March 2017

Laches Is a Defense to Patent Infringement No More

The United States Supreme Court recently held that under the Patent Act, laches is not a defense to claim for damages when the infringing acts occurred within the six-year time limitation provided for recovering damages under 35 U.S.C. §286.  SCA Hygiene Prods. AB v. First Quality Baby Prods., LLC, slip op. No. 15-927 (U.S. Sup. Ct. March 21, 2017). In October 2003, SCA sent a letter to First Quality alleging that First Quality was making and selling adult diapers that infringed SCA’s rights under U. S. Patent No. 6,375,646 (‘646 patent).  First Quality responded that one of its patents—U.S. Patent No. 5,415,649 (‘649 patent)—issued before the ‘646 patent and disclosed “the same diaper construction.” Id. at 2.  First Quality thus asserted that the ‘646 patent was invalid and could not support an infringement claim.  SCA sent no further correspondence to First Quality regarding the ‘646 patent, and First Quality began marketing and selling the accused product.  Id. In July 2004, SCA asked the Patent and Trademark Office (PTO) to reexamine its ‘646 patent in view of First Quality’s ‘649 patent.  In March 2007, the PTO held SCA’s ‘646 patent valid over First Quality’s ‘649 patent.  Id. In August 2010—seven years… Read More »Laches Is a Defense to Patent Infringement No More

Patent-Eligibility Is Foggier after Enfish: an Illustration

Patent claims to “[a] method for defining a personalized printed product using a data template that consists of at least one graphical component” are not directed to an abstract idea, and thus should survive a motion to dismiss based on an allegation of patent-ineligible subject matter, says an Eastern District of Texas magistrate judge.  Opal Run LLC v. C & A Marketing, Inc., Case No. 2:16-cv-0024-JRG-RSP (E.D. Texas, March 14, 2017).  Applying the two-part Alice/Mayo test for patentability under 35 U.S.C. § 101, the court, relying heavily on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), found that the claims were not directed to an abstract idea. Representative claim 10 of U.S. Patent No. 6,704,120 recites: A method for defining a personalized printed product using a data template that consists of at least one graphical component, said method comprising: (a) generating a data template that identifies the graphical component; (b) encoding, in said data template, an instruction to operate upon the graphical component; and (c) providing an application program on a computer, said application program configured to interpret said data template and to operate upon the graphical component in accordance with said instruction encoded in said data… Read More »Patent-Eligibility Is Foggier after Enfish: an Illustration

Unsupportable Claim Construction Warrants 12(b)(6) Dismissal

Where the plaintiff could only rely on a construction of a patent claim term that was implausible, a magistrate judge recommended dismissal of the plaintiff’s complaint under FRCP 12(b)(6).  Bartonfalls, LLC v. Turner Broadcasting Systems, Inc., Case No. 2:16-cv-1127-JRG-RSP (E.D. Texas, March 15, 2017).  Claims of U.S. Patent Nos. 7,917,922 and 8,769,561 recited a “TV channel,” which the plaintiff contended encompassed an Internet uniform resource locator (URL).  C’mon! Really? said the court. A complaint must state a plausible claim for relief.  Under Bell Atl. Corp. v. Twombly, 550 U.S. 554 (2007), this means that the plaintiff has alleged “‘enough fact[s] to raise a reasonable expectation that discovery will reveal’ that the defendant is liable for the alleged misconduct.”  The plaintiff tried to argue that nothing in the patent specifications or knowledge in the art “forbids URLs from being considered a channel.”  Maybe so, said the court, but the plaintiff had pointed to “nothing in the intrinsic evidence that permits a URL to be considered a TV channel.” (Emphasis in original.)  There was “no plausible basis for alleging that the plain and ordinary meaning of ‘TV Channel’ (or ‘TV Channel’ properly construed) covers URLs, i.e., a unique address for a web… Read More »Unsupportable Claim Construction Warrants 12(b)(6) Dismissal

