patent-eligibility

CAFC Split Favors Patent-Eligibility of Network Monitoring Claims: Packet Intelligence LLC v. NetScout Systems, Inc.

A split Federal Circuit panel disagreed whether patent claims directed to network monitoring for whether received packets belong to a particular “conversational flow” are directed to an abstract idea. Judge Lourie was joined by Judge Hughes in affirming a district court’s findings of fact and conclusions of law rejecting a defense of patent-eligibility, under 35 U.S.C. § 101 and the Alice/Mayo test, of claims directed to determining whether received packets belong to a particular “conversational flow.” Packet Intelligence LLC v. NetScout Systems, Inc., No. 2019-2041 (July 14, 2020) (precedential) (appeal from the Eastern District of Texas; Judge Gilstrap). Judge Reyna, concurring in the court’s opinion on a host of other issues, dissented with respect to § 101 validity, saying that the patent claims were directed to an abstract idea, and that the case should have been remanded to the District Court for further analysis concerning a possible inventive concept under step two of the patent-eligibility test. There were three patents in suit: U.S. 6,665,725, U.S. 6,839,751, and U.S. 6,954,789. Claim 19 of the ’789 patent was discussed as representative: A packet monitor for examining packets passing through a connection point on a computer network, each packets conforming to one or… Read More »CAFC Split Favors Patent-Eligibility of Network Monitoring Claims: Packet Intelligence LLC v. NetScout Systems, Inc.

Patent Claims to Authenticating Users in Transactions Lack Technical Improvement, Fail Patent-Eligibility: Universal Secure Registry LLC v. Apple Inc.

Claims directed to authenticating users for a transaction are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo patent-eligibility test, and therefore the court granted a Rule 12(b)(6) motion to dismiss in Universal Secure Registry LLC v. Apple Inc., Civ. No. 17-585-CFC-SRF (D. Del. June 30, 2020). The court overruled a Magistrate Judge’s report and recommendation that the motion be denied, and came just a week after another decision by the same judge (Colm Connolly) in another case holding patent claims directed to authenticating users to transactions ineligible. At issue in this case were U.S. Patent Nos. 8,856,539; 9,100,826; 8,577,813; and 9,530,137. The court began by analyzing claim 22 of the ’539 patent, which recites as follows: A method for providing information to a provider to enable transactions between the provider and entities who have secure data stored in a secure registry in which each entity is identified by a time-varying multicharacter code, the method comprising: receiving a transaction request including at least the time-varying multicharacter code for an entity on whose behalf a transaction is to take place and an indication of the provider requesting the transaction; mapping the time-varying multicharacter code to an identity of the entity using the… Read More »Patent Claims to Authenticating Users in Transactions Lack Technical Improvement, Fail Patent-Eligibility: Universal Secure Registry LLC v. Apple Inc.

Patent Claims for “Two-step Pick and Place” fail § 101 at Rule 12 stage.

Patent claims directed to a two-step “pick and place” operation for attaching electronic parts to a circuit body (a “die attach” method) were held ineligible on a Rule 12(c) motion for judgment on the pleadings under 35 U.S.C. §101 and the Alice/Mayo test. Palomar Technologies, Inc., v MRSI Systems, LLC, Case no. 18-10236-FDS (D. Mass., May 28, 2020.) Background The plaintiff Palomar sued defendant MRSI for infringement of Palomar’s U.S. Patent No. 6,776,327. MRSI petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of the patent. The PTAB upheld validity of claims 1-47 and held claim 48 invalid. Following the IPR, MRSI moved for summary judgement on the basis of patent-ineligibility under 35 U.S.C. §101. The ’327 patent discloses a method which utilizes “double pick and place” wherein a first workpiece is first moved to an intermediate location close to a target attach location on a second workpiece, and then, moved to the final attach location. Claim 1 of the ‘327 patent, determined by the Court to be representative, recites: A method for placement of a first workpiece onto a second workpiece comprising the steps of: a) providing a first workpiece positioned at an origination location… Read More »Patent Claims for “Two-step Pick and Place” fail § 101 at Rule 12 stage.

Barcode Patent Fails Alice § 101 Test: Coding Technologies, LLC v. Mississippi Power Co.

Patent claims directed to scanning a code pattern for billing information and then processing a bill based on billing information obtained thereby have been held ineligible under 35 U.S.C. § 101 and the  Alice/Mayo test. In Coding Technologies, LLC v. Mississippi Power Co., No. 1:19-CV-994-LG-RHW (S.D. Miss. June 4, 2020), the court granted a Rule 12(b)(6) motion to dismiss based on § 101 invalidity of U.S. Patent No. 9,240,008. Claim 1 of the ’008 patent recites: A method comprising: receiving a payment request message including a code pattern image from a terminal, wherein the code pattern image includes billing information and is photographed by a photographing unit in the terminal; analyzing the code pattern image to obtain code information corresponding to the code pattern image obtaining user information and billing information corresponding to the code information in reference of billing database, and processing payment of a bill based on the billing information and user information. The court took as its first task, under Alice step one, to determine “the basic thrust” of the ’008 patent claims. Determining “that the claims are directed to the use of a barcode on a mobile device to facilitate or effectuate bill payment,” the court then… Read More »Barcode Patent Fails Alice § 101 Test: Coding Technologies, LLC v. Mississippi Power Co.

