October 2019

Court Denies Motion to Reconsider Summary Judgment to Not Invalidate Under On-Sale Bar

Having previously denied summary judgment of invalidity of the plaintiff’s design patent, D450,839, under the 35 U.S.C. § 102 on-sale bar, the court in Junker v. Medical Components, Inc., et al., No. 2-13-cv-04606 (E.D. Pa Oct. 8, 2019), has denied a request for reconsideration that communications between plaintiff and a prospective buyer were not a legal offer for sale. Along the way, the court demonstrated that there can be some flexibility in applying the law governing what is an “offer for sale” under § 102. The court had denied defendant’s motion for summary judgment of invalidity, holding, based on the Restatement of Contracts, that communications between the plaintiff and a prospective buyer were preliminary negotiations and “did not trigger the on-sale bar” due to “the lack of a definite quantity term and delivery time” in the communications and “language that…establish[ed] an invitation to further negotiations.” The Defendants sought reconsideration, arguing that the court made clear errors of law in determining whether an offer for sale was made. See Max’s Seafood Cafe ex rel. Lou-Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). (A motion for reconsideration must rely upon one of the following grounds: “(1) an intervening change… Read More »Court Denies Motion to Reconsider Summary Judgment to Not Invalidate Under On-Sale Bar

October 2019 USPTO Patent-Eligibility Guidance Provides Arguments for Software Patent-Eligibility (Especially Example 45)

The USPTO’s October 17, 2019, patent-eligibility guidance update (and new examples) have received copious attention from law firm commentators and other bloggers. As the PatentlyO blog notes, the USPTO’s guidance doesn’t necessarily follow the case law, but instead “builds a nice straight bridge right over [the] top” of “the swamp” that is § 101 jurisprudence. One of those nice bridges is found in new Example 45, which shows how control software – not an unusual thing to try to patent – can be patent-eligible. Example 45 is about claims directed to “a controller for an injection molding apparatus.” If this sounds familiar, see Diamond v. Diehr, 450 U.S. 175 (1981). To elucidate, the  USPTO provides four example claims: 1. A controller for an injection molding apparatus having a mold defining a cavity for receiving uncured polyurethane that is heated to form a molded article during a cycle of operation of the apparatus, the controller configured to: (a) repeatedly obtain measurements of the temperature of a mold; (b) calculate an extent of curing completion of polyurethane in the mold using the obtained temperatures and the Arrhenius equation; and (c) determine the extent that the polyurethane is cured as a percentage. 2.… Read More »October 2019 USPTO Patent-Eligibility Guidance Provides Arguments for Software Patent-Eligibility (Especially Example 45)

112 and the Zone of Uncertainty

In consolidated cases Niazi Licensing Corp. v. Boston Scientific Corp. and Niazi Licensing Corp. v. St. Jude Medical S.C. Inc. the district court found U.S. Patent 6,638,268 (“the ‘268 patent”) to be invalid under 35 U.S.C. § 112 for being indefinite and not particularly pointing out and distinctly claiming the subject matter which the inventor regards as the invention. The indefiniteness determination for the ‘268 patent was arrived at by the Court during a Markman proceeding to interpret certain claim terms. The independent claims of the ‘268 patent each recite an “inner, pliable catheter.” For example, representative claim 1 recites: an inner, pliable catheter slidably disposed in the outer catheter and of greater length than the outer catheter so that a distal end portion of the inner catheter can be extended or retracted from a distal end opening of the outer catheter. During the Markman proceeding the parties disputed the interpretation of the “inner, pliable catheter.” Niazi argued that the phrase should be construed to mean “a catheter that is easily bent, flexible.” Defendants Boston Scientific and St. Jude argued that the phrase was indefinite. Niazi relied on McCreary v. United States, 35 Fed. Cl. 533, 556-57 (1996) to support… Read More »112 and the Zone of Uncertainty

Automating Data Verification Ineligible under Section 101

Claims directed to automating employment verification data were held invalid under 35 U.S.C. § 101 in the Southern District of Indiana. Tenstreet, LLC v. DriverReach, LLC, No. 1:18-cv-03633 (S.D. Ind. Sep. 30, 2019). Plaintiff Tenstreet owns U.S. Patent No. 8,145,575, which is directed to peer-to-peer job applicant data transmission to verify employment history of commercial truck drivers. Defendant DriverReach moved to dismiss under Rule 12(b)(6) alleging that the ‘575 patent is ineligible under 35 U.S.C. § 101. Claim 1 is representative and recites, in part: A method for peer-to-peer sharing of job applicant verification data over a network, the network comprising; a computerized exchange being in communication with one or more requesters, providers, and job applicants…said method comprising the steps of: …assigning an attribute to each requester, provider, and job applicant… …receiving a verification request from a requester through the communication channel of the requester; …and routing the received verification data through the communication channel of the requester…. The Court granted the motion, holding the claims of the ‘575 patent invalid under § 101. Under the first step of the two step Alice test, the Court considered whether the claims of the ‘575 patent were directed to an abstract idea.… Read More »Automating Data Verification Ineligible under Section 101

Patent Owner Loses under § 101 in CBM Where Claims Not Limited to Technological Innovation Allegedly Disclosed in Patent Specification

