January 2020

Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent

A provisional patent application must include sufficient description to allow a person having ordinary skill in the art to make an invention as claimed in an asserted patent claiming priority to the provisional application, as recently upheld in Speedfit LLC et al v. Woodway USA, Inc. et al, No. 2-13-cv-01276 (E.D.N.Y. Jan. 9, 2020). Plaintiff Speedfit, LLC owns U.S. Patent Nos. 8,308,619 and 8,343,016, directed to a leg-powered treadmill. Speedfit, LLC and Aurel Astilean sued Defendant Woodway USA, Inc. for infringement of these patents. Defendant filed a motion motion for summary judgment of invalidity of the ‘619 and ’016 patents, asserting that Plaintiffs violated the on-sale bar of pre-AIA 35 U.S.C. § 102. The asserted patents have a critical date of October 29, 2009, one year before the filing date of the ‘619 patent. Plaintiffs filed Provisional Patent Application No. 61/280,265 on Nov. 2, 2009, and the asserted patents claim priority to the ‘265 provisional. Plaintiffs conceded that they offered a leg-powered treadmill for sale at a trade show in March 2009, six months before the critical date. Plaintiffs argued that the asserted patents were entitled to the priority date of the ‘265 provisional, filed within a year of the… Read More »Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent

Patent Claims to Evaluating Body Movement Fail § 101 on Post-Trial Motion: ILife Technologies, Inc. V. Nintendo Of America, Inc.

Patent claims directed to automating collection and interpretation of sensor data are often suspect under the two-part  Mayo/Alice patent-eligibility test under 35 U.S.C. § 101. Not so often, however, do judges do as the court did in iLife Technologies, Inc. v. Nintendo of America, Inc., C.A. No. No. 3:13-cv-4987-M (Jan 17, 2020), and hold patent claims invalid under § 101 after a trial and eight figure jury verdict in favor of the plaintiff. The accused device, interestingly, was one with which many of us are familiar: the Nintendo Wii. Claim 1 of U.S. Patent No. 6,864,796 recites: A system within a communications device capable of evaluating movement of a body relative to an environment, said system comprising: a sensor, associable with said body, that senses dynamic and static accelerative phenomena of said body, and a processor, associated with said sensor, that processes said sensed dynamic and static accelerative phenomena as a function of at least one accelerative event characteristic to thereby determine whether said evaluated body movement is within environmental tolerance wherein said processor generates tolerance indicia in response to said determination; and wherein said communication device transmits said tolerance indicia. A jury found that claims of the ’796 patent were… Read More »Patent Claims to Evaluating Body Movement Fail § 101 on Post-Trial Motion: ILife Technologies, Inc. V. Nintendo Of America, Inc.

Emergency Alert System Is Not Patent-Eligible: Tenaha Licensing LLC v. TigerConnect, Inc.

Patent claims directed to “alert and notification” are ineligible under 35 U.S.C. § 101 and the two-part Mayo/Alice patent-eligibility test, said a Delaware magistrate judge, recommending  granting a Rule 12(b)(6) motion to dismiss a lawsuit alleging infringement of U.S. Patent No. 8,238,869. Tenaha Licensing LLC v. TigerConnect, Inc., C.A. No. 19-1400-LPS-SRF (D. Del. Jan. 2, 2019). Further, the court recommended granting the motion with prejudice. Any attempt by the plaintiff to amend its complaint would be futile, the court said; the patent specification affirmatively provided intrinsic evidence of patent-eligibility that could not be contradicted by extrinsic evidence. The court began by describing the analysis it would follow – this explanation is worth quoting because it is the patent-eligibility analysis that most courts follow, but that few courts explain so clearly: In resolving Defendant’s Motion, the Court will first discuss which claim will be specifically addressed herein as representative. Thereafter, it will analyze the relevant claim under both steps of the test for patent eligibility set out in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014). Finally, the Court will consider whether any factual disputes preclude granting Defendant’s motion and whether leave to amend the Complaint should be granted.… Read More »Emergency Alert System Is Not Patent-Eligible: Tenaha Licensing LLC v. TigerConnect, Inc.

Claims Combing a System and a Method for Using the System are Invalid for Indefiniteness Under § 112

During a Markman patent claim construction proceeding, the Western District of Texas ruled multiple claims of U.S. Patent No. 7,284,203 invalid for indefiniteness under 35 U.S.C. § 112 because the claims “improperly combine system and method claims.” Visible Connections, LLC v. Zoho Corp., No. 18-CV-859-RP (W.D. Tex. Nov. 26, 2019). The court found the claims indefinite because “the presence of user steps [in the claims at issue] makes it unclear whether infringement occurs when one creates an interface program for real-time application sharing or when the user selects the documents to be shared.” Claim 35 is representative of the claims ruled invalid for indefiniteness and is reproduced here: the system of claim [34, 37], wherein the interface program automatically establishes at least a substantially real-time shared viewing of at least one document between at least one audience member and a host user, wherein the host user only selects the at least one document to be shared and the at least one audience member with whom to share the at least one document to initiate the substantially real-time shared viewing. The court noted that “[a] single claim covering ‘both a system and a method for using that system’ is invalid for… Read More »Claims Combing a System and a Method for Using the System are Invalid for Indefiniteness Under § 112