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CAFC Affirms Rejections of Computer Product-by-Process Claim

The Federal’s circuit has affirmed a Patent Trial and Appeal Board (PTAB) decision in turn affirming a patent examiner’s rejections under 35 U.S.C. § 101 for lack of patent-eligibility, and under 35 U.S.C. § 112 for lack of written description and indefiniteness, of a product-by-process claim directed to “a resource planning forecast product.” In re Downing, No. 2018-1795 (Fed. Cir. Dec. 7, 2018) (non-presidential). The only independent claim at issue reads as follows (emphases provided by the court): 1. A resource planning forecast product operable in a computer and recorded on a non-transitory computer-readable medium for retrieval interlinking non-business or business information relevant to the end user without mandatory reliance on a network or another computer file or Internet access to operate wherein the product is produced by the processes of: (a) designing a diffusion-based proprietary forecasting technique on an Excel computer platform for operation within a resource planning framework to: (1) simplify forecasting initialization…

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Establishing Online Chats Not Patent-Eligible Under Alice

Patent claims directed to establishing online chat sessions are not patent-eligible under 35 U.S.C. §101 and the Alice/Mayo test, said Federal Circuit Judge Bryson, sitting in the District of Delaware, in granting a defendant’s motion to dismiss. Epic IP LLC v. Backblaze, Inc., C.A. No. 1:18-141-WCB (D. Del. Nov. 21, 2018). Here are the representative independent claims of U.S. Patent No, 6,434,599: 1. An on-line chatting method comprising: facilitating visit by a first on-line user to an information page of an information site; facilitating dynamic formation of a chat session unaffiliated with any pre-established chat room for said first on-line user and a second on-line user to chat with each other; and facilitating said chat session through which said first and second on-line users chat with each other. * * * 19. An information server comprising: a plurality of information pages to be selectively provided to a client computer responsive to the…

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McRO Saves Video Game User Location Patent Claims

Patent claims directed to mapping “a physical location determined by the user . . . to a video game environment” have survived a Rule 12(b)(6) motion alleging patent-ineligibility under 35 U.S.C. § 101 and the Alice patent-eligibility test.  Blackbird Tech LLC v. Niantic, Inc., No. 1-17-cv-01810 (D. Del. Oct. 31, 2018).  U.S. Patent No. 9,802,127 allows a user to “experience[] objects from the users [sic] entered location while playing the video game.”  Representative claim 1 recites: 1. A computer-implemented method comprising: receiving a first position indicator representing a first current physical location for a user of a video game, wherein said first position indicator is determined at least in part by taking a global navigation satellite system reading of said first current physical location; obtaining image data relating to said first current physical location, said image data comprising two or more camera images of said first current physical location; mapping said image data…

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McRO Saves Product Cataloging Patent Claims at Rule 12 Stage

Patent claims directed to pricing and cataloging products have survived a Rule 12 Motion because the court thought that there was a chance that the patent owner might be able to show a technological improvement as in McRO, Inc. v. Bandai Namco Games Am. Inc. (Fed. Cir. 2016). Vendavo, Inc. v. Price f(x), No. AG et al, 3-17-cv-06930 (N.D. Cal. Oct. 22, 2018).  Regardless of whether you think the patent-eligibility test should be more or less stringently applied, you may find this decision vexing if you share my (admittedly subjective) perspective that the USPTO would not today allow these claims, and that many courts would have invalidated them under 35 U.S.C. § 101 and the Alice patent-eligibility test. This action includes five patents-in-suit, characterized by the court as follows, with my emphases to point to findings that I believe would have led many judges (whether in U.S. District Court or at the…

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Novelty and Non-obviousness Do Not Save Patent-Eligibility

The Federal Circuit has held that patent claims directed to “performing certain statistical analyses of investment information” are patent-ineligible under the Alice/Mayo abstract idea test and 35 U.S.C. § 101, thus affirming a District Court’s judgment on the pleadings. SAP America, Inc. v. InvestPic, LLC, No. 2017-2081 (Fed Cir. May 15, 2018) (precedential) (opinion by Judge Taranto), joined by Judges Lourie and O’Malley). In the second paragraph of its opinion, the court emphasized that brilliant innovation would not alone save patent-eligibility, nor could novelty and non-obviousness under 35 U.S.C. §§ 102 and 103. Claims of U.S. Patent No. 6,349,291 are directed to “analysis, display and dissemination of financial information using resampled statistical methods.” These claims represented an innovation, but the innovation was “nothing but a series of mathematical calculations based on selected information in the presentation of the results,” and thus was “an innovation in ineligible subject matter.” The ’291…

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