September 2015

Alice Roundup, Late Summer 2015 – Part 2: Patent-Eligibility under 35 U.S.C. § 101

Although district courts considering patent-eligibility under 35 U.S.C. § 101 and Alice Corporation Pty. Ltd. v. CLS Bank International more often than not find patent claims invalid, some patent claims survive, as evidenced by the cases discussed below.  My last post discussed cases finding patent claims invalid under the two-part Alice “abstract idea” test.  This post discusses cases where claims were held patent-eligible, or where the patent-eligibility determination was deferred until claim construction could be performed. Claims Held Patent-Eligible on Summary Judgment ContentGuard Holdings, Inc. v. Amazon.com Inc., Case No. 2:13-CV-1112-JRG (E.D. Texas Aug. 6, 2015).  Motion for judgment on the pleadings converted to summary judgment motion and denied because “the Patents-in-Suit are not directed toward an abstract idea, at least because they are directed toward patent-eligible methods and systems of managing digital rights using specific and non-generic ‘trusted’ devices and systems.” DataTern, Inc. v. MicroStrategy, Inc., Nos. 11-11970-FDS and 11-12220-FDS (D. Mass. (Sept. 4, 2015).  Denied motion for summary judgment of Section 101 patent invalidity.  Representative claim recited “[a] method for interfacing an object oriented software application with a relational database.”  The court found that “to the extent that the ‘502 patent could be described as encompassing the abstract… Read More »Alice Roundup, Late Summer 2015 – Part 2: Patent-Eligibility under 35 U.S.C. § 101

Alice Roundup, Late Summer 2015 – Part 1: Patent-Ineligibility under 35 U.S.C. § 101

District courts have been busy considering, and invalidating, patents under 35 U.S.C. § 101 and Alice Corporation Pty. Ltd. v. CLS Bank International.  My next post will discuss cases — and there are some — where courts have found patent-eligible subject matter under Section 101, and have allowed claims to be asserted.  However, as the following makes clear, patent owners continue to face obstacles in demonstrating patent-eligibility of many computer-implemented inventions. Section 101 Invalidity at the Pleadings Stage Boar’s Head Corporation v. DirectApps, Inc., No. 2:14-cv-01927-KJM-KJN (E.D. Cal. July 27, 2015).  Granted Rule 12(b)(6) motion to dismiss based on patent-ineligibility under 35 U.S.C. § 101.  Representative claim recites “[a] method for communicating information associated with emergency calls communicated to emergency response centers.”  After deciding that claim construction was not necessary, the court found that the patent was directed to “essentially the abstract idea of organizing phone call data.”  There was no patentable innovation because the claims simply recited use of generic computers.  Purported limitations concerning displaying data were “simply examples of a computer generating data in response to inputted data.” Personalized Media Communications LLC v. Amazon.com Inc., No. 13-1608-RGA (D. Del. Aug. 10, 2015).  Granted motion for judgment on the… Read More »Alice Roundup, Late Summer 2015 – Part 1: Patent-Ineligibility under 35 U.S.C. § 101

How Expansive Is the Definition of “Covered Business Method Patent?” (Part 2)

Last week I wrote about institution of a Covered Business Method (CBM) patent post-grant review that seemed to stretch the bounds of the definition of “covered business method.” Here is a case denying a petition to institute CBM proceedings, illustrating boundaries of eligibility for CBM review.  In Servicenow, Inc. v. BMC Software, Inc., Case CBM2015-00107 (Patent 7,062,683) (PTAB Sept. 11, 2015), the Patent Trial and Appeal Board (PTAB) denied CBM review for a patent directed “to a method of using fault models to analyze error conditions in an enterprise computing system.” The Petitioner’s argument that the ’683 patent is a “covered business method” patent was that “the claimed invention is directed at a technique for managing a financial product or service—in particular, diagnosing and identifying error conditions associated with a bank’s automatic teller machines (ATMs).”  Focusing on independent claim 79, directed to a “fault analysis method,” the Petitioner offered an explanation of how, the omission of language relating to financial services notwithstanding, the claim would be practiced in the context of ATMs. The PTAB was not persuaded.  Noting that “the statutory test for whether a patent is a covered business method patent focuses on the claims,” the PTAB looked to the… Read More »How Expansive Is the Definition of “Covered Business Method Patent?” (Part 2)

How Expansive Is the Definition of “Covered Business Method Patent?”

The USPTO’s Patent Trials and Appeals Board (PTAB) has held that patent claims directed to “de-identifying health care data” are directed to a “covered business method” under Section 18 of the America Invents Act.  Symphony Health Solutions Corp. v. IMS Health, Inc., Case CBM2015-00085 (Patent 8,473,452 B1) (PTAB Sept. 10, 2015).  The PTAB held that a CBM patent’s claims need not “particularly target the financial industry.”  It is enough that the “challenged claims recite a system and method used in the practice, administration, or management of financial services and products.” The PTAB found that U.S. Patent No. 8,473,452 “relates to a system and method for gathering and analysis of health-care related data as well as techniques for de-identifying [i.e., scrubbing] individuals from pharmaceutical data, in order to maintain privacy.”  The claims included an electronic data store, and could be performed by a conventional computer.  One disclosed use for the system was “to make business decisions,” including relating to sales and marketing. The Patent Owner argued “that the ’452 patent has no particular relation to the financial services industry, and does not “particularly target” the financial sector.”  Further, the Patent Owner expressly disclaimed claims that smacked of financial data; these claims… Read More »How Expansive Is the Definition of “Covered Business Method Patent?”

More Technical-Seeming Claims Held Patent-Ineligible Under 35 U.S.C. § 101

Patent claims directed to a “payload delivery system” for delivering payloads, i.e., data, “via one or more communication networks” have been held invalid under 35 U.S.C. § 101.  Novo Transforma Tech., LLC v. Sprint Spectrum, L.P.,  Civil Action No. 14-616-RGA (D. Del. Sept. 2, 2015).  As with many recent Section 101 cases, the court granted a defense motion brought under Fed.R.Civ.P. 12(c) for judgment on the pleadings. Claims of U.S. Patent No. 5,826,034 were held to be directed to an unpatentable abstract idea.  The court took independent claim 23 of the ‘034 patent as representative of the asserted claims: 23. A payload delivery method for providing guaranteed end-to-end delivery of a payload from a sender to a recipient, said payload being delivered via one or more communication networks, comprising the steps of: generating a payload in a first media; defining payload delivery parameters by said sender; converting said payload to an alternative media at different locations as necessary for completion of delivery of said payload; and automatically [notifying] said sender upon receipt of said payload by said recipient. The court began by stating the familiar two-part Alice/Mayo test: (1) are the claims drawn to a patent-ineligible (e.g., abstract) idea, and… Read More »More Technical-Seeming Claims Held Patent-Ineligible Under 35 U.S.C. § 101