August 2016

Broadest Reasonable Interpretation Gives Little Weight to Claiming a Functional Result

The Federal Circuit has upheld the Patent Trial and Appeal Board’s broadest reasonable interpretation of claims including “a restore application starting a restore of a set of files” in an Inter Partes Review proceeding.  Veritas Techs. LLC v. Veeam Software Corp., No. 2015-1894 (Fed. Cir. Aug. 30, 2016).  This case will garner attention for the court’s vacation of a PTAB denial of the patent owner’s motion to amend claims in the IPR proceeding.  Although more subtle, perhaps as significant is the court’s endorsement of an approach to the broadest reasonable interpretation of patent claims under which recitations of a functional result receive virtually no patentable weight. Representative claim 20 of US Patent No. 7,024,527 recites: A computer-accessible medium comprising program instructions, wherein the program instructions are configured to implement: a restore application starting a restore of a set of files from a backup storage to a primary storage; during said restore: a file server determining that one or more blocks of data of a file in the set of files needed by an application have not been restored; and the file server directing the restore application to restore the determined one or more blocks of data in response to said… Read More »Broadest Reasonable Interpretation Gives Little Weight to Claiming a Functional Result

2 of 3 Intellectual Ventures Patents Killed Under Alice in E.D. Texas

On a Rule 12(b)(6) motion to dismiss based on invalidity under 35 U.S.C. § 101, Judge Gilstrap of the Eastern District of Texas held that “the claims of U.S. RE43,715 and U.S. Patent No. 6,782,370 are directed to patent-ineligible subject matter, and the claims of U.S. Patent No. 5,969,324 are not directed to patent-ineligible subject matter.” Intellectual Ventures I LLC v. J. Crew Group Inc., No. 6:16-CV-196-JRG (E.D. Texas Aug. 24, 2016). U.S. RE43,715 The ’715 patent claimed “a method of integrating and delivering data available over a network.”  The court found that “the ’715 Patent is directed toward the abstract idea of combining data from two sources for delivery to a user.”  There was no innovation to overcome the abstract idea; claimed “computer components are generic and tangential,” including a generic network and a generic database.  The “only arguably inventive concepts,” distinguishing between public and private data, and determining public data from private data, were “vague and uninventive,” as well as “subjective.” U.S. Patent No. 6,782,370 The ’370 patent claimed “[a] computer-implemented method for the recommendation of goods and/or services to potential customers over a distributed network based on customer buying history.” The court stated that the claimed steps… Read More »2 of 3 Intellectual Ventures Patents Killed Under Alice in E.D. Texas

Patent Claims to Weather Alerts Not Patent-Eligible Under Section 101

Case:  Zimmers v. Eaton Corp., No. 2:15-CV-2398) (S.D. Ohio August 2, 2016). Result: Rule 12(c) motion for judgment on the pleadings of invalidity under 35 U.S.C. § 101 granted. Patent: U.S. Patent No. 9,015,256 (“Alert notification system”).  Claim 1, available in full at the foregoing link, recites “[a] system for providing a message to a plurality of locations on a geographic basis.”  The court summarized the claims as follows: The patented systems “relate to providing emergency notification to multiple persons and/or geographic regions needed to be notified of pending emergencies or disasters such as a terrorist attack or severe weather incident.” The invention is “primarily directed to delivery of warnings via telephone,” but also uses “other communication devices . . . such as computer networks, pagers, or other devices.”  The alert notification system utilizes computers connected via a network. The computers include a database server that stores in-formation and is used to assess alerts and deliver alert notifications. The computers evaluate notifications delivered by various organizations via a variety of communication mechanisms and interact with the database server to evaluate alert conditions and determine appropriate recipients of the alerts. The alert notifications may be delivered via telephone, facsimile, electronic mail,… Read More »Patent Claims to Weather Alerts Not Patent-Eligible Under Section 101

Early PG-Review Decision Shows Patent Examiners and PTAB Diverge on Alice Questions

