Uniloc 2017 v. Apple (Fed. Cir. 2019) (appeal pending)

As in most patent cases, the parties to this litigation stipulated to a fairly tight protective order that was entered by Judge Alsup. Many of the documents filed in the case were filed under seal, including elements of the motion to dismiss for lack of standing (arguing that the plaintiff doesn’t actually own the patent).

However, in January 2019, the Electronic Frontier Foundation (“EFF”) moved to intervene and request unsealing of the parties various briefs and documents “for the limited purpose of vindicating the public’s right to access court records.”  EFF explained:

Defendant Apple has filed a dispositive motion asking the Court to dismiss this case on the basis of lack of subject matter jurisdiction. But page after page of the public briefing relating to that motion is hidden behind redactions. The public has no access to the underlying facts. Even lengthy sections of the legal argument are redacted, leaving the public with no way to understand the dispute. This conflicts with the public’s common law and First Amendment right of access.

The Ninth Circuit has held that “compelling reasons,” are required to seal documents used in dispositive motions. . . . While all court proceedings are presumptively open, the public interest in patent disputes is particularly strong because patents potentially govern the conduct of anyone who wants to make, use, or sell the claimed inventions. Thus, the public has an interest in knowing who owns, or might claim rights to enforce, a patent. Plaintiffs in this case appear determined to hide such facts from the public. But Plaintiffs’ desire to confound the public cannot trump the public’s First Amendment right of access. The Court should deny the motions to seal and ensure access to court records.

[EFFMotion] In response, Judge Alsup denied the motion to seal documents — holding that the parties had failed to provide compelling reasons to justify sealing and that generalized assertions of “potential competitive harm” are insufficient to outweight the public’s right to know. [DenialOfMotionToSeal]

Although Judge Alsup agreed to unseal the documents, he also granted a stay of deadlines pending appeal. Thus, the question of sealing is now pending before the Federal Circuit.  Meanwhile, Uniloc has agreed that it was initially overzealous in its approach to sealing documents (offering to unseal 90% of the materials originally filed under seal), but also argues that the court should particularly avoid unsealing a a document that includes “a table of the 109 of licenses Uniloc entered into between 2010 and mid-2017 [that] identifies the licensee, the date of the license, the amount paid and the license type for each license.”  According to Uniloc, the names of patent licensees and their payments are rightfully kept confidential. [Uniloc2017AppealBrief]

[To be updated as EFF and Apple weigh in].

by Dennis Crouch

Guandong Alison Hi-Tech Co. v. International Trade Commission and Aspen Aerogels, Inc. (Fed. Cir. 2019)

The USITC issued a limited exclusion order prohibiting Alison from importing certain aerogel composite products used for insulation. U.S. Patent 7,078,359. On appeal, the defendant argued that the claimed “lofty” structure was indefinite.

The Patent Act requires that the patent include claims “particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”  35 U.S.C. 112(b) (formerly 112 ¶ 2). The Federal Circuit has long interpreted this provision as creating an “indefiniteness requirement.” In its most recent pronouncement on the issue, the Supreme Court held that claims must “be precise enough to afford clear notice of what is claimed.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 909 (2014) (holding that patent claims must “inform those skilled in the art about the scope of the invention with reasonable certainty.”)  A claim that is indefinite is also invalid and unenforceable.

On appeal, the Federal Circuit agreed with the defendant that “lofty” batting is a term of degree whose boundary is not fully clear.  However, it is clear enough for patent law work.  In a particular, the court defined “lofty” batting is batting that “shows the properties of of bulk and some resilience.”   The specification further explains that “bulk” refers to air between the fibers, and “sufficient resilience” occurs where the batting can be compressed and then substantially spring back to its original bulk.  The court also noted that the specification includes more than 20 different examples (some from the prior art) of “lofty” batting that can be used to understand the scope of the term.

In sum, the written description of the ’359 patent provides sufficient detail to inform a person of ordinary skill in the art about the meaning of “lofty . . . batting.”

How lofty is “lofty” Alison asks, “Alison seeks a level of numerical precision beyond that required when using a term of degree” rather “some modicum of uncertainty” is permitted. Quoting Nautilus.

