June 2017

CAFC Affirms PTAB Construction of “Connected to a…Network”

Based on a plain and ordinary meaning – and the patentee’s clear statement in distinguishing prior art during prosecution – the Federal Circuit affirms PTAB finding of invalidity of patent claims predicted on a construction of “is connected to the computer network” as meaning “is connected to the computer network at the time that the query is transmitted to the server.”  Samsung Electronics Co., Ltd. v. Straight Path IP Group, Inc., No. 2016-2004, etc. (Fed. Cir. June 23, 2017) (nonprecedential). Claims of U.S. Patents Nos. 6,108,704; 6,009,469; and 6,131,121 had been held to be valid over prior art in Inter Partes Review (IPR) proceedings. A representative claim was directed to “establishing a point-to-point communication link” between first and second processes over the computer network. The above interpretation of “connected to the computer network” had been promulgated by the Federal Circuit in a prior proceeding. The party challenging the patents in that prior proceeding had argued that “is connected to the computer network” means “active and on-line at registration.” The court had rejected this proposed construction because there was no basis in the specification “for adopting a construction that contradicts the plain meaning of the claim language.” Moreover, the file history… Read More »CAFC Affirms PTAB Construction of “Connected to a…Network”

Pleading Patent Infringement: Claim Chart Required (Redux)?

For a plaintiff to state a cause of action for patent infringement, some courts hold that  general allegations – without an infringement claim chart – suffice.  Here are two examples of courts joining other courts at the other end of the spectrum.  In these cases, the respective courts dismissed complaints even after the plaintiff had provided an infringement claim chart because the claims charts were insufficient to meet the requirements of Ashcroft v. Iqbal, 556 U.S. 662 (2009) and Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007), as applied to complaints for patent infringement. In SIPCO, LLC v. Streetline, Inc., No. 16-830-RGA (D. Del. June 21, 2017), the plaintiff alleged patent infringement of U.S. Patent No. 8,908,842 (“Multi-functional general purpose transceivers and devices”).  The plaintiff filed a First Amended Complaint (FAC) after its first complaint was dismissed because it made “no attempt to connect anything in the patent claims to anything about any of the accused products.”  While the FAC did “describe[] the accused product in some detail” that detail was “only understandable (if at all) by a person of ordinary skill in the art.”  The court looked at the ’842 patent, and thought “it might be the case… Read More »Pleading Patent Infringement: Claim Chart Required (Redux)?

“Virtually Free From Interference” Not Indefinite Claim Term

In a precedential and split decision, the Federal Circuit reversed the International Trade Commission and found patent claims reciting the term “virtually free from interference” not indefinite. One-E-Way, Inc., v. International  Trade Commission, No. 2016-2105, (Fed. Cir. June 12, 2017) (Opinion by Judge Stoll, joined by Judge Wallach, Dissenting Opinion by Chief Judge Prost).  Applying the standard established by the U.S. Supreme Court in Nautilus v. Biosign Instruments, Inc., the majority determined that the specification and prosecution history would inform a person of ordinary skill in the art about the scope of the invention with reasonable certainty. One-E-Way filed a complaint with the International Trade Commission (ITC) accusing SONY Corporation, and multiple other defendants of infringing U.S. 7,865,258 and U.S. 8,131,391.The ‘258 and ‘391 patents share a common specification and disclose a wireless digital audio system to let people use wireless headphones privately, without interference, even when multiple people are using wireless headphones in the same space. (Abstract.) Multiple claims from the ‘258 and ‘391 patent included the claim term “virtually free from interference.” As an example, claim 8 from the ‘258 patent recites in part: a module adapted to reproduce said generated audio output, said audio having been wirelessly… Read More »“Virtually Free From Interference” Not Indefinite Claim Term

Patent-Eligibility Lessons from the PTAB (No. 2)

