Search Results for: Alice v. CLS Bank

EasyWeb => Easy 101 Invalidation

Patent, ,

EasyWeb v. Twitter (Fed. Cir. 2017) (nonprecedential opinion)

In this case, the appellate court affirmed summary judgment that all of the asserted claims of five EasyWeb patents are ineligible under the Mayo/Alice interpretation of 35 U.S.C. 101 and therefore invalid.

Representative Claim 1 of U.S. Patent No. 7,685,247 is directed to a message-publishing-system that “accepts messages in multiple ways, such as by fax, telephone, or email” then verifies the message as being sent from an authorized sender, converts the message to a web format, and publishes the message on the Internet.  Although claim 1 is directed to a computer system, it includes a functionally claimed software component:

A message publishing system (MPS) operative to process a message from a sender in a first format, comprising:

a central processor;

at least one sender account;

at least one storage area configured to store at least a first portion of the message;

and software executing in the central processor to configure the processor so as to:

  1. identify the sender of the message as an authorized sender based on information associated with the message in comparison to data in the sender account, wherein the identification is dependent upon the first format;
  2. convert at least a second portion of the message from the first format to a second format; and
  3. publish the converted second portion of the message so as to be viewable in the second format only if the sender has been identified as an authorized sender.

Following the now standard two-step eligibility analysis, the court first found the claim directed toward an abstract idea.

Claim 1 merely recites the familiar concepts of receiving, authenticating, and publishing data. As we have explained in a number of cases, claims involving data collection, analysis, and publication are directed to an abstract idea.

Of import here for the abstract idea finding is that the claim simply uses generic computer technology rather than improving-upon the technology or designing particularized components.

Moving to step-two, the court looked – but could not find – an “inventive concept” beyond the claimed abstract idea sufficient to “transform the nature of the claim’ into a patent-eligible application.” (quoting Alice).

Although EasyWeb argues that an inventive concept arises from the ordered combination of steps in claim 1, we disagree. Claim 1 recites the most basic of steps in data collection, analysis, and publication and they are recited in the ordinary order. In sum, all the claims are directed to the abstract idea of receiving, authenticating, and publishing data, and fail to recite any inventive concepts sufficient to transform the abstract idea into a patent eligible invention.

Its decision is not quite correct, the Federal Circuit does not find abstract ideas simply because a claim involves “data collection, analysis, and publication.”  However, when (as here), the claim is directed toward these activities at a high level of abstraction, then the Alice/Mayo approach easily fits.

Analytically, the decision adds further weight to the theory that steps 1 and 2 are closely linked and are highly likely to correlate with one another.

A Patent on the Internet

Patent, , ,

Guest Post by Professor Marketa Trimble (UNLV). 

Imagine that someone had a patent on the internet and only those who had a license from the patent holder could, for example, do business on the internet. This internet patent would not need to concern the internet protocol, the domain name system, or any other technical features of the network; the patent could, in fact, cover something else – a technology that everyone, or almost everyone, who wants to do business on the internet needs, a technology that is not, however, a technical standard. There might be one such patent application – the patent application discussed below – that could be approaching this scenario.

We must accept, however reluctantly, that activities on the internet will not be governed by a single internet-specific legal regime or by the legal regime of a single country. Although countries might agree on an internet-specific regime for the technical features of the internet, and might even adopt some uniform laws, countries want to maintain some of their country-specific national laws. People and nations around the world are different, and they will always have diverse views on a variety of matters – for example, online gambling. Online gambling might be completely acceptable in some countries, completely unacceptable in others, or somewhere in between; likewise, countries have different understandings of privacy and requirements for the protection of personal data. Therefore, countries now have and likely always will have different national laws on online gambling and different national laws on privacy and personal data protection. Compliance with multiple countries’ laws regarding the internet is nonnegotiable, certainly for those private parties who wish to conduct their activities on the internet transnationally and legally. Nevertheless, in practice and for some matters, the number of countries whose laws are likely to be raised against an actor on the internet may be limited, as I discussed recently.

For some time the major excuse for noncompliance with the laws of multiple countries on the internet was the ubiquitousness of the network. The network’s technical characteristics seemed to make it impossible for actors to both limit their activity on the internet territorially, and also to identify with a sufficient degree of reliability the location of parties and events on the internet, such as customers and their place of consumption. However, as geolocation and geoblocking tools developed, location identification and territorial limitation of access became feasible. Of course the increase in the use of geolocation tools generated more interest in the evasion of geolocation, and increased evasion has prompted even further improvements of the tools. The argument that we cannot limit or target our activity territorially because we don’t know where our content is accessed or consumed no longer seems valid. (Also – at least in some countries – courts and agencies have permitted internet actors to employ low-tech solutions as sufficient territorial barriers, for example, disclaimers and specific language versions.)

The multiplicity of applicable laws that originate in different countries and apply to activities on the internet is more troubling in some areas of law than in others. One area of law that permeates most internet activity is data privacy and personal data protection. Any internet actor who has customers and users (and therefore probably has user and traffic analytics) will likely encounter national data protection laws, which vary country-by-country (even in the EU countries, which have harmonized their personal data protection laws, national implementing regulations may impose country-specific obligations). Therefore, compliance with the varying national data protection laws will become one of the essential components of conducting business and other activities transnationally. If someone could patent a method for complying simultaneously with multiple countries’ data privacy laws on the internet and claim the method broadly enough to cover all possible methods of achieving compliance with the national privacy laws, that patent owner might just as well own a patent on the internet, or at least on a very large percentage of internet activity.

