Posted on

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…

Read more

Posted on

§ 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…

Read more

Posted on

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…

Read more

Posted on

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,…

Read more

Posted on

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…

Read more