December 2015

Federal Circuit Affirms PTAB’s CBM Determinations

The PTAB was not arbitrary and capricious in determining that patent claims directed to transmitting digital data were Covered Business Method (CBM) claims, despite a seeming recitation of technological elements, and an omission of any explicit recitation of a financial element.  SightSound Technologies v. Apple, Inc., No.s 2015-1159, 2015-1160 (Fed. Cir. Dec. 15, 2015).  Although applying an admittedly very forgiving standard of review, the Federal Circuit (opinion authored by Judge Dyk, joined by Judges Hughes and Lourie) seems to have endorsed — or at least has declined an opportunity to put the brakes on — the Patent Trial and Appeal Board’s (PTAB) liberal applications of the CBM procedure. The claims of U.S. Patent Nos. 5,191,573 and 5,966,440 were directed to things like  “transmitting a desired digital audio signal stored on a first memory of a first party to a second memory of a second party” and ” transferring desired digital video or digital audio signals.”  After wading through questions of jurisdiction and administrative law, the court explained that it would review the PTAB’s determination of a CBM under the arbitrary and capricious standard of review. The threshold question in making a CBM determination is whether the patent claims are directed… Read More »Federal Circuit Affirms PTAB’s CBM Determinations

USPTO Notice of Allowance Post-Alice Does Not Prevent Finding of Patent-Ineligibility in District Court

In holding claims directed to a computer search system patent-ineligible under 35 U.S.C. § 101, Delaware Magistrate Judge Thynge rejected an argument that the patent should survive Alice scrutiny because a very similar continuation application had been allowed after Alice, and after invalidity contentions were submitted to the USPTO in the continuation application. Collarity, Inc. v. Google, Inc., No. 11-1103-MPT (D. Del. Nov. 25, 2015). The court therefore granted summary judgment of invalidity of claim of U.S. Patent No. 7,756,855. Google, the defendant, alleged that the patent claims were directed to the abstract idea of refining search queries by substituting some word in the query for others. The court agreed with Google, rejecting the argument of the plaintiff, Collarity, that the claims were directed to a computer improvement. The court’s analysis followed the now-familiar pattern of noting that the claims could be performed as mental steps, and with pen and paper. There was no inventive concept, the claims were implemented on a generic computer. The court rejected the plaintiff’s argument based on DDR Holdings, LLC v. Hotels.com, L.P., that the claims were directed to solving a problem in a computer. The problem “of refining a search query is a problem… Read More »USPTO Notice of Allowance Post-Alice Does Not Prevent Finding of Patent-Ineligibility in District Court

PTAB Reverses Rejection Because Patent Examiner Applied a “Broader Than Reasonable Interpretation”

Patent examiners often rely on claim interpretations that seem ridiculous to applicants. Here is a case showing that applicants should push back in such situations when claims are rejected under a “broadest reasonable interpretation.” Moreover, the case shows applicants that, contrary to examiners’ admonitions that the specification will not be read into the claims, clear definitions in a specification should be given weight and can be used to overcome alleged “broadest reasonable interpretations.” In In re Talwar, Appeal No. 2013-010521, Application no. 12/248,648 (PTAB Nov. 16, 2015), the Patent Trial and Appeal Board reversed a rejection under 35 U.S.C. § 102(e) because the examiner’s interpretation of the phrase “service level violation” went beyond the broadest reasonable interpretation. The rejected independent claim recited: 1. A method of cross-layer power management in a multi-layer system, the method comprising: determining whether there is a service level violation for an application running on a hardware platform; and controlling power consumption of the hardware platform in response to the service level violation. The Specification stated that a “service level violation” occurred “when a threshold for a predetermined application metric is received. The thresholds are often described as performance goals in an agreement between a customer… Read More »PTAB Reverses Rejection Because Patent Examiner Applied a “Broader Than Reasonable Interpretation”

Different Patent Claim Terms Can Have Same Meaning

Courts will presume different meanings attach to different words when construing claim language. See, e.g., Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (reversing lower court’s ruling that a “pusher assembly” and a “pusher bar” have the same meaning). But a recent Patent Trial and Appeal Board decision construed the claim terms “permeation barrier” and “substantially impermeable barrier” to “refer to essentially the same thing.” Air Liquide Large Indus. U.S. LP v. Praxair Tech., Inc., IPR2015-01075, Paper 11 at 8 (Oct. 26, 2015). In Air Liquide, Petitioner sought inter partes review of U.S. Patent No. 8,690,476 claims 1-12 and 15. Independent claim 1 of the ‘476 patent includes a step of “maintaining the stored hydrogen at a pressure between [certain limits], whereby the salt cavern forms a substantially impermeable barrier to the stored hydrogen therein.” In contrast, independent claim 12 includes a step of “forming a permeation barrier . . . so as to prevent substantially all of the stored hydrogen from passing therethrough.” Id. at 5. The ‘476 patent specification defined a “permeation barrier” as a salt cavern that when pressurized or thermally activated, would restrict the passage of hydrogen flow through the… Read More »Different Patent Claim Terms Can Have Same Meaning

Learning from a Finding of Indefiniteness at the Patent Trial and Appeal Board

A recent decision from the Patent Trial and Appeal Board (PTAB) provides a lesson in avoiding indefiniteness under 35 U.S.C. § 112(b). In In re Hyde, Appeal 2013-003305, Application 12/387,151 (PTAB Nov. 4, 2015), the Applicant appealed prior art rejections under 35 U.S.C. §§ 102(b) and 103 only to have these grounds of rejection mooted by a new ground of rejection. The sole independent claim at issue recited as follows: 71.  A system, comprising: an accepter module configured to accept an indication of an individual’s compliance with an artificial sensory experience; and a presenter module configured to present an indication of an inhalation device dispensed bioactive agent at least partially based on the indication of the individual’s compliance with the artificial sensory experience. The PTAB explained that it had to understand the claim before it could analyze the Examiner’s prior art rejections. Here, the Specification gave examples of “artificial sensory experiences (taste, smell, hearing, touch, sight, etc.), and talked about how they would be included in the disclosed system, but “provide[d] no objective definition for identifying an ‘artificial sensory experience’ or any objective standard for determining which experiences are ‘artificial sensory experiences’ and which are not.” The lesson: when drafting… Read More »Learning from a Finding of Indefiniteness at the Patent Trial and Appeal Board