November 2012

Patent Claims Indefinite: No Structure Supports Recited Software Means

The Federal Circuit has held patent claims indefinite under 35 U.S.C. § 112 where the claims recited “means for processing,” but the patent specification failed to disclose any structure that performed the recited means. Eplus, Inc. v. Lawson Software, Nos. 2011-1396, -1456, -1554 (Fed. Cir. Nov. 21, 2012). This case continues a line of Section 112 indefiniteness cases that emphasize the importance of disclosing structures to support recited means in computer-implemented inventions. Certain claims of U.S. Patent Nos. 6,023,683 and 6,505,172 recited “means for processing said requisition to generate purchase orders for said selected matching items.” The District Court had found these claims valid under Section 112, holding that the common Specification of the patents-in-suit disclosed a “a purchase order generation module.”  However, the Federal Circuit found no such structure mentioned in the Specification. The Specification’s background section disclosed prior art requisition systems. Another section of the Specification discussed means for generating purchase orders, but did not disclose any corresponding structures for carrying out these means. Yet a third section of the Specification discussed how requisitions could be converted to purchase orders, but provided only a black box in which this function was performed without disclosing any corresponding structure. The Court… Read More »Patent Claims Indefinite: No Structure Supports Recited Software Means

Medical Screening Method Claims Invalid, Federal Circuit Says

Patent claims directed to a method for using screening markers to determine the risk of Down’s syndrome are invalid under 35 U.S.C. § 101, the Federal Circuit has held. In Perkinelmer, Inc. v. Intema Ltd., No. 2011-1577 (Fed. Cir. Nov. 20, 2012), the Federal Circuit reversed a lower court’s holding that claims of U.S. Patent No. 6,573,103 were valid under Section 101. Thus, the Federal Circuit did not address the District Court’s holding that the asserted claims of the ‘103 patent were invalid as anticipated or obvious under 35 U.S.C. §§ 102 and 103. The claims of the ’103 patent recited assaying samples, during both the first and second trimesters of pregnancy, from a woman to obtain a biochemical marker as well as making measurements from ultrasounds to obtain ultrasound screening markers. The risk of Down’s syndrome was then determined “by comparing the measured levels of” the screening markers “with observed relative frequency distributions of marker levels in Down’s syndrome pregnancies and in unaffected pregnancies.” Claim 1 of the ’103 patent is reproduced at the end of this post. The District Court had “held that the claims cover patent-eligible subject matter because, even though they recite an ineligible algorithm, they… Read More »Medical Screening Method Claims Invalid, Federal Circuit Says

Director Kappos Comments on Software Patents

United States Patent and Trademark Office Director Kappos recently gave a speech about software patents to the Center for American Progress, a Washington think tank. Director Kappos squarely addressed the question “should we treat software differently than hardware when it comes to patentability?”  His answer: “No. Absolutely not.” That said, Director Kappos acknowledged software patent quality problems, and software industry debate about software patents.  He addressed various ways in which he believes software patent issues have been, and are being, addressed. I urge you to click the above link and read the entire address, which is posted on the USPTO website. However, the main themes of the talk (with which many people undoubtedly will disagree) were that (1) the USPTO has improved software patent quality, which is relatively high and (2) efforts to further improve software patent quality, such as the America Invents Act and USPTO examination procedure improvements, need to be given time to work.

When Must Joint Patent Infringement Be Plead?

After Yahoo argued that the plaintiff should be required to meet the standard for pleading divided, or joint, patent infringement, a Delaware magistrate judge has recommended denying Yahoo’s motion to dismiss the plaintiff’s complaint for direct patent infringement. Pragmatus AV, LLC v. Yahoo! Inc., No. 11-902-LPS-CJB (D. Del. Nov. 13, 2012). The court believed that it was possible that claim construction would determine that Yahoo could be the actor of certain claimed steps despite Yahoo’s assertion that the steps could only be carried out by a third party. However, the magistrate judge did recommend dismissing the plaintiff’s complaint insofar as it plead induced or contributory infringement. The plaintiff alleged that the Yahoo! Messenger product infringed claims of its U.S Patent Nos. 6,237,025, 6,351,762, 5,854,893, 7,185,054, and 5,896,500. The patents were all directed to collaborative communications, i.e., audio and/or video conferencing. The court first noted that, while the law of the regional circuit applies to motions to dismiss, it would follow Federal Circuit cases to the extent the reasoning of such cases was persuasive. Turning to the standard for direct infringement, the court cited Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1307 (Fed. Cir. 2012), for the proposition… Read More »When Must Joint Patent Infringement Be Plead?

