an ad hoc radio network are directed to the patent-ineligible “abstract idea of selecting the highest ranked station.” Cisco Systems, Inc. v. Uniloc, 2017, No. 2019-2048 (Fed. Cir. May 13, 2020) (opinion by Judge Moore, joined by Judges O’Malley and Taranto) (non-precedential). The Federal Circuit therefore affirmed a decision by the Northern District of California under FRCP 12(c) dismissing a cause of… Read More »CAFC Holds Patent-Ineligible Claims to Ranking Stations in Ad-hoc Radio Network: Cisco Systems, Inc. v. Uniloc 2017
• Federal Claims Court Finds Prosecution History Estoppel in Allowable Dependent Claims
  by Tyson Benson
  May 20, 2020
  In the recent decision of IRIS Corporation Berhad v. United States of America, the United States Court of Federal Claims had the opportunity to evaluate the Doctrine of Equivalents (DOE) in view of applicant actions during prosecution. More specifically, this case centered around the applicant’s actions of incorporating dependent claim material into an independent claim and whether those actions led to prosecution history estoppel. This case arose when IRIS sued the United States Department… Read More »Federal Claims Court Finds Prosecution History Estoppel in Allowable Dependent Claims
• Federal Circuit Finds Fault in PTAB’s Determination of Obviousness Without Proper Notice
  by Tyson Benson
  May 18, 2020
  In Nike v. Adidas (Fed. Cir. April 9, 2020) (precedential), the Federal Circuit addressed the notice provisions of the Administrative Procedures Act (APA) as they relate to the Patent Trial and Appeals Board (PTAB or Board) determination in an inter partes review (IPR) proceeding. Specifically, this precedential decision held that notice is required when the PTAB advances a novel theory of unpatentability. Originally, Adidas filed a petition for inter partes review of a patent… Read More »Federal Circuit Finds Fault in PTAB’s Determination of Obviousness Without Proper Notice
• Lack of Algorithm in Specification Renders Means-Plus-Function Claim Indefinite
  by Nathan Smith
  May 15, 2020
  The Eastern District of Texas held that the only asserted claim of U.S. Patent No. 6,452,515 was indefinite because “the term ‘[means] for encoding these labels in a random order’” (alterations in original) invokes 35 USC § 112 ¶ 6, and “the specification of the ‘515 Patent does not disclose an algorithm for performing the encoding function required by this limitation.” Uniloc 2017 LLC v. Google LLC, No. 18-cv-00501-JRG-RSP (E.D.Tex. May 1, 2020). The… Read More »Lack of Algorithm in Specification Renders Means-Plus-Function Claim Indefinite
• Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)
  by Bryan Hart
  May 14, 2020
  The sins of the parent patent will not be visited on the child patent, at least in the Western District of Texas. An earlier determination of ineligible subject matter does not trigger claim preclusion against an infringement suit asserting a patent issued from a continuation application from the earlier patent. VideoShare, LLC v. Google LLC, Civ. No. 6-19-CV-00663-ADA (W.D. Tx. May 4, 2020). Because this case involves claim preclusion (or res judicata, if you… Read More »Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)
• The Doctrine of Equivalents Fails to Save Patent Infringement Suit: Ethicon Endo-Surgery, Inc., et al, v. Covidien LP
  by Mike McCandlish
  May 13, 2020
  Following a bench trial, the District Court of Massachusetts held that Ethicon’s “shepherd’s hook” design for finger actuation of a forceps is not equivalent to a “finger loop” claimed by Covidien’s patent no. 9,241,759, and thus Covidien had failed to establish infringement for Ethicon’s Enseal X1 Large Jaw vessel sealer. Ethicon Endo-Surgery, Inc. v. Covidien LP, No. 16-12556-LTS (D. Mass., April 24, 2020.) The court provided an interesting analysis under the Doctrine of Equivalents.… Read More »The Doctrine of Equivalents Fails to Save Patent Infringement Suit: Ethicon Endo-Surgery, Inc., et al, v. Covidien LP

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