April 2019

Claims Survive on Unresolved Question of Fact

The Central District of California recently denied a motion to dismiss on patent eligibility under 35 U.S.C. § 101 because a question of fact remained unresolved. In MoviePass, Inc. v. Sinemia, Inc., No. CV 2:18-1517 (C.D. Cal. Apr. 5, 2019), the Court held that the question of whether claims of U.S. Patent Nos. 8,484,133 and 8,612,235 are eligible under Section 101 required additional fact finding under the Federal Circuit’s 2018 decisions in Berkheimer v. HP and Aatrix v. Green Shades,. Plaintiff MoviePass asserted the ‘133 and the ‘235 patents against Defendant Sinema. The patents are directed to identifying an authorized user’s identity based on the location of a mobile device and, once the user’s identity is verified to be near a chosen movie theater, providing funding to the authorized user to purchase movie tickets. Defendant filed a motion to dismiss under FRCP 12(b)(6), alleging that the claims of the asserted patents were ineligible under Section 101. Applying the two-part eligibility test of Mayo Collaborative Servs. v. Prometheus Labs and Alice Corp. v. CLS Bank, Defendant alleged that the claims were directed to the abstract idea of verifying a user’s identity based on a request originating from a user’s phone being… Read More »Claims Survive on Unresolved Question of Fact

Conditional Dependent Claim Lacking Mutual Exclusivity is Indefinite

The Central District of California recently held a dependent patent claim indefinite for failing to “specify a further limitation of the subject matter claimed” under 35 U.S.C. § 112. BlackBerry Limited v. Facebook, Inc. et al, No 18-1844-GW(KSx) (C.D. Cal. Apr. 5, 2019). Plaintiff, BlackBerry Limited, alleged infringement of United States Patents No. 8,301,713; 8,296,351; 8,676,929, and 8,209,634 by both Defendants, Facebook, Inc. and Snap, Inc. Following a Markman hearing, the Court construed a plurality of claim terms. This blog post discusses dependent claim 2 of the ‘929 patent, which the Court held to be indefinite under 35 U.S.C. § 112(d). Claims 1 and 2 of the ‘929 patent are reproduced here (emphasis added): A method for pushing information to a mobile device, the method comprising: detecting a triggering event comprising a time triggering event; determining, by a server, information relevant to the detected triggering event from among information stored in one of a plurality of memory location channels, wherein the information is stored in the one of the plurality of memory location channels based on a category of the information matching a pre-defined category of the one of the plurality of memory location channels; when the information relevant to… Read More »Conditional Dependent Claim Lacking Mutual Exclusivity is Indefinite

Lack of Technical Solution in Patent Claims Justifies CBM Review and Alice Ineligibility

Finding that claims of patents directed “to a graphical user interface (‘GUI’) for electronic trading” lacked a technical solution to a technical problem, the Federal Circuit affirmed a Patent Trial and Appeal Board decision holding the claims ineligible under 35 U.S.C. § 101 and the Mayo/Alice test. Trading Technologies International, Inc. v. IBG, LLC, No. 2018-1063 (Fed. Cir. April 18, 2018) (opinion by Judge Moore, joined by Judges Mayer and Linn) (precedential). Interestingly, the court found that the patents’ lack of a technical solution supported both the institution of Covered Business Method (CBM) review, as well as the conclusion that the patent claims were ineligible. The CBM had addressed U.S. Patent Nos. 7,533,056, 7,212,999, and 7,904,374. The patent owner argued that the patents were directed to “technological inventions” within the meaning of America Invents Act § 18(d)(1), and that therefore the CBM had been improperly instituted. Addressing first the ’056 and ’999 patents, their invention was an “intuitive graphical user interface” that “makes the trader faster and more efficient, not the computer,” which was “not a technical solution to a technical problem.” (Emphasis in original.) And the court agreed with the PTAB that the ’374 patent did not solve the… Read More »Lack of Technical Solution in Patent Claims Justifies CBM Review and Alice Ineligibility

Courts Don’t Follow the PTO’s § 101 Patent-Eligibility Guidance so Why Should You?

