May 2020

Patent Claims to 3D Virtual Environment Held Ineligible at Pleadings Stage: Barbaro Technologies, LLC v. Niantic Inc.

Patent claims directed to a 3D virtual game environment were held ineligible on a Rule 12(c) motion for judgment on the pleadings under 35 U.S.C. § 101 and the  Alice/Mayo test. Barbaro Technologies, LLC v. Niantic Inc., Case No. 18-cv-02955-RS (N.D. Cal. May 21, 2020). The plaintiff had alleged that defendants infringed claims of two patents, US Patent 7,373,377 and US Patent 8,228,325. Asserted claims of the ’325 patent were held ineligible. Claim 1 of the ’325 patent recites: A computer system for providing a virtual thematic environment, comprising: at least one memory having at least one program comprising the steps of: retrieving information for utilization with a three-dimensional virtual thematic environment, from external sources over the internet, said information including a real-world geographic location of a user within said three-dimensional virtual thematic environment; and integrating said information into the three-dimensional virtual thematic environment, such that the three-dimensional virtual thematic environment includes said real-world geographic location displayed to the user as said three-dimensional virtual thematic environment; wherein the user interacts with the three-dimensional virtual thematic environment as a simulated real-world interaction, depending on the user’s geographical three-dimensional movement through the three-dimensional virtual thematic environment; and at least one processor for running… Read More »Patent Claims to 3D Virtual Environment Held Ineligible at Pleadings Stage: Barbaro Technologies, LLC v. Niantic Inc.

On Remand, Software Patents Held Invalid for Lacking Sufficient Factual Allegations

While software patents have recently survived Rule 12 motions to dismiss on the pleadings, a lack of an inventive concept doomed a set of software patents as ineligible under 35 U.S.C. § 101. MyMail Ltd. v. ooVoo, LLC, 17-cv-04487 (N.D. Cal. May 7, 2020). Plaintiff MyMail sued Defendants ooVoo and IAC for infringement of U.S. Patent Nos. 8,275,863 and 9,021,070. After remand by the Federal Circuit vacating the Court’s judgment on the pleadings for lack of claim construction on the term “toolbar,” the parties briefed the claim construction and Defendants refiled motions to dismiss under Rule 12(c). As with Rule 12(b)(6), factual allegations in a complaint are considered true and construed in favor of the movant, and if no dispute of fact remains, the motion to dismiss is granted. The Court applied the two-part Alice/Mayo test, holding that the asserted claims were directed to the abstract idea of updating toolbar software over a network without user intervention. The construction of “toolbar” as “a button bar that can be dynamically changed or updated via a Pinger process or MOT script” did not change the fact that the claims were directed to transmitting data, analyzing data, and updating a toolbar. Notably, the… Read More »On Remand, Software Patents Held Invalid for Lacking Sufficient Factual Allegations

Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the defendants had offered of embodiments that were not enabled by the patent. McRO owns the sole patent at issue, U.S. Patent No. 6,611,278, which covers a “method for automatically animating lip synchronization and facial expression of animated characters.” The patent describes automating the modeling of an animated character’s mouth according the phoneme being spoken by the character. A phoneme is the smallest unit of spoken speech, i.e., a single sound. For each phoneme, a “morph target” is applied to a model of the neutral position of the character’s mouth. Each morph target is a set of “deltas,” each of which is a vector representing the change in position of a vertex of the mouth model from the neutral position to a phoneme-specific position. Each delta can be scaled by a “morph weight” between 0 and 1. Here is a representative… Read More »Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

CAFC Holds Patent-Ineligible Claims to Ranking Stations in Ad-hoc Radio Network: Cisco Systems, Inc. v. Uniloc 2017