All claims of a patent directed to a “security-based order processing technique” are unpatentable under 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a final written decision in a Covered Business Method Review. Miami Int’l. Holdings, Inc. v. NASDAQ, Inc., CBM2018-00030, Patent 7,921,051 B2 (PTAB October 3, 2019). The decision is instructive for two reasons. First, the Patent Owner made unsuccessful arguments that elements described in the specification but not explicitly claimed somehow breathed a patentable technological innovation into the claims. Second, the PTAB continues to explicitly rely on the USPTO’s 2019 revised § 101 guidance that has been questioned, and even disregarded, by the Federal Circuit. The CBM proceeding had been instituted for all claims (1-49) of the ’051 patent, solely on the issue of patent-eligibility under 35 U.S.C. § 101. The PTAB considered independent claim 13 to be illustrative: A computer implemented method of routing securities orders in an electronic market, the method comprising: accessing, by one or more computer systems a configurable look-up table stored in a computer storage medium, in response to a received order involving a specific security, the configurable look-up table including assignment entries that assign each of a… Read More »Patent Owner Loses under § 101 in CBM Where Claims Not Limited to Technological Innovation Allegedly Disclosed in Patent Specification

On-Sale Bar: Patent Invalid over Defendant’s Sale of the Product

A district court ruled that the on-sale bar can be triggered by sales by third parties, even if the product is not delivered until after the critical date. In OneSubsea v. FMC, Civil Action No. H-18-2459 (Sept. 24, 2019), the Southern District of Texas granted a motion for summary judgment of invalidity of OneSubsea’s patent, ending the case in FMC’s favor. OneSubsea owns U.S. Patent No. 9,945,202, which covers a technique for installing undersea wells that protects “potentially susceptible components from unwanted exposure to well fluids or other fluids in a monobore subsea installation.” OneSubsea is a subsidiary of Schlumberger and supplier for oil and gas companies, and FMC is a competitor in the same market. OneSubsea asserted the ’202 patent against FMC for FMC’s well installation equipment, the “High-Pressure High-Temperature Enhanced Vertical Deepwater Tree.” FMC sells two different versions with different pressure and temperature ratings. One Subsea accused the 15 kpsi, 400°F version but admitted that the 20 kpsi, 350°F version was identical for the purposes of infringement and invalidity. FMC had documentation about selling the 20 kpsi, 350°F version to Shell before the ’202 patent’s filing date. This documentation formed the basis of FMC’s motion for summary judgment.… Read More »On-Sale Bar: Patent Invalid over Defendant’s Sale of the Product

Details Matter for Patent-Eligibility (and Other Bases for Patent Validity)

An important lesson for patent drafting – disclose and claim as much detail as you can about how the invention works, as opposed to simply what it does – falls out of a Federal Circuit panel’s split decision holding patent-ineligible claims directed to tuning liners of driveline propshafts to damp vibrations. In American Axle & Mfrg., Inc. v. Neapco Holdings LLC, No. 2018-1763 (Fed. Cir. Oct. 3, 2019) (precedential), the majority, Judge Dyk, joined by Judge Taranto, affirmed a summary judgment that claims of U.S. Patent No, 7,774,911 (“Method for Attenuating Driveline Vibrations”) are invalid under 35 U.S.C. § 101 as directed to a law of nature. The majority found that the claimed liner tuning of “merely amounts to an application of a natural law (Hooke’s law) to a complex system without the benefit of instructions on how to do so.” In dissent, Judge Moore identified numerous claimed inventive concepts beyond natural law, and castigated the majority for subsuming the question of enablement under 35 U.S.C. § 112 into the patent-eligibility analysis of 35 U.S.C. § 101. Judge Dyk’s opinion identified independent claims 1 and 22 of the ’911 patent as representative. Those claims are reproduced below: 1. A method… Read More »Details Matter for Patent-Eligibility (and Other Bases for Patent Validity)

Limits on Obviousness – Beyond the Claim Elements

Here is a lesson on obviousness. The Federal Circuit agreed with the Patent Trial and Appeal Board (PTAB) that claims for a system to measure degradation of cooking oils in a deep fryer were non-obvious under 35 U.S.C. §103. The PTAB had found that a skilled artisan would not have been motivated to combine the identified references, and that secondary evidence provided by the patentee supported non-obviousness. The court agreed in Henny Penny Corp. v. Frymaster LLC, No. 2018-1596 (Fed. Cir., September 12, 2109). Henny Penny Corporation’s (HPC) appeal was from the PTAB’s Inter Partes Review final decision Henny Penny Corp. v. Frymaster L.L.C., No. IPR2016-01435, 2017 WL 6551237(P.T.A.B. Dec. 21, 2017) holding claims 1-3, 5-12, 17-21 and 23 of U.S. Patent 8,497,691 not unpatentable as obvious. Background This case relates to measuring total polar materials (TPMs) that build up in aging cooking oil. High TPM levels in cooking oil indicate that the oil is degraded. Representative claim 1 of the ‘691 patent recites: A system for measuring the state of degradation of cooking oils or fats in a deep fryer comprising: at least one fryer pot; a conduit fluidly connected to said at least one fryer pot for transporting… Read More »Limits on Obviousness – Beyond the Claim Elements