The Federal Circuit’s recent dicta in a non-precedential decision stating that it need not give deference to the USPTO’s 35 U.S.C. § 101 patent-eligibility guidance highlights the challenges faced by patent applicants. In Cleveland Clinic Foundation v. True Health Diagnostics LLC, No. 2018-1218 (Fed. Cir. April 1, 2019), the court affirmed a District Court’s grant of a Rule 12(b)(6) motion to dismiss based on invalidity of claims of US Patent Nos. 9,575,065 and 9,581,597, as “invalid under 35 U.S.C. § 101 as directed to an ineligible natural law.” The patent owner argued, among other things, that, under Skidmore v. Swift & Co., 323 U.S. 134 (1944), the District Court should have given “appropriate deference to subject matter eligibility guidance published by the PTO,” specifically “Example 29,” published on May 4, 2016. Judge Lourie, writing for the court, explained that While we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance. And, especially regarding the issue of patent eligibility and the efforts of the courts to determine the distinction between claims directed to natural laws and those directed to patent-eligible applications of those laws, we are mindful of the… Read More »Courts Don’t Follow the PTO’s § 101 Patent-Eligibility Guidance so Why Should You?

Radio over Internet Protocol (RoIP) is Patent-Eligible

The District of Delaware recently denied 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. 7,333,806 directed to two-way radio communications utilizing either a computer network or the Internet. RICPI Communications LLC, v. JPS Interoperability Solutions, Inc., No. 18-1507-RGA (D. Del. Mar. 18, 2019). The ‘806 patent was eligible because “the computer network or internet connection serve[d] as one claim element of a concrete system for two-way radio communication.” Additionally, “‘the particular arrangement of elements recited in the ‘806 patent improves the manner in which two-way radios may establish communication by allowing them to do so over a computer network.” Claim 1 is representative and is reproduced here: A system for two-way radio communication comprising: (a) a first two-way radio comprising: (i) a means for selecting and transmitting a signal code to a shared, public base/repeater station; and (ii) a means for sending two-way radio communication signals to said shared, public base/repeater station; (iii) a means for receiving two-way radio communication signals from said shared, public base/repeater station; (b) said shared, public base/repeater station comprising: (i) a base/repeater station decoder at said shared, public base/repeater… Read More »Radio over Internet Protocol (RoIP) is Patent-Eligible

Specification Provides Insufficient Structure for MPF Claim

Granting summary judgement to a defendant accused of patent infringement, a court held two patent claims including the term “control unit” indefinite, finding the description in the specification of a “tone control circuit” did not provide sufficient structure to a person of skill in the art (POSITA) under 35 U.S.C. §112(6). Nichia Corp. v. VIZIO, Inc., No.: cv 8:16-0545 SJO (MRWx), (C.D. CA, March 13, 2019). Plaintiff Nichia Corp.alleged infringement of United States Patents Nos. 7,901,959, 7,915,631, 8,309,375, and 7,855,092 by Defendant VIZIO Inc. After a claim construction hearing, VIZIO filed a motion for summary judgement which the court granted-in part and denied-in-part. This post addresses the Court’s grant of summary judgment for VIZIO finding claims 1 and 12 of the ‘092 patent to be indefinite under 35 U.S.C. §112(6) for lack of sufficient structure in the specification for the claim term “control unit.” Plaintiff Nichia Corp.alleged infringement of United States Patents Nos. 7,901,959, 7,915,631, 8,309,375, and 7,855,092 by Defendant VIZIO Inc. After a claim construction hearing, VIZIO filed a motion for summary judgement which the court granted-in part and denied-in-part. This post addresses the Court’s grant of summary judgment for VIZIO finding claims 1 and 12 of the ‘092… Read More »Specification Provides Insufficient Structure for MPF Claim