February 2016

Federal Circuit Lesson on the Written Description Requirement

The Federal Circuit upheld the invalidity of claims of U.S. Patent No. 7,003,500 under 35 U.S.C. § 112, 1st paragraph (pre-America Invents Act) for failure to provide an adequate written description of patent claim terms added by amendment well after the original patent application was filed. Driessen v. Sony Music Entertainment, No. 2015-2050 (Fed. Cir. Feb 10, 2016) (per curiam). The court also upheld the invalidity for indefiniteness of the certain means-plus-function claim terms under 35 U.S.C. § 112, 2nd paragraph. Although the Court designated its decision, which rejected the appeal of pro se plaintiffs, non-precedential, the decision nonetheless provides lessons for patent drafters. Claim 10 of the ’500 patent recited in part: A method of merchandise transfer on a computer network comprising at least one buyer computer on a network for operation by a user desiring to buy at least one product and at least one selling computer on said network operating for a purpose to sell said product, the method comprising the steps of: . . . sending a payment message as a response to said in person transaction either directly or through other computers on said network to said selling computer on said network; causing an authorization… Read More »Federal Circuit Lesson on the Written Description Requirement

Virtual Classroom Claims Not Indefinite Under 35 U.S.C. § 112 Are Patent-Ineligible Under Alice

After a remand from the Federal Circuit decision nixing one independent claim of US patent no. 6,155,840 under 35 U.S.C. § 112, the district court has now held remaining independent claims patent-ineligible under 35 U.S.C. § 101. Williamson v. Citrix Online, LLC, No. CV 11-02409 SJO (JEMx) (C.D. Cal. Feb 17, 2016). All of the independent claims of the ’840 patent were directed to systems and methods of computerized distributed learning. In June 2015, the Federal Circuit held independent claim 8 invalid under Section 112 for including a claim term that was properly construed under the means-plus-function rubric, and that did not identify sufficient structure in the Specification. The district court has now agreed with the defendants that the remaining claims are drawn to an unpatentable abstract idea. Independent claim 1 of the ’840 patent, which the parties agreed was representative, recites: 1. A method of conducting distributed learning among a plurality of computer systems coupled to a network, the method comprising the steps of: providing instructions to a first computer system coupled to the network for: creating a graphical display representative of a classroom; creating a graphical display illustrating controls for selecting first and second data streams; creating a… Read More »Virtual Classroom Claims Not Indefinite Under 35 U.S.C. § 112 Are Patent-Ineligible Under Alice

Patent Claims Directed to Cloud Computing Held to Encompass Patent-Ineligible Abstract Idea

Patent claims directed to managing a cloud computing environment were held invalid on a motion under FRCP 12, as reciting patent-ineligible abstract subject matter in Kaavo v. Cognizant Tech. Solutions Corp., No. 14-1192-LPS-CJB (D. Del. Feb. 5, 2016). U.S. Patent No. 8,271,974 (“the ‘974 patent”), discloses an N-tier cloud computing environment. Each tier has a specific function in a part of a larger cloud computing network. Each tier includes several servers that may be physically and/or wirelessly connected to each other such that one or more servers may be in geographically diverse datacenters. Independent claim 1 of the ‘974 patent recites “a method for managing a cloud computing environment for use by a software application.” Applying the familiar Alice/Mayo two-step test, the court looked to the “basic character of the patent’s subject matter.” Id. at 14. Looking to both the claims and the specification, the court found that the ‘974 patent was directed to “setting up and managing a cloud computing environment.” Further, “the concept implicates an idea ‘having no particular concrete or tangible form’ and that is ‘devoid of a concrete or tangible application.’” The court rejected the plaintiff’s arguments that the ‘974 does not preempt a field of… Read More »Patent Claims Directed to Cloud Computing Held to Encompass Patent-Ineligible Abstract Idea

Claims to Computer Readable Discount Coupons Held Patent-Ineligible

Patent claims for applying discounts to purchases to track customer purchasing habits based on computer readable discount coupons were held to recite patent-ineligible subject matter in Motivation Innovations, LLC v. Petsmart, Inc., No. 13-957-SLR, (D. Del., January 12, 2016). The court granted defendants motion under FRCP 12(c) for judgment on the pleadings of invalidity under 35 U.S.C. § 101 of claims of U.S. Patent No. 5,612, 527. Claim 1 of the ‘527 patent recites: A method for redeeming discount offers comprising: providing a circulation medium and providing said medium with indicia which includes a machine readable identification code; causing said medium to be distributed to potential users; associating said identification code with data identifying items which are to be offered at a discount provided as part of said medium and storing said data in memory in a data base so as to be addressable by said identification code; providing means for reading said identification code provided with said circulation medium; providing means associated with said code reading means for tabulating sales of items so that any discount corresponding to an item listed in said data is deducted from the price of the item in the tabulation; and using said reading… Read More »Claims to Computer Readable Discount Coupons Held Patent-Ineligible

Federal Circuit Easily Affirms Patent-Ineligibility of Claims Drawn to Managing Shipping Containers

Like drilling a small hole in the hull of the Titanic (post-iceberg), the Federal Circuit has affirmed a district court’s judgment on the pleadings of patent-ineligibility of 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. 2015-1634, 2015-1635 (Fed. Cir. Feb. 8 2016) (per curiam; Judges Chen, Clevenger, and Bryson). This blog post is already an order of magnitude longer than the Federal Circuit’s one-line order, and that fact might be all the commentary one needs on what this case says about current patent-eligibility jurisprudence and the scope, or lack thereof, that courts will give to 35 U.S.C. § 101.  If you are interested in the substance of the patent claims at issue, here is a summary of the district court’s decision holding the claims patent-ineligible.

Claims Directed to Conducting Transactions Via Interactive TV Held Patent-Ineligible

Patent claims directed to securing various aspects of digital content on a user’s television were held patent-ineligible in OpenTV, Inc. v. Apple, Inc., No. 5:15-cv-02008-EJD (N.D. Cal., Jan. 28, 2016). Ruling on Apple’s motion to dismiss under Fed. R. Civ. P. 12(b)(6), the court used the familiar Alice / Mayo two-step framework to invalidate claims of asserted U.S. Patent Nos. 6,148,081 and U.S. Patent No. 7,644,429. The ‘081 patent focuses on expediting program-to-program accessibility for programs that require credentials for access. Accordingly, the 081 patent discloses storing additional permissions in an interactive TV application that can access other applications.  An example embodiment included an application for processing a credit card transaction used in the context of a shopping application. The ‘429 patent is directed to a secure method of automatically renewing pay-per-view programming. In particular, the ‘429 patent tried to solve the problem of users having to manually input information by “granting the user faster product access and automatically renewing access rights to digital content after the user initially inputs the necessary information into a database.” The asserted independent claim of the ‘081 patent was an abstract idea because “the practice of controlling access to information by verifying credentials .… Read More »Claims Directed to Conducting Transactions Via Interactive TV Held Patent-Ineligible