Giving Effect to the Order of Steps in a Method Claim

Mformation Tech v. Research-in-Motion (Fed. Cir. 2014)

Although several important patent litigation procedure issues are embedded here, the most important legal outcome of this case is the Court’s construction of the method claim to require a particular stepwise order – even though the order is not express in the claim itself.

Mformation’s Patent No. 6,970,917 claims a client-server method for managing a wireless device’s mailbox. The steps include:

transmitting registration information relating to the wireless device from the wireless device to the server;

verifying the registration information at the server; and

without a request from the wireless device, performing the steps of:

establishing a mailbox for the wireless device at the server,

placing a command for the wireless device in the mailbox at the server,

delivering the command from the mailbox at the server to the wireless device by establishing a connection between the wireless device and the server, transmitting the contents of the mailbox from the server to the wireless device, and accepting the contents of the mailbox at the wireless device, and

executing the command at the wireless device;

wherein the connection is established based on a threshold condition.

After for years of litigation, the jury found that BlackBerry infringes ($200 million verdict), but the federal district court rejected the people’s verdict on motion for JMOL.

The basic question at issue is claim construction – and whether the step of “establishing a connection between the wireless device and the server” must occur prior to the step of “transmitting the contents of the mailbox from the server to the wireless device.”  Apparently, in the blackberry device, a connection to the mobile device is established contemporaneously with the transmission of contents.

In finding a required order of operations, the Federal Circuit writes:

We agree … that claim 1 requires that a connection be established before transmission. We are persuaded … that the separate sub-step for establishing a connection would become “superfluous” if we concluded that a connection did not have to be established (completed) before transmission. That is because, under such construction of the claim, establishing a connection is necessarily encompassed in transmitting a command.

Further, we note that other sub-steps in claim 1 inherently require an order-of-steps. . . . And while it is true that “we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment,” Phillips v. AWH, we do note that our conclusion is consistent with the sole embodiment in the specification.

Thus, the basic idea here is not that the listing of steps in a particular order necessarily means that the claims require that particular order.  What is implicit here, however, is that the listing order is important and will be given limiting effect when additional factors corroborate that result.

= = = = =

An odd element of the case is that the district court’s JMOL determination (rejecting the jury verdict) was based upon its post-verdict “clarification” of the claim construction. There is some prior precedent barring district courts from altering claim construction post-verdict. Thus, here it was important that the Federal Circuit found that the claim meaning had only been “clarified” rather than substantively modified.

During the trial, the patentee’s infringement testimony and evidence relied upon the original claim construction that did not expressly require the stepwise ordering. Thus, it is not surprising that evidence presented fails to prove infringement under the new construction.  What is surprising, however, is that the Federal Circuit did not order a new trial based upon the modification.

Timing the Venue Inquiry in W.D. Texas

by Dennis Crouch

I wrote earlier about the Federal Circuit’s TracFone decision, calling-out W.D. Texas Judge Albright for his months long delay in deciding defendant’s motions to transfer/dismiss for improper/inconvenient venue. In its decision, the appellate court repeated a prior conclusion that Judge Albright’s approach represented “egregious delay and blatant disregard for precedent.”

Egregious Delay and Blatant Disregard for Precedent

The following day (March 11), Judge Albright complied with the order and issued a 17 page opinion denying TracFone’s motion to dismiss or transfer.

Proper Venue: Congress created a particular venue statute for patent infringement lawsuits (28 USC 1400(b)) that is substantially narrower than the general venue statute used in Federal Courts. (28 USC 1391).  For an out-of-state-defendant (such as TracFone), venue in W.D. Texas will be proper if the defendant “has a regular and established place of business” within the district and has also “committed acts of infringement” within the district.

Precis Group, LLC v. TracFone Wireless, Inc., Docket No. 6:20-cv-00303 (W.D. Tex. Filed Apr 21, 2020)

Regularly established place of business: In this case, the plaintiff Precis alleged that TracFone operates a store in San Antonio using its d/b/a name Total Wireless.  The address is 1825 SW Military Dr., San Antonio, TX 78221.  The photo below comes from a Google search and is dated May 2019. Google tells me that the store is now closed, but we don’t know the date when it closed.  [COULD someone drive by and snap a photo for me?].

Total Wireless Store Photo from 2019

In its briefing, TracFone (1) denied that this was its store — but rather was “an independently owned retailer of TracFone products” and (2) alleged that the store was already out of business “well before this action was filed” in April 2020.  To support its motion to dismiss, TracFone submitted an affidavit from a TracFone employee who stated that the referenced store above is a Click Mobile store and that “TracFone has no ownership or other interest in Click Mobile and no relationship with it other than its rights to sell TracFone products and services.”  In a later filing, the defendant did admit that the “store exclusively sold Total Wireless products and accordingly used that mark.”  From the pictures and the admission of exclusive dealing, it sure looks like the relationship must have gone a bit deeper than simply “rights to sell TracFone products.”

In its responsive briefing, Precis provided images from TracFone’s TotalWireless website showing that this was an exclusive Total Wireless store. Those have since been removed from the website.

Note here that Precis did not provide its own affidavits.  And, the normal rule of a venue motion to dismiss/transfer is that uncontroverted plausible allegations in plaintiff’s complaint must be taken as true. However, the court should take into account evidence presented by the defense (including affidavits).  Still, any conflicts between affidavits should be resolved in the plaintiff’s favor.

In my mind, there are two big issues (1) is the store attributable to TracFone? and (2) what about the timing issue — what result if it closed before the complaint was filed?

In his order, Judge Albright sided with the patentee — holding that allegations and evidence suggests enough link to conclude that the store a TracFone “place of business.” The court writes:

While TracFone disputes its ownership of the property, Precis alleges that the store belongs to TracFone’s corporation, doing business under the assumed business name “Total Wireless.” Additionally, Total Wireless’s terms and conditions agreement states that: “Total Wireless is a brand of TracFone Wireless, Inc. d/b/a Total Wireless.” Total Wireless holds itself out as a being owned by and essentially one and the same as TracFone. Furthermore, TracFone is the owner of the Total Wireless trademark.

[Precis_Group_LLC_v._Tracfone__53].  Judge Albright did not address the TracFone affidavit indicating only a distant relationship with the actual store owner. Although I believe that it could be distinguished based the seeming exclusive dealing and trademark linkage, the court should have walked through the process.

The Store Closing: The bigger failing of Judge Albright’s opinion is that he did not address the issue of the store closing prior to the complaint being filed.  Venue needs to be proper as of the filing of the complaint, and the defendant submitted uncontroverted evidence that the store had already closed.  Note here that there is some disagreement among the lower courts about whether timing for the place-of-business should focus on infringement or filing of the lawsuit.  In Raytheon Co. v. Cray, Inc., 258 F. Supp. 3d 781 (E.D. Tex. 2017), the court held that the appropriate timing was at the time of infringement. That decision was later vacated by the Federal Circuit, although the court did not address the timing issue. In Pers. Audio, LLC v. Google, Inc., 280 F. Supp. 3d 922 (E.D. Tex. 2017), the court held that the place of business must be in existence as of the filing of the complaint.  In any event, the Judge Albright did not even address the issue in his opinion.  I would recommend to Judge Albright that he draft up a new opinion tonight that also addresses the store-closing issue. Otherwise we’ll likely see a quick reversal from the Federal Circuit.

The court also denied the motion to transfer for on grounds of inconvenient forum (or that there is another more convenient forum) under 28 USC 1404.

The Court finds that the ease of access to relevant sources of proof and the court congestion factors weigh slightly in favor of transfer, the cost of attendance of willing witnesses weighs against transfer, and all other factors are neutral. The Court notes that the convenience of witnesses is the single most important factor in the transfer analysis and that the court congestion factor is the most speculative and cannot outweigh the other factors. As such, the Court finds that TracFone has not met its significant burden to demonstrate that the Southern District of Florida is “clearly more convenient.”

Id.

Even under BRI, A Wired-Connection is not “Wireless”

by Dennis Crouch

In re Imes (Fed. Cir. 2015)

The Federal Circuit has again rejected USPTO’s broadest reasonable claim construction as unduly broad.  The Federal Circuit here maintains the BRI standard, but suggests that more emphasis should be placed on the ‘reasonable’ prong and less on ‘broadest.’

