April 2016

Cert. Denied in Google Books Copyright Case: Big Win for Fair Use Doctrine

The U.S. Supreme Court recently denied review of the Second Circuit decision in The Authors Guild et al. v. Google Inc., 804 F.3d 202 (2d Cir. 2015), finalizing a decision allowing Google to continue its mass digitization projects as fair use. This decision is a major victory for fair use – and for Google’s preservation efforts for university libraries. The ten year litigation battle is a bit complicated, so here’s a brief primer on the main issues. In short, Google works with several university libraries to digitize their collections and monetize the digital copies through searches through Google Books and Google’s Library Project. The works are mostly non-fiction, out-of-print books, many of which are deteriorating. The Google Books search function allows a searcher to view a limited amount of text, which Google describes as a “snippet,” or about three lines of text. Google also provides a digital copy of each work to all of the libraries involved, even to the libraries who do not have a corresponding physical copy. The Google Books project has immensely helped both the libraries involved and the searching functionality of Google, including improved accuracy of Google Translate and more visibility of out-of-print works to searchers.… Read More »Cert. Denied in Google Books Copyright Case: Big Win for Fair Use Doctrine

Haircuts Are Not Patent-Eligible, Says Federal Circuit

Claims in a patent application that were directed to a method of hair-cutting are not patent-eligible under 35 U.S.C. § 101, the Federal Circuit has held.  In re Brown, No. 2015-1852 (Fed. Cir. April 22, 2016) (per curiam).  Although the court went through the motions of applying the two-part Alice/Mayo test, one has to think that any claim whose preamble is a “method of [insert well-known manual task here]” would be subjected to a similar analysis and result.  Nonetheless, manual processes are not per se patent-ineligible, and the court’s application of the Alice/Mayo test in this context is interesting. The independent claim at issue recites: A method of cutting hair comprising; a) defining a head shape as one of balanced, horizontal oblong or vertical oblong by determining the greater distance between a first distance between a fringe point and a low point of the head and a second distance between the low point of the head and the occipital bone; b) designating the head into at least three partial zones; c) identifying at least three hair patterns; d) assigning at least one of said at least three hair patterns to each of the said partial zones to either build weight… Read More »Haircuts Are Not Patent-Eligible, Says Federal Circuit

Does Claim Construction Matter in Determining Patent-Eligibility under 35 U.S.C. § 101?

Patent applicants and owners should position claims for narrow constructions where subject matter is susceptible to challenge under 35 U.S.C. § 101, suggests a recent decision from the USPTO’s Patent Trial and Appeal Board (PTAB).  In a Covered Business Method (CBM) review Final Written Decision, the PTAB held that claims of U.S. Patent No. 8,402,281, directed to a “data security system for a database,” were patent-ineligible under 35 U.S.C. § 101.  Epicor Software Corp. v. Protegrity Corp., CBM2015-00006 (PTAB April 18, 2016).  In reaching its conclusions, the PTAB repeatedly rejected the patent owner’s arguments that claims were not directed to abstract ideas, or recited a patentable innovation, explaining that these arguments would apply only if the claims had a narrower construction than the PTAB’s construction. Claim Construction Independent claim 33 of the ’281 patent recites: 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… Read More »Does Claim Construction Matter in Determining Patent-Eligibility under 35 U.S.C. § 101?

How Did the Supreme Court’s Akamai Decision Change the Law of Divided Patent Infringement?

The Federal Circuit has given new life to a patent owner alleging that actions of multiple parties constitute direct infringement under 35 U.S.C. § 271(a).  Mankes v. Vivid Seats Ltd., No 15-1500 (Fed. Cir. April 22, 2016).  The patent owner had alleged direct infringement of its patent by parties who carried out only some and not all of the steps of a method claim.  The district court had held that the plaintiff did not allege enough to state a case of direct patent infringement.  The district court’s holding may have been correct under the law prevailing at the time of its ruling (early 2015), but it could not be sustained now. Claims of U.S. Patent No. 6,477,503 were directed to “methods for managing a reservation system that divides inventory between a local server and a remote Internet server.”  (And if you read the claims, you might be most interested that this post is not about 35 U.S.C. § 101, but it is not.)  The parties did not dispute that no one party carried out all claimed method steps; the defendants managed Internet reservation systems that executed some claim steps, but other claim steps were executed only by local theaters.  The… Read More »How Did the Supreme Court’s Akamai Decision Change the Law of Divided Patent Infringement?

