October 2017

Where to Draw the Patent-Eligibility Line?

There is no surprise, in light of the vast body of case law questioning business method patent claims since the 2014 Alice case, that the Federal Circuit has affirmed a district court’s grant of a motion for judgment on the pleadings based on the patent-ineligibility, under 35 U.S.C. § 101, of claims directed to handling payment for rides in a mass transit system.  Smart Systems Innovations, LLC v. Chicago Transit Authority, No. 2016-1233 (October 18, 2017) (precedential).  And yet, differences amongst the three-judge panel in this case (Judges Reyna, Wallach, and Linn) show that one certainly cannot yet predict with much accuracy, over three years after Alice was decided, how to apply Alice to patent-eligibility questions. Especially where business methods are involved, one can have little confidence that any random judge will analyze patent claims in a manner consistent with some other judge. Here, while the panel was unanimous that applicable caselaw mandated patent-ineligibility of claims of U.S. Patent Nos., 8,505,816, and 8,662,390, Judge Linn dissented from the majority holding that claims of U.S. Patent Nos. 7,566,003 and 7,568,617 are patent-ineligible.  In so doing, he made some interesting comments about the state of the law. The Majority Opinion The district… Read More »Where to Draw the Patent-Eligibility Line?

Routine Steps Fail to Transform Abstract Idea

Claims that fail to explicitly recite a specific way to solve a specific technological problem are at risk under §101, especially when the underlying technology is known and only implements routine steps. Such claims fail to transform the abstract idea into patent eligible subject matter. The Federal Circuit recently affirmed a ruling out of the Central District of California that the claims of seven asserted patents are directed to ineligible subject matter under 35 U.S.C. § 101, in part because the patent specifications admitted that certain actions were “routine” and performed by well-known technology. The patents at issue are US7,814,032, US7,818,268, and US8,073,787 (the “Intelligent Mail Bar- code” patents), US8,260,629 and US8,429,093 (the “QR Code” patents), and US8,910,860 and US9,105,002 (the “Personalized URL” patents). As explained in the opinion, All the patents involve methods whereby a sender affixes an identifier on the outer surface of a mail object (e.g. envelope or package) before the mail object is sent. Computers and networks are used to communicate the information about the mail object’s contents and its sender after the mail object is delivered. The Federal Circuit identified representative claims from each patent and applied the two-part test set forth in Alice. The… Read More »Routine Steps Fail to Transform Abstract Idea

Markman Order Broadens Claim Construction with Claim Differentiation

The Court construed “slidably interconnected” to include both direct and indirect connection based on claim differentiation in the Markman order in National Products, Inc. v. Arkon Resources, Inc. (Case No. C15-1984JLR, WDWA, Sept. 30, 2017) A representative claim is: 1. A mounting platform, comprising: first and second frame members being slidably interconnected along a first direction, at least one of the first and second frame members including a device mounting surface positioned relative to the first direction; one or more clamping members coupled to each of the first and second frame members, each of the clamping members including: a base portion structured for mounting on a surface of one of the first and second frame members, a clamping surface being spaced above and inclined toward the device mounting surface, and a jaw portion extending from the base portion at an angle between approximately 120 ions and 150 degrees, the clamping surface being formed as a facet of the jaw portion; and a biasing member coupled between the first and second frame members for biasing the first and second frame members toward one another along the first direction. The order stated that the Defendant argued that “slideably interconnected” requires a direct connection,… Read More »Markman Order Broadens Claim Construction with Claim Differentiation