More formal claim construction is becoming a common aspect of ordinary patent prosecution. However, rather than applying the “correct” claim construction that would be applied to an issued patent, the USPTO examiners are tasked with construing pending patent claims according to their Broadest Reasonable Interpretation (BRI).  By design, BRI is intended to be broader than the interpretation given by a court. The purpose of this approach is to offer an additional buffer zone between the prior art and the issued patent and to give the USPTO stronger tools to ensure that claims are not ambiguously written.

In the present case, Imes is attempting to patent a device for certain types of wireless communication and the applied-for claim includes a “wireless communication module.”  Imes argues that that term should be construed as a module that communicates without wires using electromagnetic waves.  The claim construction debate over that term stems from the USPTO’s position that the broadest reasonable construction of “wireless communication” includes communication with wires. In particular, the PTO argued that “wireless communication” between two devices could be accomplished with a removable flash-drive — i.e., by saving information from a first computer on a flash drive then physically moving the flash drive to the second computer. Boom!

Siding with Imes, the Federal Circuit writes:

The Patent Office’s construction of “wireless” to include communications along metal contacts of the removable memory card and the computer system is inconsistent with the broadest reasonable interpretation in view of the specification. The construction of “wireless” is straightforward. The ’423 application expressly and unambiguously defines wireless: “[w]ireless refers to a communications, monitoring, or control system[] in which electromagnetic or acoustic waves carry a signal through atmospheric space rather than along a wire.” ’423 application. The ’423 application consistently uses the term “wireless” to refer to methods and devices that carry waves through atmospheric space, such as Bluetooth and various cellular protocols. The metal contacts of a removable memory card do not carry a signal through atmospheric space using electromagnetic or acoustic waves, and thus removable memory card 35 is not a wireless communication module under the broadest reasonable interpretation of that term in view of the specification.

USPTO Solicitor had identified the error in the PTAB ruling and attempted to shift the argument on appeal.  However, the Federal Circuit refused to hear the new theory as not properly on appeal.

= = = = = =

Imes’ pending application also requires streaming video. In its rejection of the claims, the USPTO concluded that one of the references taught streaming video by teaching the ability to send a series of emails that each include an image attachment.  The USPTO determination here looks like a factual conclusion regarding the scope-and-content-of-the-prior-art — the type of determination that is generally given substantial deference on appeal.  On appeal, the Federal Circuit gave that deference, but found the conclusion still unreasonable:

Sending a series of e-mails with attached still images is not the same as streaming video. Such a construction is unreasonable as it comports with neither the plain meaning of the term nor the specification. Streaming video is the continuous transmission of video. A series of e-mails with attachments does not meet the definition of “streaming” and still images do not meet the definition of “video.”

On remand, the USPTO’s solution will likely be to search for better prior art.

Federal Circuit Splits on Venue Transfer Issues

By Dennis Crouch

In re Apple Inc. (Fed. Cir. 2014); In re Barnes & Noble (Fed. Cir. 2014)

In a pair of decisions, the Federal Circuit has denied two different petitions for writ of mandamus that sought appellate oversight in the transfer motions. Both cases involved identical split panels with Judges Reyna and Prost in the majority (denying mandamus) and Judge Newman in dissent. Over the past several years, a number of § 1404 transfer petitions have been filed at the Federal Circuit following the court’s 2008 TS Tech decision. See, In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008).

In both cases here, the majority found that the movant had failed to “meet its exacting burden to demonstrate that the district court was clearly and indisputably incorrect in concluding that the case should not have been transferred” by the District Court judge.

Judge Newman’s dissents are interesting she writes in Apple:

The plaintiff, Core Wireless Licensing, S.A.R.L., is a Luxembourg company having one employee. Core Wireless maintains a wholly-owned subsidiary, Core Wireless USA, a Texas corporation with 6 employees who live in or near Plano, Texas. Core Wireless USA’s employees manage Core Wireless’s patent portfolio, including any licensing agreements deriving therefrom. Neither Core Wireless nor Core Wireless USA makes, uses, or sells the patented subject matter in Texas or elsewhere.

The accused products are versions of Apple Incorporated’s iPhone and cellular iPad products. Apple has been headquartered in Cupertino, California since 1976. Apple’s management and primary research and development facilities are also located in Cupertino where Apple employs over 13,000 people. The record also states that the research, design, and development of the accused products took place in Cupertino and that virtually all Apple business documents and records relating to the research, design, development, marketing strategy, and product revenue for the accused products are located in or near Cupertino. Additionally, Apple has stated that its foreseeable witnesses with knowledge of the research, design, and development of the accused products reside or work in or near Cupertino. (more…)

Microsoft and Nokia sue Apple for Patent Infringement (via a Holding Company)

by Dennis Crouch

Luxembourg based Core Wireless Licensing S.a.r.l. has sued Apple for patent infringement in the Eastern District of Texas. The recently filed complaint alleges that Apple’s communication devices such as iPads and iPhones infringe eight different Core Wireless patents.  The Core Wireless family of patents focus primarily on communication protocols and the patent owner claims that the patents are infringed by any device that communicates using 2G, 3G, or 4G standards.

Core Wireless obtained its portfolio of 2,000 patents and pending applications from Nokia and (apparently) Microsoft. In 2011, the patent licensing entity MOSAID purchased Core Wireless.  MOSAID itself is owned by the US private equity firm Sterling Partners.

The reported purchase price for Core Wireless (including its patents) was just under $20,000 — seemingly a very low price.  However, there is a kicker, the sale requires that the new owner enforce the patents and 2/3 of any licensing revenue must be sent to Microsoft and Nokia. Further, the patent ownership rights are subject to a condition subsequent — if Core Wireless fails to meet minimum performance thresholds then the patent rights revert to the grantors (Nokia and Microsoft). The following comes from a 2011 press release by MOSAID:

Core Wireless will retain approximately one-third of gross royalties from future licensing and enforcement of the patents and will bear all of the costs associated with their administration, licensing, enforcement and monetization. Core Wireless’ ongoing ownership of the portfolio is subject to minimum future royalty milestones. The remaining 2/3 of gross royalties will be paid to Nokia and Microsoft Corporation (NASDAQ: MSFT).

One way to look at this is that MOSAID is essentially working as on a property management contract. With patents, title must shift in order to facilitate the necessary lawsuits. The complaint lists the following patents as infringed: 6,792,277, 7,606,910, 6,697,347, 7,447,181, 6,788,959, 7,529,271, 6,266,321, 6,978,143.

This case is also interesting in the context of Professor Schwartz’s article on Contingent Fee Patent Litigation.  In a round-about way, Nokia and Microsoft have hired MOSAID on contingency fee to enforce their patent rights.  The complaint itself was filed by Henry Bunsow of Dewey Leboeuf in San Francisco with Johnny Ward Jr. serving as local counsel in E.D. Texas. True to its role as hopeful licensor, the plaintiff has only asked for money damages and not injunctive relief to stop ongoing infringement.

Google Buys More Patents: Last fall, MOSAID sold a set of 18 patents and patent applications to Google for a reported $11 million. Recently, the pair recorded a new transaction of about 200 patents and applications from MOSAID to Google.  Those patents were previously owned by the Italian tire manufacturer Pirelli and a spinoff company PGT-Photonics.  Google also recently purchased one eCommerce patent from the tiny firm Alpine-in-Motion.

Affinity Content Distribution Scheme – Abstract Idea

Affinity Labs v. DirecTV (Fed. Cir. 2016)

The Federal Circuit here affirms that Affinity’s challenged claims invalid as directed to an abstract idea.  when “stripped of excess claim verbiage”, Claim 1 of U.S. Patent No. 7,970,379 “is directed to a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content.” Slip opinion.

Alice Step 1: Considering these limitations and the claim’s “character as a whole” the court identified the concept of “providing out-of-region access to regional broadcast content” as an unpatentable abstract idea.  The court explained its conclusion by noting that the practice (1) has been long employed in media distribution; (2) is not tied to any particular technology; and (3) could be implemented by very low-tech technology such as via mail.  The court went on to explain that (4) nothing in the claim “is directed to how to implement out-of-region broadcasting on a cellular telephone. Rather, the claim is drawn to the idea itself.” And, (5) unlike in Enfish, the claims are not directed to “an improvement in cellular telephones but simply to the use of cellular telephones as tools.” Taking all these together, the court found the claim was in fact directed to an abstract idea.

Alice Step 2: Step two of Alice indicates that a patent directed to an abstract idea is patent eligible if it claims “additional features” that constitute an “inventive concept” that go beyond “well-understood, routine, conventional activity.” Mayo. Here, the court found no such additional features. “The claim simply recites the use of generic features of cellular telephones, such as a storage medium and a graphical user interface, as well as routine functions, such as transmitting and receiving signals, to implement the underlying idea. That is not enough.” Slip Opinion at 15-16.