Can Arguments in a Patent Specification Overcome Alice?

The drafters of U.S. Patent No. 9,220,651 took an interesting approach to try to circumvent defeat of their claims as directed to an unpatentable abstract idea under 35 U.S.C. § 101.  The application for the ‘651 patent was filed in 2012 in the interregnum between Bilski and Alice.  In their specification, directed to an automated, self-propelled hospital patient transport bed, the applicant presented arguments – five columns’ worth – to the effect that, functional language notwithstanding, their claims were not directed to a patent-ineligible abstract idea. The core of the ‘651 patent specification’s argument was this (go to the above link and search for “abstract ideas” to find it, or find the printed patent and read starting at column 36, line 66): Importantly, although the operational/functional descriptions described herein are understandable by the human mind, they are not abstract ideas of the operations/functions divorced from computational implementation of those operations/functions. Rather, the operations/functions represent a specification for the massively complex computational machines or other means. As discussed in detail below, the operational/functional language must be read in its proper technological context, i.e., as concrete specifications for physical implementations. What followed was a lot of basic explanation about how programming languages,… Read More »Can Arguments in a Patent Specification Overcome Alice?

Plaintiff Stuck with Collateral Judgment of Patent Invalidity Under Alice in More Ways Than One

Not only did collateral estoppel apply from a prior finding of patent invalidity under 35 U.S.C. § 101, but a plaintiff was denied a motion to voluntarily dismiss its claim of patent infringement, the court expressly leaving open the specter of a fee award to the defendant as a prevailing party under 35 U.S.C. § 285.  Peschke Map Technologies LLC v. Miromar Development Corp., No: 2:15-cv-173-FtM-38MRM (M.D. Fla. April 15, 2016).  At this point, one may not need further evidence of the unfriendly climate for patent plaintiffs.  Nonetheless, this case presents an interesting twist. Another district court had dismissed a plaintiff’s action alleging infringement of U.S. Patent No. 6,397,143 (“Layout Based Method for Map Navigation”) finding that its claims failed “the two part test laid out by the Supreme Court in Mayo and Alice.” Peschke Map Techs. LLC v. Rouse Properties Inc., No. 1:15-cv-1365, (E.D. Va. Mar. 8, 2016).  There was no question that collateral estoppel applied here, because the validity question was fully litigated in the prior case, and essential to the prior court’s decision to dismiss that action. In fact, the plaintiff here made no attempt to argue that collateral estoppel did not apply. Instead, the plaintiff focused… Read More »Plaintiff Stuck with Collateral Judgment of Patent Invalidity Under Alice in More Ways Than One

Patent Claims to Collecting Website Feedback Not a “Financial Product or Service,” Do Not Qualify for CBM Review, Says PTAB

Patent claims reciting subject matter that, among other applications, could be used in the financial industry, do not qualify for Covered Business Method (CBM) review, said the USPTO’s Patent Trial and Appeal Board in Qualtrics, LLC v. OpinionLab, Inc., Case CBM2016-00003 (PTAB April 13, 2016).  Claims of U.S. Patent No. 8,041,805 were directed to collecting user feedback on webpages.  The PTAB denied a petition for CBM review of the ’805 patent, concluding that Qualtrics, the Petitioner, had failed “to demonstrate that the ’805 patent is a ‘covered business method patent’ as defined by § 18(d)(1) of the Leahy–Smith America Invents Act, Pub. L. No. 112–29, § 6, 125 Stat. 284, 299–305 (2011) (“AIA”). The PTAB started by quoting from the AIA’s definition of “covered business method patent,” the emphasis being the PTAB’s, as one “that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.”  (The PTAB also quoted the last part of the statutory definition, “except that the term [CBM] does not include patents for technological inventions,” although it did not need to reach that prong in this decision.) Consonant with its focus… Read More »Patent Claims to Collecting Website Feedback Not a “Financial Product or Service,” Do Not Qualify for CBM Review, Says PTAB

