March 2015

Pleading Removal of Copyright Management Information Under the DMCA (and a Related Trademark Claim)

In Fischer v. Forrest, 14 Civ. 1304 (PAE); 14 Civ. 1307 (PAE) (S.D.N.Y. Jan 13, 2015), the court denied a Rule 12(b)(6) motion to dismiss a suit alleging copyright and trademark infringements. Of particular interest in this post is the pleading required to state a claim for remove of Copyright Management Information (CMI) under the DMCA. Also of interest is the way in which the facts supporting this claim were intertwined with a claim for trademark infringement under the Lanham Act.  Finally, this case offers a lesson for drafting choice of law provisions in confidentiality agreements — make them broad enough to cover related tort claims in addition to breach of contract claims. The plaintiff held a valid federal copyright registration for text and images used on his website, and a valid federal trademark registration for his honey harvesting product for beekeepers called Bee-Quick®. The plaintiff authorized the defendant to use the trademark name, images and text to sell Bee-Quick® through the defendant’s website. After eight years, the defendant terminated the business relationship with the plaintiff, but allegedly continued using the copyrighted text, images and trademark on his website and catalogs to market his own product. Specifically, the plaintiff alleged… Read More »Pleading Removal of Copyright Management Information Under the DMCA (and a Related Trademark Claim)

Patent Claims to Dynamic Pricing Held Not Patent-Eligible (Again)

A Delaware district judge has adopted a magistrate’s recommendation to hold patent-ineligible claims directed to dynamically pricing a transaction, and dynamically providing product upgrade options to a customer. Tenon & Groove LLC v. Plusgrade SEC, No. 1:12-cv-01118 (D. Del. March 11, 2015). The patents-in-suit were U.S. Patent Nos. 7,418,409 and 8,145,536. In a reminder to patent drafters to include as much technical detail as possible, the court noted that the specification here disclosed little more than “methods and systems for customizing and optimizing a company’s products and services to individual customers in [a] way that concurrently maximizes customer value satisfaction and overall business performance.” Thus, the court was able to acknowledge that this subject matter might “not quite qualify as a ‘fundamental economic [or] conventional business practice[],’” while at the same time finding “by clear and convincing evidence” that the patent claims at issue embodied “an abstraction-an idea, having no particular concrete or tangible form.” The court rejected the plaintiff’s argument that the patent claims embodied simply an idea – and not an abstract idea – because the claims were directed to allegedly novel “subset applications of ‘dynamic pricing’-applications that were previously unrealized in industry.” New ideas, the court said,… Read More »Patent Claims to Dynamic Pricing Held Not Patent-Eligible (Again)

Patent Claims for Optimizing Helpdesk Requests Recite an Abstract Idea under 35 U.S.C. § 101

Patent claims directed to a software system for “optimizing the efficiency” of processing IT helpdesk requests were held patent-ineligible under 35 U.S.C. § 101 as directed to abstract ideas. Accordingly, the court in Hewlett Packard Co. v. ServiceNow, Inc., Case No. 14-cv-00570-BLF (N.D. Cal. Mar. 10, 2015), granted summary judgment of invalidity with respect to U.S. Patents Nos. 8,224,683, 6,321,229, 7,890,802 and 7,610,512. To summarize, the ’683 patent claims are directed to a system that tracks service tickets coming into a helpdesk, and provides alerts to the helpdesk user of “impending times for actions.” The ‘229 patent is directed toward “allowing hierarchical access to the information based on categories of information stored in the” IT database repository. The ‘802 and ‘512 patents are directed toward “automating workflows for resolving IT incidents.” Using the framework set out by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014), once claims are directed to an abstract idea, it is necessary to determine if the claims contain an “inventive concept” to ensure that the plaintiff “is claiming a patent-eligible application of this idea, rather than attempting to patent the idea itself.” Here, the claims in the ’683 patent are… Read More »Patent Claims for Optimizing Helpdesk Requests Recite an Abstract Idea under 35 U.S.C. § 101

