Steve Kontos

Routine Steps Fail to Transform Abstract Idea

Claims that fail to explicitly recite a specific way to solve a specific technological problem are at risk under §101, especially when the underlying technology is known and only implements routine steps. Such claims fail to transform the abstract idea into patent eligible subject matter. The Federal Circuit recently affirmed a ruling out of the Central District of California that the claims of seven asserted patents are directed to ineligible subject matter under 35 U.S.C. § 101, in part because the patent specifications admitted that certain actions were “routine” and performed by well-known technology. The patents at issue are US7,814,032, US7,818,268, and US8,073,787 (the “Intelligent Mail Bar- code” patents), US8,260,629 and US8,429,093 (the “QR Code” patents), and US8,910,860 and US9,105,002 (the “Personalized URL” patents). As explained in the opinion, All the patents involve methods whereby a sender affixes an identifier on the outer surface of a mail object (e.g. envelope or package) before the mail object is sent. Computers and networks are used to communicate the information about the mail object’s contents and its sender after the mail object is delivered. The Federal Circuit identified representative claims from each patent and applied the two-part test set forth in Alice. The… Read More »Routine Steps Fail to Transform Abstract Idea

PTAB Declines to Institute CBM Review on Financial Industry Telecommunications Technology

The PTAB declines to institute CBM on US8189566 titled “Software based trading turret.” According to the patent specification, “[a] trading turret system is a specialized telephony switching system that allows a relatively small number of users to access a large number of external lines…” Components of the turret system can be implemented via hardware, software, or a combination of both. Treating claim 1 as illustrative, the PTAB found that the claim is not a covered business method patent. Claim 1 recites: 1. A communications system, comprising: a turret switching system constructed to communicate to a Web server, a turret device, and to a remote communications device via a first communications network, the Web server being constructed to communicate to a client device via a second communications network, and the client device constructed to control switching across a plurality of lines; and an interface having a button sheet corresponding to a plurality of line selectors and constructed to seize a corresponding line by causing the client device to communicate a predetermined message to the turret switching system over the second communications network. To be eligible for CBM review, the claims of the patent must recite “a method or corresponding apparatus for performing… Read More »PTAB Declines to Institute CBM Review on Financial Industry Telecommunications Technology

PTAB Construes Patent Claim Terms as Subject to §112 ¶6 in IPR

The USPTO’s PTAB held that the term “drive module” was a means-plus-function limitation subject to 35 U.S.C. § 112, sixth paragraph (now 112(f))  in its decision to institute an Inter Partes Review (IPR) in Apple Inc., v. Immersion Corporation, IPR2016-01372 (January 11, 2017). The PTAB (Patent Trial and Appeal Board) raised the §112(6) issue sua sponte, noting that “the parties fail[ed] to address the issue.” It further held that it could not discern the scope and meaning of the claims with that term since the functions associated with the “drive module” were not properly supported by the flowcharts in the Specification. Section 112 deficiencies cannot be challenged by the petitioner in an IPR. However, in a decision to institute an IPR, the PTAB has to construe the claims, which naturally involves resolving § 112 issues. In its decision to institute IPR against US Patent No. 8,659,571, the PTAB found that the phrase “drive module” in claims 12-18 invoked §112(b) under Williamson v. Citrix Online, LLC, even though the term “means” was not explicitly recited in the claims. The IPR was instituted on other claims that did not have the “drive module” recitation. Claim 12 recites: A haptic effect enabled system… Read More »PTAB Construes Patent Claim Terms as Subject to §112 ¶6 in IPR

