December 2017

Low Bar for USPTO to Show Motivation to Combine

A recent Federal Circuit case illustrates perils of trying to show that patent claims are non-obvious by arguing that references would not have been combined.  In Bosch Automotive Service Solutions. LLC v. Matal, No. 2015-1928 (Fed. Cir. Dec. 22, 2017) (non-precedential), the court affirmed a Patent Trial and Appeal Board (PTAB) finding of unpatentability, in an Inter Partes Review proceeding, of certain claims of U.S. Patent No. 6,904,796 (and, while not discussed in this post, also vacating the PTAB’s denial of the patent owner’s motion to amend certain claims).  The court agreed with the PTAB that there was a sufficient motivation to combine references to achieve a single tool for activating tire sensors where different references taught each of the various functionalities now claimed in a single tool. Independent claim 1 of the ’796 patent recites: A tool comprising a plurality of means for activating remote tire monitoring system tire sensors, the plurality of means selected from the group consisting of a magnet, a valve core depressor, means for generating continuous wave signals, and means for generating modulated signals, wherein the tool is capable of activating a plurality of tire sensors, each of the plurality of tire sensors utilizing a… Read More »Low Bar for USPTO to Show Motivation to Combine

Fed. Cir.: Statements in Specification Limit Patent Claims

A recent case from the Federal Circuit demonstrates the perils of pointing out problems in prior art in a patent specification. In Rembrandt Patent Innovations LLC v. Apple Inc., No. 2016-2324  (Nov. 22, 2017) (non-precedential) (opinion by Judge Chen, joined by Chief Judge Prost and Judge Hughes), the Federal Circuit affirmed a lower court’s claim construction and noninfringement rulings, agreeing with the defendant-appellee Apple that the claims of U.S. Patent No. 6,185,678 covered computer bootstrapping only if “performed automatically without human intervention.” The District Court had granted Apple’s motion for summary judgment of noninfringement, agreeing that, even though the claims did not state that the recited recovery procedure was “automatic,” the specification characterized the invention as directed to “a secure bootstrap process and automated recovery procedure” (emphasis in original), and moreover the patent specification disparaged “prior art recovery processes that require human interaction.” Moreover, the specification repeatedly talked about the advantages of automatic recovery processes, and nowhere discussed recovery occurring with human intervention. The Federal Circuit agreed that, if “read in isolation,” the claims would “not appear to require automated recovery.” But under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), claims are not read in isolation, but… Read More »Fed. Cir.: Statements in Specification Limit Patent Claims

Virus-scanning Software Claims Held Patent-Ineligible

Patent claims to computer-virus scanning software included no language representing an improvement in computer function and were therefore patent-ineligible under 35 USC § 101. On this basis, the court in Glasswall Solutions Limited, and Glasswall (IP) Limited v. Clearswift Ltd, No. C16-1833 raj, (WAWD Nov. 29, 2017), granted defendant Clearswift’s motion to dismiss. Plaintiff Glasswall asserted that Clearswift infringes claims of U.S. Patent Nos. 8,869,283 (‘the 283 patent) and 9,516,045 (the ‘045 patent). The patents have nearly identical specifications, and teach methods for protecting a computer from files including unwanted code (i.e., virus-protection). Clearswift argued that the patents claim patent-ineligible concepts. Independent claim 1 from the ‘283 patent is representative, and recites: A method for processing an electronic file to create a substitute electronic file containing only allowable content data, the method comprising: receiving an electronic file containing content data encoded and arranged in accordance with a predetermined file type; determining a purported predetermined file type of the received electronic file and an associated set of rules specifying values or range of values of allowable content data; determining at least an allowable portion of the content data that conforms with the values or range of values specified in the set… Read More »Virus-scanning Software Claims Held Patent-Ineligible

When Is Hindsight Impermissible in an Obviousness Rejection?

