February 2017

PTAB: BRI of Method Claim Requires Conditional Limitation

Thirty-five PTAB decisions cite Ex parte Schulhauser since that case was designated precedential in October 2016.  Of those thirty-five decisions, all except for one held that the broadest reasonable interpretation of a method claim does not require conditional limitations.  The one exception is Ex parte Hehenberger, Appeal No. 2015-007421 (Jan. 31, 2016). By way of background, Ex parte Schulhauser held that the BRI a method claim does not require conditional limitations of that claim, but that the BRI of a system claim does require conditional limitations.  The claim at issue in Ex parte Hehenberger is as follows: A method for operating an energy-generating installation, with a differential transmission with an electrical differential drive, the differential drive being connected via a frequency converter to a DC intermediate circuit to a network, the method comprising: supplying the differential drive with electrical energy with the aid of an electrical energy store in the DC intermediate circuit of the frequency converter in the case of a voltage dip or a power failure or an overvoltage of the network when the differential drive operates in an operating mode as a motor. (Emphasis added.)  The Ex parte Hehenberger decision included both a majority opinion and a… Read More »PTAB: BRI of Method Claim Requires Conditional Limitation

Data Back-Up Claims Held Patent-Ineligible under Alice

In a clear demonstration that patent-eligibility and novelty go hand-in-hand – despite some courts’ denial of this reality – a court has held that claims directed to “remote mirroring of digital data” are patent-ineligible under 35 U.S.C. § 101 and the Alice/Mayo abstract idea test.  Intellectual Ventures I, LLC v. Symantec Corp., No. 13-440-LPS (D. Del. Feb 13, 2017) (Judge Leonard Stark).  In granting summary judgment of invalidity, the court joined many other courts that have held claims patent-ineligible because they utilized only conventional technology. Asserted independent claim 25 of U.S. Patent No. 5,537,533 recites: A method for remote mirroring of digital data, said method comprising the steps of: copying the data from a primary network server to a nonvolatile data buffer in a data transfer unit which is digitally connected to the primary network server, the primary network server including an operating system which is capable of accessing a nonvolatile server store, the data copied to the data transfer unit being a substantially concurrent copy of data which is being stored by the operating system in the nonvolatile server store of the primary network server; copying the data from the data transfer unit to an input end of a… Read More »Data Back-Up Claims Held Patent-Ineligible under Alice

CAFC: User-Tailored Data Is Patent-Ineligible Abstract Idea

A Federal Circuit panel easily affirmed a lower court holding of patent-ineligibility of claims “directed to systems and methods for allowing computers to process data that are dynamically modified based upon external-to-the-device information, such as location and time.” Evolutionary Intelligence, LLC v. Sprint Nextel Corp., No. 2016-1188 et al. (Fed. Cir. Feb 17, 2017) (opinion by Judge Lourie, joined by Judges Moore and Taranto) (non-precedential). The lower court had held all claims of US Patent Nos. 7,010,536 and 7,702,682 invalid as patent-ineligible under 35 USC § 101. The District Court had granted a motion to dismiss/motion for judgment on the pleadings, concluding that all claims of the asserted patents are invalid under § 101 as being directed to the abstract idea of “searching and processing containerized data.” The court held that the invention merely computerizes “old forms of information processing,” such as those used in “libraries, businesses, and other human enterprises with folders, books, time-cards, ledgers and so on.” On appeal, the patent owner, futilely as it turned out, addressed both prongs of the Alice/Mayo test. First, the patent owner argued that the claims “are not directed to an abstract idea, but rather to an improvement in the functioning of… Read More »CAFC: User-Tailored Data Is Patent-Ineligible Abstract Idea

