A court was easily able to analogize claims of two patents directed to electronic messaging to manual communications processes; the court consequently granted a motion for summary judgment of invalidity under 35 U.S.C. § 101. Mobile Telecommunications Technologies LLC v. Blackberry Corp., No. 3:12-cv-1652-M (N.D. Texas May 12, 2016). Independent claims 1 and 8 of U.S. Patent No. 5,809,428 recite “[a] network operations center for transmitting and receiving messages to and from a wireless mobile unit” and, “[i]n a two-way wireless communications system, a method of processing data messages that cannot be successfully transmitted from a network operations center to a wireless mobile unit.” Blackberry persuasively analogized the claims to a “hypothetical [that] imagines a courier attempting to deliver a package.” The claims, the court determined, “are directed to the basic idea of sending and storing messages, which is not rooted in computer technology.” Similarly, independent claim 1 of U.S. Patent No. 5,894,506 recites “[a] method of communicating messages between subscribers to an electronic messaging network.” In particular, the ’506 patent claimed encoding messages. Not only did Blackberry provide a hypothetical showing how the claimed method had been used for a long time, e.g., for battlefield communications, but in another… Read More »Claims to Managing Electronic Messages Held to be Not Patent-Eligible
Claims to “Operating Applications for Remote Terminal Devices” Patent-Ineligible, Says Delaware’s Judge Robinson
Delaware’s Judge Robinson, who recently pointedly noted other courts’ aggression in holding software patent claims to recite patent-ineligible subject matter, has granted a motion to dismiss, finding that patent claims directed to remote operation of a terminal device are not patent-eligible. Device Enhancement LLC v. Amazon.com, Inc., Civ. No. 15-762-SLR (D. Del. May 17, 2016). Along the way, Judge Robinson evinced frustration — understandable to those of us in the patent bar — with the vague, “evolving” nature of patent-eligibility jurisprudence under 35 U.S.C. § 101. Claim 1 of U.S. Patent No. 7,747,683 – the only independent claim of the ’683 patent – recites: A method for allowing a user of a mobile terminal device having predetermined computational resources and inherent capabilities to remotely develop and operate upgraded content delivery application(s), comprising: a) installing, on said terminal device, a generic client-side application designed to be compatible with different terminal devices with different inherent capabilities; b) installing, on a server being in data communication with said mobile terminal device, a corresponding remote application for implementing the logic for each operated content delivery application and for performing, whenever required, most of the graphical processing according to said predetermined computational resources and inherent… Read More »Claims to “Operating Applications for Remote Terminal Devices” Patent-Ineligible, Says Delaware’s Judge Robinson
Patent claims drawn to “entering location information into a positional information device” were held patent-ineligible under 35 U.S.C. § 101 in Rothschild Location Technologies LLC v. Geotab USA, Inc., 6:15-cv-682-RWS-JDL (E.D. Texas May 16, 2016). Judge Schroeder upheld the report and recommendation of Magistrate Judge John D. Love, in which Judge Love recommended granting a Rule 12(b)(6) motion to dismiss because U.S. Patent No. 8,606,503 was directed to patent-ineligible subject matter. Claim 1 of the ’503 patent recites: A method for entering location information into a positional information device, the method comprising: receiving, by a server, a request from a first positional information device for at least one address stored in at least one second positional information device, the request including a first identifier of the first positional information device; determining, by the server, a second identifier for identifying the at least one second positional information device based on the received first identifier; retrieving, by the server, the requested at least one address stored in the identified at least one second positional information device; and transmitting, by the server, the retrieved at least one address to the first positional information device. Judge Schroeder began by explaining that the magistrate judge… Read More »Claims to Devices Sharing GPS Addresses Not Patent-Eligible in E.D. Texas
Patent applicants who have been frustrated by patent examiners who reject claims under 35 U.S.C. § 101 alleging that “software per se” is not patent-eligible will be heartened by the USPTO’s May 19, 2016, memorandum concerning “Recent Subject Matter Eligibility Decisions” to the Patent Examining Corps. In that memorandum, discussing the recent Federal Circuit case of Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A. V Automotive, LLC, the USPTO told its examiners “that claims directed to software, as opposed to hardware . . . are not inherently abstract.” Thus, applicants have basis for arguing that claims directed to data processing, for example, are not inherently abstract. As the memorandum explains, Enfish stands for the proposition that, in some cases, examiners can resolve the patent-eligibility question in favor of the applicant at the first step of the two-part Alice/Mayo test, i.e., can determine that the claimed subject matter is not directed to an abstract idea without going on to determine whether the claims recite “significantly more” than an abstract idea. While not a new statement of law, as the USPTO notes, practitioners will welcome any authority to force patent examiners to acknowledge that claims directed to “pure” software,… Read More »USPTO to Examiners after Enfish: Claim Can Be Patent Eligible Without Physical Elements
The Federal Circuit has affirmed the invalidity under 35 U.S.C. § 101 of patent claims drawn to “recording and administering digital images.” TLI Communications LLC v. AV Automotive LLC, Nos. 2015-1372[, etc.] (Fed. Cir. May 17, 2016). In an opinion authored by Judge Hughes, author of the recent decision upholding the patent-eligibility of claims in Enfish, LLC v. Microsoft Corp., the court distinguished Enfish, and affirmed the district court’s decision to dismiss a complaint for patent infringement. Claim 17 of U.S. Patent No. 6,038,295 was representative: A method for recording and administering digital images, comprising the steps of: recording images using a digital pick up unit in a telephone unit, storing the images recorded by the digital pick up unit in a digital form as digital images, transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images, receiving the data by the server, extracting classification information which characterizes the digital images from the received data, and storing the digital images in the server, said step of storing taking into consideration the classification information. Turning to the first… Read More »Administering Digital Images Not Patent-Eligible, Says Federal Circuit
