November 2017

Absolute or Equitable Intervening Rights: It Matters

A Delaware District Court grants-in-part and denies-in-part patentee’s motion for summary judgment regarding accused infringer’s defense of intervening rights.  Sonos, Inc. v. D&M Holdings, Inc., No. 14-1330-WCB (D. Del. Nov 7, 2017). The owner of a patent that survives reexamination “is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of the reexamined claims if the original and the reexamined claims are substantially identical.” Convolve, Inc. v. Compaq Comput. Corp., 812 F.3d 1313, 1322-23 (Fed. Cir. 2016).  This case pertains to an issue of law not squarely addressed by the Federal Circuit—i.e., whether 35 U.S.C. § 252, second paragraph, first sentence extends to process claims (or only to product claims).  First, a little background… The first sentence of 35 U.S.C. § 252, second paragraph commonly is referred to as a defense of absolute intervening rights. This defense allows a party whose products infringe a reissued or reexamined patent to continue to use or sell specific products that were made, purchased, or used before the reissuance or reexamination, if the asserted claim was not in the original patent, so long as the accused infringer began its infringing activity before… Read More »Absolute or Equitable Intervening Rights: It Matters

Oral Arguments in Oil States Energy Services v. Greene’s Energy Group: IPRs Look Safe

Yesterday, the Supreme Court heard oral arguments in Oil States Energy Services v. Greene’s Energy Group. The case centers on whether inter partes reviews are constitutional, and the Justices didn’t seem inclined to strike them down. Oil States appealed an IPR decision by the Patent Trial and Appeal Board invalidating its patent to the Federal Circuit and then to the Court. The basis? IPRs violate the Constitution, namely, Article III and the Seventh Amendment. Article III reserves judicial power to the judicial branch, and, according to Oil States, IPRs count as a judicial power. Furthermore, the Seventh Amendment requires cases at common law, which actions to invalidate patents supposedly are, to be heard by juries. (For more on the background and the parties’ briefing, check out my webinar from earlier this month.) The arguments focused solely on Article III, with the questioning kicking off about the possible broader effects of striking down IPRs. Justices Ginsburg and Sotomayor thought that the Patent and Trademark Office should be able to correct its mistakes and wondered whether it could still do so if IPRs were struck down. Allyson Ho, the counsel for petitioner Oil States, responded that reexaminations by the PTO were “fundamentally… Read More »Oral Arguments in Oil States Energy Services v. Greene’s Energy Group: IPRs Look Safe

Federal Circuit: No “Teaching Away” Without Discouragement

The University of Maryland Biotechnology Institute (“Maryland”), owner of U.S. Patent No. 6,673,532 B2 (“the ‘532 patent”), recently lost the ‘532 patent when the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) rejected Maryland’s argument that a cited reference is teaching away from combining it with another reference to reach a conclusion of obviousness.  The Federal Circuit affirmed a determination by the PTAB of obviousness of the claims in an interpartes reexamination of the ‘532 patent on 35 U.S.C. §103 grounds.  The reexamination was requested by Presens Precision Sensing GMBH (“Presens”), a seller of equipment that uses technology related to that in the ‘532 patent.   University of Maryland Biotechnology Institute v. Presens Precision Sensing GMBH, 2016-2745, 2017-1057 (November 3, 2017). The claim rejections relied on two technical papers, Bernhard H. Weigl et al., Optical Triple Sensor for Measuring pH, Oxygen and Carbon Dioxide, 32 J. Biotechnology 127 (1994) (“Weigl”), and Shabbir B. Bambot et al., Potential Applications of Lifetime-Based, Phase-Modulation Fluorimetry in Bioprocess and Clinical Monitoring, 13 Trends in Biotechnology 106 (1995) (“Bambot”).  The references were combined to reject claims including a limitation not expressly found in either reference: “at least two types of optical chemical… Read More »Federal Circuit: No “Teaching Away” Without Discouragement