A U.S. patent application that seeks a patent on simultaneous compliance with multiple countries’ data privacy laws on the internet through broad method claims is application No. 14/266,525, which concerns “Systems and Methods of Automated Compliance with Data Privacy Laws,” meaning “laws of varying jurisdictions” (the title and the “Abstract”). The invention is designed to facilitate an automatic method of complying with the data privacy laws of various jurisdictions, which are, as the “Introduction” notes, “complicated, diverse, and jurisdiction specific.” The method envisions that once “person-related data” are requested from a data provider, a “filter is the [sic] automatically applied to the person-related data to restrict transfer of person-related data [that] does [sic] not meet the data privacy regulations applicable to the jurisdiction” (the “Introduction”); the filter also checks for any consents by the data subject if the particular regulations require them. The method also foresees, for example, the possibility of “identif[ying] different origins of the person-related data sources” in terms of their geographical location (“Trust Object and Trust Data”).

The patent application still must be prosecuted, and the – undeniably useful – invention will be subject to scrutiny as to its compliance with the requirements of statutory subject matter, novelty, and non-obviousness. A patent on the application may not issue at all, or the language of the application may be amended and the claims narrowed. Whatever the future might bring for the claimed invention, this patent application serves as a useful prompt for thinking about the components that have been or are becoming essential to conducting business and other activities on the internet.

The Huge Assumption in 101 Jurisprudence

Ethics,

(Back to business soon. I’ve been grading and managed to do what many of you have done, I’m sure, and catch this nasty bug going around.)

I’ve posted elsewhere at length and exhaustively about why the statutory text after 1952 makes it clear that failure to “comply” with the permissive language in 101 is a not defense to infringement.  I’ve shown that the statutory text doesn’t make 101 a “condition of patentability” and it otherwise is not listed within section 282. I’m not going to repeat those earlier posts here.  As courts say, familiarity with my prior decisions is assumed.

In that context, I note the recent case, where the court wrote:

The Supreme Court, however, has long interpreted § 101 and its statutory predecessors to contain an implicit exception: “laws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. Pty Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347, 2354 (2014).

Content Extraction and Transmission LLC v. Wells Fargo Bank, NA (Fed. Cir. Dec. 23, 2914) (Chen-auth; Dyk; Taranto).

The problem, in my view, is that the Court has never analyzed whether its pre-1952 case law survived the changes to the Patent Act in 1952.  Perhaps “invalidity” based on section 101 was a “defense” before 1952. It no longer is, though the court marches onward.  Worse, now this “defense” can be raised under 12(b)(6), without evidence, and with no burdens.  Whatever limitations on courts’ power to invalidate patents Congress thought it had created in 1952, this “thing that makes patents go away but is not invalidity or enforceability but is just sort of floating out there” marches onward thanks complete lack of analysis and respect for separation of powers, the rules of civil procedure, and the presumption of administrative competence.

Sigh.

 

Patenting Software in the US as compared with Europe

Patent, , ,

Guest post by Shubha Ghosh and Erika Ellyne

This post compares and contrasts the United States approach to patentable subject after last term’s Alice v CLS decision, with that in the European Union. The bottom line is that the EU may be now more favorable to software claims than the US.

In its 2014 Alice decision, the US Supreme Court makes clear that a two step test applies to determination of when an invention is patentable subject matter. First, the reviewer of the patent, whether patent examiner or judge, must determine if the patent covers an excluded area from patenting, such as an abstract idea or law of nature. If the patent covers an excluded area, the reviewer moves on to the second stage: whether there is an inventive concept that is an application of the abstract idea or law of nature. This two part test is a capstone to the Court’s prior decisions in Bilski v. Kappos (2010)(business method patents) and Prometheus v. Mayo (2012)(medical diagnostic and treatment patents).

By contrast, software is more easily patentable in Europe despite the existence of an express provision on the excludability of software. Article 52 of the EPC famously recites a list of ‘non-inventions’ that are excluded ‘as such’. The reading of this last condition has lead to a de minimis application of the provision. ‘Technical character’ is synonymous with invention in the EPO Board of Appeals’ (BoA) case law; any demonstration and degree of ‘technical character’ passes the patent eligibility threshold. The role of the technical feature is irrelevant; to the point that the mere use of technical means, such as a computer, renders a patent claim eligible (even the inclusion of the term ‘email ‘has ‘transformed’ a previously ineligible claim into an eligible one).

The European approach has been to adopt a formalistic rather than substantive approach; making patent eligibility a derisively low threshold. The US, on the other hand, has actively rejected this type of formalistic approach; neither adding the words ‘apply it’ to excluded subject matter nor the recitation of a computer can render the ineligible eligible. In Europe, the patent eligibility standard has become a question of drafting, a practice abhorred by patent Courts on both side of the Atlantic. In the end the standard is of little to no effect, looking at the context of its application no mixed claims (which recite a non invention along with other man made subject matter- where most questions arise) are ever rejected.

A technical application test can potentially help overcome the gaps/superficiality left open by the technical character test. The US approach suffers from its own ambiguities; the first branch of the US test, the determination of what is an ‘abstract idea’/subject matter is vague and in need of clarification/objectification. The European notion of ‘technical’, which is used in opposition to abstract in European case law as well, despite its numerous short comings could serve as a road map to a more developed test for abstraction. That is a subject for another day.

There are those that would counter that this is a determination for inventive step, that there is confusion here between eligibility and obviousness. It is true that in Europe, much of what is caught out under the US eligibly standards is further culled in the inventive step stage. However, in the inventive step assessment, much of inventive step is not about obviousness at all, but identification of the ‘invention’: the technical solution. The ‘problem solution’ approach usually proceeds first by the identification of the invention, the technical solution, to then derive the problem thereof. In this identification of the ‘technical solution’ a very controversial point is what extent ‘non technical features’, i.e. subject matter found under 52.2, can contribute to the technical effect/solution. At this stage, there is in fact a re-formulation of the invention; the main point of the tasks is a question of defining the invention not of ‘obviousness’ per se. The non-obvious determination is actually more a methodology than a veritable measure of ‘obviousness’ as such.

