January 2017

Secondary Considerations Succeed at the PTAB

In a rare instance of relying on secondary considerations to overcome an allegation of obviousness, the Patent Trial and Appeals Board refused to institute an Inter Partes Review of U.S. Patent No. 8,550,271, directed to a crimp-on style metal crown cap for a glass bottle. World Bottling Cap, LLC v. Crown Packaging Tech., Inc., Case 2015-01651 (PTAB January 19, 2017).  The differences between the prior art and the claimed invention were minimal, namely the hardness of the steel used to make the cap. The PTAB’s determination of non-obviousness relied on a rarely successful arguments based on secondary factors of commercial success and industry praise. Claim 1 of the ’271 patent reads: A lightweight crown cap for application to a glass beverage bottle, comprising: a shell formed of a material comprising steel having an average hardness of greater than 62 on the 30T scale, the shell including: a peripheral skirt having, flutes downwardly depending therefrom, the flutes are capable of being crimped to affix the crown cap to a bottle; and around panel integrally formed with the skirt, the panel including at least one recessed circular groove that has its center approximately at the longitudinal center of the panel; and a… Read More »Secondary Considerations Succeed at the PTAB

Recitations of Hardware Can Save Patent-Eligibility

A court denied a motion to dismiss that alleged patent-ineligible subject matter where the patent claims recited physical structure that, the court said, showed that the claims were not directed to a patent-ineligible abstract idea under 35 U.S.C. § 101.  SPEX Technologies, Inc. v. Apricorn, No. 2-16-cv-07349 (C.D. Cal. January 9, 2017).  U.S. Patent Nos. 6,088,802 and 6,003,135 included claims directed to providing secure communications between peripheral devices. The defendant argued that independent claim 11 of the ’802 patent is “directed to the abstract idea of securing access to secret information, which is a concept that has been practiced throughout modern history by humans.”  The defendant made a similar argument concerning independent claim 57 of the ’135 patent.  Those two claims are reproduced below: Claim 11 of the ’802 patent recites: A peripheral device, comprising: security means for enabling one or more security operations to be performed on data; target means for enabling a defined interaction with a host computing device; means for enabling communication between the security means and the target means; means for enabling communication with a host computing device; and means for mediating communication of data between the host computing device and the target means so that the… Read More »Recitations of Hardware Can Save Patent-Eligibility

Business Method Patents Survive Alice at Federal Circuit

A recent Federal Circuit case demonstrates that reports of the death of business method patents may be exaggerated, even if not greatly. In Trading Technologies Int’l., Inc. v. CQG, Inc., 2016-1616 (Fed. Cir. Jan 18, 2017) Judge Newman, joined by Judges O’Malley and Wallach, affirmed a district court holding that patent claims directed to “a method and system for the electronic trading of stocks, bonds, futures, options and similar products” are patent-eligible under 35 U.S.C. § 101. The patents-in-suit, U.S. Patent Nos. 6,772,132 and 6,766,304 shared a common specification; their claims, including claim 1 of the ’304 patent, which was discussed as representative, can be seen at the foregoing links. The court succinctly described the patents as follows: The patents are for “[a] method and system for reducing the time it takes for a trader to place a trade when electronically trading on an exchange, thus increasing the likelihood that the trader will have orders filled at desirable prices and quantities.” ‘132 patent, Abstract; ‘304 patent, Abstract. The patents describe a trading system in which a graphical user interface “display[s] the market depth of a commodity traded in a market, including a dynamic display for a plurality of bids and… Read More »Business Method Patents Survive Alice at Federal Circuit

PTAB Broadest Reasonable Interpretation: “in response to” Means “subsequent to”

