September 2019

“Circuit For” Interpreted as Means-Plus-Function

Even without the word “means,” claims can be interpreted as means-plus-function, as demonstrated by the Central District of California in a decision in Limestone Memory Systems v. Micron Technologies. The court interpreted the phrase “an activation control circuit for…” in one of Limestone’s asserted claims as means-plus-function and found that the description contained insufficient corresponding structure. The claim, therefore, is invalid. Limestone is a nonpracticing entity that acquires, asserts, and licenses patents. In this case, Limestone’s asserted patents come from a variety of sources: U.S. Patent Nos. 6,697,296 originally assigned to Renesas, 5,805,504 originally assigned to NEC, and 6,233,181 originally assigned to Mitsubishi. All three patents relate to semiconductor memory. Micron, as one might expect, is a memory and storage maker. This decision from the court is a claim-construction order covering numerous claim terms. The claim term of interest in this post is from claim 13 from the ’296 patent: an activation control circuit for selectively activating said signal input circuitry according to said operation activation signal and the signal stored in said register circuitry, said activation control circuit selectively activating said signal input circuitry according to said operation activation signal when the stored signal in said register circuitry indicates… Read More »“Circuit For” Interpreted as Means-Plus-Function

Failure to Disclose Sales Before Critical Date is Inequitable Conduct

Failure to disclose “material information of prior sales” resulted in a holding that U.S. Patent No. 8,146,428 “is unenforceable due to inequitable conduct” based on a finding of a “specific intent to deceive the PTO into granting the patent.” Total Rebuild, Inc. v. PHC Fluid Power, LLC, No. 6:15-CV-1855 (W.D. La. Sept. 13, 2019). The ‘428 patent is directed to “systems and methods for safely testing devices and components under high-pressure.” Total Rebuild alleged PHC Fluid Power infringed the claims of the ‘428 patent. PHC Fluid Power challenged the enforcement of the ‘428 patent due inequitable conduct of the sole inventor regarding the on-sale and public-use bars of 35 USC § 102(b). The critical date for the ‘428 patent under 35 USC § 102(b) is August 8, 2007. The court noted that “[t]o prevail on inequitable conduct, the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference or prior commercial sale, knew that it was material, and made a deliberate decision to withhold it.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011) (en banc). Further, the court noted that “[i]ntent and materiality are separate requirements for a finding… Read More »Failure to Disclose Sales Before Critical Date is Inequitable Conduct

Online User Authentication Service Fails § 101 Patent-Eligibility Test

Claims of a patent directed to “an interaction between a user, an ASP [authentication service provider] client, and an ASP” were invalid under 35 U.S.C. § 101 and the Mayo/Alice patent-eligibility test, said a Northern District of California judge in Smart Authentication LLC v. Electronic Arts, Inc., Case No. 19-cv-01994-SI (N.D. Cal. Sept. 11, 2019). The court granted the defendant’s motion for summary judgment, and dismissed the plaintiff’s complaint with prejudice. Following Inter Partes Review proceedings, the only remaining asserted claim of U.S. Patent No, 8,082,213B2 was claim 11, which depended from claim 1: 1. A user-authentication service implemented as routines that execute one or more computer systems interconnected by two or more communications media with both an authentication-service client, and a user, the user-authentication service comprising: the one or more computer systems; stored user-authentication policies specified by the user; stored user information; account interface routines that implement an account interface by which the user specifies, modifies, adds, and deletes user-authentication policies; and authentication-interface routines that implement an authentication interface by which, following initiation of a transaction by the user with the authentication-service client, the authentication-service client submits an authentication request, through the first communications medium or through a second… Read More »Online User Authentication Service Fails § 101 Patent-Eligibility Test

Indefiniteness Challenges Hinge On Textual Support

Whether a court holds a patent claim indefinite under 35 U.S.C § 112 can depend on textual support in the body of the claim or in the patent specification. In Luminati Networks, Ltd. v. UAB Tesonet, no. 2:18-cv-299 (E.D. Tex. Aug. 20, 2019), the Court issued a claim construction hearing for key terms of U.S. Patent No. 9,241,044. The asserted patents are directed to improved methods of communicating content between multiple devices over the Internet. The relevant claims here are claims 81, 99, and 108 of the ‘044 patent (emphasis added): Claim 81 A method for fetching over the Internet a first content, identified by a first content identifier, by a first device, identified in the Internet by a first identifier, from a second server identified in the Internet by a third identifier via a second device identified in the Internet by a second identifier, using a first server, the method comprising the steps of: (a) sending the first identifier to the first server; (b) sending a first request to the first server; (c) receiving the second identifier from the first server; (d) sending a second request to the second device using the second identifier, the second request includes the… Read More »Indefiniteness Challenges Hinge On Textual Support

