abstract idea test

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 Cir. June 3, 2020) (opinion by Judge Taranto, joined by Judges Dyk and Hughes) (non-precedential).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.

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

It’s Official: Berkheimer and USPTO’s January 2019 Guidance Have Reduced Alice Rejections

According to a recent report by the USPTO’s Chief Economist, the Federal Circuit’s 2018 Berkheimer decision and the USPTO’s January 2019 patent-eligibility guidance have reduced both the frequency and uncertainty of examiners’ patent-eligibility rejections under and 35 U.S.C. § 101 and the Alice/Mayo test. Anecdotally, for a number of months it has seemed that examiners were making fewer patent-eligibility rejections than they had been in the years following Alice. The January 2019 guidance in particular, as I wrote at the time, seemed designed to reduce Alice rejections. As this graph illustrates, that has proven to be true. Alice rejections peaked prior to Berkheimer; the USPTO points to its April 2018 memorandum modifying § 101 examination procedure in light of Berkheimer as accelerating the downward trend. But again, the dramatic downturn in patent-eligibility rejections occurred after the January 2019 guidance. Perhaps even more interesting than the decrease in Alice rejections is the fact that what the USPTO’s report calls “uncertainty in patent examination” has also declined after being increased by Alice. The USPTO’s measure of uncertainty is “variability in patent subject matter eligibility determinations across examiners in the first action stage of examination.” In other words, the January 2019 guidance has… Read More »It’s Official: Berkheimer and USPTO’s January 2019 Guidance Have Reduced Alice Rejections

Extrinsic Evidence and Abstract Ideas in Patent-Eligibility: CardioNet, LLC v. InfoBionic, Inc.

What if any limits are there on the extrinsic evidence (prior art) that can be considered in determining whether a patent claim is drawn to an abstract idea under step one of the Alice/Mayo 35 U.S.C. § 101 patent-eligibility test? And to what extent does the answer to this question matter; is it merely academic? In CardioNet, LLC v. InfoBionic, Inc., No. 2019-1149 (Fed. Cir. April 17, 2020), a three-judge panel (Judges Stoll, Plager, and Dyk) reversed the district court’s grant of a Rule 12(b)(6) motion because claims  of U.S. Patent No. 7,941,207 “are directed to a patent-eligible improvement to cardiac monitoring technology and are not directed to an abstract idea.” The panel unanimously agreed that the ‘207patent’s claims were patent-eligible – and that a remand was not needed for a “review of the prior art or facts outside of the intrinsic record regarding the state of the art at the time of the invention.” Judge Dyk nonetheless vigorously dissented from what he characterized as dicta in Judge Stoll’s majority opinion suggesting that review of “extrinsic evidence to establish that a practice is longstanding” can be limited. Claims 1–3, 7, 10–12, and 22 of the ’207 patent were at issue; independent… Read More »Extrinsic Evidence and Abstract Ideas in Patent-Eligibility: CardioNet, LLC v. InfoBionic, Inc.

Federal Circuit Affirms § 101 Ineligibility of Set-Top Box Advertising Claims: Customedia Techs., LLC v. Dish Network Corp.

Claims of two patents directed to “data management and on-demand rental and purchase of digital data products,” e.g., selling advertising to be displayed via a set-top box, recites patent-ineligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test, held the Federal Circuit in Customedia Techs., LLC v. Dish Network Corp., No. 2018-2239 (March 6, 2020) (precedential). The Federal Circuit, in an opinion by Judge Moore, joined by Chief Judge Prost and Judge Dyk, affirmed the PTAB’s final written decisions, in Covered Business Method Review proceedings, of ineligibility of U.S. Patent Nos. 8,719,090 and 9,053,494. Claim 1 of the ’090 patent recites: 1.  A data delivery system for providing automatic delivery of multimedia data products from one or more multimedia data product providers, the system comprising: a remote account transaction server for providing multimedia data products to an end user, at least one of the multimedia data products being specifically identified advertising data; and a programmable local receiver unit for interfacing with the remote account transaction server to receive one or more of the multimedia data products and for processing and automatically recording the multimedia data products, said programmable local receiver unit including at least one individually controlled and reserved advertising… Read More »Federal Circuit Affirms § 101 Ineligibility of Set-Top Box Advertising Claims: Customedia Techs., LLC v. Dish Network Corp.

