March 2016

One-Court Alice Backlash: Delaware’s Judge Robinson, Critical of Recent Trends, Upholds Software Patents in Three Cases

Judge Sue Robinson—the longest-serving judge in the District of Delaware, among the most popular patent venues in the nation—bucked the trend in patent-eligibility law. Recently, she issued three opinions in three cases addressing software-related patents under 35 U.S.C. § 101. Improved Search LLC v. AOL, Inc., Civ. No. 15-262-SLR (D. Del. Mar. 22, 2016); Intellectual Ventures I LLC v. Ricoh Americas Corp., Civ. No. 13-474-SLR (D. Del. Mar. 22, 2016); Network Congestion Solutions, LLC v. U.S. Cellular Corp., Civ. No. 14-903-SLR (D. Del. Mar. 22, 2016). The trend? In applying § 101 since Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014), courts have given software patents a rough go of it. District courts frequently cite Alice to strike down software patents. And as Judge Robinson notes, the Federal Circuit, for its part, has not upheld a computer-implemented patent under § 101 since DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the sole post-Alice victory for a software patent owner, issued a few months after Alice came down. See Improved Search at 8 & n. 4 (citing eight Fed. Cir. decisions striking down computer-implemented patents). Judge Robinson criticizes this shift in § 101… Read More »One-Court Alice Backlash: Delaware’s Judge Robinson, Critical of Recent Trends, Upholds Software Patents in Three Cases

Claim Drawn to Automated Call Processing Survives Patent-Eligibility Challenge

Patent drafters are often advised, in the wake of Alice Corp. Pty. Ltd. v. CLS Bank Int’l., to use technical-sounding language in their patent claims.  Here is a case that both bears out that advice – and at the same time illustrates the vagaries of our current regime of patent-eligibility law.  In Ronald A. Katz Technology Licensing, L.P. v. Fedex Corp., No. 2:15-cv-02329-JPM-tmp (W.D. Tenn. March 24, 2016), the court denied a motion for judgment on the pleadings under FRCP 12(c) that claim 18 (the only claim in dispute) of U.S. Patent No. 6,292,547 was invalid under 35 U.S.C. § 101. Claim 18, which depends from claim 11, is reproduced below: 11.  An analysis control system for use with a communication facility including remote terminals for individual callers, wherein each of said remote terminals comprises a telephonic instrument including a voice communication device and digital input device in the form of an array of alphabetic numeric buttons for providing data and wherein said communication facility has a capability to automatically provide terminal digital data, indicating a calling telephone number, said analysis control system comprising: interface structure coupled to said communication facility to interface said remote terminals for voice and digital… Read More »Claim Drawn to Automated Call Processing Survives Patent-Eligibility Challenge

Digital Messaging and Data Processing Patent Claims Survive Section 101/Alice Challenge

For the second day in a row, this blog focuses on a case upholding the patent-eligibility, under 35 U.S.C. § 101, of patent claims that recite processing and transmitting data.  In Signal IP, Inc. v. American Honda Motor Co., Inc., No. 2-14-cv-02454 (CD Cal., March 22, 2016), the court upheld the patent-eligibility of claims of US Patent No. 5,954,775, directed to messages with different data types, and US Patent No. 5,714,927, directed to improvements in detecting vehicle radar blind spot coverage. This case is even more notable than the ContourMed case discussed yesterday, because here the court’s holding came on a motion for summary judgment, and was dispositive.  But these and other cases upholding patent-eligibility are significant because they bely an approach often taken by other courts and by the US Patent and Trademark Office during patent prosecution.  That is, USPTO examiners often reject claims under Section 101 if the claims recite data processing or messaging without actuating a device, and conversely withdraw such rejections when such recitations are added by amendment.  The present case provides solace for those inclined to believe that the USPTO’s approach is often overly-simplistic. US 5,954,775 – Data Messaging Claim 6 of the ’775 patent… Read More »Digital Messaging and Data Processing Patent Claims Survive Section 101/Alice Challenge