Shubha Ghosh is the Vilas Research Fellow & George Young Bascom Professor of Business Law at the University of Wisconsin School of Law where he is also the Associate Director of the Initiatives for Studies in Transformational Entrepreneurship (INSITE). Erika Ellyne is a law graduate and doctoral candidate at the Vrije Universiteit Brussel (Free University Brussels)

Ongoing Battles over Patentable Subject Matter

Patent, Patent Cases 2011, Patentable Subject Matter, Software, , ,

By Dennis Crouch

In Ultramercial v. Hulu, the Federal Circuit held that Ultramercial's asserted Patent No. 7,346,545 fit within the subject matter eligibility guidelines of 35 U.S.C. § 101 and was not merely an unpatentable abstract idea. The patent claims a method of distributing copyrighted products (such as a movie) over the internet. The novel idea is that the copyrighted product be both (1) offered for sale and (2) delivered for free if the consumer agrees to view an advertisement. The district court held the patent invalid under section 101. On appeal, however, the Federal Circuit reversed – holding that the patent claims a "practical application" of the idea that "advertising can serve as a currency." An important element of the decision was the finding that "[v]iewing the subject matter as a whole, the invention involves an extensive computer interface."

Now, WildTangent (one of the accused infringers) has petitioned for a rehearing en banc. The public interest organization Electronic Frontier Foundation (EFF) has filed a brief in support of the rehearing – arguing that an en banc determination is necessary in light of (1) the court's failure to follow Bilski v. Kappos; (2) inconsistencies in application of the law apparent from the court's recent decisions in Ultramercial, Classen Immunotherapies v. Biogen IDEC, and CyberSource Corp. v. Retail Decisions, Inc.; and (3) a growing intra-circuit division regarding patentable subject matter jurisprudence. This filing ties-in closely with the pending Supreme Court case of Mayo v. Prometheus, which questions the patentability of a method of personalizing the dosage of a pharmaceutical and the pending case of AMP v. Myriad, which questions the patentability of isolated human DNA. Other pending Section 101 cases include DealerTrack, Inc. v. Huber (App. No. 2010-1544) (Claims 1, 3, and 4 of U.S. Patent No. 7,181,427); FuzzySharp Tech., Inc. v. 3DLabs Inc. (App. No. 2010-1160) (U.S. Patent Nos. 6,172,679 and 6,618,047); CLS Bank Int'l. v. Alice Corp (App. No. 2011-1301) (Patent No. 7,725,375); Cognex v. ITC (App. No. 2011-1098) (Patent Nos. 7,016,539 and 7,065,262); and Fort Properties, Inc. v. American Master Lease LLC (App. No. 2009-1242) (Patent No. 6,292,788).

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, , ,

Samsung v. Apple: The Battle Continues

  • A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

  • Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

  • The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

  • King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
  • Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
  • Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 3rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent, , ,

Samsung v. Apple: The Battle Continues

  • A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

  • Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

  • The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

  • King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
  • Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
  • Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 3rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Bits and Bytes, Patent, , ,

Samsung v. Apple: The Battle Continues

  • A Netherland court recently denied Samsung's request for an injunction banning Apple from selling iPhones and iPads. Samsung claims that Apple should not be allowed to sell devices with 3G technology because they infringe Samsung patents. The court stated that because the 3G technology is the industry standard, Samsung is obliged to offer Apple licenses under fair, reasonable, and nondiscriminatory (FRAND) terms. It seems that the licensing fee Samsung sought was not a FRAND offer and that if Samsung does make a FRAND offer and for some reason an agreement is not reach Samsung may file another patent suit and ask for a new injunction request. [Link]

UK IPO

  • Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage. The event was a presentation of the economic research conducted for the IPO by the researchers, moderated by an expert panel and followed by a lively discussion. The research itself is published here. [Link]

Taiwan Will Form Patent Bank

  • The quasi-government agency, the Industrial Technology Research Institute (ITRI) announced the bank, saying it could be similar to existing defensive patent aggregators such as RPX and Allied Security Trust. The director of ITRI stated that the bank will assist Taiwanese manufactures with the creation of patent portfolios and patenting strategies during the manufactures' R&D periods and later assist in defending them from suits and in expanding their market share. HTC is a Taiwan based company, who has been in a heated patent infringement battle against Apple, and it would be to their advantage for an IP bank like this. [Link]

Patent Jobs

  • King & Spalding is searching for a patent attorney with 1-2 years of experience to work at their Houston office. [Link]
  • McDonnell Boehnen Hulbert & Berghoff is seeking a junior associate with 2-3 years of experience, to work in their electrical arts group. [Link]
  • Rambus is seeking a Senior Patent Counsel with 8+ years of experience and a BSEE or related degree. [Link]
  • Sheppard Mullin is searching for 2 attorneys: (1) an associate with at least 2 years of patent prosecution experience, and (2) an associate with 2-4 years of patent litigation experience. [Link]
  • The University of New Hampshire School of Law's Franklin Pierce Center for IP is seeking to hire a full-time professor of patent prosecution practice. [Link]

Upcoming Events:

  • The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
  • Back to School: The New Patent Law Explained, conference will be hosted by Berkeley Center for Law and Technology on October 21 in Berkeley, California. Professors and practitioners will provide detailed explanations of the changes and discuss the impact on patent prosecution, counseling, and litigation. [Link]
  • American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
  • The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
  • Whittier Law School's Center for IP Law and Law Review will host the 29th Annual Law Review Symposium: The Law of the Smart Phone on November 3rd. The symposium will feature presentations and panel discussions devoted to the privacy, regulation, economics, and intellectual property issues surrounding smart phone technology. Guest speakers include, Gerald Faulhaber, Mark Roark, Alan Friel, Susan Freiwald and many others. [Link]
  • IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
  • World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
  • IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
  • IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
  • The American Conference Institute's 2nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Using Foreign Infringement Judgment to Prove Infringement in the US

Patent,

Quad/Tech v. Q.I. Press Controls (Fed. Cir. 2011)

Quad/Tech sued QI, alleging infringement of its U.S. Patent No. 5,412,577. The ‘577 patent is directed to a “color registration system for a printing press.” According to the briefing, QI has already lost a parallel patent infringement lawsuit in Germany and is subject to a permanent injunction based upon a “virtually identical” patent claim. In the German case, QI lost at lower court level and then failed to appeal.

