July 2016

Patent Claims to “Printed Circuit Board Configuration” Survive Alice Challenge

A Central District of California court denied a motion to dismiss claims of infringement of two patents directed to the arrangement of memory chips on a computer memory card, the defendant having alleged patent-ineligible subject matter under 35 U.S.C . § 101. Polaris Innovations Ltd v. Kingston Technology Co., Inc., No. SACV 16-00300-CJC(RAOx) (C.D. Cal. July 21, 2016).  The court found, under the Mayo/Alice test, that the claims are not abstract, but rather “concern physical layouts for particular memory cards that enable the cards to either have a slimmer profile or have more memory chips on it than it otherwise would have had,” and are therefore patent eligible. U.S. Patent No. 6,850,414 and U.S. Patent No. 7,315,454 are both directed to layouts for computer memory cards. The ‘414 patent indicates that it solves the problem of reducing the height of the memory card while maintaining the same amount of storage. The ‘454 patent solves the problem of increasing the amount of storage on the memory card while maintaining the dimensions of the card. Independent claim 1 from the ‘414 patent is representative. It recites: An electronic printed circuit board configuration, comprising: an electronic printed circuit board having a contact strip… Read More »Patent Claims to “Printed Circuit Board Configuration” Survive Alice Challenge

Federal Circuit Makes Patent-Eligibility under 35 U.S.C. § 101 Even Murkier

Claims  of  U.S. Patent No. 5,987,606, directed to “content filtering information retrieved from an internet computer network,” recited an “inventive concept,” and therefore were patent-eligible as a matter of law under 35 U.S.C. § 101.  BASCOM Global Internet Services, Inc. v. ATT Mobility LLC., No. 2015-1763 (June 27, 2016).  Judge Chen wrote for a majority that included Judge O’Malley; Judge Newman wrote separately, concurring in the result.  Judge Chen’s opinion agreed with the patent owner’s contention that “the claims of the ’606 patent contain an ‘inventive concept’ in their ordered combination of limitations sufficient to satisfy the second step of the Supreme Court’s Alice test.” The majority agreed with the District court that the ‘606 patent claims were directed to the abstract idea of “filtering content.”  Judge Chen, who also authored the majority opinion in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), thought that the claims in this case, as in DDR, recited an inventive concept.  The district court was correct that the claim elements, by themselves, simply recited generic computer technology.  And yet, the court found, “[t]he claims do not merely recite the abstract idea of filtering content along with the requirement to perform… Read More »Federal Circuit Makes Patent-Eligibility under 35 U.S.C. § 101 Even Murkier

Objectively Reasonable Defenses Do Not Preclude Finding of Willful Patent Infringement

The Federal Circuit has held that even if an accused infringer’s defenses to patent infringement are objectively reasonable, Supreme Court precedent does not preclude a willful infringement finding, or enhancing damages.  WBIP, LLC v. Kohler Co., Nos. 2015-1038, 2915-1044 (Fed. Cir. July 19, 2016). In WBIP, the district court decided the willful infringement question under the Federal Circuit’s Seagate standard.  Under Seagate, proof of willful infringement required “clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and that “this objectively-defined risk . . . was either known or so obvious that it should have been known.”  In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).  The jury found that WBIP had proven by clear and convincing evidence that Kohler’s infringement was willful, and the trial judge concluded that Kohler’s defenses at trial were objectively unreasonable, enhancing WBIP’s damages by 50%. Kohler appealed, arguing the Federal Circuit should reverse the willful infringement judgment for two reasons.  First, that its invalidity defenses to the patents in suit—obviousness and lack of written description—were objectively reasonable.  Second, that WBIP did not present evidence to the jury that Kohler… Read More »Objectively Reasonable Defenses Do Not Preclude Finding of Willful Patent Infringement

Another Easy Section 101 Case at the Federal Circuit

In a per curiam decision on an appeal brought by a pro se patent owner, a Federal Circuit panel of Judges O’Malley, Linn, and Stoll held that claims of U.S. Patent No. 8,744,933 (“Payroll processing, certification, reporting and project management system and method”) were not patent-eligible under 35 U.S.C. § 101.  Shortridge v. Foundation Construction Payroll Service, LLC, No. 2015-1898 (Fed. Cir. July 13, 2016). Claim 1 of the ‘933 patent recites “[a] method of public works construction payroll processing for a contractor.”  The district court had found “that the ‘933 patent is directed to the abstract idea of ‘cataloging labor data.’”  And the patent owner did not dispute that the claims were directed to an abstract idea. Thus, the the patent owner was left to argue the second prong of the Mayo/Alice test, i.e., that the patent claims included an inventive step.  The court had little problem dismissing the notion that “the generation of CPRs ‘in conjunction with and simultaneous with’ core payroll processing” was an inventive concept that made the abstract idea patent-eligible.  Further, even if the claims had technical elements, such as a relational database, DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),… Read More »Another Easy Section 101 Case at the Federal Circuit