Death and Taxes and Patent-Ineligibility of Business Methods

For all the kvetching about the frustrating subjectivity and unpredictability of applying the Mayo/Alice patent-eligibility test, here is a case showing that there is a zone of certainty in determining patentability under 35 U.S.C. § 101. In In re Greenstein, 2019-1521 (Fed. Cir. Sept. 6, 2019) (per curiam; panel was Prost, Newman, and Moore) (non-precedential), the Federal Circuit issued a reminder that clients can be counseled with some certainty that business methods, however new and different, are not patent-eligible if the improvement is to a business process, and not to technology. Mark Greenstein, proceeding pro se, appealed the USPTO examiner’s rejection under §§ 101, 102, and 103 (the § 102 and § 103 rejections were not reached in the present decision), affirmed by the Patent Trial and Appeal Board (PTAB), of the following claim: One or more computers with associated software programmed to: receive, at a processor and store using one or more storage devices employing memory, data corresponding to invested amounts and using one or more computers with associated software including algorithms and employing such software and algorithms to: utilize a projected amount of income at a future date for at least one person; automatically adjust the amount such… Read More »Death and Taxes and Patent-Ineligibility of Business Methods

Generic Computer Collecting Data and Using Mathematical Formula is Ineligible

A court held that patent claims directed toward “data collection and mathematical computations are quintessential abstract ideas,” and “[t]he generic equipment underlying the claims does not provide an inventive concept,” granting a motion to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test. TPP Tech LLC, v. Zebra Technologies Corporation, No. 19-CV-00500-RGA (D. Del. Aug. 15, 2019). U.S. Patent Nos. 7,295,224 and 7,825,943 are directed to “‘compensating for the effects of thermal history on thermal print heads.’” The court noted for both patents “that the method and apparatus claims are indistinguishable for the purpose of the Section 101 analysis.” Independent claim 1 of the ‘224 Patent is reproduced here: 1. A computer-implemented method comprising steps of: identifying a first print head temperature Ts of a print head in a printer; identifying a current ambient temperature Tr in the printer; identifying a modified print head temperature Ts’ based on the first print head temperature Ts and at least one property selected from the group consisting of the ambient printer temperature Tr and a current relative humidity; and identifying an input energy to provide to a print head element in the print head based on the… Read More »Generic Computer Collecting Data and Using Mathematical Formula is Ineligible

“Virtual Client Entity” Deemed Indefinite By District Court Under MPF Analysis

The District Court for the District of Delaware recently handed down a claim construction order in T-JAT Systems 2006 v. Expedia that held the claim limitation “virtual client entity” was indefinite under 35 U.S.C. § 112, ¶2. The court concluded that the claim limitation was indefinite after determining that “virtual client entity” should be interpreted as invoking 35 U.S.C. § 112, ¶6 (means-plus-function) and then ascertaining that the specification failed to provide sufficient structure for “virtual client entity.” Claim 1, which was deemed representative, recited: A method for providing a user of a telephone device with a capability to use Internet-based applications, which method comprises the steps of: transmitting from said telephone device an indication towards a first server, denoting a request to be connected to an Internet-based application residing at a second server; providing said user with a menu from which the user selects a requested Internetbased application; after selecting an application, establishing a communication path that extends between said telephone device and said second server via said first server; at said first server, creating a virtual client entity specific to said telephone device and said Internet-based application to be used, created specifically to allow communication between said telephone… Read More »“Virtual Client Entity” Deemed Indefinite By District Court Under MPF Analysis

TTAB Requires Cross-Examination By Oral Deposition in CAPTAIN CANNABIS Battle

In a precedential decision in a cancellation proceeding, the Trademark Trial and Appeal Board has ruled that Petitioner Laverne J. Andrusiek must cross-examine, by oral deposition, Respondent Cosmic Crusaders LLC’s witnesses who provided direct testimony via written declaration.  Laverne Andrusiek v. Cosmic Crusaders LLC   Andrusiek contends that he created a comic book character named “Captain Cannabis” in the 1970s, and operates a website identifying various books and other works related to that character since that time. Cosmic Crusaders appears to be associated with a cannabis activist under the moniker of “Captain Cannabis,” and related media, including a “Cosmic Crusaders” comic featuring a “Captain Cannabis” character. Cosmic Crusaders obtained the registration at issue for CAPTAIN CANNABIS , for comic books in Class 16, in 2015.   Andrusiek sought leave to cross-examine Cosmic Crusader’s witnesses by written questions, citing, as factual background, to the inconvenience and expense of conducting oral cross-examinations. Andrusiek was identified as being in Washington state, while Cosmic Crusader’s witnesses were identified as being in Tampa, Florida. Andrusiek cited 37 CFR 2.124(b)(3) as basis for the request:   A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration… Read More »TTAB Requires Cross-Examination By Oral Deposition in CAPTAIN CANNABIS Battle