According to the PTAB, impermissible hindsight can be found in an obviousness analysis that modifies a reference without providing a rationale for such modification independent of the patent sought to be invalidated. In Apple Inc. v. Voip-pal.com, LLC., IPR 2016-01201, Paper 54 (Nov. 20, 2017), the PTAB refused to invalidate patent claims as being obvious, under 35 U.S.C. § 103, based on a proposed modification that relied on the claims as a destination to guide a PHOSITA (person having ordinary skill in the art) to the modification, i.e., the proposed modification depended on impermissible hindsight reasoning. At issue was US Patent 8,542,815, owned by Viop-pal.com. Representative claim 1 includes the following features: in response to initiation of a call by a calling subscriber, receiving a caller identifier and a callee identifier; locating a caller dialing profile comprising a username associated with the caller and a plurality of calling attributes associated with the caller; determining a match when at least one of said calling attributes matches at least a portion of said callee identifier; classifying the call as a public network call when said match meets public network classification criteria and classifying the call as a private network call when said match… Read More »When Is Hindsight Impermissible in an Obviousness Rejection?

‘Internet protocol’ different than ‘internet protocol’

Court of Appeals for the Federal Circuit affirms obviousness rejection of Patent Trial and Appeal Board based on the Board’s construction of ‘Internet protocol’ and ‘internet protocol.’ AIP Acquisitions LLC v. Cisco Systems, Inc., Opinion 2016-2371 (Fed. Cir. 2017) (non-precedential). This case pertains to the Board’s construction of the phrases internet protocol and Internet protocol (also referred to herein as I/internet protocol).  The procedural posture of this case comprises Cisco instituting Inter Partes Review (IPR) and challenging AIP’s U.S. Patent 7,269,247 on obviousness grounds.  Among other things, the ‘247 patent claims a method for communication and a system for transmitting communications, in accordance with the representative claims reproduced below (emphasis added).  The Board held that the claims at issue in the IPR were unpatentable, and AIP appealed to the Federal Circuit. 1. A method for communication between two access devices via one or more networks, comprising the steps: receiving a transmission in a first format through a first communication network from a first access device, the first format comprising a telecommunication protocol for establishing and transmitting voice communication for a phone call in one of a digital telephone network, an analog telephone network, and a cellular network; performing a first… Read More »‘Internet protocol’ different than ‘internet protocol’

Attorney Fees Awarded for Post-Alice Patent Litigation

The Federal Circuit has affirmed an award of attorney fees under 35 USC § 285 against a patent owner that pursued its case alleging infringement of a business method patent after the US Supreme Court decided Alice Corp. v. CLS Bank Int’l. in June 2014. Inventor Holdings, LLC v. Bed Bath & Beyond Inc., No. 2016-2442 ( Fed. Cir. Dec. 8 2017) (opinion by Judge Chen, joined by Judges Wallach and Stoll; precedential). Claims of US Patent No. 6,381,582 recite methods for processing payments for the sale of goods. The court agreed that, “following the Alice decision, [the patent owner’s] claims were objectively without merit.” A fee award was therefore justified. The District Court had granted the defendant’s motion for judgment on the pleadings based on patent-ineligibility under 35 USC § 101 in August 2015; and the Federal Circuit affirmed this decision in April 2016. Once that appeal was complete, the District Court ruled on the defendant’s pending motion for an award of fees under Section 285, agreeing that the patent owner’s continuation of its case after Alice made the case “exceptional” under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014). The Federal Circuit… Read More »Attorney Fees Awarded for Post-Alice Patent Litigation

Patent Claims to Selecting Ads for Display Denied Covered Business Method Review

The USPTO’s Patent and Trial Appeal Board has declined to institute a Covered Business Method review of two patents with claims to “directing electronic advertisements” based on user profile attributes with the goal of maximizing profits.  Yahoo! Inc. v. AlmondNet, Inc., CBM2017-00056 and CBM2017-00058 (Nov. 22, 2017). The PTAB’s decision turned on its interpretation that the term “condition” encompassed more than a consideration of expected profitability in claim recitations that correlated display of an advertisement to user profile attributes “subject to determining that the condition has been met.”  (See claim 1 of U.S. Patent No. 8,959,146, and claim 1 of 8,671,139.) Looking at the opinion relating to the ’146 patent, the Patent Owner had sagaciously filed a statutory disclaimer of claims that explicitly recited considering price information. For the other claims, the broadest reasonable interpretation of “condition” included, per the Patent Owner’s argument, not just “criteria based on profitability,” but also, “for example, a time-based condition.” The PTAB agreed. The specification had other examples of conditions, and “profitability . . . is not the only condition for displaying an advertisement that is disclosed.” The fact that a disclaimed dependent claim explicitly recited price considerations, and another dependent claim recited time… Read More »Patent Claims to Selecting Ads for Display Denied Covered Business Method Review

