July 2017

Alice Dismissal No Basis for Exceptional Case, Attorney Fees

Having brought a lawsuit for a patent who claims are found invalid under 35 U.S.C. § 101, and an Alice dismissal, is the plaintiff’s conduct “objectively baseless” justifying an award of attorney fees under 35 U.S.C. § 285?  Given the unpredictability of how a court will rule on the question of patent-ineligibility, it is unsurprising that, especially in a close case, a court would decline to find an “exceptional case,” which is exactly what the court did in SungKyunKwan University v. LMI Technologies USA Inc., No. 3-16-cv-06966 (N.D. Cal., July 19, 2017). The court had granted a motion to dismiss after a finding of patent-ineligibility of claims of U.S. Patent No. 7,957,639B2 (“Method and system for determining optimal exposure of structured light based 3D camera”). Looking at the only independent claim of the ’639 patent in light of the murky patent-eligibility caselaw, one can see how the plaintiff might have though it could prevail on an argument that the claim was directed to patent-eligible technology. Claim 1 recites: A method for determining an optimal exposure of a structured light based three dimensional (3D) camera system including a projecting means for illuminating a predetermined pattern on a target object, an image… Read More »Alice Dismissal No Basis for Exceptional Case, Attorney Fees

Federal Circuit: District Court Should Have Construed Claims

The Federal Circuit in Nobelbiz v. Global Connect recently reversed a district court for relying on the “plain and ordinary meaning” of claim terms rather than offering construction because the parties disputed the scope of the claim language, not merely the meaning. The disputed claim language comes from two related patents, U.S. Patent Nos. 8,135,122 and 8,565,399, pertaining to caller ID systems. The disputed claim terms were “modify caller identification data,” “replacement telephone number,” and “outbound call.” Nobelbiz, as the plaintiff, provided a broader interpretation of the first term and argued that the second and third terms did not need claim construction. Global Connect, as the defendant, offered constructions for all three: For “replacement telephone number,” NobelBiz requested the construction: “A number other than the call originator system telephone number. The Defendants requested the construction: “A telephone number different from the original telephone number in the caller ID data that is substituted in place of the original telephone number in the caller ID data.” For the “modify caller identification data” term, NobelBiz argued that no construction was needed, while the Defendants requested the construction: “Chang[ing] the caller ID data by replacing the original telephone number in the caller ID data… Read More »Federal Circuit: District Court Should Have Construed Claims

District Court Construction of “High Quality of Service Connection”

Iridescent Networks, Inc. v. AT&T Mobility, LLC (6:16-CF-01003-RWS, EDTX, Memorandum Opinion and Order dated July 18, 2017) provides an example of prosecution history that limits the construction of the claims.  In an interesting facet of this case, the remarks of the Amendment provided a definition of “high quality of service connection,” and then immediately attempted to soften that definition as merely being an application-based example.  The court, nonetheless, relied on that intrinsic evidence to arrive at their claim construction. The case involves US8,036,119.  The parties agreed that the term “quality of service” is a term of art understood by a PHOSITA, but that the term “high quality of service” is not a known term of art, but rather a term coined by the patentee.  The parties proposed the following constructions: The court noted that, in response to an Office Action, the applicant stated: “As illustrated by the boxed set of applications on the left side of Fig. 3, high QoS (quality of service) may be viewed in the present application as having speeds varying from approximately 1–300 megabits per second, packet loss requirements that are typically about 10-5, and latency requirements that are typically less than one second. These are… Read More »District Court Construction of “High Quality of Service Connection”