Mobile Device Data Entry Patent Claims Survive Alice Motion

Patent claims directed to narrowing a search list presented to a user entering data in a mobile device have survived a Rule 12(b)(6) patent-eligibility challenge under 35 USC § 101 and the Mayo/Alice abstract idea test. WordLogic Corporation v. Fleksy, Inc., Case No. 16 CV 11714 (N.D. Ill. Nov. 7, 2017).  The defendant alleged that claim 19 of U.S. Patent No. 7,681,124 was directed to the unpatentable abstract idea of “listing word completion candidates based on partial information.” However, having been presented with the question on a motion to dismiss at the pleading stage, the court declined to agree “at this early stage of the proceedings.” Claim 19 of the ’124 patent recites: 19. A computer-readable medium comprising codes for directing a processing unit to process text entered into a personal computing device, by: (a) receiving and displaying a partial text entry, comprising receiving at least part of the partial text entry via a keyboard, the partial text entry comprising at least a first character; (b) in response to receipt of the first character of the partial text entry, obtaining a plurality of completion candidates from among a group of completion candidates, wherein each of the plurality of completion candidates… Read More »Mobile Device Data Entry Patent Claims Survive Alice Motion

Differing Claim Terms Construed with Same Definition

Can a court construe two different terms in two different claims the same way? If the specification uses those phrases in the same way, then yes. In Pavo Solutions, LLC v. Kingston Technology Company, Inc., Nos. 2016-2209, 2016-2328, 2016-2391, 2017 U.S. App. LEXIS 22112 (Fed. Cir. Nov. 6, 2017) (nonprecedential), the Federal Circuit held that the terms “on” and “formed on,” in the context of the surrounding language in the claims and the text of the specification, should be construed with the same definition. Plaintiff owns patents on USB drives with rotating covers. Two of the asserted claims include similar language: “a hinge protuberance on at least one side of the case” and “a hinge protuberance formed on at least one side of the case.” Plaintiff argued that both terms should be construed as requiring the protuberance to be attached to or integrated into the side of the case. The Patent Trial and Appeal Board (“Board”), in determining that the claims were obvious in an inter partes review, construed the term “on” to indicate the relative position of the protuberance, regardless of how the protuberance was attached to the case, and the term “formed on” to specify integration and attachment… Read More »Differing Claim Terms Construed with Same Definition

Judge Gilstrap Invalidates Imaging Patent Claims under Alice

 In Image Processing Technologies, LLC v. Samsung Electronics Co., et al., (E. D. Texas, October 24, 2017) Judge Gilstrap applied the two-step Alice patent-eligibility analysis and granted Samsung’s Motion for Partial Summary Judgement, finding claim 29 of U.S. 6,959,293 to be invalid under 35 U.S.C. §101. A day later, the judge stayed the lawsuit pending results of Inter Partes Review (IPR) for the remaining patents in dispute. Claim 29 of the ‘293 patent recites: 29. A method of analyzing parameters associated with an event by an electronic device, comprising: a) receiving data representative of one or more parameters of the event being detected; b) calculating, for a given instant of time, a statistical distribution, defied as a histogram, of a selected parameter of the event being detected; c) classifying the data by comparing its value to classification criteria stored in a classification memory; d) enabling the calculating step when classified data satisfies predetermined time coincidence criteria; and e) automatically updating, for each instant of time, the classification criteria stored in the classification memory based on statistical information associated with the histogram. Applying step one in the Alice analysis, the Court first found that claim 29 was directed to an abstract… Read More »Judge Gilstrap Invalidates Imaging Patent Claims under Alice

