November 2018

Digital Gift Certificates Fail Alice Patent-Eligibility Test

Patent claims directed to electronic gift certificates are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo test, according to a US magistrate judge’s recommendation to grant a Rule 12(b)(6)  motion to dismiss. Coqui Technologies, LLC v. Gyft, Inc., No. 17-777-CFC-SRF (D. Del. Nov. 16, 2018). The court found that claims of U.S. Patent No. 7,580,864, entitled “Method for circulating an electronic gift certificate in online and offline system,” were “directed to the abstract idea of selling, gifting, and using electronic gift certificates” without an additional inventive concept. Claim 1 of the ’864 patent recites: 1. A gift certificate service system for managing sales, gifting, and usage of electronic gift certificates according to a request by a user’s communication terminal through a wired network, wireless network, or both, comprising: a gift certificate service server for managing purchase, gifting, and usage operations on the electronic gift certificates from the communication terminal; a gift certificate database, accessed by the gift certificate service server, for storing electronic gift certificate information prior to transferring the gift certificate to a transferee, and processing a reply to an inquiry of electronic gift certificate usage from the gift certificate service server; and a network server, accessed by the… Read More »Digital Gift Certificates Fail Alice Patent-Eligibility Test

User Interface Features Not Patent-Eligible

Finding a lack of technical innovation, a court held claims for three features for a user-vehicle interface to be directed to patent-ineligible abstract ideas under the Mayo/Alice test and 35 U.S.C. § 101. Thunder Power New Energy Vehicle Development Co. Ltd. v. Byton North America Corp., No. 18-cv-03115-JST (N.D. Ca., Oct. 31, 2018). Plaintiff, Thunder Power, alleged infringement by Defendant Byton of claims of Patent Nos. 9,547,373, 9,563,329, and 9,561,724. Byton moved to dismiss, contending that the asserted claims failed to recite patent-eligible subject matter under 35 U.S.C. § 101. The court granted the motion to dismiss.   The ‘373 Patent Patent ‘373 is directed to a system that captures and processes gesture signals from both a driver and a passenger, prioritizing the driver where the two are in conflict. Claim 1, chosen by the court as representative recites in part: A vehicle operating system for operating a vehicle . . . comprising . . . a processing device configured to . . . determine a first operational signal is from a gesture action image for the driver and determine a second operational signal is from a gesture action image for the passenger . . . select the first operational signal… Read More »User Interface Features Not Patent-Eligible

Finding of Improved Computer Functionally Supports Patent-Eligibility

In IDB Ventures, LLC v. Charlotte Russe Holdings, Inc. (2:17-CV-660-WCB-RSP), the Eastern District of Texas highlighted the effectiveness of showing that a patent claim is directed to a specific improvement to computer functionally for overcoming a challenge based on 35 U.S.C. § 101. Plaintiff IDB Ventures, LLC, (IDB) sued Defendant Charlotte Russe Holdings, INC., (Charlotte Russe) for infringement of U.S. Patent No. 6,216,139 (the ‘139 patent) entitled “Integrated Dialog Box for Rapidly Altering Presentation of Parametric Text Data Objects on a Computer Display.” Claim 1 of the ‘139 patent recites: 1. A method for using a computer system to sort and display text data objects, comprising the steps of: a. imaging, on a display device controlled by the computer system, a query dialog box, where in the query dialog box displays each of a plurality of parameters associated with each of the text data objects, forms a plurality of spaces for listing values associated with each displayed parameter, and further forms a space for selecting a sort order; b. designating, for each displayed parameter, a parameter value; c. constructing a sort order from the displayed parameters in the space for selecting a sort order; d. selecting, using the computer system, text data… Read More »Finding of Improved Computer Functionally Supports Patent-Eligibility

Enfish=Patent-Eligibility for Software License Enforcement

Reversing a District Court decision, the Federal Circuit had held that patent claims directed to enforcing software licenses are patent-eligible under 35 U.S.C. §101 and the Alice abstract idea test. Ancora Technologies, Inc. v. HTC America, Inc., No. 2018-1404 (Nov. 16, 2018) (precedential) (opinion by Judge Taranto, joined by Judges Dyk and Wallach).  Claims of U.S. Patent No. 6,411,941 recite “methods of limiting a computer’s running of software not authorized for that computer to run.”  Relying on Enfish, LLC v. Microsoft Corp., (Fed. Cir. 2016), the Federal Circuit reversed the lower court’s Rule 12(b)(6) dismissal, holding that “the claimed advance” was patent-eligible as “a concrete assignment of specified functions among a computer’s components to improve computer security.” Claim 1 of the ’941 patent recites 1. A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of: selecting a program residing in the volatile memory, using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record, verifying the program using… Read More »Enfish=Patent-Eligibility for Software License Enforcement

Courts Splits Patent-Eligibility of Method and System Claims

The Central District of California recently granted, in part, a motion to dismiss based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test, in claims of U.S. Patent No. 8,934,535,  directed to a method for data compression and decompression. Realtime Adaptive Streaming LLC v. Google LLC, et al., No. CV 18-3629-GW(JCx) (C.D. Cal. Oct. 25, 2018). The court denied the motion for two other patents (U.S. Patent Nos. 9,769,477 and 7,386,046) with claims directed to system of data compression and decompression. The method claims of the ’535 patent were ineligiblebecause the patent failed to state that the claimed method would result in an increased compression speed. Concerning the’477 and ’046 patents, on the other hand, Google failed to show that the claimed systems, which included multiple compression encoders selected for use based on evaluating data, did not impart structural organization to computer processing comparable to the computer memory system in Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017). The ’535 and ’477 patent are each continuations of the ’046 patent and share a common specification. The ’406 and ’477 patents cover a system of data compression and decompression, while the ’535 patent covers a… Read More »Courts Splits Patent-Eligibility of Method and System Claims

