The District of Delaware recently issued an instructive decision on eligible subject matter under § 101, invalidating one family of patents while upholding another. IPA Technologies, Inc. v. Amazon.com, Inc. Plaintiff IPA Technologies asserted two families of patents against a typical lineup of tech giants, Amazon, Microsoft, and Google. IPA started by asserting just one family of three patents from a common specification, the “Halverson patents,” U.S. Patent Nos. 6,742,021; 6,523,061; and 6,757,718. Claim 1 of the ’021 patent is representative of the rest: 1. A method for speech-based navigation of an electronic data source, the electronic data source being located at one or more network servers located remotely from a user, comprising the steps of: (a) receiving a spoken request for desired information from the user; (b) rendering an interpretation of the spoken request; (c) constructing at least part of a navigation query based upon the interpretation; (d) soliciting additional input from the user, including user interaction in a non-spoken modality different than the original request without requiring the user to request said non-spoken modality; (e) refining the navigation query, based upon the additional input; (f) using the refined navigation query to select a portion of the electronic data… Read More »IPA Technologies Bats .500 on Subject Matter Eligibility
In a short, unanimous opinion, the Supreme Court held that “secret sales” count as prior art under the on-sale bar. The Court, in the anticipated case Helsinn Healthcare v. Teva Pharmaceuticals, found that Helsinn’s agreement to sell the patented product counted as prior art against its patent stemming from an application two years after the agreement, even though the details of the product were kept confidential. This case begins with Helsinn developing the active ingredient for the drug Aloxi, which treats chemotherapy-induced nausea. In early 2000, Helsinn submitted the drug to the Food and Drug Administration (FDA) for clinical trials with the to-be-patented formulation of 0.25 mg of palonosetron. Later that year, Helsinn made a deal with a marketing partner to license and supply the drug. The agreement was publicly announced, and Helsinn made public submissions to the Securities and Exchange Commission. These public statements did not include the drug’s formulation, and the agreement obligated the marketing partner to keep that formulation confidential. Helsinn did not file a patent application until 2003, from which multiple patents issued, including U.S. Patent No. 8,598,219 (the ’219 patent). In 2011, Teva applied to the FDA to make a generic version of Aloxi, now covered by the… Read More »Secret Sales Are Still Prior Art under the On-Sale Bar
A court found that claims of two patents were ineligible under 35 U.S.C. §101 and the Alice/Mayo test because the claims were all “directed to the same economic practice: the idea of presenting discounts or offers for goods and services based on certain criteria, such as a user’s location.” Valentine Communications, LLC v. Six Continents Hotels, Inc., No. 1:18-cv-1815-WMR (N.D. Ga. Jan. 9, 2019). The court thus granted the defendant’s Rule 12(b)(6) motion to dismiss the plaintiffs complaint alleging infringement of U.S. Patent Nos. 8,567,672 and 8,590,785. Claim 18 of the ’672 patent recites a computer-implemented “method for providing a discount to a user associated with a user device.” Claim 1 of the ’718 patent recites a mobile device that “receives an offer for the product or service in response to the transmission of the subset of purchasing data and in accordance with a search function.” The plaintiff pointed to claim recitations of hardware to support their argument that the claims were directed to more than an abstract idea. But the court thought that, when the conventional hardware elements were “stripped away” from the claims, all that remained were a “fundamental economic practice.” Unfortunately for the plaintiff, the patents themselves more or less explicitly… Read More »Patents Claim E-commerce not Technical Solution, Fail § 101
Does an obviousness rejection under 35 U.S.C. § 103 in which a single reference discloses each element require a motivation to combine with another reference? In Realtime Data, LLC v. Iancu, the Federal Circuit said no, upholding a rejection of claims of U.S. Patent No. 6,597,812 from the Patent Trial and Appeal Board in an inter partes review. This case is particularly interesting, and my colleague Chris Francis discusses its implications on claim differentiation. The ‘812 patent is directed to lossless data compression using “dictionary encoding,” a method of encoding large strings of data with short unique word identifiers that reduce the number of characters in a compressed file. Claim 1 recites in relevant part: 1. A method for compressing input data comprising a plurality of data blocks, the method comprising the steps of: …maintaining a dictionary comprising a plurality of code words, wherein each code word in the dictionary is associated with a unique data block string…. During the inter partesreview, the Board held that the ‘812 patent was obvious over U.S. Patent No. 4,929,946 to O’Brien in view of Nelson, a textbook on data compression. Notably, the Board held that O’Brien alone disclosed every element of claim 1 of the… Read More »Single Reference Obviousness Rejection Requires No Motivation