Preliminary Relief: The district court denied Quad/Tech’s motion for a preliminary injunction. Although interlocutory, the grant or denial of preliminary injunctive relief is immediately appealable. However, a district court’s decision to grant or deny a preliminary injunction is reviewed only for an abuse of discretion that requires a “showing that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings.” Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997).

On appeal, the Federal Circuit issued a two paragraph non-precedential opinion upholding the district court conclusion that, based upon a preliminary claim construction, that the infringement claim may fail and that Quad/Tech had failed to prove likely irreparable harm absent preliminary injunctive relief.

Using Foreign Infringement Judgment to Prove Infringement in the US: An interesting aspect of this decision is the district court’s use of the German opinion. In particular, Quad/Tech requested that the court “adopt Q.I.’s acceptance of the judgment in Germany as an admission of infringement of a virtually identical claim.” The district court rejected that argument – holding that:

  1. Quad/Tech had failed to provide sufficient evidence of the German judgment (the company had only submitted an affidavit from a corporate VP); and
  2. Foreign patent determinations are not binding upon US litigation concerning US patents.

In its analysis, the district court cited several prior cases where US courts have refused to rely upon foreign analysis of family-member patents. In Medtronic, Inc. v. Daig Corp., 789 F.2d 903 (Fed.Cir.1986), the accused infringer asked the court to rely upon a German tribunal holding that the parallel family-member patent was invalid as obvious. The Federal Circuit rejected that argument – calling it “specious.” The Medtronic decision was followed in both Allen v. Howmedica Leibinger, Inc., 197 F.Supp.2d 101 (D.Del.2002) and Oki Am. v. Advanced Micro Devices, Inc., 2006 WL 3290577 (N.D.Cal. Nov. 13, 2006). In the Oki Am case, the court specifically held that the “the action taken by the European Patent Office rejecting counterpart application over the same reference is neither controlling nor persuasive.” In his patent digest, Robert Matthews concludes that:

Generally, a validity determination by a foreign patent office has little relevance or weight in considering the validity of a corresponding United States patent. The Federal Circuit has instructed that because the theories and laws of patentability vary from country to country, as do examination practices, caution must be exercised in extrapolating any consequences arising out of acts taken in a foreign proceeding.

Matthews, Annotated Patent Digest, § 15:53 (2011).

There are several important distinctions between Quad/Tech’s case and Medtronic. Perhaps most notably is the fact that Quad/Tech is requesting consideration of the foreign judgment only at this preliminary stage when the court is attempting to speculate on the likelihood of success on the merits.

Conventionality is Irrelevant to Alice Step 1

Patent

by Dennis Crouch

iLife Technologies, Inc. v. Nintendo of America, Inc. (Fed. Cir. 2021) (Non-Precedential Decision)

The Trial: The jury sided with iLife–finding Nintendo liable for infringing iLife’s U.S. Patent No. 6,864,796 and awarding $10 million in damages. At trial, Nintendo had argued that the patent was invalid for lack of enablement and written description, but the jury denied those defenses. Nintendo also challenged the patent in an IPR, but the claims not proven invalid.

Here, the claims are directed a safety-feature for systems that evaluate body-movement, such as Nintendo’s Wii Sports and Mario Kart 8.  The basic idea is that the system will sense acceleration of a body and determine whether the associated movement is “is within environmental tolerance.”  A “tolerance indicia” is then created and transmitted.  The patent notes that movements beyond tolerance might “be damaging, destructive, crippling, harmful, injurious, or otherwise alarming or, possibly, distressing to the body.”

Eligibility: Pre-trial, Nintendo had also argued that the asserted claims were invalid as directed to the abstract idea of gathering and processing data.  The district court refused to decide that issue pre-trial.  However, after the trial, the court stepped-up and found the claims invalid.  That decision eliminated the damages award.  On appeal here, the Federal Circuit has affirmed.

[ILife’s] claim 1 of the ’796 patent is not focused on a specific means or method to improve motion sensor systems, nor is it directed to a specific physical configuration of sensors. It merely recites a motion sensor system that evaluates movement of a body using static and dynamic acceleration information.

Slip. Op.

The patent itself includes more specific hardware and logical elements.  Consider, for instance Figures 1 and 5 below.  However, the asserted claims here were directed to a much broader abstraction.

As the district court held, the elements of claim 1, considered individually and as an ordered combination, fail to recite an inventive concept. Aside from the abstract idea, the claim recites only generic computer components, including a sensor, a processor, and a communication device. The specification’s description of
these elements confirms they are generic.

Id.

= = = =

Separating Out the Steps: The one quirk of this decision comes from the following statement: “The conventionality of the claim elements is only considered at step two” of the Alice/Mayo analysis.  In finding the claims directed to an abstract idea, the district court had noted that claim 1 does not require “anything other than conventional sensors and processors performing conventional activities previously known to the industry.”  It was error to consider conventionality at that stage of the analysis.  Despite that error, the appellate panel still found the claim directed toward an abstract idea.  Note that this is a non-precedential decision and so this line from the case won’t help yours.

= = = =

1. 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.

= = = = =

Michael Wilson (Munck Wilson Mandala) represented the patentee at trial and on appeal; Stephen Smith (Cooley) for the successful defendant.

IPO Steps Up: Proposes Statute to Overturn Mayo and Alice

Patent

by Dennis Crouch

The Intellectual Property Owners Association (IPO) is run primarily by a group of 50 top intellectual property counsel (usually patent-focused) from many of the largest global innovative companies – all deeply involved in the patent system as patent holders and many as accused-infringers as well.  Patent attorneys from various law firms serve in a support role for the organization.  The IPO created a special 101 legislative task force headed by IBM’s Marian Underweiser with Vice-Support from Bob Sachs (Fenwick & the BilskiBlog) whose proposal has now been released and fully adopted by the IPO Board.

