April 2020

District Court Considers Challenges of Section 101 Eligibility on the Pleadings, Highlights Need for Factual Record: Slyce Acquisition, Inc. v. Syte-Visual Conception, Ltd.

Should eligibility under 35 U.S.C. § 101 ever be decided on the pleadings? The Western District of Texas says that such decisions should be rare because of the deep factual requirements for a proper § 101 analysis. Slyce Acquisition, Inc. v. Syte-Visual Conception, Ltd., W-19-cv-00257-ADA (W.D. Tex. Jan. 10, 2020). Plaintiff Slyce sued Defendants for infringement of U.S. Patent No. 9,152,624. The ‘624 patent is directed to uploading images and searching for recognized objects in the images without text labels. Defendant initially filed a motion to dismiss under 12(b)(6), alleging that claim 1 of the ‘624 patent is invalid under 35 U.S.C. § 101. The motion was denied, briefly noting that, in light of MyMail, Ltd. v. ooVoo, LLC, the Court would wait until claim construction to consider eligibility on § 101. No. 2018-1758 (Fed. Cir. 2019). Surprisingly, the Court “takes no position on whether there are any factual disputes that preclude dismissal at the pleadings stage.” At the very least, this is unusual because courts typically find a factual dispute in the pleadings as justification to deny motions to dismiss, but the Court did not explore the specific claim language at all. Defendants filed a motion for reconsideration, arguing… Read More »District Court Considers Challenges of Section 101 Eligibility on the Pleadings, Highlights Need for Factual Record: Slyce Acquisition, Inc. v. Syte-Visual Conception, Ltd.

PTAB Invalidates Telehealth Patent as Anticipated, Rejects Indefiniteness Challenges, in PG Review

The Patent Trial and Appeal Board recently invalidated a patent related to remote optometry in a Post-Grant Review proceeding.  20_20 Vision Center, LLC v. DigitalOptometrics LLC, PGR2018-00100 (April 15, 2020). The PTAB invalidated the patent as anticipated by an earlier remote-optometry patent, but the challenges for indefiniteness and lack of enablement were rejected. The petition for review by the PTAB was brought by 20/20 Vision Center against U.S. Patent No. 9,980,644, held by competitor DigitalOptometrics. Both companies provide optometrist appointments in which the optometrist can be in a separate facility from the patient. Here is independent claim 12, which is representative of the other challenged dependent claims: 12. A system for providing eye health and vision examinations, comprising: a diagnostic center including ophthalmic equipment comprising a set of instruments that are utilized in administering eye examinations and being coupled to an equipment controller that is configured to receive instructions for controlling the ophthalmic equipment, wherein the diagnostic center is configured to: in response to receiving a first request from the diagnostic center, select a subset of remote technicians to administer an eye examination based, at least in part, on analyzing availability data to identify at least one remote technician who… Read More »PTAB Invalidates Telehealth Patent as Anticipated, Rejects Indefiniteness Challenges, in PG Review

Method for Providing Enhanced Functionality in Exchange for Personal Information is Ineligible: Veripath, Inc. v. Didomi

In granting a motion to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test, a court held that patent claims directed to “granting permission to access personal information in exchange for enhanced functionality…[of] a routine piece of software” are abstract ideas, and “merely stat[ing] that the claims teach a technology-based solution, which improves the functionality of the prior art” does not provide an inventive concept. Veripath, Inc. v. Didomi, No. 19-civ-1702 (GBD) (S.D.N.Y. Mar. 30, 2020) (patent-in-suit is U.S. Patent No. 10,075,451). Independent claim 1 of the ‘451 Patent is reproduced here: 1. A method for controlling access to a user’s personal information comprising:      providing a software component for inclusion in an application, the software component having an application programming interface (API);      obtaining, from the application executing on a device of a user of the application, personal information about the user of the application, the personal information obtained via the API by the software component executing on the device;      identifying the type of the obtained personal information;      determining, based on at least the type of obtained personal information, a required permission from the user for at least one proposed use… Read More »Method for Providing Enhanced Functionality in Exchange for Personal Information is Ineligible: Veripath, Inc. v. Didomi

Is Inconsistency Indefiniteness under 35 U.S.C. § 112? TVnGo Ltd. V. LG Electronics, Inc.