= = = = =

Claim 1 below – seen was used as representative for the analysis:

1. A broadcast system, comprising:

a network based resource maintaining information associated with a network available representation of a regional broadcasting channel that can be selected by a user of a wireless cellular telephone device; and

a non-transitory storage medium including an application configured for execution by the wireless cellular telephone device that when executed, enables the wireless cellular telephone device:

to present a graphical user interface comprising at least a partial listing of available media sources on a display associated with the wireless cellular telephone device, wherein the listing includes a selectable item that enables user selection of the regional broadcasting channel;

to transmit a request for the regional broadcasting channel from the wireless cellular telephone device; and

to receive a streaming media signal in the wireless cellular telephone device corresponding to the regional broadcasting channel, wherein the wireless cellular telephone device is outside of a broadcast region of the regional broadcasting channel, wherein the wireless cellular telephone device is configured to receive the application via an over the air download.

 

Senior Patent Engineer (Wireless) – Small Corporation – San Francisco, Calif.

rpxRPX Corporation is the leading provider of patent risk management solutions. Since our founding in 2008, RPX has introduced efficiency to the patent market by providing a rational alternative to litigation. We acquire patents in the open market and out of litigation that would otherwise become a costly problem for our clients. The company’s groundbreaking approach combines principal capital, deep patent expertise, and client contributions to generate enhanced patent buying power. We also execute large-scale structured transactions on behalf of our clients, provide litigation insurance, and deliver in-depth market intelligence and strategic advisory services to our growing client network.

The Patent Analysis department synthesizes complex technologies and legal patent issues into actionable intelligence for RPX executives and clients. Patent Analysis research and analysis support initiatives in defensive portfolio buying, prior art validity actions, and advisory services. The positions in Patent Analysis require a deep and broad knowledge of specific technology sectors.

As a Senior Patent Engineer you will analyze patent claims and related materials in view of legal, technological, and business environments to understand the technical merit and patent quality of individual patent portfolios. Your main responsibility is to distill a body of analysis and research into a concise, clear, and actionable assessment to both technical and nontechnical audiences. You will report directly to the Manager, Patent Analysis.

Role
Typically you will:

  • Assess numerous engineering and legal factors to extract patent value proposition
  • Draw on detailed knowledge of relevant technologies, companies, and industries
  • Explain complex technical issues to nontechnical audiences
  • Isolate critical technical components of patents, products, and services
  • Learn and apply legal concepts related to patents including prosecution and litigation
  • Research timeliness of patents in support of validity challenges and prior art reports
  • Support analysis conclusions with research driven logic and confidence
  • Collaborate across the organization in-person and with virtual, global teams
  • Establish and cultivate relationships internally and externally

Education and Experience

  • Bachelor’s degree in Electrical Engineering or Computer Science
  • Experience with client engagements in explaining highly technical subject matter
  • Experience with reverse engineering and reviewing evidence of use
  • Previous experience in a wireless engineering role with a focus on designing, implementing, and testing wireless products or services
  • Patent Attorney or Agent viewed favorably
  • Master’s degree or Doctor of Philosophy in Electrical Engineering or Computer Science viewed favorably
  • Management and supervisory experience  viewed favorably
  • Involvement in patent issues including prosecution, litigation, and valuation viewed favorably

Technical Skills

  • Broad expertise in various aspects of wireless technologies from access and attachment to delivery of services over a wireless network
  • Familiarity with wireless-centric services such as IoT, infotainment/telematics, mobile payments, media streaming and location-based services
  • Strong familiarity with communication protocols and standards (e.g., 3GPP LTE and LTE-A, 802.11, Bluetooth, NFC)
  • Strong familiarity with products and services that utilize or provide wireless technologies, such as baseband chipsets, smartphones, access points, base stations and core network platforms
  • Proficiency with Microsoft Office suite

Competencies to be Successful
At RPX and in this role, you should be:

  • Comfortable with independently managing deadlines and conflicting priorities to deliver quality results
  • Able to demonstrate a consistent record of excellence, ownership, and accountability
  • Service-minded and passionate about results with an ability to develop positive relationships
  • Adaptable to the many changing requirements and needs of a dynamic company
  • A person with dedication and worth ethic that thrives in a collaborative culture with excellent social, networking, and influencing skills
  • Motivated and self-directed with a willingness to take on additional projects
  • Able to demonstrate good judgement
  • Highly focused, organized, and pay attention to details
  • A person that embodies the RPX values through communication and actions

RPX is an equal opportunity employer.

Contact
To apply, please visit this website: http://www.rpxcorp.com/about-rpx/rpx-careers/?p=job%2FomvX4fwC.

Additional Info
Employer Type: Small Corporation
Job Location: San Francisco, California

Patent Agent or Technical Writer – Law Firm – San Diego, California

Duane Morris LLP has an opening for a electrical engineering (EE) patent agent or technical writer with a background or experience in wireless communication technologies and/or semiconductor processing or semiconductor circuits, to join its growing Intellectual Property practice group, in San Diego.

Patent agent candidates should have at least 1 year of exp. preparing and prosecuting patent applications in the area of “wireless communications” and be familiar with 4G/5G standards. Technical writer candidates should have an advanced degree in EE and significant exp. preparing technical documents describing wireless communication systems and/or standards. Industry work experience in the area of wireless communications and fluency in speaking, reading and writing Mandarin is a plus.

Ideal candidate will have strong academic credentials, fluency in Mandarin, significant experience preparing patent applications or technical documents concerning wireless communications, ability to effectively communicate with clients and inventors, and thrive in a creative, entrepreneurial and collegial environment. Candidate will also need to produce at least 3 writing samples of published applications or technical documents directed to wireless communications. Applicants who do not meet the above criteria should not apply. EOE/AA/M/F/D/V.

Contact
Apply online via the following link: https://www.duanemorris.com/ site/careers.html#tab_ CurrentOpportunities.

Additional Info
Employer Type: Law Firm
Job Location: San Diego, California

Intellect Wireless v. HTC

By Jason Rantanen

Intellect Wireless, Inc. v. HTC Corp. (Fed. Cir. 2013) Download 12-1658.Opinion.10-7-2013.1
Panel: Prost, Moore (author), O'Malley

This opinion is notable because it involves one of the rare instances post-Therasense in which the Federal Circuit concludes that inequitable conduct occurred.

This appeal involves two related patents, Patent Nos. 7,266,186 and 7,310,416, which relate to wireless transmission of caller ID information.  During the prosecution of the '186/'416 patent family, Daniel Henderson, the inventor named on the patents, submitted a Rule 131 declaration to overcome a prior art reference.  A Rule 131 declaration is a document in which the inventor asserts that he or she invented the claimed invention prior to the date of a prior art reference cited by the examiner, a process colloquially referred to as "swearing behind."  (The mechanism does not allow applicants to bypass a statutory bar and was eliminated by the AIA.)  Mr. Henderson averred in the declaration that “the claimed invention was actually reduced to practice and was demonstrated at a meeting . . . in July of 1993.”  

When Mr. Henderson's company, Intellect Wireless, sued HTC for patent infringement, it came out that he had not actually reduced the invention to practice as of the date stated in the declaration.  The district court found that the false declaration constituted inequitable conduct under the Therasense framework.  Intellect appealed.

On appeal, the Federal Circuit affirmed, agreeing that both the requirements of materiality and intent were met. 

Materiality: One question left somewhat open after Therasense was the issue of what constituted egregious affirmative conduct.  Here, the court agreed that Mr. Henderson's conduct rose to that level. 

In one of its earliest opinions, the Federal Circuit held that when an applicant files a false declaration, the applicant must "expressly advise the PTO of [the misrepresentation’s] existence, stating specifically wherein it resides." Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 1572 (Fed. Cir. 1983). In addition, "if the misrepresentation is of one or more facts, the PTO [must] be advised what the actual facts are." Id. 

Therasense, the Intellect Wireless panel held, did not modify this law.  "[T]he materiality prong of inequitable conduct is met when an applicant files a false affidavit and fails to cure the misconduct." Slip Op. at 7. 

