Software Patents

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.

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.

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 to network authentication processes, the court said, could be performed mentally. Claim 1 of U.S. Patent No. 9,246,903 recites: A method of authenticating a user to a transaction at a terminal, comprising the steps of: transmitting a user identification from the terminal to a transaction partner via a first communication channel, providing an authentication step in which an authentication device uses a second communication channel for checking an authentication function that is implemented in a mobile device of the user, as a criterion for deciding whether the authentication to the transaction shall be granted or denied, having the authentication device check whether a predetermined time relation exists between the transmission of the user identification and a response from the second communication channel, ensuring that the authentication… Read More »Claimed Improvement Not Patent-Eligible Where Reducible to Mental Steps: Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc.

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.

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 Apple. Defendant filed a motion to dismiss under Rule 12(b)(6), alleging that Plaintiff failed to sufficiently plead direct and joint infringement of the asserted patents. Claim 62 of the ‘633 patent is too long to recite in full, but the relevant part to consider is “a computer-implemented method for linking textual source material to external reference materials for display….” Of note is that a “computer-implemented method” has specific requirements for direct and joint infringement, as the Court discussed in the decision. Direct infringement of a method claim, as elucidated in the several Akamai decisions, requires all steps of the claimed method to be performed by or attributable to a single entity. Sale of a product that performs the method, such as software, is not direct infringement… Read More »Providing Software for User Device Insufficient to Adequately Plead Infringement of Method Claim

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 recites: A method comprising: receiving a payment request message including a code pattern image from a terminal, wherein the code pattern image includes billing information and is photographed by a photographing unit in the terminal; analyzing the code pattern image to obtain code information corresponding to the code pattern image obtaining user information and billing information corresponding to the code information in reference of billing database, and processing payment of a bill based on the billing information and user information. The court took as its first task, under Alice step one, to determine “the basic thrust” of the ’008 patent claims. Determining “that the claims are directed to the use of a barcode on a mobile device to facilitate or effectuate bill payment,” the court then… Read More »Barcode Patent Fails Alice § 101 Test: Coding Technologies, LLC v. Mississippi Power Co.

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 U.S.  Patent  No. 6,397,040 are ineligible under § 101. (The underlying lawsuit involves six patents, but only the § 101 eligibility of the ’040 patent was at issue in this appeal.) Representative claim 1 of the ’040 patent recites: A method of selecting information sources from which information is provided to users via a telecommunications system, said method comprising: tracking the location of a user in the system by receipt of tracking information for said user; accessing location data indicating localities in which information from the respective sources is deemed to be relevant; generating a shortlist of information sources for said user on the basis of said tracking information and said location data; and transmitting said shortlist to a terminal associated with said user so as… Read More »CAFC Easily Invalidates Mobile Device Search Patent under Alice: British Telecommunications PLC v. IAC/InterActiveCorp.

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 the ’325 patent recites: A computer system for providing a virtual thematic environment, comprising: at least one memory having at least one program comprising the steps of: retrieving information for utilization with a three-dimensional virtual thematic environment, from external sources over the internet, said information including a real-world geographic location of a user within said three-dimensional virtual thematic environment; and integrating said information into the three-dimensional virtual thematic environment, such that the three-dimensional virtual thematic environment includes said real-world geographic location displayed to the user as said three-dimensional virtual thematic environment; wherein the user interacts with the three-dimensional virtual thematic environment as a simulated real-world interaction, depending on the user’s geographical three-dimensional movement through the three-dimensional virtual thematic environment; and at least one processor for running… Read More »Patent Claims to 3D Virtual Environment Held Ineligible at Pleadings Stage: Barbaro Technologies, LLC v. Niantic Inc.

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 lack of claim construction on the term “toolbar,” the parties briefed the claim construction and Defendants refiled motions to dismiss under Rule 12(c). As with Rule 12(b)(6), factual allegations in a complaint are considered true and construed in favor of the movant, and if no dispute of fact remains, the motion to dismiss is granted. The Court applied the two-part Alice/Mayo test, holding that the asserted claims were directed to the abstract idea of updating toolbar software over a network without user intervention. The construction of “toolbar” as “a button bar that can be dynamically changed or updated via a Pinger process or MOT script” did not change the fact that the claims were directed to transmitting data, analyzing data, and updating a toolbar. Notably, the… Read More »On Remand, Software Patents Held Invalid for Lacking Sufficient Factual Allegations