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
software patent claims
§ 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 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.
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!(?)
Finding that competing expert declarations raised a factual question concerning whether claims recited an inventive concept, a Delaware magistrate judge found that a summary judgment motion for invalidity of claims of U.S. Patent No. 8,490,123 under 35 USC § 101 and the Mayo/Alice test should be denied. S.I.SV.EL. Societa ltaliana per lo Sviluppo Dell’Elettronica S.p.A v. Rhapsody International Inc., Civil Action No. 18-69-MN-CJB (March 12, 2019). A defense expert said that there was no novelty in an ordered combination recited in the claims, and the plaintiff’s expert said there was. This was enough for the court to deny the summary judgment motion. The ’123 patent is directed to “generating a user profile on the basis of playlists.” Representative claim 1 recites: A method of generating a user profile for a given user from at least one first playlist including a first sequence of content and being associated with the given user and stored on a media device, said method comprising: automatically searching for the at least one first playlist among a plurality of playlists, wherein the plurality of playlists includes at least one of a second playlist and a third playlist, wherein the second playlist has a second sequence of… Read More »Factual Dispute Precludes Summary Judgment on Alice / § 101 Motion
Patent claims reciting “buying and selling an item relating to unique subjects” unsurprisingly could not meet the patent-eligibility bar of 35 U.S.C. § 101 and the Alice/Mayo test when the patent owner appealed a lower court’s Rule 12(b)(6) dismissal. VOIT Technologies, LLC v. Del-Ton, Inc., No. 2018-1536 (Fed. Cir. Feb 8, 2019) (non-precedential). The trial court had found the claims of U.S. Patent No. 6,226,412 directed to the abstract idea of buying and selling products without an additional inventive concept. The Federal’s circuit agreed. Turning first to part one of the applicable patent-eligibility test, whether the claims are directed to an abstract idea, the court stated that the claims of the ’412 patent are directed to the abstract idea of entering, transmitting, locating, compressing, storing, and displaying data (including text and image data) to facilitate the buying and selling of items. Like claims in Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016), the court said,the claims here are merely directed to collecting, analyzing, and displaying information. These claims did not improve the functioning of a computer as in Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016). The patent owner could not “explain how employing different formats, as claimed, improves compression techniques or the… Read More »Patent-Eligibility Not Supported by an Ordered Combination of Generic Technology Elements
A court found that claims of two patents were ineligible under 35 U.S.C. §101 and the Alice/Mayo test because the claims were all “directed to the same economic practice: the idea of presenting discounts or offers for goods and services based on certain criteria, such as a user’s location.” Valentine Communications, LLC v. Six Continents Hotels, Inc., No. 1:18-cv-1815-WMR (N.D. Ga. Jan. 9, 2019). The court thus granted the defendant’s Rule 12(b)(6) motion to dismiss the plaintiffs complaint alleging infringement of U.S. Patent Nos. 8,567,672 and 8,590,785. Claim 18 of the ’672 patent recites a computer-implemented “method for providing a discount to a user associated with a user device.” Claim 1 of the ’718 patent recites a mobile device that “receives an offer for the product or service in response to the transmission of the subset of purchasing data and in accordance with a search function.” The plaintiff pointed to claim recitations of hardware to support their argument that the claims were directed to more than an abstract idea. But the court thought that, when the conventional hardware elements were “stripped away” from the claims, all that remained were a “fundamental economic practice.” Unfortunately for the plaintiff, the patents themselves more or less explicitly… Read More »Patents Claim E-commerce not Technical Solution, Fail § 101
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 with defaults option and exclusion of advanced statistical requirements in forecasting, (2) consider social and technological change, (3) make forecasts of operations and development and strategic plans of 1-5-15 years simultaneously, and (4) provide automatic updates reducing manual operations and storage requirements such that this process taken in combination improves… Read More »CAFC Affirms Rejections of Computer Product-by-Process Claim
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 client computer’s request; and a first script/applet to be included with a responsive information page to enable the client computer to initiate dynamic formation of a chat session unaffiliated with any pre-established chat room for a user of the client computer to chat with a second user of interest, also… Read More »Establishing Online Chats Not Patent-Eligible Under Alice