November 2013

Another Rule 12 Holding that Patent Claims Are Invalid Under Section 101

A district court has held invalid patent claims directed to “facilitating evaluation, in connection with the procurement or delivery of products or services, in a context of at least one of (i) a financial transaction and (ii) operation of an enterprise.”  Lumen View Technology LLC v. Findthebest.com, Inc., No. 13 CIV. 3599 (DLC) (S.D.N.Y. Nov. 22, 2013). The court characterized the claims of U.S. Patent No. 8,069,073 as directed to “a method of matchmaking whereby one or more parties on each side input attribute preferences and intensity of preference data,” where “then a computer matches the parties on each side by a ‘closeness-of-fit’ process and produces a list.”  The court held that these claims were directed to an “abstract idea” and thus failed to recite patent-eligible subject matter under 35 U.S.C. § 101. The court began by citing the Federal Circuit’s first decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), for the proposition that the Section 101 patent-eligibility determination was “a threshold inquiry.”  Following that decision from the Federal Circuit, the U.S. Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218 (2010), “recognized . . . ‘three specific exceptions to [Section 101’s] broad patent-eligibility principles: laws… Read More »Another Rule 12 Holding that Patent Claims Are Invalid Under Section 101

Claims Directed to Controlling a Multiple-Computer System Held Not Patent-Eligible

A Rule 12b(b)(6) motion alleging a failure to assert infringement of patentable subject matter has been granted where the asserted patent claimed a method for triggering an event in a system that includes multiple computers.  UbiComm, LLC v. Zappos IP, Inc., Civil Action No. 13-1029-RGA (D. Del. Nov. 13, 2013). The only independent claim of United States Patent No. 5,603,054 recited: 1. A method of triggering a selected machine event in a system including a multiplicity of computer controlled machines and a multiplicity of users, each computer controlled machine being capable of performing a one of the multiplicity of types of machine events, some of the computer controlled machines being stationary and others of the computer controlled machines being mobile, the method comprising the steps of: selecting a type of machine event to be triggered;selecting triggering properties of said system necessary for triggering said selected machine event; selecting triggering conditions of an identified user necessary for triggering said selected machine event; perceiving said triggering conditions;determining whether said triggering properties are met; and triggering said selected machine event when the triggering properties are met and the triggering conditions are perceived. After construing claim terms that the plaintiff had contended needed construction,… Read More »Claims Directed to Controlling a Multiple-Computer System Held Not Patent-Eligible

3D Computer Graphics Patent Claims Held To Lack Patentable Subject Matter

Claims of U.S. Patent Nos. 6,172,679 and 6,618,047, directed to “methods to reduce the number of visibility computations required to render a three-dimensional scene as a two-dimensional digital computer graphic image,” are not patent-eligible under 35 U.S.C. § 101, according to the court in Fuzzysharp Techs. v. Intel Corp., No. 12-CV-04413 YGR, (N.D. Cal. Nov. 7, 2013).  The court thought that the claimed method boiled down to “analyzing which parts of a scene will be visible and which will be hidden, and which may or may not be hidden/visible depending upon the vantage point of the viewer,” and was “unpatentably abstract.” The ’047 patent was a continuation of the application for the ’679 patent, and the claims of each were directed to similar subject matter.  The court began its opinion by performing claim construction, and then turned to the question of whether to grant summary judgment of invalidity on Section 101 grounds. The court reviewed Supreme Court precedent going back to Gottschalk v. Benson, 409 U.S. 63, 67 (1972), and also cited some of the now-familiar recent cases promulgating the “abstract idea” test, including Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012); Bilski v. Kappos, 130… Read More »3D Computer Graphics Patent Claims Held To Lack Patentable Subject Matter

Pre-Natal Diagnostic Method Not Patent-Eligible

A district court has granted summary judgment in favor of an accused patent infringer, and has held not patent-eligible under 35 U.S.C. § 101 patent claims “relate[d] to prenatal detection methods performed on a maternal serum or plasma sample from a pregnant female, which methods comprise detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.” Ariosa Diagnostics v. Sequenom, Inc., No. C 11-06391 SI (N.D. Cal. Oct. 30, 2013). In reaching its conclusion, the court cited both old and new Section 101 precedent, including the recent cases of Bilski v. Kappos, 130 S. Ct. 3218 (2010), Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012), Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1342 (Fed. Cir. 2013), and Accenture Global Servs. v. Guidewire Software, Inc., 2013 U.S. App. LEXIS 18446, (Fed. Cir. Sept. 5, 2013). The court’s reached its conclusion because, based on the undisputed facts before the Court, the only inventive part of the patent is that the conventional techniques of DNA detection known at the time of the invention are applied to paternally inherited cffDNA as opposed to other types of DNA. Thus, the only inventive concept contained… Read More »Pre-Natal Diagnostic Method Not Patent-Eligible