Patent claims directed to “storage container tracking and delivery” are patent-ineligible under 35 U.S.C. § 101, the Patent Trial and Appeal Board (PTAB) has held in a Final Written Decision in a Post-grant Review proceeding.  Netsirv and Local Motion MN v. Boxbee, Inc., PGR2015-00009 (Patent 8,756,166 B2) (PTAB Aug. 2, 2016).  I would not be surprised to see many more such results as PG-Review proceedings pick up steam. Under step one of the two-part test of Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014), the PTAB found that the claims of the ’166 patent were directed to the abstract idea of bailment, “a long-prevalent economic practice.”  The Patent Owner argued that the claims did not “recite a ‘business practice known from the pre-Internet world.’”  The PTAB disagreed, saying that the claims fell into “the computer-as-a-tool category.”  That is, the claims took a well-known practice and recited performing it in a computer. Turning to the second step of the Alice test, the PTAB found no meaningful limitations beyond the abstract idea.  The claims merely recited passing data; there was no technological innovation.  Further, there was no innovation in the nature of the data being transmitted; it… Read More »Early PG-Review Decision Shows Patent Examiners and PTAB Diverge on Alice Questions

No Patent-Eligibility for “Identifying and Characterizing Errant Electronic Files”

Case:  Intellectual Ventures I LLC v. Erie Indemnity Co., No. 2:14-cv-220 (W.D. Pa. Aug 4, 2016) Result: Rule 12 motion to dismiss granted based on invalidity of claims of U.S. Patent 7,757,298 under 35 U.S.C. § 101. Patent: U.S. Patent 7,757,298, entitled “Method and Apparatus for Identifying and Characterizing Errant Electronic Files.”  Representative claim 1 recites: A computer-implemented method for identifying and characterizing stored electronic files, said method comprising: under control of one or more configured computer systems: selecting a file from a plurality of files stored in a computer storage medium, wherein selecting the file is performed according to at least one of: selecting the file based on the size of the file by determining whether an aggregate size of plural identically-sized files exceeds a predetermined threshold; selecting the file based on whether content of the file matches a file type indicated by a name of the file; or selecting the file based on whether the file comprises data beyond an end of data marker for the file; generating an identification value associated with the selected file, wherein the identification value is representative of at least a portion of the content of the selected file; comparing the generated identification… Read More »No Patent-Eligibility for “Identifying and Characterizing Errant Electronic Files”

Database Indexing Patent Claims Survive Alice Motion to Dismiss

Case:  Iron Gate Security, Inc. v. Lowe’s Companies, Inc., No. 15-cv-8814 (KBF) (S.D.N.Y. August 3, 2016). Result: Rule 12(b)(6) motion to dismiss based on invalidity under 35 U.S.C. § 101 denied, but defendant may bring a Section 101 motion again when there is a more “fulsome record.” Patent: U.S. Patent 7,203,693, entitled “Instantly indexed databases for multimedia content analysis and retrieval.”  Representative claim 1 recites: A  method for use in indexing, in a database, data associated with a domain-specific event, the method comprising the steps of: processing sensor data obtained in accordance with the event in real time, the sensor data comprising motion data of one or more objects or one or more people associated with the domain-specific event; obtaining pre-existing data associated with the domain-specific event; and indexing data associated with the domain-specific event in the database, contemporaneous with capture of the data associated with the domain-specific event being indexed, based on at least a portion of the processed real time sensor data and at least a portion of the obtained pre-existing data, wherein the indexing step further comprises generating an index usable to retrieve at least a portion of the data associated with the domain-specific event by creating… Read More »Database Indexing Patent Claims Survive Alice Motion to Dismiss

Some Complaints for Patent Infringement Easily Fail Under Iqbal and Twombley

Here is an example of how the abnegation of Form 18 of the Federal Rules of Civil Procedure is changing patent litigation.  In Mike Murphy’s Enters. v. Fineline Indus., LLC, No. 1:16-cv-784-LJO-SAB (E.D. Cal. Aug. 4 2016), the court granted a Rule12(b)(6) motion and dismissed the plaintiff’s complaint alleging infringement of United States Patent No. 6,234,099, stating that the plaintiff would have one chance to amend. Relying on Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009), the sum and total of the court’s analysis was as follows: [Plaintiff] MMEI’s complaint is woefully insufficient to state a claim for patent infringement. MMEI provides no facts to explain in any detail how Fineline allegedly infringed the ‘099 Patent. MMEI simply alleges that Fineline’s products did so without any explanation. “Merely naming a product and providing a conclusory statement that it infringes a patent is insufficient to meet the ‘plausibility’ standard set forth in Twombly and Iqbal.” Medsquire LLC v. Spring Med. Sys., Inc., No. 2:11-cv-4504-JHN-PLA, 2011 U.S. Dist. LEXIS 107416, 2011 WL 4101093, at *3 (C.D. Cal. Aug. 31, 2011). MMEI’s patent infringement claim therefore fails. MMEI’s opposition—the substance of which is two… Read More »Some Complaints for Patent Infringement Easily Fail Under Iqbal and Twombley