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.

Patent Claims to 3D Virtual Environment Held Ineligible at Pleadings Stage: Barbaro Technologies, LLC v. Niantic Inc.

Patent claims directed to a 3D virtual game environment were held ineligible on a Rule 12(c) motion for judgment on the pleadings under 35 U.S.C. § 101 and the  Alice/Mayo test. Barbaro Technologies, LLC v. Niantic Inc., Case No. 18-cv-02955-RS (N.D. Cal. May 21, 2020). The plaintiff had alleged that defendants infringed claims of two patents, US Patent 7,373,377 and US Patent 8,228,325. Asserted claims of the ’325 patent were held ineligible. Claim 1 of the ’325 patent recites: A computer system for providing a virtual thematic environment, comprising: at least one memory having at least one program comprising the steps of: retrieving information for utilization with a three-dimensional virtual thematic environment, from external sources over the internet, said information including a real-world geographic location of a user within said three-dimensional virtual thematic environment; and integrating said information into the three-dimensional virtual thematic environment, such that the three-dimensional virtual thematic environment includes said real-world geographic location displayed to the user as said three-dimensional virtual thematic environment; wherein the user interacts with the three-dimensional virtual thematic environment as a simulated real-world interaction, depending on the user’s geographical three-dimensional movement through the three-dimensional virtual thematic environment; and at least one processor for running… Read More »Patent Claims to 3D Virtual Environment Held Ineligible at Pleadings Stage: Barbaro Technologies, LLC v. Niantic Inc.

CAFC Holds Patent-Ineligible Claims to Ranking Stations in Ad-hoc Radio Network: Cisco Systems, Inc. v. Uniloc 2017

Patent claims directed to “determining a master/slave rank of each station” in an ad hoc radio network are directed to the patent-ineligible “abstract idea of selecting the highest ranked station.” Cisco Systems, Inc. v. Uniloc, 2017, No. 2019-2048 (Fed. Cir. May 13, 2020) (opinion by Judge Moore, joined by Judges O’Malley and Taranto) (non-precedential). The Federal Circuit therefore affirmed a decision by the Northern District of California under FRCP 12(c) dismissing a cause of action for patent infringement of claim 6 of U.S. Patent No. 6,980,522 based on patent-ineligibility under 35 U.S.C. § 101. Claim 6 of the ’522 patent recites: A method of operating an ad-hoc radio communication system having a plurality of stations formed into at least one network, the method comprising the step of: determining a master/slave rank of each station in the network representative of the station’s suitability for acting as master in the network using antenna performance characteristics of each station in view of the antenna’s local environment; and enabling a station with the highest rank to be master. Under Alice step one, district court had held claim 6 directed to the patent-ineligible abstract idea of “ranking stations based on antenna performance characteristics and selecting… Read More »CAFC Holds Patent-Ineligible Claims to Ranking Stations in Ad-hoc Radio Network: Cisco Systems, Inc. v. Uniloc 2017

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

Federal Circuit Holds Telecommunications System Access Control Patent-Ineligible: Ericsson Inc. v. TCL Comm. Tech. Holdings, Ltd.

Patent claims directed to “limiting and controlling access to resources in a telecommunications system” failed the 35 U.S.C. § 101 and the Alice/Mayo patent-eligibility test, held a split Federal Circuit panel, reversing the Eastern District of Texas’s denial of summary judgment. Ericsson Inc. v. TCL Comm. Tech. Holdings, Ltd. (Fed. Cir. April 14, 2020) (opinion by Chief Judge Prost joined by Judge Chen; dissent by Judge Newman) (precedential). TCL had appealed after a jury found infringement of claims 1 and 5 of U.S. Patent No. 7,149,510, owned by Ericsson, including willful infringement, and awarded damages. Because the court held claims of the ’510 patent ineligible under § 101, this opinion did not reach the willful infringement and damages issues. However, before turning to the merits of § 101 eligibility, the court considered and rejected, for two independent reasons, Ericsson’s argument that “TCL has waived any right to appeal the issue of ineligibility under § 101 by failing to raise it in a motion for judgment as a matter of law under [FRCP] 50.” First, there was no waiver because the denial of the motion for summary judgment of § 101 ineligibility was not because factual questions precluded granting the motion, but… Read More »Federal Circuit Holds Telecommunications System Access Control Patent-Ineligible: Ericsson Inc. v. TCL Comm. Tech. Holdings, Ltd.

§ 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