Enforcement Action Affirmed.

by Dennis Crouch

Gopro v. 360heros, IPR2018-01754, 2019 WL 3992792 (PTAB Aug. 23, 2019) (U.S. patent 9,152,019)

In a new precedential decision, the PTAB Percedential Opinion Panel (POP) has reversed a prior institution decision in this case — holding “that service of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b), even where the serving party lacks standing to sue or whether the pleading is otherwise deficient.”

The POP here consisted of Director Andrei Iancu; Commissioner Andrew Hirshfeld, and Chief Judge Scott Boalick. Robert Greenspoon represented the patent owner 360Heroes.

The basic facts: 360Heroes infringement claim was filed and served more than 1-year before GoPro’s IPR. However, the claim had a major defect — 360Heroes did not actually own the patent at the time. The district court eventually dismissed the case for lack of standing.

Holding: Following the Federal Circuit’s lead in Click-to-Call, the POP found Section 315(b) “plain and unambiguous,” finding that GoPro’s petition was time-barred and denying institution.

[T]he plain language of “served with a complaint” “does not contain any exceptions or exemptions,” “[n]or does it contain any indication that the application of § 315(b) is subject to any subsequent act or ruling.” Quoting Click-to-Call. . . .

We agree with, and follow, the Federal Circuit’s decision that “served with a complaint alleging infringement” in § 315(b) is plain and unambiguous, and means “presented with a complaint or delivered a complaint in a manner prescribed by law.” Id. And, given this clear articulation of “served with a complaint,” we see no gap in the statute’s language to fill or ambiguity to resolve. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018). Thus, we determine that, if service of a pleading asserting infringement occurred “in a manner prescribed by law,” then the one-year time period for a petitioner to file a petition under § 315(b) is triggered on the date of service. The one-year time period is triggered regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient.

Petition Denied.

After fixing the formalities of its assignment, 360Heroes refiled its infringement lawsuit. D.Del Case No. 1:17-cv-1302.  That case was stayed pending outcome of this IPR.

Notes:

1. The perhaps most important note here is that the Supreme Court will decide the Click-to-Call case next term on the question of whether the time-bar applies to complaints dismissed without prejudice. That decision will likely impact this case as well.
2. Although the assignment to 360Heroes had not been formalized, that gap truly was a formality. Mike Kintner is listed inventor and thus original owner. Kintner is also CEO, founder, and sole-shareholder of 360Heroes.
3. Language of the statute: “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”
4. I simplified this for the brief above, but GoPro was the one that actually started the litigation with a TM/Copyright claim against 360Heroes as well as a declaratory judgment action of non-infringement of the ‘019 patent. 360Heroes then responded with the patent infringement counterclaim.  The PTAB did not directly address wither the declaratory judgment action should also trigger the time-bar under 315(b).

by Dennis Crouch

Time Warner Cable, Inc., v. Sprint Communications Company, L.P. (Supreme Court 2019) [Petition for Writ of Certiorari]

The Kansas jury sided with Sprint — finding all five patents infringed and not invalid and awarding a $140 million reasonable royalty verdict.

On appeal, the Federal Circuit affirmed judgment – albeit in a 2-1 split.  Time Warner has now petitioned the Supreme Court on two questions of patent law: damage apportionment; and written description requirement.

Questions presented:

1. Whether the Federal Circuit erred by affirming a damages award based on unapportioned end-user service revenues.
2. Whether the Federal Circuit erred in ruling that a patent satisfies 35 U.S.C. §112(a)’s requirement of “a written description of the invention” merely because the specification does “not expressly exclude[]” technology within the scope of the patent claims.

In its petition, Sprint explains the basis for damages — that they should be calculated as adequate to compensate for the infringement” — no more and no less.

Apportionment: For over 150 years, courts have struggled with the apportionment issue for improvement or component patents.  The question is how to ensure that full damages are awarded for infringement of the patent; but simultaneously avoiding an award of damages for non-patented features.  In its 1884 decision, the Supreme Court wrote that patentee “must in every case give evidence tending to separate or apportion the defendant’s profits and the patentee’s damages between the patented feature and the unpatented feature.” Garretson v. Clark, 111 U.S. 120 (1884), quoting Garretson v. Clark, 10 F. Cas. 40, 44 (C.C.N.D.N.Y. 1878).  In its opinion, the Federal Circuit concluded that apportionment is implicitly achieved by applying the Georgia-Pacific factors “under proper instructions.”  The petitioner here calls BS on that implicit approach.

