August 2018

Enfish Does Not Save Patent-Eligibility of Database Claims

The Federal Circuit has affirmed a summary judgment from the Eastern District of Texas holding that claims directed to indexing and accessing information in large databases are patent-ineligible under 35 U.S.C. § 101 and the Alice/Mayo test.  BSG Tech LLC v. BuySeasons, Inc., No. 2017-1980 (Fed. Cir. Aug. 15, 2018) (precedential) (opinion by Judge Hughes, joined by Judges Reyna and Wallach).  The patents at issue, U.S. Patent Nos. 6,035,294, 6,243,699, and 6,195,652, “have substantially overlapping specifications and are directed to a ‘self-evolving generic index’ for organizing information stored in a database.” At step one of the patent-eligibility test, the Federal Circuit “agree[d] with the district court that the asserted claims are directed to the abstract idea of considering historical usage information while inputting data.”  The court looked at the “clearest of the four claims” at issue, claim 1 of the ’699 patent, which recites: 1. A method of indexing and retrieving data being posted by a plurality of users to a wide area network, comprising: providing the users with a mechanism for posting the data as parameterized items; providing the users with listings of previously used parameters and previously used values for use in posting the data; providing the users with summary comparison… Read More »Enfish Does Not Save Patent-Eligibility of Database Claims

Requiring Condition Can Overcome Art Resulting In Condition

A claim that required a specific condition overcame prior art that merely disclosed an embodiment resulting in satisfaction of the condition. In re Facebook, Inc., No. 2017-2524 (Fed. Cir. Aug. 14, 2018) (nonprecedential) (C.J. Prost, JJ. Moore, Stoll). Facebook filed Patent Application No. 13/715,636, Pub. No. 2014/0168272, which is directed to rendering an array of contiguous images, subject to ta rule requiring the condition that the images remain contiguous even when a user reshapes or moves one of the images. The relevant claim language of claim 1 is “determining, in response to an instruction to adjust the position or size of a first image element, a second position in the array for at least one second image element, the second position determined based on a rule requiring the image elements to be contiguous…” (emphasis added). The Office relied on U.S. Patent Publication No. 2013/0238964to Perrodin  to anticipate claim 1. Perrodin discloses moving images within a grid and reorganizing remaining images within the grid. One embodiment discloses that the images remained contiguous in the grid, and the Office relied on this disclosure to satisfy the recitation of “a rule requiring the image elements to be contiguous.” On appeal, the PTAB upheld… Read More »Requiring Condition Can Overcome Art Resulting In Condition

Easy CAFC Patent-Eligibility Case: Digital Product Licensing

In a one-line order under its Rule 36, the Federal Circuit has affirmed a decision of Judge Schroeder in the Eastern District of Texas granted a Rule12(b)(6) motion to dismiss claims of patent infringement where claims were directed to “adjusting the number of devices allowed to use a digital product (e.g., software) under a license.”  Uniloc, USA, Inc. v. Amazon.com, Inc., No. 2017-2051 (Fed. Cir., Aug. 9, 2018).  The district court decision finding claims of U.S. Patent No. 8,566,960 patent-ineligible under the Alice/Mayo test and 35 U.S.C. § 101 is discussed in this post. It should be no surprise that the Federal Circuit panel (Chief Judge Prost and Judges Taranto and Chen) made this a Rule 36 affirmance.  In a nutshell, the district court’s decision had explained that the claims of the ’960 patent were invalid under § 101 because “time-adjustable licenses” were a “fundamental economic practice.”  Certainly, if you look at the claim reproduced in the above-referenced post, you will have a hard time arguing that there was any technical invention, or anything recited other than managing software licenses.

Ex Parte Jung De-Designated as Informative by PTAB

A previous post discussed Ex parte Jung, which was designated as Informative by the PTAB on July 10, 2018.  In a bulletin posted on August 7, 2018, the PTAB states that: It has come to PTAB’s attention that the decision has not been read as intended. For example, the designation was not intended to reflect new or changed policies with respect to claim construction. As a result, in order to avoid any confusion, the decision has been de-designated and removed from the list of informative decisions. The case remains a routine decision of the Board… This case nonetheless raised an interesting discussion of SuperGuide Corp. v. DirecTv Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004), which interpreted 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, as well as the line of subsequent cases discussed in the Jungdecision that distinguish SuperGuide.  Anecdotally, it appears that a common practice has been to avoid claiming in the form of “at least one of A or B” because “or” sometimes invites an indefiniteness rejection, and instead to claim in the form of “at least one of A and B” with the intention… Read More »Ex Parte Jung De-Designated as Informative by PTAB