In an ex parte appeal, the PTAB upheld the Examiner’s broadest reasonable interpretation of the patent claim language “in response to” as merely meaning “subsequent to.”  The decision is Ex parte Youngri Kim et al. (PTAB Jan 19, 2017). The subject patent application is drawn toward an ebook reader, and the claim language at issue was the following: providing audio feedback based on a history corresponding to the page, in response to the page turning operation, wherein the history includes at least one of stored user input information and stored music audio playback information. The specification describes that the user may save audio information, e.g., a user’s voice memo, on pages of an ebook.  The specification also describes that the user may turn pages of the ebook by a “page turning operation,” and the audio information is played “in response to the page turning operation.” The claim was finally rejected as obvious under 35 U.S.C. § 103.  This primary reference taught that pages of an ebook may be turned with a “next page button” and a “previous page button,” i.e., a “page turning operation” as claimed.  However, this primary reference taught that sound events may be associated with certain text,… Read More »PTAB Broadest Reasonable Interpretation: “in response to” Means “subsequent to”

Some Business Methods Are Routinely Found Patent-Ineligible

A Federal Circuit panel needed one line to agree that a claims in a business method patent were patent-ineligible under Alice Corp. v. CLS Bank Corp. and 35 U.S.C. § 101.  In America’s Collectible Network, Inc. v. The Jewelry Channel, Inc., No. 2016-1521 (Fed. Cir. Jan 11, 2017), a three judge panel (Dyk, Taranto, and Hughes) entered a per curiam order affirming the PTAB’s 2015 decision in Jewelry Channel, Inc. v. America’s Collectible Network, Inc. finding claims of U.S. Patent No. 8,370,211 invalid under 35 U.S.C. § 101. The ’211 patent is directed to a method for a reverse auction.  Claim 1 recites: A method of conducting a telephone based reverse auction for selling units where the reverse auction is transmitted to users on a medium by a system, the method comprising the steps of: providing a number of units for sale and storing a preliminary available quantity in an allocation database initially indicative of the number provided for sale; providing a telephone number to which calls from callers can be placed to enter the reverse auction; recording the time at which one or more calls were received on the telephone number in a call record in a call database;… Read More »Some Business Methods Are Routinely Found Patent-Ineligible

No Attorney Fees after Dismissal for Lack of Patent-Eligibility

Until the law defining patentable subject matter under § 101 gains clarity, don’t expect attorney fees for cases dismissed under § 101.  And if a court denies your motion before the opposing party even responds, that’s a sign you may have pushed too far. In West View Research v. BMW, No. 14-CV-2670-CAB (WVG) (S.D. Cal. Jan. 17, 2017), the court did just that, denying BMW’s request for attorney fees under 35 U.S.C § 285 after dismissing West View’s case for unpatentable subject matter under 35 U.S.C. § 101. In an earlier order, the court granted BMW’s motion to dismiss the case because the patents were directed to an unpatentable abstract idea. West View had asserted two patents, U.S. Patent Nos. 8,301,456 and 8,311,834. The patents covered providing information between an elevator or other “personnel transport device” and a user’s mobile device. The court found that the claims were directed to the abstract idea of “identifying an authorized user and providing information to that user” and were therefore invalid under § 101. Fresh off that victory, BMW asked for attorney fees under 35 U.S.C. § 285, which gives discretion to the court to award fees for “exceptional” cases. The court disagreed that… Read More »No Attorney Fees after Dismissal for Lack of Patent-Eligibility

When Does Novelty Confer Patent-Eligibility?

Refusing to consider only elements of patent claims that differed from the prior art in considering patent-eligibility under the test of Alice Corp. v. CLS Bank and 35 U.S.C. § 101, a court has denied a defendant’s motion to dismiss.  Capstan AG Systems, Inc. v. Raven Indus., Inc., No. 16-cv-04132-DDC-KGS (D. Kans. Jan 11, 2017).  The patents-in-suit, U.S. Patent Numbers 8,191,795 and 8,523,085, claim systems and methods for controlling valves of agricultural sprayers.  For example, the claimed invention controlled flow rates to provide even spraying when a tractor was turning. There was no dispute that the claimed improvement included a mathematical formula, i.e., an abstract idea. The defendant seized on this fact, and argued that Federal Circuit precedent directed the court to base its patent-eligibility analysis only on claim elements that represented an advance over the prior art.  The court disagreed, citing that old warhorse, the Supreme Court’s 1981 decision in Diamond v. Diehr, to explain that “defendants’ method would require the court to import the novelty inquiry found under § 102 into the § 101 analysis.”  Recent Federal Circuit cases likewise made clear that the claims should be considered as a whole for patent-eligibility purposes.  See Affinity Labs of… Read More »When Does Novelty Confer Patent-Eligibility?