Analyzing Tweets is Abstract

A method for analyzing text to determine a strength of an opinion is not patent-eligible subject matter under § 101. Isentium, LLC v. Bloomberg Fin. L.P., 17-cv-7601 (PKC) (S.D.N.Y. Oct. 29, 2018). U.S. Patent No. 8,556,056 is directed to a multi-step method for evaluating statements that discuss publicly traded assets to determine whether the statement express a positive, negative, or neutral opinion (i.e., a “polarity”) and to assign a strength value to the opinion. Specifically, Plaintiff analyzed Tweets to provide information for financial professionals. The Court granted a 12(b)(6) motion to dismiss the Complaint, holding that the claims of the ‘056 patent were ineligible under 35 U.S.C. § 101. Applying the first step of the Alice test, the Court held that the claims were directed to the abstract idea of analyzing whether a statement communicates an opinion about a publicly traded asset and the strength of that opinion. The Court likened the claims to those of SAP Am. Inc. v. Investpic, LLC, which held that selecting and analyzing information with mathematical techniques and reporting the results is an ineligible abstract idea. 898 F.3d 1161 (Fed. Cir. 2018). Plaintiff’s attempts to rely on McRO Inc. v. Bandai Namco Games Am. Inc. failed, as the… Read More »Analyzing Tweets is Abstract

Fitness-Tracking Cartoon Not Patent Eligible

Personal Beasties stumbled out of the gate against Nike, with a district court invalidating Personal Beasties’ patent for ineligible subject matter on a motion to dismiss. Personal Beasties Group LLC v. Nike Inc., An animated character—even an encouraging one—did not provide enough to leap the § 101 hurdle. Personal Beasties accused Nike of patent infringement in the Southern District of New York over U.S. Patent No. 6,769,915 for an “Interactive System for Personal Life Patterns.” Personal Beasties makes an app to improve breathing, which displays a cartoon monster that reacts enthusiastically when the user breathes well: The accused product is Nike’s FuelBand, a fitness-tracking wristband with an accompanying app that also displays a cartoon creature with a positive attitude: Nike discontinued the FuelBand in 2015 and stopped supporting the app earlier this year, so Personal Beasties’ complaint is only requesting damages. But Personal Beasties won’t see those damages because the court found that the patent covered ineligible subject matter under § 101. The court deemed claim 1 representative: 1. A user-interactive behavioral modification system for modifying undesired behavioral patterns comprising: an input means for inputting a first set of personal data by a user into a base module; the base module further including at least… Read More »Fitness-Tracking Cartoon Not Patent Eligible

McRO Saves Video Game User Location Patent Claims

Patent claims directed to mapping “a physical location determined by the user . . . to a video game environment” have survived a Rule 12(b)(6) motion alleging patent-ineligibility under 35 U.S.C. § 101 and the Alice patent-eligibility test.  Blackbird Tech LLC v. Niantic, Inc., No. 1-17-cv-01810 (D. Del. Oct. 31, 2018).  U.S. Patent No. 9,802,127 allows a user to “experience[] objects from the users [sic] entered location while playing the video game.”  Representative claim 1 recites: 1. A computer-implemented method comprising: receiving a first position indicator representing a first current physical location for a user of a video game, wherein said first position indicator is determined at least in part by taking a global navigation satellite system reading of said first current physical location; obtaining image data relating to said first current physical location, said image data comprising two or more camera images of said first current physical location; mapping said image data into a virtual environment of said video game by displaying said image data as a video, wherein said user experiences within said virtual environment real life objects from said first current physical location, and said user simultaneously encounters within said virtual environment virtual objects that are not physically present in… Read More »McRO Saves Video Game User Location Patent Claims

McRO Saves Product Cataloging Patent Claims at Rule 12 Stage

Patent claims directed to pricing and cataloging products have survived a Rule 12 Motion because the court thought that there was a chance that the patent owner might be able to show a technological improvement as in McRO, Inc. v. Bandai Namco Games Am. Inc. (Fed. Cir. 2016). Vendavo, Inc. v. Price f(x), No. AG et al, 3-17-cv-06930 (N.D. Cal. Oct. 22, 2018).  Regardless of whether you think the patent-eligibility test should be more or less stringently applied, you may find this decision vexing if you share my (admittedly subjective) perspective that the USPTO would not today allow these claims, and that many courts would have invalidated them under 35 U.S.C. § 101 and the Alice patent-eligibility test. This action includes five patents-in-suit, characterized by the court as follows, with my emphases to point to findings that I believe would have led many judges (whether in U.S. District Court or at the PTAB) and patent examiners to find the claims patent-ineligible: U.S. Patent No. 7,308,421 is entitled “System and Method for Grouping Products in a Catalog” and discloses application of different types of pricing rules to a product in order to prepare a price quote.. . . The patent asserts use of dynamic… Read More »McRO Saves Product Cataloging Patent Claims at Rule 12 Stage