November 2019

Selecting Compression Format in Streaming Digital Video Held Not Patent-Eligible: Adaptive Streaming Inc. v. Netflix, Inc.

Patent claims directed to distributing streaming video data in a first formal and then converting the data to a second format are not patent-eligible, said the court in Adaptive Streaming Inc. v. Netflix, Inc., Case No. SA CV 19-1450-DOC (KESx) (C.D. Cal. Nov. 19. 2019). The court thus granted the defendant’s Rule 12(b)(6) motion to dismiss, holding claims of U.S. Patent No. 7,047,305 (“Personal broadcasting system for audio and video data using a wide area network”) invalid under 35 U.S.C. § 101. One lesson of this case is that even long claims with a lot of technical verbiage should not necessarily be expected to survive an Alice challenge. Here is independent claim 39 from the ’305 patent, discussed in the court’s opinion; the bolded limitations are those that the plaintiff argued, without success, represented a patent-eligible technical innovation: A system to broadcast to at least one client device, the system comprising: a processor; and a broadcasting server coupled to the processor, the broadcasting server including: an image retrieval portion to retrieve at least one incoming video signal having a first format; a data structure usable to determine parameters for second compression formats for the at least one incoming video signal;… Read More »Selecting Compression Format in Streaming Digital Video Held Not Patent-Eligible: Adaptive Streaming Inc. v. Netflix, Inc.

VoIP Call Routing Fails Alice § 101 Test: Voip-Pal.com, Inc. v. Apple, Inc.

Claims of four patents directed to routing VoIP calls fail the two-part Mayo/Alice patent-eligibility test, said the court in Voip-Pal.com, Inc. v. Apple, Inc., Case No. 18-CV-06216-LHK, (N.D. Cal. Nov. 1, 2019) (Judge Lucy Koh), granting the defendants’ Rule 12(b)(6) motion to dismiss. Under part one of the Alice test, all of the claims at issue were directed to the abstract “idea of routing a communication based on characteristics of the participants.” Under part two of the Alice test, the claims recited only generic computing technology operating in an expected manner, and hence no inventive concept. This is a case in which a large number of relatively lengthy claims that on their face appear laden with technical detail were invalidated. It will be interesting to watch this case in the doubtless inevitable appeal to the Federal Circuit. The patents-in-suit were U.S. Patent Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549, all entitled “Producing Routing Messages for Voice over IP Communications.” The court identified a number of representative claims from each of the four patents, but focused on claim 1 of the ’002 patent, reproduced below in its voluminous entirety: 1. A method of routing a communication in a communication system between an… Read More »VoIP Call Routing Fails Alice § 101 Test: Voip-Pal.com, Inc. v. Apple, Inc.

Data Processing Can Be Patent-Eligible, Says Federal Circuit in Koninklijke KPN N.V. v. Gemalto M2M GmbH

A patent claiming a “device for producing error checking based on original data provided in blocks with each block having plural bits in a particular ordered sequence” has survived a patent-eligibility challenge at the Federal Circuit under 35 U.S.C. § 101 and the two-part Mayo/Alice test the. Koninklijke KPN N.V. v. Gemalto M2M GmbH, Nos. 2018-1863, 2018-1864, 2018-1865 (Fed. Cir. Nov. 15, 2019) (precedential) (opinion by Judge Chen, joined by Judges Dyk and Stoll). U.S. Patent No. 6,212,662 includes only four claims, one independent. The district court had granted judgment on the pleadings based on finding all four claims patent-ineligible. KPN, the plaintiff-appellant, appealed with respect to dependent claims 2-4, and the Federal Circuit reversed. This case is a poster child for setting forth a technical problem, and the inventor’s solution to it, in the patent specification. Check data, the court noted, is well known for confirming the accuracy of data transmissions. However: Varying the permutation for each data block reduces the chances that the same systematic error will produce the same defective check data across different data blocks. Claims 2–4 thus replace the prior art check data generator with an improved, dynamic check data generator that enables increased detection… Read More »Data Processing Can Be Patent-Eligible, Says Federal Circuit in Koninklijke KPN N.V. v. Gemalto M2M GmbH

