November 2016

“Covered Business Method” Is Not Anything Under the Sun, Says Federal Circuit

Claims directed to “managing distribution of location information generated for wireless communications devices,” do not recited a “covered business method” within the meaning of the America Invents Act, said the Federal Circuit in Unwired Planet, LLC v. Google, Inc., No. 2015-1812 (Fed. Cir. Nov. 21, 2016).  The court thus remanded the case to the Patent Trial and Appeal Board (PTAB), vacating the PTAB’s Final Decision that claims of U.S. Patent No. 7,203,752 were unpatentable under 35 U.S.C. § 101. The Court considered claim 25 of the ’752 patent as representative: A method of controlling access to location information for wireless communications devices operating in a wireless communications network, the method comprising: receiving a request from a client application for location information for a wireless device; retrieving a subscriber profile from a memory, the subscriber profile including a list of authorized client applications and a permission set for each of the authorized client applications, wherein the permission set includes at least one of a spatial limitation on access to the location information or a temporal limitation on access to the location information; querying the subscribe profile to determine whether the client application is an authorized client application; querying the subscriber profile… Read More »“Covered Business Method” Is Not Anything Under the Sun, Says Federal Circuit

Determining Willful Patent Infringement: Ramifications of Halo Pulse Through the Courts

The Federal Circuit recently vacated and remanded a lower court’s holding that a patent infringement defendant could not have willfully infringed as a matter of law. Alfred E. Mann Found. for Sci. Research v. Cochlear Corp. (Fed. Cir. Nov. 17, 2016).  The lower court’s decision was based on the objective standard prong of the now defunct two-part test of In re Seagate; the Federal Circuit, in the course of also deciding issues of infrnigement and validity, remanded the willful infringement finding in light of Halo Electronics, Inc. v. Pulse Electronics, Inc. A jury had returned a verdict including a finding of willful infringement by Cochlear, and awarded approximately $131 million in damages. In response to the verdict, Cochlear filed a motion for JMOL of no willful infringement. The lower court granted the motion, concluding that a reasonable jury could not find that the objective prong of the Seagate test was established by clear and convincing evidence, and that Cochlear had presented several reasonable non-infringement defenses. Subsequent to the determination of no willful infringement as a matter of law by the Alfred lower court, the U.S. Supreme Court decided Halo Electronics, Inc. v. Pulse Electronics, Inc., altering the test for willful… Read More »Determining Willful Patent Infringement: Ramifications of Halo Pulse Through the Courts

Automated Migration of Computer Settings Not Patent-Eligible, Says Federal Circuit

In a non-precedential decision that appears to have been fairly easily reached, a Federal Circuit panel affirmed a district court’s summary judgment of invalidity under 35 U.S.C. § 101 for patent claims directed to migrating computer configuration settings.  Tranxition, Inc. v. Lenovo (United States) Inc., Nos. 20151907, 20151941, 20151958 (Fed. Cir. Nov. 16, 2016) (opinion by Chief Judge Prost, joined by Judges Reyna and Chen). Claims of U.S. Patent Nos. 6,728,877 and 7,346,766 recite methods for “automatically transitioning,” from one computer to another, an individual user’s computer settings, “such as email addresses, desktop settings, and stored passwords.”  The court considered claim 1 of the ’877 patent (available here), which recites “[a] method in a computer system for preparing configuration settings for transfer from a source computing system to a target computing system.”  The court easily concluded that this claim was “directed to the abstract idea of migration, or transitioning, of settings.” Then, turning to the second part of the Alice patent-eligibility test, the court explained that Tranxition argues that the claims contain an inventive concept because a manual process would not necessarily capture all the configuration settings in a computer and that there is no record evidence showing that the… Read More »Automated Migration of Computer Settings Not Patent-Eligible, Says Federal Circuit

Willful Patent Infringement and Opinions after Halo

As my partner Tom Bejin discussed in this recent webinar, Addressing Willful Patent Infringement Post-Halo, the pendulum governing standards for enhanced damages for patent infringement under 35 U.S.C. § 284 gyrated again when the U.S. Supreme Court decided Halo Electronics, Inc. v. Pulse Electronics, 136 S. Ct. 1923 (2016).  The Supreme Court rejected the two-part test of In re Seagate Technology, LLC, 497 F. 3d 1360 (2007), that required showing by clear and convincing evidence an “objectively high likelihood” that an accused infringer knew it was infringing.  The Court both lowered the plaintiff’s burden of proof and rejected the “rigid test” of Seagate.  Thus, as you will see if you click the above link to Tom’s slides exporing the law surrounding Halo, opinions of counsel and other prophylactic steps may have seemed less necessary after Seagate, but accused infringers are now well advised to consider these issues.

