August 2019

Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding

In William Grecia v. Samsung Electronics (Fed. Cir. 2019) the Federal Circuit affirmed a finding of invalidity for U.S. Patent 8,533,860 (the ‘860 patent) under 35 U.S.C. § 112, ¶2 (indefinite). The invalidly determination for the ‘860 patent was arrived at by the Court after a means-plus-analysis and invocation of 35 U.S.C. § 112, ¶6. Claim 21, the only claim at issue, recites: 21. A computer product comprising a memory, a CPU, a communications console and a non-transitory computer usable medium, the computer usable medium having an operating system stored therein, the computer product further comprising a customization module, the computer product authorizing access to digital content, wherein the digital content is at least one of an application, a video, or a video game, wherein the digital content is at least one of encrypted or not encrypted, the computer product configured to perform the steps of: receiving a digital content access request from the communications console, the access request being a read or write request of metadata of the digital content, the metadata of the digital content being one or more of a database or storage in connection to the computer product, the request comprising a verification token corresponding to… Read More »Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding

Claim term “Processor” does not invoke MPF Construction

In a tentative ruling, a court held the claim term “processor” did not invoke means-plus-function construction and was not governed by 35 U.S.C. §112¶6. Realtime Adaptive Streaming LLC v. Adobe Systems Inc., No. cv 18-9344-GW(JCx) (C.D. CA, July 25, 2019. Plaintiff Realtime Adaptive Streaming LLC (“Realtime”) brought an action against Defendants Google LLC and YouTube LLC (collectively “Google Defendants”) alleging infringement of five Realtime patents. Realtime further filed suit against Defendant Adobe Systems Inc. (“Adobe”), alleging infringement of seven Realtime patents, including the five patents asserted against the Google Defendants. The court directed the parties to file consolidated claim construction briefs for certain disputed terms. The court conducted a hearing and issued a Tentative Ruling construing the disputed terms. Two of the patents asserted against Adobe, US 9,769,477 and US 9,762,907, included the claim term “processor.” Representative claim 1 of the ‘477 patent recites in part: 1. A system, comprising: . . . one or more processors configured to: determine one or more data parameters, at least one of the determined one or more data parameters relating to a throughput of a communications channel measured in bits per second; and select one or more asymmetric data compression encoders from among… Read More »Claim term “Processor” does not invoke MPF Construction

Terminal Disclaimer: Common Ownership Necessary—or Not—for Standing

Two district courts recently came to the opposite conclusion on terminal disclaimers, an important issue in patent portfolio management. In both cases, the plaintiff asserted a patent for which a terminal disclaimer had been filed, but the plaintiff did not acquire the patent to which the asserted patent had been disclaimed until after filing suit. In Midwest Athletics and Sports Alliance v. Ricoh, the court ruled that the lack of common ownership of the disclaimed patent and disclaimer patent prevented the plaintiff from having standing. But in Fall Line Patents v. Zoe’s Kitchen, the court ruled that, though the disclaimed patent was unenforceable at the time the suit was filed, the unenforceability did not affect standing. Taking a step back, what is terminal disclaimer? Effectively, a terminal disclaimer is an agreement that an applicant makes with the Patent Office when the Patent Office thinks two applications from that applicant are too similar. The issue arises when the Patent Office rejects an application for double patenting; in other words, the application would have been obvious over an earlier application of that applicant’s if that earlier application counted as prior art. Rather than amending the claims of the later application to avoid… Read More »Terminal Disclaimer: Common Ownership Necessary—or Not—for Standing

Your Garage Door Opener Is Not Patent-Eligible

Patent claims directed to a “movable barrier operator,” i.e., controlling a garage door, are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo test. Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd., Nos. 2018-2103, 2018-2228 (Fed. Cir. Aug. 21, 2019) (precedential) (Judge Chen, joined by Judges O’Malley and Lourie).  There are a lot of lessons in this procedurally rich post-trial appeal from, and partial reversal of, denial of a JMOL motion. In this post we will focus on a substantive lesson: patent claims reciting devices and hardware elements have no particular claim to patent-eligibility. Representative claim 1 of U.S. 7,224,275 recites A movable barrier operator comprising: a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states; a movable barrier interface that is operably coupled to the controller; a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that: corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and comprises an identifier that is at least relatively unique to the… Read More »Your Garage Door Opener Is Not Patent-Eligible

Transmitting Particular Data via Conventional Mode is Ineligible

The Eastern District of Texas 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 U.S. Patent No. 6,014,089 directed to methods of transmitting data to a remote device using a personal communications system. First-Class Monitoring, LLC, v. United Parcel Service of America, Inc., No. 19-CV00106-WCB (E.D. Tex. Jul. 22, 2019). The ‘089 patent was ineligible because “the claims are not based on an improvement in computer or communications technology.” In particular, “‘the invention made no technological changes to the short message system, but merely used that system for transmitting particular data requests and responses to those requests.” Claim 1 and Claim 7 were analyzed by the court and differ from each other in that Claim 7 “recites the automatic collection of data at the data collection unit, as compared with data collection initiated by a data request.” Claim 7 is reproduced here: A method for transmitting a data sequence via a personal communications system transmission protocol comprising the steps of: automatically collecting data at a data collection unit; composing at least one data packet including said collected data, said at least one data packet including said collected data… Read More »Transmitting Particular Data via Conventional Mode is Ineligible

Determining Patent-Eligibility Requires Claim Construction!(?)

