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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…

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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…

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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…

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§ 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…

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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…

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