September 2014

Prior Art Found Pertinent to Patent-Eligibility Under 35 U.S.C. § 101

Quoting Bob Dylan in “You’re a Big Girl Now,” from the landmark album Blood on the Tracks, Judge Wu in the Central District of California has summed up the present state of patent-eligibility jurisprudence under 35 U.S.C. § 101: “A change in the weather has known to be extreme.” McRo, Inc. v. Codemasters Inc., No. CV 14-439-GW(FFMx) (C.D. Cal. Sept. 22, 2014). Judge Wu made this statement in the course of granting a defense motion for judgment on the pleadings under FRCP 12(c), holding claims of U.S. Patent Nos. 6,307,576 and 6,611,278 invalid for failing to recite patent-eligible subject matter under Section 101. Although a Dylan quote is always nice, more significantly, Judge Wu’s analysis included determining which patent claim elements were included in the prior art, and which were not, and then focusing on elements not previously known in determining whether the patent claims were not patent-eligible as being directed to an abstract idea.  The old rule that a patent claim should be considered “as a whole” when its validity is at stake is certainly taking a beating these days. The patents-in-suit were both directed to a method for automatically performing lip and facial expression synchronization for animated characters… Read More »Prior Art Found Pertinent to Patent-Eligibility Under 35 U.S.C. § 101

Yet Another Business Method Patent Fails Section 101 “Abstract Idea” Test

Yet another court has held yet more business method patents invalid for failing to recite patent-eligible subject matter under 35 U.S.C. § 101. In Open Text S.A. v. Alfresco Software Ltd., No. No. 13-cv-04843-JD (Sept 19, 2014), the court granted the defendant’s Rule 12(b)(6) motion to dismiss, holding that claims of U.S. Patent Nos. 7,647,372 and 7,975,007 were invalid under Section 101. Both patents are entitled “Method and System for Facilitating Marketing Dialogues,” which at this point perhaps tells the Section 101 cognoscenti all they need to know. And if the patents’ titles do not suffice for telegraphing the outcome of this case, consider the court’s summary: The patents purport to describe an invention that allows a marketer to “communicate with potentially large numbers of customers (or potential customers, or other participants receiving a communication), where communications may involve waiting for, or receiving responses to, communications, and sending subsequent communications (or taking other actions) that depend, for example, on the responses, information known (or surmised) about an individual participant or any number of other factors.” . . . Translated into plainer English, the patents simply describe a form of the concept of interacting with customers for marketing purposes. To that… Read More »Yet Another Business Method Patent Fails Section 101 “Abstract Idea” Test

PTAB Invalidates Business Method Claims in CBM Review

Inter partes review (IPR) and post-grant review proceedings conducted by the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office are emerging as a potent tool for invalidating patents. Under the Covered Business Method (CBM) PG-Review available to accused infringers, the PTAB can invalidate patent claims under 35 U.S.C. § 101, in addition to under prior art provisions, 35 U.S.C §§ 102, 103. A good example of this trend is found in Salesforce.com, Inc. v. VirtualAgility, Inc., Case CBM2013–00024 (PTAB Sept. 16, 2014), where the PTAB invalidated claims of U.S. Patent No. 8,095,413 under Section 101, in addition to finding the claims anticipated under Section 102. Summary of the Patent under Review Claim 1 of the ’413 patent was directed to “[a] system for supporting management of a collaborative activity by persons involved therein, the persons not being specialists in information technology, the system being implemented using a processor and a storage device accessible to the processor.” The patent described acquiring data sets to represent a model entity, e.g., an organization having customer relationships, processes, capabilities, economic information, etc.  A first data set could be associated with a second data set so that entities could… Read More »PTAB Invalidates Business Method Claims in CBM Review

Goodbye to Form 18?

Form 18 appended to the Federal Rules of Civil Procedure provides a form complaint for pleading patent infringement. To the chagrin of many defendants, Form 18 has been used to justify very bare-bones complaints of patent infringement even after the Supreme Court’s Iqbal and Twombley decisions requiring more detailed pleading. Now Form 18 may be on the way out. The US Judicial Conference’s Committee on Rules of Practice and Procedure has provided a recommendation to the Supreme Court in its September 2014 report that Rule 84, and the Appendix of Forms, including Form 18, be abrogated.  Stay tuned — defendants could soon have another set of potent arguments to justify motions to dismiss complaints of patent infringement.

