January 2016

PTAB Denies Petition for CBM Review of Patent Directed to ATM Banking Transactions: a Portent for Patent-Eligibility of Business Methods? (Maybe Not)

The USPTO’s Patent Trial and Appeal Board (PTAB) has denied a petition for Covered Business Method (CBM) Review of U.S. Patent No. 6,081,792, whose claims recite methods of “providing money or an item of value to an account-holder” and “paying on behalf of a person for money or an item of value, from an account of the person held by a custodian of the account based on a bank account.” Petition for Covered Business Method Patent Review by NRT Technology Corp., CBM2015-00167 (PTAB January 22, 2016). The PTAB agreed that the claims were directed to a business method, with no technological invention; therefore, the claims were eligible for CBM review. However, the PTAB then found that the Petitioner had failed to demonstrate that it was more likely than not that the the claims were invalid under 35 U.S.C. § 101. At first blush this seems to be a surprising result. The ’792 patent claims are all about sending and receiving information about transactions between banks and account holders, just the kinds of claims that other PTAB panels, and many district courts, have been invalidating since the Supreme Court’s 2014 decision in Alice Corp. Pty Ltd. v. CLS Bank Int’l. However,… Read More »PTAB Denies Petition for CBM Review of Patent Directed to ATM Banking Transactions: a Portent for Patent-Eligibility of Business Methods? (Maybe Not)

Exciting Technology (and new Intellectual Property?) at the 2016 North American International Auto Show

We saw a lot of interesting technology – and, who knows, maybe some new intellectual property – at this year’s North American International Auto Show, the annual gathering of the automotive industry at Cobo Hall in downtown Detroit, a short distance from our office. As intellectual property attorneys we are always interested in new technology, so we thought we would share a brief tour of the exciting high tech developments we saw at the 2016 Auto Show. The Auto Show provides automakers a chance to talk to the public—ticketed attendance this year was 815,575, a twelve-year high. While automakers devoted considerable floor space to show off the upcoming 2017 models, they also sought to educate an often excited, sometimes skeptical public about major shifts in the industry, mainly electrification and automation. The most immediate step toward an electric future for vehicles, and one of the biggest stories coming out of the Auto Show, is GM’s Chevy Bolt. The Bolt, expected for the 2017 model year, will become the first mass-market vehicle that can travel more than 200 miles on a single charge. Chevy made the Bolt a centerpiece of its display, perching an orange model on a rotating stand with a… Read More »Exciting Technology (and new Intellectual Property?) at the 2016 North American International Auto Show

Federal Circuit Vacates PTAB Written Decision in IPR For Inadequate Explanation of Invalidity Holding

In a non-precedential opinion, Cutsforth, Inc. v. MotivePower, Inc., No. 15-1316 (Fed. Cir. Jan. 22, 2015), the Federal Circuit criticized the Patent Trial and Appeal Board (PTAB) for failing to explain its obviousness rejection of U.S. Patent No. 7,990,018, which is directed to a removable brush holder. The Federal Circuit vacated and remanded the decision back to the PTAB for a more thorough analysis and explanation. The facts are pretty straightforward. The PTAB instituted review of all of the claims of the ‘018 patent following an obviousness challenge. The PTAB concluded that the claims were obvious in its final written decision. The problem with the written decision, according to the Federal Circuit, is that the PTAB formed conclusions without articulating any reasons for those conclusions. For example, the PTAB never explained why various proposed modifications of the references would have been obvious to one skilled in the art. Rather, the PTAB simply stated that it agreed with the petitioner’s conclusions concerning obviousness despite the patent owner’s evidence to the contrary. While it may appear that the PTAB implicitly adopted the petitioner’s arguments and conclusions, the PTAB’s written decision only restated the petitioner’s conclusions without presenting any reasoning or evidence—provided by the… Read More »Federal Circuit Vacates PTAB Written Decision in IPR For Inadequate Explanation of Invalidity Holding

