December 2018

Language From CIP Survives “New Matter” Challenge

Finding that the Patent Trial and Appeal Board failed to consider the entire record, the Court of Appeals of the Federal Circuit vacated and remanded for further analysis the Board’s decision affirming a rejection of claims for lack of sufficient written description support under 35 U.S.C. § 112. In re: David Tropp, 2017-2503, (Fed. Cir, Dec. 12, 2018.) The PTAB affirmed an Examiner’s rejection of claims 29-53 of U.S. Patent Application 13/412,233 for lack of sufficient written description support under 35 U.S.C. § 112. David Tropp, the inventor, appealed. Claim 29 was treated as representative and recites in part: A set of locks for securing travelers’ luggage while facilitating an entity’s authorized luggage-screening of luggage that the travelers have locked with said locks, without breaking the locks or the luggage, wherein the set comprises at least a first subset and a second subset each comprising plural locks, each lock in each of the first and second subsets having a combination lock portion for use by the travelers to lock and unlock the lock and in addition having a master key portion for use by the luggage-screening entity to unlock and re-lock the lock while the combination lock portion of the… Read More »Language From CIP Survives “New Matter” Challenge

E.D. Tex. Invalidates E-Ticket Patents Under § 101

Magistrate Judge Payne in the Eastern District of Texas recently recommended invalidating two e-ticket patents for ineligible subject matter under § 101. In Bytemark v. Masabi, No. 2:16-cv-00543-JRG-RSP (E.D. Texas, Nov. 25, 2018), the magistrate judge recommended granting a motion for summary judgment of invalidity under § 101, mooting challenges under §§ 102, 103, and 112. The parties’ dispute began with Bytemark suing Masabi for infringement of two e-ticket patents, U.S., Patent Nos. 8,494,967 and 9,239,993. Bytemark and Masabi market competing e-ticket apps to cities for their citizens to use on public-transportation systems. In essence, the patents cover displaying a picture on an end user’s smartphone so that a human ticket taker can quickly verify the ticket. Claim 1 of the ’967 patent, which the court treated as representative, recites: A method by a server system for obtaining visual validation of the possession of a purchased electronic ticket on a user’s computer device for presentation to a ticket taker comprising: receiving from the user’s computer device a request to verify purchase of a previously purchased electronic ticket and to obtain a visual validation display object that confirms that the user possesses the previously purchased electronic ticket for utilization of a service monitored by the ticket… Read More »E.D. Tex. Invalidates E-Ticket Patents Under § 101

Lack of Functional Improvement Renders Method Claims Ineligible

The District of Delaware recently granted 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. 8,429,005 directed to a method for providing a user an electronic replication of a physical publication page. Tangelo IP, LLC v. Tupperware Brands Corp.  No. 18-cv-692-RGA (D. Del. Nov. 26, 2018). The claims of the ‘005 patent were ineligible because the claims were directed toward the abstract idea of “using an identifier to allow a reader of a printed publication to access related information not in the printed publication,” and the claim limitations failed to “amount to ‘significantly more’ than…the abstract idea itself.” The court held claim 1 of the ‘005 patent was a representative claim. Claim 1 is reproduced here: 1. A method for providing a user an interactive and electronic replication of at least a portion of a corresponding physical publication page, comprising: associating a page number of a physical publication page with an interactive and electronic replication of at least a portion of a physical publication page; the physical publication page having at least two different products appearing on the physical publication page; the page number appearing on… Read More »Lack of Functional Improvement Renders Method Claims Ineligible

CAFC Affirms Rejections of Computer Product-by-Process Claim

The Federal’s circuit has affirmed a Patent Trial and Appeal Board (PTAB) decision in turn affirming a patent examiner’s rejections under 35 U.S.C. § 101 for lack of patent-eligibility, and under 35 U.S.C. § 112 for lack of written description and indefiniteness, of a product-by-process claim directed to “a resource planning forecast product.” In re Downing, No. 2018-1795 (Fed. Cir. Dec. 7, 2018) (non-presidential). The only independent claim at issue reads as follows (emphases provided by the court): 1. A resource planning forecast product operable in a computer and recorded on a non-transitory computer-readable medium for retrieval interlinking non-business or business information relevant to the end user without mandatory reliance on a network or another computer file or Internet access to operate wherein the product is produced by the processes of: (a) designing a diffusion-based proprietary forecasting technique on an Excel computer platform for operation within a resource planning framework to: (1) simplify forecasting initialization with defaults option and exclusion of advanced statistical requirements in forecasting, (2) consider social and technological change, (3) make forecasts of operations and development and strategic plans of 1-5-15 years simultaneously, and (4) provide automatic updates reducing manual operations and storage requirements such that this process taken in combination improves… Read More »CAFC Affirms Rejections of Computer Product-by-Process Claim