Computer Modeling Breast Prosthesis Survives 12(b)(6) § 101 Challenge

A court has declined, at least for the moment, to hold patent-ineligible claims directed to making a computer model of a part, in this case, a breast prosthesis.  ContourMed Inc. v. American Breast Care LP, No. 4-15-cv-02769 (TXSD March 17, 2016, Order) (Miller, J.).  Although the claims do recite use of hardware (e.g., a “scanning system”), the takeaway from this case is that courts will not uniformly hold claims invalid under 35 U.S.C. § 101 where the claims are directed primarily to gathering and processing data. ContourMed asserted US Patent No. 7,058,439 against American Breast Care in September of 2015.  The ‘439 patent is directed to a method of forming a breast prosthesis that includes scanning the patient to generate a computer model of the prosthesis and creating a mold from the computer model. The mold is filled with a polymerizable foaming composition that cures to form the prosthesis. Here is claim 1, directed to modeling (but not actually forming) the prosthesis: A method of forming a model of a breast prosthesis for a patient who has had one breast at least partially removed, comprising: providing a scanning system comprising one or more imaging devices and one or more alignment… Read More »Computer Modeling Breast Prosthesis Survives 12(b)(6) § 101 Challenge

Federal Circuit Revisits Secondary Considerations and Effect of Age of Cited References under Section 103

The Federal Circuit recently clarified the suitability of certain types of evidence in analyses of patentability under section 103. Nike, Inc. v. Adidas AG, No. 2014-1719 (Fed. Cir. February 11, 2016) (opinion by Judge Chen, joined by Judges Mayer and Stoll). One question was: must evidence of secondary considerations be considered by the United States Patent and Trademark Office (“USPTO”)? Another question was: can the age of cited references can be independent evidence of a lack of motivation to combine references? Quick answers: yes and no, respectively. BACKGROUND: The case arose from an inter partes review (“IPR”) petition filed by Adidas challenging claims of a Nike patent (US 7347011) relating to (of course) footwear. In the proceedings in the USPTO, Nike requested both cancellation of claims 1-46 and acceptance of proposed new claims 47-50. The USPTO Patent Trial and Appeal Board (“PTAB”) canceled claims 1-46, but denied Nike’s motion to substitute claims 47-50. The PTAB denied entry of the claims on the basis that Nike had not established that the substitute claims were patentable over the cited prior art patents, Nishida (US 5345638,  issued September 13, 1994), Schuessler I (US 2178941, issued November 7, 1939), and Schuessler II (US 2150730,… Read More »Federal Circuit Revisits Secondary Considerations and Effect of Age of Cited References under Section 103

Federal Circuit Reverses PTAB Claim Construction as Unreasonably Broad

The Federal Circuit recently clarified that the “broadest reasonable interpretation” of claims construed in an inter partes review (“IPR”) must still be “reasonable.” In PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, No. 2015-1564 (Fed. Cir. Feb. 22, 2016), the court vacated and remanded a decision from the Patent Trial and Appeal Board (“PTAB”) holding claims 10-25 of U.S. Patent No. 8,323,060 obvious under 35 U.S.C. § 103.  The court held that the PTAB’s construction of the asserted claims was unreasonably broad under the broadest reasonable interpretation (“BRI”) standard. The ‘060 patent is directed toward coaxial cables with an electrical conducting “continuity member” to improve signal quality. Because coaxial cables are cylindrical, the continuity members may surround parts of the cable “in a sleeve-like configuration.”  (Internal quotations omitted). Claim 10, which was the only independent claim asserted, recites, in relevant part, “positioned to reside around an external portion of the connector body.” (Emphasis added). The PTAB construed the term “reside around” to mean “in the immediate vicinity of; near,” and held claim 10 obvious. The Federal Circuit, applying de novo review, reversed this construction as unreasonably broad, agreeing with Petitioner’s argument that the broadest reasonable interpretation is “encircle or… Read More »Federal Circuit Reverses PTAB Claim Construction as Unreasonably Broad

Intervening Rights Do Not Protect Accused Patent Infringer Despite Amendment During Reexamination