PTAB Indefiniteness Standard Is Different than the Federal Circuit’s

In Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2015-00018 (Dec. 30, 2016), the PTAB found the phrase “substantially filled” indefinite under 35 U.S.C. § 112(b) on post-grant review (PGR). In the course of reaching this conclusion, the PTAB (Patent Trial and Appeal Board) explained that the USPTO uses a different standard than the federal courts to determine indefiniteness under 35 U.S.C. § 112(b). This is the second time in a week that the PTAB has invalidated a patent on § 112 grounds in a PGR (Post-Grant Review). The patent this time was US 9,051,066, directed to “a system and method for filling containers with fluids.” You might recognize this product if you’ve been to a kid’s summertime birthday party. It’s for filling a lot of self-sealing water balloons quickly. Here is claim 1 of the ’066 patent: An apparatus comprising: a housing comprising an opening at a first end, and a plurality of holes extending through a common face of the housing at a second end; a plurality of flexible hollow tubes, each hollow tube attached to the housing at a respective one of the holes at the second end of the housing; a plurality of containers, each container removably attached… Read More »PTAB Indefiniteness Standard Is Different than the Federal Circuit’s

Post Grant Review and Section 112: A Curious Case

In a case where it strikingly relied on prior art sharing a specification with the patent at issue, the USPTO’s Patent Trial and Appeal Board (PTAB) invalidated the patent on several grounds, including lack of written description and enablement under 35 U.S.C. § 112. US Endodontics, LLC v. Gold Standard Instruments, LLC, PGR2015-00019 (PTAB December 28, 2016). The PGR was instituted against claims 12-16 of US Patent No. 8,876,991, directed to titanium dental and medical instruments. There were, as noted, several grounds of institution, but this post will focus mostly on the PTAB’s analysis under § 112. Claim 12, the only independent claim at issue, reads as follows: A method for manufacturing or modifying an endodontic instrument for use in performing root canal therapy on a tooth, the method comprising: (a) providing an elongate shank having a cutting edge extending from a distal end of the shank along an axial length of the shank, the shank comprising a superelastic nickel titanium alloy, and (b) after step (a), heat-treating the entire shank at a temperature above 25°C up to but not equal to the melting point of the superelastic nickel titanium alloy, wherein the heat treated shank has an angle greater… Read More »Post Grant Review and Section 112: A Curious Case

Federal Circuit Holds Coined Phrases to Be Means-Plus-Function, and Indefinite

In Advanced Ground Information Systems, Inc. v. Life360, Inc., No. 2015-1732 (Fed. Cir. July 28, 2016), the Federal Circuit cautioned against coining verbal nouns and phrases without specifying sufficient structure or algorithms in the patent specification. The court affirmed a finding of indefiniteness of claims of U.S. Patent Nos. 7,031,728 and 7,672,681, and held the claims invalid under 35 U.S.C. § 112. The phrase at issue was “symbol generator,” which was recited in each of the asserted claims. While the phrase does not include the word “means,” the Federal Circuit found that “the term ’symbol generator’ is analogous to a ‘means for generating symbols’ because the term is simply a description of the function performed.” Op. at 8. The Federal Circuit further found, based on expert testimony, that “the term ’symbol generator’ is a term coined for the purposes of the patents-in-suit.” Op. at 10. Because “symbol generator” is not a term of art that requires particular structure, the Federal Circuit treated it as a means-plus-function limitation subject to § 112, ¶6 (or post-AIA §112(f)). Means-plus-function limitations are indefinite if not defined in the specification via structure or algorithms. Here, the Federal Circuit found that both were lacking with regard… Read More »Federal Circuit Holds Coined Phrases to Be Means-Plus-Function, and Indefinite

Computer Modeling Breast Prosthesis Survives 12(b)(6) § 101 Challenge

A court has declined, at least for the moment, to hold patent-ineligible claims directed to making a computer model of a part, in this case, a breast prosthesis.  ContourMed Inc. v. American Breast Care LP, No. 4-15-cv-02769 (TXSD March 17, 2016, Order) (Miller, J.).  Although the claims do recite use of hardware (e.g., a “scanning system”), the takeaway from this case is that courts will not uniformly hold claims invalid under 35 U.S.C. § 101 where the claims are directed primarily to gathering and processing data. ContourMed asserted US Patent No. 7,058,439 against American Breast Care in September of 2015.  The ‘439 patent is directed to a method of forming a breast prosthesis that includes scanning the patient to generate a computer model of the prosthesis and creating a mold from the computer model. The mold is filled with a polymerizable foaming composition that cures to form the prosthesis. Here is claim 1, directed to modeling (but not actually forming) the prosthesis: A method of forming a model of a breast prosthesis for a patient who has had one breast at least partially removed, comprising: providing a scanning system comprising one or more imaging devices and one or more alignment… Read More »Computer Modeling Breast Prosthesis Survives 12(b)(6) § 101 Challenge

