June 2015

PTAB Finds Patent Claims Directed to Organizing Digital Images Patent-Ineligible in CBM Review

The Patent Trial and Appeal Board (“PTAB”) has held all claims of U.S. Patent No. 7,260,587 patent-ineligible under 35 U.S.C. § 101, and the rubric of Alice Corp. v. CLS Bank.  Bank of America, NA v. Intellectual Ventures II LLC, Case CBM2014-00033 (PTAB May 18, 2015). The claims of the ’587 patent are directed to organizing and searching digital images. According to the ’587 patent, a customer categorizes a plurality of hard copy prints, e.g., personal photographs, and associates a pre-ordered, machine readable instruction form to each category. Thereafter, a service provider digitally scans the plurality of prints and instruction forms while maintaining the respective category, and stores the digital image files with the associated category onto a digital storage medium. Per a customer order, the service provider produces a product incorporating images from one or more categories as requested. The patent owner argued that the claims were not directed to an abstract idea because the claims purportedly do not “fall within any of the categories of abstract ideas enumerated by the Supreme Court.” Additionally, the patent owner argued that the conceptual method for organizing digital images requires a machine because digitizing and organizing hard copy prints via an instruction… Read More »PTAB Finds Patent Claims Directed to Organizing Digital Images Patent-Ineligible in CBM Review

PTAB Invalidates Financial Administration Patent Claims in CBM Review

Patent claims directed to “administration of financial accounts” are not patent-eligible under 35 U.S.C. § 101, held the Patent Trial and Appeal Board (“PTAB”) during a Covered Business Method (“CBM”) post-grant review. The final written decision from the PTAB found all claims of U.S. Patent No. 8,083,137 unpatentable under 35 U.S.C. § 101. Intellectual Ventures I LLC v. PNC Financial Services, Case CBM2014-00028 (PTAB May 18, 2015). The ’137 patent claims systems and methods for administration of financial accounts for users of credit cards, debit cards or other facilities. A profile stored in a database is keyed to a user’s identity where the user can establish pre-set spending limits on various user-selected categories and be notified of the spending. The patent owner was not able to establish that the claims relate to a “technological invention.” The PTAB credited the testimony of the petitioner’s expert witness as evidence that the ‘137 patent claims are directed to an abstract idea. Specifically, the claims on their face are “drawn to creating a budget, which is an abstract idea relating to a fundamental economic practice.” Additionally, the PTAB stated that the claims are “directed to mental steps that can be performed by a human.”… Read More »PTAB Invalidates Financial Administration Patent Claims in CBM Review

Functionally-Described Structural Recitations in Method Patent Claims Can Be Indefinite

A patent claim’s recitation of a structural feature was held indefinite under 35 U.S.C. § 112 because the court found that that the claim term in question – “processing system” – was indefinite functional language. Thus, the court in Cox Communications v. Sprint Communications, No. 12-487-SLR (D. Del. May 15, 2015) granted partial summary judgment in favor of Cox (declaratory judgment plaintiffs) because the “processing system” recitation in six of the asserted patents was indefinite. The six asserted patents at issue—US patent nos. 6,452,932; 6,463,052; 6,633,561; 7,286,561; 6,473,429; 6,298,064 (“the ‘064 patent”)—share a common specification. The court used claim 1 of the US 6,633,561 as an exemplary claim. That claim, a method claim, recites various steps that involve a “processing system,” which the Court found was a structural limitation: A method of operating a processing system to control a packet communication system for a user communication, the method comprising: receiving a signaling message for the user communication from a narrowband communication system into the processing system; processing the signaling message to select a network code that identifies a network element to provide egress from the packet communication system for the user communication; generating a control message indicating the network code; transferring… Read More »Functionally-Described Structural Recitations in Method Patent Claims Can Be Indefinite

Patent Claims Directed to Filtering Internet Content Not Patent-Eligible

Patent claims directed to “filtering Internet content” were held invalid under 35 U.S.C. § 101 in Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, No. 3:14-cv-3942-M (N.D. Tex May 15, 2015). The court held that, under Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014), the claims were directed to a patent-ineligible abstract idea, and thus not patentable under 35 U.S.C. § 101. U.S. patent no. 5,987,606 is directed to methods and systems for filtering internet content. Claims 1 and 22 were representative. Claim 1 recites a content filtering system comprising the elements of a “local client computer,” “at least one filtering scheme,” “a plurality of sets of logical filtering elements,” and “a remote ISP server coupled to said client computer and said internet computer network.” Claim 22 is directed to an “ISP server” comprising the elements of “a master inclusive-list of supplied sites,” “a plurality of sets of exclusive-lists of excluded sites,” and “a filtering scheme.” Under the first prong of the “abstract idea” test, the court held that the claims were directed to the abstract idea of filtering content. The court explained that the “act of filtering content [is] a long-standing, well-known method… Read More »Patent Claims Directed to Filtering Internet Content Not Patent-Eligible

Means-Plus-Function Claims Are Dangerous in Software Patents

The latest example of the danger of drafting software patent claims to include means-plus-function limitations comes from Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, No. 2014-1392 (Fed. Cir. May 6, 2015).  U.S. Patent No. 5,663,757 included eight “means” limitations that the district court had held indefinite under 35 U.S.C. 112.  These limitations required “special programming,” and were not coextensive with operation of a microprocessor.  Because the claimed “means” were not described in the specification, the claims, all governed by 35 U.S.C. § 112, ¶ 6 (pre-AIA), were invalid as indefinite. The district court had made detailed factual findings that “each of the eight claim terms at issue recited complicated, customized computer software.”  One “skilled in the art would need to consult algorithms outside the specification to implement the claimed functions.” Further, “special code would have to be written in order to accomplish the claimed functionality.”  This was more than enough to support a finding of indefiniteness, “as the defendants must only show by clear and convincing evidence that the terms at issue do not recite basic functions of a microprocessor.” Although most U.S. practitioners shy away from  means-plus-function language these days, at least in software cases, applications inbound from… Read More »Means-Plus-Function Claims Are Dangerous in Software Patents