May 2015

Reasonable Non-Infringement Positions Relying on Court’s Claim Construction Negates Willful Patent Infringement Argument

Because Fairchild Semiconductor (a counterclaim defendant) had advanced credible non-infringement positions, the court denied a summary judgment motion seeking a finding of willful infringement in Fairchild Semiconductor Corp. v. Power Integrations, Inc., No. 12-540-LPS (D. Del. April 23, 2015). The court here followed the two part test established in In re Seagate Technology, LLC, to analyze the issue of willful infringement of U.S. Patent No. 6,229,366. To meet the first prong of this test, “the plaintiff must show ‘by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.’” To meet the second prong, “the plaintiff must next establish ‘that this objectively-defined risk . . . was either known or so obvious that it should have been known to the accused infringer.’” The court concluded that the first Seagate prong was not satisfied because Fairchild had asserted “reasonable non-infringement positions based on the Court’s claim construction.” Because Fairchild’s arguments, the court explained, “are, at minimum, credible, reasonable non-infringement theories . . . the first prong of Seagate cannot be satisfied.” As a result, the court granted Fairchild’s motion. As this case demonstrates, claim construction willful infringement can turn… Read More »Reasonable Non-Infringement Positions Relying on Court’s Claim Construction Negates Willful Patent Infringement Argument

Software Patent Claims Are Invalid Under 35 U.S.C. § 101 Without Magic (Statutory) Words

A savvy drafter of software patent claims will, to use one of the worst legal cliches, exalt form over substance.  Software in general unquestionably can be patent-eligible even after Alice Corp. v. CLS Bank International.  Undoubtedly, no magic words can promise that a software patent claim will be found patent-eligible under 35 U.S.C. § 101.  However, the wrong words in a patent claim can lead to a finding of patent-ineligible subject matter, and hence a holding of invalidity under Section 101.  Such is the lesson of Allvoice Developments US, LLC v. Microsoft Corp., No. 2014-1258 (Fed. Cir. May 22, 2015). In this case, the patent owner admitted that one set of claims were drawn purely to software.  Further, these claims, drawn to a “universal speech recognition interface,” did not fall into one of the enumerated statutory categories of a “process, machine, manufacture, or composition of matter.”  35 U.S.C. § 101.  Therefore, said a Federal Circuit panel consisting of Judges O’Malley, Prost, and Dyk, the claims were invalid under Section 101. U.S. Patent No. 5,799,273 issued with 78 claims, including independent claims drawn to a “data processing apparatus,” a “data processing arrangement,” “an editor work station,” “a data processing method,” and… Read More »Software Patent Claims Are Invalid Under 35 U.S.C. § 101 Without Magic (Statutory) Words

Single Patent Yields Two Results (for now) on the Question of Patent-Eligibility

A court held one independent claim of U.S. Patent No. 8,332,475 patent-eligible, and another not, in Triplay, Inc. v. Whatsapp Inc., No. 13-1703-LPS (D. Del. April 28, 2015). Alleging that claimed subject matter encompassed an abstract idea, and thus that patent claims were invalid under 35 U.S.C. § 101, the Defendant had moved for dismissal for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). The ‘475 patent describes a system and method for converting electronic messages between platforms. Independent claim 1 recites a system for message communication including an “access block” for receiving and transmitting messages and a “media block” for selecting and converting message formats. Independent claim 12 recites a method for operating the system described in claim 1, without mentioning either of an “access block” or a “media block.” The Court dismissed the complaint regarding claim 12, holding that it was directed to an abstract idea. However, the court at least deferred a patent-ineligibility finding of claim 1, holding that further claim construction of the terms “access block” and “media block” were necessary before determining whether the claim was directed to non-statutory subject matter. Judge Burke analyzed the question of an “abstract idea” under… Read More »Single Patent Yields Two Results (for now) on the Question of Patent-Eligibility

When Is a (Software) Patent Claim Indefinite?