Here, the original declaration was indisputably false; the only question was whether the subsequent actions by Mr. Henderson's attorney were sufficient to cure the falsity.  The court held that they were not.  While the attorney quickly submitted a revised declaration, that revised declaration failed to correct the falsehoods in the original declaration.  It did not expressly negate the false references to actual reduction in the original declaration, which included statements such as a reference to a "prototype now in the Smithsonian" that suggested a device embodying the claimed invention was actually built at the relevant time.  The panel agreed that "[n]owhere did the declaration openly advise the PTO of Mr. Henderson’s misrepresentations, as our precedent clearly requires," Slip Op. at 6., and "at best, the revised declaration obfuscated the truth."  Id.

Intent: The Federal Circuit also affirmed the district court's finding of intent to deceive.  In addition to the false statements made during prosecution of the '186 and '416 patents, Mr. Henderson also made false statements about actual reduction to practice during the prosecution of other patents in the family.  This pattern of false and misleading statements combined with the submission of a declaration containing fabricated examples of actual reduction to practice in order to overcome a prior art reference was sufficient to establish intent to deceive. 

Federal Circuit gets Technical with PTAB Failures

By Dennis Crouch

In re Guiffrida (Fed. Cir. 2013) (non-precedential)

Great Lakes NeuroTechnologies is a spin-off of Cleveland Medical Devices (CMDI) and focuses on therapy systems for movement disorders. The new company took control of a handful of CMDI patents when it was formed back in 2011. However, the patent application in question would be their first post-formation patent issuance, and the company’s first patent issued listing its president (Joe Guiffrida) as an inventor.

The preamble of Guiffrida’s first claim is directed toward a “portable therapy system,” although the claims body does not provide any further portability related limitation. In its decision, the PTAB had rejected the claim as anticipated over a single prior art reference (Shields). Shields does not make any remarks regarding portability, but the PTAB found the limitation disclosed because Shields does “not appear to contain any structure confining it to a particular location.” On appeal, the Federal Circuit rejected that analysis – finding that the prior art’s failure to disclose non-portability is not the equivalent of disclosing portability.

An anticipating reference must disclose every claim limitation, either expressly or inherently [and i]nherent disclosure requires that the prior-art reference necessarily include the unstated limitation. . . .

The Board found that Shields inherently discloses a portable system because Shields does “not appear to contain any structure confining it to a particular location.” But that observation does not indicate that Shields “necessarily” includes a portability limitation, or even that Shields must necessarily be free from “confin[ement] to a particular location.” On the contrary, a finding that Shields does not say that its system is not portable—which is all that the Board’s statement implies—is just a restatement of the fact that Shields does not expressly disclose a portability limitation. It does not suggest anything about what Shields inherently discloses that would suffice to shift the burden to Giuffrida to disprove inherency.

A confusing aspect of patent claims is that a claim preamble is often seen as non-limiting. Here, any confusion was eliminated because the PTO and the applicant agreed that the portability limitation is limiting. In the appeal, the Federal Circuit accepted that interpretation without comment.

Broadest Reasonable Interpretation Requires Consideration of Specification: The parties did not wholly agree on the meaning of portability. For its part, the PTO applied its wrong-headed “broadest reasonable interpretation” to suggest that a portable device is one that “can be carried.” Although irrelevant for this case, the Federal Circuit took the PTO to task for applying that “dictionary definition” of the claim term rather than construing the term “in light of the specification as it would be interpreted by one of ordinary skill in the art.” Quoting Phillips v. AWH. According to the appellate panel, the specification provides that a portable system is one that is “capable of being transported relatively easily.” In fact, the specification states that “By portable it is meant among other things that the device is capable of being transported relatively easily.” The Federal Circuit seems to have skipped over the wiggle-words “among other things” that were certainly inserted in order to open the term to a much wider variety of definitions.

Cryptic PTAB Decisions: In an earlier essay, I wrote about the Board’s new approach of writing shorter opinions. Here, the Federal Circuit gave some credence to that approach. Noting that cryptic obviousness rejections can be upheld where the analysis can be “reasonably discerned.” Here, the court noted that the board can rely upon the examiner’s brief in its decision.

Board made a number of obviousness rejections and those were affirmed on appeal except for claim 24 that I will discuss below. On remand, the PTO may also replace the reversed anticipation rejections (discussed above) with obviousness rejections – especially since the result of this case is that many of the here-adjudged novel claims have dependent claims that are here-adjudged as obvious.

Claim 24 in the patent application adds a limitation that some of the system components communicate using “a two-way RF link.” I don’t think that anyone (even a Federal Circuit judge) believes that a two-way RF communication limitation would normally transform an unpatentable system into one that is non-obvious (without something more). But, here the Federal Circuit reversed the rejection – finding that the PTO had failed to prove-up its burden.

[The proffered prior art’ uses ultrasound transducers that communicate with a compact unit, which, in turn, communicates with a computer. Those communications are twice referred to as “wireless,” but the document says little else about them. It does not mention a radio frequency (RF) link, a two-way or bidirectional link, the retransmission of data over such a link, or any benefits from such retransmissions. We have been pointed to no substantial evidence that Zheng teaches such features.

Nor has the Director persuasively explained why Zheng [the prior art] renders those limitations from claim 24 obvious. On the contrary, the reasoning within the PTO has been inconsistent and conclusory in this matter. In stating that it “fail[ed] to see how a system that can both receive signals from sensors and deliver them to, for example, FES systems, could operate absent a two-way link,” the Board cited a paragraph in Zheng that mentions a wireless link between units embedded in the body and an “outside control unit.” The Examiner invoked different paragraphs from Zheng to find that a two-way link is “implied” or “required.” Broad-brush statements based on Zheng’s generic references to a “wireless” link are insufficient to support the conclusion that Zheng renders obvious a claim calling for the “wireless[ ] retransmi[ssion] [of sensor signals] over a two-way RF link.” We therefore reverse the rejection of claim 24.

On remand, the PTO should be able to find some prior art that shows wireless RF two-way communication that fits this case.

Patent Agent / Technical Writer – Large Law Firm – San Diego, Calif.

Duane Morris LLP has an opening for a patent agent or technical writer with a EE degree and a background or experience in wireless communication technologies to join its growing Intellectual Property practice group, preferably in its San Diego office. Patent agent candidates should have at least 1 year of experience preparing and prosecuting patent applications in the area of “wireless communications” and be familiar with 4G and 5G standards. Technical writer candidates should have an advanced degree in EE and significant experience preparing technical documents describing wireless communication systems and/or standards.

For all candidates, industry work experience in the area of wireless communications and fluency in speaking, reading and writing Mandarin is a plus. Ideal candidate will have strong academic credentials, fluency in Mandarin, significant experience preparing patent applications or technical documents concerning wireless communications, ability to effectively communicate with clients and inventors, and thrive in a creative, entrepreneurial and collegial environment.

Contact
To apply, please visit this website: https://www.duanemorris.com/site/careers.html#tab_CurrentOpportunities. Candidate will also need to produce at least 3 writing samples of published applications or technical documents directed to wireless communications. Applicants who do not meet the above criteria should not apply. EOE/AA/M/F/D/V.

Additional Info
Employer Type: Law Firm
Job Location: San Diego, California

Patent Counsel – Small Corporation – San Diego, Calif.

RAYSPAN

RAYSPAN®, the world's leading innovator of metamaterial air interface solutions for wireless communications, is seeking a patent attorney. As patent counsel, you will lead the RAYSPAN® IP department by identifying,  securing and enforcing intellectual property protection (e.g., patents, trademarks, trade secrets) for inventions and discoveries made by our engineers and technical leaders.

Responsibilities:
• Manage and provide growth to in-house patent agents and paralegals team while overseeing in-house IP docketing system.
• Develop an IP roadmap and strategies per Rayspan’s business goals and Participate in IP-portfolio due-diligence.
• Review and prosecute provisional, non-provisional, and Trademark applications drafted by Rayspan’s patent agents. This includes drafting strong claims and responding to office actions. You will work with outside counsel to file and prosecute U.S. and foreign patent applications.
• Provide legal counseling regarding intellectual property issues, including patentability and freedom to operate.
•  Protect Rayspan’s IP assets by acting as company liaison with outside law firms on behalf of Rayspan, protecting Rayspan in prosecution of US, European or other foreign applications,  interferences, oppositions and litigations
• Counsel Rayspan's business and research managers in intellectual property law as part of the decision making process, and conduct IP mining by identifying research that may be subject to protection through filing of patent applications.
• Manage in-licensing of technology from universities and companies and coordinate with licensor's attorneys to develop patent strategies for licensed technology which meets Rayspan's business goals.
• Support on patent-related sections in Rayspan licensing agreements to customers.
• Review Rayspan’s technical publications, presentations, and public release of IP material prior to submission for publication.