Patent Directed to “Data Security System for a Database” Qualifies for Covered Business Method Review at PTAB

In Square Inc v. Protegrity Corp., CBM2014-00182 (March 2, 2016), the Patent Trial and Appeal Board (PTAB) offered some insight as to when patent claims will be subject to covered business method (CBM) review. The patent at issue is US 8,402,281, titled “Data Security System for a Database.” Claim 33 was one of the illustrative claims, and the primary focus of the CBM analysis: 33. A computer-implemented data processing method comprising: maintaining a database comprising a plurality of data portions, each data portion associated with a data category; maintaining a separate data protection table comprising, for at least one data category, one or more data processing rules associated with the data category that must each be satisfied before a data portion associated with the data category can be accessed; receiving a request to access a data portion associated with a first data category from a user; determining whether each of the one or more data processing rules associated with the requested data portion are satisfied; and granting the user access to the requested data portion responsive to each of the retrieved one or more data processing rules being satisfied. The America Invents Act (AIA) defines a “covered business method” patent… Read More »Patent Directed to “Data Security System for a Database” Qualifies for Covered Business Method Review at PTAB

Federal Circuit Vacates PTAB Written Decision in IPR For Inadequate Explanation of Invalidity Holding

In a non-precedential opinion, Cutsforth, Inc. v. MotivePower, Inc., No. 15-1316 (Fed. Cir. Jan. 22, 2015), the Federal Circuit criticized the Patent Trial and Appeal Board (PTAB) for failing to explain its obviousness rejection of U.S. Patent No. 7,990,018, which is directed to a removable brush holder. The Federal Circuit vacated and remanded the decision back to the PTAB for a more thorough analysis and explanation. The facts are pretty straightforward. The PTAB instituted review of all of the claims of the ‘018 patent following an obviousness challenge. The PTAB concluded that the claims were obvious in its final written decision. The problem with the written decision, according to the Federal Circuit, is that the PTAB formed conclusions without articulating any reasons for those conclusions. For example, the PTAB never explained why various proposed modifications of the references would have been obvious to one skilled in the art. Rather, the PTAB simply stated that it agreed with the petitioner’s conclusions concerning obviousness despite the patent owner’s evidence to the contrary. While it may appear that the PTAB implicitly adopted the petitioner’s arguments and conclusions, the PTAB’s written decision only restated the petitioner’s conclusions without presenting any reasoning or evidence—provided by the… Read More »Federal Circuit Vacates PTAB Written Decision in IPR For Inadequate Explanation of Invalidity Holding

Some Guidance on Means-Plus-Function Language

Two recent district court opinions provide some guidance for predicting whether claim language will invoke a means-plus-function construction. Invoking means-plus-function isn’t as straight forward as it used to be. It’s well known that claiming “means for” is all but certain to invoke a means-plus-function construction. Things get trickier when that phrase is omitted, however. And this has become a hot topic in patent law following the Williamson v. Citrix Online (Fed. Cir. 2015) (en banc) decision. In SyncPoint Imaging, LLC v. Nintendo of America, Inc., 15-cv-00247, (E.D. Tex., January 5, 2016), the court said that “processor… for…” language connotes sufficiently definite structure to overcome a pre-AIA §112(6)/post-AIA §112(f) challenge. The Court supported its conclusion with dictionary definitions that show that the term “processor” refers to a class of structures. The Court further explained that incorporating the “objectives and operations of the processor” into the claim language suggests the particular structure to one of ordinary skill in the art. Therefore, means-plus-function is not invoked by that language. Great! So, according to SyncPoint, “processor… for…” doesn’t invoke means-plus-function so long as the claim includes sufficient “objectives and operations of the processor.” Well, what if the claim is more software-focused? What if the… Read More »Some Guidance on Means-Plus-Function Language