Written Description: The patent here claims voice communication via “packet communication” that is clearly broad enough to encompass the accused Voice-over-Internet-Protocol (VoIP) systems.  However, the patent specification does not disclose or discuss VoIP, but rather asynchronous transfer mode (ATM).  ATM uses packets, but mimics legacy circuit-switching by establishing a virtual circuit (something not done by an IP system). As IP has proven itself capable and less expensive, it is largely replacing the ATM approach.  The petition here argues that the breadth of claims are not supported by the written description.

In its opinion, the majority sided with the patentee — noting that that IP technology “is not expressly excluded” by the specification and that the document refers to ATM as one possible “broadband system.”  The “such as” language “strongly suggests that the patents are not limited to ATM technology.”  Here, the court also concluded that a lightweight disclosure was acceptable since IP systems were known in the art as a form of broadband.

Judge Mayer wrote in dissent. He concluded that VoIP should not be understood as within the disclosure since the specification repeatedly focused on ATM style virtual circuits with no disclosure of other packet networks. “[T]he specification’s disclosure makes sense only in the context of ATM technology.”

Former Solicitor General Paul Clement (Kirkland & Ellis) is leading the petition.

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.

= = = =

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.

William Grecia v. Samsung Electronics (Fed. Cir. 2019)

In a non-precedential decision, the Federal Circuit has affirmed the district court’s holding that Grecia’s asserted claims invalid as indefinite.  The claims include a means-plus-function limitation, but an example of the underlying mechanism was not disclosed in the specification.

In the years leading up to the Patent Act of 1952, several courts (including the U.S. Supreme Court) severely limited the ability of applicants to use functional claim limitations (rather than structural) in order to obtain broader patent protection.  See, for example, Halliburton Co. v. Walker, 329 U.S. 1 (1946) (barring functional limitations at the point of novelty). Traditionally, patent attorneys had drafted these functional limits in “means-plus-function” language.  In Halliburton, for instance, Walker’s invalidated claim required “means … for creating pressure waves of known frequency.”

The 1952 Act added 35 U.S.C. § 112 ¶ 6 (now 112(f)) that allows for functional claims in certain circumstances:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Section 112 ¶ 6.  Although this provision left patentees in a much better position than under Halliburton, most patent drafters attempt to avoid having claims fall under its ambit — preferring instead to rely upon quasi-functional limits that include some amount of structure and some amount of function and that do not use the magical words “means for.”  That approach is preferred because, under the statute true means-plus claims are construed narrowly — to cover only the “corresponding structure” that was actually described in the specification (“and equivalents thereof”).  In addition, as this case reiterates, a means-plus claim will be deemed invalid as indefinite if the specification does not actually disclose a corresponding structure.

It used to be much easier for attorneys to slip through the eye of the needle — but in recent years the gap has tightened as the Federal Circuit ruled that “nonce words” should not be seen as structural. (Is the eye too small, or the camel too large?)

Here, the patent claims a “customization module” that the district and appellate court found to be equivalent to a “means for customization.”  In Williamson v. Citrix, the Federal Circuit previously explained that “‘Module’ is a well-known nonce word that can operate as a substitute for ‘means.'”

After finding “customization module” to invoke 112 ¶ 6, the court then found that the specification did not provide any specific disclosure of how such a module would actually work.  Grecia’s patent is focused on computer implemented technology. In that context, the court has repeatedly held that disclosure of the associated computer algorithm can be sufficient (and is often required). Here, however, the specification did not include such an algorithm:

[T]he specification fails to explain how such customization is performed. Instead, the specification only describes the results of customization. . . . We have held that describing “the results of the operation of an unspecified algorithm” is not sufficient to transform the disclosure of a general-purpose computer into the disclosure of sufficient structure to satisfy § 112, ¶ 6. Aristocrat Techs. Because the ’860 specification merely describes the results of customization without any algorithm for configuring the claimed module to obtain those results, we agree with the district court that the specification fails to disclose the “corresponding structure” required under § 112, ¶ 6, thus rendering claim 21 indefinite under § 112, ¶ 2.

Invalidity affirmed.

• U.S. Patent No. 8,533,860

Notes: The patent does discuss the “customization module” a few times and includes an image (below), but it is all very mushy.

The password module 204 prompts the user to enter a master password which provides access to the encrypted digital media. Subsequently, the customization module 206 allows the user to customize the user access panel of the encrypted digital media.