Five patents claiming methods of performing and managing clinical research were held patent-ineligible under the Alice/Mayo abstract idea test in eResearchTechnology, Inc. v. CRF, Inc., No. 15-918 (W.D. Pa. May 10, 2016). After finding each of U.S. Patent Nos. 8,065,180; 8,145,519; 8,433,605; 6,879,970; and 7,415,447 invalid under 35 U.S.C. § 101, the court granted a defense motion to dismiss under FRCP 12(b)(6). The court described the patents-in-suit as “collectively directed to improving clinical trials.” Claim construction was not necessary, because the plaintiff had not identified any claim construction on which the patent-eligibility question turned. Further, it was appropriate for the court to look to representative claims in evaluating patents under Section 101. The court then considered each patent in turn. Looking first at the ’180 patent, the defendant had argued that the representative claim was “directed to the simple abstract idea of determining whether a clinical trial participant is entering his data on time consistent with past experience, i.e., ‘historical data’ and, if not, calling to remind him.” The court agreed, rejecting the plaintiff’s argument that the claim could not be abstract because it was directed to solving s problem in a specific realm, i.e., clinical trials. Looking at the… Read More »Clinical Research Methods Not Patent-Eligible Under 35 U.S.C. § 101
The Tenth Circuit recently held that a website provider could not be held liable for copyright infringement for the unauthorized use of copyrighted photographs in content created by its contractors. BWP Media, USA v. Clarity Digital Group, 2016 U.S. App. LEXIS 7406 (10th Cir. Apr. 25, 2016). Defendant AXS owns and operates Examiner.com, a “dynamic entertainment, news and lifestyle network that serves more than 20 million monthly readers across the U.S. and around the world.” BWP Media at *4. Rather than retain dedicated staff writers, AXS hires “Examiners,” independent contractors who create content for the website. Plaintiff BWP owns the copyright for 75 photographs used in content posted on Examiner.com. BWP did not grant permission to use the photographs. Upon BWP’s request, AXS removed the photographs and notified BWP. Still, BWP sued AXS for copyright infringement. AXS won summary judgment at the district court, successfully arguing that AXS qualified for the “safe harbor” provision of the Digital Millennium Copyright Act, immunizing AXS from liability here. See 17 U.S.C. § 512(c). The DMCA safe harbor provision applies when the internet service provider (ISP) shows that the infringing content was stored at the direction of a “user” and when the ISP has… Read More »DMCA Safe Harbor Covers Content from Independent Contractors
A Federal Circuit panel (Judges Moore, Taranto, and Hughes) has unambiguously stated that some — one might even say much — software is patent-eligible, reversing findings of invalidity under 35 U.S.C. § 101 for two patents “directed to an innovative logical model for a computer database.” Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016) (opinion by Judge Hughes). In addition to reversing a summary judgment of Section 101 invalidity, the court vacated a summary judgment of invalidity under 35 U.S.C. § 102, and left intact a summary judgment of non-infringement. But the reason why this case will be a big deal is the holding — and analysis — pertaining to the patent-eligibility of software inventions. The “patented logical model” of U.S. Patent Nos. 6,151,604 and 6,163,775, the court explained, “includes all data entities in a single table, with column definitions provided by rows in that same table.” This so-called “self-referential property” stood in contrast “with the more standard ‘relational’ model,” where “each entity (i.e., each type of thing) that is modeled is provided in a separate table.” To illustrate this point, the opinion explained how relational tables are conventionally separately provided for entities such as a… Read More »Federal Circuit Clearly Says Software Can Be Patentable
Having denied a defendant’s motion to find patents invalid under 35 U.S.C. § 101, Delaware’s Judge Robinson has now denied the defendant’s request for interlocutory appeal under 28 U.S.C. § 1292(b). Improved Search, LLC v. AOL, Inc., No. 1:15-cv-00262 (D. Del. May 6, 2016). Judge Robinson explained that interlocutory appeal should be exceptional, and should not be allowed to cause piecemeal litigation or delay entry of a final judgment. While patent invalidity is a “controlling question of law” such as can warrant interlocutory review, the mere difficulty of an issue was not enough to justifying delaying litigation. Further, the popularity of Alice motions meant that granting an interlocutory appeal could cause more problems than it would solve. The court therefore exercised its discretion to decline the request for certification of an interlocutory appeal.
The USPTO’s “Subject Matter Eligibility” page has received updates as of May 4, 2016. These updates include examples that will be of great interest to life sciences practitioners. The rest of us will find little news. The Office has provided a memorandum for its patent examiners on “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection.” However, this memorandum simply lays out the by now well-known two-part Alice/Mayo test, spells out explanations that examiners are supposed to give when making Section 101 rejections, and provides examiners with responses to arguments that applicants may make. Applicants may find this guidance useful in pressing examiners for better explanation of rejections based on allegedly unpatentable subject matter. However, I suspect applicants will continue to be frustrated by the seemingly subjective, and undeniably unpredictable, nature of many rejections under 35 U.S.C. § 101.