July 2020

District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime

Indefiniteness was decided in a claim construction order from the Northern District of California in VTT Technical Research Centre of Finland v. SiTime. The court corrected a claim by inserting a missing element, but also invalidated all the claims for indefiniteness because the means-plus-function element “drive or sense means” lacked sufficient structure. VTT thus won a battle but lost the war. VTT is a Finnish state-owned nonprofit research company, including for microelectromechanical systems (MEMS). SiTime is a MEMS manufacturer. VTT is suing for infringement of U.S. Patent No. 8,558,643, covering a MEMS device used in semiconductors to reduce deformation as a result of temperature fluctuations. Independent claim 29 states: 29. A method for designing a micromechanical device comprising a semiconductor element capable of deflecting or resonating and comprising at least two regions having different material properties, drive or sense means functionally coupled to said semiconductor element, the method comprising choosing a basic semiconductor material for the semiconductor element, choosing at least one n-dopant to be added to the semiconductor material, designing the inner structure of the semiconductor material, wherein said designing of the inner structure comprises determining at least two n-dopants, n-dopant concentrations and/or crystal orientations of n-doped material, and… Read More »District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime

CAFC Split Favors Patent-Eligibility of Network Monitoring Claims: Packet Intelligence LLC v. NetScout Systems, Inc.

A split Federal Circuit panel disagreed whether patent claims directed to network monitoring for whether received packets belong to a particular “conversational flow” are directed to an abstract idea. Judge Lourie was joined by Judge Hughes in affirming a district court’s findings of fact and conclusions of law rejecting a defense of patent-eligibility, under 35 U.S.C. § 101 and the Alice/Mayo test, of claims directed to determining whether received packets belong to a particular “conversational flow.” Packet Intelligence LLC v. NetScout Systems, Inc., No. 2019-2041 (July 14, 2020) (precedential) (appeal from the Eastern District of Texas; Judge Gilstrap). Judge Reyna, concurring in the court’s opinion on a host of other issues, dissented with respect to § 101 validity, saying that the patent claims were directed to an abstract idea, and that the case should have been remanded to the District Court for further analysis concerning a possible inventive concept under step two of the patent-eligibility test. There were three patents in suit: U.S. 6,665,725, U.S. 6,839,751, and U.S. 6,954,789. Claim 19 of the ’789 patent was discussed as representative: A packet monitor for examining packets passing through a connection point on a computer network, each packets conforming to one or… Read More »CAFC Split Favors Patent-Eligibility of Network Monitoring Claims: Packet Intelligence LLC v. NetScout Systems, Inc.

Changing a Game Risk/Reward Parameter Fails Patent-Eligibility at Summary Judgment: Bot M8 LLC v. Sony Corp. of America

A patent claim directed to adjusting an individual gaming machine control parameter (i.e., the risk/reward level) based on aggregate gaming machine results was held patent-ineligible at summary judgment under 35 U.S.C. § 101 and the Alice/Mayo test. Bot M8 LLC v. Sony Corporation of America, et al, No. C 19-07027 WHA (N.D. Cal., June 10, 2020.) Background The plaintiff Bot M8 sued defendant Sony for infringement of Bot M8’s Patents US 7,338,363 and US 7,497,777. Bot M8 moved for summary judgment on its infringement claims. Sony moved for summary judgment for invalidity of the patents under 35 U.S.C. § 101. The court identified claim 1 of the ‘363 patent as the remaining relevant claim. The ‘363 patent discloses a method to adjust a controlling parameter of an individual gaming machine based on aggregate results from two or more gaming machines, and uses, as an example, two or more slot machines connected to a common server. In this manner “exciting gaming machines which give the game players incentive to play the game can be provided.” (‘363 patent at 2:41-45.) Claim 1 of the ‘363 patent recites: A first gaming machine for transmitting and receiving data to and from a server, comprising:… Read More »Changing a Game Risk/Reward Parameter Fails Patent-Eligibility at Summary Judgment: Bot M8 LLC v. Sony Corp. of America

Patent Claims to Authenticating Users in Transactions Lack Technical Improvement, Fail Patent-Eligibility: Universal Secure Registry LLC v. Apple Inc.

Claims directed to authenticating users for a transaction are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo patent-eligibility test, and therefore the court granted a Rule 12(b)(6) motion to dismiss in Universal Secure Registry LLC v. Apple Inc., Civ. No. 17-585-CFC-SRF (D. Del. June 30, 2020). The court overruled a Magistrate Judge’s report and recommendation that the motion be denied, and came just a week after another decision by the same judge (Colm Connolly) in another case holding patent claims directed to authenticating users to transactions ineligible. At issue in this case were U.S. Patent Nos. 8,856,539; 9,100,826; 8,577,813; and 9,530,137. The court began by analyzing claim 22 of the ’539 patent, which recites as follows: A method for providing information to a provider to enable transactions between the provider and entities who have secure data stored in a secure registry in which each entity is identified by a time-varying multicharacter code, the method comprising: receiving a transaction request including at least the time-varying multicharacter code for an entity on whose behalf a transaction is to take place and an indication of the provider requesting the transaction; mapping the time-varying multicharacter code to an identity of the entity using the… Read More »Patent Claims to Authenticating Users in Transactions Lack Technical Improvement, Fail Patent-Eligibility: Universal Secure Registry LLC v. Apple Inc.

Conclusory Legal Statements are not Factual Allegations to Survive Section 101 Eligibility: Dropbox Inc. v. Synchronoss Techs, Inc.

Conclusory legal statements that attempt to invoke a factual allegation do not sufficiently allege an inventive concept to satisfy patent eligibility under 35 U.S.C. § 101. Dropbox Inc., Orcinus Holdings, LLC v. Synchronoss Techs. Inc, 2019-1765, 2019-1767, 2019-1823 (Fed. Cir. June 19, 2020) (nonprecedential). Plaintiff Dropbox asserted infringement of U.S. Patent Nos. 6,178,505, 6,058,399, and 7,567,541 against Defendant Synchronoss. The patents are directed to data security and data uploading to websites and networks. The district court granted Defendant’s motion to dismiss under Rule 12(b)(6), holding that all three patents as ineligible under 35 U.S.C. § 101. In particular, the district court held that Plaintiff failed to allege an inventive concept to satisfy the second part of the two-part Alice test. The details of the specific patents would warrant their own posts, so we will focus on the Court’s discussion of Plaintiff’s factual allegations of an inventive concept. Some courts have held that sufficient factual allegations of an inventive concept can present an unresolved question of fact to survive Rule 12(b)(6) and that this should be the norm to better develop the factual record. Other courts, like the district court here, are perfectly happy to hold claims ineligible under Section 101… Read More »Conclusory Legal Statements are not Factual Allegations to Survive Section 101 Eligibility: Dropbox Inc. v. Synchronoss Techs, Inc.