Patent Obviousness and Reasonable Expectation of Success

The Federal Circuit has (mostly) sustained the PTAB’s findings that claims of US Patent No. 7,433,483 are obvious over prior art, explaining that obviousness under 35 USC § 103 required, in essence, a showing that the proposed combination of references would result in an improvement, even if not the best possible improvement. Slot Speaker Technologies, Inc. v. Apple Inc., Nos. 2015-2038, 2015-2039 (Fed. Cir. Feb 17, 2017) (non-precedential). Accordingly, the Federal Circuit panel (opinion by Judge O’Malley, joined by Judges Lourie and Dyk) held that claims 1-3 of the ’483 patent would have been obvious, affirming and reversing in part the PTAB’s final decision in an Inter Partes Review proceeding. Claim 1 of the ’483 patent recites: A narrow profile sound system, comprising: a drive unit disposed on a mounting surface, said mounting surface forming a barrier acoustically isolating the drive unit’s forward radiation from its rearward radiation;a sound reflecting surface facing the drive unit and substantially parallel with the mounting surface; and sound damping material disposed between said sound reflecting surface and the mounting surface, the sound reflecting surface and the mounting surface defining a bottom and top of a narrow sound duct terminating in an elongate output slot,… Read More »Patent Obviousness and Reasonable Expectation of Success

Volitional Conduct: an Element of Copyright Infringement

The Ninth Circuit Court of Appeals recently held in Perfect 10 v. Giganews, No 15-5550 (Jan 23, 2017), that an alleged copyright infringer can only be found directly liable if its “volitional conduct” actually causes the infringing activity to happen. Notably, the Court rejected Appellant’s argument that the Supreme Court’s ruling in American Broadcasting v. Aereo, Inc. removed this “volitional conduct” requirement. Appellant Perfect 10, Inc. owns copyrights to several images. Appellee Giganews, Inc. owns and operates several Usenet servers and provides subscribers to user-stored content to other Usenet providers. Perfect 10’s images have been distributed by users over Giganews’s servers, and Perfect 10 sued Giganews for direct and indirect copyright infringement claims. The district court granted Giganews’s motions for summary judgment as to the direct and indirect copyright infringement claims. The Court reviewed the grant of summary judgment de novo. To show a prima facie case of direct copyright infringement, Perfect 10 had to show “ownership of the allegedly infringed material” and “demonstrate that the alleged infringers violated at least one exclusive right” granted to copyright holders. Furthermore, direct infringement requires that Perfect 10 show causation, referred to as “volitional conduct,” by Giganews. In the context of copyright infringement,… Read More »Volitional Conduct: an Element of Copyright Infringement

Specific Personal Jurisdiction from NPE Enforcement Effort

Many people think that efforts to enforce a patent in a particular forum, without more, cannot give rise to personal jurisdiction over the patent owner in that forum.  If you so thought, you thought wrong.  In Xilinx, Inc., v. Papst Licensing GmbH & Co., KG, No. 2015-1919 (Fed. Cir. Feb 15, 2017), the court held that the non-practicing entity patent plaintiff was subject to both general and specific personal jurisdiction in California, based on the plaintiff’s efforts there to license and enforce U.S. Patent Nos. 6,574,759 and 6,704,891. The efforts by Papst, a non-practicing entity, to enforce the ’759 and ’891 patents have a complex procedural history.  To recite a few salient facts in brief, although a California court said it lacked jurisdiction, a Delaware court had in its turn transferred litigation to the California court.  When the hot potato was passed back, the California court granted a motion to dismiss on the grounds that claims of the  ’759 and ’891 patents recited patent-ineligible subject matter under the patent-eligibility requirements of 35 U.S.C. § 101 and the Alice/Mayo abstract idea test.  Papst’s appeal of that decision is pending. In the meantime, Papst had argued that it was not subject to… Read More »Specific Personal Jurisdiction from NPE Enforcement Effort

Website Doesn’t Create Personal Jurisdiction in Patent Case

An Ohio court has transferred a patent case to the Eastern District of Washington after finding that the defendant’s website was insufficient to create specific personal jurisdiction.  Zen Indus., Inc. v. Hoffman Mfg., Inc., No. 1:16 CV 2352 (N.D. Ohio, Feb. 9, 2016).  Applying Federal Circuit law to consider personal jurisdiction with respect to the patent infringement claims, the court found that Hoffman’s website was insufficient to create the requisite minimum contacts with the state of Ohio. Zen alleged that Hoffman infringed claims of U.S. Patent Nos. 8,884,760 and 9,181,802, directed to “high-pressure underground mine ventilation doors.”  Hoffman evidently marketed accused products on its website but, significantly, the website did not allow for sales; it merely provided contact information.  The website was “[t]he only fact plaintiff that points to in support of personal jurisdiction.” The plaintiff, Zen, alleged “that the website is ‘sufficiently interactive’ to confer jurisdiction,” arguing that “the nature of . . . large mine ventilation doors that require measurements and installation, does not lend itself to online purchasing.”  According to Zen, “the website essentially serves as a nationwide advertisement of defendant’s products and services, including customers located in Ohio” because is solicited requests for price quotes. But… Read More »Website Doesn’t Create Personal Jurisdiction in Patent Case

