March 2020

Federal Circuit Affirms § 101 Ineligibility of Set-Top Box Advertising Claims: Customedia Techs., LLC v. Dish Network Corp.

Claims of two patents directed to “data management and on-demand rental and purchase of digital data products,” e.g., selling advertising to be displayed via a set-top box, recites patent-ineligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test, held the Federal Circuit in Customedia Techs., LLC v. Dish Network Corp., No. 2018-2239 (March 6, 2020) (precedential). The Federal Circuit, in an opinion by Judge Moore, joined by Chief Judge Prost and Judge Dyk, affirmed the PTAB’s final written decisions, in Covered Business Method Review proceedings, of ineligibility of U.S. Patent Nos. 8,719,090 and 9,053,494. Claim 1 of the ’090 patent recites: 1.  A data delivery system for providing automatic delivery of multimedia data products from one or more multimedia data product providers, the system comprising: a remote account transaction server for providing multimedia data products to an end user, at least one of the multimedia data products being specifically identified advertising data; and a programmable local receiver unit for interfacing with the remote account transaction server to receive one or more of the multimedia data products and for processing and automatically recording the multimedia data products, said programmable local receiver unit including at least one individually controlled and reserved advertising… Read More »Federal Circuit Affirms § 101 Ineligibility of Set-Top Box Advertising Claims: Customedia Techs., LLC v. Dish Network Corp.

“Protocol Module” Deemed Indefinite for Lack of Structure

The District Court for the Northern District of California recently handed down a claim construction order in Microchip Technology Incorporated v. Nuvoton Technology that held the claim limitation “protocol module” was indefinite under 35 U.S.C. § 112, ¶2.  Both parties agreed that the term “protocol module” was subject to interpretation under 35 U.S.C. § 112, ¶6 (means-plus-function).  However, the defendant argued that the specification did not disclose any structure for performing the claimed function “providing configuration data for one of two or more serial communication protocols based on the protocol selection.”  Claim 1, which was deemed representative, recited: A system comprising: an interface module including a buffer or register for storing a protocol selection; a protocol module coupled to the interface module and configured for providing configuration data for one of two or more serial communication protocols based on the protocol selection; a serial engine module coupled to the interface module and the protocol module, the serial engine module configured for:           determining from the protocol selection that data or commands are to be transmitted and received on a serial communication bus using synchronous communication;           determining that a port control module coupled to the serial communication bus is configured… Read More »“Protocol Module” Deemed Indefinite for Lack of Structure

Written Decision Needed For IPR Estoppel

In Finjan, Inc. v. Cisco Systems, Inc. Case No. 17-cv-00072-BLF (N. D. Cal. Feb. 3, 2020) the Northern District of California denied Plaintiff Finjan’s motion for summary judgement of validity of a number of claims of various patents asserted against defendant Cisco. Finjan’s arguments were centered around a pair of petitions for inter partes review filed by Cisco, and the court’s denial articulates the applicably of estoppel in situations where petitions are denied institution. The pair of petitions at the center of Finjan’s arguments were filed with the PTAB by Cisco after Finjan had sought enforcement of a few of its patents. The patents at issue had been subject to, and survived, challenges at the PTAB and Federal Circuit. Cisco was not a party to, or identified as a party of interest in, the previous challenges. The PTAB denied institution of the pair of petitions filed by Cisco. In addition to the petitions, Cisco challenged the validity of Finjan’s patents in the district court case. The invalidity theories presented in the district court were different than those of the IPR petitions – namely, they used different art and relied on expert testimony. Finjan’s primary argument pieced together Cisco’s use of… Read More »Written Decision Needed For IPR Estoppel