Action Brought Under DMCA and CFAA Dismissed (Part II)

In Part I of this post, we discussed copyright infringement and Digital Millennium Copyright Act (DMCA) claims brought in LivePerson, Inc. v. 24/7 Customer Inc., 2015 U.S. Dist. LEXIS 3688, No. 1:2014cv01559 (S.D.N.Y. Jan. 13, 2015). Now we turn to the Computer Fraud and Abuse Act (CFAA) claim brought in the case, and lessons from pleading deficiencies with respect to the CFAA claim. The CFAA establishes a private cause of action against a person who “knowingly accessed a computer without authorization or exceeding authorization” resulting in a loss in excess of $5000 (and other injuries not relevant here). To state a claim for the loss of $5000 or more, Plaintiff must plead that Defendant: (1) accessed a “protected computer”; (2) without any authorization or exceeding its authorized access; and (3) caused loss in excess of $5000. 18 U.S.C. § 1030(g) (2012). The ultimate question here was whether Defendant’s access was unauthorized or exceeded its authorization. (Remember that Defendant already had access pursuant to the license agreement.) There is a circuit split on the issue of when access exceeds authorization; the Second Circuit has not yet ruled on the issue. The First, Fifth, Seventh, and Eleventh Circuits have held that a… Read More »Action Brought Under DMCA and CFAA Dismissed (Part II)

Broad Interpretation of “Financial Product Or Service” and an Abstract Idea Makes Patent Claims Directed to Insurance Valuation Eligible for Covered Business Method Review

The USPTO’s Patent Trial and Appeal Board (PTAB) has instituted a Covert Business Method (CBM) review of three patents claiming methods for obtaining valuation reports relating to damaged vehicles for automobile insurance claim purposes. The PTAB thought that claims of U.S. Patent Nos. 7,912,740, 8,200,513, and 8,468,038 were directed to a “financial product or service” and thus were eligible for CBM review. Further, the PTAB thought it more likely than not that the claims were invalid for reciting patent-ineligible subject matter under 35 U.S.C. § 101, as well as obvious under 35 U.S.C. § 103. The PTAB’s three separate orders regarding the respective patents may be downloaded here, here, and here; the orders are very similar and for convenience this blog post focuses on the order relating to the ’740 patent. Section 18(d)(1) of the America Invents Act (AIA) defines a “covered business method patent” as one that “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” However, “patents for technological inventions” are explicitly excluded from the scope of covered business method patents. Claim 1 of the ’740 patent recited “[a] method for… Read More »Broad Interpretation of “Financial Product Or Service” and an Abstract Idea Makes Patent Claims Directed to Insurance Valuation Eligible for Covered Business Method Review

One Case, Two Section 101 Patent-Eligibility Results

One patent was held to recite ineligible subject matter under 35 U.S.C. § 101, and a second patent was held eligible, in Intellectual Ventures I, LLC v. Motorola Mobility LLC, No. 11-908-SLR (D. Del. Feb 24, 2015). This result provides guidance for all involved in patent eligibility questions but may be particularly useful, I think, for certain patent owners and applicants looking to distinguish their claims from the raft of claims held unpatentable under Section 101 in recent months. The court considered the patent-eligibility of two of six patents-in-suit as part of Motorola’s summary judgment motion, renewed after a jury trial resulted in a hung jury. U.S. 6,557,054, held patent-ineligible, recited “[a] computer implemented method for distributing software updates from a remote computer system to a user station.” U.S. 7,409,450, held patent-eligible, included claims directed to “coupling one or more subscriber customer premise equipment (CPE) stations with a base station over a shared wireless bandwidth using a packet-centric protocol; and allocating the wireless bandwidth and system resources based on contents of packets.” Judge Robinson’s analysis of the ’054 patent began with a chart having a first column listing the three claim limitations of an exemplary independent claim, and a second… Read More »One Case, Two Section 101 Patent-Eligibility Results