April 2017

“Substantially” is a Definite Term in Recent PTAB Decisions

Many practitioners view words of approximation, such as “substantially,” as useful tools to broaden claim language. MPEP §2173.05(b) states that words of approximation are acceptable if one of ordinary skill in the art would understand what is claimed, in light of the specification. In fact, MPEP §2173.05(b)III discusses the acceptable use of various words of approximation, including “substantially.” Yet, it is not uncommon for an Examiner to reject a claim under §112(b) based on the use of a word of approximation. The pair of recent cases below highlight ex parte appeals in which words of approximation were viewed in favor of the Appellant. In Ex parte Bunting, Appeal No. 2014-006544 (March 13, 3017) the PTAB held that “a beam constructed substantially of mortar” was definite claim language. In this case, the specification did not provide a definition of “substantially.” The Appellant argued that many issued patents have claims that include words of approximation, and that many court cases affirm that this type of claim language is definite. The PTAB agreed with the Appellant and cited the dictionary definition of “substantially” in the Meriam-Webster dictionary. As another example, in Ex parte Ogura, Appeal No. 2014-009489 (March 21, 2017), the claim language included “substantially perpendicular” to… Read More »“Substantially” is a Definite Term in Recent PTAB Decisions

PTAB in CBM Kills Internet Advertising Click-Fraud Patent

Claims of a patent directed to detecting internet advertising click-fraud were eligible for Covered Business Method (CBM) Review, and moreover were patent-ineligible under the Mayo/Alice test and 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a Final Written Decision in Google, Inc. v. Zuili, CBM2016-00008 (Patent 8,671,057 B1) (PTAB April 24, 2017.) The title of U.S. Patent No. 8,671,057 more or less tells the story: “Method and System to Detect Invalid and Fraudulent Impressions and Clicks in Web-Based Advertisement Schemes.” The PTAB concluded that the only independent claim of the ’057 patent “meets the financial requirement of CBM eligibility because it recites a financial transaction.” Left unaddressed was the “Petitioner’s argument that claim 1 is financial in nature because it recites advertising.” The Patent Owner argued that the ’057 patent did not meet the “financial product or service” requirement for covered business method patents. However, the PTAB accepted the Petitioner’s argument that a system directed to providing links to merchant webpages as part of an advertising scheme and pay-per-click system was a financial product or service. The Patent Owner’s argument that the claims were simply directed to determining invalid clicks, and could be used on… Read More »PTAB in CBM Kills Internet Advertising Click-Fraud Patent

E.D. Texas Splits Patent-Eligibility of E-Mail Patents

Considering two e-mail patents, Judge Gilstrap of the Eastern District of Texas deferred a patent-eligibility determination of one of the patents as premature prior to claim construction, but held that claim construction was not required for claims of the second patent to be deemed patent-ineligible under the Mayo/Alice patent-eligibility test. Umbanet, Inc. v. Epsilon Data Management, LLC, No. 2:16-CV-682-JRG (E.D. Texas April 18, 2017.)  The court thus granted summary judgment of invalidity of U.S. Patent No. 7,444,374 under 35 U.S.C. § 101, but denied motions concerning U.S. Patent No. 7,076,730. Each of the patents-in-suit were directed to “electronic mail software with modular integrated authoring/reading software components.” Claims of the ’730 patent recited “encoding means” and “decoding means” for encoding and decoding representations created with “authoring components” used to create representations of “a text document” and “of a document including other than text.” After citing cases discussing when claim construction is or is not needed prior to a patent-eligibility determination, the court simply stated that claim construction was not needed to determine whether the claims of the ’730 patent were more like those of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016), or the claims in Intellectual… Read More »E.D. Texas Splits Patent-Eligibility of E-Mail Patents

