section 101

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.

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.

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

§ 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

Patent Claims to Evaluating Body Movement Fail § 101 on Post-Trial Motion: ILife Technologies, Inc. V. Nintendo Of America, Inc.

Patent claims directed to automating collection and interpretation of sensor data are often suspect under the two-part  Mayo/Alice patent-eligibility test under 35 U.S.C. § 101. Not so often, however, do judges do as the court did in iLife Technologies, Inc. v. Nintendo of America, Inc., C.A. No. No. 3:13-cv-4987-M (Jan 17, 2020), and hold patent claims invalid under § 101 after a trial and eight figure jury verdict in favor of the plaintiff. The accused device, interestingly, was one with which many of us are familiar: the Nintendo Wii. Claim 1 of U.S. Patent No. 6,864,796 recites: A system within a communications device capable of evaluating movement of a body relative to an environment, said system comprising: a sensor, associable with said body, that senses dynamic and static accelerative phenomena of said body, and a processor, associated with said sensor, that processes said sensed dynamic and static accelerative phenomena as a function of at least one accelerative event characteristic to thereby determine whether said evaluated body movement is within environmental tolerance wherein said processor generates tolerance indicia in response to said determination; and wherein said communication device transmits said tolerance indicia. A jury found that claims of the ’796 patent were… Read More »Patent Claims to Evaluating Body Movement Fail § 101 on Post-Trial Motion: ILife Technologies, Inc. V. Nintendo Of America, Inc.

Emergency Alert System Is Not Patent-Eligible: Tenaha Licensing LLC v. TigerConnect, Inc.

Patent claims directed to “alert and notification” are ineligible under 35 U.S.C. § 101 and the two-part Mayo/Alice patent-eligibility test, said a Delaware magistrate judge, recommending  granting a Rule 12(b)(6) motion to dismiss a lawsuit alleging infringement of U.S. Patent No. 8,238,869. Tenaha Licensing LLC v. TigerConnect, Inc., C.A. No. 19-1400-LPS-SRF (D. Del. Jan. 2, 2019). Further, the court recommended granting the motion with prejudice. Any attempt by the plaintiff to amend its complaint would be futile, the court said; the patent specification affirmatively provided intrinsic evidence of patent-eligibility that could not be contradicted by extrinsic evidence. The court began by describing the analysis it would follow – this explanation is worth quoting because it is the patent-eligibility analysis that most courts follow, but that few courts explain so clearly: In resolving Defendant’s Motion, the Court will first discuss which claim will be specifically addressed herein as representative. Thereafter, it will analyze the relevant claim under both steps of the test for patent eligibility set out in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014). Finally, the Court will consider whether any factual disputes preclude granting Defendant’s motion and whether leave to amend the Complaint should be granted.… Read More »Emergency Alert System Is Not Patent-Eligible: Tenaha Licensing LLC v. TigerConnect, Inc.

Patent Claims to Virtual Smartphone for Automobile Fail Alice Test: KCG Technologies, LLC v. CarMax Auto Superstores, Inc.

Claims directed to a virtual smartphone that could be displayed on a vehicle touchscreen are patent-ineligible under 35 U.S.C. § 101 and the two-part Mayo/Alice patent-eligibility test, held the court in KCG Technologies, LLC v. CarMax Auto Superstores, Inc. The court thus granted the defendants’ Rule 12(b)(6) motion to dismiss. Claim 1 of U.S. Patent No. 9,671,955 recites: A virtual smart phone, comprising: a screen mounted in an automobile; a processor, a non-transitory memory, and a power port mounted in the automobile; a software application executing on the processor to control image display on the screen and emulate features of a handheld device; a visual representation of a plurality of features of the handheld device on the screen; and an interactive element, wherein the interactive element allows access to the plurality of features of the handheld device, wherein the plurality of features of the handheld device comprises volume control, messages, phone call, email, internet browser, music player, calendar, Global Positioning System, contacts, and maps. Claim 3, the other independent claim of the ’955 patent, is a method claim of similar scope. The court did not find these claims challenging to analyze; the first sentence of the court’s discussion summarized its finding under… Read More »Patent Claims to Virtual Smartphone for Automobile Fail Alice Test: KCG Technologies, LLC v. CarMax Auto Superstores, Inc.

Determining Patent-Eligibility Requires Claim Construction!(?)

In a decision that Judge Lourie in dissent described as “based on a claim construction issue that is little more than a mirage,” a Federal Circuit panel vacated and remanded a district court’s Rule 12(c) judgment on the pleadings of patent-ineligibility, under the Alice test and 35 U.S.C. § 101, of claims directed to updating Internet toolbars. MyMail, Ltd. v. ooVoo, LLC, Nos. 2018-1758, 2018-1759 (Fed. Cir. Aug. 16, 2019) (precedential). Judge Reyna’s majority opinion, joined by Judge O’Malley, found error in the district court’s decision not “to resolve the parties’ claim construction dispute before adjudging patent eligibility.” The patents-in-suit were US 8,275,863 and 9,021,070, the ’070 patent being a continuation of the ’863 patent. I will not reproduce the lengthy claims here – they can be found at the above links – suffice it to day that the claims of both patents were all about updating Internet toolbars. Majority Opinion The patent owner, and now Appellant, had argued to the district court that the construction of “toolbar” in another case, MyMail, Ltd. v. Yahoo!, Inc., No. 2:2016cv01000 (E.D. Tex. Sept. 9, 2017), should be adopted, and supported patent-eligibility. The Yahoo! court construed “toolbar” as “not generic” but rather “button… Read More »Determining Patent-Eligibility Requires Claim Construction!(?)