February 2020

Determining a Discount to Encourage Participation in an Electronic Trading System is Ineligible

The District of Delaware held that patent claims for multiple patents directed to “electronic trading and settlement systems” are abstract ideas, and “[e]ncouraging participation in a system in which all parties need to utilize similar technology through the well-known concept of discounting” 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. Fast 101 PTY LTD. v. Citigroup Inc., et al., No. 19-1819-RGA (D. Del. Jan. 30, 2020). U.S. Patent Nos. 8,515,867; 8,660,947; 8,762,273; and 10,115,098 are directed to “‘an invoiceless trading system that creates incentives for customers to pay suppliers within a predetermined period of time.’” The court identified claim 1 of the ‘867 patent as representative of all claims in the asserted patents. Independent claim 1 of the ‘867 patent is reproduced here:        1. A system configured for electronic settlement of an order placed by a customer with a supplier comprising:        one or more bank servers, at least one of the one or more bank servers receives a message related to the order, the message comprising at least an order amount;        a database associated with at least one of the… Read More »Determining a Discount to Encourage Participation in an Electronic Trading System is Ineligible

§ 101 Patent-Eligibility Turns on a Technical Solution to a Technical Problem: Pebble Tide LLC v. Arlo Technologies

In an interesting dichotomy, patent claims directed to outputting digital content did not survive, but claims directed to social network search output did survive, respective motions to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test. Pebble Tide LLC v. Arlo Tech., Inc. (D. Del. Jan 31, 2020). Pebble Tide LLC sued three defendants alleging infringement of U.S. Patent Nos. 10,261,739 and 10,303,411, both directed to “capturing, storing, accessing, and outputting digital content.” In an unrelated action, Mimzi LLC sued five defendants alleging infringement of U.S. Patent No. 9,128,981, directed to a “phone assisted ‘photographic memory.’” Delaware’s Judge Stark, in a bench ruling then documented in a written memorandum, held that Pebble Tide’s ’739 and ’411 patents were invalid under § 101, but that Mimzi’s ’981 patent, though directed to an abstract idea, could not be deemed patent-ineligible at the pleadings stage. Pebble Tide Cases The parties agreed that claim 1 of Pebble Tide’s ’739 patent was representative of Pebble Tide’s patent claims for purposes of the defendants’ motion. Under Step One of the Alice test, Judge Stark found that the claim – which, you can see via the above link – “is directed… Read More »§ 101 Patent-Eligibility Turns on a Technical Solution to a Technical Problem: Pebble Tide LLC v. Arlo Technologies

Claim Term “Important” Leads to Indefiniteness

The Eastern District of Texas recently invalidated several patent claims that the court had found indefinite in a separate claim construction ruling in the case Uniloc 2017 v. Samsung. Interestingly, the court found the claim term “partition of important subject matter” indefinite in some claims and not others, despite stating that the claim term had the same meaning in all the claims. Uniloc 2017 is a patent assertion entity that sued several companies for patent infringement in the Eastern District of Texas, in this case electronics- and appliance-maker Samsung. Uniloc’s asserted patent is U.S. Patent No. 7,190,408, related to decoding television signals. The claim term “partition of important subject matter” appears in, among others, claims 1 and 8: 1. A receiver comprising: a decoder for receiving and decoding a signal representing an image and control data wherein the control data defines a vector indicating a location of a partition of important subject matter within said image: the control data further defining the size of said partition showing said important subject matter; and a re-sampling unit for extracting a re-sampled image to be displayed on the screen of a display device from said decoded image by re-sampling said decoded image at… Read More »Claim Term “Important” Leads to Indefiniteness

CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

The Federal Circuit affirmed a decision by the PTAB finding that the claims of U.S. Patent No. 7,529,806 are “obvious over [the prior art] in light of the general knowledge of a skilled artisan.” Koninklijke Philips N.V. v. Google LLC, et al., No 19-1177, (Fed. Cir. Jan. 31, 2020). The claims of the ‘806 patent are directed towards “download[ing] the next file [of a media presentation] concurrently with playback of the previous file.” Philips argued that the Board erred in instituting an IPR “because 35 U.S.C. § 311(b) expressly limits inter partes reviews to ‘prior art consisting of patents or printed publications,’ and because…§ 311(b) prohibits use of general knowledge to supply a missing claim limitation in an inter partes review.” The court found that the Board did not err “in relying on ‘general knowledge’” to institute an IPR because “[a]lthough the prior art that can be considered in inter parte reviews is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” The court noted that “[r]egardless of the tribunal, the inquiry into whether any ‘differences’ between the invention… Read More »CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

Conventional Component For Accepting Credit Card Payment In Taxicab is Ineligible: Curb Mobility, LLC v. Kaptyn, Inc.

A court held that patent claims directed to “the longstanding commercial practice of paying for public transit” are abstract ideas, and “the mere assemblage of admittedly known components” 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. Curb Mobility, LLC v. Kaptyn, Inc., et al., No. 18-cv-02416-MMD-EJY (D. Nev. Jan. 21, 2020). U.S. Patent No. 6,347,739 is directed to “paying for a taxicab with a credit card.” The court noted that the patent “includes two independent claims, though independent claim 11 is basically independent claim 1- a system claim- written as a method claim.” Independent claim 1 of the ‘739 Patent is reproduced here: 1.A system for communications with a network of systems which accepts cred-debit type cards for payments and which is located in a taxicab driven by drivers comprising: a) a meter mounted in the taxicab, having computing capabilities for determining and displaying the fare being charged to a passenger, and having application programs at least some of which mandate a sequential exchange of electronic information between said passenger and said driver regarding the fare that includes the charge for the distance… Read More »Conventional Component For Accepting Credit Card Payment In Taxicab is Ineligible: Curb Mobility, LLC v. Kaptyn, Inc.