E.D. Texas Mag. Payne: Bandwidth Allocation Patent-Eligible

Claims of a patent directed to “management of bandwidth allocation in a network server” were not directed to an abstract idea, and not invalid under 35 U.S.C. § 101, held Magistrate Judge Payne in a report and recommendation on defendants’ motion to dismiss.  Preferential Networks IP, LLC v. AT&T Mobility, LLC, No. 2:16-cv-01374-JRG-RSP (E.D. Texas  July 15, 2017). Representative claim 1 of U.S. Patent No. 8,577,994 recites: A method, comprising: receiving, at a first computer system, information indicating a request to transfer data to a second computer system; the first computer system determining a quantity of other data previously transferred to the second computer system; and in response to said determining, the first computer system throttling transfer of the data to the second computer system, wherein the throttling is based at least in part on the determined quantity of other data previously transferred to the second computer system and comprises: transmitting, to the second computer system, a first portion of the requested data at a first effective rate; and determining to delay a transmission of a second, subsequent portion of the requested data to the second computer system in order to cause the second portion to be transmitted to the… Read More »E.D. Texas Mag. Payne: Bandwidth Allocation Patent-Eligible

Eastern District of Texas Clarifies Distinction Between Claim Interpretation and Factual Findings

The Court in Dynocom Industries v. Mainline Automotive Equipment (Docket CV 00553-JRG-RSP, EDTX, Memorandum Opinion and Order dated July 15, 2017) found that a proper claim construction of “co-axially rotate” is “rotate on a common axis.”  The plaintiff advanced a broader construction of the term to account for “some degree of tolerance.”  However, the court noted that such an issue is a question of fact that can be considered after the claims are properly construed. The claim at issue was claim 1 of US Patent 8,505,374, which reads: 1. A portable on vehicle dynamometer for determining power output from a drive shaft, comprising: a rigid frame; a load shaft rotatably coupled to said rigid frame; an eddy current brake having a stator connected to said rigid frame, and a rotor connected to said load shaft; a hub coupling secured to a first end of said load shaft and connected directly to the drive shaft for transferring power to the load shaft, wherein said hub coupling, said drive shaft and said load shaft co-axially rotate; said rigid frame having two outwardly extending support arms, and arm locks which secure said outwardly extending support arms in fixed positions; support feet assemblies mounting… Read More »Eastern District of Texas Clarifies Distinction Between Claim Interpretation and Factual Findings

Lack of Written Description Support Leads CAFC to Invalidate

In TransPerfect Global, Inc. v. Joseph Matal, the CAFC affirmed the Board’s PGR rejection of the claims of US6,857,022 as invalid for lack of written description support.  The ‘022 patent discloses a method of obtaining a translation of a website that includes both text and at least one hyperlink.  The detailed description discloses that, after the text and hyperlink of the website are translated, if one clicks on the translated hyperlink, they will be directed to a translation of the target of the translated hyperlink.  However, based on the language of claim 1, the CAFC affirmed the Board’s interpretation that claim 1 requires, after obtaining a translation of the website, clicking an untranslated hyperlink.  Since the detailed description does not disclose this, but instead discloses clicking a translated hyperlink to get to the translation of the hyperlink target, the CAFC affirmed the Board’s rejection of the claims as invalid for lack of written description support. Claim 1 (presented below) is directed toward a method of ordering a translation of a webpage that includes text and “one or more hyperlinks.”  As can be seen in claim 1 below, the term “one or more hyperlinks” refers to the webpage before translation.  Claim 1… Read More »Lack of Written Description Support Leads CAFC to Invalidate

CAFC: PTAB Claim Construction Violates Boundaries of BRI

In IPCom GMBG & Co. v. HTC Corp. (Fed Cir. 2017), the Federal Circuit vacated and remanded a finding of obviousness in an Inter Partes Reexamination because the PTAB’s claim construction violates boundaries of BRI of the claims.  IPCom GMBG & Co. v. HTC Corp. (Fed Cir. 2017).  The court relied on In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc), which stated that 35 U.S.C. § 112 ¶ 6 (pre-AIA) “sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of ‘reasonable interpretation,’” and “the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.”  Id. at 1194-95. IPCom is the owner of U.S. Patent No. 6,879,830 (‘830 patent), “which describes and claims a method and system for handing over a mobile phone call from one base station to another base station.”  Slip op. at 2.  Independent claims 1, 18, 30, and 34 of the ‘830 patent contain “an arrangement for reactivating the link with the first base station” – a feature designed to reduce the chance of interrupted service when a mobile phone must perform a handover. After IPCom sued HTC… Read More »CAFC: PTAB Claim Construction Violates Boundaries of BRI