IPO’s proposed a particular statutory amendment that would limit the eligibility question to whether “the claimed invention as a whole, as understood by [PHOSITA], exists in nature independently of and prior to any human activity, or exists solely in the human mind.”  The proposal would seemingly flip the outcomes Alice, Mayo, and Bilski, although it is unclear to me how the statute treats a situation where a covered embodiment could exist solely in the human mind, but the invention as a whole also contemplates out-of-mind activities.  The proposal specifically states that eligibility “is not impacted by . . . the claimed invention’s inventive concept.”  Rather, the focus is solely on whether the claim-as-a-whole (1) “already exists in nature independently of and prior to any human activity” or (2) “exists solely in the human mind.”   The proposed amendment further spells out that the entitlement to a patent is subject “only” to the limitations found in the Patent Statute.

 

IPO Proposed Amendment:

 

101 Inventions patentable.

101(a) ELIGIBLE SUBJECT MATTER: Whoever invents or discovers, and claims as an invention, any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereto, shall be entitled tothereof, may obtain a patent for a claimed invention thereof therefor, subject only to the exceptions, conditions, and requirements set forth in this Titleof this title.

101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

101(c) SOLE ELIGIBILITY STANDARD: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.

There are many important paths of discussion stemming from this proposal.  One is that proposal’s focus would remove subject matter eligibility from the courts policy-toolkit and instead make the doctrine fully a creature of statute.  Although not required for its proposed change, the Board also proposed eliminating the word “new” from the requirements of Section 101 — further elimination of the requirement that the individual claiming to be the inventor actually invented.  The proposal includes several further subtle (and not-so-subtle) changes including “entitlement” to a patent of your claimed invention; express separation of 101 analysis from “the requirements or conditions of sections 102, 103, and 112;” statement that eligibility is not impacted by “the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.”  It is also unclear what becomes of the utility doctrine.

More to come on this.

 

Predicting Eligibility

Patent

by Dennis Crouch

I have really enjoyed reading the new article by Professors Rantanen and Datzov providing empirical evidence that eligibility outcomes are now quite predictable.  When the Supreme Court decided Bilski back in 2010, I was quite concerned about predictability and co-authored a BTLJ article with Prof. Rob Merges on the topic.  If you recall though, in Bilski the Supreme Court offered no decision making framework beyond suggesting a case by case approach.  At the time, there were only a sparse few prior cases to guide future decisions.  But a more complete legal framework was developed fairly quickly in the subsequent cases of Alice Corp and Mayo, and the lower courts decided several hundred eligibility cases that provided substantial guideposts that so often seek in our common law system.

Although I was initially surprised at their reported high affirmance rate of eligibility decisions — on reflection it has begun to make sense. The framework provided a key procedural process and hundreds of decisions gave the opportunity to work through ambiguities. In our 2010 article, Merges and I were particularly concerned about USPTO patent examiners being able to follow the atextual guidelines offered by Bilski, but the Patent Office also acted to create and then repeatedly modify its eligibility examination guidelines in a way that offered a straightforward path for non-lawyer examiners to substantially follow the law set out by the Court.

The article addresses the rhetoric of unpredictability and argues that “there is significant reason to think the popular narrative that § 101 and the Mayo/Alice framework cannot be predictably applied, particularly by judges, may be more of a misconception than an accurate narrative.”

For folks fighting through eligibility cases these days, the biggest concern is no longer unpredictability, but that the law has pushed too far against patentability.  Many like the pendulum analogy because it suggests a return — that the pendulum will swing back.

In my view, the pendulum will (and is) swinging back, but not via a change in the law.  Most of the patents that have been invalidated were those applied-for prior to the Supreme Court’s radical change in eligibility law.  Since then patent prosecution attorneys have substantially modified their approach to drafting patent applications in ways that provide more detailed technical analysis, focusing on technical solutions to technical problems, clearly defining the computer hardware elements, and tying the claims to these technical embodiments.  Likewise, patent litigators are wary of asserting claims that are likely to be found ineligible and so shy away from those potential case killers.   The result then is that I expect to see far fewer eligibility cases in the coming years, but that will reflect in a change in practice rather than another change in the law.

Patent Law at the Supreme Court December 2021

Patent

by Dennis Crouch

The Supreme Court has not yet granted a writ of certiorari in any patent cases this term, and has denied certiorari in several dozen cases.  A handful of important petitions are pending whose outcome could be transformative to the law.

Eligibility: American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891. The Federal Circuit concluded that American Axle’s  vehicle-manufacturing claims are ineligible under the two-part tests of Alice and Mayo.  U.S. Patent No. 7,774,911 (Claim 22). The claims here are directed to a method of manufacturing an automobile drive-shaft with reduced vibration.  The basic idea is to insert a liner into a hollow shaft.  The liner though is special — it is made of a “reactive absorber” and its mass and stiffness have been “tuned” all for the purpose of attenuating both “shell mode vibrations” and “bending mode vibrations” of the shaft.  The petition asks two questions:

  1. What does it mean to be “directed to” an ineligible concept? (Alice Step 1).
  2. Is eligibility a pure questions of law (based upon the claims); or is it a “question of fact for the jury based upon the state of the art at the time of the patent?”

The Federal Circuit released a first opinion in the case followed by a toned-down second opinion.  Both opinions were opposed by Judge Moore who explained that even the second try was an “unprecedented expansion of § 101.”  The en banc petition failed, but in a 6-6 tie.  The petition includes several features making certiorari more likely: Issue of historic interest to the Supreme Court; Divided lower court; Multiple amici in support of hearing the case; Multiple similar petitions in other cases; and Prior statement from US Gov’t (Trump Admin) that the Post-Alice eligibility setup needs recalibration.  The Court has also shown signs of interest, including an order for responsive briefing from Neapco, and a request for the views of the Solicitor General (CVSG).  We are now awaiting those views, and I expect that the SG’s brief will give us the best clue as to the likely outcome.  The Supreme Court requested briefing almost 8 months ago – on May 3, 2021. The five most recent CVSG briefs took an average of 5.5 months from the request to the brief. So, we’re at the extreme end of the scale for this one.