Requirements:
• J.D. plus Bachelor's Degree in Electrical Engineering or Physics, an advanced degree or experience in Radio Frequency wireless communications is desirable;
• Minimum of 7+ years of experience as an IP attorney with a law firm and/or corporation.
• Admitted to a State bar and to U.S. Patent and Trademark Office;
• Patent experience in RF wireless industry or semiconductor is a plus;
• Ability to understand business issues, particularly in the wireless cell phone industry.
• Experience with preparation and prosecution of patents (U.S. and foreign); preparation of infringement, invalidity, freedom-to-operate opinions and client counseling;
• Experience in IP licensing agreements, contracts, and negotiation is highly desirable.
• Excellent written and verbal communication skills, ability to work with a diverse group of people at different levels in Rayspan.
• Ability to undertake some travel as required to support domestic and international customers with IP-related matter.
• Exposure to patent litigation is a plus.

Contact:
RAYSPAN® is located in sunny San Diego, California, and offers competitive compensation & benefits programs. Please submit resumes to career@rayspan.com.

Additional Info:
Employer Type: Small Corporation
Job Location: San Diego, California

Metamaterials provide breakthrough improvements in antenna and RF front-end component miniaturization, performance, cost reduction and ease of manufacture. Rayspan's solutions support a full range of fixed and mobile wireless WAN and LAN applications including all 2/3/4G cellular handsets, WiFi, Bluetooth and GPS.

A Patent Emergency

by Dennis Crouch

The Chamberlain Group, Inc. v. Techtronic Indus. Co. (Supreme Court 2020)

Chamberlain Group’s asserted patent claims a garage-door-opener (claim 1, 5) and an associated method (claim 15). US7224275.

Garage doors and opening mechanisms have been the subject of patents for 150 years. Back in 1919 Lee Hynes filed an early patent on electric-controller for a car door operating mechanism. Despite this long history, the Federal Circuit found Chamberlain’s patent ineligible under 35 U.S.C. 101 as directed to an abstract idea.

Chamberlain’s opener consists of three key elements:

  • A device controller — This is an electronic component that receives and processes control signals and sends out the orders to open/close.
  • A movable barrier interface coupled to the controller — This is the actual drive or clutch mechanism that powers the door movement.
  • A wireless data transmitter coupled to the controller.

By the time this patent application was filed, all three of these elements were all “generally well understood in the art.” The innovative feature of the claims is that the system is designed to transmit the door’s “present operational status” — i.e., is it moving up; moving down; reversing; blocked; etc.  The signal also includes a “relatively unique” identifier for folks with multiple garage doors so that the unclaimed receiver can tell which door is up/down. Note here that there is nothing new about these various status points — the only difference is that it that the signals are being sent, and being sent wirelessly.

So, although the patent claims a garage-door-opener including various physical components, the point-of-novelty is that a particular signal is being sent wirelessly. In its decision, the Federal Circuit found the wireless transmission of status to be an abstract idea: “the broad concept of communicating information wirelessly, without more, is
an abstract idea.”  One Alice Step 2, the court held that the claims did not include any inventive concept beyond the excluded abstract idea:

In other words, beyond the idea of wirelessly communicating status information about a movable barrier operator, what elements in the claim may be regarded as the “inventive concept”?

[W]ireless transmission is the only aspect of the claims that CGI points to as allegedly inventive over the prior art. . . . Wireless communication cannot be an inventive concept here, because it is the abstract idea that the claims are directed to. Because CGI does not point to any inventive concept present in the ordered combination of elements beyond the act of wireless communication, we find that no inventive concept exists in the asserted claims sufficient to transform the abstract idea of communicating status information about a system into a patent-eligible application of that idea.

Fed. Cir. Opinion.

The new petition has two focal points (1) whether eligibility should be seen as a “narrow exception;” and (2) whether the Federal Circuit errs in its approach of separating the claim into various components and excluding the abstract idea portion from the claim when considering Alice Step 2.

Question presented:

Whether the Federal Circuit improperly expanded § 101’s narrow implicit exceptions by failing to properly assess Chamberlain’s claims “as a whole,” where the claims recite an improvement to a machine and leave ample room for other inventors to apply any underlying abstract principles in different ways.

Chamberlain Petition.  The petition also repeats the refrain of unsettling uncertainty:

The root cause of all this ire and uncertainty is the Federal Circuit’s insistence once again on crafting an elaborate test that strays from—and here, contradicts—the plain text of the Act.

Id.

The petition ends with a call for immediate action — calling out the current situation as “a patent emergency.” The breadth of eligibility challenges are shifting innovator behavior:

[T]here is no time. Innovators are adapting their behavior right now to the Federal Circuit’s new patent-hostile regime. Investors are deciding now to withhold investments they would have made before the Federal Circuit changed the law. Waiting any longer to intervene could inflict irreparable harm on U.S. industry.

Techtronic has already waived its right to respond to the petition — meaning that the Supreme Court may act on the petition before the close of its current session in June.

Federal Circuit Closes the Door on CGI Preliminary Injunction

garagedoorThe Chamberlain Group (CGI) v. TechTronic Indus. (Fed. Cir. 2017) (non-precedential opinion)

Following on the heel of the Federal Circuit’s approval of preliminary relief in the water balloon case, the court here has reversed a lower court’s preliminary injunction – finding its claim construction error led the district court to incorrectly conclude that the patentee (CGI) was likely to prevail on the merits.

Since a preliminary injunction is ordinarily awarded well before any final judgment on the merits, nobody actually knows which side will win the case.  Because of the powerful nature of injunctive relief, the courts have long required that the party seeking relief to at least prove that it will likely win the case.  Although termed a “factor” in the four factor analysis, it is actually a necessary element that must be proven before relief will be granted.  “The movant must establish both “likelihood of success on the merits and irreparable harm” for the court to grant a preliminary injunction.”

The CGI patent here covers a garage door opener that transmits status-information. Whereas most garage doors are operated by a single “go” trigger, the improvement here might have one button for “up” and another for “down.”   The patent claims are broad enough to include any sort of status-information (light on, auxiliary power on, etc.).  U.S. Patent 7,224,275.  Claim 1:

1. A movable barrier operator comprising:

a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states;

a movable barrier interface that is operably coupled to the controller;

a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that: corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.

Although a preliminary injunction determination is reviewed with deference, any underlying claim construction is reviewed de novo on appeal.  Here, the appellate panel found that the lower court had too narrowly construed the term “controller” by requiring that it be a “self-aware controller.”  Easy decision by the court since the specification was clear that the controller need not be self-aware:

Depending upon the needs of the setting, the controller can be self-aware of such operational status conditions (as when, for example, the controller is aware that it has switched a given ambient light fixture on or off) or the controller can be provided with externally developed information regarding the condition.

In addition, at least one of the dependent claims required that the controller be provided its ‘state’ information from an external sensor.

With the broader construction, the Federal Circuit remanded to consider whether the presented prior art creates an invalidity problem.  Reminder here – it was the patentee who wanted the narrow claim construction in order to avoid prior art problems and the broad claim language (permitted by the PTO) that created trouble.

Depending upon what happens below, the patentee may instead try to narrow these claims as part of a reissue application.

====

A sideline issue in the case involved the Federal Circuit’s aggressive undermining of Teva v. Sandoz.  That Supreme Court decision requires that the Federal Circuit give deference to lower court’s factual findings on appeal. “Federal Circuit judges lack the tools that district courts have available to resolve factual disputes fairly and accurately such as questioning the experts.” Teva quoting Judge O’Malley.

In their briefs, both parties agreed that the district court relied upon factual evidence in the form of expert testimony (from both sides) for its claim construction conclusions.  However, the order apparently does not follow Fed.R.Civ.Pro. 52(a), by separately finding facts and stating conclusions of law butu instead “mingled factual and legal conclusions with no distinction between the two.” (patentee brief).

Contradicting both parties, the Federal Circuit on appeal held that it need not give any deference to any of the district court conclusions since “there is no indication that the district court made any factual findings that underlie its construction.”

Unfortunately, the district court order is under seal and therefore not available. As such, we cannot know who is right in this instance. Update: I found a redacted version of the district court opinion in the appendix filed to the Federal Circuit. [cgi_appendix]  In its claim construction, the court repeatedly refers to and relies upon competing expert testimony, but doesn’t appear to make any straight-up factual findings.  I have to think about my – conclusion here, but I have crossed-out the “aggressive” undermining from above.