Fitbit Survives 12(b)(6) Motion Attacking Patent-Eligibility

Fitbit sued Jawbone, its rival, alleging infringement of three patents directed to preparing wearable activity trackers with client and/or server computers, whereupon Jawbone unsuccessfully brought a Rule 12 motion to dismiss alleging patent-ineligible subject matter. Fitbit, Inc. v. AliphCom, No. 15-cv-04073-EJD (N.D. Cal. Feb 9, 2017.)  The asserted patents were U.S. Patent Nos. 9,026,053, 9,106,307, and 9,048,923; “[a]ll of the asserted claims recite a method or system for pairing that involves three discrete entities: a portable monitoring device, a ‘client,’ and a ‘server.’”  Skirting the question of whether claims were directed to a patent-ineligible abstract idea, the court found that the claims recite an inventive combination of elements. The court discussed claim 1 of the ’053 patent, which you can find here, as representative. Jawbone alleged that “the asserted claims are directed to the abstract ideas of ‘identifying and validating electronic device’ through ‘minimal user interaction.’” Fitbit’s counter was “that the claims are directed to a narrow improvement in device pairing that is specific to portable monitoring devices.” The court agreed that “Jawbone’s characterization of the claims sweeps to broad,” because Fitbit’s “claims do not recite any process for connecting to devices, but a specific one.”  Further, “the steps of… Read More »Fitbit Survives 12(b)(6) Motion Attacking Patent-Eligibility

Fed. Cir. Affirms Command and Control Patent-Ineligibility

In a one-line per curiam Rule 36 judgment, the Federal Circuit affirmed a district court’s judgment on the pleadings that claims of patents directed to “command-and-control processing” recited ineligible subject matter under 35 U.S.C. § 101.  Appistry Inc. v. Amazon.com Inc., No. 2015-2077 (Fed. Cir. Feb 10, 2017) (Judges Lourie, Hughes, and Stoll).  The patents at issue were U.S. Patent Nos. 8,200,746 and 8,341,209, both entitled “System And Method For Processing Information Via Networked Computers Including Request Handlers, Process Handlers, And Task Handlers.” This post summarized, and links to, the lower court’s decision. As we have previously noted, the increasing volume of patent-eligibility cases flowing through the Federal Circuit’s docket is resulting in an increasing number of cursory affirmances of findings of patent-ineligibility.  As much as the seeming plasticity of the Alice/Mayo patent-eligibility test frustrates practitioners, there are, more and more, easy patent-eligibility cases.

Article-Tracking Held Patent-Ineligible Abstract Idea

Patent claims drawn to determining if articles are in a specified geographic area, and then taking an action based on the determination, are not eligible under 35 U.S.C. § 101 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l.  CalAmp Wireless Networks Corporation v. ORBCOMM, Inc., No. 3:16cv906-HEH (E.D. Va. Feb 9, 2017.) Accordingly, the court in this case granted a partial motion to dismiss under Rule 12(b)(6), holding claims of U.S. Patent No. 6,850,839 patent-ineligible under Section 101. The ’839 patent, including its asserted claims, is directed to “tracking an object by determining whether the object is presently located within a prescribed geographic area and taking appropriate action depending on whether the object is or is not within that area.”  Here is claim 1: A method for determining whether an article tracking device is within a spatial zone, the method comprising the steps of: obtaining a current time and a current position of the device; determining a spatial zone that corresponds to the current time; determining whether the current position of the device is within the spatial zone; and sending a request to a server for a subset of server database records in response to the determination of whether… Read More »Article-Tracking Held Patent-Ineligible Abstract Idea