January 2018

“Substantially” in a Patent Claim is Substantially OK

U.S. Patent No. 5,987,863 (“the ‘863 patent”), owned by the Exmark Manufacturing Company (“Exmark”), recently survived a challenge to its claim 1 as indefinite under 35 U.S.C. §112, ¶2 for inclusion of the phrase “elongated and substantially straight.”  The United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) affirmed a refusal by the United States District Court for the District of Nebraska to grant summary judgment on a motion alleging the invalidity of claim 1 of the ‘863 as indefinite under 35 U.S.C. §112, ¶2.  The motion was made by Briggs & Stratton Power Products Group, LLC’s (“Briggs & Stratton”) in an infringement action initiated by Exmark against Briggs & Stratton.  EXMARK MANUFACTURING COMPANY INC., Exmark Manufacturing Company Inc. (Plaintiff-Appelee) v. Briggs & Stratton Power Products Group, LLC (Defendant-Appellant), 2016-2197 (January 12, 2018). The Federal Circuit looked for evidence that claim 1 “. . . when read in the light of the specification, informs those skilled in the art of the scope of the ‘elongated and substantially straight‘ limitation with reasonable certainty.”  The Federal Circuit cited the Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014): “Pursuant to 35 U.S.C.… Read More »“Substantially” in a Patent Claim is Substantially OK

Fed. Cir. Holds Software Display Claims Patent-Eligible

Here is a Federal Circuit decision that expands the arsenal of cases available to argue for patent-eligibility under 35 U.S.C. § 101 and the Alice abstract idea test. In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., Nos. 2016-2684, 2017-1922 (Fed. Cir. Jan. 25, 2018) (precedential), the court held that claims directed to software providing a particular arrangement of menu options for mobile devices are patent-eligible. The court’s decision affirmed the Eastern District of Texas’ denial of summary judgment of patent-ineligibility of U.S. Patent Nos. 8,713,476 and 8,434,020, each entitled “Computing Device with Improved User Interface for Applications.” Judge Moore wrote for a panel that also included Judges O’Malley and Wallach; the panel was unanimous on the question of patent-eligibility (Judge Wallach dissented with respect to a claim construction that affected the questions of anticipation and infringement). The District Court had considered claim 1 of the ’476 patent as representative for purposes of patent-eligibility. That claim recites: A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary that can be reached directly from the… Read More »Fed. Cir. Holds Software Display Claims Patent-Eligible

Statutory Disclaimer Saves Remaining Claims from CBM

Using statutory disclaimer on some of the claims of its challenged patent, Realtime Data saved the remaining claims from scrutiny under covered business method review in response to a petition by Commvault. Commvault System, Inc. v. Realtime Data LLC, Case CBM2017-00061, Paper 10 (PTAB Jan. 18, 2018). Commvault challenged Realtime’s U.S. Patent No. 8,717,204 under Covered Business Method Patent Review (CBM). CBMs were created by the America Invents Act for patents claiming “data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” The ’204 patent certainly focused on finance; the embodiments related to handling financial data, and the technical field was listed as “systems and method for providing accelerated transmission of data, such as financial trading data, financial services data, financial analytical data, company background data and news feeds, advertisements, and all other forms or information over a communication channel using data compression and decompression.” Several of the claims include explicitly financial elements such as “financial data,” “stock information,” “options information,” etc. But Realtime disclaimed all but six of the thirty claims. Statutory disclaimer is always an option for a patent… Read More »Statutory Disclaimer Saves Remaining Claims from CBM

