October 2016

How to Address Broadest Reasonable Interpretation in Ex Parte Patent Prosecution

Patent examiners often apply seemingly irrelevant prior art with the blithe statement that a claim rejection is justified by a broadest reasonable interpretation of claim terms.  I offer some tips on combating examiner abuses of broadest reasonable interpretation in this presentation, and in the accompanying paper, presented to the AIPLA’s Patent Law Committee at this month’s Annual Meeting in Washington, D.C. Although the broadest reasonable interpretation (or “BRI”) can be more expansive than a claim construction in federal court, BRI nonetheless takes place under the familiar rubric of Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2005).  With that in mind, here is a summary of some practice tips for minimizing the pain that USPTO patent examiners cause with BRI – see the linked-to documents for more explanation – the bolded points are my favorites: Define claim terms in specification. –For terms not terms of art, consider defining in claims. Rely on implicit disclosure in specification. Plain and ordinary meaning is a fallback. Extrinsic evidence is a last resort. Avoid disavowels in specification and Office action responses. Don’t be afraid to construe the claims (especially in pre-appeals and even more especially in appeals). –Look first to the claim… Read More »How to Address Broadest Reasonable Interpretation in Ex Parte Patent Prosecution

Reconsidered After Recent Fed. Cir. Case, Vehicle Tracking/Monitoring Claims Mostly Patent-Eligible

After the Federal Circuit’s August 1, 2016, decision in Electric Power Group, LLC v. Alstom S.A., a defendant sought reconsideration of a Rule 12 motion to dismiss based on alleged patent-ineligibility of claims directed to “machine-to-machine communication platforms designed for tracking and monitoring the location and status of widely dispersed fleet vehicles and related mobile assets.” However, even following Electric Power Group, the district court declined to find claims of four of five patents ineligible under 35 U.S.C. 101. Orbcomm, Inc. v. Calamp Corp., No.: 3:16CV208-HEH (E.D. Va. Oct. 19. 2016). The court identified the patents-in-suit as follows: U.S. Patent No. 6,292,724 (“the ‘724 Patent”) (entitled “Method Of And System And Apparatus For Remotely Monitoring The Location, Status, Utilization And Condition Of Widely Geographically [Dispersed] Fleets of Vehicular Construction Equipment And The Like And Providing And Displaying Such Information”); U.S. Patent No. 6,611,686 (“the ‘686 Patent”) (entitled “Tracking Control And Logistics System And Method”); U.S. Patent No. 6,651,001 (“the ‘001 Patent”) (entitled “Method Of And System And Apparatus For Integrating Maintenance Vehicle And Service Personnel Tracking Information With The Remote Monitoring Of The Location, Status, Utilization And Condition Of Widely Geographically Dispersed Fleets Of Vehicular Construction Equipment And The Like To… Read More »Reconsidered After Recent Fed. Cir. Case, Vehicle Tracking/Monitoring Claims Mostly Patent-Eligible

Under Alice, Some Patent-Ineligibility Determinations Are Routine

Here is a patent claim concerning which the Federal Circuit, without comment, agreed was not patent-eligible under 35 U.S.C. § 101 and the Alice test: A method for monitoring and analyzing at least one signal comprising: receiving at least one reference signal to be monitored; creating an abstract of said at least one reference signal wherein the step of creating an abstract of said at least one reference signal comprises: inputting the reference signal to a processor; creating an abstract of the reference signal using perceptual qualities of the reference signal such that the abstract retains a perceptual relationship to the reference signal from which it is derived; storing the abstract of said at least one reference signal in a reference database; receiving at least one query signal to be analyzed; creating an abstract of said at least one query signal wherein the step of creating an abstract of said at least one query signal comprises: inputting the at least one query signal to the processor; creating an abstract of the at least one query signal using perceptual qualities of the at least one query signal such that the abstract retains a perceptual relationship to the at least one query… Read More »Under Alice, Some Patent-Ineligibility Determinations Are Routine