Copyrightability Clarified for Designs of “Useful” Articles

On March 22, 2017, the U.S. Supreme Court decided Star Athletica, L.L.C. v. Varsity Brands, Inc., ruling that decorative designs of cheerleading uniforms may be eligible for copyright protection.[1]  In so deciding, the Court clarified the application of the copyright laws to designs of “useful” articles. Previously, as has been my experience in the registration and enforcement of designs of “useful” articles, the “useful” nature of an item has been broadly cited as excluding, or severely limiting, the protection of copyright laws to the design/ornamentation of such an item.  However, the Supreme Court has now clarified that the shadow of utility does not limit the otherwise available statutory scope of protectable expression. By the example of the Star Athletica case, while the overall “cut” of a uniform is utilitarian (useful as clothing) and not protectable expression, protection is available to decorative works on that uniform, even if bounded by that utilitarian shape, to the extent those works could be perceived separately therefrom and fixed in to decorate another tangible medium. Background – “Useful” Nature as a Tool to Exclude Protections Prior to this decision, a claim of copyright protection in a “useful” item was often subject to attack being overridden,… Read More »Copyrightability Clarified for Designs of “Useful” Articles

Federal Circuit Invalidates Business Method Patent (Yawn)

The Federal Circuit has upheld the invalidity of a patent whose claims recite “[a] computer-implemented method for providing certified financial data indicating financial risk about an individual.”  Clarilogic, Inc. v. FormFree Holdings Corp., No. 2016-1781 (March 5, 2017) (opinion by Judge Reyna, joined by Judges Lourie and Chen) (non-precedential).  The court affirmed the lower court’s summary judgment of invalidity under 35 U.S.C. § 101 because – all together now – the claims of U.S. Patent No. 8,762,243 “are directed to an abstract idea and the claims contain no additional elements that transform the nature of the claims into a patent-eligible application of the abstract idea.” Representative claim 1 of the ’243 patent recites: A computer-implemented method for providing certified financial data indicating financial risk about an individual, comprising: (a) receiving a request for the certified financial data; (b) electronically collecting financial account data about the individual from at least one financial source, (c) transforming the financial account data into a desired format; (d) validating the financial account data by applying an algorithm engine to the financial account data to identify exceptions, wherein the exceptions indicate incorrect data or financial risk; (e) confirming the exceptions by collecting additional data and applying… Read More »Federal Circuit Invalidates Business Method Patent (Yawn)

Mental Steps Override Novelty in Patent-Eligibility Analysis

The Federal Circuit has upheld the patent-ineligibility under 35 U.S.C. § 101 of all claims of U.S. Patent No. 8,614,710, directed to “a method for deriving a pixel color in a graphic image.” Coffelt v. NVIDIA Corp., No. 2017-1119 (Fed. Cir. March 15, 2017) (per curiam and non-precedential; panel was Chief Judge Prost and Judges Bryson and Wallach).  Although the court clearly did not regard this as a close case, it is worth noting for the court’s acknowledgement that the claims of the invalidated patent may recite a novel algorithm – but that novelty was not enough to make the claims patent-eligible. Claim 1 of the ’710 patent recites: A method for deriving a pixel color comprising the steps of: a computer calculating a first position vector for a geometric graphic object; a computer calculating a particular steradian region of space; a computer calculating a particular steradian radius of said steradian region of space; a computer calculating that said first position vector is located in said particular steradian region of space; a computer calculating a second position vector for a geometric graphic object; a computer calculating that said second position vector is located in said particular steradian region of space;… Read More »Mental Steps Override Novelty in Patent-Eligibility Analysis

Written Description Requirement Met by Original Claims

Claims included in an original patent application are part of the written description, which is why the Federal Circuit reversed a summary judgment that claims of U.S. Patent No. 6,947,882 were invalid for lack of written description support under 35 U.S.C. § 112. Mentor Graphics Corp. v. EVE-USA, Inc., Nos. 2015-1470, 2015-1554, 2015-1556 (Fed. Cir. March 16, 2017) (opinion by Judge Moore, joined by Judges Lourie and Chen) (precedential).  As mentioned in yesterday’s post, discussing the court’s consideration of the question of indefiniteness, this case covered a lot of issues; this post focuses on the court’s consideration of Section 112’s written description requirement. Claims 7, 9, and 13 of the ’882 patent recite that “the signal routing clock is independent of the first clock signal and the second clock signal.”  The district court had found that this language lacked written description support, stating that The 882 Patents [sic] specification describes the minimum frequency relationship between the signal routing clock signal and the first and second clock signals as an exception to independent clocking. As a result, the specification does not demonstrate possession of the unqualifiedly independent clocking that the asserted claims require, and the claims do not meet the written… Read More »Written Description Requirement Met by Original Claims