There are two other eligibility cases pending: Yanbin Yu, et al. v. Apple Inc., No. 21-811; and WhitServe LLC v. Dropbox, Inc., No. 21-812.  Neither of these are likely to garner interest.

PTAB Practice: The Supreme Court has shown extensive interest in various aspects of AIA Trials.  The top pending case in this area is Mylan v. Janssen.  Mylan filed an IPR petition that was denied based upon the six-factor NHK-Fintiv Rule established under Dir. Iancu. NHK-Fintiv permits the PTAB to deny IPR institution in situations where a parallel district court litigation is already well under way.  Mylan appealed the IPR institution denial, but the Federal Circuit dismissed for lack of appellate jurisdiction, citing 35 U.S.C. § 314(d) (“The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”) In its petition, Mylan asks two questions:

  1. Does 35 U.S.C. § 314(d) categorically preclude appeal of all decisions not to institute inter partes review?
  2. Is the NHK-Fintiv Rule substantively and procedurally unlawful?

Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., No. 21-202.  The petition has received amicus support as has a parallel petition in Apple Inc. v. Optis Cellular Technology, LLC, No. 21-118.  Apple asks whether the law permits either appeal or mandamus in situations where the PTO exceeds its authority in a way that “is arbitrary or capricious, or was adopted without required notice-and-comment rulemaking.”

More Appellate Standing: A third PTAB related appellate standing case is Apple Inc. v. Qualcomm Incorporated, No. 21-746, this one focusing on standing to appeal a final written decision.  The patent act is clear that any “person” other than the patentee can file an IPR petition and, if granted, participate in the trial as a party.  The statute goes on to indicate that “a party dissatisfied with the final written decision” has a right to appeal that decision to the Federal Circuit. 35 U.S.C. 319.   Despite the statutory right to appeal, the Federal Circuit has still refused to hear appeals in situations where the appellant cannot show concrete injury caused by the PTAB decision and redressability of that injury.  The appellate court’s grounding stems from the Constitutional requirement from Article III of an actual case or controversy.

Here, Apple licensed a large number of Qualcomm patents as part of a portfolio license, but has only challenged a couple of them via IPR.  The PTAB sided with Qualcomm and Apple appealed.  On appeal, the Federal Circuit found that Apple had not provided any immediate concrete injury associated with the patent’s existence and so dismissed the appeal. In particular, (1) the court was not shown how the license would change in any way if those patents fell-out; and (2) although the license was set to expire prior to the patents, the court found that potential infringement liability a few years now was too speculative.  Apple has now petitioned for writ of certiorari with the following question: Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.  As you can see, this question attempts to tie the case directly to MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) where the Supreme Court found standing for a licensee to challenge a patent.

Prior Art for IPRs: An interesting statutory interpretation petition was recently filed in Baxter Corporation Englewood v. Beckton, Dickinson and Company, No. 21-819.  Congress was careful to limit the scope of IPR proceedings.  The IPR petition may request claims “only on the basis of prior art consisting of patents or printed publications.”  35 U.S.C. 314(b).  In the case, expert testimony was used to fill a gap in the prior art, and the question is whether the use of expert testimony in this manner violates the statutory provision.

Full Scope Enablement: LDL (“bad cholesterol”) is removed by LDL receptors in the liver.  That’s a good thing. But, the body also makes PCSK9, a protein that can bind to the LDL receptors and destroy them.  Amgen’s solution is an antibody that competitively binds to PCSK9 in a way that prevents them from binding and harming the LDL receptors.  The result then is lowering of LDL in the body.

A monoclonal antibody is a type of protein made up of amino acids.  Amgen’s claims at issue here do not recite the particular amino acid sequence or how the protein is structured and chemically linked.  Rather, the claims are directed to a whole genus of monoclonal antibodies defined by the ability to bind with PCSK9 in a way that blocks PCSK9 from also binding with the LDL receptor.

The jury sided with the patentee on the issue of enablement, but the district court rejected the verdict on renewed JMOL. On appeal, the Federal Circuit sided with the accused infringer — holding that enablement is a question of law, and that the claims were so broad that full-scope-enablement is virtually impossible. In its petition, Amgen argues that (1) enablement should be seen as a question of fact; and (2) that the law does not require “full scope enablement” to the extent demanded by the Federal Circuit here.

A Novel form of Preclusion, the Kessler Doctrine: Finally, we get to res judicata. Lawyers all learned about claim preclusion and issue preclusion. Those two principles of law are designed to ensure finality of judgment and avoid relitigation.  History shows substantial confusion about both terminology and scope, but things have been substantially clear and steady since the adoption of the Restatement (Second) of Judgments in 1982.  One aspect of the historic confusion stems from the Supreme Court’s 1907 decision of Kessler v. Eldred.  Kessler has been on a back-burner for decades, but in 2014 the Federal Circuit revived the case and found that it deserved to co-equal — a preclusion doctrine separate and distinct from issue or claim preclusion.  That 2014 Brain Life decision was followed by a further expansion of Kessler in Speedtrack (Fed. Cir. 2015)  and again in PersonalWeb Techs. (2020). 

PersonalWeb’s certiorari petition the Supreme Court asks two questions:

  1. Whether the Federal Circuit correctly interpreted Kessler to create a freestanding preclusion doctrine that [applies] even when claim and issue preclusion do not.
  2. Whether the Federal Circuit properly extended its Kessler doctrine to cases where the prior judgment was a voluntary dismissal.

The Supreme Court has shown interest in the case, and recently called for the Solicitor General to submit a brief on behalf of the U.S. Gov’t.   I have an article on the case coming out in the Akron Law Review that I’ll post in a week or so (after fixing a few citations).