What are the Rules for Assessing Patent Eligibility?

In Front Row Tech. v. MLB Advanced Media, the patentee has filed a petition for writ of certiorari – asking the Supreme Court flip the lower court rulings on its sports-data-app patents. [Petition including Lower Court Decisions][Supplemental Appendix Including the Patents]

The petition asks two questions:

1. What are the rules, both procedural and substantive, for assessing patent-eligible subject matter under 35 U.S.C. § 101 for patents claiming inventions described as new and useful combinations of existing components and technologies?

2. Should the Federal Circuit be required to revisit its decision in this case in light of its Berkheimer and Aatrix Software decisions?

In this case, the New Mexico district court granted the accused infringer’s motion for judgment on the pleadings (R.12(c)) based upon the only evidence of record – the patents themselves. In making its decision, the court ruled that it was empowered to make a number of factual findings on the pleadings and without the submission of evidence — noting that “courts routinely make similar findings while evaluating§ 101 challenges.”  On appeal, the Federal Circuit affirmed without opinion.

 

Asserted Claim 15 of Patent No. 7,812,856 is shown below:

15. A method for displaying a particular perspective of a venue-based activity at least one authorized hand held device having a display screen, said method comprising the steps of:

simultaneously capturing a plurality of video perspectives of a venue-based activity utilizing more than one camera located at a sports and entertainment venue;

processing said plurality of video perspectives at a server into encrypted video data packet for display on a touch-sensitive display screen associated with said at least one authorized hand held device provided in the form of at least a smart phone or personal digital assistance, said at least one hand held device further comprising at least one 802.11 wireless module for access to a wireless local area network and a cellular communications module for communication with a wireless cellular communications network;

wirelessly transmitting said encrypted video packet over an 802.11 wireless local area network to said at least one authorized hand held device said plurality of video perspectives of a venue-based activity from said server;

processing said plurality of video perspectives at said at least one authorized hand held device into decrypted video data packet for display on said touch-sensitive display screen associated with said at least one authorized hand held device; and

displaying a particular video perspective on said touch-sensitive display screen, in response to a user selection of said particular video perspective from among said plurality of video perspectives.

The petition was filed by Michael Shore and his team at Shore Chan DePumpo

Patent Attorney or Patent Agent – Law Firm – Sunnyvale, Calif.

Downey BrandDowney Brand's Intellectual Property practice seeks to expand with the addition of a Patent Agent or Patent Attorney to be based in its Silicon Valley office. Primary responsibilities include preparing and prosecuting intellectual property (IP) patent applications for cutting edge technology companies. Other responsibilities may include IP training, third-party IP investigations, and due diligence. Candidates should have a minimum of 3 years of law firm experience as a Patent Attorney or Patent Agent, and be registered to practice before the U.S. Patent & Trademark Office (USPTO).

An undergraduate and/or graduate degree in electrical engineering and/or computer science and/or mechanical engineering is preferred. Attorney candidates must also be current, active members of the California State Bar. The person hired for this position would ideally have technical fluency in cellular wireless (e.g., 3G, 4G, 5G, GSM, UMTS, LTE, LTE-A), wireless local area networks (e.g., Wi-Fi, 802.11xx), wireless personal area networks (e.g., Bluetooth), and/or near-field communications technologies. Preference will be given to candidates who have prepared and prosecuted at least 40 original patent applications, including a substantial number in the area of electrical and software-based technologies, particularly signaling processing and standardized protocols for wireless communication technologies.

Salaries are based on years of experience, and bonus consideration is based on productivity and performance. A distinguished academic record and exceptional research, writing, organizational and verbal communication skills are essential.

Please submit cover letter, resume with references, graduate and/or J.D. degree transcripts, and a brief, recent writing sample (the writing sample may be any prosecution applicant has undertaken at the PTO; a patent number or published application number that applicant has actually worked on will suffice) electronically to Maureen Cooper, Recruiting Director, via the firm’s web application.

Downey Brand LLP is an Equal Opportunity/Affirmative Action employer. No telephone calls or e-mail applications, please. Principals only.

Contact
To apply, please visit this link: https://lawcruit.micronapps.com/sup/v2/lc_supp_app_frm.aspx?lawfirm=169&id=54.

Additional Info
Employer Type: Law Firm
Job Location: Sunnyvale, California

Guest Post by Profs. Contreras and Yu: Will China’s New Anti-Suit Injunctions Shift the Balance of Global FRAND Litigation?

Guest post by Associate Professor Yang Yu of Shanghai University of International Business and Economics and Professor Jorge L. Contreras.

As one of us has recently observed (here and here), courts in the U.S. and UK adjudicating cases involving standards-essential patents and FRAND licensing commitments[1] have increasingly issued injunctions preventing one party from pursuing parallel litigation in another jurisdiction (anti-suit injunctions or ASIs).  In response, courts in other countries – namely Germany and France – have begun to issue anti-anti-suit injunctions (AASIs) to prevent parties from seeking ASIs that would hinder their own proceedings.  And even anti-anti-anti suit injunctions (AAASIs) have emerged as more than theoretical possibilities.  Amidst this international jockeying for jurisdiction, commentators have wondered where it will end, and whether every country involved in complex, multi-jurisdictional disputes will get into the ASI game.  In two recent cases, China has now stepped forward as another major jurisdiction in which ASIs are available to litigants.

Conversant v. Huawei Link to translation

The first case involves Chinese smartphone manufacturer Huawei and Texas-based patent assertion entity Conversant Wireless Licensing (formerly Core Wireless). Conversant holds a globe-spanning portfolio of patents that it acquired from Nokia and which it claims are essential to the 2G, 3G and 4G wireless telecommunications standards developed under the auspices of the European Telecommunications Standards Institute (ETSI).  Conversant sought to license these patents to Huawei, but negotiations broke down and in 2017 and 2018 Conversant asserted the patents against Huawei in multiple jurisdictions.  The UK suit was recently decided by the UK Supreme Court, [2020] UKSC 37, which held that a UK court has the authority to set a global FRAND royalty rate between the parties, notwithstanding its lack of jurisdiction over patents outside the UK (see discussion here).  (This case also involved an unsuccessful 2018 bid by Conversant to obtain an ASI from the UK Court of Chancery, [2018] EWHC (Ch) 2549, against the prosecution of a related suit by ZTE, Huawei’s co-defendant, in the Shenzhen Intermediate People’s Court in China – discussed here).

In response to Conversant’s initial patent assertions, in January 2018 Huawei sought declarations from the Nanjing Intermediate People’s Court of Jiangsu Province, China, that it did not infringe three of Conversant’s Chinese patents and, if it did, that it was entitled to a license on FRAND terms. On September 16, 2019, the Nanjing court declined to issue a declaration regarding infringement, but established a “top down” FRAND royalty for the three Conversant patents (discussed at length in IAM, 23 Sept. 2019 and IAM, 5 Aug. 2020). The decision is currently on appeal at the Supreme People’s Court (SPC) of China.

Meanwhile, in April 2018, Conversant sued Huawei in the District Court in Düsseldorf, Germany, alleging infringement of several European patents. On August 27, 2020, the Düsseldorf court granted Conversant an injunction against Huawei’s sale, use or importation in Germany of devices infringing patent EP1797659 (the German Patent).

On the same day, Huawei applied to the SPC seeking an “act preservation” ruling (a judicial action roughly equivalent to an ASI) to prevent Conversant from enforcing the Düsseldorf injunction until the conclusion of the Chinese proceedings.  The SPC granted the ASI after an ex parte hearing in which Conversant did not participate.  In its decision, the SPC cited a number of factors weighing in favor of granting the ASI, many of which resemble the factors considered by U.S. courts when considering ASIs (see Contreras, The New Extraterritoriality, pp. 265-67):

  • the parties to the Chinese and German actions are the same;
  • there is partial overlap between the subject matter of the cases;
  • Conversant’s enforcement of the German injunction would interfere with the Chinese action;
  • in order to avoid the effects of the German injunction, Huawei must either withdraw from the German market or accept the license offered by Conversant in Germany, which sets a global FRAND royalty rate that is 18.3 times higher than the rate set by the Nanjing court;
  • imposition of the ASI will not materially prejudice Conversant’s rights in Germany with respect to the merits decisions (as opposed to the injunction decisions) of the German courts;
  • imposition of the ASI will not harm the public interest;
  • imposition of the ASI will not affect international comity, as the Chinese actions were brought before the German action and the ASI will not affect the subsequent trial in the German case or detract from the legal validity of the German judgment.

