June 2013

PTAB Holds Claims Invalid Under 35 U.S.C. § 101 in Covered Business Method Review Proceeding

The USPTO’s Patent Trial and Appeal Board (PTAB), in its first final decision on a Covered Business Method Patent Review, has invalidated claims of U.S. Patent No. 6,553,350 under 35 U.S.C. § 101. SAP America, Inc. v. Versata Development Group, Inc., Case No. CBM2012-00001 (MPT) (PTAB June 11, 2013). The claims of the ’350 patent were “directed to a method and apparatus for pricing products and services.” The purpose of the claimed invention was to simplify the prior art’s requirement for large data tables used to determine who (i.e., what customers) was purchasing what (i.e., what products). Accordingly, the ’350 patent claimed “arranging customers into a hierarchy of customer groups and products into a hierarchy of product groups.” The PTAB began its opinion by disagreeing with the patent owner’s argument that the Board’s use of the “broadest reasonable interpretation” standard was erroneous. In fact, the PTO has been using the standard for over a century in both pre-issuance and post-issuance proceedings. As with prior proceedings, the new AIA proceedings allow claims, which provide an important notice function, to be amended. Accordingly, “use of the broadest reasonable interpretation encourages patent owners to remove ambiguities and to narrow their claims by amendment,… Read More »PTAB Holds Claims Invalid Under 35 U.S.C. § 101 in Covered Business Method Review Proceeding

Internet Advertising Claims Are Patent-Eligible, Says Federal Circuit (Again)

A Federal Circuit panel has held that claims directed to monetizing Internet advertising are patent-eligible under 35 U.S.C. § 101. Ultramercial, Inc. v. Hulu, LLC, No. 2010-1544 (June 21, 2013). The Court’s opinion was authored by Chief Judge Rader, and joined by Judge O’Malley. Judge Lourie, the author of the en banc plurality opinion holding claims not patent-eligible in the recent CLS Bank case, wrote separately, concurring in the result. This decision comes a year after the U.S. Supreme Court vacated the Federal Circuit’s 2011 decision holding that the claims at issue did not recite patent-eligible subject matter. The Supreme Court had remanded the case to the Federal Circuit with instructions to reconsider its earlier decision in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc. In these instructions, one might have inferred a hint that the Ultramercial claims should not be held patent-eligible. However, that was not the result here. And as if there were any doubt that the intellectual and political battle concerning the boundaries of patent-eligible subject matter rages on in the federal courts, it is only at page 25 of the Court’s 33-page opinion that Judge Rader states that, “[w]ith this background, the court turns to the asserted… Read More »Internet Advertising Claims Are Patent-Eligible, Says Federal Circuit (Again)

Modifying a Patent Infringement Injunction After Remand

Method claims can be the basis for enjoining a defendant from selling certain software, even if the software does not directly infringe asserted patent claims without a customer’s use. Therefore, following the Federal Circuit’s holding that certain asserted claims were invalid, it was appropriate to modify an injunction to exclude software configurations encompassed only by the invalidated claims. Otherwise, the Federal Circuit’s mandate was for the injunction to remain in force. ePLUS, Inc. v. Lawson Software, Inc., No. 3:09cv620 (E.D. Va. June 11, 2013). The trial court’s first task following remand from the Federal Circuit was to determine the impact of the Federal Circuit’s opinion on the injunction that the trial court had entered prior to appeal. Here, the Federal Circuit’s “opinion provided that the action was being remanded ‘for the district court to consider what changes are required to the terms of the injunction consistent with this opinion.’” Further, the Federal Circuit’s “mandate must be viewed in perspective of the fact that the Court of Appeals upheld the injunction against [defendant] Lawson’s argument that it was ‘too broad.’” Under the so-called “mandate rule” (which the court explained was another name for the law of the case), the court could not simply… Read More »Modifying a Patent Infringement Injunction After Remand