May 2017

Patent-Eligibility Lessons from the PTAB (No. 1)

How is the USPTO’s Patent Trial and Appeal Board (PTAB) addressing patent-eligibility rejections under 35 U.S.C. § 101 in ex parte appeals?  What arguments work, and what arguments fail, when you are trying to persuade the PTAB judges that rejected claims pass the Mayo/Alice test?  How should you draft your claims to best condition them for an appeal to the PTAB? The answer to these questions is of ginormous relevance to patent prosecutors – even more relevant, in many aspects, that how the district courts, or even the Federal Circuit, are deciding Section 101 cases.  PTAB decisions in Inter Partes and Covered Business Method Review proceedings get a lot of attention these days.  PTAB decisions in appeals arising from patent-eligibility rejections in ex parte appeals, not so much.  Thus, today we begin what will be an occasional – but regular – series summarizing PTAB patent-eligibility decisions in ex parte appeals. On the theory that every good lawyer knows to look at cases reaching each possible result on an issue, below we summarize one case in which an Examiner’s Section 101 rejection was affirmed, and one case in which the Examiner’s Section 101 rejection was reversed.  Note that the USPTO classified… Read More »Patent-Eligibility Lessons from the PTAB (No. 1)

Inequitable Conduct: Prior Device Material to Method Claim?

A court has struck an inequitable conduct defense as inadequately pled because, said the court, the allegedly withheld prior art directed to a device was not material to a patent claim directed to a method for manufacturing a similar device. International Test Solutions, Inc. v. Mipox International Corporation, NO. 16-cv-00791-RS (N.D. Cal. May 16, 2017).  International Test Solutions (“ITS”) owns U.S. Patent No. 7,202,683 (‘683 patent), directed to manufacturing a cleaning device. Mipox alleged that ITS committed inequitable conduct during prosecution of the ‘683 patent. The substantive elements of inequitable conduct are (1) “an affirmative misrepresentation of a material fact, [failure] to disclose material information, or [submission of] false material information” and (2) “specific intent to deceive the” Patent and Trademark Office (“PTO”). Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327, n.3 (Fed. Cir. 2009). A reference is material if the PTO would not have allowed a patent claim had it been aware of the reference. Mipox identified ITS data sheets that disclosed cleaning devices composed of a cleaning pad layer attached to a polyester substrate, which is attached to an adhesive layer. Mipox argued that the ITS data sheets alone anticipate claim 1 of the ‘683 patent.… Read More »Inequitable Conduct: Prior Device Material to Method Claim?

IPR Estoppel Regarding Petitioned, Non-Instituted Claims

A Wisconsin district court held that 35 U.S.C. § 315(e) can estop an accused infringer from challenging a patent claim’s validity when based on a new invalidity theory, even with PTAB non-instituted claims. Douglas Dynamics, LLC. v. Meyer Prods. LLC, No. 14-cv-866-jdp (W.D. Wis. May 15, 2017). By way of background, Meyer Products petitioned the PTAB for inter partes review of claim 6 of Douglas Dynamics’ patent asserting it “is anticipated by Keeler.”  The PTAB declined to institute a review of claim 6 on that ground. In the district court action that followed, Meyer Products again asserted claim 6 was invalid, but this time for different reasons than those presented in its IPR petition.  Douglas Dynamics argued that Meyer Products was estopped from presenting its new theory under §315(e).  According to Douglas Dynamics, Meyer Products’ new theory should be treated as if it were a ground that could have been raised in its IPR petition but wasn’t, and therefore subject to estoppel.  The Federal Circuit previously held that  estoppel does not apply to non-instituted grounds.  Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016).  To hold otherwise, Douglas Dynamics argued, would open the door… Read More »IPR Estoppel Regarding Petitioned, Non-Instituted Claims