BMC and Muniauction Still Require a Single Actor for Direct Infringement

The Federal Circuit has refused to find direct patent infringement where a single party did not carry out, or at least control, all acts alleged to constitute infringement.  Voter Verified, Inc. v. Premier Election Solutions, Inc., Nos. 2011-1553, 2012-1017, 2011-1559, 2012-1016 (Fed. Cir. Nov. 5, 2012). Perhaps this holding should not be surprising.  However, the Federal Circuit did partially overrule BMC Resources, Inc. v. Paymentech, L.P ., 498 F.3d 1373 (Fed. Cir. 2007) and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), when it recently held in Akamai Technologies, Inc. v, Limelight Networks, Inc., that induced patent infringement does not require a single actor.  The Voter Verified case now at least implicitly reaffirms that BMC and Muniauction continue to govern the law of direct infringement, and thus is consistent with the Akamai majority’s statement that it did not “revisit any of those principles regarding the law of divided infringement as it applies to liability for direct infringement under 35 U.S.C. § 271(a).” In this case, independent claims 49, 85, and 93 of U.S. Reissue Patent RE40,449 recited “methods for voting, each explicitly requiring that several of the claimed steps must be performed by the voter.”  The patent… Read More »BMC and Muniauction Still Require a Single Actor for Direct Infringement

Unindexed Internet Content Can Be a “Printed Publication” under 35 U.S.C. § 102(b)

Unindexed Internet content can be a “printed publication” under 35 U.S.C. § 102(b), the Federal Circuit has held.  Voter Verified, Inc. v. Premier Election Solutions, Inc., Nos. 2011-1553, 2012-1017, 2011-1559, 2012-1016 (Fed. Cir. Nov. 5, 2012). Claim 49 of U.S. Reissue Patent RE40,449 recited “[a] method of voting providing for self-verification of a ballot.” The District Court had held claim 49 invalid under 35 U.S.C. § 103 based on an article from the “Risks Digest,” an “online periodical concerned with computer safety and security.”  The article had not been indexed by any search engine prior to the critical date, but one of ordinary skill indisputably could have found the article by using a search interface provided by the Risks Digest. The patent owner contended “that a web-based reference” such as the article in question “must be searchable by pertinent terms over the internet to qualify as a prior art printed publication as defined by 35 U.S.C. § 102(b).”  The defendants responded that the article qualified “as prior art because it was posted on a public website well known to those interested in the art of voting technologies—the Risks Digest—and could be retrieved from that website by searching based on subject matter.” The… Read More »Unindexed Internet Content Can Be a “Printed Publication” under 35 U.S.C. § 102(b)

Akamai Forces Reconsideration of Summary Judgment of No Induced Infringement

Having previously granted summary judgment of non-infringement on the plaintiff’s induced infringement claim because no one actor practiced the allegedly infringed claims, the court in Civix-DDI, LLC v. Hotels.com, LP, No. 05 C 6869 (N.D. Ill. Nov. 1, 2012), has now granted a request for reconsideration in light of the Federal Circuit’s en banc decision in Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (per curiam). The court had granted Hotels.com’s motion for summary judgment that it did not directly or by inducement infringe certain claims of U.S. Patent Nos. 6,385,622 and 6,415,291.  The Federal Circuit then decided Akamai.  Upon the plaintiff’s motion requesting reconsideration of the summary judgment order, the court agreed that “the Federal Circuit’s decision in Akamai is a significant change in law warranting the Court to reconsider its summary judgment ruling.”  Specifically, as previously reported on this blog, Akamai “overruled the portion of BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007), which required “that in order for a party to be liable for induced infringement, some other single entity must be liable for direct infringement.”  The doctrine of divided infringement is not the bulwark for accused patent infringers… Read More »Akamai Forces Reconsideration of Summary Judgment of No Induced Infringement