Claims Reciting Mental Steps Are Not Patent-Eligible, Says Federal Circuit

In an opinion authored by Judge Chen (joined by Judges Lourie and Moore), the Federal Circuit held claims of three patents to be patent-ineligible under 35 U.S.C. § 101 because “they are directed to the abstract idea of translating a functional description of a logic circuit into a hardware component description of the logic circuit.”  The court therefore affirmed the district court’s summary judgment of invalidity of U.S. Patent Nos. 5,530,841; 5,680,318; and 5,748,488. Here is claim 1 of U.S. Patent No. 5,530,841, considered by the court as a representative claim: A method for converting a hardware independent user description of a logic circuit, that includes flow control statements including an IF statement and a GOTO statement, and directive statements that define levels of logic signals, into logic circuit hardware components comprising: converting the flow control statements and directive statements in the user description for a logic signal Q into an assignment condition AL(Q) for an asynchronous load function AL( ) and an assignment condition AD(Q) for an asynchronous data function AD( ); and generating a level sensitive latch when both said assignment condition AL(Q) and said assignment condition AD(Q) are non-constant; wherein said assignment condition AD(Q) is a signal… Read More »Claims Reciting Mental Steps Are Not Patent-Eligible, Says Federal Circuit

Patent Lessons From a Garbage Bag

Perhaps the most challenging aspect of patent preparation and prosecution is describing an invention in terms that are clear enough to show novelty and non-obviousness, while yet preserving sufficiently broad claim scope to capture potential infringers.  Here is a lesson from the world of garbage bags, in which the Federal Circuit held that a patentee had clearly disavowed meaning of a “short seal” that was part of the garbage bag.  Poly-America, L.P. v. API Indus., Inc., 2016-1200 (Fed. Cir. Oct. 14, 2016) (Judge Reyna wrote the opinion, joined by Chief Judge Prost and Judge Hughes). U.S. Patent No. 8,702,308 describes an “invention [that] is directed toward an improved construction of an elastic drawstring trash bag.”  The claimed trash bag included “short seals” in upper corners of the bag.  The patent, beginning with its title, and continuing with the “Summary of the Invention” and the written description, repeatedly “indicate[d] the significance of the extended short seal feature and the reduced upper opening width the extended short seals provide.”  Further, during prosecution, the applicant distinguished prior art “from all of the ’308 patent’s independent claims on the basis that [the reference’s] short seals were not extended to reduce the bag’s ‘relaxed upper… Read More »Patent Lessons From a Garbage Bag

Another Business Method Patent Falls at the Federal Circuit

A district court properly found that patent claims reciting “detecting improper access of a patient’s protected health information (PHI) in a computer environment” were directed to patent-ineligible subject matter under 35 U.S.C. § 101. Fairwarning IP, LLC v. Iatric Systems, Inc., No 2015-1985 (Fed. Cir., Oct. 11, 2016 (opinion by Judge Stoll, joined by Judges Lourie and Plager).  Accordingly, the Federal Circuit affirmed a Rule 12(b)(6) dismissal of a suit alleging infringement of US Patent No. 8,578,500. Applying the two-part patent-eligibility test of Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Federal Circuit agreed with the district court that the claims were directed “to the concept of analyzing records of human activity to detect suspicious behavior,” and as such were directed to an abstract idea.  Further, in considering the “abstract idea” prong of the Alice test, the court explained that recent decisions in McRO, Inc. v. Bandai Namco Games America Inc., and Enfish, LLC v. Microsoft Corp. were distinguishable. Here, the claims recited rules for analyzing an audit log. Unlike McRO, which produced a result similar to old manual practices but did so implementing new mathematical rules, the ’500 patent claims simply implemented old practices in a… Read More »Another Business Method Patent Falls at the Federal Circuit

Patent Claims Found to be Directed to Abstract Idea, but Pass Alice’s “Inventive Concept” Prong