Description of “The Invention” in Specification Limits Claim Construction

In the Claim Construction Order (dated September 18, 2017) in Gutterglove, Inc. v. American Die and Rollforming (Case 2:16-cf-02408-WHO, EDCA), the Court read a limitation from the specification into the claim construction of the claim element “corrugated with ridges” to match what was described as “this invention” in the patent specification.  Further, the Court held that a claim construction based on the specification’s description of the “this invention” also nullified the Doctrine of Claim Differentiation. This case is another reminder that a description of the “invention” should generally be avoided. Claims 1 and 2 of US9,021,747 read as follows: 1. A leaf preclusion system for a roof gutter having a gutter lip for keeping leaves and other debris out of the roof gutter while allowing water to pass thereinto, comprising: a sheet of fine mesh material; said sheet of fine mesh material having an upper edge adapted to be located above a lower edge and with said sheet of fine mesh material overlying the roof gutter; said sheet of fine mesh material being corrugated with ridges extending at least part of the way from said upper edge to said lower edge and wherein said lower edge being adjacent the gutter… Read More »Description of “The Invention” in Specification Limits Claim Construction

No Inequitable Conduct: Duty to Disclose Only Goes So Far

A patent prosecutor did not have a duty to disclose that a cited prior art reference inherently disclosed a claimed feature where the examiner misunderstood the reference as failing to disclose the feature. On this basis, a motion to strike in inequitable conduct defense relating to the reference was granted.  Nevro Corp. v. Boston Scientific Corporation, No. 16-cv-06830-VC (N.D. Cal. Oct. 4, 2017). During prosecution, the patent examiner had made obviousness rejections of claim 58 under 35 USC § 103 based on the “Fang” reference, which the inventor both owned and had disclosed. After the patent prosecutor pointed out the subject patent application’s common ownership with the Fang reference, the examiner withdrew the obviousness rejection and allowed claim 58. The defendant here alleged that Fang inherently disclosed “pulse width,” the recited feature of claim 58 that the Examiner had said was missing from Fang. According to defendant, this would have transformed Fang into a 35 USC § 102 anticipation reference, which could not have been disqualified based on the common ownership. Moreover, argued the defendant although disclosure of prior art is usually enough to avoid a charge of inequitable conduct, when the patent examiner made clear that he misunderstood the scope… Read More »No Inequitable Conduct: Duty to Disclose Only Goes So Far

Improper Broadest Reasonable Interpretation Led to Finding of Nonobviousness

In Owens Corning v. Fast Felt Corporation (decided October 11, 2017), the Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board’s finding that obviousness was not proven in an inter parte review was founded on an improper interpretation of a claim element.  The CAFC interpreted the claim element more broadly and concluded that the claim was obvious when the prior art was considered in light of the new interpretation.  The patent at issue is US8,137,757, and a representative claim is as follows: 1. A method of making a roofing or building cover material, which comprises treating an extended length of substrate, comprising the steps of:  depositing tab material onto the surface of said roofing or building cover material at a plurality of nail tabs from a lamination roll, said tab material bonding to the surface of said roofing or building cover material by pressure between said roll and said surface. The Board provided a broadest reasonable interpretation for “roofing or building cover material,” and it is clear from the Decision that the broadest reasonable interpretation required that the “roofing or building cover material” must be asphalt saturated at some point, i.e., either at the time the tab material is deposited, or… Read More »Improper Broadest Reasonable Interpretation Led to Finding of Nonobviousness

Technical Environment Requires Detailed Tailoring

How much detail does patent claim language require to describe a technical solution to a technical problem to meet the patent-eligibility requirements of the Alice/Mayo test and 35 U.S.C. § 101? At the very least, enough to tailor the claims to the technical environment beyond generic components. In Mantis Communications v. Baskin-Robbins Franchising LLC, No. 2:17-CV-00328 (E.D. Tex. Sep. 15, 2017), the an Eastern District of Texas magistrate judge recommended granting a motion to dismiss because a system for directing text messages over communications networks with sales offers is not patent-eligible under Section 101. Plaintiff owns patents related to a “message application server” that communicates with different wireless carriers to send messages to mobile device owners, the messages including offers for sale for products from various companies. Defendant moved to dismiss the patent infringement lawsuit, arguing that the claims of the asserted patents are ineligible under Section 101. Plaintiff argued that the claims satisfied Section 101 because the claims were directed to a technical problem in mobile device technology, the problem of linking mobile devices to a mass communication server across different wireless carriers. Following the two-step Alice test, the court rejected this argument, holding that the claims were directed… Read More »Technical Environment Requires Detailed Tailoring