Claims of five patents directed to toggling between television and Internet content have been held invalid under 35 U.S.C. § 112(b) based on indefiniteness of claim terms directed to content “overlays” on a display screen. TVnGo Ltd. V. LG Electronics, Inc., Civil No. 18-10238 (RMB/KMW) (D. N.J. April 16, 2020). The patents-in-suit are U.S. Patent Nos. 8,132,220; 9,124,945; 9,392,339; 9,407,969; and 9,794,621; the indefinite claim terms, identified during a claim construction proceeding, are “overlay activation criterion” and “overlay activation signal.” The court found these claim terms, indisputably not “terms of art, nor defined by the Specifications,” indefinite under Nautilus, Inc. v. Biosign Instruments, Inc. (U.S. S. Ct. 2014) because they “create irreconcilable inconsistencies into the Patents-in-Suit” in two ways. First, the terms have “intra-patent inconsistencies,” i.e., within respective patents. Second, the terms have “inter-patent inconsistencies,” i.e., across all of the patents. The court identified three intra-patent inconsistencies: First, claims of each of the ’220 and ’969 patents explicitly recited “overlay activation criterion” as being provided “over the Internet,” where other claims and the Specifications “state that ‘user command information’ may be a component of ‘overlay activation criterion’ and that such information is provided at the user’s premises and not over… Read More »Is Inconsistency Indefiniteness under 35 U.S.C. § 112? TVnGo Ltd. V. LG Electronics, Inc.

Prior Art Anticipates Claims because “A” means “One or More”

The Central District of California held that claims directed to “‘an induction actuated container which is capable of automatically opening when a user is approaching, and automatically closing when the user has left’” are invalid because they are anticipated by prior art. Nine Stars Group (U.S.A.), Inc. v. Factory Direct Wholesale, LLC, No. 18-6471 PSG (PJWx) (C.D.Cal. Apr. 6, 2020) (patents-in-suit are U.S. Patent Nos. 7,911,169 and 8,129,930). A representative claim from the ‘169 patent is reproduced here: 1. An induction actuated container cover for a container body having a storage cavity and a container opening at an upper portion of said container body, wherein said induction actuated container cover comprises:  a control housing, having a cover opening, adapted for mounting at said container body at said container opening thereof to communicate said cover opening with said receiving cavity of said container body; a cover panel pivotally mounted to said control housing to pivotally move between a closed position that said cover panel covers at said cover opening to enclose said receiving cavity and an opened position that said cover panel exposes said cover opening for communicating with said receiving cavity; an automatic driving arrangement, which comprises: a sensor mounted… Read More »Prior Art Anticipates Claims because “A” means “One or More”

It’s Official: Berkheimer and USPTO’s January 2019 Guidance Have Reduced Alice Rejections

According to a recent report by the USPTO’s Chief Economist, the Federal Circuit’s 2018 Berkheimer decision and the USPTO’s January 2019 patent-eligibility guidance have reduced both the frequency and uncertainty of examiners’ patent-eligibility rejections under and 35 U.S.C. § 101 and the Alice/Mayo test. Anecdotally, for a number of months it has seemed that examiners were making fewer patent-eligibility rejections than they had been in the years following Alice. The January 2019 guidance in particular, as I wrote at the time, seemed designed to reduce Alice rejections. As this graph illustrates, that has proven to be true. Alice rejections peaked prior to Berkheimer; the USPTO points to its April 2018 memorandum modifying § 101 examination procedure in light of Berkheimer as accelerating the downward trend. But again, the dramatic downturn in patent-eligibility rejections occurred after the January 2019 guidance. Perhaps even more interesting than the decrease in Alice rejections is the fact that what the USPTO’s report calls “uncertainty in patent examination” has also declined after being increased by Alice. The USPTO’s measure of uncertainty is “variability in patent subject matter eligibility determinations across examiners in the first action stage of examination.” In other words, the January 2019 guidance has… Read More »It’s Official: Berkheimer and USPTO’s January 2019 Guidance Have Reduced Alice Rejections

Another Motion to Dismiss Denied by Alleging Inventive Concept: Nice Ltd. v. Callminer, Inc.

Once again, a court has denied a motion to dismiss a patent infringement suit, holding that the question of patent-eligibility under 35 U.S.C. § 101 could not be decided on a Rule 12(b)(6) motion. The Court held that the pleadings alleged an unresolved question of fact of whether the asserted claims contain inventive concepts sufficient to transform an abstract idea into a patent-eligible invention. Nice Ltd. v. Callminer, Inc., No. 18-cv-2024-RGA (D. Del. March 30, 2020). Plaintiff Nice asserted fourteen patents against Defendant Callminer, the patents directed to data collection and classification from phone calls between customers and salespeople. Defendant filed a motion to dismiss under Rule 12(b)(6) on nine of the patents as ineligible under § 101. A Magistrate Judge considered the motion and recommended to deny it because Plaintiffs had pled sufficient facts to present a factual dispute of whether the claims recited an inventive concept, and thus the claims were eligible under § 101. The Court followed the recommendation of the Magistrate Judge. The analysis for all nine patents is nearly identical, so this post will focus on the analysis of U.S. Patent No. 8,611,523. Claim 1 of the ‘523 patent recites: 1. A system for analyzing… Read More »Another Motion to Dismiss Denied by Alleging Inventive Concept: Nice Ltd. v. Callminer, Inc.

