May 2018

DDR and Bascom Don’t Save Internet Monitoring Patents

Patent claims directed to monitoring Internet activity “to increase the objectivity of the search results returned responsive to a search for talented original content creators” were held invalid under the Alice/Mayo abstract idea test and 35 U.S.C. § 101.  Accordingly, in Talent Broker Tech. LLC v. Musical.ly, Inc., CV 17-08532 SJO (MRWx) (C.D. Cal. May 22, 2018), the Court granted the defendant’s Rule 12 Motion to Dismiss, finding claims of US 8,510,154 and US 8,630,894 patent-ineligible. This was the defendant’s second motion to dismiss, the first having been granted with the plaintiff given the significantly more than an old and fundamental idea. As before, on the present motion the court found “that the claims of the Patents-in-Suit are directed to the abstract idea of organizing, differentiating and retrieving information.” For example, claim 1 of the ’894 patent, said the court, recites a “system for communicating content item information,” through the use of a processor configured to: (1) determine a geographic designation; (2) control transmission of a notification to a “first assessor”; (3) display an notification that content is ready to be assessed; (4) make the content available for assessment; and (5) update the information for the content based on the… Read More »DDR and Bascom Don’t Save Internet Monitoring Patents

Novelty and Non-obviousness Do Not Save Patent-Eligibility

The Federal Circuit has held that patent claims directed to “performing certain statistical analyses of investment information” are patent-ineligible under the Alice/Mayo abstract idea test and 35 U.S.C. § 101, thus affirming a District Court’s judgment on the pleadings. SAP America, Inc. v. InvestPic, LLC, No. 2017-2081 (Fed Cir. May 15, 2018) (precedential) (opinion by Judge Taranto), joined by Judges Lourie and O’Malley). In the second paragraph of its opinion, the court emphasized that brilliant innovation would not alone save patent-eligibility, nor could novelty and non-obviousness under 35 U.S.C. §§ 102 and 103. Claims of U.S. Patent No. 6,349,291 are directed to “analysis, display and dissemination of financial information using resampled statistical methods.” These claims represented an innovation, but the innovation was “nothing but a series of mathematical calculations based on selected information in the presentation of the results,” and thus was “an innovation in ineligible subject matter.” The ’291 patent had been through re-examination proceedings and an appeal to the Federal Circuit. In the appeal, claim terms were construed, and the court “partly reversed and partly vacated the Patent Trial and Appeal Board’s cancellations of various claims” under 35 U.S.C. §§ 102 and 103. Three independent claims remain, two… Read More »Novelty and Non-obviousness Do Not Save Patent-Eligibility

Covered Business Method Patent Survives Alice

Patent claims can survive a patent-eligibility challenge under Alice and 35 U.S.C. § 101 even without a showing of a technological improvement.  In Dailygobble, Inc. v. SCVNGR, Inc., Case No. CBM2018-00002 (May 8, 2018), the USPTO’s Patent Trial and Appeal Board declined to institute a Covered Business Method Review (CBM).  The PTAB found that claims of U.S. Patent No. 8,924,260B1 fell within the statutory definition of “covered business method patent,” i.e., were (1) directed to a financial product or service and (2) were not directed to a technological invention.  Nonetheless, the PTAB declined to institute a CBM proceeding because it agreed with a district court analysis that the ’260 patent claims were patent-eligible because, as in Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016), the claims “as a whole” were not “directed to excluded subject matter.” Claim 1 of the ’260 patent recites: A method of processing a transaction at a point-of-sale (POS) terminal, the method comprising the steps of: receiving, by the POS terminal, a stream of data from a credential reader; recognizing, by the POS terminal, a first data sequence in the received data stream; in response to the recognized first data sequence, handling, by the POS terminal,… Read More »Covered Business Method Patent Survives Alice

How Is Collateral Estoppel Applied to Patent Invalidity?

A California court has held that a defendant is collaterally estopped from asserting patent-ineligibility under 35 USC § 101 because the defendant, in prior litigation, lost a post-trial motion in which it evidently raised other theories of patent invalidity, even if not § 101 invalidity.  XpertUniverse, Inc. v. Cisco Systems, Inc., No. 17-cv-03848-RS (N.D. Cal. May 8, 2018). Notably, the court distinguished the Federal Circuit’s very recent decision in Voter Verified, Inc. v. Election Systems and Software, LLC. In Voter Verified, the Federal Circuit held that, while Alice was not a change in the law, the fact that § 101 patent-eligibility was “barely considered” in prior litigation precluded application of collateral estoppel. Plaintiff XpertUniverse had sued defendant Cisco alleging infringement of claims of US Patent No. 7,499,903, directed to “semantic to non-semantic routing for locating an expert.” Prior versions of Cisco’s “Remote Expert” products had been found to infringe the ’903 patent claims in a 2013 jury trial in Delaware.  XpertUniverse brought the present case in 2017, alleging that newer versions of Cisco’s product infringe the ’903 patent claims. Cisco brought a motion for judgment on the pleadings, alleging invalidity under Alice Corp. v. CLS Bank Corp. and § 101. … Read More »How Is Collateral Estoppel Applied to Patent Invalidity?

Plain and Ordinary Meaning Requires More Than a Mere Capability

The Eastern District of Texas has granted-in-part Defendant HTC’s motion to strike expert testimony based on application of improper legal principles, to wit, the expert had improperly extended the plain and ordinary meaning of claims of U.S. Pat. No. 5,802,467 to encompass a mere capability to do the thing.  Salazar v. HTC Corp., Civil No. 2:16-cv-01096-JRG-RSP (E.D. Tex. May 2, 2018). Individual Salazar sued HTC for infringement of a system using a smartphone to perform two-way communication with appliances.  A representative system claim recites, inter alia: a microprocessor for generating a plurality of control signals used to operate said system, said microprocessor creating a plurality of reprogrammable communication protocols, for transmission to said external devices wherein each communication protocol includes a command code set that defines the signals that are employed to communicate with each one of said external devices; … (emphasis added). Plaintiff’s expert witness testified that the communication protocol could include a ‘command code set’ could satisfy the claim.  More specifically, “when asked whether a communication protocol that did not include a command code set would satisfy this claim limitation, [the expert witness] responded, ‘[I]t’s a question of whether [the system] is capable of including a command code… Read More »Plain and Ordinary Meaning Requires More Than a Mere Capability

Beware Indefiniteness under Williamson and 35 U.S.C. §112(f)

Functional patent claim language not only justified an Examiner’s indefiniteness rejections under 35 USC § 112(b), but also justified a new ground of indefiniteness rejection in In re Xie, Ex parte Appeal 2017-000540, Application 12/774,138 (March 20, 2018).  Why?  Because the PTAB found sua sponte that the applicant had not overcome the weakened presumption of Williamson v. Citrix Online, LLC (Fed. Cir. 2015), that functional claim language is not subject to the means-plus-function strictures of 35 USC § 112(f) (or, this being a pre-AIA case, § 112, 6th paragraph).  The entire lengthy representative claim 1 is reproduced below – focus on the emphasized portions, the emphases being highlighted by the PTAB as “key limitations:” A system comprising: an assay test strip including a test portion and an encoder portion, the test portion including at least one analyte reaction section, the encoder portion including a plurality of optically detectable markings each at one of a plurality of known positions; an assay test strip reader comprising a body sized to receive the assay test strip; at least one detector fixedly connected to the body, the at least one detector positioned within the body such that an inserting of the assay test strip… Read More »Beware Indefiniteness under Williamson and 35 U.S.C. §112(f)