Covered Business Method Patent Found Likely Patent-Eligible Under 35 U.S.C. § 101

The Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office has arguably held that business method patent claims may be patent-eligible under 35 U.S.C. § 101. In PNC Bank v. Secure Axcess, LLC, Case CBM2014-00100 (PTAB Sept. 9, 2014), the PTAB held that U.S. Patent No. 7,631,191 was eligible for Covered Business Method review to be instituted under 35 U.S.C. § 324. However, the PTAB was “not persuaded Petitioner has demonstrated that it is more likely than not that the claims challenged in the Petition are unpatentable under 35 U.S.C. § 101.” Therefore, while instituting a CBM review because it found that the Petitioner was likely to prove the patent claims obvious under 35 U.S.C. § 103, the PTAB denied Section 101 as a ground for the proceeding. Claim 1 of the ’191 patent recites as follows: A method comprising: transforming, at an authentication host computer, received data by inserting an authenticity key to create formatted data; and returning, from the authentication host computer, the formatted data (i) to enable the authenticity key to be retrieved from the formatted data and (ii) to locate a preferences file, wherein an authenticity stamp is retrieved from the… Read More »Covered Business Method Patent Found Likely Patent-Eligible Under 35 U.S.C. § 101

Already Alice Corp. v. CLS Bank Has Brought a Sea-Change in Patent-(In)eligibility

In the four years leading up to Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014), the U.S. Supreme Court addressed patent-eligible subject matter under 35 U.S.C. § 101 in Bilski v. Kappos and Mayo v. Prometheus.  Both decisions clearly cut back on the anything-goes approach to determining patent-eligible subject matter that prevailed after the Federal Circuit’s decision in State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). However, after just a few months of lower court activity, it is clear that, in terms of limiting patentability of software and business method related inventions, Bilski and Mayo have nothing on the impact of Alice. In just a few months, the federal district courts, and the Federal Circuit, have issued a rash of decisions invalidating patent claims under Section 101; only a few decisions have gone the other way. Section 101 at the Federal Circuit after Alice Post-Alice Federal Circuit cases include Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., invalidating claims “directed to a device profile and a method for creating a device profile within a digital image processing system,” and Buysafe, Inc. v. Google Inc., No.… Read More »Already Alice Corp. v. CLS Bank Has Brought a Sea-Change in Patent-(In)eligibility

PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together

In Ex parte Gilbert (Appeal 2012/005795; App. No. 11/200,749), the Patent Trials and Appeals Board (PTAB) held that the Examiner had not established that one of ordinary skill in the art would have had an apparent reason to combine the references because there is nothing that would “tie” the approaches of the references together. The only independent claim at issue reads as follows: 8. (Previously Presented) A method for delivering a drug into tissue comprising the steps of: providing a drug delivery device having at least one nozzle and a drug contained in a portion of the device; identifying a site for delivery of the drug in the eye; placing a portion of the device on or near the site; and delivering the drug as a fine stream into the tissue at the site through the at least one nozzle of the device under needle-free microjet propulsion at a driving pressure from about 800 to about 2,000 psi such that the pressure of the drug leaving the nozzle is from about 4,000 to about 25,000 psi. The Examiner rejected independent claim 8 as being obvious over U.S. Patent No. 6,010,478 to Bellhouse in view of U.S. Patent No. 4,137,804 to… Read More »PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together

Another Post-Alice Nail in the Coffin of Business Method Patents

In a case where the patent-owner had no chance following Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014), the Federal Circuit has affirmed a district court’s pre-Alice holding that patent claims directed to “providing a guaranty service for online transactions” are not patent-eligible under 35 U.S.C. § 101.  Buysafe, Inc. v. Google Inc., No. 2013-1575 (Fed. Cir. Sept. 3, 2014). The Federal Circuit focused its analysis on method claim 1 of the patent at issue, U.S. 7,644,019 (reproduced in this post), the parties having agreed that the analysis of method claims would be applied to computer-readable medium claims.  Concluding that claim 1 implicated the “abstract idea” category of subject matter excluded from patent eligibility, the Court turned to analyzing “two aspects” of Supreme Court precedent: what type of matter the Court has held to come within the category of “abstract idea”; and what invocations of a computer in a claim that involves such an abstract idea are insufficient to pass the test of an inventive concept in the application of such an idea. Concerning the issue of whether claimed subject matter was an “abstract idea,” the court turned to cases such as Bilski v. Kappos… Read More »Another Post-Alice Nail in the Coffin of Business Method Patents