PTAB Reverses Patent-Eligibility Rejection of Business Method Implemented in a Vending Machine

Contrary to what some might think, the Patent Trial and Appeal Board (PTAB) does not always affirm rejections under 35 U.S.C. § 101, as evidenced by its recent decision in Ex parte Krampe, Appeal 2013-010784; Appl. No. 12/653,741; Technology Center 3600 (March 31, 2016).  In this case, the PTAB held that the Examiner had failed to state a prima facie case of patent-ineligibility of claims drawn to “[a] method of establishing credit on a vending device by a consumer.”  For a more detailed discussion, see this post on the All Things Pros blog, which is where I learned of this decision. As a comment to the afore-mentioned post emphasizes, the PTAB merely found that the examiner had failed to state a prima facie case of patent-ineligibility, not that the claims were patent-eligible.  Who knows what will happen on remand back to the patent examiner.  One might not want to read too much into this decision.  Maybe the PTAB panel was simply trying to send a message back to the art unit to better explicate its Section 101 rejections.  And that is certainly a message that all practitioners would endorse.  In any event, Section 101 jurisprudence, even at the PTAB for… Read More »PTAB Reverses Patent-Eligibility Rejection of Business Method Implemented in a Vending Machine

Claims Drawn to Monitoring and Analyzing Network Data Held Patent-Eligible

Claims drawn to “enterprise network” monitoring and analysis are patent-eligible, according to Delaware’s Judge Sue Robinson, who denied the defendant’s motion for Summary Judgment of invalidity under 35 U.S.C. § 101 in SRI International Inc. v. Cisco Systems Inc., No. 1:2013cv01534 (D. Del. April 11, 2016).  Some people – including many patent examiners – will tell you that a claim cannot be patent-eligible where it recites monitoring and analyzing, i.e., merely “processing,” data without any physical structure.  Judge Robinson disagreed.  Whether she was right or wrong, this decision is yet another example of today’s highly subjective Section 101 jurisprudence. Claims of the two patents-in-suit, U.S. Patent Nos. 6,711,615 and 6,484,203, are directed to monitoring network activity, detecting suspicious activity, and then, in the words of one claim, receiving the information about suspicious activity by “monitors adapted to automatically receive and integrate the reports of suspicious activity.”  Cisco, the defendant, alleged that the claims were directed to “the abstract idea ‘of monitoring and analyzing data from multiple sources to detect broader patterns of suspicious activity,’ which is ‘a fundamental building block of intelligence gathering and network security.’” It was probative, Cisco said, that the claims could be manually carried out by… Read More »Claims Drawn to Monitoring and Analyzing Network Data Held Patent-Eligible

How Do Biotech Patent-Eligibility Cases Speak to Computer Patent-Eligibility Cases?

The Federal Circuit recently held that a claim of U.S. Patent No. 5,612,179, reciting “methods of detecting genetic variations” was directed to unpatentable subject matter under 35 U.S.C. § 101.  Genetic Technologies Ltd. V. Merial, LLC, Nos. 2015-1202, 2015-1203 (Fed. Cir. April 8, 2016).  Anytime the Federal Circuit weighs in on Section 101 patent-eligibility, those of us in the patent bar scramble to comprehend the potential impact to pending patent applications and issued patents alike.  For those of us who practice in the computer area, the question arises: how are we informed, or are we informed, by a holding concerning patent claims directed to genetic analysis? The answer, I believe, is that cases such as Genetic Technologies, while providing little specific guidance, do serve as a strong guidepost illustrating the susceptibility of broad and seemingly abstract claims under the patent-eligibility rubric of Mayo and Alice.  And if you are looking for specific practice tips, this case illustrates the importance of prior art in the patent-eligibility analysis, and, if you are patent applicant or owner, the importance of distinctions from the prior art being something that cannot be characterized as a “mental step.” Independent claim 1 of the ’179 patent is… Read More »How Do Biotech Patent-Eligibility Cases Speak to Computer Patent-Eligibility Cases?