December 2016

Broadest Reasonable Interpretation of Patent Claims Must Be Logically Consistent

Here is ammunition for patent applicants and patent owners alike when examiners, or challengers in Inter Partes Reviews, rely on broad readings of claim language that go beyond a broadest reasonable interpretation: D’Agostino v. Mastercard International. Inc., No. 2016-1592, 2016-1593 (Fed. Cir. Dec. 22, 2016.  In this case, the Federal Circuit vacated a claim construction by the USPTO’s Patent Trial and Appeal Board (PTAB).  D’Agostino arose from the PTAB’s decision in an Inter Partes proceeding that claims of U.S. Patent Nos. 7,840,486 and 8,036,988 were invalid over prior art.  However, the PTAB’s unreasonable claim construction will have a ring of familiarity to patent prosecutors frustrated by the tendency of many patent examiners to cast logic to the wind when interpreting patent claims. D’Agostino’s patents are directed to “generating limited-use transaction codes to be given to a merchant by a customer for the purchase of goods and services” instead of providing the customer’s credit card number, thereby securing the credit card number.  One patent was a continuation of the other; the specifications were practically identical.  Claim 21 of the ’988 patent was representative (with the clause of interest in this decision shown in bold): A method for implementing a system for… Read More »Broadest Reasonable Interpretation of Patent Claims Must Be Logically Consistent

Will State Courts Recognize Patent Agent Privilege?

A Texas Court of Appeals held that the privilege between patent agents and their clients – recognized by the Federal Circuit in In re Queen’s University, No. 2015-145 (Fed. Cir. March 7, 2016) – is not recognized by Texas state courts. In re Andrew Silver, 05-160074-CV (Dallas Ct. App. Aug. 17, 2016).  The court reasoned that, because the “Federal Circuit applies its own law for substantive and procedural issues” for patent-related cases, “in a civil case, [Texas] state law governs privilege” and “Queen’s University is not binding here.”  A dissent would have recognized patent agent privilege for matters relating to patent prosecution, but not for litigation. Andrew Silver owns patents (numbers not listed in the opinion) relating to a device that allows restaurant patrons to order meals, play games, and pay their checks at their tables. Silver licensed the patents to Tabletop Media, LLC. The lawsuit concerns a contract dispute, governed by Texas state law, related to the licenses.  The trial court ordered Silver to produce emails between Silver and his non-attorney patent agent, Raffi Gostanian. Silver filed a writ of mandamus to the Court of Appeals to withdraw the order to compel production of the communications between Silver and… Read More »Will State Courts Recognize Patent Agent Privilege?

Incorporation by Reference Saves Patent-Eligibility

A continuation-in-part patent application incorporated its parent by reference; now a court has relied on subject matter disclosed in the parent’s specification to support a finding that claims of the child patent were patent-eligible under 35 U.S.C. § 101.  Finjan Inc. v. Blue Coat Systems Inc., No. 5-15-cv-03295 (N.D. Cal. Dec. 13, 2016).  Accordingly, the court denied the defendant’s motion for judgment on the pleadings based on alleged invalidity of U.S. Patent No. 8,677,494. Independent claims 1 and 10 of the ’494 patent recite 1. A computer-based method, comprising the steps of: receiving an incoming Downloadable; deriving security profile data for the Downloadable, including a list of suspicious computer operations that may be attempted by the Downloadable; and storing the Downloadable security profile data in a database. and 10. A system for managing Downloadables, comprising: a receiver for receiving an incoming Downloadable; a Downloadable scanner coupled with said receiver, for deriving security profile data for the Downloadable, including a list of suspicious computer operations that may be attempted by the Downloadable; and a database manager coupled with said Downloadable scanner, for storing the Downloadable security profile data in a database. The ’494 patent issued on an application that was a… Read More »Incorporation by Reference Saves Patent-Eligibility

Communications with Patent Agents and Foreign Associates – Recent Developments on Privilege

If you are, or work with, a patent agent – or if you are at one end or the other of communications between U.S. attorneys and foreign attorneys and/or patent agents – this recent presentation by my colleague Peter Keros has some useful information.  The basic takeaways are these.  First, patent agents are treated like lawyers for purposes of privilege – so long as the communications are about what patent agents are licensed to do, which is prepare and prosecute patent applications.  Second, communications between U.S. and foreign counsel on patent matters can have different protection depending on what the other country is, and what it’s laws say, as well as on whether the subject of the communication is a U.S. patent or application as opposed to a foreign patent or application.

Enfish Did Not Change the Law of Patent-Eligibility, Says E.D. Texas Court

Judge Schroeder in the Eastern District of Texas has declined to reconsider a prior ruling (and resulting final judgment) of patent-ineligibility of claims directed to “entering location information into a positional information device.”  Rothschild Location Technologies LLC v. Geotab USA, Inc., No. 6-15-cv-00682 (E.D. Texas Dec. 5, 2016). The court emphasized that, the patent owner’s arguments to the contrary, the Federal Circuit’s decision in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. May 12, 2016), did not represent a change in the law. In January 2016 Magistrate Judge John Love had issued a report and recommendation granting Defendants’ FRCP 12(b)(6) Motion to Dismiss for Failure to State a Claim, holding that “claims under U.S. Patent No. 8,606,503 . . . are not patentable subject matter in accordance with 35 U.S.C. § 101.”  Judge Schroeder adopted the magistrate’s report, and entered a final judgment in May 2016, days after Enfish was decided.  The plaintiff subsequently brought a motion requesting reconsideration under FRCP 59(e), averring that “the Federal Circuit’s recent opinion in Enfish is an intervening change in law.” Not so, said Judge Schroeder.  Quoting from the Supreme Court’s decision in Alice, Judge Schroder explained that Enfish simply reinforced Alice’s… Read More »Enfish Did Not Change the Law of Patent-Eligibility, Says E.D. Texas Court