Alice Was a Game-Changer, Federal Circuit Affirms

The Supreme Court’s decision in Alice Corp. Pty., Ltd. v. CLS Bank Int’l. did indeed change the scope of patent-eligibility under 35 U.S.C. § 101, the Federal Circuit explained – just in case anyone in the patent community had any doubts – in Mortgage Grader, Inc. v. First Choice Loan Services Inc., No. 2015-1415 (Fed. Cir. Jan. 20, 2016). Considering patent claims directed to a computer-implemented system to provide anonymous loan shopping, the court explained that: a § 101 defense previously lacking in merit may be meritorious after Alice. This scenario is most likely to occur with respect to patent claims that involve implementations of economic arrangements using generic computer technology, as the claims do here. The opinion by Chief Judge Stark of the District of Delaware (sitting by designation) was joined by Judges O’Malley and Taranto. The court offered this dicta in response to the patent owner’s argument that summary judgment was improperly granted. The defendant, prior to Alice, withdrew its allegation of Section 101 invalidity, but then re-added this defense to its invalidity contentions after Alice was decided. The patent owner argued that this gyration violated the district judge’s Standing Patent Rules.  The district court disagreed, finding that… Read More »Alice Was a Game-Changer, Federal Circuit Affirms

Federal Circuit Provides a Lesson on How Not to Rebut an Obviousness Rejection

Has the Federal Circuit made it more difficult to rebut obviousness rejections by demonstrating that the cited references teach away from the claimed invention? One way to show that references teach away from a claimed invention is to show that a combination of references alleged by the patent examiner would render the prior art inoperable or unsatisfactory for its intended purpose. Sometimes this argument is supported with a declaration from an inventor or other knowledgeable person. This argument, however, may be more difficult after Ex Parte Urbanski, No. 2015-1272 (Fed. Cir. Jan. 8. 2016), in which the Federal Circuit affirmed a PTAB decision rejecting all of the claims of U.S. Patent App. No. 11/170,614. The ‘614 application is directed to a method of enzymatic hydrolysis of soy fiber for a reduced water holding capacity to use as a food additive. The representative claim (claim 43) specified (1) a range for a degree of hydrolysis, (2) a range for a reduction on water holding capacity, (3) a free simple sugar content below 1%, and (4) a mixing time of 60-120 minutes. The Examiner rejected the representative claim under 35 U.S.C. § 103(a) over Gross (WO96/32852) in view of Wong (US 5508172). Both… Read More »Federal Circuit Provides a Lesson on How Not to Rebut an Obviousness Rejection

Section 101 Analysis Under Alice Reaches Different Results in Different Texas Districts

Courts in the Eastern and Western Districts of Texas have recently reached decisions that demonstrate the different results that different courts can reach when analyzing patent-eligibility under 35 U.S.C. § 101 in the wake of Alice Corp. v. CLS Bank. Summary judgement of invalidity under 35 U.S.C. 101 was denied on claims of U.S. 6,772,210 and 7,047,561.  Genband US LLC v. Metaswitch Networks Corp., No. 2-14-cv-00033 (ED Tex.January 6, 2016).  The claims of the ‘210 patent were directed to “a method for exchanging communication messages between a first telephone number based device in the first network and a second telephone number based device in the second network, the first telephone number based device having a first address for use in the first network.”  The claims of the ‘561 patent were directed to “protecting a computer network transmitting and receiving Internet protocol packets formatted in accordance with a real-time Internet protocol, each of said Internet protocol packets being associated with any one of a signaling channel, a control channel, or a bearer channel.”  Magistrate Judge Payne found that claim 1 of the ‘210 patent was directed not to an abstract idea, but “to a specific set of operations (“allocating a second… Read More »Section 101 Analysis Under Alice Reaches Different Results in Different Texas Districts

