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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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E.D. Texas: Digital Product Licensing Not Patent-Eligible

Patent claims directed to “adjusting the number of devices allowed to use a digital product (e.g., software) under a license” are not patent-eligible, says Judge Robert W. Schroeder of the Eastern District of Texas.  Uniloc, USA, Inc. v.  Amazon.com, Inc., Civil Action No. 2:16-CV-00570-RWS (Lead) (E.D. Texas, March 20, 2017).  Thus, Judge Schroeder granted a motion to dismiss brought under FRCP 12(b)(6) for lack of patent-eligible subject matter, finding claims of U.S. Patent No. 8,566,960 invalid under 35 U.S.C. § 101 and the Mayo/Alice test. Representative independent claim 22 of the ’960 patent recites: A method for adjusting a license for a digital product over time, the license comprising at least one allowed copy count corresponding to a maximum number of devices authorized for use with the digital product, comprising: receiving a request for authorization to use the digital product on a given device; verifying that a license data associated…

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