February 2019

Patent Claims Held Indefinite for Mixed Apparatus and Method

In a Claim Construction Memorandum and Order, a court recently held a claim term indefinite for mixing an apparatus and a method. Wireless IP Holdings, L.P., v. Samsung Electronics Co., Ltd., et al. No. 2:18-CV-28-JRG, (E.D. Texas, Jan. 29, 2019). Plaintiff Wireless IP Holdings alleged infringement of United States Patents No. 8,014,284 (“the ‘284 Patent”), 8,559,312 (“the ‘312 Patent”), and 9,392,638 (“the ‘638 Patent”) by Defendant Samsung Electronics Co.Following a Markman Hearing, the Court construed a plurality of claim terms. This blog post discusses a claim term held to be indefinite for mixing apparatus and method subject matter classes. The claim term in question recites “the add-on base station . . . is [owned and] installed by an individual or entity, separate and distinct from the telephone service provider, with access to the public Internet.” The parties disputed the interpretation of “is owned and installed by an individual or entity separate and distinct from the telephone service provider.” DefendantSamsung argues that the recitation is indefinite for impermissibly mixing an apparatus and a method. The term does not include language such as “capable of” (installation by an individual), or anything similar. Rather, the term affirmatively requires that the add-on base station is “owned and… Read More »Patent Claims Held Indefinite for Mixed Apparatus and Method

Videoconferencing Services Switch System Claim is Patent-Eligible

The Eastern District of Texas recently denied a Rule 12(b)(6) 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 Nos. 9,154,734; 9,253,444; and 9,419,939 each directed to a videoconferencing system using an Internet Protocol (IP). Teleconference Systems LLC, v. Metaswitch Networks Corp., No. 18-CV-234-JDK (E.D. Tex. Feb. 5, 2019).The claims of the ‘734 patent were eligible because the claims were not directed toward an abstract idea, but rather were directed toward “a specific device – an allegedly improved videoconferencing services switch – not merely the idea of video conferencing itself.” Additionally, the claims “described a new videoconferencing services switch comprised of several modules and a policy engine to improve on the…videoconferencing technology.” Teleconference did not dispute Metaswitch Networks’ assertion that claim 11 of the ‘734 patent is representative for each patent. Claim 11 is reproduced here: A videoconferencing services switch adapted for deployment in a service provider Internet Protocol (IP) network and capable of processing a videoconferencing call between an origination terminal and a destination terminal, the origination and destination terminals being located on one or more subscriber IP networks, the videoconferencing services switch comprising: a call control… Read More »Videoconferencing Services Switch System Claim is Patent-Eligible

Using Claim Construction to Import Limitations

In Continental Circuits LLC v. Intel Corp. No. 2018-1076 (Fed. Cir. Feb. 8, 2019) the Federal Circuit determined the district court erred in its claim construction and explained the high bar that must be met to import limitations from a patent specification to the claims. Plaintiff Continental Circuits, LLC, (Continental) sued Defendants Intel Corp. et. al., (Intel) for infringement of U.S. Patent Nos. 7,501,582 (“the ’582 patent”); 8,278,560 (“the ’560 patent”); 8,581,105 (“the ’105 patent”); and 9,374,912 (“the ’912 patent”)(collectively “the patents”). The patents are direct toward a “multilayer electrical device . . . having a tooth structure” and methods for making such device. The patents are continuations of each other and share a substantially common specification. The patents’ specifications describe that the best method for producing the claimed teeth is to perform a double desmear etching process. The specifications specifically point out that the double desmear process differentiates the patents from a single desmear process used in the prior art. During prosecution of the ‘560 patent, the claims were subject to a rejection for indefiniteness and written description under 35 U.S.C. section 112. In response, Continental submitted an expert declaration explaining that the “etching” process disclosed in the specification… Read More »Using Claim Construction to Import Limitations

Network Monitoring Patents Fail Alice Test, Says Delaware’s Judge Stark

Two patents directed to monitoring network response times to determine responsiveness of network services are invalid under 35 U.S.C. § 101 and the Alice/Mayo test, held Judge Stark in the District of Delaware. Citrix Systems, Inc. v. AVI Networks, Inc., No. 17-1843-LPS (D. Del. Feb 13, 2019). Accordingly, the court granted a Rule 12(b)(6) motion to dismiss claims of infringement of US Patent Nos. 8,230,055 and 7,720,954. The court found that claims of the ’055 and ’954 patents “are directed to the abstract idea of using a dynamic response time to determine availability.” The patents distinguish themselves from the prior art by explaining that the dynamic determination of response time, taking “into account variations due to increased load or type of request,” was more accurate than prior art methods that determined availability using static response times. Thus, in the words of the court, “the claimed innovation is the use of one formula (determining availability using an average response time) instead of another, prior art formula (determining availability using a predetermined response time) with the same arrangement of computer components.” By focusing on “the use of an ostensibly improved formula,” the court said, “the claims are directed to an abstract idea.” The court rejected… Read More »Network Monitoring Patents Fail Alice Test, Says Delaware’s Judge Stark

Patent-Eligibility Not Supported by an Ordered Combination of Generic Technology Elements