Some Guidance on Means-Plus-Function Language

Two recent district court opinions provide some guidance for predicting whether claim language will invoke a means-plus-function construction. Invoking means-plus-function isn’t as straight forward as it used to be. It’s well known that claiming “means for” is all but certain to invoke a means-plus-function construction. Things get trickier when that phrase is omitted, however. And this has become a hot topic in patent law following the Williamson v. Citrix Online (Fed. Cir. 2015) (en banc) decision. In SyncPoint Imaging, LLC v. Nintendo of America, Inc., 15-cv-00247, (E.D. Tex., January 5, 2016), the court said that “processor… for…” language connotes sufficiently definite structure to overcome a pre-AIA §112(6)/post-AIA §112(f) challenge. The Court supported its conclusion with dictionary definitions that show that the term “processor” refers to a class of structures. The Court further explained that incorporating the “objectives and operations of the processor” into the claim language suggests the particular structure to one of ordinary skill in the art. Therefore, means-plus-function is not invoked by that language. Great! So, according to SyncPoint, “processor… for…” doesn’t invoke means-plus-function so long as the claim includes sufficient “objectives and operations of the processor.” Well, what if the claim is more software-focused? What if the… Read More »Some Guidance on Means-Plus-Function Language

PTAB Grants Request for Re-hearing from Denial of Petition to Institute Inter Partes Review

Requests to the Patent Trial and Appeal Board for rehearing of decisions on Petitions for Inter Partes Review are commonplace.  PTAB decisions summarily denying them are as well.  In AVX Corporation v. Greatbatch, Ltd., IPR2015-00710, Paper 13 (Jan. 13 2016), however, a Petitioner succeeded in convincing a PTAB panel to reverse itself (in part) on its earlier decision denying institution of inter partes review. In AVX, Petitioner sought inter partes review of claims 1-20 of U.S. Patent No. 7,327,553.  The Board denied the petition in all respects.  The Petitioner filed a Request for Rehearing.  A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).  “The burden of showing a decision should be modified lies with the party challenging the decision.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). Each of the ‘553 patent’s claims required a “laminar delamination gap.”  In the decision denying institution, the Board denied both the Petitioner and Patent Owner’s proposed constructions of the term,… Read More »PTAB Grants Request for Re-hearing from Denial of Petition to Institute Inter Partes Review

USPTO Holds First-Ever Inter Partes Review Hearing in Midwest Regional Office in Detroit

Back in 2012, the U.S. Patent and Trademark Office officially opened its first satellite Office—the Midwest Regional Office—in Detroit, Michigan. In another first for the Detroit Regional Office, on January 11, 2016, the Office conducted the first oral hearings in an inter partes review proceeding outside of the Patent Office’s Alexandria, Virginia headquarters. A few observations: The Petitioner, Securus Technologies, Inc., and the Patent Owner, Global Tel*Link Corporation, were well represented by counsel. Those in attendance appeared split on the likely outcome. The Detroit Office, like the other regional Patent Offices, has only a single Hearing Room. The Hearing Room includes a bench that can accommodate three Administrative Patent Judges, two counsel tables, a lectern, a monitor for Judges appearing remotely, and space for a court reporter. The Hearing Room is tight quarters. The maximum number of publicly available spaces is perhaps 10. There is an overflow room that can accommodate additional members of the public, but they must watch the hearing via monitor. Administrative Patent Judge Beverly Bunting was on the bench live, while Judges Patrick Boucher and Kevin Turner appeared remotely. The Judges were active in questioning counsel. All appeared well familiar with the issues. Dr. Christal Sheppard,… Read More »USPTO Holds First-Ever Inter Partes Review Hearing in Midwest Regional Office in Detroit

Federal Circuit Demonstrates an Alice No-Brainer

In a one-word per curiam order two days after oral argument, the Federal Circuit affirmed, on grounds of patent-ineligibility under 35 U.S.C. § 101, the Rule 12(b)(6) dismissal of a lawsuit alleging infringement of patent claims directed to game scoring and processing Internet transactions. Priceplay.com, Inc. v. AOL Advertising, Inc., Nos. 2015-1492, 2015-1589, 2015-1660 (Fed. Cir. Jan. 7, 2016) (per curiam; Judges Moore, Bryson, and Wallach). As this blog previously reported, the district court (opinion here) had no trouble finding that the patent claims simply recited old steps of processing a transaction in the context of the Internet, and thus were patent-ineligible.  Patent owners may not like it, but this case represents the post Alice/Mayo reality that some patent claims, especially business method claims, fail on their face to meet the patent-eligibility bar, with very little analysis required.  For an example of claims whose patent-ineligibility is so clear that the Federal Circuit saw no need to comment, see U.S. Patent Nos. 8,050,982 and 8,494,917.