Federal Circuit Defines Scope of Reasonably Pertinent Analogous Art

The Federal Circuit vacated a PTAB decision reversing the examiner’s obviousness rejection under 35 U.S.C. § 103 of patent claims directed to “a fire prevention and suppression system that prevents and extinguishes fire using breathable air” because the PTAB “erred in its analogous art analysis.” Airbus S.A.S. v. Firepass Corp., No. 2019-1803 (Fed. Cir. 2019) (See U.S. Patent No. 6,418,752). The court found that the PTAB declined “to consider record evidence relied on…to demonstrate the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.” The ‘752 patent disclosed providing “a low-oxygen (‘hypoxic’) but normal pressure (‘normbaric’) atmosphere” in enclosed facilities so “fires are suppressed while humans can continue to breathe.” During an inter partes reexaminaAirbus v Firepasstion, the examiner rejected the claims as obvious in view of U.S. Patent No. 5,799,652 (Kotliar), which discloses “equipment for providing hypoxic air in an enclosed area for the purposes of athletic training or therapy.” Firepass appealed this rejection asserting that Kotliar was not analogous art. As the court notes, “[t]wo separate tests define the scope of analogous prior art: “‘(1) whether the art is from the same field of endeavor, regardless of the problem… Read More »Federal Circuit Defines Scope of Reasonably Pertinent Analogous Art

Court Overturns § 102 Rejection Due to Limiting Preamble

The Federal Circuit overturned a PTAB decision affirming anticipation rejections under 35 U.S.C. § 102 of patent claims directed to “the construction of travel trailers” because the the PTAB “erred in concluding [the preamble] does not limit the scope of the claims.” In Re: Fought et al., No. 2019-1127 (Fed. Cir. 2019) (See U.S. Patent Application PG-Pub. No. 2014/0008932). The court held the preamble is limiting because “it serves as antecedent basis for a term appearing in the body of a claim.” The court noted that although the “claim[s] do[] not use the typical claim language (comprising) which denotes the transition between the preamble and the body, the word ‘having’ performs the same role here.” Claims 1 and 2 are reproduced here: A travel trailer having a first and second compartment therein separated by a wall assembly which is movable so as to alter the relative dimensions of the first and second compartments without altering the exterior appearance of the travel trailer. A travel trailer having a front wall, rear wall, and two side walls with a first and a second compartment therein, those compartments being separated by a wall assembly, the wall assembly having a forward wall and at… Read More »Court Overturns § 102 Rejection Due to Limiting Preamble

§ 112 Enablement and Written Description in Post-Grant Review

When are written description and enablement requirements of 35 U.S.C. § 112 met, and what is a Petitioner’s burden of showing those requirements are not met in a PTAB proceeding? In Instrumentation Laboratory Co. v. Hemosonics LLC, the Patent Trial and Appeal Board (PTAB) denied institution of post-grant review of U.S. Patent 9,977,039 (“the ‘039 patent”). The PTAB declined institution because if found that Instrumentation Laboratory Co. (“Petitioner”) didn’t meet its burden of proof to support the challenges under 35 U.S.C. § 112 it was alleging against the ‘039 patent. Hemosonics LLC (“Patent Owner”) is the owner of the ‘039 patent, which is directed toward devices, systems and methods for evaluating hemostasis of blood. The invention uses test chambers for holding blood, and “transducers associated with each of the plurality of test chambers in the interrogation of the test sample.” ‘039 Patent, claim 1 (identified as representative by the PTAB). The ‘039 patent issued from a continuation application filed on July 7th, 2017.  The ‘039 patent is a continuation of a series of a US patent application and prior US provisional application having priority dates of Feb. 15, 2012 and Feb. 15, 2011, respectively (“priority applications”). Remember, post-grant review is… Read More »§ 112 Enablement and Written Description in Post-Grant Review

Practical Application Saves Software Claims in PGR

The Patent Trial and Appeal Board recently upheld eligibility of claims in a post-grant review, relying on the USPTO’s 2019 Patent Subject Matter Eligibility Guidance (but writing just before the October 2019 update to the USPTO’s patent-eligibility guidance). Supercell Oy v. GREE, Inc., PGR2018-00061 (Oct. 15, 2019). Petitioner Supercell Oy, developers of the popular mobile game Clash of Clans, filed a post-grant review petition for U.S. Patent No. 9,700,793, owned by GREE, Inc., under 35 U.S.C. §§ 101 and 112. We discussed this case previously when it was instituted as an example of the Patent Trial and Appeal Board using PGR as a way to review eligibility under § 101. Claim 1 is representative and recites, in part, wherein the screen information relates to a first game screen that displays game contents and information relating to a second game screen that displays state information of the game contents, and the second game screen includes latest state information at a time when receiving a first instruction which is an instruction to update the state information. Petitioner argued that claim 1 is directed to the abstract idea of “generating and outputting information relating to game screen(s) in response to an instruction received… Read More »Practical Application Saves Software Claims in PGR