Federal Circuit Reverses E.D. Texas on Exceptional Case

Reversing a decision from the Eastern District of Texas, the Federal Circuit held that AdjustaCam unreasonably litigated its Camera Clip patent (U.S. Pat. No. 5,855,343) and that its case was objectively baseless—holding the case to be exceptional under 35 U.S.C. § 285.  AdjustaCam LLC. v. Newegg, Inc., No. o.   6:10-cv-00329-JRG (E.D. Texas July 5, 2017). AdjustaCam sued Newegg and dozens of other defendants for infringement of its ‘343 patent.  While it voluntarily dismissed many defendants early in litigation, it continued to litigate against Newegg (beyond a Markman order (April 2012) and extended expert discovery).  The district court determined that Newegg’s accused products used a ball-and-socket joint—facilitating rotation about multiple axes, and, per the Markman hearing, that AdjustaCam’s claims describe “rotatably attached” objects as rotating over a single axis.  Claim 1 is reproduced below with emphasis added. Apparatus for supporting a camera, having a lens, on any generally horizontal, substantially planar surface and on an object having a first sur-face and a second surface and an edge intersecting the first surface and the second surface, comprising: a hinge member adapted to be rotatably attached to the camera, said camera, when the hinge member is so attached, rotating, about a first axis… Read More »Federal Circuit Reverses E.D. Texas on Exceptional Case

Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

The PTAB held that the claims in Ex parte Quimby, Appeal No. 2016-004681 (June 2, 2017) were directed toward unpatentable subject matter.  Of particular interest given the claim language, the Appellant was unsuccessful with arguments that 1) the claims do not disproportionately tie up the use of any underlying idea, 2) the claim provides an improvement in the technological field of mass spectrometry, and, 3) with respect to dependent claim 3, that the claims tied the mathematical formula with technological field of mass spectrometry analyte detection. (citing Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010)). The independent claim is as follows: A method for selecting a target ion and a plurality of qualifier ions for identifying an analyte by mass spectrometry, the method comprising: (a) obtaining a reference spectrum for the analyte; (b) identifying a retention time window for the reference spectrum; (c) extracting a matrix spectrum over the retention time window; (d) measuring the abundance of each of a plurality of matrix ions in the matrix spectrum to produce a noise value at each matrix ion; (e) calculating a signal-to-noise value for each of a plurality of analyte ions by dividing the abundance of… Read More »Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

PTAB: No Technical Solution = Covered Business Method Patent

Patent claims directed to an electronic inventory patent recited a covered business method, and moreover are patent-ineligible, said the PTAB in a Final Written Decision in a Covered Business Method (CBM) proceeding.  Life Technologies Corporation v. Unisone Strategic IP, Inc., Case CBM2016-00025; Patent 6,996,538 B2/C1 (PTAB June 23, 2017).  This case will be interesting to many in part because of the Patent Owner’s unsuccessful attempt to contest the PTAB’s subject matter jurisdiction based on its failure to submit responses or participate in the proceedings as called for in the Scheduling Order.  But I write about it because the PTAB’s analysis of the validity question under 35 U.S.C. § 101 is an exemplar of how the problem-solution approach has taken over patent-eligibility analysis, albeit in this case in the context of determining whether claims qualify for Covered Business Method Review under § 18 of the Leahy-Smith America Invents Act (“AIA”). Representative Claim 19 of the ’538 patent recites: A method for inventory management, comprising the steps of: (a) collecting and storing, on one or more databases having client software, at least the following data: (1) customer inventory information (2) inventory and cost information for a plurality of manufacturers, suppliers, or distributors,… Read More »PTAB: No Technical Solution = Covered Business Method Patent