patentable subject matter

Uniloc Communications System Patent Survives § 101 Challenge Based on Technical Improvement: Uniloc USA, Inc. v. LG Electronics USA, Inc.

Patent claims directed to a communication system recite a technical solution and therefore, the Federal Circuit held, are not patent-ineligible under 35 U.S.C. § 101 and the two-part Mayo/Alice test. Uniloc USA, Inc. v. LG Electronics USA, Inc., No. 2019-1835 (Fed. Cir. April 30, 2020) (precedential) (opinion by Judge Moore, joined by Judges Reyna and Taranto). The court thus reversed Judge Koh in the Northern District of California, who had found that claims of U.S. Patent 6,993,049 were not patent-eligible, and had granted a Rule12(b)(6) motion to dismiss. Representative claim 2 of the ’049 patent recites: A primary station for use in a communications system comprising at least one secondary station, wherein means are provided for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and for adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station. The district court held claims of the ’049 patent ineligible as “directed to the abstract idea of ‘additional polling in a wireless communication system,’” without a saving inventive concept, by analogizing to “data manipulation claims” found ineligible in Two-Way Media Ltd. v.… Read More »Uniloc Communications System Patent Survives § 101 Challenge Based on Technical Improvement: Uniloc USA, Inc. v. LG Electronics USA, Inc.

Communications System Patent Falls Under § 101

In Uniloc USA Inc. v. LG Electronics USA Inc. the district court found claims directed to “primary station for use in a communications system” in U.S. Patent 6,993,049 (“the ‘049 patent”) to be invalid under 35 U.S.C. § 101 for not claiming patentable subject matter. The invalidly determination for the ‘049 patent was arrived at by the court after analysis under the Alice framework, the court ultimately determining that the claims were directed to an abstract idea. Claim 2, selected by the court as representative, recites: A primary station for use in a communications system comprising at least one secondary station, wherein means are provided for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and for adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station. In layman’s terms, the invention was directed to an improvement in Bluetooth technology. Specifically, the improvement and point of novelty in the claim was “adding to each inquiry message prior to transmission an additional data field for polling.” Under step one of the Alice framework the court found that… Read More »Communications System Patent Falls Under § 101

Finding of Improved Computer Functionally Supports Patent-Eligibility

In IDB Ventures, LLC v. Charlotte Russe Holdings, Inc. (2:17-CV-660-WCB-RSP), the Eastern District of Texas highlighted the effectiveness of showing that a patent claim is directed to a specific improvement to computer functionally for overcoming a challenge based on 35 U.S.C. § 101. Plaintiff IDB Ventures, LLC, (IDB) sued Defendant Charlotte Russe Holdings, INC., (Charlotte Russe) for infringement of U.S. Patent No. 6,216,139 (the ‘139 patent) entitled “Integrated Dialog Box for Rapidly Altering Presentation of Parametric Text Data Objects on a Computer Display.” Claim 1 of the ‘139 patent recites: 1. A method for using a computer system to sort and display text data objects, comprising the steps of: a. imaging, on a display device controlled by the computer system, a query dialog box, where in the query dialog box displays each of a plurality of parameters associated with each of the text data objects, forms a plurality of spaces for listing values associated with each displayed parameter, and further forms a space for selecting a sort order; b. designating, for each displayed parameter, a parameter value; c. constructing a sort order from the displayed parameters in the space for selecting a sort order; d. selecting, using the computer system, text data… Read More »Finding of Improved Computer Functionally Supports Patent-Eligibility

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 claim reproduced in the above-referenced post, you will have a hard time arguing that there was any technical invention, or anything recited other than managing software licenses.

Patent Eligibility and Obviousness in a Covered Business Method Patent Review

The limits of patent eligibility continue to be a major hurtle for patent owners whose patents are subject to Covered Business Method Patent Review (CBM) at the USPTO’s Patent Trial and Appeal Board (PTAB). In IBG LLC v. Trading Tech. Int. Inc., Case CMB2016-00090 (PTAB December 7, 2017) the PTAB issued a Final Written Decision holding that US Patent 7,725,382 was not directed to patent eligible subject matter under 35 U.S.C. §101. In addition to the §101 holding, the PTAB held that the Petitioner failed to meet their burden to show that the ‘382 Patent was obvious over certain prior art under 35 U.S.C. §103. Representative claim 1 of the ‘382 Patent recites: 1. A method of canceling an order entered for a commodity at an electronic exchange, the method comprising: receiving data relating to the commodity from the electronic exchange, the data comprising an inside market with a current highest bid price and a current lowest ask price currently available for the commodity; setting a trade order parameter; dynamically displaying by a computing device a first indicator at a first area corresponding to a first price level along a static price axis, the first indicator being associated with the… Read More »Patent Eligibility and Obviousness in a Covered Business Method Patent Review

Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

The PTAB held that the claims in Ex parte Quimby, Appeal No. 2016-004681 (June 2, 2017) were directed toward unpatentable subject matter.  Of particular interest given the claim language, the Appellant was unsuccessful with arguments that 1) the claims do not disproportionately tie up the use of any underlying idea, 2) the claim provides an improvement in the technological field of mass spectrometry, and, 3) with respect to dependent claim 3, that the claims tied the mathematical formula with technological field of mass spectrometry analyte detection. (citing Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010)). The independent claim is as follows: A method for selecting a target ion and a plurality of qualifier ions for identifying an analyte by mass spectrometry, the method comprising: (a) obtaining a reference spectrum for the analyte; (b) identifying a retention time window for the reference spectrum; (c) extracting a matrix spectrum over the retention time window; (d) measuring the abundance of each of a plurality of matrix ions in the matrix spectrum to produce a noise value at each matrix ion; (e) calculating a signal-to-noise value for each of a plurality of analyte ions by dividing the abundance of… Read More »Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

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 to a financial product or service, and not to a technological invention.  Claim 1 of both patents recites “[a] method for detecting fraudulent activity in a pay-per-click system.” The PTAB found that “a pay-per-click system is itself a financial product and provides a financial service.”  At the risk of over-simplifying,… Read More »Click-Fraud Prevention Patent-Ineligible in CBM Review

E.D. Texas Splits Patent-Eligibility of E-Mail Patents

Considering two e-mail patents, Judge Gilstrap of the Eastern District of Texas deferred a patent-eligibility determination of one of the patents as premature prior to claim construction, but held that claim construction was not required for claims of the second patent to be deemed patent-ineligible under the Mayo/Alice patent-eligibility test. Umbanet, Inc. v. Epsilon Data Management, LLC, No. 2:16-CV-682-JRG (E.D. Texas April 18, 2017.)  The court thus granted summary judgment of invalidity of U.S. Patent No. 7,444,374 under 35 U.S.C. § 101, but denied motions concerning U.S. Patent No. 7,076,730. Each of the patents-in-suit were directed to “electronic mail software with modular integrated authoring/reading software components.” Claims of the ’730 patent recited “encoding means” and “decoding means” for encoding and decoding representations created with “authoring components” used to create representations of “a text document” and “of a document including other than text.” After citing cases discussing when claim construction is or is not needed prior to a patent-eligibility determination, the court simply stated that claim construction was not needed to determine whether the claims of the ’730 patent were more like those of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016), or the claims in Intellectual… Read More »E.D. Texas Splits Patent-Eligibility of E-Mail Patents

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 with the digital product is valid based at least in part on a device identity generated by sampling physical parameters of the given device; in response to the device identity already being on a record, allowing the digital product to be used on the given device; in response to the… Read More »E.D. Texas: Digital Product Licensing Not Patent-Eligible

Patent-Eligibility Is Foggier after Enfish: an Illustration

Patent claims to “[a] method for defining a personalized printed product using a data template that consists of at least one graphical component” are not directed to an abstract idea, and thus should survive a motion to dismiss based on an allegation of patent-ineligible subject matter, says an Eastern District of Texas magistrate judge.  Opal Run LLC v. C & A Marketing, Inc., Case No. 2:16-cv-0024-JRG-RSP (E.D. Texas, March 14, 2017).  Applying the two-part Alice/Mayo test for patentability under 35 U.S.C. § 101, the court, relying heavily on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), found that the claims were not directed to an abstract idea. Representative claim 10 of U.S. Patent No. 6,704,120 recites: A method for defining a personalized printed product using a data template that consists of at least one graphical component, said method comprising: (a) generating a data template that identifies the graphical component; (b) encoding, in said data template, an instruction to operate upon the graphical component; and (c) providing an application program on a computer, said application program configured to interpret said data template and to operate upon the graphical component in accordance with said instruction encoded in said data… Read More »Patent-Eligibility Is Foggier after Enfish: an Illustration