Patentlyo Bits and Bytes by Anthony McCain

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About Anthony McCain

Anthony McCain is a law student at Mizzou where he is focusing on intellectual property; He has a background in mechanical engineering.

8 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. 4

    OT but the CAFC published yet another (correct) Rule 36 opinion affirming the Delware District Court’s SJ tanking under 101 of the patentee’s junky patent.


    Is this the tenth Rule 36 tanking in the mythical “pendulum swinging back” era that is being breathlessly promoted by those sooper serious patent attorneys who specialize in “do it on a computer” junk? I’ve lost track. In any case, there’s much more to come.

    I’ll recite just the preamble of the junky claims asserted here because it’s all we really need to see:

    “A method for determining the location of mobile platforms, said mobile platforms between them being locatable by a plurality of remote tracking systems, each of which is adapated to determine the location of a respective mobile platform according to a property that is predetermined for each mobile platform comprising”

    Try to imagine the five s00per d00per techn0 steps which follow! You need to be s00per d00per skilled “in the art” to do it!

    Key observation by the judge:

    link to

    Requesting and receiving location information is an abstract idea, and adding a vaguely defined intermediary that selectively forwards requests and returns responses does not make the underlying abstract idea any more concrete.

    Yup. But wait! What about two vaguely defined intermediaries (we’ll call them “modules”!). And a passcode! Wowee zowee, now we’re talking!

    1. 4.1

      MM, I do not think the problem with claims like this is that they are abstract in the meaning of Bilski, I think they are indefinite. They are not directed to nonstatutory subject matter. But they are claimed in a very indefinite manner using broad and indefinite terms and functional statements — the very pith and essence of lack of definiteness required by the statute that requires that one particular point out and distinctly claim the subject matter one regards as an invention. After all, O’Reilly v. Morse found a statutory basis for holding invalid Claim 8 was the then analog of section 112.

      1. 4.1.1

        I do not think the problem with claims like this is that they are abstract in the meaning of Bilski, I think they are indefinite.

        The answer is that the problem is both of those things.

        You can’t claim “Ask someone for this ijnformation and get this information back.” That’s an ineligible abstraction.

        Let me write it out for everyone in a real easy to read and remember fashion:




        There. Simple stuff.

        Of course, trying to argue that your “system” is new by reciting its new functionality is also a huge indefiniteness problem. Either way, these claims and every set of claims like them are in the trash can. Good riddance.

        The pendulum ain’t swinging back.

  2. 3

    link to

    Phigenix, a petitioner, lost an IPR and appealed. On appeal, the patent owner moved to dismiss for lack of standing, but the issue was ordered briefed to the whole panel. The Phigenix appeal was dismissed for lack of standing, principally because it sold no products and did not prove (it had the burden of proof) that it had suffered actual injury from the existence of the patent owner’s patent.

    The Gold Declaration and the attorney letter are insufficient
    to demonstrate injury in fact. It is possible
    that, if Phigenix had licensed the ’534 patent to the same
    parties to which ImmunoGen had licensed the ’856 patent,
    the invalidation of the ’856 patent might have increased
    Phigenix’s revenues. However, there is simply no
    allegation here that Phigenix has ever licensed the ’534
    patent to anyone, much less that it licensed the ’534
    patent to entities that have obtained licenses to the
    ImmunoGen ’856 patent. The conclusory statements in
    the Gold Declaration and the letter as to the hypothetical
    licensing injury therefore do not satisfy the requirements
    of Rule 56(c)(4).6 See Lujan v. Nat’l Wildlife Fed’n, 497
    U.S. 871, 888 (1990) (explaining that “[t]he object” of Rule
    56 “is not to replace conclusory allegations of the complaint
    or answer with conclusory allegations of an affidavit”).

    The case is further important because it decided for the first time the procedure and evidence required of the appellant to prove standing where that proof was not entered in the proceedings below. It further decided that Congress could not confer Article III standing simply providing statutory authority to the petitioner to appeal.

    Citing Supreme Court authority, the court said,

    An appellant “must have
    (1) suffered an injury in fact, (2) that is fairly traceable to
    the challenged conduct of the [appellee], (3) that is likely
    to be redressed by a favorable judicial decision.”1 Spokeo,
    136 S. Ct. at 1547 (citations omitted).

    There is a lot more detail as evidence that the appellate must submit in order to prevail.

    But this raises an interesting question that I have argued before, where does the patent office get the constitutional jurisdiction to appeal a loss by the petitioner at the PTAB if the petitioner settles out? The Federal Circuit was very clear that standing cannot be conferred by statute.

  3. 2

    Lawyers personally responsible for paying defendant’s fees responding to ineligible junk asserted in Delaware court (after being transferred from — surprise! — Texas):

    link to

    [A] federal judge on Dec. 19 crafted a novel tactic to curb patent tr0lls when she slapped a half-million-dollar bill on the lawyers and said that they were personally responsible for paying it, not their client. This could truly be a game-changer. …

    The case at issue is Gust vs. Alphacap Ventures and Richard Juarez (some early rulings go into extensive background), and last month’s final ruling came from U.S. District Court Judge Denise Cote. Cote found that patent tr0ll Alphacap had pursued a case against Gust, despite the U.S. Supreme Court ruling that made it clear it couldn’t succeed legally.

    From the district court decision:

    link to

    This case is “exceptional” under the totality of the circumstances test articulated in Octane Ftiness … in light of Alice and its progeny. … No litigant could have a reasonable expectation of success on the merits …

    That’s how it’s done, jurists. Just cut through the b.s. Let the CAFC make f0 0ls out of themselves resuscitating the plaintiff’s ridiculous ineligible “do it on a computer” cr@p if they want.

    1. 2.1

      Cote has been reversed so many times at the appellate level it’s absurd she’s still on the bench. Specifically she’s been reversed on other patent fee holdings in the recent past.

      The CAFC will rightly not revive the patent but there is no stautory basis for her fee determination.

  4. 1

    IBM churning the junk out at unprecedented rates! The patents ranged from machine learning for securing the best answers to questions, to planning the best route based on a traveler’s cognitive state.

    Oh, I bet those are some real winners, completely devoid of massive eligibility issues.

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