Display of Distributed Network Applications Patent-Eligible

Patent claims directed to “presenting interactive applications,” such as advertising, “on a computer network” with multiple “user reception systems” are patent-eligible under 35 U.S.C. § 101 says Delaware’s Judge Stark.  International Business Machines Corp. v. Groupon, Inc., C.A. No. 16-122-LPS-CJB (D. Del. Nov. 17, 2017).  Accordingly, the court denied a defendant’s Rule 12(c) motion for judgment on the pleadings, previously denied and renewed following claim construction, that claims of United States Patent Nos. 5,796,967 and 7,072,849 were patent-ineligible under the Alice abstract idea test. The court identified claim 1 of the ’967 patent as representative: A method for presenting interactive applications on a computer network, the network including a multiplicity of user reception systems at which respective users may request a multiplicity of available applications, the respective reception systems including a monitor at which the applications requested can be presented as one or more screens of display, the method comprising the steps of: a. generating a screen display at a respective reception system for a requested application, the screen display being generated by the respective reception system from data objects having a prescribed data structure, at least some of which objects may be stored at the respective reception system, the screen… Read More »Display of Distributed Network Applications Patent-Eligible

Functional Language Found Definite by CAFC

In BASF Corporation v. Johnson Matthey (decided Nov. 20, 2017), the Court of Appeals for the Federal Circuit held that a “composition…effective to catalyze” is definite under the standard set forth in Nautilus v. Biosig.  As this case shows, such language can be definite, but care should be taken when drafting the application to ensure that the claim informs a person having ordinary skill in the art about the scope of the invention with reasonable certainty, as required by Nautilus.  Claim 1 reads as follows: 1. A catalyst system for treating an exhaust gas stream containing NOx, the system comprising: at least one monolithic catalyst substrate having an inlet end and an outlet end; an undercoat washcoat layer coated on one the outlet end of the monolithic substrate and which covers less than 100% of the total length of the monolithic substrate, and containing a material composition A effective for catalyzing NH3 oxidation; an overcoat washcoat layer coated over a total length of the monolithic substrate from the inlet end to the outlet end sufficient to overlay the undercoat washcoat layer, and containing a material composition B effective to catalyze selective catalytic reduction (SCR) of NOx; and wherein material composition… Read More »Functional Language Found Definite by CAFC

Written Description Inapplicable to Doctrine of Equivalents

The written description requirement does not extend to equivalents asserted under the doctrine of equivalents, according to a recent order in the District of Delaware. The district judge in Sprint v. Cox resolved dueling summary judgment motions to find the patents not invalid. The case began with Sprint suing Cox over three related patents about broadband telecommunications (among other patents), U.S. Patent Nos. 6,473,429; 6,343,084; and 6,298,064. The court construed the asserted claims as only covering “connection-oriented” technology, such as Asynchronous Transfer Mode (ATM). Because Cox only used internet protocol (IP), which the claim construction excluded, the court found that Cox did not literally infringe the patents. Accordingly, Sprint revised its infringement theory to rely on the doctrine of equivalents. In this motion, Cox again pushed the distinction between ATM and IP. According to Cox, by accusing IP systems under the doctrine of equivalents, Sprint was effectively broadening the scope of the claims beyond what the common specification of the patents could support, implicating the written description requirement of 35 U.S.C. § 112 ¶ 1. But this time, Cox ran out of luck. The court ruled for Sprint, noting multiple problems with Cox’s argument. To begin with, the court interpreted Cox’s… Read More »Written Description Inapplicable to Doctrine of Equivalents