CAFC: Claim Reciting “Near” Displays of Data Not Indefinite

A patent claim that recited displaying one set of information “near” another set of information was not indefinite, the Federal Circuit has held in Mentor Graphics Corp. v. EVE-USA, Inc., Nos. 2015-1470, 2015-1554, 2015-1556 (Fed. Cir. March 16, 2017) (opinion by Judge Moore, joined by Judges Lourie and Chen) (precedential).  This case has something for everyone – among other things there is a long discussion of how to allocate lost profits damages, as well as a consideration of patent-eligibility under 35 U.S.C. § 101.  This post, however, is limited to the issue of indefiniteness. The district court had granted summary judgment that claim 1 of U.S. 6,132,109 was invalid for indefiniteness under 35 U.S.C. § 112.  Specifically, applying the standard established by the U.S. Supreme Court in the 2014 case of Nautilus, Inc. v. Biosign Instruments, Inc., the district court found that one of “ordinary skill in the art” (which, incidentally, is language from 35 U.S.C. § 103, not Section 112) could not have ascertained with “reasonable certainty” the meaning of the word “near” in the following recitation: displaying said characteristics associated with those said final circuit’s nets and parts that correspond directly with said initial circuit’s nets and parts… Read More »CAFC: Claim Reciting “Near” Displays of Data Not Indefinite

Patent Plaintiff Losing on Alice Isn’t an Exceptional Case

There was no exceptional case under 35 U.S.C. § 285 where a plaintiff filed and prosecuted a complaint alleging infringement of a patent whose claims were held invalid for failure to claim patent-eligible subject matter under 35 U.S.C. § 101.  Telinit Technologies, LLC v. Alteva, Inc., No. 2:14-CV-369 (E.D. Texas, March 3, 2017).  After a claim construction, the court had granted a defendant’s motion for judgment on the pleadings of U.S. Patent Number 6,192,123.  The defendant then sought attorneys’ fees under Section 285. The defendant, Jive, contended that the case was exceptional because the defendant was a non-practicing entity, had produced fewer documents than the defendants, and “settled with every company against whom it had asserted the ’123 Patent other than Jive.”  Jive also argued that its success in “overcome[ing] the presumption of presumption of validity by clear and convincing evidence” showed that the case was exceptional. But the case was filed before Alice Corp. Pty. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014).  The case was not exceptional under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014).: Jive’s only evidence in support of its claim that Telinit’s litigating position lacked strength… Read More »Patent Plaintiff Losing on Alice Isn’t an Exceptional Case

Pleading Requirements for Standard-Based Patent Infringement

To “simply identify a technical standard without further explanation” is not sufficient to survive a motion to dismiss a complaint for patent infringement, says a magistrate judge in the Eastern District of Texas.  Stragent, LLC v. BMW of North America, Civil Action Nos.  6:16-cv-446-448-RSW-KNM (E.D. Texas March 3, 2017).  The court recommended dismissal of claims for both direct and induced infringement. This case was brought based on plaintiff’s contention that “each Defendant makes and sells software that complies with the Automotive Open System Architecture (“AUTOSAR”) Standard,” compliance with which “necessarily entails infringement of U.S. Pat. Nos. 8,029,705 . . . and 8,566,843.”  Reviewing Eastern District of Texas cases on the pleading standard for direct infringement, the court noted that “cases involving more nebulous, less tangible inventions such as computer software methods may require a higher degree of specificity to provide proper notice to the defendant.”  Induced infringement requires another party’s direct infringement, and a showing that the accused infringer knew or should have known that the infringement would result. The plaintiff relied on Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1327 (Fed. Cir. 2010), in which the Federal Circuit stated that “if an accused product operates in accordance with… Read More »Pleading Requirements for Standard-Based Patent Infringement