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Easy CAFC Patent-Eligibility Case: Digital Product Licensing

In a one-line order under its Rule 36, the Federal Circuit has affirmed a decision of Judge Schroeder in the Eastern District of Texas granted a Rule12(b)(6) motion to dismiss claims of patent infringement where claims were directed to “adjusting the number of devices allowed to use a digital product (e.g., software) under a license.”  Uniloc, USA, Inc. v. Amazon.com, Inc., No. 2017-2051 (Fed. Cir., Aug. 9, 2018).  The district court decision finding claims of U.S. Patent No. 8,566,960 patent-ineligible under the Alice/Mayo test and 35 U.S.C. § 101 is discussed in this post. It should be no surprise that the Federal Circuit panel (Chief Judge Prost and Judges Taranto and Chen) made this a Rule 36 affirmance.  In a nutshell, the district court’s decision had explained that the claims of the ’960 patent were invalid under § 101 because “time-adjustable licenses” were a “fundamental economic practice.”  Certainly, if you look at the…

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How Is Collateral Estoppel Applied to Patent Invalidity?

A California court has held that a defendant is collaterally estopped from asserting patent-ineligibility under 35 USC § 101 because the defendant, in prior litigation, lost a post-trial motion in which it evidently raised other theories of patent invalidity, even if not § 101 invalidity.  XpertUniverse, Inc. v. Cisco Systems, Inc., No. 17-cv-03848-RS (N.D. Cal. May 8, 2018). Notably, the court distinguished the Federal Circuit’s very recent decision in Voter Verified, Inc. v. Election Systems and Software, LLC. In Voter Verified, the Federal Circuit held that, while Alice was not a change in the law, the fact that § 101 patent-eligibility was “barely considered” in prior litigation precluded application of collateral estoppel. Plaintiff XpertUniverse had sued defendant Cisco alleging infringement of claims of US Patent No. 7,499,903, directed to “semantic to non-semantic routing for locating an expert.” Prior versions of Cisco’s “Remote Expert” products had been found to infringe the…

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CAFC: Alice Not a Change in Law Preventing Issue Preclusion

A Federal Circuit panel (Judges Lourie, Newman, and Reyna) has rejected a district court’s statement that Alice Corp. v. CLS Bank Int’l., was “an intervening change in the law” that would “exempt a potential application of issue preclusion.”  However, after finding that patent-eligibility was not previously litigated, the court held that issue preclusion did not prevent a determination that claims directed to “’auto-verification’ of a voter’s ballot” are patent-ineligible under 35 U.S.C. § 101.  Voter Verified, Inc. v. Election Systems and Software, LLC., No. 2017-1930 (Fed. Cir. April 20, 2018) (precedential). The patent at issue was U.S. RE40449, directed to a voting system including “auto-verification whereby the voter has the opportunity and the responsibility to inspect the computer-printed ballot with his or her votes.” The procedural history of the prior litigation involving this patent, which has 94 claims, was complex.  Saliently, a district court had entered summary judgment of non-infringement…

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Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

The PTAB held that the claims in Ex parte Quimby, Appeal No. 2016-004681 (June 2, 2017) were directed toward unpatentable subject matter.  Of particular interest given the claim language, the Appellant was unsuccessful with arguments that 1) the claims do not disproportionately tie up the use of any underlying idea, 2) the claim provides an improvement in the technological field of mass spectrometry, and, 3) with respect to dependent claim 3, that the claims tied the mathematical formula with technological field of mass spectrometry analyte detection. (citing Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010)). The independent claim is as follows: A method for selecting a target ion and a plurality of qualifier ions for identifying an analyte by mass spectrometry, the method comprising: (a) obtaining a reference spectrum for the analyte; (b) identifying a retention time window for the reference spectrum; (c) extracting a…

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The Latest USPTO Patent-Eligibility Guidance (April 2017)

As you probably know, the USPTO maintains a “subject matter [patent-]eligibility” web page with a plethora of information.  Most recently, on April 26, 2017, the Office posted a “quick reference sheet” illustrating decisions bearing on patent-eligibility analysis under 35 U.S.C. § 101 and the Mayo/Alice test.  Other documents, if you haven’t already taken a look, include guidance for examiners, memoranda on selected Federal Circuit cases, and “example sets illustrating exemplary subject matter eligibility analyses of hypothetical claims and claims drawn from case law.”  Perhaps the most useful document is a compendium of patent-eligibility court decisions going back to 1979. Interestingly, the newly-posted reference sheet, presumably intended to guide today’s examiners in making patent-eligibility decisions, lists many older cases from the Federal Circuit (and its predecessor, the CCPA), as well as U.S. Supreme Court cases.  Cases following the Mayo and Alice decisions are of course amply covered. For the first prong…

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