Internet Advertising Patents Once Held Not Patent-Eligible Now Are

In a somewhat stunning turnabout, a US District Judge has vacated her predecessor’s dismissal order predicated on a finding that claims of three patents directed to Internet advertising failed to recite patentable subject matter under the two-part Alice test and 35 USC § 101.  TNS Media Research, LLC v. TiVo Research and Analytics Inc., No. 11-cv-4039 (KBF) (S.D.N.Y. Nov. 29, 2016). The patents-in-suit are U.S. Patent Nos. 7,729,940, 8,000,993, and 8,112,301, entitled, respectively, “Analyzing Return On Investment Of Advertising Campaigns By Matching Multiple Data Sources,” and, for both the ’993 and ’301 patents, “Using Consumer Purchase Behavior For Television Targeting.” I mentioned these titles because they will immediately raise patent-eligibility flags in the minds of the cognoscenti. Indeed, the result reached by now-retired Judge Scheindlin in February 2016 did not, and does not, seem surprising. The new judge in the case, Judge Forrest, agreed to reconsider Judge Scheindlin’s finding, having “determined that the development of further clarity in the law, and the interpretation of the patents against such law, may support vacatur of the February 22 decision.”  In particular, the court focused on the 2016 favorite of patent owners everywhere, Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.… Read More »Internet Advertising Patents Once Held Not Patent-Eligible Now Are

Damages for Design Patent Infringement: What Is an “Article of Manufacture?”

On December 6, 2016, the U.S. Supreme Court issued its long awaited decision in Samsung Electronics Co. v. Apple Inc.  The issue in Samsung v. Apple was whether 35 U.S.C. § 289 requires that design patent damages of a multi-component product must always lie in the end product sold to the consumer.  The Court, in a unanimous decision, held that the term “article of manufacture” as used in § 289 does not mean only the end product sold to the consumer, but can mean a smaller component part – even where the component part is not available for separate purchase.  In so doing the U.S. Supreme Court reversed Apple’s $399 million award for design patent infringement. The design patents in the Samsung v. Apple litigation related to the appearance of the exterior of a smart phone.  The jury found that Samsung infringed those design patents and awarded Apple the total profits made by Samsung, $399 million.  The controlling statute for design patent infringement is 35 U.S.C. § 289, which states: Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture… Read More »Damages for Design Patent Infringement: What Is an “Article of Manufacture?”

Patent-Eligibility Not Saved by Claiming Functionality Via a Device

In another sign that broad patent claims to software functionality cannot survive Alice’s patent-eligibility test, patent claims directed to automating a sequence of events on the Internet were held invalid under 35 USC § 101 in Content Aggregation Solutions, LLC v. Sharp Corp.,  Nos. 3:16-cv-00527, -00528, -00529, -00530, -00531, -00533-BEN-KSC (S.D. Cal. Nov. 29, 2016).  Not only did the court granted the defendants’ Rule 12 motion to dismiss for failure to state a claim, but the court declined to allow the plaintiff to amend its complaint, saying that all claims were clearly patent-ineligible, and therefore such amendment would be futile. The patent-in-suit in the present case, US 8,756,155, was directed to using scripts in a handheld device to execute an automated sequence of events on the Internet, e.g., “to obtain bank balances, ongoing actions such as bidding systems, stocks, and the [like].” The court focused on claim 1, which recited in its entirety: A computing device, comprising: a handheld housing and processor and display, said display displaying a plurality of different indicators, and wherein at least one of said indicators, when selected with a single actuation, selecting execution of a prestored sequence of actions based on said single actuation that… Read More »Patent-Eligibility Not Saved by Claiming Functionality Via a Device

Post-Solution Activity in Menu Generation Patent Claims Does Not Overcome Alice

In holding all claims of patents directed to generating electronic menus patent-ineligible under 35 USC § 101, a Federal Circuit panel handed Covered Business Method Review petitioners an even bigger win than they had gotten from the Patent Trial and Appeal Board (PTAB).  Apple, Inc. v. Amaranth, Inc., Nos. 2015-1792, 2015-1793 (Fed. Cir. Nov. 29, 2016) (opinion by Judge Reyna, joined by Judges Chen and Stoll). The PTAB had held certain claims of US Patent Nos. 6,384,850, 6,871,325, and 6,982,733 to recite patent-ineligible subject matter, but had also held some claims of the ’733 patent to be patent-eligible. The Federal Circuit affirmed the findings of patent-ineligible subject matter, and then reversed the finding that certain dependent claims in the ’733 patent or patent-eligible. The independent claims of all three patents were similar, being directed to generating and transmitting restaurant menus. The court began by agreeing with the PTAB’s claim constructions, and its finding that the above patents were “covered business method patents” under the definition in the America Invents Act. In particular, the court did not accept the patent owner’s position that the claims recited a nonconventional software that distinguish over the prior art, and therefore were directed to a… Read More »Post-Solution Activity in Menu Generation Patent Claims Does Not Overcome Alice