Patent drafters received a reminder to include terms in the specification as they will appear in the claims, and to make sure claim terms are adequately defined and understood, in Dunnhumby USA, LLC v. Emnos USA Corp., No. 13-CV-0399 (N.D.Ill. Jan. 26 and Feb. 4, 2015).  Considering possible indefiniteness of five elements of a disputed claim of U.S. Patent No. 7,421, 422, the court found one element was indeed indefinite – and this finding, of course, was enough to invalidate the patent claim. Defendant Emnos asserted the ’422 patent, entitled “System and Method for Data Capture and Report,” against plaintiff Dunnhumby in a counterclaim. The ’422 patent describes a method for executing a database query such that the results of the query may be delivered to a separate query database. The query database may be used, for example, to statistically analyze the queries conducted on the database. The patent application was initially filed on September 2, 2002. Following an extensive prosecution including two Requests for Continued Examination, the Patent issued on September 8, 2008. After a Markman claim construction hearing, the court considered, in addition to claim constructions of patents asserted by both parties, indefiniteness arguments presented by Dunnhumby with… Read More »When Is a (Software) Patent Claim Indefinite?

Divided Infringement Results in Judgment on Pleadings on Induced Infringement

Finding that a complaint failed to sufficiently allege that the defendant exercised direction or control over all asserted steps of a method patent claim, a court has dismissed a complaint alleging induced infringement under FRCP 12(c). Robert Mankes v. Vivid Seats, Limited, No. 5:13-CV-717-FL, 2015 U.S. Dist. LEXIS 24327 (E.D.N.C. Feb 26, 2015). Based on this ruling, it appears that the doctrine of “divided infringement” continues to have some traction. Plaintiff alleged direct and induced infringement of U.S. Pat. No. 6,477,503, directed to a method for a reservation system that controls inventory. Vivid Seats at *1. Defendant, an Internet ticket seller, argued that the complaint failed to allege adequately alleged direct or induced infringement. Id. at *2. In particular, defendant argued plaintiff had not alleged that defendant performed every step of the asserted method claim, or that defendant exercised control over other parties committing some of the steps of the claimed methods. Miniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 (Fed. Cir. 2007). The plaintiff responded that third parties, acting at arm’s length, when combined to perform all steps of the claimed method, qualifies as infringement. Vivid Seats at *2-*3. In particular, plaintiff argued that the third parties, sellers… Read More »Divided Infringement Results in Judgment on Pleadings on Induced Infringement

Patent Claims Drawn to Managing Shipping Containers Held Patent-Ineligible

Illustrating that business method patent claims face an uphill battle for patent-eligibility after Alice Corp. Pty. Ltd. v. CLS Bank Int’l., a court has invalidated, under 35 U.S.C. § 101, claims directed to a “container monitoring system for accumulating and storing information on shipping containers including container location and container load status.” Wireless Media Innovations LLC v. Maher Terminals LLC, nos. 2:14-cv-07004 and 2:14-cv-07006 (D. N.J. April 20, 2015). Accordingly, claims of U.S. Patent Nos. 6,148,291 and 5,712,789 were held invalid under Section 101. The court was faced with motions for judgment on the pleadings, and therefore first noted that a decision at the pleadings stage was appropriate in this case. The court explained that “even if the Court construes all claim terms in a manner most favorable to Plaintiff, it would still find that none of the claims survive § 101.” More interesting was the court’s statement that it would not presume the patent claims valid for purposes of patent-eligibility analysis. Instead, the court cited Judge Mayer’s concurring opinion in the Federal Circuit’s most recent decision in Ultramercial, Inc. v. Hulu (Fed. Cir. 2014). The court here agreed with Judge Mayer that because “the PTO has for many years… Read More »Patent Claims Drawn to Managing Shipping Containers Held Patent-Ineligible

Patent Claims in Intellectual Ventures Case Held Patent-Eligible Where No Application Without a Computer; Other Claims Held Patent-Ineligible