CAFC: Obviousness and Design Patents: Spigen Korea Co., LTD. v. Ultraproof, Inc.

The Federal Circuit, in reversing a court’s decision to grant summary judgment of invalidity of claims of three design patents, held that the identification of multiple differences between the claimed design and a cited reference created a factual issue as to “whether [the cited reference] is a proper primary reference” to support an obviousness inquiry for design patents. Spigen Korea Co., LTD. v. Ultraproof, Inc., 2019-1435 (Fed. Cir. Apr. 17, 2020) (patents-in-suit are U.S. Design Patent Nos. D771,607; D775,620; and D776,648). This was a precedential opinion authored by Judge Reyna and joined by Judge Newman. Judge Lourie dissented without opinion. The court first noted that “[s]ummary judgment of obviousness is appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors.” MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1331 (Fed. Cir. 2014). Spigen argued that “there is a material factual dispute over whether [U.S. Design Patent No. D729,218] is a proper primary reference that precludes summary judgement.” The court then explained that “[a] ‘primary reference’ is ‘a… Read More »CAFC: Obviousness and Design Patents: Spigen Korea Co., LTD. v. Ultraproof, Inc.

Extrinsic Evidence and Abstract Ideas in Patent-Eligibility: CardioNet, LLC v. InfoBionic, Inc.

What if any limits are there on the extrinsic evidence (prior art) that can be considered in determining whether a patent claim is drawn to an abstract idea under step one of the Alice/Mayo 35 U.S.C. § 101 patent-eligibility test? And to what extent does the answer to this question matter; is it merely academic? In CardioNet, LLC v. InfoBionic, Inc., No. 2019-1149 (Fed. Cir. April 17, 2020), a three-judge panel (Judges Stoll, Plager, and Dyk) reversed the district court’s grant of a Rule 12(b)(6) motion because claims  of U.S. Patent No. 7,941,207 “are directed to a patent-eligible improvement to cardiac monitoring technology and are not directed to an abstract idea.” The panel unanimously agreed that the ‘207patent’s claims were patent-eligible – and that a remand was not needed for a “review of the prior art or facts outside of the intrinsic record regarding the state of the art at the time of the invention.” Judge Dyk nonetheless vigorously dissented from what he characterized as dicta in Judge Stoll’s majority opinion suggesting that review of “extrinsic evidence to establish that a practice is longstanding” can be limited. Claims 1–3, 7, 10–12, and 22 of the ’207 patent were at issue; independent… Read More »Extrinsic Evidence and Abstract Ideas in Patent-Eligibility: CardioNet, LLC v. InfoBionic, Inc.

Will Dismissal on the Pleadings for Section 101 Eligibility Become Rare?

Should district courts consider eligibility of patent claims under 35 U.S.C. § 101 in a motion to dismiss under Rule 12(b)(6)? The Western District of Texas seems to think this analysis should wait, and only rarely should Section 101 eligibility be decided on the pleadings. Scanning Technologies Innovations, LLC v. Brightpearl, Inc., 6-20-cv-00114 (W.D. Tex. Apr. 11, 2020, Order). Defendant Brightpearl filed a motion to dismiss Plaintiff Scanning Technologies Innovations’ complaint for patent infringement under Federal Rule of Civil Procedure 12(b)(6). The motion was filed on April 10, 2020, a Friday. The next day, Saturday, April 11, the Court issued a text order denying the motion. The order is about half a page long, and the relevant section recites: In light of the Court’s order in Slyce v. Syte, No. 6:19-cv-257-ADA, 2020 WL 278481 (W.D. Tex. Jan. 10, 2020), the Court does not believe this is one of the rare cases where it is appropriate to resolve the Section 101 eligibility of the patents-in-suit as a Rule 12(b) motion to dismiss. It is therefore ORDERED that Defendants’ motion is dismissed WITHOUT PREDJUDICE. Defendants may refile their motion after the opening of fact discovery. Should Defendants elect to refile their motion… Read More »Will Dismissal on the Pleadings for Section 101 Eligibility Become Rare?