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

§ 101 Patent-Eligibility Turns on a Technical Solution to a Technical Problem: Pebble Tide LLC v. Arlo Technologies

In an interesting dichotomy, patent claims directed to outputting digital content did not survive, but claims directed to social network search output did survive, respective motions to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test. Pebble Tide LLC v. Arlo Tech., Inc. (D. Del. Jan 31, 2020). Pebble Tide LLC sued three defendants alleging infringement of U.S. Patent Nos. 10,261,739 and 10,303,411, both directed to “capturing, storing, accessing, and outputting digital content.” In an unrelated action, Mimzi LLC sued five defendants alleging infringement of U.S. Patent No. 9,128,981, directed to a “phone assisted ‘photographic memory.’” Delaware’s Judge Stark, in a bench ruling then documented in a written memorandum, held that Pebble Tide’s ’739 and ’411 patents were invalid under § 101, but that Mimzi’s ’981 patent, though directed to an abstract idea, could not be deemed patent-ineligible at the pleadings stage. Pebble Tide Cases The parties agreed that claim 1 of Pebble Tide’s ’739 patent was representative of Pebble Tide’s patent claims for purposes of the defendants’ motion. Under Step One of the Alice test, Judge Stark found that the claim – which, you can see via the above link – “is directed… Read More »§ 101 Patent-Eligibility Turns on a Technical Solution to a Technical Problem: Pebble Tide LLC v. Arlo Technologies

Conventional Component For Accepting Credit Card Payment In Taxicab is Ineligible: Curb Mobility, LLC v. Kaptyn, Inc.

A court held that patent claims directed to “the longstanding commercial practice of paying for public transit” are abstract ideas, and “the mere assemblage of admittedly known components” 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. Curb Mobility, LLC v. Kaptyn, Inc., et al., No. 18-cv-02416-MMD-EJY (D. Nev. Jan. 21, 2020). U.S. Patent No. 6,347,739 is directed to “paying for a taxicab with a credit card.” The court noted that the patent “includes two independent claims, though independent claim 11 is basically independent claim 1- a system claim- written as a method claim.” Independent claim 1 of the ‘739 Patent is reproduced here: 1.A system for communications with a network of systems which accepts cred-debit type cards for payments and which is located in a taxicab driven by drivers comprising: a) a meter mounted in the taxicab, having computing capabilities for determining and displaying the fare being charged to a passenger, and having application programs at least some of which mandate a sequential exchange of electronic information between said passenger and said driver regarding the fare that includes the charge for the distance… Read More »Conventional Component For Accepting Credit Card Payment In Taxicab is Ineligible: Curb Mobility, LLC v. Kaptyn, Inc.

Patent Claims to Evaluating Body Movement Fail § 101 on Post-Trial Motion: ILife Technologies, Inc. V. Nintendo Of America, Inc.

Patent claims directed to automating collection and interpretation of sensor data are often suspect under the two-part  Mayo/Alice patent-eligibility test under 35 U.S.C. § 101. Not so often, however, do judges do as the court did in iLife Technologies, Inc. v. Nintendo of America, Inc., C.A. No. No. 3:13-cv-4987-M (Jan 17, 2020), and hold patent claims invalid under § 101 after a trial and eight figure jury verdict in favor of the plaintiff. The accused device, interestingly, was one with which many of us are familiar: the Nintendo Wii. Claim 1 of U.S. Patent No. 6,864,796 recites: A system within a communications device capable of evaluating movement of a body relative to an environment, said system comprising: a sensor, associable with said body, that senses dynamic and static accelerative phenomena of said body, and a processor, associated with said sensor, that processes said sensed dynamic and static accelerative phenomena as a function of at least one accelerative event characteristic to thereby determine whether said evaluated body movement is within environmental tolerance wherein said processor generates tolerance indicia in response to said determination; and wherein said communication device transmits said tolerance indicia. A jury found that claims of the ’796 patent were… Read More »Patent Claims to Evaluating Body Movement Fail § 101 on Post-Trial Motion: ILife Technologies, Inc. V. Nintendo Of America, Inc.