Processing Geo-Coordinates = Patent-Ineligible Abstract Idea

Patent claims directed to processing geo-coordinates are patent-ineligible, says a court in granting a Rule 12(b)(6) motion to dismiss.  Burnett v. Panasonic Corp. of North America, Civil Action No. PX 17-00236 (D. Md. Nov. 1, 2017). The plaintiff owned two patents related to “geospatial technologies,” and had asserted claims of one of them, U.S. Patent No. 7,107,286.  Asserted claim 1 of the ’286 patent recites 1. A geospatial media recorder, comprising: converting means for converting longitude and latitude geographic degree, minutes, and seconds (DMS) coordinate alphanumeric representations or decimal equivalent geographic coordinate alphanumeric representations and altitude alphanumeric representations into individual discrete all-natural number geographic coordinate and measurement representations; and combining means for concatenating the individual discrete all-natural number geographic coordinate and measurement representations into a single discrete all-natural number geospatial coordinate measurement representation for identification of a geospatial positional location at, below, or above earth’s surface allowing user to geospatially reference entities or objects based on the identified geospatial positional location and point identification. Turning to the first prong of the two part Mayo/Alice patent-eligibility test, the court agreed with the defendant “that Plaintiff has patented a basic and widely applicable mathematical methodology to convert geospatial coordinates into natural numbers.” … Read More »Processing Geo-Coordinates = Patent-Ineligible Abstract Idea

CAFC Affirms PTAB Claim Construction of “Connected”

In Ignite USA, LLC. V. Camelback Products, LLC., No. 2016-2747 (Fed. Cir. Oct. 12, 2017), the Federal Circuit upheld the PTAB’s inter parte review claim construction that the claim term “connected” does not require a permanent connection.  As issue was US Patent 8,863,979. Representative claim 1 recites: 1. A lid assembly for a beverage container, comprising: a lid housing having a drink aperture; a seal arm connected to the lid housing and movable between a first position, wherein the seal arm is adjacent the drink aperture, and a second position, wherein the seal arm is distal the drink aperture, the seal arm being connected to the lid housing in the first position and the second position, the first position being an operable position for assisting in opening and closing the drink aperture, and the second position being a cleaning position wherein the drink aperture is open for cleaning the lid assembly and wherein the seal arm is not capable of assisting in closing the drink aperture in the second position; a drink seal connected to one of the drink aperture and the seal arm to assist in sealing the drink aperture; and, a trigger member connected to the lid housing,… Read More »CAFC Affirms PTAB Claim Construction of “Connected”

Strategies for Functional Patent Claims

The Federal Circuit’s decision to weaken the presumption against interpreting patent claims under 35 U.S.C. § 112(f) (or 112, sixth paragraph), in Williamson v. Citrix Online, LLC, in 2015, highlighted the challenges that functional claiming has faced in recent years.  At the AIPLA’s 2017 Annual meeting, I was part of a panel talking about these challenges.  The basic takeaway?  Functional claiming can be impossible to avoid, so embrace it.  Here are links to my presentation on functional claiming strategies and the accompanying paper providing background into the law of Section 112(f), which provide more detail.

Fed. Cir.: Claims to Selecting Data Files Patent-Ineligible

Claims of a patent owned by Intellectual Ventures and directed to “identifying and characterizing stored electronic files” are patent-ineligible under 35 USC § 101 and the Alice abstract idea test, said the Federal Circuit in Intellectual Ventures I LLC v. Erie Indemnity Corp., No. 2017-1147 (Fed. Cir. Nov. 3, 2017) (non-precedential). The court thus affirmed a district court’s Rule 12(b)(6) dismissal of Intellectual Ventures’ claim that U.S. Patent No. 7,757,298 was infringed. Writing for a unanimous panel that included Chief Judge Prost and Judge Reyna, Judge Wallach agreed with the district court that the claims were directed to the abstract idea of “identifying and categorizing illicit files, the possession of which might subject an individual or organization to liability.” Representative claim 1 of the ’298 patent recites: A computer-implemented method for identifying and characterizing stored electronic files, said method comprising: under control of one or more configured computer systems: selecting a file from a plurality of files stored in a computer storage medium, wherein selecting the file is performed according to at least one of: selecting the file based on the size of the file by determining whether an aggregate size of plural identically-sized files exceeds a predetermined threshold; selecting… Read More »Fed. Cir.: Claims to Selecting Data Files Patent-Ineligible