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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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Are Patient Monitoring Claims Patent-Eligible?

Addressing a defendant’s motion for judgment on the pleadings, a court has held that some patent claims directed to monitoring and analyzing patient data cannot be deemed patent-ineligible at the pleading stage, while other asserted claims are patent-ineligible as a matter of law.  CardioNet, LLC v. InfoBionic, Inc., No. 1:15-cv-11803-IT (D. Mass. May 4, 2017).  The patents-in-suit are U.S. Patent Nos. RE43,767, 7,212,850, 7,907,996 and 7,099,715. Considering each of the patents in turn, the court began with the ’767 patent (“Control of Data Transmission between a Remote Monitoring Unit and a Central Unit”).  Asserted claim 9 recited “steps of providing a monitoring apparatus” that provided data from a remote patient monitoring unit to a central unit. The claims represented no “specific improvement to computer activities,” but rather “is directed to the abstract idea of gathering a limited set of patient data and then determining whether to gather additional data.” However, it…

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Click-Fraud Prevention Patent-Ineligible in CBM Review

Two patents directed to “detect[ing] invalid and fraudulent impressions and clicks in web-based advertisement systems” are Covered Business Method Patents under Section 18 of the America Invents Act, and moreover are patent-ineligible under 35 U.S.C. § 101, the PTAB has held in two companion cases.  Google, Inc. v. Zuilli, Case CBM2016-00022, Patent 8,326,763 B2 (PTAB May 5, 2017); Google, Inc. v. Zuilli, Case CBM2016-00021, Patent 7,953,667 (PTAB May 5, 2017).  The PTAB’s decision came after it had ordered additional briefing in light of Unwired Planet, LLC v. Google Inc., 841 F. 3d 1376 (Fed. Cir. 2016), in which the Federal Circuit had explained limitations on the scope of covered business method review. Most of the following is drawn from the PTAB’s opinion concerning the ’667 patent, but the analyses in the respective opinions were very similar. First, the PTAB had to decide whether the patents were “covered business method patents,” i.e., directed…

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