Considering claims of various patents-in-suit, a court drew a patent-eligibility line at the point where claims could be practiced without a computer, invalidating claims of two patents, but upholding claims of a third, under 35 U.S.C. § 101. Intellectual Ventures I LLC v. Symantec Corp., no 1:10-cv-01067, Intellectual Ventures I LLC v. Trend Micro Inc., no. 1:12-cv-01581 (D. Del. April 22, 2015). The decision came on summary judgement motions amidst a complicated procedural posture, but otherwise followed the now familiar two-part “abstract idea” test of Alice Corp. Pty. Ltd. v. CLS Bank Int’l. and Mayo Collaborative Servs. v. Prometheus Labs., Inc. Claims of U.S. patent no. 6,460,050, drawn to a “method for identifying characteristics of data files,” were patent-ineligible. The claims here were similar to claims in CyberSource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011), being “directed to receiving information related to a file (an identifier) from a querying computer, characterizing the file based on the identifier and other stored identifiers, and communicating a result of the characterization back to a querying computer.” Rejecting an argument based on DDR Holdings, LLC v., L.P., the court explained that, in its view, the claims were directed… Read More »Patent Claims in Intellectual Ventures Case Held Patent-Eligible Where No Application Without a Computer; Other Claims Held Patent-Ineligible

Patent-Eligibility Can Be Deferred Until Claim Construction

Although many courts are often willing to rule on patent-eligibility under 35 U.S.C. § 101 at the pleadings stage, sometimes courts are more comfortable deferring the issue until claim construction. An interesting recent example is Mobile-Plan-It LLC v. Facebook Inc., no. 3:14-cv-01709 (N.D. Cal. April 20, 2015), where patent claims directed to a “method for organizing a meeting occurring at a physical meeting location, using software executing on a computer system” survived a motion for judgment on the pleadings under FRCP 12(c). The court was persuaded that the patent owner “offered at least an argument that its patent offers more than a list of steps human beings were routinely carrying out long before the patent existed.” Although anonymous communications had been proxied long before the patent-in-suit, “the specific problem purportedly addressed by the’091 patent relates to characteristics of email communications, and to particular issues arising among conference attendees.” The court accepted the admonition of the U.S. Supreme court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. that the “abstract idea” test for patent-eligibility should not be applied too broadly. However, the court did express some skepticism about whether “this argument for the existence of an inventive concept will ultimately… Read More »Patent-Eligibility Can Be Deferred Until Claim Construction

DDR Holdings Saves Patent-Eligibility of SMS Messaging Claims

Surviving a patent-eligibility challenge under 35 U.S.C. § 101 were patent claims drawn to a “method of using a computer system to facilitate two-way communication between a mobile device and an Internet server.” Messaging Gateway Solutions LLC v. Amdocs Inc., No. 1:14-cv-00732 (D. Del. April 15, 2015). Accordingly, the court denied defendants’ motions for judgment on the pleadings under FRCP 12(c), and granted the plaintiff’s motion. The court began by addressing an issue other courts have grappled with: whether the “clear and convincing” standard sets forth the burden of proof to show patent-ineligibility.  The court here ducked the question, finding that the patent claims at issue were patent-eligible under regardless of the standard. More interesting in a case finding patent-eligibility was that in the court found the claims at issue to be directed to an abstract idea, namely, “the abstract idea of translation.” The court explained that “[t]he claim is a method that enables a device that ordinarily cannot send a message to a different device to do so,” and that this claim was “essentially the same as a translator assisting two people who speak different languages to communicate with each other.” However, the claims were saved by an additional… Read More »DDR Holdings Saves Patent-Eligibility of SMS Messaging Claims

A Reminder That Website Agreements Are Usually Enforceable

Long before the Internet, courts were not reluctant to enforce adhesion contracts. This willingness is one thing the Internet age has not changed.  A good reminder – and lessons for parties seeking to enforce, as well as users wary of, website agreements – comes in a recent case in which a U.S. district court enforced a rather draconian transfer of copyright in a browsewrap agreement. Small Justice LLC v. Xcentric Ventures LLC, No. 13-cv-11701, (D. Mass March 27, 2015). The court here granted summary judgment for the defendant, enforcing its browsewrap agreement that gave the defendant an exclusive license to the copyright in material that a user posted to its site. Christian DuPont posted negative comments about attorney Richard Goren on (“ROR”), a website operated by Xcentric. The website included terms and conditions including the following, which would only have been seen by a user who scrolled through a text box: “[b]y posting information or content to any public area of [the ROR], you automatically grant and you represent and warrant that you have the right to grant to Xcentric an irrevocable, perpetual, fullypaid, worldwide exclusive license to use, copy, perform, display and distribute such information and content .… Read More »A Reminder That Website Agreements Are Usually Enforceable