Having found that patent claims were directed to abstract ideas under the first prong of the Alice/Mayo test, a court then found that the claims were patent-eligible under 35 U.S.C. § 101 because the claims recited an inventive concept, satisfying the second prong of the Alice/Mayo test.  The court thus denied the defendant’s  Rule 12(b)(6) motion to dismiss.  Broadcom Corp. v. Sony Corp., No SAVC 16-1052 JVS (JCGx) (C.D. Cal. Oct. 5, 2016). Claims of U.S. Patent Nos. 6,744,387 and 6,982,663 are directed to methods for “binarization of data in an MPEG data stream.”  Two claims of the ’663 patent are “directed to improving digital video decoding,” and thus were found to be not directed to abstract ideas. However, most of the claims were found to be directed to a “mathematical algorithm,” and thus had to be analyzed to see if the claims also recited an inventive concept to render the abstract idea patent-eligible. The court found that all claims of the ’387 and ’663 patents directed to an abstract idea also recited an inventive concept sufficient to render the claims patent-eligible.  Some courts have declined to decide patent-eligibility at the pleadings stage, citing a need to wait for claim… Read More »Patent Claims Found to be Directed to Abstract Idea, but Pass Alice’s “Inventive Concept” Prong

Federal Circuit Says Ex-Patent Owners Can Bring Inter Partes Reviews

In Husky Injection Molding Systems Ltd., v. Athena Automation LTD., Nos. 2015-1726, 2015-1727 (Sept. 23, 2016), the Federal Circuit rejected Husky’s appeal of a PTAB inter partes review decision that certain challenged claims were invalid. Husky’s grounds for appeal were based not on the PTAB’s final decision finding anticipation of the claims, but on an argument that the Inter Partes Review should have never been instituted.  According to Husky, the doctrine of assignor estoppel barred Athena from challenging the validity of the patent at issue. In 2007, Husky’s former owner (“Schad”), and co-inventor of the patent as issue, assigned the patent to Husky shortly before selling Husky to a private equity group. After selling Husky, Schad formed Athena. A number of years later, Athena filed a petition with the PTAB requesting an Inter Partes Review of the patent at issue. Seeking a denial of Athena’s petition, Husky argued in its preliminary response that Athena’s request was barred by assignor estoppel. Assignor estoppel is an equitable doctrine that prohibits a seller of a patent from challenging the validity of that patent. The doctrine is based on the doctrine of legal estoppel, which prohibits a grantor (typically, of real property) from challenging… Read More »Federal Circuit Says Ex-Patent Owners Can Bring Inter Partes Reviews

Three-Judge Fed. Cir. Panel Shows How Patent-Eligibility Law Is All Over the Map

A split Federal Circuit panel (Judges Dyk, Mayer, and Stoll) affirmed a district court’s holding that two Intellectual Ventures software patents were patent-ineligible under 35 U.S.C. § 101, while reversing the lower court’s holding that a third patent claimed eligible subject matter under the Mayo/Alice Section 101 test.  Intellectual Ventures I LLC v. Symantec Corp., Nos. 2015-1769, 2015-1770, 2015-1771 (Fed. Cir. Sept. 30, 2016).  Judge Dyk wrote for the majority.  Judge Mayer concurred, but wrote separately to argue that (1) “patents constricting the essential channels of online communication run afoul of the First Amendment, and (2) claims directed to software implemented on a generic computer are categorically not eligible for patent.”  Judge Stoll dissented with respect to the third patent, agreeing with the district court that its claim, while reciting conventional network components and virus screening, was “eligible as an ordered combination.” The three patents at issue were: U.S. patent no. 6,460,050, drawn to a “method for identifying characteristics of data files.” (Federal Circuit panel unanimously affirmed lower court finding of patent-ineligibility.) U.S. patent no. 6,073,142, drawn to a “post office for receiving and redistributing e-mail messages on a computer network,” and processes relating to delivering and reviewing e-mails.  (Federal… Read More »Three-Judge Fed. Cir. Panel Shows How Patent-Eligibility Law Is All Over the Map