District Court Construes “Small Quantities” as a Definite Term

The term “small quantities of finely-divided liquid” was construed as being a definite term under §112, second paragraph, in the Markman order in Ecoservices, LLC v. Certified Aviation Services, LLC (CDCA; Docket CV 16-01824-RSWL-SPx). The claim at issue is claim 1 of US Patent 5,868,860, which reads as follows: 1. A method of washing turbine compressors, which operate with large quantities of air and therefore become internally soiled by and coated with contaminants carried by the air, therewith giving rise to greater fuel consumption, higher temperatures and higher emissions with substantially impaired efficiency as a result thereof, wherein small quantities of finely-divided liquid are sprayed onto and through the turbine compressors, characterized by running the turbine compressors and spraying the finely-divided liquid quantities through at least one nozzle towards and through the turbine compressor at an overpressure within the range of 50-80 bars and at a liquid particle size in the range of 250-120 μm, and with a total volumetric flow through the nozzle or nozzles within the range of 0.5-60 l/min., and with a liquid particle velocity of 100-126 m/sec., whereby the liquid is finely-divided to a degree at which the particles of liquid will follow the same routes… Read More »District Court Construes “Small Quantities” as a Definite Term

Creating “Member” Webpages Held Not Patent-Eligible

Patent claims directed to allowing “Internet users to communicate with members of a group” via “designated webpages” are not patent-eligible under 35 USC § 101, said the court in EveryMD.com LLC v. Facebook Inc., No. CV 16-06473-AB (JEMx) (N.D. Cal. May 10, 2017).  Thus, the court granted the defendant’s motion for judgment on the pleadings under FRCP 12(c), dismissing a complaint for infringement of U.S. Patent Nos. 9,137,192 and 8,504,631. The plaintiff’s own description of the claimed invention probably put the writing on the wall with respect to patent-eligibility: this invention could serve groups of healthcare professionals by providing a searchable website through which potential patients, or “users” as described in the specification, could locate and communicate with doctors, or “recipients,” even if the professional is not active on the Internet. That is, a doctor not active on the Internet could nonetheless have his or her own “homepage” with contact information and the like. The court first rejected the plaintiff’s argument that the patent-eligibility question should be delayed until after claim construction. The claims here, the court thought, were straightforward and patent-eligibility would be unaffected by claim construction. Under the first step of the Alice/Mayo test claims of both patents… Read More »Creating “Member” Webpages Held Not Patent-Eligible

Are Patient Monitoring Claims Patent-Eligible?

Addressing a defendant’s motion for judgment on the pleadings, a court has held that some patent claims directed to monitoring and analyzing patient data cannot be deemed patent-ineligible at the pleading stage, while other asserted claims are patent-ineligible as a matter of law.  CardioNet, LLC v. InfoBionic, Inc., No. 1:15-cv-11803-IT (D. Mass. May 4, 2017).  The patents-in-suit are U.S. Patent Nos. RE43,767, 7,212,850, 7,907,996 and 7,099,715. Considering each of the patents in turn, the court began with the ’767 patent (“Control of Data Transmission between a Remote Monitoring Unit and a Central Unit”).  Asserted claim 9 recited “steps of providing a monitoring apparatus” that provided data from a remote patient monitoring unit to a central unit. The claims represented no “specific improvement to computer activities,” but rather “is directed to the abstract idea of gathering a limited set of patient data and then determining whether to gather additional data.” However, it was possible that “when read as an ordered combination,” claim 9 recited “an inventive concept,” because the claim “purports to improve upon prior art in the mobile cardiac telemetry field.” The ’850 and ’996 patents, both entitled “System and Method for Processing and Presenting Arrhythmia Information to Facilitate Heart Arrhythmia… Read More »Are Patient Monitoring Claims Patent-Eligible?

Click-Fraud Prevention Patent-Ineligible in CBM Review

Two patents directed to “detect[ing] invalid and fraudulent impressions and clicks in web-based advertisement systems” are Covered Business Method Patents under Section 18 of the America Invents Act, and moreover are patent-ineligible under 35 U.S.C. § 101, the PTAB has held in two companion cases.  Google, Inc. v. Zuilli, Case CBM2016-00022, Patent 8,326,763 B2 (PTAB May 5, 2017); Google, Inc. v. Zuilli, Case CBM2016-00021, Patent 7,953,667 (PTAB May 5, 2017).  The PTAB’s decision came after it had ordered additional briefing in light of Unwired Planet, LLC v. Google Inc., 841 F. 3d 1376 (Fed. Cir. 2016), in which the Federal Circuit had explained limitations on the scope of covered business method review. Most of the following is drawn from the PTAB’s opinion concerning the ’667 patent, but the analyses in the respective opinions were very similar. First, the PTAB had to decide whether the patents were “covered business method patents,” i.e., directed to a financial product or service, and not to a technological invention.  Claim 1 of both patents recites “[a] method for detecting fraudulent activity in a pay-per-click system.” The PTAB found that “a pay-per-click system is itself a financial product and provides a financial service.”  At the risk of over-simplifying,… Read More »Click-Fraud Prevention Patent-Ineligible in CBM Review