Patent claims directed to “determining a master/slave rank of each station” in an ad hoc radio network are directed to the patent-ineligible “abstract idea of selecting the highest ranked station.” Cisco Systems, Inc. v. Uniloc, 2017, No. 2019-2048 (Fed. Cir. May 13, 2020) (opinion by Judge Moore, joined by Judges O’Malley and Taranto) (non-precedential). The Federal Circuit therefore affirmed a decision by the Northern District of California under FRCP 12(c) dismissing a cause of action for patent infringement of claim 6 of U.S. Patent No. 6,980,522 based on patent-ineligibility under 35 U.S.C. § 101. Claim 6 of the ’522 patent recites: A method of operating an ad-hoc radio communication system having a plurality of stations formed into at least one network, the method comprising the step of: determining a master/slave rank of each station in the network representative of the station’s suitability for acting as master in the network using antenna performance characteristics of each station in view of the antenna’s local environment; and enabling a station with the highest rank to be master. Under Alice step one, district court had held claim 6 directed to the patent-ineligible abstract idea of “ranking stations based on antenna performance characteristics and selecting… Read More »CAFC Holds Patent-Ineligible Claims to Ranking Stations in Ad-hoc Radio Network: Cisco Systems, Inc. v. Uniloc 2017

Federal Claims Court Finds Prosecution History Estoppel in Allowable Dependent Claims

In the recent decision of IRIS Corporation Berhad v. United States of America, the United States Court of Federal Claims had the opportunity to evaluate the Doctrine of Equivalents (DOE) in view of applicant actions during prosecution. More specifically, this case centered around the applicant’s actions of incorporating dependent claim material into an independent claim and whether those actions led to prosecution history estoppel. This case arose when IRIS sued the United States Department of State for patent infringement by its manufacture and importation of certain electronic passports. The patent at issue, U.S. Patent No. 6,111,506 (“the ‘506 Patent”), was directed to a method of making an identification document. Claim 1, the only independent claim in the ‘506 Patent, recited: A method of making an identification document comprising the steps of: forming a contactless communication insert unit by electrically connecting an integrated circuit including a microprocessor, a controller, a memory unit, a radio frequency input/output device and an antenna, and disposing a metal ring to surround the integrated circuit;  disposing the contactless communication insert unit on a substrate and laminating it to form a laminated substrate; supplying a first sheet of base material; supplying a second sheet of base material;… Read More »Federal Claims Court Finds Prosecution History Estoppel in Allowable Dependent Claims

Federal Circuit Finds Fault in PTAB’s Determination of Obviousness Without Proper Notice

In Nike v. Adidas (Fed. Cir. April 9, 2020) (precedential), the Federal Circuit addressed the notice provisions of the Administrative Procedures Act (APA) as they relate to the Patent Trial and Appeals Board (PTAB or Board) determination in an inter partes review (IPR) proceeding. Specifically, this precedential decision held that notice is required when the PTAB advances a novel theory of unpatentability. Originally, Adidas filed a petition for inter partes review of a patent owned by Nike. After the petition was granted, Nike filed a motion to amend requesting cancellation of a number of claims and entry of substitute claims. This decision centered around dependent claim 49, which recited, in part, “second stitch configuration forms a plurality of apertures in the flat knit textile element, the apertures formed by omitting stitches in the flat knit textile element and positioned in the upper for receiving laces.” In determining that claim 49 was unpatentable as obvious, the Board reasoned that “the entirety of the record demonstrates the unpatentability of substitute claim 49 by a preponderance of the evidence.” The Board’s conclusion was based on a theory that was not originally presented within the original petition or petitioner’s filings opposing the substitute claims… Read More »Federal Circuit Finds Fault in PTAB’s Determination of Obviousness Without Proper Notice

Lack of Algorithm in Specification Renders Means-Plus-Function Claim Indefinite

The Eastern District of Texas held that the only asserted claim of U.S. Patent No. 6,452,515 was indefinite because “the term ‘[means] for encoding these labels in a random order’” (alterations in original) invokes 35 USC § 112 ¶ 6, and “the specification of the ‘515 Patent does not disclose an algorithm for performing the encoding function required by this limitation.” Uniloc 2017 LLC v. Google LLC, No. 18-cv-00501-JRG-RSP (E.D.Tex. May 1, 2020). The asserted claim from the ‘515 Patent, claim 1, is reproduced here: 1. A video encoder for processing a sequence of animated pictures, said encoder comprising:      means for dividing a screen window occupied by said sequence into X rows and Y columns;      means for separately encoding each one of the X·Y parts of each picture of the sequence thus obtained; and      means for associating, to each of said parts, a specific label indicating a position of the part in the window, and for encoding these labels in a random order. During a prior claim construction hearing, the court found that claim 1 invoked 35 USC § 112, ¶ 6 because the claim uses “the words ‘means’ followed by a function. Moreover, the claim language… Read More »Lack of Algorithm in Specification Renders Means-Plus-Function Claim Indefinite

Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)

The sins of the parent patent will not be visited on the child patent, at least in the Western District of Texas. An earlier determination of ineligible subject matter does not trigger claim preclusion against an infringement suit asserting a patent issued from a continuation application from the earlier patent. VideoShare, LLC v. Google LLC, Civ. No. 6-19-CV-00663-ADA (W.D. Tx. May 4, 2020). Because this case involves claim preclusion (or res judicata, if you like Latin), the conflict necessarily started in an earlier case. Back in 2013, VideoShare sued Google in the District of Delaware for infringing U.S. Patent No. 8,464,302, “Method and System for Sharing Video with Advertisements over a Network.” The accused product was YouTube. The court invalidated the ’302 patent as ineligible subject matter under § 101, and the Federal Circuit confirmed the result. The current case features the same parties and the same accused product, with the case now relocated to the Waco, Texas. VideoShare accused Google—specifically YouTube—of infringing U.S. Patent No. 10,362,341. The ’341 patent is a continuation of the ’302 patent from the Delaware case. During prosecution of the ’341 patent, VideoShare had to use a terminal disclaimer to overcome a double-patenting rejection over… Read More »Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)

The Doctrine of Equivalents Fails to Save Patent Infringement Suit: Ethicon Endo-Surgery, Inc., et al, v. Covidien LP

Following a bench trial, the District Court of Massachusetts held that Ethicon’s “shepherd’s hook” design for finger actuation of a forceps is not equivalent to a “finger loop” claimed by Covidien’s patent no. 9,241,759, and thus Covidien had failed to establish infringement for Ethicon’s Enseal X1 Large Jaw vessel sealer. Ethicon Endo-Surgery, Inc. v. Covidien LP, No. 16-12556-LTS (D. Mass., April 24, 2020.) The court provided an interesting analysis under the Doctrine of Equivalents. Background Ethicon sued Covidien for a declaration that Ethicon’s Enseal X1 Large Jaw vessel sealer does not infringe Covidien patent nos. 9,241,759 and 8,323,310. Covidien counterclaimed for infringement. This article focuses on Covidien’s assertion that Ethicon’s “shepherd’s hook” design for actuating the Enseal X1 device infringes on Covidien’s claimed “finger loop,” based on the Doctrine of Equivalents. Claim 1 of the ‘759 patent is representative and recites in relevant part: 1. An endoscopic bipolar forceps, comprising:                . . .                a movable handle of unitary construction having a finger loop positioned towards a first end thereof, a drive flange positioned towards a second end thereof, and a locking flange disposed between the finger loop and the drive flange, the driver flange operably coupled to the… Read More »The Doctrine of Equivalents Fails to Save Patent Infringement Suit: Ethicon Endo-Surgery, Inc., et al, v. Covidien LP

When Are Preambles Limiting?

In his recent article Without Preamble, Stanford professor Mark Lemley surveys the morass of law on determining when patent claim preambles are limiting, and he predicts that it will be swept away if the Supreme Court ever faces the issue. Given that possibility, how should practitioners think about drafting preambles when applying for a patent? Much of legal academic literature provides little use for practitioners, instead proposing grand constitutional theories, doing social science on legal institutions, or setting out policy arguments for changing the law. Professor Lemley’s article falls under the more useful category of doctrinal analysis: surveying a field of law and offering some original points that practitioners would do well to think about. The field of law in this article is claim construction when applied to the preamble of the claim. The preamble is the introduction to a patent claim, typically followed by a transition term like “comprising” or “consisting of” and then the body of the claim. The body recites the substantive limitations making up the invention. By default, the preamble is not limiting, meaning that it is given no weight in anticipation, obviousness, or infringement. A prior art reference can anticipate a claim even if what… Read More »When Are Preambles Limiting?