Claim differentiation was one factor that led the Federal Circuit to affirm the PTAB’s claim construction in the appealed IPR in Realtime Data, LLC v. Iancu (Fed. Cir., Appeal No. 2018-1154, decided Jan. 10, 2018). This case also involves an interesting issue regarding obviousness and motivation to combine, and Dennis Crouch has summarized that issue on his blog at PatentlyO.com. This quick post below focuses on the claim construction of the phrase “maintaining a dictionary.” By way of background, the opinion notes that “dictionary encoding is a form of lossless data compression that assigns a code word to a particular data string, maps that code word to an index, and replaces every matching data string with the corresponding code word…This assignment would be mapped to an index, or dictionary.” The independent claim at issue reads: 1. A method for compressing input data comprising a plurality of data blocks, the method comprising the steps of: detecting if the input data comprises a run-length sequence of data blocks; outputting an encoded run-length sequence, if a run-length sequence of data blocks is detected; maintaining a dictionarycomprising a plurality of code words, wherein each code word in the dictionary is associated with a unique data… Read More »Another Example of Claim Differentiation
The Federal Circuit held that the broadest reasonable interpretation of “at least one piece” of a computer file can include the entire computer file in the absence of further limitation in the claim or definition in the specification. AC Technologies v. Amazon.com, Inc. (Appeal No. 218-1433; Decided January 9, 2019). The patent at issue is directed toward storing copies of data across a network to improve data integrity and reduce network lag. To accomplish this, the system copies data redundantly across the network. The relevant claim at issue reads: 1. A data management system comprising: … at least one computer unit that stores at least one complete file, each file including a plurality of individual pieces, the pieces containing parts of the files, wherein at least one piece is stored in a redundantmanner in the at least two data storageunits; … In the underlying IPR, which was appealed in this case, the patent holder argued that the claim must be properly construed to require redundantly storing file pieces, not the complete file. The Board reasoned that because the independent claim recites “at least one piece,” the claims contemplate copying and storing more than one piece of a file, including up to… Read More »“At Least One Piece” Can Mean the Whole Thing
Effective January 7, 2019, United States Patent and Trademark Office patent examiners and PTAB judges will be operating under new guidance for evaluating subject matter eligibility. Specifically, the USPTO is changing its interpretation and application of the first step of the two-part Alice/Mayo test. (Step one is whether claims are directed to a judicial exception such as an abstract idea, and step two is whether, if so, the claims recite a significant additional innovation.) Under the new guidance, the USPTO is expanding the analysis under step one to determine whether a claimed judicial exception that is an abstract idea “is integrated into a practical application of that exception.” If so, then “a claim is not ‘directed to’ a judicial exception.” The new guidance is clearly aimed at computer-implemented inventions. The new procedure, the USPTO explicitly says, applies only to judicial exceptions that are abstract ideas, but not to laws of nature and natural phenomena. Abstract ideas, of course, are very often implicated with respect to computer-implemented inventions. In short, this is all about software patent claims. Laudably, the USPTO is acknowledging and addressing the need for greater clarity and reliability in patent-eligibility determinations. In the four-and-a-half years since Alice, the courts and the PTAB,… Read More »New USPTO Patent-Eligibility Guidance Is a Material Change
Unsurprisingly, a Federal Circuit panel has affirmed the USPTO’s refusal to withdraw a patent-eligibility rejection under 35 U.S.C. § 101 for claims directed to playing and wagering on a dice game. In re Marco Guldenaar Holding B.V., No. 2017-2465 (Fed. Cir. Dec. 28, 2018). Interestingly, however, while unanimous in the judgment, the panel disagreed about the application of the two-step test set forth by the Supreme Court in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). The majority opinion (Judge Chen joined by Judge Bryson) applied a standard of review under which, as set forth in Berkheimer v. HP Inc. (Fed. Cir. 2018), § 101 patent-eligibility “is a question of law that may contain underlying issues of fact.” Judge Mayer concurred in the judgment because, in his view, the § 101 patent-eligibility analysis does not include questions of fact. The claims whose rejection was under appeal were easy enough to address. The representative claim recited: 1. A method of playing a dice game comprising: providing a set of dice, the set of dice comprising a first die, a second die, and a third die, wherein only a single face of the first die has a first die marking, wherein only two… Read More »Patent-Eligibility: Question of Fact or Law?