Telephone Call Processing Claims Patent-Ineligible

Various claims of two patents covering telephone call processing were found to be directed to respective patent-ineligible abstract ideas: “sequentially dialing a list of telephone numbers to overcome a busy signal,” and retrieving stored data from a “database in response to the initiation of a phone call, and inserting at least a portion of that data in the already-existing callerID field.” Because the claims did not recite a significant additional “inventive concept,” the court granted a motion for judgment on the pleadings based on patent-ineligibility under 35 USC § 101 and the Alice/Mayo test in BroadSoft, Inc. v. CallWave Communications, LLC, No. 13-711-RGA  (D. Del. Oct. 1, 2017). There were two categories of claims at issue in the patents-in-suit (US 8,351,591 and US 7,822,188): the “sequential dialing claims” and the “single number outcall claims.” Independent claim 40 of the ’188 patent was a sequential dialing claim. The court characterized this claim as directed to organizing human activity: accessing stored information when prompted by a user’s incoming call, and executing an automated response according to stored instructions provided in advance by a subscriber. Further, dependent claim 41 provided the further limitation of specifying “parameters for the ‘Internet protocol proxy.’” But this… Read More »Telephone Call Processing Claims Patent-Ineligible

Pleading Joint Patent Infringement

Pleading joint patent infringement of a method claim requires alleging that one defendant controlled the action of a third party or that two parties were engaged in a joint venture. In Sonrai System, LLC v. AMCS Group Inc., No. 16 C 9404 (N.D. Ill. E. Div., Sept. 27, 2017), the District Court dismissed Plaintiffs’ claim of direct infringement for failing to plead sufficient facts to support joint patent infringement. Sonrai owns US Patents 8,146,798 and8,714,440, which are directed toward a method that uses RFID tags to check for various permits associated with waste receptacles. ACMS sold RFID technology for allegedly practicing the patented method to Lakeshore Recycling Systems, LLC, a co-defendant in the case. Sonrai accused ACMS and Lakeshore of patent infringement, alleging that the combined actions of ACMS and Lakeshore constituted direct patent infringement. Lakeshore was dismissed from the case by agreement of the parties. ACMS moved to dismiss the claims against it, alleging insufficient pleadings by Sonrai. Joint patent infringement of a method claim requires “either (1) the alleged infringer directs or controls others’ performance of the necessary steps, or (2) the alleged infringer is engaged in a ‘joint enterprise’ with others to perform the steps.” Lyda v. CBS Corp.,… Read More »Pleading Joint Patent Infringement

Inter Partes Review Estoppel Extends to Non-Petitioned Grounds

Hewlett Packard Enterprises (“HP”), accused of infringing U.S. Patent No. 6,218,930 owned by Network-1 Technologies, Inc. (“Network-1”), was recently estopped from relying on certain references and combinations thereof to support arguments of patent claim invalidity.  Magistrate Judge K. Nicole Mitchell recommended granting a motion for Summary Judgment that HP was estopped under 35 U.S.C. §315(e)(2) from asserting the obviousness of the disputed claims over non-petitioned grounds that Judge Mitchell believed HP reasonably could have raised during an earlier inter partes review (“IPR”). Network-1 Technologies, Inc. v. Alcatel-Lucent USA, Inc., et al., C.A. No. 6:11-cv-492-RWS-KNM (E.D. Texas September 26, 2017). Network-1 filed suit against HP and several other Defendants on September 15, 2011.  HP served Network-1 with Invalidity Contentions, challenging the asserted claims as obvious or anticipated by four patent references. HP also joined with several of the other Defendants in filing an inter partes review petition.  At the request of the Defendants, the infringement trial was stayed pending the outcome of the inter partes review.  The inter partes review petition cited four patent references with only one of HP’s Invalidity Contention references being included.  Responsive to the inter partes review petition, the PTAB granted review on two grounds:  1. anticipation by… Read More »Inter Partes Review Estoppel Extends to Non-Petitioned Grounds