Two More: Although no petitions have been filed yet, the parties in two other cases have  publicly indicated their intent to file petitions by the end of 2021:

  • Intel Corporation v. VLSI Technology LLC (Follow-on case to Mylan v. Janssen and Apple v. Optis); and
  • Ikorongo Texas LLC v. Samsung Electronics Co., Ltd. (proper venue in a situation where the plaintiff holds territorially limited patent right).

See you in January.

Make Sure your Patent Application is “DIRECTED TO” a Specific Technological Solution

Patent

Enco Systems, Inc. v. DaVincia, LLC (Fed. Cir. 2021) [ENCO]

Judge Stephen Limbaugh (E.D. Mo.) sided with the accused infringer DaVincia– holding that the claims of ENCO’s U.S. Patent No. 7,047,191 are invalid under 35 U.S.C. § 101 as directed to an abstract idea.  On appeal, the Federal Circuit has affirmed.

U.S. Patent No. 7,047,191 claims a method of providing captioning in an audio-visual signal using speech-to-text processing.  Claim 1 includes a number of limitations:

  • Selecting the number of lines of caption data to be displayed (I have an image below showing how my phone does this).
  • Determining the caption encoder system being used
  • Training the system to on new words;
  • Using AV cues to time the captioning so that it displays at the appropriate time.

On motion to dismiss, the district court found the claims directed to the abstract idea of “automated stenography implemented on a computer.”  The court looked particularly to the claim limitations and found them written at a “high-level of generality” and using “broad form functional terminology.”  With regard to Alice step two, the court found the claim limitations lacked any particular or concrete configuration that could serve to ground the abstract idea.

To know whether a patent claim is improperly “directed to” an abstract idea, the court have been looking to the claims and specification in a search for objective suggestions of what the inventor thinks is the advance provided by the invention. What does the patent document assert as the “focus of the claimed advance over the prior art.” Slip Op, quoting Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016).   Here, the court looked to the claims and the specification and concluded that the focus “is simply the abstract idea of automating the AV-captioning process.”  In this process, the court is typically looking for a “technical solution to a technical problem,” although that is not always required.  Here, the court noted that, although the invention involves computers it is not directed toward “any specific improved computer techniques for performing those functions—functions intrinsic to the concept of AV captioning.”  Rather, the benefit from the invention is simply automation of work previously done by humans.

Although the abstract idea test is not a novelty test, the courts repeatedly fall back on novelty in their explanation.  Here, the court writes:

The advance is only at the abstract level of computerization because claim 1 fails to set forth specific techniques for processing the data, instead reciting known computer techniques for automation of known processes.

Slip Op.  The court also found no help for the patentee under Alice step two. “The claims do not incorporate anything more beyond conventional computing hardware and software, which do not transform the subject matter into an eligible application of the abstract idea.”

In a recent “informative” opinion, the PTAB found speech-to-text patent claims eligible under Alice.  Ex parte Hannun, No. 2018-003323, 2019 WL 7407450 (P.T.A.B. Apr. 1, 2019).  On appeal the court gave no deference to the PTAB’s interpretation of eligibility doctrine and also distinguished the case — noting that Hannun recited a particular algorithm for measuring tailored parameters.

= = = = =

I love figure 1 below with the bulky video camera and boxy computer equipment. The patent claims priority back to a 2000 filing date — before Apple rounded all the corners.

Athena v. Mayo: Strong Amicus Support

Patent

by Dennis Crouch

In Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, the Federal Circuit reaffirmed its general ruling that newly invented diagnostic methods will generally be seen as directed toward unpatentable natural laws absent some new machinery for performing the method.  Athena’s patented method is a three-step process for identifying MuSK antibodies in body fluid (such as blood): Mixing labelled MuSK with the body fluid; immunoprecipitating any antibody/MuSK complex from the fluid; and monitoring for the label in the left-over precipitate. The test is important because the existence of MuSK helps diagnose a particular form of Myasthenia gravis (MG).

In its decision, the Federal Circuit found that the core discovery here is the relationship between MuSK antibodies in the body and MG.  That relationship though is a natural law.  The court then looked to the particular steps in the method and found no inventive concept.  Even though the claims required specific chemical reactions, the specification also made clear that development of the particular steps would be within reach of one skilled in the art — once they understand that MuSK is important. The Federal Circuit decision was penned by Judge Lourie and joined by Judge Stoll.  Judge Newman wrote in dissent.  A 7-5 court then denied Athena’s petition for en banc rehearing — writing effectively that its hands were tied by Mayo & Alice.  The Athena denial is interesting because it includes eight opinions (seven substantive) that generally lament the current situation.

Athena then filed a petition asking the Supreme Court to take-up the case on the following question:

Whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter,where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.

[Petition]. Now, 11 amici briefs have filed in support of review.  Each of the briefs have lots to say, but I have included below one thought from each that I see as an important contribution:

  1. Professors Jeffrey A. Lefstin and Peter S. Menell (Congress intended for patents to cover practical applications of scientific discoveries; We should all reread the original cases on the topic from England – Nielson)
  2. Chicago Patent Attorneys (Noonan) (the court should focus on preemption)
  3. Intellectual Property Law Association of Chicago (The test here is unduly biased against methods)
  4. The Chartered Institute of Patent Attorneys (UK) (Athena conflicts “with international treaties to which the United States is a party, as well as established international practice”)
  5. Biotechnology Innovation Organization (BIO) (The Federal Circuit has created a heightened inventive concept test for diagnostic methods)
  6. Freenome Holdings, Inc. and New Cures For Cancers, Inc.  (Alice and Mayo are inconsistent with Dawson Chem. Co. v. Rohm & Haas Co., 448 U.S. 176 (1980)).
  7. New York Intellectual Property Law Association (The Mayo test was not intended as the exclusive test)
  8. Blaine Laboratories, Inc. (See Henry Schein, Inc. v. Archer & White Sales, Inc., 139 S.Ct. 524 (2019) (judicial exceptions to broad statutes are inappropriate))
  9. Pharmaceutical Research and Manufacturers of America (PhRMA) (patent eligibility for diagnostic methods is a critical incentive for advancement in the field).
  10. Intellectual Property Owners Association (Look to the USPTO guidance to see the trouble — especially its diagnostic method examples)
  11. Honorable Paul R. Michel (ret.) (“Never before has the Federal Circuit been so splintered on a fundamental doctrine of patent law.”)