Also relevant to the SPC’s decision, though not specifically included in its consideration of the ASI, was the fact that in August, 2018, the Chinese State Intellectual Property Office (SIPO) ruled that the Chinese counterpart to the German Patent was invalid.  Conversant brought an administrative lawsuit challenging that ruling in the Beijing Intellectual Property Court.  That matter is still pending.

Upon entry of the ASI, the SPC established a penalty of RMB 1 million per day (approximately US$150,000) if Conversant violates the ASI.  Because the ASI was issued ex parte, Conversant was entitled to apply for reconsideration within five days.  It did so, and its request was denied on September 11, leaving the ASI in force.

Interdigital v. Xiaomi Link to translation

The dispute between InterDigital, a U.S.-based patent assertion entity, and Xiaomi, a Beijing-based electronics firm, relates to five InterDigital patents covering the 3G and 4G standards.   When negotiations for a license failed, on June 9, 2020 Xiaomi sought a declaration by the Wuhan Intermediate People’s Court of the appropriate FRAND royalty rate for the patents.  On July 29, InterDigital sued Xiaomi for infringement in the Delhi High Court in India, seeking monetary damages and an injunction. In response, on August 4, Xiaomi asked the Wuhan court for an “act preservation” ruling (ASI) preventing InterDigital from enforcing the injunction while the Wuhan proceeding was in progress.

The Wuhan court granted Xiaomi’s request, reasoning that:

  • InterDigital’s filing of parallel litigation in India during the pendency of the Wuhan case showed a lack of respect for the Wuhan court and the case before it;
  • The Indian action was intended to interfere with and obstruct the Wuhan case;
  • The Indian action is likely to lead to a ruling in conflict with that of the Wuhan court;
  • The entry of an injunction in India will likely cause significant harm to Xiaomi;
  • Because InterDigital is a non-practicing entity that does not make products, but relies solely on licensing income, it would not be harmed substantially by the inability to seek an injunction against Xiaomi

Accordingly, on September 23, the Wuhan court (a) ordered InterDigital to withdraw its requests for injunctive relief in India, (b) prohibited InterDigital from seeking injunctive relief in China or any other country with respect to the 3G/4G patents currently at issue in the Wuhan case, and (c) prohibited InterDigital from asking another court in China or any other country to determine a FRAND royalty rate or resolve a FRAND dispute relating to the 3G/4G patents at issue.

As in Conversant v. Huawei, the Wuhan court established a penalty of RMB 1 million per day (approximately US$150,000) if InterDigital violates the ASI.  Because the ASI was issued ex parte, InterDigital was entitled to apply for reconsideration within five days.  It did so, and its request appears to have been denied, leaving the ASI in force.

In response to the entry of the ASI by the Wuhan court, InterDigital disclosed to the U.S. Securities and Exchange Commission (first reported by IAM) that on September 29, it filed for an anti-anti-suit injunction (AASI) in the Delhi High Court to prevent Xiaomi from enforcing its Chinese ASI.   This is the first instance of which we are aware of an AASI being sought in a FRAND case in India (prior examples being observed in Germany, France and the UK, as discussed in Contreras, Anti-Suit Injunctions All the Way Down).

Discussion

The ASIs issued by Chinese courts in Conversant v. Huawei and InterDigital v. Xiaomi signal a new willingness of Chinese courts to vie for jurisdictional authority in global battles over standard-essential patents.  To some degree, this development was entirely predictable.  Courts in the U.S. and UK have, for several years, sought to resolve global FRAND disputes being litigated on the international stage.  But there is no reason that U.S. and UK courts should be the exclusive venues for such proceedings.  The courts of every country in which the parties have sufficient assets to care about adverse rulings can exert similar authority.  As one of us has previously observed, this inter-jurisdictional competition is rapidly leading to a “race to the bottom” and a “race to the courthouse” in international FRAND disputes.

Yet even more seems to be at play in these two cases than China’s adoption of jurisdictional measures already deployed in the U.S. and UK. The ruling of the Wuhan court is far broader than the Supreme People’s Court’s ruling in Conversant v. Huawei in two major respects that are worth considering.  First, its geographic scope is not limited to the country in which InterDigital sought injunctive relief (India), but extends to all jurisdictions in the world.  As an anti-suit measure, this is more sweeping than any ASI issued in U.S. or other courts in FRAND cases.  Under U.S. and UK law, a court considering a request for an ASI must compare the action in the domestic court with the parallel action in the foreign court and determine whether they address the same matter and whether the resolution of the domestic action would dispose of the foreign action.  This type of analysis is not possible with an ASI that is not directed to a particular foreign action, but prospectively prohibits any attempt to seek an injunction anywhere in the world.

The second major addition by the Wuhan court is the prohibition on InterDigital’s ability to ask any other court in the world to determine a global FRAND rate for its 3G/4G patents.  As such, China has clearly joined the international race to be the jurisdiction of choice for determining FRAND royalty rates in global disputes involving standard-essential patents.

[1] A FRAND commitment is an obligation undertaken by a participant in a standards development organization (SDO) to grant licenses of its patents that are essential to implementation of one of the SDO’s standards on terms that are fair, reasonable and nondiscriminatory.  For a primer on standards development and FRAND commitments, see this chapter.

Chamberlain’s Garage Door Opener invalid as an Abstract Idea

The Chamberlain Group, Inc. v. Techtronic Industries Co. (Fed. Cir. 2019)

Chamberlain’s asserted patents cover various garage door opening inventions.

U.S. Patent No. 7,224,275 in particular claims a garage door opener that includes a status-condition-data-transmitter to know if the door is open or closed without looking.  The jury found that Techtronic willifully infringed and the patent not invalid.  The district court then awarded enhanced damages, attorney fees, and injunctive relief.

On appeal , the Federal Circuit has overturned the verdict — holding that the claims are invalid as directed toward the abstract idea of “wirelessly communicating status information about a system.” Alice Step 1. Further, the claims do not include any inventive concept under Alice Step 2. All of the physical elements in the claim were admittedly “well understood in the art” and claimed in a generic fashion.  The only arguably new element is that the actual information being transmitted is “a status condition signal that: corresponds to a present operational status condition (open or closed).

Claim 1:

A movable barrier operator comprising:

a controller having a plurality of potential operational status conditions …;

a movable barrier interface operably coupled to the controller;

a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that:

corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and

comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.

For its part, the N.D. Ill district court (Judge Leinenweber) had concluded that the claims are directed to “garage door openers that wirelessly transmit data . . . us[ing] a particular manner of sending and experiencing data.”

In reviewing the case, the Federal Circuit placed the invention here within the context of the art — finding that the “only described difference between the prior art movable barrier operator systems and the claimed movable barrier operator system is that the status information about the system is communicated wirelessly, in order to overcome certain undesirable disadvantages of systems using physical signal paths—additional cost, exposed wiring, and increased installation time.”  From that framework, the court easily found the claim directed to an abstract idea.

On Alice Step 2, Chamberlain argued an inventive step — since it proposed a new garage door opener “that includes an integrated controller and a wireless transmitter to transmit a status signal.”  Nothing of record in the case provided evidence that such a setup was “well-understood, routine and conventional to a skilled artisan.”  On appeal, the Federal Circuit rejected this approach finding that the patentee “misunderstands our case law.”

The appropriate question is not whether the entire claim as a whole was “well-understood, routine [and] conventional” to a skilled artisan (i.e., whether it lacks novelty), but rather, there are two distinct questions: (1) whether each of “the [elements] in the claimed [product] (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field,” and (2) whether all of the steps “as an ordered combination add[] nothing to the laws of nature that is not already present when the steps are considered separately” Mayo. In other words, beyond the idea of wirelessly communicating status information about a movable barrier operator, what elements in the claim may be regarded as the “inventive concept”?

Here, the court found that once the abstract idea was removed, nothing in the claim remained except for conventional and well known elements.

= = = =

The lawsuit also included a second Chamberlain patent that that the jury had also found infringed and not anticipated.  U.S. patent No. 7,635,966.  The second patent was directed to a garage door opener that includes a rechargeable battery backup for use if the normal power supply is temporarily unavailable. On appeal, the Federal Circuit affirmed the no-anticipation jury verdict — holding that the single prior art reference was “less than clear” and thus the jury had room to make its factual determination.