New Day, Different Alice Ruling: Youtoo v. Twitter and F5 v. Radware

In two recent § 101 orders on motions to dismiss, two district courts demonstrated how inconsistent patent-eligibility jurisprudence remains. The courts faced claims of similar complexity, similar subject matter, and similar reliance on software; sat in the same procedural posture; used the same number of pages of analysis (five); and reached opposite conclusions. Youtoo Technologies accused Twitter (through its acquisition of Vine) of infringing multiple patents. Youtoo Techs. LLC v. Twitter Inc., No. 3:16-CV-00764N (N.D. Tex. Nov. 10, 2016). Here is a representative claim from U.S. Pat. No. U.S. Pat. No. 8,464,304: A method performed by data processing apparatus, the method comprising: receiving video data from a client computing device at a server system, wherein the video data is captured using a camera connected to the client computing device in accordance with instructions executed on the client computing device, wherein the instructions are provided to the client computing device by the server system and cause the video data to be captured in accordance with predetermined constraints and the predetermined constraints include a frame rate defined by the instructions; automatically transcoding the video data, using a server included in the server system, into at least one different format based on at… Read More »New Day, Different Alice Ruling: Youtoo v. Twitter and F5 v. Radware

When Can Patent-Eligibility Be Decided on the Pleadings?

Defendants often urge courts to conclude that claim construction is not a prerequisite for deciding patent-eligibility on a defendant’s Rule 12 motion to dismiss. Here is a case in which a magistrate judge reached this conclusion but nonetheless recommended denying the defendants’ motion (without prejudice).  Kaavo, Inc. v. Amazon.com Inc., Nos. 15-638-LPS-CJB, 15-640-LPS-CJB (D. Del. Nov. 3, 2016).  As the court explained, although the patent claims were drawn to an abstract idea, claim construction was not needed to identify a factual question concerning whether the claims were sufficiently narrow so as to amount to significantly more than the abstract idea. The patent-in-suit in the present case, U.S. 9,043,751, was a continuation of and shared a specification with, United States Patent No. 8,271,974.  Litigation concerning the ’974 patent was in the midst of “the claim construction process regarding certain terms that are very similar (if not identical) two terms found in the ’751 patent.” However, that claim construction was not needed in the present litigation to determine that factual questions existed concerning the scope of the claims, such factual questions being a prerequisite to making a patent-eligibility determination. The court analyzed claim 11 of the ’751 patent as representative: A method… Read More »When Can Patent-Eligibility Be Decided on the Pleadings?

Divided Infringement Means No Patent Infringement, Says Judge Gilstrap

Claims to a computer system for providing users with location information about an object were not directly infringed where the claims recited a step of user input not under the direction or control of the party requesting and receiving the input.  Accordingly, the court granted a motion for summary judgment of noninfringement of these claims.  PerdiemCo, LLC. v. IndusTrack LLC., No. 2:15-CV-00726-JRG-RSP (E.D. Texas Nov. 8 2016). The plaintiff had accused the defendant of infringing claims of three patents, including independent claim 18 of U.S. Patent No. 8,223,012. That claim is reproduced below, with the step practiced by third parties, and not under the direction or control of the accused infringer, shown in boldface. A method for conveying information among a plurality of computing devices associated with a plurality of users including a first user, a second user, and a third user, the method comprising: providing an interface to a first computing device associated with the first user to define a relationship of an information package with at least one of a zone information, an object location information, or an object location event information and to define an information package access code; conveying the information package to a second computing… Read More »Divided Infringement Means No Patent Infringement, Says Judge Gilstrap

Split Fed. Cir. Panel Bases Patent-Eligibility of Network Management Claims on Claim Construction

Co-authored by Mark St. Amour. How much does claim construction matter when determining patent-eligibility under 35 USC § 101? In Amdocs Ltd. V. Openet Telecom, Inc., (Fed. Cir. Nov. 1, 2016) a split Federal Circuit panel reversed a district court decision holding claims of four patents invalid under 35 U.S.C. § 101 as directed to abstract ideas. The patents were directed to “a system designed to solve an accounting and billing problem faced  by network service providers.”  Relying heavily on the written descriptions of the patents, the majority held that the claims were unconventional solutions to technical problems, and were therefore patent-eligible.  Judge Plager wrote the majority opinion and was joined by Judge Newman; Judge Reyna dissented. Majority Opinion The patents at issue (U.S. 7,631,065; U.S. 7,412,510; U.S. 6,947,984; and U.S. 6,836,797) were all based on a common parent application. Disclosed system components included network devices, information source modules, gatherers, a central event manager, a central database, a user interface, and terminals. The court highlighted that the system components were described to be “arrayed in a distributed architecture that minimizes the impact on network and system resources.” The distributed architecture “allows data to reside close to the information sources, thereby… Read More »Split Fed. Cir. Panel Bases Patent-Eligibility of Network Management Claims on Claim Construction