October 2018

Phone Registration Verification Patents Easily Fail Alice

Claims of four patents directed to using a telephone to verify a person registering for an account are invalid under 35 U.S.C. § 101 and the Alice patent-eligibility test, the court held in TeleSign Corporation v. Twilio, Inc., Case No. 18-cv-03279-VC (N.D. Cal. Oct. 19, 2018). Accordingly, the court granted a Rule 12(c) motion for judgment on the pleadings that asserted claims of the four patents-in-suit were invalid under 35 U.S.C. 101. The patents are U.S. Patent Nos. 7,945,034 (“Process for determining characteristics of a telephone number”), 8,462,920, 8,687,038, and 9,300,792(each entitled “Registration, verification and notification system” and sharing a common specification). The court first made quick work of the ’034 patent, finding that its claims “describe a method for verifying an online registration by using the characteristics of the registrant’s telephone number.”  The claims are, said the court, direct to the abstract idea of “using information about a user to confirm his or her identity.”  Unlike DDR Holdings, LLC v. Hotels.com L.P. (Fed. Cir. 2014) and Enfish LLC v. Microsoft Corp. (Fed. Cir. 2016), “the problem that the ’034 patent addresses is not unique to the digital age, and the claims require only the conventional application of existing technology.”  Further, as in Context Extraction and… Read More »Phone Registration Verification Patents Easily Fail Alice

When an Examiner Can Use a Dictionary: Guidance from In Re Smith International

In In Re Smith International, the Federal Circuit stated that the broadest reasonable interpretation of a claim term must be consistent with the specification, as discussed in a previous post.  So does that have any effect on the Examiner’s ability to use extrinsic evidence, such as a dictionary definition, to interpret a claim term?  The two ex parte PTAB appeals discussed below cite In Re Smith Internationaland provide some guidance. In Ex parte Boeke, Appeal 2016-002873 (decided May 2018), the claim included “at least one discharge slot having a first portion that includes an oval geometry.”  The specification distinguished “oval” from “racetrack shape” with reference to Figures 4 and 5, reproduced below.  Specifically, the specification defined “oval” as having “no straight portions, see Fig. 5,” and defined “racetrack shape” as “ “includes two flat sides 90, 92, see discharges slots 80B of FIGS. 3 and 4.” The rejection was based on a racetrack-shaped hole in the prior art.  The Examiner asserted that this hole in the prior art has an “oval geometry” because the dictionary definition of “oval” is “an elliptical track, as for racing or athletic events.”  The Board reversed the Examiner because the dictionary definition conflicted with the specification of the… Read More »When an Examiner Can Use a Dictionary: Guidance from In Re Smith International

Heart-Monitoring Ineligible under § 101 as Abstract Idea

The District of Massachusetts recently granted a motion to dismiss for ineligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test in a case involving home electrocardiogram sensors, CardioNet, LLC v. InfoBionic, Inc.—demonstrating that despite some courts’ decisions to the contrary, Rule 12 dismissals are available for ineligible subject matter notwithstanding the Federal Circuit’s decision in Berkheimer v. HP that such decisions can involve factual inquiries. CardioNet and InfoBionic compete selling home electrocardiogram (ECG) sensors that monitor a patient’s heartbeat via the electrical activity passing through the heart muscles. In this dispute—not their first—CardioNet accuses InfoBionic’s MoMe Kardia Systems of infringing CardioNet’s U.S. Patent No. 7,941,207. The ’207 patent covers a way of detecting atrial fibrillation and atrial flutter, two types of heart arrhythmia. Here is the first claim: 1. A device, comprising: a beat detector to identify a beat-to-beat timing of cardiac activity; a ventricular beat detector to identify ventricular beats in the cardiac activity; variability determination logic to determine a variability in the beat-to-beat timing of a collection of beats; relevance determination logic to identify a relevance of the variability in the beat-to-beat timing to at least one of atrial fibrillation and atrial flutter; and an event generator to generate an event… Read More »Heart-Monitoring Ineligible under § 101 as Abstract Idea

PGR Gives a Second Bite at Patent-Ineligibility

Recent PTAB decisions on petitions for Post-Grant Review (PGR) demonstrate how little deference judges can give to patent examiners patent-eligibility decisions.  Even if the USPTO in the form of a patent examiner has deemed claims patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo test, the USPTO in the form of the PTAB may turn around and deem the claims unpatentable under Section 101 . Two recent cases saw the Patent Owner make the argument that it needs to make under 35 U.S.C. § 325(d), namely that the Petitioner was simply rehashing arguments already rejected by a patent examiner. These arguments were to no avail. As the PTAB receives more and more petitions for Post-Grant Review on Section 101 grounds, we may see the PTAB second-guess the examining corps regarding the patent-eligibility of more and more recently-issued patents. In Supercell Oy v. Gree, Inc., Case PGR2018-00061, Patent 9,700,793 B2 (PTAB Oct. 16, 2018), the PTAB granted a petition to institute a Post-Grant Review on grounds including Section 101. Claims of US Patent No. 9,700,793 are directed to updating state information in game screens. Under part one of the Alicetest, the Petitioner identified the “abstract idea of generating and outputting information relating to game screen(s)… Read More »PGR Gives a Second Bite at Patent-Ineligibility

Can One Predict Patent-Eligibility at the Federal Circuit?

