B2 IP Report

B2 Intellectual Property Report


The Software IP Report
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The Claims Interpreted Report




Charles Bieneman
The Software IP Report



Chris Francis
The Claims Interpreted Report



  • NantWorks, LLC v. Niantic, Inc.: Reconciling Transactions Between Players of an Online Video Game is not Patent-Eligible
    In Nantworks v Niantic., the Northern District of California held that peer-to-peer online transaction reconciliation that uses a physical location of one of the participants is an abstract idea that is not patent-eligible subject matter under 35 U.S.C. § 101. No. 20-cv-06262 (N.D. Cal. Jan. 4, 2021). Plaintiff NantWorks asserted U.S. Patent No. 10,614,477 against Niantic. The ‘477 patent is directed to reconciling transactions between two players of a computer-based video game based on […]
  • Does a “Plurality A, B, and C” Require More than One A, More than one B, and More than One C?: An Interpretation of Disjunctive and Conjunctive Phrases
    SIMO Holdings v. Hong Kong uCloudlink Network (Fed. Cir., Jan. 5, 2021) is a precedential opinion that touches on an interesting claim interpretation topic regarding disjunctive and conjunctive phrases.  Independent claim 8 is at issue: 8. A wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database, at least one of the […]
  • Simio, LLC v. FlexSim Software Products, Inc.: Important Precedent for § 101 Patent-Eligibility of Software (or Lack Thereof)
    The Federal Circuit ended 2020 with a precedential opinion holding that patent claims directed to providing a graphical user interface for controlling a software object’s behavior were patent-ineligible under the Alice/Mayo test and 35 USC § 101. Simio, LLC v. FlexSim Software Products, Inc., No. 2020-1171 (December 29, 2020; opinion by Chief Judge Prost, joined by Judges Clevenger and Stoll). The court held claims of U.S. Patent No. 8,156,468 were “directed to the abstract […]
  • Adjectives in Claim Construction
    Comcast Cable Communications v. Promptu Systems Corporation (Fed. Cir., Jan. 4, 2021) is a nonprecedential opinion but nevertheless still provides an example of claim construction based on a modifying adjective.  The Appellant appealed the IPR final-written decision in which the PTAB held Appellant failed to prove that the challenged claims of US7,260,538 would have been obvious.  The claim term “command function” was at issue.  Claim 1 is representative: 1.  A method for providing voice […]
  • No Stay for Supreme Court Petition in American Axle & Mfg. v. Neapco Holdings
    In the latest episode of the closely watched case American Axle v. Neapco, the Federal Circuit denied American Axle’s motion to stay pending its petition for writ of certiorari to the Supreme Court. The case started as an infringement action for U.S. Patent No. 7,774,911, covering a method of manufacturing driveline propeller shafts. In a panel decision, the Federal Circuit invalidated one independent claim under § 101 as directed to a natural law and […]
  • Image Display Patents Fail Alice Test: Gabara v. Facebook, Inc.
    In granting a motion to dismiss for lack of patent-eligible subject matter under 35 U.S.C § 101, a court determined that patents relating to moving a portable unit to view an image of a stationary map and using a portable wireless system to improve the operations of a group communicating electronically are abstract ideas that do not include an inventive concept.  Gabara v. Facebook, Inc., No. 9cv9890(DLC) (S.D.N.Y. Sep. 4, 2020) Plaintiff Gabara alleged […]
  • Wireless Surveillance System with Generic Components is Patent-Ineligible: Sensormatic Elect., LLC, v. Wize Labs, Inc.
    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 for multiple patents directed to “wireless surveillance systems for monitoring a target environment” are abstract ideas, and “merely implement[ing] the abstract idea of wireless communication and remote surveillance using well-known, generic computer components and functionalities” does not provide an inventive concept. Sensormatic v. Wyze Labs., No. 19-1543-CFC (D. […]
  • Case Dismissed Because Lack of Direct Infringement of Patent Claims Requiring a Mobile Device: Garrett v. TP-Link Research
    A district court recently dismissed a complaint for failing to properly allege direct infringement with the mobile device recited in the patent claims. Garrett v. TP-Link Research America (N.D. Cal.). An app for installation on a mobile device does not count as a mobile device or as using a mobile device for showing direct infringement, and when pleading indirect infringement, direct infringement by an end user must be alleged. Garrett’s complaint against TP-Link failed […]
  • 35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.
    In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The ‘798 patent includes system claims, and the ‘725 and ‘751 patents include method claims. […]
  • How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn
    A patent plaintiff saw its jury trial victory vacated when the court granted a defense motion for judgment as a matter of law under FRCP 50(b), finding that the plaintiff had not proved that the accused products had structure corresponding to claimed means.  SPEX Technologies, Inc. v. Apricorn, No. CV 16-07349 JVS (AGRx) (C.D. Cal. Aug. 10, 2020). The jury found infringement of claims 11 and 12 of U.S. Patent No. 6,088,802. Those claims […]
  • Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 2 of 2)
    The Federal Circuit recently denied a rehearing en banc in American Axle & Manufacturing v. Neapco Holdings, letting stand a panel decision invalidating a method of manufacturing driveline propeller shafts as ineligible subject matter under § 101. This post covers the multiple concurrences and dissents accompanying the rehearing denial, which reveal a splintered court. Part 1 covered the background and the modified panel decision, in which the court invalidated this claim as ineligible subject […]
  • Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 1 of 2)