CAFC Says Internet Message Publishing Not Patent-Eligible

The Federal Circuit has found patent-ineligible claims of five “patents [that] are generally directed to allowing ‘any person or organization to easily publish a message on the Internet.’” – internet message publishing. EasyWeb Innovations LLC v. Twitter Inc., No. 2016-2066 (May 12, 2017) (opinion by Judge Hughes; non-precedential). The patents at issue are U.S. Patent Nos. 7,032,030; 7,596,606; 7,685,247; 7,689,658; and 7,698,372. Claim 1 of the ’247 patent was considered as representative for purposes of applying the Mayo/Alice patent-eligibility test: A message publishing system (MPS) operative to process a message from a sender in a first format, comprising: a central processor; at least one sender account; at least one storage area configured to store at least a first portion of the message; and software executing in the central processor to configure the processor so as to: identify the sender of the message as an authorized sender based on information associated with the message in comparison to data in the sender account, wherein the identification is dependent upon the first format; convert at least a second portion of the message from the first format to a second format; and publish the converted second portion of the message so as to be viewable… Read More »CAFC Says Internet Message Publishing Not Patent-Eligible

PTAB Finds Reasoning for 103 Rejection Insufficient in Ex Parte Appeal

Citing KSR Inti Co. v. Teleflex Inc, the PTAB in Ex Parte Mattisson (Appeal No. 2016-004484, April 14, 2017) agreed with the ex parte Appellants and reversed the Examiner’s rejection based on insufficient rationale to support an obviousness rejection. Specifically, the PTAB held that the Examiner’s reasoning that “a person of ordinary skill would not be discouraged“ from the combination was insufficient. The patent application is related to the field of radio communications, and specifically, was drawn toward a passive mixer for minimizing signal distortion. The independent claim was rejected as being obvious over the combination of two references. The Examiner argued that the primary reference teaches several elements of the independent claim, but admitted that the primary reference fails to teach a “cancellation component” and a “cancellation signal.” The Examiner relies on the teaching of a secondary reference for such a teaching. The Appellant argued that the primary reference teaches unbiased terminals, but that the secondary reference teaches a method that requires biasing. Based on this distinction, the Appellant argued that the primary reference teaches away from such a modification. In the Final Office Action, the Examiner concluded, [H]aving the disclosure of [the secondary reference], a person of ordinary skill… Read More »PTAB Finds Reasoning for 103 Rejection Insufficient in Ex Parte Appeal

CAFC Vacates PTAB Decision Based on Claim Interpretation of “Aseptic”

The Federal Circuit, in Nestle USA v. Steuben Foods, vacated a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) for an unreasonably broad interpretation of the term “aseptic.” Notably, where the patent refers to “FDA level of aseptic” for aseptic packaging, the proper interpretation should be focused on FDA regulations specifically on aseptic packaging, and not to “any applicable United States FDA standard.” Petitioner Nestle petitioned for IPR of claims 18-20 of U.S. Patent No. 6,945,013, owned by Respondent Steuben Foods. The claims cover methods for automatically aseptically bottling aseptically sterilized foodstuffs. Respondent argued that “FDA level of aseptic” must include all FDA standards, with which the PTAB agreed. As a result, the PTAB held that claims 18-20 were not obvious. Petitioner then appealed to the Federal Circuit. The Court, reviewing de novo, held that the specification explicitly defined the term and that the broadest reasonable interpretation must be bound by this explicit definition. The specification defined “aseptic” as the United States “FDA level of aseptic.” Furthermore, the specification noted that prior art systems failed to provide aseptic filler complying with FDA standards “for labeling a packaged product as ‘aseptic.’” That is, according… Read More »CAFC Vacates PTAB Decision Based on Claim Interpretation of “Aseptic”