These are very interesting and important briefs. Yes, they show support, but they also include useful legal analysis.

Mayo’s responsive brief is due on November 22, 2019 with any amici in support of the current-state-of-affairs due shortly thereafter.

Eligibility: Commercial Success is Irrelevant to Inventive Concept Analysis

Patent

In re Greenstein (Fed. Cir. 2019) (nonprecedential decision)

Mark Greenstein is trying to patent an automated investment system to “automatically adjust the amount [a] person saves” in order to achieve a projected income amount. A key element of the claims, according to Greenstein, is to “utilize a projected amount of income at a future date for at least one person.”  The Examiner and PTAB found the claims unpatentable as both lacking eligibility and as either anticipated or obvious.

On appeal, the Federal Circuit has affirmed the eligibility rejection — finding:

  1. Alice Step 1: Representative claim 1 recites receiving investment data, adjusting an individual’s savings, and investing the adjusted savings to achieve a projected retirement income. This describes no more than the automation of the longstanding fundamental economic concept of personal financial planning. We have routinely held that such claims are directed to abstract ideas.
  2. Alice Step 2: The claims merely recite an abstract idea with instructions to implement it “using one or more computers with associated software.” And as the Board correctly stated, these are “generic, purely conventional elements.”

On appeal, Greenstein argued that the claimed utilization of projected income was an inventive concept and noted that it “was the basis for the successful commercial launch of a new product, demonstrating its material advantages to persons in the relevant market.” On appeal, the Federal Circuit found that argument failed to connect the dots.

Even if Mr. Greenstein is correct that the claimed utilization of a projected future income was the basis for a commercially successful product, this is insufficient to transform the claims into a patent-eligible application. It is well-settled that a claimed invention’s “use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”

Slip opinion, Quoting BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. 2018).

Greenstein filed this application back in 2014 (provisional in 2013). He was represented by Bacon Thomas before the PTO, but took it on pro-se before the Federal Circuit.

 

Eligibility: Pleadings are Enough, but they must Tie the Claims to an Inventive Concept

Patent

Cellspin Soft v. Fitbit, Moov, Nike, Fossil, etc. (Fed. Cir 2019)

The district court dismissed Cellspin’s infringement lawsuit on the pleadings — finding the asserted claims unenforceable as a matter of law under 35 U.S.C. § 101 (ineligible abstract idea).  On appeal, the Federal Circuit has vacated — holding instead that the early-stage dismissal was inappropriate because the patentee’s amended complaint included “specific factual allegations” that, when accepted as true, showed a plausible inventive concept sufficient to satisfy Alice Step 2.

The court explains here that under Aatrix, “plausible and specific factual allegations that aspects of the claims are inventive” are sufficient to overcome a pleadings-stage motion to dismiss.  “[T]he specification need not expressly list all the reasons why this claimed structure is unconventional” so long as the arguably inventive elements are “recited by the claims.”

Here, the claims recite a sensor with Bluetooth.  The claims recite a “two-step, two-device structure requiring a connection before data is transmitted.” And, the complaint identified this structure as a concrete and inventive application that goes beyond the abstract idea of “acquiring, transferring, and publishing data and multimedia content on one or more websites.”  The appellate panel found that “[t]he district court erred by not accepting those allegations as true.”

On remand, the case will move to summary judgment stage — moving beyond the mere allegations and looking at the evidence produced by both parties.  The burdens of proof and presentation at summary judgment may be confusing.  Eligibility is a question of law that does not necessarily require any evidentiary conclusions by the court.  However, we would expect that the patentee here will present some amount of evidence (probably expert testimony coupled with documentation) potentially sufficient to support a prima facie case of inventive concept under Alice Step 2.

The term inventive concept sounds very patent-like, but the law remains confused about more precise qualities of the term.  A patent claim directed to an abstract idea (or law of nature) can still be patented so long as it also recites an “inventive concept.”  Inventive Concept:

  • Something more than the application of an abstract idea using “well-understood, routine, and conventional activities previously known to the industry.”
  • Enough to “transform an abstract idea into a patent-eligible invention.”
  • More than simply “using conventional and well-understood techniques.”

Here, the court held that the patent itself must include the concept (and it must be particularly claimed) but need not explain in the specification that it represents the inventive concept. What is not clear is how directly inventive concept relates to other patentability concepts such as novelty, obviousness, and utility.

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Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817

Patent

Hikma has petitioned the Supreme Court for review of this important eligibility case.  In its decision, the Federal Circuit drew a fine line between Vanda’s personalized medical treatment claims (adjudged eligible) and the methods found in Mayo and Ariosa (adjudged ineligible).  Question presented (long form):

This Court has repeatedly held that “natural phenomena[] and abstract ideas are not patentable” under Section 101 of the Patent Act. E.g., Alice Corp. Pty. Ltd. v. CLS Bank, Int’l, 573 U.S. 208, 216 (2014). Thus, “a process that focuses upon the use of a natural law” must also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012). Mayo, for example, invalidated a medical diagnosis method patent that was just “an instruction to doctors to apply the applicable laws when treating their patients.” Id. at 79.

In the decision below, a divided Federal Circuit panel did exactly what Mayo forbids: it exempted all patent claims that are drafted as reciting a method of medically treating patients from this analysis. Citing the ruling, the Patent and Trademark Office has directed its examiners that “(1) ‘method of treatment’ claims that practically apply natural relationships should be considered patent eligible under * * * the USPTO’s subject matter eligibility guidance; and (2) it is not necessary for ‘method of treatment’ claims that practically apply natural relationships to include nonroutine or unconventional steps to be considered patent eligible under [Section 101].”

The question presented is whether patents that claim a method of medically treating a patient automatically satisfy Section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.

Read the Petition.