The Federal Circuit recently provided a refresher lesson about intervening rights, particularly about what sources of evidence the court may find persuasive, in Convolve, Inc. et al. v. Compaq Computer Corp. et al., No. 2014-1732 (Fed. Cir. Feb. 10, 2016). At least in this case, the court weighed evidence from the original examination of the patent more heavily than evidence from the reexamination when applying the test for intervening rights. Intervening rights protect accused infringers when a patentee amends a patent in a reexamination proceeding. See 35 U.S.C. § 252. The test is whether the scope of the claims changed during the reexamination: for the patentee to collect damages for infringement occurring before the reexamination, the scope of the claims before the reexam must be identical to the scope of the claims after. The court reiterated, however, that the test is substantive. The language of the claims may change so long as the substantive scope does not. In the reexamination for U.S. Patent No. 6,314,473, the language did change. In response to an obviousness rejection, Convolve, the patentee, amended the term “acoustic noise” to “seek acoustic noise.” The examiner had treated “acoustic noise” under the broadest reasonable interpretation as encompassing… Read More »Intervening Rights Do Not Protect Accused Patent Infringer Despite Amendment During Reexamination

Patent Directed to “Data Security System for a Database” Qualifies for Covered Business Method Review at PTAB

In Square Inc v. Protegrity Corp., CBM2014-00182 (March 2, 2016), the Patent Trial and Appeal Board (PTAB) offered some insight as to when patent claims will be subject to covered business method (CBM) review. The patent at issue is US 8,402,281, titled “Data Security System for a Database.” Claim 33 was one of the illustrative claims, and the primary focus of the CBM analysis: 33. A computer-implemented data processing method comprising: maintaining a database comprising a plurality of data portions, each data portion associated with a data category; maintaining a separate data protection table comprising, for at least one data category, one or more data processing rules associated with the data category that must each be satisfied before a data portion associated with the data category can be accessed; receiving a request to access a data portion associated with a first data category from a user; determining whether each of the one or more data processing rules associated with the requested data portion are satisfied; and granting the user access to the requested data portion responsive to each of the retrieved one or more data processing rules being satisfied. The America Invents Act (AIA) defines a “covered business method” patent… Read More »Patent Directed to “Data Security System for a Database” Qualifies for Covered Business Method Review at PTAB

Claims to a New Method of Playing Blackjack Not Patent-Eligible, Says Federal Circuit

The Federal Circuit has affirmed the USPTO’s rejection of an applicant’s claims that it concluded “cover only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards.”  In re Smith, No. 2015-1664 (Fed. Cir. March 10, 2016) (opinion by Judge Stoll, joined by Judges Hughes and Moore). Citing several of its recent cases, including Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir. 2014), the Court pretty clearly says that rules of a game are per se an abstract idea, albeit while leaving the door open for an “inventive concept” e.g., a new deck of cards, that would render claims to the abstract idea patent-eligible. The PatentlyO blog has a write-up of the substance of the decision; in this post I want to focus on two takeaways. First, while the court took pains to state that “not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101,” it does appear that the Federal Circuit has done what the Supreme Court declined to do in Alice Corp. v. CLS Bank Int’l., and declared that an entire… Read More »Claims to a New Method of Playing Blackjack Not Patent-Eligible, Says Federal Circuit

When Is a Document on the Internet a “Printed Publication?”

Addressing an issue with which patent litigators and prosecutors alike regularly grapple, the Federal Circuit recently held that a graduate student’s report, provided on her personal web page, was not a “printed publication” under 35 U.S.C. § 102(b) (pre-America Invents Act).  Blue Calypso, LLC. V. Groupon, Inc., Nos. 2015-1391, 2015-1393, 2015-1394 (Fed. Cir. March 1, 2016). This holding arose in the context of the Federal Circuit’s affirmance of the Patent Trial and Appeal Board’s decision to institute Covered Business Method (CBM) review of five patents owned by Blue Calypso, and its subsequent invalidation of patent claims under 35 U.S.C. § 102 (but not § 103), as well as the reversal of rejections under 35 U.S.C. § 112. I suspect the issues of whether CBM review should have been instituted, and whether the five patents at issue were CBM patents, will attract plenty of commentary. However, in the midst of these weighty issues, the court’s discussion of what is a printed publication, and its holding in that regard, should not be overlooked. Groupon’s expert had coauthored the report in question with his graduate student, now Dr. Ratsimor, who posted the report on her personal web page. Groupon argued to the PTAB… Read More »When Is a Document on the Internet a “Printed Publication?”