Nathan Smith

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

CAFC: Obviousness and Non-Limiting Reference Numerals in Claims: Grit Energy Solutions, LLC v. Oren Technologies, LLC.

The Federal Circuit, in vacating the Patent Trial and Appeal Board’s (PTAB) decision in an inter partes review (IPR) that claims in a patent were not obvious, held that, for an obviousness inquiry, reference numerals in the claims “do[] not limit the disclosure of the claims.” Grit Energy Solutions, LLC v. Oren Technologies, LLC, 2019-1063 (Fed. Cir. Apr. 30, 2020) (patent-in-suit is U.S. Patent No. 8,585,341). The ‘341 patent “requires (a) the container to have a gate with a pin fixedly affixed thereto, and (b) the support structure to have an actuator with a receptacle.” During the IPR, Grit Energy argued that the ‘341 patent was obvious over U.S. Patent No. 7,252,309 and French Patent Application No. 2,640,598. The court noted that it is undisputed that the ‘309 Patent “discloses the opposite of the ‘341 configuration,” and the ‘598 application’s “non-limiting example, standing alone, discloses the opposite of the ‘341 configuration.” However, the parties disputed whether claim 5 of the ‘598 application discloses the ‘341 configuration. Claim 5 of the ‘598 application is reproduced here. 5. Device according to any one of the preceding claims, characterized in that the mechanical connecting means of the shutter are constituted by at least… Read More »CAFC: Obviousness and Non-Limiting Reference Numerals in Claims: Grit Energy Solutions, LLC v. Oren Technologies, LLC.

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

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”

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.

Lack of Antecedent Basis Renders Claim Indefinite, but Subjective Claim Terms Found Not Indefinite Under § 112

During a Markman hearing, the Eastern District of Texas ruled claim 12 of U.S. Patent No. 7,865,920 invalid for indefiniteness under 35 U.S.C. § 112 because “[t]here is no antecedent reference to ‘storage locations’ or ‘identified storage locations’ supporting ‘said identified storage locations’ in the wherein clause. Personalized Media Communications, LLC v. Google LLC, et. al, No. 19-CV-00090-JRG (E.D. Tex. Apr. 3, 2020). Further, the court ruled that multiple claims of U.S. Patent No. 7,747,217 were not invalid for indefiniteness under 35 U.S.C. § 112 because the meaning of the “explaining significance” terms is reasonably certain. Id. Claim 12 of the ‘920 patent is reproduced here (emphasis added):      An intermediate transmission station, comprising:      a first receiver that receives from one or more remote programming origination stations a plurality of units of audio or video programming and data that identify said units of audio or video programming or a subject matter included in said units of audio or video programming;      a first storage device that stores data of predetermined capacities;      a first switch operatively connected to said first receiver that communicates said units of audio or video programming;      a plurality of second storage devices operatively connected… Read More »Lack of Antecedent Basis Renders Claim Indefinite, but Subjective Claim Terms Found Not Indefinite Under § 112

Anticipation of Software Patent Claims: Arguments Must Be Consistent with Court’s Claim Construction

In a decision instructive on patent claim interpretation and anticipation analysis in software cases, claims directed to “computerized fitness equipment” that “simulates… actual race conditions with other users” were held invalid because as anticipated by prior art. VR Optics, LLC v. Peloton Interactive, Inc, No. 16-cv-6392 (JPO) (S.D.N.Y. Apr. 2, 2020) (patent-in-suit is U.S. Patent No. 6,902,513). The court noted that “[a]nticipation requires ‘that a single prior art reference disclose each and every limitation of the claimed invention, either expressly or inherently.’” SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1306 (Fed. Cir. 2019). Peloton identified U.S. Patent No. 6,997,852 as a single prior art reference and there was “no dispute that the [‘852] patent discloses all of the independent claims’ limitations, save one.” The disputed independent claim limitation is reproduced here: logic configured to drive the display in response to both the first and second performance parameters, such that a performance comparison between the    fitness equipment and at least one remote fitness equipment is visually displayed.               The court had “previously construed the limitation, consistent with its plain and ordinary meaning, to disclose ‘logic configured to drive the display to visually display a difference in performance between the… Read More »Anticipation of Software Patent Claims: Arguments Must Be Consistent with Court’s Claim Construction

Determining a Discount to Encourage Participation in an Electronic Trading System is Ineligible

The District of Delaware held that patent claims for multiple patents directed to “electronic trading and settlement systems” are abstract ideas, and “[e]ncouraging participation in a system in which all parties need to utilize similar technology through the well-known concept of discounting” does not provide an inventive concept,  granting a motion to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test. Fast 101 PTY LTD. v. Citigroup Inc., et al., No. 19-1819-RGA (D. Del. Jan. 30, 2020). U.S. Patent Nos. 8,515,867; 8,660,947; 8,762,273; and 10,115,098 are directed to “‘an invoiceless trading system that creates incentives for customers to pay suppliers within a predetermined period of time.’” The court identified claim 1 of the ‘867 patent as representative of all claims in the asserted patents. Independent claim 1 of the ‘867 patent is reproduced here:        1. A system configured for electronic settlement of an order placed by a customer with a supplier comprising:        one or more bank servers, at least one of the one or more bank servers receives a message related to the order, the message comprising at least an order amount;        a database associated with at least one of the… Read More »Determining a Discount to Encourage Participation in an Electronic Trading System is Ineligible

CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

The Federal Circuit affirmed a decision by the PTAB finding that the claims of U.S. Patent No. 7,529,806 are “obvious over [the prior art] in light of the general knowledge of a skilled artisan.” Koninklijke Philips N.V. v. Google LLC, et al., No 19-1177, (Fed. Cir. Jan. 31, 2020). The claims of the ‘806 patent are directed towards “download[ing] the next file [of a media presentation] concurrently with playback of the previous file.” Philips argued that the Board erred in instituting an IPR “because 35 U.S.C. § 311(b) expressly limits inter partes reviews to ‘prior art consisting of patents or printed publications,’ and because…§ 311(b) prohibits use of general knowledge to supply a missing claim limitation in an inter partes review.” The court found that the Board did not err “in relying on ‘general knowledge’” to institute an IPR because “[a]lthough the prior art that can be considered in inter parte reviews is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” The court noted that “[r]egardless of the tribunal, the inquiry into whether any ‘differences’ between the invention… Read More »CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

Claims Combing a System and a Method for Using the System are Invalid for Indefiniteness Under § 112

During a Markman patent claim construction proceeding, the Western District of Texas ruled multiple claims of U.S. Patent No. 7,284,203 invalid for indefiniteness under 35 U.S.C. § 112 because the claims “improperly combine system and method claims.” Visible Connections, LLC v. Zoho Corp., No. 18-CV-859-RP (W.D. Tex. Nov. 26, 2019). The court found the claims indefinite because “the presence of user steps [in the claims at issue] makes it unclear whether infringement occurs when one creates an interface program for real-time application sharing or when the user selects the documents to be shared.” Claim 35 is representative of the claims ruled invalid for indefiniteness and is reproduced here: the system of claim [34, 37], wherein the interface program automatically establishes at least a substantially real-time shared viewing of at least one document between at least one audience member and a host user, wherein the host user only selects the at least one document to be shared and the at least one audience member with whom to share the at least one document to initiate the substantially real-time shared viewing. The court noted that “[a] single claim covering ‘both a system and a method for using that system’ is invalid for… Read More »Claims Combing a System and a Method for Using the System are Invalid for Indefiniteness Under § 112