Alice Kills Streaming Video Sharing Patent Claims

Case:  Videoshare LLC v. Google, Inc., No. 13-cv-990 (GMS) (D. Del. August 2, 2016). Result: Rule 12(c) motion for judgment on the pleadings of invalidity under 35 U.S.C. § 101 was granted. Patents: U.S. Patent No. 8,438,608 (“Sharing a streaming video”), and U.S. Patent No. 8,464,302 (“Method and system for sharing video with advertisements over a network”).  The claims of the ’608 patent are directed to sharing streaming media over a network, including generating and embedding identification tags in a web page to share a streaming file.  The ’302 patent is directed to “sharing a streaming video and associated advertisement over a network.”  Representative claims of both patents can be seen at the foregoing links. Abstract Idea (Alice Step 1): All claims of both patents were directed to “the abstract idea of preparing a video in streaming video format for sharing over a computer network.”  The court rejected the contention “that the claimed invention results in an improvement to computer functionality.”  Instead, “[a]t most, the claims merely automate a sequence of known steps using conventional technology so that a human is not burdened with various manual steps.” Inventive Concept (Alice Step 2): None: “[t]he claims here specify only conventional steps… Read More »Alice Kills Streaming Video Sharing Patent Claims

Federal Circuit Holds Coined Phrases to Be Means-Plus-Function, and Indefinite

In Advanced Ground Information Systems, Inc. v. Life360, Inc., No. 2015-1732 (Fed. Cir. July 28, 2016), the Federal Circuit cautioned against coining verbal nouns and phrases without specifying sufficient structure or algorithms in the patent specification. The court affirmed a finding of indefiniteness of claims of U.S. Patent Nos. 7,031,728 and 7,672,681, and held the claims invalid under 35 U.S.C. § 112. The phrase at issue was “symbol generator,” which was recited in each of the asserted claims. While the phrase does not include the word “means,” the Federal Circuit found that “the term ’symbol generator’ is analogous to a ‘means for generating symbols’ because the term is simply a description of the function performed.” Op. at 8. The Federal Circuit further found, based on expert testimony, that “the term ’symbol generator’ is a term coined for the purposes of the patents-in-suit.” Op. at 10. Because “symbol generator” is not a term of art that requires particular structure, the Federal Circuit treated it as a means-plus-function limitation subject to § 112, ¶6 (or post-AIA §112(f)). Means-plus-function limitations are indefinite if not defined in the specification via structure or algorithms. Here, the Federal Circuit found that both were lacking with regard… Read More »Federal Circuit Holds Coined Phrases to Be Means-Plus-Function, and Indefinite

Patent Claims to Analyzing and Using Power Grid Data Fail under Alice and Mayo

The Alice/Mayo 35 U.S.C. § 101 patent-eligibility test easily resulted in the invalidity of patent claims directed to “real-time performance monitoring of an electric power grid.”  Electric Power Group, LLC v. Alstom S.A., No. 2015-1778 (Fed. Cir. Aug. 1, 2016).  Accordingly, a panel consisting of Judges Taranto (the opinion’s author), Bryson, and Stoll, affirmed a district court holding of invalidity of claims of U.S. Patent Nos. 7,233,843; 8,060,259; and 8,401,710. A representative claim recited method steps well over a page long for “[a] method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid.”  The court explained that: [t]hough lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology. The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101. The claims were directed to an “abstract idea” because “[t]he advance they purport to… Read More »Patent Claims to Analyzing and Using Power Grid Data Fail under Alice and Mayo