Neither Technical Terms Nor Length Save Claims under Alice

Patent claims directed to “buying and selling an item relating to unique subjects” were held patent-ineligible under the Alice abstract idea test and 35 USC § 101 in VOIT Technologies, LLC  v. Del-Ton, Inc., No. 5:17-CV-259-BO, (E.D. N.C. Jan. 10, 2018).  The court therefore granted a motion to dismiss under FRCP 12(b)(6).  Among the interesting aspects of this case are that U.S. Patent No. 6,226,412 includes a 330 word independent claim, and that claim includes a lot of technical terminology relating to storing and processing text and image data.  Neither of these things saved the claim from Alice. The ’412 patent is directed to “secure interactive communication of text and image information between a central server computer and one or more client computers located at remote sites for the purpose of storing and retrieving files describing unique products, services or individuals.”  Claim 1, reproduced at the bottom of this post, recites numerous steps for achieving this secure interactive communication relating to unique products. After first explaining that claim construction was not necessary to consider the question of patent-eligibility, the court turned to the question of whether the ’412 patent claimed an abstract idea. The court provided the following assessment: Plaintiffs… Read More »Neither Technical Terms Nor Length Save Claims under Alice

Addressing the Subjectivity of Patent-Eligibility Post-Alice

Perhaps the single most useful resource summarizing the law of patent-eligibility under the Alice abstract idea test is this chart of Federal Circuit cases under 35 U.S.C. § 101, found on the  USPTO’s very helpful web page providing guidance on analyzing claims for patent-eligible subject matter. This blog has previously covered the USPTO’s guidance on patent-eligibility; I am discussing it again to note that the afore-mentioned chart of patent-eligibility case was updated on January 4.  If you are responding to – and especially if you are appealing – a rejection under the Alice abstract idea test, this chart is the place to start. But the USPTO’s summary of Federal Circuit cases is also a nice vehicle for highlighting the overriding problem of the present law of patent-eligibility.  A large universe of subject matter remains unambiguously patent-eligible. And perhaps it is a smaller universe, but there seems to be subject matter that is unambiguously patent-ineligible. A few recent cases (admittedly the minority of all the Alice / fee award cases we have covered)  have even awarded attorney fees against parties maintaining lawsuits predicated on clearly patent-ineligible claims. But then there are cases like the Federal Circuit’s January 2017 decision in Trading… Read More »Addressing the Subjectivity of Patent-Eligibility Post-Alice

Claim Terms “Substantially above” and “Significantly above” found Definite

The Court held, in Arctic Cat Inc., v. Polaris Industries Inc., No. 16-cv-0010 wmw, (MN Dec. 20, 2017), these terms, in the context of the specification and the prosecution history, gave sufficient guidance to a person skilled in the art to understand the contours of the invention, denying Polaris’ motion for summary judgment of invalidity. Plaintiff Arctic Cat. Inc. (Arctic Cat) asserted that Defendant Polaris Industries Inc.  (Polaris) infringed claims in U.S. Patent No. 7,743,864 (the ‘864 patent). Polaris moved for summary judgment, arguing that independent claims 1 and 9, and dependent claim 14 are invalid for including indefinite claim terms. Representative claims 1 and 9 and recite in relevant portion: 1. A multi-purpose vehicle, comprising: . . . a straddle mount seat secured to the frame, the seat having seating positions for a driver and a passenger of the vehicle, the position for the passenger being located rearward and significantly above the seating position for the driver; . . . 9. A multi-purpose vehicle, comprising: . . . a straddle mount seat secured to the frame, the seat having a driver seat and a passenger seat located rearward and raised substantially above the driver seat so as to provide… Read More »Claim Terms “Substantially above” and “Significantly above” found Definite

MOU Overcomes Divided Patent Infringement

How do you find a direct infringer when no one party performs all steps of a method? In Travel Sentry, Inc. v. David A. Tropp, No. 2017-1025 (Fed. Cir. Dec. 19, 2017)(precedential) (Lourie, O’Malley, and Taranto presiding), the Federal Circuit held that a memorandum of understanding from a producer directing a consumer to perform steps of a patented method renders the producer liable for direct infringement. David A. Tropp owns U.S. Patent Nos. 7,021,537 and 7,036,728 directed to methods of producing and selling luggage locks compliant with Transportation Security Administration (TSA) screening and inspection procedures. Travel Sentry and TSA entered into a memorandum of understanding (MOU) in which Travel Sentry would provide TSA with keys and instructions to unlock Travel Sentry locks, which included performing steps of the patented methods. The district court granted summary judgment to Travel Sentry, holding that the MOU was insufficient to establish Travel Sentry as a direct infringer. The Federal Circuit reviewed de novo and vacated the district court’s judgment, remanding for further proceedings. For divided patent infringement under 35 U.S.C. § 271(b), a patent owner must show that a single party has directly infringed the patented claims under 35 U.S.C. § 271(a). Akamai Techs.,… Read More »MOU Overcomes Divided Patent Infringement