Want an example of a business method patent claim that survived the Alice patent-eligibility test?  Today’s second installment in our series summarizing Patent Trial and Appeal Board (PTAB) patent-eligibility decisions in ex parte appeals looks at two cases from Art Unit 3691, one of those art units in Tech Center 3600 whose subject matter is described as “Data Processing: Financial, Business Practice, Management, or Cost/Price Determination.”  In one of these cases, the PTAB reach the result you would expect, and affirmed the Examiner’s Section 101 rejection.  But in the other, the PTAB showed that sometimes claims can survive Alice. PTAB Reverses Section 101 Rejection: Ex parte Flitcroft (May 30, 2017) Art Unit 3691: Data Processing: Financial, Business Practice, Management, or Cost/Price Determination Summary of claimed subject matter: “The steps in claim 25 result in transmitting transaction data and notifying one of whether a transaction is acceptable.”  Here is claim 25 in full: A method for providing a payment cardholder with control over use of a payment card comprising: configuring, by a central processing system, a set of use limitations for usage of the payment card; receiving, via an interface device, a selection, by the payment cardholder, of one or more of… Read More »Patent-Eligibility Lessons from the PTAB (No. 2)

Digital Advertisement Display Patent Claims Survive Alice

Patent claims directed to displaying digital advertisements have survived a rule 12(b)(6) motion alleging patent-ineligibility under 35 USC § 101 and Alice Corp. Pty Ltd. v. CLS Bank Int’l., although the court did state that the defendant’s motion could be renewed after claim construction and discovery.  T-Rex Property, AB v. Cedar Fair, L.P., Civil No. 16-2018 (DWF/BRT) (D. Minn. June 2, 2017) Asserted claims of each of U.S. Patent Nos. RE39,470, 7,382,334, and 6,430,603, are directed to systems and methods for managing digital advertising displays. The defendant alleged that all of these claims were “directed to the abstract idea of collecting display instructions from a third party, organizing the display content at a central computer, and then displaying the content on conventional electronic displays.” According to the defendant, the claims were directed to the “fundamental economic practice” and “basic methods of organizing human activity” by reciting “advertising on a digital medium” and “notifying flight passengers of departures.” And, addressing the second prong of the Mayo/Alice test, the defendant alleged that these abstract concepts were implemented using conventional and generic computing functionality. But the plaintiff was able to convince the court that, at least construing all reasonable inferences in the plaintiff’s… Read More »Digital Advertisement Display Patent Claims Survive Alice

A Look at Patent Applications That Survived Alice

Achieving success in overcoming rejections under 35 U.S.C. § 101 and the Mayo/Alice patent-eligibility test is no different than achieving success in other areas of law – or life – draw lessons from those that have gone successfully before you.  In that spirit, the National Association of Patent Practitioners (NAPP) has put together a list of over 300 patents whose file histories mention the Supreme Court’s Alice decision.  (You have to join NAPP to get access.) A perusal of this list is a helpful reminder that the death of software and business methods patents has been somewhat (if not greatly) exaggerated.  To give you an idea, here is a selected sample of titles of patents that have issued in just the last few months – after Alice and the specter of Section 101 patent-ineligibility was raised during prosecution. Pat. No. Title 9569750 Utilizing a Social Network Account to Provide Additional Functionality to a Gaming Network Account 9575205 UNCERTAINTY-BASED FREQUENCY-SELECTED INVERSION OF ELECTROMAGNETIC GEOPHYSICAL DATA 9576431 Systems, Apparatuses and Methods for Enhancing Gaming Experiences 9581624 CORONA AVOIDANCE ELECTRIC POWER LINE MONITORING, COMMUNICATION AND RESPONSE SYSTEM 9582489 Orthographic Error Correction Using Phonetic Transcription 9582551 METHOD AND APPARATUS FOR COLLECTION, DISPLAY AND ANALYSIS… Read More »A Look at Patent Applications That Survived Alice

Effect of Assigning a Provisional Patent Application?

An assignment of “all inventions and improvements disclosed and described in said provisional application” was effective against later non-provisional applications claiming priority to the provisional application so long as there was no new matter.  Separation Design Group LLP Holdings, LLC v. Inogen, Inc., No. LA CV15-08323 JAK (JPRx) (C.D. Cal. June 1, 2017). The question of the effect of assigning the provisional application arose because the assignors in the contract at issue agreed “to sell, assign, transfer, and convey, and hereby do sell, assign, transfer, and convey” the provisional application.  There was also a clause covering possible future non-provisional applications, but that clause lacked the magic words “hereby do sell” to effect the future assignment. No matter, said the court: “it is logical that an assignment of all inventions disclosed in a provisional application is sufficient to transfer the entire chain of applications and patents that follow.”  Further, the patent here satisfied “[t]he only limitation, which . . . is that the patents not present any new matter.” Further, the inventors who had assigned their rights to the assignor in the above agreement had  executed employment agreements with the magic agreement to “hereby assign” rights arising during their employment.  Therefore,… Read More »Effect of Assigning a Provisional Patent Application?

