Mike McCandlish

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 for “Two-step Pick and Place” fail § 101 at Rule 12 stage.

Patent claims directed to a two-step “pick and place” operation for attaching electronic parts to a circuit body (a “die attach” method) 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. Palomar Technologies, Inc., v MRSI Systems, LLC, Case no. 18-10236-FDS (D. Mass., May 28, 2020.) Background The plaintiff Palomar sued defendant MRSI for infringement of Palomar’s U.S. Patent No. 6,776,327. MRSI petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of the patent. The PTAB upheld validity of claims 1-47 and held claim 48 invalid. Following the IPR, MRSI moved for summary judgement on the basis of patent-ineligibility under 35 U.S.C. §101. The ’327 patent discloses a method which utilizes “double pick and place” wherein a first workpiece is first moved to an intermediate location close to a target attach location on a second workpiece, and then, moved to the final attach location. Claim 1 of the ‘327 patent, determined by the Court to be representative, recites: A method for placement of a first workpiece onto a second workpiece comprising the steps of: a) providing a first workpiece positioned at an origination location… Read More »Patent Claims for “Two-step Pick and Place” fail § 101 at Rule 12 stage.

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

Limits on Obviousness – Beyond the Claim Elements

Here is a lesson on obviousness. The Federal Circuit agreed with the Patent Trial and Appeal Board (PTAB) that claims for a system to measure degradation of cooking oils in a deep fryer were non-obvious under 35 U.S.C. §103. The PTAB had found that a skilled artisan would not have been motivated to combine the identified references, and that secondary evidence provided by the patentee supported non-obviousness. The court agreed in Henny Penny Corp. v. Frymaster LLC, No. 2018-1596 (Fed. Cir., September 12, 2109). Henny Penny Corporation’s (HPC) appeal was from the PTAB’s Inter Partes Review final decision Henny Penny Corp. v. Frymaster L.L.C., No. IPR2016-01435, 2017 WL 6551237(P.T.A.B. Dec. 21, 2017) holding claims 1-3, 5-12, 17-21 and 23 of U.S. Patent 8,497,691 not unpatentable as obvious. Background This case relates to measuring total polar materials (TPMs) that build up in aging cooking oil. High TPM levels in cooking oil indicate that the oil is degraded. Representative claim 1 of the ‘691 patent recites: A system for measuring the state of degradation of cooking oils or fats in a deep fryer comprising: at least one fryer pot; a conduit fluidly connected to said at least one fryer pot for transporting… Read More »Limits on Obviousness – Beyond the Claim Elements

Claim term “Processor” does not invoke MPF Construction

In a tentative ruling, a court held the claim term “processor” did not invoke means-plus-function construction and was not governed by 35 U.S.C. §112¶6. Realtime Adaptive Streaming LLC v. Adobe Systems Inc., No. cv 18-9344-GW(JCx) (C.D. CA, July 25, 2019. Plaintiff Realtime Adaptive Streaming LLC (“Realtime”) brought an action against Defendants Google LLC and YouTube LLC (collectively “Google Defendants”) alleging infringement of five Realtime patents. Realtime further filed suit against Defendant Adobe Systems Inc. (“Adobe”), alleging infringement of seven Realtime patents, including the five patents asserted against the Google Defendants. The court directed the parties to file consolidated claim construction briefs for certain disputed terms. The court conducted a hearing and issued a Tentative Ruling construing the disputed terms. Two of the patents asserted against Adobe, US 9,769,477 and US 9,762,907, included the claim term “processor.” Representative claim 1 of the ‘477 patent recites in part: 1. A system, comprising: . . . one or more processors configured to: determine one or more data parameters, at least one of the determined one or more data parameters relating to a throughput of a communications channel measured in bits per second; and select one or more asymmetric data compression encoders from among… Read More »Claim term “Processor” does not invoke MPF Construction

Specification Provides Insufficient Structure for MPF Claim

Granting summary judgement to a defendant accused of patent infringement, a court held two patent claims including the term “control unit” indefinite, finding the description in the specification of a “tone control circuit” did not provide sufficient structure to a person of skill in the art (POSITA) under 35 U.S.C. §112(6). Nichia Corp. v. VIZIO, Inc., No.: cv 8:16-0545 SJO (MRWx), (C.D. CA, March 13, 2019). Plaintiff Nichia Corp.alleged infringement of United States Patents Nos. 7,901,959, 7,915,631, 8,309,375, and 7,855,092 by Defendant VIZIO Inc. After a claim construction hearing, VIZIO filed a motion for summary judgement which the court granted-in part and denied-in-part. This post addresses the Court’s grant of summary judgment for VIZIO finding claims 1 and 12 of the ‘092 patent to be indefinite under 35 U.S.C. §112(6) for lack of sufficient structure in the specification for the claim term “control unit.” Plaintiff Nichia Corp.alleged infringement of United States Patents Nos. 7,901,959, 7,915,631, 8,309,375, and 7,855,092 by Defendant VIZIO Inc. After a claim construction hearing, VIZIO filed a motion for summary judgement which the court granted-in part and denied-in-part. This post addresses the Court’s grant of summary judgment for VIZIO finding claims 1 and 12 of the ‘092… Read More »Specification Provides Insufficient Structure for MPF Claim