    The Federal Circuit has modified a panel decision and denied a rehearing en banc in a closely watched § 101 case, American Axle & Manufacturing v. Neapco Holdings. The original decision had found all the claims, which were directed to a method of manufacturing driveline propeller shafts, ineligible subject matter (previously covered in this post). The new panel decision maintained that result for two of the independent claims but remanded on a third independent […]
  • 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). […]
  • 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 […]
  • 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 […]
  • 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) […]
  • 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 […]
  • Claimed Improvement Not Patent-Eligible Where Reducible to Mental Steps: Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc.
    A Rule 12 motion to dismiss was granted where patent claims directed to “authenticating a user to a transaction at a terminal” failed the 35 U.S.C. § 101 and Alice/Mayo patent-eligibility test. Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc., Civil Action No. 18-1477-CFC (D. Del. June 24, 2020). Notably, the plaintiff attempted to rely on a purported improvement to computing technology that the court discounted because the purported improvement […]
  • Means-Plus-Function Construction Can Lead to Indefiniteness
    In Unicorn Global Inc. v. Golab, Inc. No. 3:19-CV-0754-N (N.D. Tex. May 26, 2020), the Northern District of Texas construed several disputed terms of U.S. Patent No. 9,376,155 and U.S. Patent No. 9,452,802, and found claims to be indefinite means-plus-function claims without having structure described in the specifications. The patents are directed to personal transportation devices known as hoverboards which include a divided platform with wheels on opposite ends. A rider stands on the platform […]
  • 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 […]
  • Use of Passive Voice Insufficient to Connote Structure in MPF Analysis
    The District Court for the Northern District of California recently issued a claim construction order in Zoho Corporation v. Sentius International, LLC, finding that the claim limitation “means for compiling the source material image from at least the plurality of discrete pieces” was indefinite.  The present action arose from a declaratory judgement action brought about by Zoho alleging that it did not infringe Reissued Patent No. RE43,633.  While both parties agreed that 35 U.S.C. […]
  • Providing Software for User Device Insufficient to Adequately Plead Infringement of Method Claim
    The Northern District of California dismissed a complaint of patent infringement for failing to adequately plead direct or joint infringement. Sentius Int’l LLC v. Apple Inc., No. 4:20-cv-00477 (N.D. Cal. June 2, 2020). The Court held that merely selling software did not constitute direct infringement and that Sentius did not adequately allege the requisite direction or control required for joint infringement. Plaintiff Sentius alleged infringement of U.S. Patent Nos. RE43633 and 7,672,985 by Defendant […]
  • Willful Infringement Allegations Require More Than Conclusory Statements
    In a recent decision from the United States District Court for the District of Nevada, the court granted a motion to dismiss willful infringement allegations for lacking plausible factual allegations. IP Power v. Westfield , No. 2:19-cv-01878-MMD-NJK (D. Nev. June 4, 2020). This case centers around U.S. Patent No. 6,817,671, which is directed to a collapsible, reclining camp chair with a footrest and cupholders.  The plaintiff sued the defendant after multiple correspondences were exchanged […]
  • Barcode Patent Fails Alice § 101 Test: Coding Technologies, LLC v. Mississippi Power Co.
    Patent claims directed to scanning a code pattern for billing information and then processing a bill based on billing information obtained thereby have been held ineligible under 35 U.S.C. § 101 and the  Alice/Mayo test. In Coding Technologies, LLC v. Mississippi Power Co., No. 1:19-CV-994-LG-RHW (S.D. Miss. June 4, 2020), the court granted a Rule 12(b)(6) motion to dismiss based on § 101 invalidity of U.S. Patent No. 9,240,008. Claim 1 of the ’008 patent […]
  • Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules
    In the latest development in extensive litigation between Shure and ClearOne over audio and conferencing equipment, the District of Delaware rejected a motion to dismiss Shure’s claims over multiple civil procedure grounds, including as compulsory counterclaims to an earlier suit and as failing to be the first to file. The conflict between Shure and ClearOne began not in the District of Delaware but in the Northern District of Illinois. In 2017, Shure filed a […]
  • CAFC Easily Invalidates Mobile Device Search Patent under Alice: British Telecommunications PLC v. IAC/InterActiveCorp.
    Patent claims directed to presenting a user with a “short list” of  “information sources” for selection based on a user location are patent-ineligible under 35 U.S.C. § 101 and the  Alice/Mayo test. British Telecommunications  PLC v. IAC/InterActiveCorp., No. 2019-1917 (Fed. Cir. June 3, 2020) (opinion by Judge Taranto, joined by Judges Dyk and Hughes) (non-precedential). The Federal Circuit panel upheld the district court’s decision, on a Rule 12(b)(6) motion to dismiss, that all claims of […]
  • Attorney-Client Privilege Granted to Canadian In-House Counsel on U.S. Law
    The District of Kansas held that documents produced by a Canadian attorney working as in-house counsel on U.S. patent infringement matters qualify for attorney-client privilege in a U.S. patent infringement case. Sudenga Indus., Inc. v. Global Industries, Inc., No. 18-2498-DDC (D. Kan. May 15, 2020). Plaintiff Sudenga Industries sent a cease and desist letter alleging patent infringement to Defendant Global Industries. Defendant is based in Canada, and their General Counsel is licensed in Canada, […]
  • 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 […]
  • 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 […]
  • 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 […]