Most (Not All) Customer Service Claims are Patent-Ineligible

Two customer service claims survived a patent-eligibility challenge under 35 USC § 101, and four did not, in 24/7 Customer Inc. v. LivePerson, Inc., Case No.15-cv-02897-JST (N.D. Cal. May 25, 2017). The court thus granted in part and denied in part a motion for judgment on the pleadings under FRCP 12(c).  Claims of U.S. Patent Nos. 6,205,209, 6,798,876, 6,970,553, 7,027,586, 7,215,757, and 7,751,552 were held invalid, but claims of U.S. Patent Nos. 8,737,599, and 9,077,804 survived the Alice/Mayo test and were held valid under Section 101. The invalid claims were held directed to unpatentable abstract ideas as follows (and in the order in which the court address them: US 6,798,876 “[T]he claim elements simply recite the abstract idea of routing a call to the best matched customer service agent.” US 7,027,586 US 7,751,552 Claims were directed to the abstract idea of “modality-based routing.” US 7,215,757 The claims are “directed to the abstract idea of tailoring a script to a particular customer to make a customer service call more effective.” US 6,970,553 “These claims are directed to the abstract idea of allowing a party to a phone call to select between voice call and electronic chat.” US 6,205,209 “These claims are… Read More »Most (Not All) Customer Service Claims are Patent-Ineligible

Encryption Patent Claims Pass Alice Test

Patent claims directed to encryption systems and methods, including allowing authorized users to access encrypted data, past patent-eligibility muster under 35 USC § 101, according to a court in the Eastern District of Virginia.  TecSec, Inc. v. Adobe Systems Inc., Civil Action No. 1:10-cv-l 15 (E.D. Va.  May 23, 2017.) Independent claims 1 and 8 of U.S. Patent No. 5,369,702 were agreed to be representative of claims of four patents-in-suit. Claim 1 recites: A method for providing multi-level multimedia security in a data network, comprising the steps of: A) accessing an object-oriented key manager; B) selecting an object to encrypt; C) selecting a label for the object; D) selecting an encryption algorithm; E) encrypting the object according to the encryption algorithm: F) labelling the encrypted object: G) reading the object label; H) determining access authorization based on the object label; and I) decrypting the object if access authorization is granted. And claim 8 recites: A system for providing multi-level multimedia security in a data network, comprising: A) digital logic means, the digital logic means comprising: 1) a system memory means for storing data; 2) an encryption algorithm module, comprising logic for converting unencrypted objects into encrypted objects, the encryption algorithm… Read More »Encryption Patent Claims Pass Alice Test

PTAB: Patent Claims Not Supported Under 35 U.S.C. § 112, ¶1

Providing an example of claimed subject matter lacking written description in a patent specification, the Patent Trial and Appeal Board (PTAB) found selected claims of two patents invalid under 35 U.S.C § 112, ¶1, in parallel Covered Business Method Review proceedings.  Walgreen Co. v. Advanced Marketing Systems, LLC, Case CBM2016-00013, Patent 8,538,805 B2 (PTAB May 24, 2017); Walgreen Co. v. Advanced Marketing Systems, LLC, Cases CBM2016-00014 and CBM2016-00015, Patent 8,370,199 B2. (PTAB May 24, 2017).  Claims in both patents were also found anticipated by prior art – after the requisite discussion showing that the patents qualified for CBM review; this post focuses on the Section 112 questions. The ’805 patent, entitled, “Promotion on Processor and Management System,” discloses “a specifically constructed multi-discount incentive production vehicle (MDV) distributed to select customers,” including “a specific multi-function code embedded in or associated with the vehicle, to identify the customer and permit tracking of the promotion through redemption.”  Claim 1 was the only challenged claim of the ’805 patent, and includes a recitation of a customer account associated with a customer identification code, the customer account comprising two or more of said discounts of the discount vehicle selected by a customer to be associated… Read More »PTAB: Patent Claims Not Supported Under 35 U.S.C. § 112, ¶1