Software’s Capability to Infringe Is Not Patent Infringement

A claim for direct patent infringement could not be sustained where Microsoft software, even under the plaintiff’s theory of infringement, would have required additional user configuration before all claim elements were met.  Parallel Networks Licensing LLC v. Microsoft Corp., No. 1-13-cv-02073 (D. Del. April 10, 2017). The court initially granted summary judgment because the plaintiff had been untimely in introducing its new theory of direct patent infringement, but then explained that summary judgment was independently warranted because the plaintiff’s claim of direct infringement was unsupported by the plaintiff’s own theory of the facts. The independent claims of US Patent No. 5,894,554 at issue were claims 20 and 46, each directed to “a machine readable medium having stored thereon data representing sequences of instructions” that caused a computer to perform certain recited steps. Agreeing with Microsoft’s argument that an expert report “introduced an entirely new damages theory based on an entirely new theory of direct infringement,” the court granted summary judgment on this theory of infringement because it was untimely. But more interestingly, the court further explained that it would have granted summary judgment of no direct patent infringement anyway. This was because there is no dispute that the Windows Server… Read More »Software’s Capability to Infringe Is Not Patent Infringement

Broad Estoppel for IPR Petitioner Asserting Prior Art in District Court

Uncertainty over IPR estoppel continues. In Douglas Dynamics, LLC v. Meyer Products LLC, the Western District of Wisconsin recently ruled that grounds of invalidity left out of a petition for inter partes review are estopped and cannot be raised in district court—contrary to the rulings of other district courts. Civ. No. 14-cv-886-jdp (W.D. Wis. Apr. 18, 2017). Before delving into the district court’s reasoning, some background: The America Invents act states that an IPR petitioner may not reassert a ground of invalidity—an allegedly anticipatory reference or obviousness combination—in court “that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2). The Federal Circuit interpreted this provision in Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016), holding that grounds of invalidity are not estopped if a petitioner includes them in a petition but the PTAB does not institute on those grounds. The Federal Circuit reasoned that the inter partes review begins upon institution, so noninstituted grounds cannot be raised during the IPR, as § 315 requires. Some district courts extended Shaw to grounds of invalidity not even included in the petition. One example, previously covered twice on… Read More »Broad Estoppel for IPR Petitioner Asserting Prior Art in District Court

CAFC: Handling Search Queries Is Not Patent-Eligible

A Federal Circuit Panel needed little analysis to determine that retrieving and displaying information is not patent-eligible subject matter, and affirmed a district court’s dismissal of a suit alleging infringement of claims of three patents.  West View Research, LLC v. Audi AG, Nos. 2016-1947, 2016-1948, 2016-1949, 2016-1951 (Fed. Cir. April 19, 2017) (non-precedential).  The patents, which shared a written description, were U.S. Patent Nos. 8,065,156; 8,290,778, 8,296,146, 8,719,038, and 8,781,839. Looking at claims identified as representative of the eighty-one asserted claims (claim 63 of the ’038 patent and claim 29 of the ’156 patent), the court thought that the claims “recite an abstract idea” because they “do not go beyond receiving or collecting data queries, analyzing the data query, retrieving and processing the information constituting a response to the initial data query, and generating a visual or audio response to the initial data query.” Was there an inventive concept beyond the abstract idea?  No, because even though the specification described many arrangements of hardware, they were all included generic components.  Applying the final kiss of death, the court explained that “[w]hether analyzed individually or as an ordered combination, the claims recite conventional elements at a high level of generality and… Read More »CAFC: Handling Search Queries Is Not Patent-Eligible

PTAB: Social Media Privacy Management Is Patent-Eligible

Claims to managing social media privacy survive the Mayo/Alice patent-eligibility test, says the PTAB, reversing an Examiner’s rejection under 35 U.S.C. § 101.  Ex parte Drake Sutton-Shearer, Appeal 2015-003977, Application 12/770,4711, Technology Center 3600 (PTAB Feb. 28, 2017).  Citing Federal Circuit decisions in Enfish, LLC v. Microsoft Corp. and Affinity Labs of Tex., LLC v. DIRECTV, LLC, the PTAB panel thought that the present claims improved the functioning of a computer, rather than simply implementing known practices in a conventional computer, and thus were more than an abstract idea under the familiar Mayo/Alice test. Pending independent claim 8 was taken as representative: A computer-implemented method of hosting a social network, wherein the method is implemented in a server configured to host webpages that define views of the social network, and to transmit the webpages to client computing platforms that request the webpages over a network, the server comprising one or more processors configured to execute one or more computer program modules, the method comprising: executing, on the one or more processors of the server, one or more computer program modules configured to assemble webpages defining views of a wall associated with a first entity; executing, on the one or more processors… Read More »PTAB: Social Media Privacy Management Is Patent-Eligible