Patent Claims Reading on MPEG Survive Alice Challenge

Claims of U.S. Patent Nos. 5,323,396, 5,777,992, and 5,539,829, directed to audio encoding techniques for the MPEG standard, survived a patent-eligibility challenge under 35 U.S.C. § 101 after the court, favorably comparing the patents’ claims to those in Enfish LLC v. Microsoft Corp., found that the claims were not abstract.  Audio MPEG Inc. v. Dell Inc., No. 16-cv-00082 (E.D. Va. July 1, 2016). The heart of the court’s analysis is not lengthy, and is self-explanatory: Here, as in Enfish, the invention’s ability to run on a general purpose computer does not doom the claims. Indeed, the claims at issue here undoubtedly make computers more efficient. They solve a problem that the MPEG Audio standards-setting organization identified. They use “a particular frame format (“396, ‘992) or intensity stereo coding (‘829) to make the audio processing of Dell computers far more efficient.” The claims are “directed to specific equipment that encodes and decodes digital audio in a new way, using a specific format that is more efficient and flexible than previous methods to solve an existing problem.” Unlike the claims in TLI, which dealt with a way to organize images – something humans can accomplish without a computer – the claims here… Read More »Patent Claims Reading on MPEG Survive Alice Challenge

Claims to BIOS Security Remain Patent-Ineligible Under Enfish

Claims of U.S. Patent No. 6,892,304 (“System and method for securely utilizing basic input and output system (BIOS) services”) remained patent-ineligible even when reconsidered in the wake of Enfish, LLC v. Microsoft Corp.  The court thus affirmed its prior judgment of patent-invalidity under 35 U.S.C. § 101.  Kinglite Holdings Inc. V. Micro-Star International Co. Ltd., No, CV 14-03009 (C.D. Cal. July 6, 2016). Claim 1 of the ’304 patent recites: A system to securely utilize Basic Input and Output System (BIOS) services, comprising: an access driver to generate a service request to utilize BIOS services, the service request including a service request signature created using a private key in a cryptographic key pair; and an interface to verify the service request signature using a public key in the cryptographic key pair to ensure the integrity of the service request. The claims in Enfish had a four-step algorithm for improved storage of data in a database.  The patent here, in contrast, had “no corresponding description of anything more than the abstract concept of (1) creating a request to use that service, and (2) ensuring that the request is capable of authentication through the use of mathematical algorithms.”  And there was no… Read More »Claims to BIOS Security Remain Patent-Ineligible Under Enfish

Federal Circuit Maintains Unpredictability of the Law of Patent-Eligibility

The Federal Circuit vacated a summary judgment of invalidity under 35 U.S.C. § 101 after disagreeing with a district court that claims of U.S. Patent No. 7,604,929 were “directed to a patent-ineligible law of nature–that hepatocytes [liver cells] are capable of surviving multiple freeze-thaw cycles–and that the patented process lacks the requisite inventive concept.”  Rapid Litigation Management, Ltd. V. Cellzdirect, Inc., No. 2015-1570 (Fed. Cir. July 5, 2016).  Reading this case for broader lessons on Section 101 validity – as I read all cases that implement the Mayo/Alice patent-eligibility test – the main lesson to be drawn here is that outcomes under Section 101 remain highly situational.  Patent-eligibility determinations, even more than other questions of patent law, frustratingly depend on the context of the litigation, specific words that may or may not be included in a patent claim, and, let’s be honest, the particular judge or judges hearing the case. Here, in an opinion authored by Chief Judge Prost and joined by Judges Moore and Stoll, the Federal Circuit concluded that the present claims were “simply not directed to the ability of hepatocytes to survive multiple freeze-thaw cycles.”  The court explained that [t]he end result of the ‘929 patent claims… Read More »Federal Circuit Maintains Unpredictability of the Law of Patent-Eligibility