July 2018

Berkheimer Stops Patent-Eligibility Motion at Pleading Stage

Saying that a defendant’s patent-eligibility challenge raised questions of fact under Berkheimer v. HP Inc. (Fed. Cir. 2018), a District Court has denied a motion for judgment on the pleadings under FRCP 12(c) concerning U.S. Patent No. 7,735,116, directed to a network security system including “unified threat management [UTM] with a relational rules methodology.” Symantec Corp.  v. Zscaler, Inc.,No. 17-cv-04426-JST (N.D. Cal. July 23, 2018). The court considered claim 1 of the ‘116 patent, which recites: A method of controlling access to a networked device, the method comprising: receiving an incoming message packet by a security gateway coupled to said networked device; evaluating the received message packet to determine if the received message packet is compliant with a first test, the first test corresponding to a first level of a security hierarchy implemented by said security gateway, wherein the security hierarchy establishes a relationship between security functions from a lowest level to a highest level; and the received packet is rejected at the earliest possible operation in the processing of the packet in the security hierarchy; forwarding the received packet and an indication of its compliance with the first test for subsequent processing upon the received packet complying with the first… Read More »Berkheimer Stops Patent-Eligibility Motion at Pleading Stage

“At Least One of” Ex Parte Opinion Designated as Informative by PTAB

The PTAB interpreted claim language in the form of “at least one of A and B” to mean at least one of A and at least one of B in Ex parte Dong-Shin Jung et al. (Appeal No. 2016/008290, designated Informative on July 10, 2018).  The claim, in pertinent part, at issue reads: A method for playing back a scene using Universal Plug and Play (UPnP), comprising: [A.] sending, by a control point, a request for a scene to be played back to a media server that stores Audio/Video (AV) content; [B.] receiving, by the control point, one or more scene objects comprising the scene to be played back from the media server in response to the request, each scene object including metadata representing at least one of [i.] a precedence relation indicating the scene object’s location in a sequence of scene objects and [ii.] a connection relation indicating one or more scene objects capable of replacing the scene object, the connection relation including at least one of [1.] a connection branch and [2.] a contents connection list having a first group identification… During examination, the Examiner interpreted the claim language in the form of “at least one of A… Read More »“At Least One of” Ex Parte Opinion Designated as Informative by PTAB

Non-Patented Features and the Entire Market Value Rule

Evidence that a patented feature drives customer demand is insufficient to justify damages under the entire market value rule (EMVR) when non-patented features may drive customer demand. Power Integrations, No. 2017-1875 (Fed. Cir. July 3, 2018). The Federal Circuit vacated a damages award for patent infringement from a jury that relied on the EMVR, noting that while the plaintiff showed that the patented feature drove demand of the accused products, the plaintiff did not show that valuable features of the accused products were not relevant to customer demand. Plaintiff Power Integrations sued Defendant Fairchild for infringement of U.S. Patent Nos. 6,212,079 and 6,538,908, directed to power supply controller chips. A jury found infringement of the ‘079 patent and awarded a reasonable royalty of $139.8 million. The jury’s award was based on Plaintiff’s expert testimony of EMVR. In general, damages are apportioned to the patented feature of the accused product. In a multi-component accused product, the royalty is limited to the smallest salable unit embodying the patented invention. However, when the plaintiff shows that the patented feature is the sole driver of customer demand, the plaintiff can ask for a royalty based on the entire product under the EMVR. Relying on… Read More »Non-Patented Features and the Entire Market Value Rule

Does Presumption of Patent Validity Extend to Eligibility?

A plaintiff seeking to enforce patents claiming automated methods for uploading multimedia content was ordered to pay defendants’ attorney fees based on a finding of an “exceptional case” under U.S.C. § 285.  Cellspin Soft, Inc. v. Fitbit, Inc., No. 4:17-CV-5928-YGR (N.D. Cal. July 6, 2018).  The court had previously granted motions to dismiss because claims of U.S. Patent Nos. 8,738,794; 8,892,752; 9,749,847; and 9,258,698 were not patent eligible under 35 U.S.C. § 101 and the Alice/Mayo test.  Relying on Inventor Holdings, LLC v. Bed Bath & Beyond Inc. (Fed. Cir. 2017), the court found the case exceptional because the claims were not only “manifestly directed to an abstract idea,” but, unlike the Inventors Holdings litigation, were sought to be enforced after a lot of post-Alice precedent should have made clear that the claims were patent-ineligible. The plaintiff’s main basis for opposing the fee award was “a lack-of-bad-faith defense.”  One of its arguments was that “it reasonably relied on the presumption of validity following the issuances of the Asserted Patents, especially the two most recent patents.”  Not so fast, said the court, citing Judge Mayer’s concurrence in Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2014), stating that there was no presumption… Read More »Does Presumption of Patent Validity Extend to Eligibility?