Lack of Inventive Support leads to Patent Ineligibility

E. District Court of Virginia grants summary judgment to Defendant Amazon finding claims of USRE46140 (reissue of U.S. Pat. No. 6,618,705) ineligible under 35 U.S.C. § 101 based on a lack of support in the specification for how the purportedly inventive aspect of the claims achieved its ‘switching’ results. Va. Innovation Sci. v. Amazon.com, Inc., Civil No. 1:16-cv-00861 (E.D. Va. Jul. 5, 2017). Virginia Innovation Sciences (VIS) sued Amazon for infringement of the claims of a number of patents; this article addresses only the reissued patent (hereafter, the ‘140 patent).  As described by in the district court opinion: The ‘140 patent is directed to securely processing credit card payments for online purchases by switching the user from a merchant server to a payment server.  A system allows users to purchase goods on the internet through a secure payment server.  In the system, the user sends a message that she wants to buy an item from a merchant website.  Once the purchase request has been made, the buyer is “shifted” from the merchant site to the secure payment server.  After the buyer is shifted to the secure payment server, the server performs the standard functions which would otherwise have been performed… Read More »Lack of Inventive Support leads to Patent Ineligibility

No Estoppel for Art in Contentions but Not IPR Petition

Earlier this month in Koninklijke Philips N.V. v. Wangs Alliance Corp., Civil Action No. 14-12298-DJC (D. Mass. Jan. 2, 2018), the District of Massachusetts added another case to the majority view of the scope of inter partes review estoppel, deciding that Wangs could assert prior art included in invalidity contentions but omitted from a subsequent IPR petition. Philips had asserted infringement of seven patents: Patent Nos. 6,147,458; 6,250,774; 6,561,690; 6,586,890; 6,788,011; 7,038,399; and 7,352,138. In due course, Wangs filed invalidity contentions against the patents-in-suit, and at the one-year deadline, Wangs petitioned for IPRs. The PTAB granted the IPRs for six of the seven patents. While the court stayed the case, the PTAB handled the IPRs, ruling for Wangs on some claims but not others. In the immediate motion, Philips moved to prevent Wangs from relying on prior art left out of its contentions under local rules, and to estop Wangs from relying on prior art included in its contentions but not in its IPR petitions. Several courts have tackled the IPR estoppel issue, to differing results. Section 315(e) of Title 35 estops a party from raising “any ground that the petitioner raised or reasonably could have raised during that inter… Read More »No Estoppel for Art in Contentions but Not IPR Petition

Take Care with Patent Assignment Language

Written agreements discussing an employee’s obligation to patent assignment rights were insufficient to actually assign ownership in U.S .Patent No. 5,781,788, a divided Federal Circuit panel has held. Advanced Video Technologies LLC v. HTC Corp., Nos 2016-2309, 2016-2310, 2016-2311 (Fed. Cir. Jan 11, 2018) (precedential) (opinion by Judge Reyna, Judge O’Malley concurring and Judge Newman dissenting). Despite the panel’s disagreements about the law, this case provides a reminder that it is important to obtain a present and not just a future promise to assign patent rights, e.g., “I hereby do assign” and not just “I will assign.” Of the three inventors on the ’788 patent, two of them had assigned their interests to Advanced Video, but the third, Vivian Hsiun, had declined. The patent had a complicated chain of title, being part of assets that were seized as part of a security agreement, sold back to another one of the co-inventors, who then assigned his ownership interest to a predecessor of Advanced Video. That predecessor filed the application for the ’788 patent with the USPTO, and prosecuted the patent application without Ms. Hsiun’s cooperation, she having refused to assign her interest, upon providing a declaration representing to the USPTO that… Read More »Take Care with Patent Assignment Language