PTAB Construes Patent Claim Terms as Subject to §112 ¶6 in IPR

The USPTO’s PTAB held that the term “drive module” was a means-plus-function limitation subject to 35 U.S.C. § 112, sixth paragraph (now 112(f))  in its decision to institute an Inter Partes Review (IPR) in Apple Inc., v. Immersion Corporation, IPR2016-01372 (January 11, 2017). The PTAB (Patent Trial and Appeal Board) raised the §112(6) issue sua sponte, noting that “the parties fail[ed] to address the issue.” It further held that it could not discern the scope and meaning of the claims with that term since the functions associated with the “drive module” were not properly supported by the flowcharts in the Specification. Section 112 deficiencies cannot be challenged by the petitioner in an IPR. However, in a decision to institute an IPR, the PTAB has to construe the claims, which naturally involves resolving § 112 issues. In its decision to institute IPR against US Patent No. 8,659,571, the PTAB found that the phrase “drive module” in claims 12-18 invoked §112(b) under Williamson v. Citrix Online, LLC, even though the term “means” was not explicitly recited in the claims. The IPR was instituted on other claims that did not have the “drive module” recitation. Claim 12 recites: A haptic effect enabled system… Read More »PTAB Construes Patent Claim Terms as Subject to §112 ¶6 in IPR

PTAB Upholds Indefiniteness Rejection of Inferentially Claimed Element

One of the first rules often taught to a young patent attorney, especially for mechanical apparatus claims, is to avoid inferential claiming, i.e., avoid introducing a new element in the middle of a recitation of another element.  This type of drafting can lead to ambiguity about whether this new term is positively recited, and thus part of the claimed invention.  The PTAB reinforced this lesson in Ex parte Joseph L. Sullivan, Appeal 2014-005800 (PTAB June 22, 2016). The claim language at issue is “a defibrillation port for guiding via electrodes the stored external charge to a person.”  The Examiner rejected this language as being indefinite under 35 U.S.C. § 112, second paragraph.  Specifically, the Examiner stated that the phrase “guiding via electrodes” is indefinite because the phrase “is inferentially included and it is unclear if the applicant is positively reciting or functionally reciting the element.”  The Examiner also stated that the claim has “not specifically stated the role of the electrodes prior to relying on them for use with the defibrillation port and delivery of electrical charge.” The Appellant appealed this rejection, and the PTAB upheld the rejection.  The PTAB decision stated that “[w]e agree with the Examiner that the… Read More »PTAB Upholds Indefiniteness Rejection of Inferentially Claimed Element

Don’t-Ask-Don’t-Tell Approach Meets Intent Requirement for Inequitable Conduct

The filer of a petition to revive an expired patent met the intent prong of the test for inequitable conduct by acting with at best willful ignorance; the filer certified that a failure to pay a maintenance fee was unintentional when he not only had not investigated, but had no knowledge, as to why the maintenance fee in fact had not been paid.  3D Medical Imaging Systems, LLC v. Visage Imaging, Inc., 2:14-CV-267-RWS (N.D. Ga. Jan 11, 2017).  Because the unsupported certification was material to the United States Patent and Trademark Office’s decision to revive the patent, the court granted a motion for summary judgment seeking a declaratory judgment that U.S. Patent No. 6,175,655 was unenforceable for inequitable conduct. The ’655 patent’s prior owner was a bankrupt company that made a conscious decision not to pay the final maintenance fee for the ’655 patent.  The current owner, the plaintiff in this case, knew that the patent was expired when he acquired it, and that the prior owner “had filed for bankruptcy roughly two months after the 11.5-year maintenance fee was due.”  Nonetheless, without, by his own admission, any knowledge or investigation, the plaintiff certified to the USPTO that the failure… Read More »Don’t-Ask-Don’t-Tell Approach Meets Intent Requirement for Inequitable Conduct