In a decision that Judge Lourie in dissent described as “based on a claim construction issue that is little more than a mirage,” a Federal Circuit panel vacated and remanded a district court’s Rule 12(c) judgment on the pleadings of patent-ineligibility, under the Alice test and 35 U.S.C. § 101, of claims directed to updating Internet toolbars. MyMail, Ltd. v. ooVoo, LLC, Nos. 2018-1758, 2018-1759 (Fed. Cir. Aug. 16, 2019) (precedential). Judge Reyna’s majority opinion, joined by Judge O’Malley, found error in the district court’s decision not “to resolve the parties’ claim construction dispute before adjudging patent eligibility.” The patents-in-suit were US 8,275,863 and 9,021,070, the ’070 patent being a continuation of the ’863 patent. I will not reproduce the lengthy claims here – they can be found at the above links – suffice it to day that the claims of both patents were all about updating Internet toolbars. Majority Opinion The patent owner, and now Appellant, had argued to the district court that the construction of “toolbar” in another case, MyMail, Ltd. v. Yahoo!, Inc., No. 2:2016cv01000 (E.D. Tex. Sept. 9, 2017), should be adopted, and supported patent-eligibility. The Yahoo! court construed “toolbar” as “not generic” but rather “button… Read More »Determining Patent-Eligibility Requires Claim Construction!(?)

Organizing Security System Display Data Survives Patent-Eligibility Challenge

Proving that application of the Mayo/Alice patent-eligibility test remains unpredictable and inconsistent, patent claims directed to a security system that monitors “premises using a graphical floor plan” have survived a motion for summary judgment brought under 35 U.S.C. § 101. Applied Capital, Inc. v. ADT Corp., 1:16-CV-00815 (D. N.M. August 7, 2019). U.S. Patent Nos. 8,378,817 and  9,728,082, in a priority chain and having a common specification, were both entitled, and directed to, a “Premises Monitoring System.” Claim 1 of the ’817 patent is representative: A method comprising: receiving one or more signals containing a device identifier and a device condition from one or more remote alarm monitoring systems; retrieving enhanced information based on the device identifier and the device condition; determining one or more communication methods and communication destinations based on the device identifier and the device condition; and dispatching the enhanced information to the one or more communication destinations using the one or more communication methods; and wherein the retrieving enhanced information based on the device identifier and the device condition comprises retrieving images based on the device identifier and the device condition, the images comprising all of the members selected from the group consisting of superimposed visual… Read More »Organizing Security System Display Data Survives Patent-Eligibility Challenge

Audio Compression Improvements are Patent-Eligible

The Northern District of California recently held that claims directed to data compression to improve audio signal processing are eligible under 35 U.S.C. § 101 as improvements to computer operation. Hybrid Audio, LLC v. Asus Comput. Int’l, Case No. 3:17-cv-05947-JD (N.D. Cal. Jul. 11, 2019). Hybrid Audio sued Asus for infringement of U.S. Reissue Patent No. RE40,281. The patent is directed to audio signal processing for compression systems for formats such as MP3. Defendant moved to dismiss under Rule 12(b)(6), alleging that the claims of the ‘281 patent were ineligible abstract ideas with no inventive concept. Under the first part of the two-part test of Alice v. CLS Bank, 573 U.S. 208 (2014), if a claim is not directed to an abstract idea, then the claim is eligible under Section 101 and the second step need not be considered. The Court considered claim 5 as representative, which recites: A signal processing method comprising: splitting a signal into subbands using a plurality of filter banks connected to form a tree-structured array having a root node and greater than two leaf nodes, each node comprising one filter bank having greater than two filters, and at least one of the leaf nodes having… Read More »Audio Compression Improvements are Patent-Eligible

District Court Finds Amazon Lockers Qualify as a Regular and Established Place of Business

Introduction Recently, in Rensselaer Polytechnic Institute et al v. Amazon.com, Inc., a district court weighed in on whether Amazon’s lockers constituted “a regular and established place of business” for the purposes of determining whether venue was proper. Amazon was sued for patent infringement in the Northern District of New York. In response, Amazon argued that venue was improper under 28 U.S.C. § 1400(b) because Amazon contended it had no regular/established place of business within the district. In patent infringement cases, venue is proper in the district (1) “where the defendant resides” or (2) “where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b). This decision focuses on the second prong of § 1400(b) to determine whether Amazon has a regular and established place of business based on Amazon lockers located within the district. Using the three-part test established in In re Cray by the Federal Circuit, the court determined that the Amazon lockers established a regular and established place of business within the district. The three-part test sets forth that the place of business must be “(1) ‘a physical place in the district’ from which the defendant ‘actually engage[s]… Read More »District Court Finds Amazon Lockers Qualify as a Regular and Established Place of Business

Check Processing Claims Fail Alice Test at Federal Circuit

Patent claims directed to a “method for processing paper checks” are invalid under 35 U.S.C. § 101 and the Mayo/Alice abstract idea test, the Federal Circuit held in Solutran, Inc. v. Elavon, Inc., Nos. 2019, 1345, 2019-1460 (July 30, 2019) (opinion by Judge Chen; joined by Judges Hughes and Stoll) (precedential). The court reversed a denial a motion for summary judgment of invalidity under 35 U.S.C. § 101, which had accompanied a grant of summary judgment of infringement. Independent claim 1 of U.S. Patent No. 8,311,945 recites: 1. A method for processing paper checks, comprising: a) electronically receiving a data file containing data captured at a merchant’s point of purchase, said data including an amount of a transaction associated with MICR information for each paper check, and said data file not including images of said checks; b) after step a), crediting an account for the merchant; c) after step b), receiving said paper checks and scanning said checks with a digital image scanner thereby creating digital images of said checks and, for each said check, associating said digital image with said check’s MICR information; and d) comparing by a computer said digital images, with said data in the data file… Read More »Check Processing Claims Fail Alice Test at Federal Circuit