Patent Claims Held Indefinite for Mixed Apparatus and Method

In a Claim Construction Memorandum and Order, a court recently held a claim term indefinite for mixing an apparatus and a method. Wireless IP Holdings, L.P., v. Samsung Electronics Co., Ltd., et al. No. 2:18-CV-28-JRG, (E.D. Texas, Jan. 29, 2019). Plaintiff Wireless IP Holdings alleged infringement of United States Patents No. 8,014,284 (“the ‘284 Patent”), 8,559,312 (“the ‘312 Patent”), and 9,392,638 (“the ‘638 Patent”) by Defendant Samsung Electronics Co.Following a Markman Hearing, the Court construed a plurality of claim terms. This blog post discusses a claim term held to be indefinite for mixing apparatus and method subject matter classes. The claim term in question recites “the add-on base station . . . is [owned and] installed by an individual or entity, separate and distinct from the telephone service provider, with access to the public Internet.” The parties disputed the interpretation of “is owned and installed by an individual or entity separate and distinct from the telephone service provider.” DefendantSamsung argues that the recitation is indefinite for impermissibly mixing an apparatus and a method. The term does not include language such as “capable of” (installation by an individual), or anything similar. Rather, the term affirmatively requires that the add-on base station is “owned and… Read More »Patent Claims Held Indefinite for Mixed Apparatus and Method

Language From CIP Survives “New Matter” Challenge

Finding that the Patent Trial and Appeal Board failed to consider the entire record, the Court of Appeals of the Federal Circuit vacated and remanded for further analysis the Board’s decision affirming a rejection of claims for lack of sufficient written description support under 35 U.S.C. § 112. In re: David Tropp, 2017-2503, (Fed. Cir, Dec. 12, 2018.) The PTAB affirmed an Examiner’s rejection of claims 29-53 of U.S. Patent Application 13/412,233 for lack of sufficient written description support under 35 U.S.C. § 112. David Tropp, the inventor, appealed. Claim 29 was treated as representative and recites in part: A set of locks for securing travelers’ luggage while facilitating an entity’s authorized luggage-screening of luggage that the travelers have locked with said locks, without breaking the locks or the luggage, wherein the set comprises at least a first subset and a second subset each comprising plural locks, each lock in each of the first and second subsets having a combination lock portion for use by the travelers to lock and unlock the lock and in addition having a master key portion for use by the luggage-screening entity to unlock and re-lock the lock while the combination lock portion of the… Read More »Language From CIP Survives “New Matter” Challenge

User Interface Features Not Patent-Eligible

Finding a lack of technical innovation, a court held claims for three features for a user-vehicle interface to be directed to patent-ineligible abstract ideas under the Mayo/Alice test and 35 U.S.C. § 101. Thunder Power New Energy Vehicle Development Co. Ltd. v. Byton North America Corp., No. 18-cv-03115-JST (N.D. Ca., Oct. 31, 2018). Plaintiff, Thunder Power, alleged infringement by Defendant Byton of claims of Patent Nos. 9,547,373, 9,563,329, and 9,561,724. Byton moved to dismiss, contending that the asserted claims failed to recite patent-eligible subject matter under 35 U.S.C. § 101. The court granted the motion to dismiss.   The ‘373 Patent Patent ‘373 is directed to a system that captures and processes gesture signals from both a driver and a passenger, prioritizing the driver where the two are in conflict. Claim 1, chosen by the court as representative recites in part: A vehicle operating system for operating a vehicle . . . comprising . . . a processing device configured to . . . determine a first operational signal is from a gesture action image for the driver and determine a second operational signal is from a gesture action image for the passenger . . . select the first operational signal… Read More »User Interface Features Not Patent-Eligible

When is a document a “Printed Publication” under 102(b)?

The Federal Circuit held that there was an insufficient record to qualify the reference “IsoMed Constant-Flow Infusion System (“IsoMed”) as publicly accessible and therefore a printed publication under 35 U.S.C §102(b), and remanded for additional fact finding in C.R. Bard, Inc., Bard Peripheral Vascular, Inc., v. Angiodynamics, Incorporated(Fed. Cir. Sept. 28, 2018.) The patents at issue were U.S. Patent Nos. 7,785,302, 7,947,022, and 7,959,615. The Patent Trial and Appeal PTAB held the claims unpatentable in part in aninter partesreview. Both parties appealed various aspects of the PTAB’s rulings. Relevant Law A reference qualifies as a printed publication under §102(b) if the reference was “sufficiently accessible to the public interested in the art.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Analysis Bard, the patent owner,  argued that the PTAB erred in concluding thatIsomedqualifies as a “printed publication” under 35 U.S.C. §102(b). Isomedis a clinical reference guide developed by a third-party, Medtronic, Inc.,… Read More »When is a document a “Printed Publication” under 102(b)?