On remand, the district court will need to re-do its remedies analysis, including enhanced damages, attorney fees, and injunctive relief now that only one of the patents is infringed.

= = = =

Improper Venue. Venue was apparently improper under TC Heartland. However, that decision was released only three months before trial.  The defendant requested a transfer of venue within 30 days of the Supreme Court decision.  However, that request was denied. On appeal, the Federal Circuit affirmed — holding that 28 USC 1406(b) provides the court with authority to reject venue transfer requests that are not “interpose[d] timely.”  The court writes:

TTI waited almost thirty days after TC Heartland and two months before trial to file a motion to transfer venue. The district court did not abuse its discretion in denying TTI’s motion to transfer venue under the circumstances here.

Here, a 30 day delay isn’t bad at all — except in the context of upcoming trial.

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Final note on the case and evidence. The defendant had petitioned the PTAB for inter partes review of the ‘966 patent. The PTAB however, denied institution.  The district court allowed that denial to be admitted as evidence.  However, the judge gave a limiting instruction to the jury — that the legal standards may differ.  On appeal, the Federal Circuit found no abuse of discretion.

Affinity II: Who Has the Burden for Alice Step II?

by Dennis Crouch

A few days ago I wrote about the Federal Circuit decision in Affinity Labs. v. DirecTV  affirming that Affinity’s U.S. Patent No. 8,688,085 claims an ineligible abstract idea rather than a patent eligible invention.

The companion case – Affinity Labs v. Amazon was decided by the same panel of Chief Judge Prost and Judges Bryson (author) and Wallach and U.S. Patent No. 7,970,379 and also affirmed that the challenged claims lack eligibility under Section 101.

In DirectTV, the court first “stripped” the representative claim “of excess verbiage.”  Using the same approach but different words, the Amazon court here offered its version of the representative claim “stated more succinctly:”  the claim “is directed to a network-based media system with a customized user interface, in which the system delivers streaming content from a network-based resource upon demand to a handheld wireless electronic device having a graphical user interface.” [Full claim text below]

Abstract Idea: Analyzing the claimed invention, the court found that the claims are directed to a high level of generality “describing a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.”  In Enfish, the court considered technological inventions and queried whether the invention represents “an improvement in the functioning of a computer,” or merely “adding conventional computer components to well-known business practices.”  Here, of course, the invention uses more than just a “computer component” but the court still found Enfish applicable — finding that the claims “fall into the latter [ineligible] category.”  Further, the “tailoring of content based on information about the user . . . is an abstract idea that is as old as providing different newspaper inserts for different neighborhoods.”  Slip opinion at  10.

Burden Shifting for Step Two?:  Once a patent is deemed to be directed to an abstract idea, the burden appears to shift against the patentee to show that the claim includes “something more” such as an “innovative concept” that goes beyond the ineligible abstract idea.  This burden-shifting would go against the traditional rule that each each element in an invalidity analysis must be proven with clear and convincing evidence — and so it may still be proper to say that the challenger also has the burden under Step Two of Alice/Mayo to show the claim includes “nothing more” of patentable weight.  A complication of this internal dialogue is that eligibility is deemed a question of law whereas the C&C evidentiary requirement applies only to questions of fact.  That distinction became important in this case since the district court dismissed the case on the pleadings prior to the consideration of any factual conflicts.

Nothing More:  Enfish substantially increased the overlap between Steps One and Two of the eligibility analysis.  Typically, if a claim includes an eligible inventive concept then it will not be deemed directed to an abstract idea in the first place.   Here, the court found the converse logic also true:

As noted [in our Enfish analysis], representative claim 14 is written in largely functional terms, claiming “a collection of instructions” that perform the functions of displaying a selection of available content on a graphical user interface and allowing the user to request streaming of that content. . . . [These features] do not convert the abstract idea of delivering media content to a handheld electronic device into a concrete solution to a problem. The features set forth in the claims are described and claimed generically rather than with the specificity necessary to show how those components provide a concrete solution to the problem addressed by the patent.

Thus, the claim fails under Step Two as well – Judgment on the Pleadings of Invalidity Affirmed.

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The court noted that the title of the patent ““System and Method to Communicate Targeted Information” has essentially no relation to the asserted claims.  That disconnect had no direct impact on patentability.  However, it appears to have lent credence to the notion that the claims lack innovative weight and technical application since the focus of the claims is something different than what was originally thought to be innovative and worth extensive description.

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Claim 14: A media system, comprising:

a network based media managing system that maintains a library of content that a given user has a right to access and a customized user interface page for the given user;

a collection of instructions stored in a nontransitory storage medium and configured for execution by a processor of a handheld wireless device, the collection of instructions operable when executed: (1) to initiate presentation of a graphical user interface for the network based media managing system; (2) to facilitate a user selection of content included in the library; and (3) to send a request for a streaming delivery of the content; and

a network based delivery resource maintaining a list of network locations for at least a portion of the content, the network based delivery resource configured to respond to the request by retrieving the portion from an appropriate network location and streaming a representation of the portion to the handheld wireless device.

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Cancellation of Progressive’s Business Method Patents Confirmed on Appeal

Progressive Insurance v. Liberty Mutual Insurance (Fed. Cir. 2015)

This case stems from a set of seven overlapping post-grant-review proceedings (CBM PGR) before the Patent Trial and Appeal Board (PTAB) that Liberty Mutual filed against Progressive’s “business method” patents. The patents relate to auto-insurance pricing based upon customer vehicle use patterns – such as the number of sudden stops over a given period of time – as well as online insurance policy adjustments. See U.S. Patent No. 8,140,358 as an example.

In the Covered-Business-Method Review, the PTAB found a number of Progressive’s claims invalid as either anticipated or obvious. On appeal, the Federal Circuit affirms in all respects.

Two different proceedings for the same patent: Liberty Mutual filed two different CBM proceedings against the ‘358 patent. In one, the Board invalidated all claims except for 1, 19, and 20 while in the other the second the Board invalidated all claims of the patent. These two decisions were released about 1-hour apart.

The first challenge on appeal was that the second judgment was improper because – according to Progressive’s theory – the Board lost jurisdiction once it issued the first decision. That theory stems from Section 325(e)(1) that prohibits a petitioner from “maintain[ing] a proceeding before the Office” on issues that “reasonably could have” been raised during a post-grant review that has already reached a final written decision. The argument here is that, once the PTO reached the first final judgment that the second case should immediately disappear. On appeal, the Federal Circuit rejected that approach finding (1) that the statute does not prevent the PTO from maintaining the proceeding and in any event (2) the PTAB indicated that the two decisions were “concurrent” even though actually made public about 1-hour apart. Finally, the Court noted that the PTO has statutory authority to decide how to deal with multiple related proceedings.

Written Description and Claiming Priority: On the merits, a substantial amount of the problem here dealt with patent families and the difficulty in understanding whether a later claim can properly claim priority to an earlier filed application. The PTO typically (except in Hyatt’s case) does not require a patentee to expressly connect each patent claim with its effective priority date. As a result, those arguments are typically saved until later in litigation (thus, the benefit of filing a CIP . . . )

Here, the claims in question included an interface module that produce a “driver safety score” – construed by the PTAB to mean a “calculated insurance risk value associated with driver safety.” The priority application disclosed “rating factors” that might include safety factors, but did not expressly disclose a risk value associated only with driver safety. (Note the seeming subtle shift in construction by the Federal Circuit). In any event, the ruling is that the priority application disclosed the genus but not the later claimed species – as such it does not meet the written description requirement. In this situation, the result is that the priority filing date for the particular patent at issue here is pushed back to the later filing and that date was predated by the intervening prior art disclosures.

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It does not appear that Section 101 was raised as a challenge:

1. A system that monitors and facilitates a review of data collected from a vehicle that is used to determine a level of safety or cost of insurance comprising:

a processor that collects vehicle data from a vehicle bus that represents aspects of operating the vehicle;

a memory that stores selected vehicle data related to a level of safety or an insurable risk in operating a vehicle;

a wireless transmitter configured to transfer the selected vehicle data retained within the memory to a distributed network and a server;

a database operatively linked to the server to store the selected vehicle data transmitted by the wireless transmitter, the database comprising a storage system remote from the wireless transmitter and the memory comprising records with operations for searching the records and other functions;

where the server is configured to process selected vehicle data that represents one or more aspects of operating the vehicle with data that reflects how the selected vehicle data affects a premium of an insurance policy, safety or level of risk; and

where the server is further configured to generate a rating factor based on the selected vehicle data stored in the database.