May 2019

On-Sale Bar Applies to Report Generated by Patented Invention

The on-sale bar spelled the end for some of Quest Integrity’s patent claims against Cokebusters in a recent Federal Circuit decision. Interestingly, the on-sale bar applied not because of a sale of a claimed invention but because of a sale of a report generated by the claimed invention. Quest Integrity and Cokebusters are competitors in the field of inspecting tubing for commercial furnaces. Quest Integrity sued Cokebusters for infringing U.S. Patent No. 7,542,874. The asserted claims include method claims, system claims, and computer-readable medium claims. Claim 24 is representative: 24. A computer-readable medium having computer-executable instructions for performing a method of displaying inspection data collected from a furnace, wherein said furnace comprises a plurality of tube segments interconnected by a plurality of bends so as to allow stacking of at least a portion of said tube segments, said method comprising: generating a plurality of data markers each of which identifies a location of a physical feature of said furnace; partitioning said inspection data at said data markers so as to correlate said inspection data to an appropriate one of said tube segments of said furnace; generating a display of at least a portion of said partitioned inspection data arranged to… Read More »On-Sale Bar Applies to Report Generated by Patented Invention

No CBM: Check Deposit Patent Claims Technological Invention

Patent claims reciting a “medium comprising computer-readable instructions for depositing a check” included a “technological invention,” and thus were not eligible for Covered Business Method (CBM) review, held the Patent Trial and Appeal Board (PTAB) in Wells Fargo Bank, NA et al v. United Services Automobile Ass’n., Case CBM2019-00004, Patent 8,977,571 B1 (May 15, 2019). Even though U.S. Patent No. 8,977,571B1 may otherwise have been directed to a “financial product or service,” it qualified for the statute’s provision “that the term does not include patents for technological inventions.” America Invents Action § 18(d). Representative claim 1 of the ’571 patent recites: A non-transitory computer-readable medium comprising computer-readable instructions for depositing a check that, when executed by a processor, cause the processor to: monitor an image of the check in a field of view of a camera of a mobile device with respect to a monitoring criterion using an image monitoring and capture module of the mobile device; capture the image of the check with the camera when the image of the check passes the monitoring criterion; and provide the image of the check from the camera to a depository via a communication pathway between the mobile device and the depository.… Read More »No CBM: Check Deposit Patent Claims Technological Invention

Markman Ruling Finds Preamble Limiting, Claim Term Indefinite

The Southern District of Texas issued an interesting Markman ruling in ConocoPhillips v. In-Depth Geophysical. While the court construed most of the claim terms in ConocoPhillips’s favor, In-Depth managed to secure rulings that the preamble of a claim was limiting and that a claim term was indefinite. This conflict began with ConocoPhillips suing In-Depth Geophysical over four patents: U.S. Patent Nos. 8,897,094; 9,632,193; 9,823,372; and 9,846,248. ConocoPhillips, which you’ve likely heard of, is a large multinational oil and gas company. In-Depth Geophysical, which you’re less likely to have heard of, is a consulting company focusing on, in its words, the “toughest subsurface challenges.” The patents all relate to seismic imaging, sending sound waves into the ground and mapping rock formations based on the returning sound waves. In the first ruling of note, the court determined whether the preamble to this claim is limiting, in other words, whether the accused product must perform the preamble to infringe: A computer-implemented method for determining optimal sampling grid during seismic data reconstruction, the method comprising: a) constructing an optimization model, via a computing processor, given by minu‖Su‖1t. ‖Ru–b‖2≤σ wherein S is a discrete transform matrix, b is seismic data on an observed grid, u… Read More »Markman Ruling Finds Preamble Limiting, Claim Term Indefinite

Communications System Patent Falls Under § 101

In Uniloc USA Inc. v. LG Electronics USA Inc. the district court found claims directed to “primary station for use in a communications system” in U.S. Patent 6,993,049 (“the ‘049 patent”) to be invalid under 35 U.S.C. § 101 for not claiming patentable subject matter. The invalidly determination for the ‘049 patent was arrived at by the court after analysis under the Alice framework, the court ultimately determining that the claims were directed to an abstract idea. Claim 2, selected by the court as representative, recites: A primary station for use in a communications system comprising at least one secondary station, wherein means are provided for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and for adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station. In layman’s terms, the invention was directed to an improvement in Bluetooth technology. Specifically, the improvement and point of novelty in the claim was “adding to each inquiry message prior to transmission an additional data field for polling.” Under step one of the Alice framework the court found that… Read More »Communications System Patent Falls Under § 101

Webpage Tutorial Software Patent Invalidated

Pendo.io, Inc. obtained a dismissal of Walkme Ltd.’s patent infringement suit in the Southern District of New York (Case No. 18cv7654), in a ruling that invalidated Walkme’s US Patent No. 9,922,008 under 35 U.S.C. § 101.  Walkme’s patent describes and claims a method of creating tutorial software to walk users through a webpage, where the software dynamically adapts to edits in the page or different formatting of the page.  The Court ruled that the patent was directed to a patent-ineligible abstract idea under the Alice test, because it claimed no more than the goal of the software (dynamic adaptation) with general computing components. Claim 1  of the ‘008 Patent was the focus of the Court’s analysis.  It recites: A method of creating a dynamically adaptable tutorial, comprising:  selecting a website comprising at least one web document having a plurality of separate graphical user interface (GUI) elements each adapted for receiving an input from a browsing user;  instructing a browser to present said at least one web document in parallel to a user interface for defining a tutorial session of a multistep process related to said website and receiving from said user interface a plurality of descriptive elements which define said tutorial session, each… Read More »Webpage Tutorial Software Patent Invalidated