No CBM Patent Review for Delivering Files to a Cell Phone

A patent directed to wirelessly “delivering an audio and/or visual media file” was not a covered business method patent, leading the USPTO’s Patent Trial and Appeal Board (PTAB) to deny a petition to institute a covered business method review.  FaceBook, Inc. v. Skky LLC, Case CBM2017-00006, US Patent No. 9,215,310 (PTAB April 11, 2017).  Interestingly, one tactic that allowed the patent owner to succeed in eluding the petition was its selective disclaimer of dependent claims that could have been construed as covered business method claims. The PTAB began by noting that the statutory definition of a covered business method as “operations used in the practice, administration, or management of a financial product or service” covered “a wide array of ‘monetary matters.’”  However, recently, the PTAB’s reviewing court clarified the scope of CBM review, and held that the Board’s reliance on phrases in the legislative history, i.e., whether the patent claims activities “incidental to” or “complementary to,” a financial activity as the legal standard to determine whether a patent is a CBM patent, was not in accordance with AIA § 18(d)(1). Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1379–82 (Fed. Cir. 2016); Secure Axcess, LLC v. PNC Bank Nat’l… Read More »No CBM Patent Review for Delivering Files to a Cell Phone

Common Interest Privilege Covers Non-Attorneys in Patent Case

The District of Massachusetts held that the common interest exception to third-party privilege waiver protected communications disclosed to a licensee and non-attorney expert. Crane Security Technologies, Inc. v.  Rolling Optics, AB, No. 14-12428-LTS (D. Mass. Feb 3, 20017).  Crane Security Techs. Inc sued Rolling Optics, AB for infringing patents related to anti-counterfeiting measures on currency, e.g., metallic colored strips with images that appear to move when the bill is moved. Rolling Optics filed a motion to compel documents allegedly related to  a violation of the on-sale bar of 35 U.S.C. § 102(b). The documents were shared with a potential licensee and a non-attorney investment banker. Magistrate Judge Kelley denied the motion to compel, declaring the documents privileged under the common-interest exception to third-party privilege waiver. Typically, disclosure of a document protected by attorney-client privilege to a third party waives the privilege. However, when the third party shares a substantially identical legal interest (i.e., a “common interest”) in the subject matter of a legal communication, the attorney-client privilege is not waived. Because the third party has a common legal interest in the privileged communication, courts will not waive attorney-client privilege with the communication is shared with that third party. Communications between a… Read More »Common Interest Privilege Covers Non-Attorneys in Patent Case

Statutory Disclaimer Moots Covered Business Method Review

When a patent owner disclaims patent claims for which another party petitions for Covered Business Method Review, the petition is moot.  The rule is pretty clear on this point: “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a),” and “[n]o post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42-207(e).  So when the Patent Trial and Appeal Board (PTAB) received a disclaimer with the patent owner’s preliminary response in Facebook, Inc. v. Skky LLC, Case CBM2017-00007, Patent 9,203,956 (PTAB April 10, 2017), the PTAB declined to institute a Covered Business Method Review proceeding. This rule be so clear and be so well-understood as to seem not be worth writing about – but sometimes it’s nice to have reminder that the system includes mechanisms to permit acknowledgement of practical reality and the exercise of common sense.  The PTAB’s reasoning in full was as follows: A patentee may “make disclaimer of any complete claim . . . . Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent.”  35 U.S.C. § 253(a).  When a patent owner files a statutory disclaimer… Read More »Statutory Disclaimer Moots Covered Business Method Review