Generic Structure Not Enough to Establish Patent-Eligibility

The Northern District of California recently granted 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. 8,350,928, directed to “a system and method for the automatic analysis and categorization of images in an electronic imaging device.” Secure Cam, LLC v. Tend Insights, Inc., No. CV 18-02750-EJD (N.D. Cal. Nov. 14, 2018). The claims of the ‘928 patent were ineligible because, like In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016), the claims were directed to the abstract idea of analyzing and automatically categorizing digital images. Further, like TLI, the claims include physical components, such as a digital camera, “but the physical components ‘merely provide a generic environment in which to carry out the abstract idea.’” The ‘928 patent is the parent application for three continuation applications (U.S. Patent Nos. 8,531,555, 8,836,819, and 9,363,408) that all share a common specification. The court held claim 1 of the ‘928 patent was a representative claim for each patent because there were only minor differences between the claims. Claim 1 of the ‘928 patent is reproduced here: 1. A digital camera for automatically categorizing captured… Read More »Generic Structure Not Enough to Establish Patent-Eligibility

§ 112 Indefiniteness for Mixing Claims to Apparatus and Method

Claims in a patent directed to medical diagnostics were indefinite under 35 U.S.C. §112(b) and Nautilus, Inc. v. Biosign Instruments, Inc. (S. Ct. 2014), said a court in granting summary judgment of invalidity. Lecat’s Ventriloscope v. MT Tool and Manufacturing, No. 1-16-cv-05298 (N.D. Ill. Nov. 20, 2018). Claim 1 of U.S. Patent No. 7,645,141 seems to recite an apparatus, but note the emphasized language: 1. An arrangement for auscultation training, comprising: a signal generator capable of generating an audio signal representing at least one sound, the signal generator being controlled by a human operator, wherein the human operator plays one or more appropriate audio files according to a user’s placement of a stethoscope headpiece on a patient; a transmitter associated with the device for transmitting an audio signal corresponding to the at least one sound; an auscultation device, comprising a stethoscope, remote from the transmitter, the auscultation device comprising: a receiver adapted to receive the audio signal from the transmitter; and a speaker adapted to audibly communicate the audio signal received by the receiver to the user. The court agreed with the defendant that claim 1 and its dependent claims “fell squarely” within a line of cases including IPXL Holdings, LLC v. Amazon. com,… Read More »§ 112 Indefiniteness for Mixing Claims to Apparatus and Method

Graphical User Interface not Patent-Eligible

Patent claims directed to a remote user interface displaying a plurality graphical user interfaces (GUIs) were held not patent eligible under 35 U.S.C. § 101 in Valmont Industries, Inc. v. Lindsay Corporation, No. 15-42-LPS (D. Del. Nov. 14, 2018). The Court found that the claims of U.S. Pat. No. 7,003,357 were directed to the abstract idea of “remotely monitoring and controlling irrigation equipment” without an inventive concept, granting a motion to dismiss under F.R.C.P. 12(b)(6). Claim 25, added in the first ex parte reexamination and the focus of this decision, recites: A remote user interface for reading a status of and controlling irrigation equipment including a pivot and at least two end-guns affixed to the pivot, comprising: a hand-held display; a processor; wireless telemetry means for transmitting signals and data between the remote user interface and the irrigation equipment; and software operable on said processor for: (a) displaying data received from the irrigation equipment as a plurality of graphic user interfaces (GUIs) that are configured to present said data as status information on said display, wherein said plurality of GUIs are shaped to identify particular types of irrigation equipment by comprising a pivot GUI that represents the pivot, at least two end-gun GUIs… Read More »Graphical User Interface not Patent-Eligible

Establishing Online Chats Not Patent-Eligible Under Alice

Patent claims directed to establishing online chat sessions are not patent-eligible under 35 U.S.C. §101 and the Alice/Mayo test, said Federal Circuit Judge Bryson, sitting in the District of Delaware, in granting a defendant’s motion to dismiss. Epic IP LLC v. Backblaze, Inc., C.A. No. 1:18-141-WCB (D. Del. Nov. 21, 2018). Here are the representative independent claims of U.S. Patent No, 6,434,599: 1. An on-line chatting method comprising: facilitating visit by a first on-line user to an information page of an information site; facilitating dynamic formation of a chat session unaffiliated with any pre-established chat room for said first on-line user and a second on-line user to chat with each other; and facilitating said chat session through which said first and second on-line users chat with each other. * * * 19. An information server comprising: a plurality of information pages to be selectively provided to a client computer responsive to the client computer’s request; and a first script/applet to be included with a responsive information page to enable the client computer to initiate dynamic formation of a chat session unaffiliated with any pre-established chat room for a user of the client computer to chat with a second user of interest, also… Read More »Establishing Online Chats Not Patent-Eligible Under Alice