Some claims directed to a computer spreadsheet are patent-eligible, while others are not, said the Federal Circuit in Data Engine Techs. LLC v. Google LLC (Fed. Cir. 2018) (precedential).  The District of Delaware had granted a Rule 12 judgment on the pleadings of 35 U.S.C. § 101 invalidity of claims of U.S. Patent Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146; the Federal Circuit thus reversed-in-part, affirmed-in-part, and remanded. The three surviving patents (with the exception of one independent claim which had a patentable dependent claim), the ’259, ’545, and ’551) were dubbed the “Tab Patents.”  The Tab Patents purportedly solved the problem that “complex commands” were required by “prior art three-dimensional or multipage electronic spreadsheets.”  The patent-eligible solution was “a notebook-tabbed interface” to provide users with easy navigation through three-dimensional spreadsheet.  Why?  Because the notebook tab “allowed computers, for the first time, to provide rapid access to and processing of information in different spreadsheets, as well as easy navigation in three-dimensional spreadsheets.” Interestingly, the court supported its conclusion by pointing to what most of us would think of as secondary considerations of non-obviousness (all of which, the court noted, were in the prosecution histories, and therefore included in the pleadings considered at the Rule… Read More »Can One Predict Patent-Eligibility at the Federal Circuit?

When is a document a “Printed Publication” under 102(b)?

The Federal Circuit held that there was an insufficient record to qualify the reference “IsoMed Constant-Flow Infusion System (“IsoMed”) as publicly accessible and therefore a printed publication under 35 U.S.C §102(b), and remanded for additional fact finding in C.R. Bard, Inc., Bard Peripheral Vascular, Inc., v. Angiodynamics, Incorporated(Fed. Cir. Sept. 28, 2018.) The patents at issue were U.S. Patent Nos. 7,785,302, 7,947,022, and 7,959,615. The Patent Trial and Appeal PTAB held the claims unpatentable in part in aninter partesreview. Both parties appealed various aspects of the PTAB’s rulings. Relevant Law A reference qualifies as a printed publication under §102(b) if the reference was “sufficiently accessible to the public interested in the art.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Analysis Bard, the patent owner,  argued that the PTAB erred in concluding thatIsomedqualifies as a “printed publication” under 35 U.S.C. §102(b). Isomedis a clinical reference guide developed by a third-party, Medtronic, Inc.,… Read More »When is a document a “Printed Publication” under 102(b)?

Plain and Ordinary Claim Construction

In Wisconsin Alumni Research Foundation v. Apple, No. 2017-2265 (Fed. Cir. Sept. 20, 2018), the Federal Circuit construed a pair of claim terms under their plain and ordinary meaning in reversing summary judgment that Apple was not entitled to a pre-trial finding of non-infringement of U.S. Patent 5,781,752, while affirming a summary judgment that the ‘752 patent was not anticipated. The ’752 patent is owned by the Wisconsin Alumni Research Foundation (WARF) and is directed to the storage, retrieval, and processing of data by a processor. In particular, the claims of the ‘752 patent provide an improvement to processing technology by enabling the processor to execute program steps in an order that is different that their program order. Steps may be performed out of order when the results of one step are not necessary for another step. The claimed invention includes a “predictor” that makes predictions for a “particular” load instruction based on a mis-speculation instruction. The predictor uses a table that associates a load tag with a load instruction. The predictor updates the prediction as the program is run. At the district court, neither WARF nor Apple sought construction of the term “particular.” However, WARF unsuccessfully moved before trial to… Read More »Plain and Ordinary Claim Construction

Linking Web Pages to Each Other Not Patent-Eligible

Agreeing that patent claims “are directed to the abstract idea of facilitating cross-marketing relationships and fail to add any inventive concept” under 35 U.S.C. § 101 and the Alice/Mayo abstract test, Delaware’s Judge Stark granted a Rule 12(b)(6) motion to dismiss a complaint alleging infringement of claims of U.S. Patent No. 8,768,760.  DiStefano Patent Trust III, LLC v. LinkedIn Corp., C.A. No. 17-1798-LPS-CJB (D. Del. Sept. 28, 2018). The ’760 patent is entitled “Reciprocal Linking Arrangement between Webpages.” The parties agreed that independent claim 1 was representative: A method, within and by a computer hardware system that is configured to serve a first web page associated with a first user and a second web page associated with a second user, comprising: receiving, from a first computer associated with the first user, a first indication to opt into a reciprocal linking arrangement; receiving, from a second computer associated with the second user, a second indication to opt into the reciprocal linking arrangement; establishing, within a database associated with the computer hardware system, the reciprocal linking arrangement based upon both the first and second users opting to participate in the reciprocal linking arrangement; including, within the second web page and based upon the reciprocal… Read More »Linking Web Pages to Each Other Not Patent-Eligible

Menu Claims Patent-Ineligible Under Apple, Core Wireless

Claims directed to an “information management and real time synchronous communications system for configuring and transmitting hospitality menus” were held patent-ineligible under 35 U.S.C. § 101 and the Alice abstract idea test in Ameranth, Inc. v. Pizza Hut, Inc., No. 3-11-cv-01810 (S.D. Cal. Sept 25, 2018).  The court thus granted the defendants’ motion for summary judgment that U.S. Patent No. 8,146,077 is unpatentable. The independent claims of the ’077 patent (which you can see at the above link) are all really, really long, but boil down to steps to generate user-friendly menus for entering data, and to provide for easy updating when menus change.  The defendants argued that the “claims are directed to the abstract idea of configuring and transmitting menu information,” while the patent owner was less clear what the claims were about, variously arguing for novel arrangements of, first, software, and then hardware. The patent owner tried to argue that the claims here had additional limitations that overcame the holding in Apple, Inc. v. Ameranth, Inc.,842 F.3d 1229 (Fed. Cir. 2016), that claims of patents related to the ’077 patent were patent-ineligible, and by relying on PTAB decisions to deny Covered Business Method (CBM) review of the ’077 patent.  But the PTAB… Read More »Menu Claims Patent-Ineligible Under Apple, Core Wireless