Patent claims reciting “buying and selling an item relating to unique subjects” unsurprisingly could not meet the patent-eligibility bar of 35 U.S.C. § 101 and the Alice/Mayo test when the patent owner appealed a lower court’s Rule 12(b)(6) dismissal. VOIT Technologies, LLC v. Del-Ton, Inc., No. 2018-1536 (Fed. Cir. Feb 8, 2019) (non-precedential). The trial court had found the claims of U.S. Patent No. 6,226,412 directed to the abstract idea of buying and selling products without an additional inventive concept. The Federal’s circuit agreed. Turning first to part one of the applicable patent-eligibility test, whether the claims are directed to an abstract idea, the court stated that the claims of the ’412 patent are directed to the abstract idea of entering, transmitting, locating, compressing, storing, and displaying data (including text and image data) to facilitate the buying and selling of items. Like claims in Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016), the court said,the claims here are merely directed to collecting, analyzing, and displaying information. These claims did not improve the functioning of a computer as in Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016). The patent owner could not “explain how employing different formats, as claimed, improves compression techniques or the… Read More »Patent-Eligibility Not Supported by an Ordered Combination of Generic Technology Elements

Technological Improvement in Roof Imaging is Patent-Eligible

Can claims directed to correlating images into a three-dimensional model provide a technological improvement sufficient to be patent-eligible under 35 U.S.C. § 101? Yes, says the Court in Eagle View Techs., Inc. v. Xactware Sol’ns, Inc., No. 15-07025 (D.N.J. Jan. 29, 2018). Plaintiffs’ asserted patents (U.S. Patent No. 8078436 is representative) for providing a roof repair estimate based on aerial images. Defendants filed a motion for summary judgment, arguing that the claims are invalid under 35 U.S.C. § 101 as an abstract idea without significantly more. The Court denied the motion, holding under the 2-part Alice test that the claims were directed to a technological improvement, and thus not an abstract idea. For the first step of the Alicetest, the Court noted that the claims included elements toward two non-stereoscopic and non-identical images of the roof structure that the computer manipulated to overlie each other and develop a three-dimensional model of the roof. While Defendants argued that the claims could be performed by a human sketch, the Court disagreed, noting that the claims are directed to specific methods of correlating the non-stereoscopic views of different sections of the roof. The Court compared this improvement to Thales Visionix and Finjan, noting that… Read More »Technological Improvement in Roof Imaging is Patent-Eligible

What Kind of Technical Improvement Is Enough for Patent Claims to Survive Alice?

Three patents directed to improving wireless digital signal transmission by “protecting data from loss due to transmission errors” have survived a summary judgment motion seeking to invalidate claims under 35 U.S.C. § 101 and the two-part Alice/Mayo test. The California Institute of Technology v. Broadcom Ltd., (C.D. Cal. Jan. 18, 2019). The court found that claims of US Patent Nos. 7,116,710, 7,421,032, and 7,916,781 “improve[d] on previous data encoding methods by allowing for more efficient data transmission,” and that this was a patent-eligible technical solution. The three patents had a common priority claim and a common specification. At risk of oversimplification, the specification described, and the claims purportedly embodied, the technical improvement of manipulating bits of data to provide error correction codes to improve accuracy without bloating the amount of data being transmitted. After addressing claim construction issues in providing a general background of the law of patent-eligibility, the court turned to the heart of the Defendants’ arguments, which relied on four Federal Circuit cases that the present court found distinguishable: Digitech Image Techs., LLC v. Elecs. for Imaging, Inc. (Fed. Cir. 2014) – patent claims directed to a data structure capturing a device profile were held not patent-eligible. The present court distinguished Digitech as providing broad… Read More »What Kind of Technical Improvement Is Enough for Patent Claims to Survive Alice?

NASDAQ Patent Doesn’t Claim Covered Business Method

The PTAB has declined to institute a Covered Business Method (CBM) review for a patent, owned by NASDAQ, claiming a computerized system for executing securities transactions. Investors Exchange LLC v. NASDAQ, Inc., Case CBM2018-00038 (Patent 7,895,112 B2). According to the PTAB, the Petitioner did not meet its burden of showing that the claims were not a technical solution to a technical problem, and therefore did not meet the requirements of Section 18(d) of the Leahy-Smith America Invents Act (“AIA”). Representative claim 1 recites: 1. A computer system for execution of transactions involving execution of orders for securities, the computer system comprises: a central processor device; a sequential access storage device that provides a persistent store of recorded information; a main memory coupled to the central processor and the main memory storing: an order book that includes orders and/or quotes for a particular security, the orders and/or quotes having various prices, sizes and time priorities; executable code that causes the processor device to match the orders and/or quotes in the order book for the security to a received order for the security, with the order book only accessible by the executable code that matches orders and/or quotes; and the executable code that… Read More »NASDAQ Patent Doesn’t Claim Covered Business Method

Automated Delivery Notification is Ineligible Subject Matter

The Southern District of Florida recently granted a motion to dismiss in favor of Minted LLC, and a motion for judgment on the pleadings in favor of ShoppersChoice.com LLC based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test. At issue wasclaim 11 of U.S. Patent No. 9,373,261, directed to a system for automating notification of delivery or pickup of a good or service. Electronic Communication Technologies, LLC v. Minted, LLC, No. 16-81669-CIV (S.D. Fla. Jan. 18, 2019); Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC, No. 16-81677-CIV (S.D. Fla. Jan. 18, 2019). Claim 11 of the ‘261 patent was ineligible because the claim was directed toward the abstract idea of “providing advance notification of the pickup or delivery of a mobile thing,” and the claim recites “purely generic and conventional computer equipment” that operates in a “routine and conventional” manner. Claim 11 is reproduced here: 11. An automated notification system, comprising: one or more transceivers designed to communicate data; one or more memories; one or more processors; and computer program code stored in the one or more memories and executed by the one or more processors, the computer program code comprising: code that enables a first party associated… Read More »Automated Delivery Notification is Ineligible Subject Matter