According to an embodiment of the present invention, the customization module 206 facilitates adding one or more of a banner, a logo, an image, an advertisement, a tag line, a header message and textual information to the user access panel of the encrypted digital media.

= = = =

In a prior unpublished decision, the Federal Circuit McDonald’s escaped liability on a divided infringement claim. Grecia v. McDonald’s Corp., 724 Fed. Appx. 942 (Fed. Cir. 2018). The case against Samsung focused on Claim 21.  Claims 1-8 and 11-20 had been cancelled by the PTAB. Mastercard International Inc. v. Grecia, IPR2017-00791 (PTAB 2017).

by Dennis Crouch

Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Laboratories, Inc. and Fresenius, 2018-1804, 2019 WL 3807979 (Fed. Cir. Aug. 14, 2019)

Judge Shipp (D.N.J.) upheld the validity of several claims of Sanofi’s patent, but found several claims invalid. On appeal, the Federal Circuit vacated the obviousness holding — finding the invalidity judgment barred by the U.S. Constitution (no case or controversy).

Fresenius and several others filed ANDAs to start selling generic versions of Sanofi’s prostate cancer drug Jevtana (cabazitaxel). Sanofi then sued for infringement on U.S. Patents 8,927,592 and 5,847,170.

In parallel proceedings, the PTAB found most of the claims of the ‘592 patent invalid. Sanofi appealed to the CAFC on some of the claims* — but filed a “statutory disclaimer” of claims 7, 11, 14–16, and 26.  Note here that the disclaimer was not filed until December 2017, well after the close of trial, but before the district court issued its bench-trial judgment.

Rather than dismissing those claims from the lawsuit, the district court went ahead and held the claims invalid, including those that had been disclaimed.  The district court found (1) that a case or controversy still existed with respect to the disclaimed claims and (2) that those claims were obvious.

[On the last day of trial] Defendants [stated] that they “continue[d] to ask for a judgment of invalidity on all of the claims that have been a part of the case.” Plaintiffs did not object. In addition, Plaintiffs did not move at any time prior to the conclusion of the trial to voluntarily dismiss their assertion of Claims 7, 11, 14-16, and 26. The current procedural posture of the case also reflects that the claims at issue have not been cancelled [by the PTO]. The Court, therefore, finds that it has subject matter jurisdiction over Claims 7, 11, 14-16, and 26.

Sanofi-Aventis U.S. LLC v. Fresenius Kabi USA, LLC, CV147869MASLHG, 2018 WL 9364037 (D.N.J. Apr. 25, 2018).  The remaining claims that had been rejected by the PTAB were revived by the Federal Circuit in a Feb 2019 decision — ordering the PTAB to consider allowing amendments to the claims. Sanofi Mature IP v. Mylan Laboratories Ltd., 757 Fed. Appx. 988 (Fed. Cir. 2019)(unpublished).

On appeal, the Federal Circuit has vacated this decision — holding that “disclaimer of the disclaimed claims mooted any controversy.” Rather, once the claims were disclaimed the invalidity relief became “both speculative and immaterial to its possible future defenses, and Defendants thus failed to demonstrate an Article III case or controversy.”

Fresenius pointed to the fact that Sanofi is now in the process of amending its claims before the PTAB — and could potentially recaputure some aspect of those claims.  In addition, Fresenius argued that the decision could provide the company with issue preclusion armor in the future.  On appeal, the Federal Circuit found these potential harms too speculative and insufficient to be considered.

The decision here is somewhat surprising to me because we’re talking about a Constitutional question. Would the constitution allow a judgment on these claims — especially taking into account the ongoing litigation, the potential for recapture, and the notion that a patent covers a single invention (even if re-stated in number of claims).  The Federal Circuit did not cite the Supreme Court’s recent, Already, LLC v. Nike, Inc., 568 U.S. 85 (2013).  In that case, Nike sued Already for trademark infringement (Air Force 1) and Already counterclaimed that the mark was invalid.  Prior to judgment, Nike dismissed its side of the lawsuit and also issued a broadly worded “covenant not to sue” Already.

While the suit was pending, Nike issued a “Covenant Not to Sue,” promising not to raise any trademark or unfair competition claims against Already or any affiliated entity based on Already’s existing footwear designs, or any future Already designs that constituted a “colorable imitation” of Already’s current products.

The Supreme Court found that covenant left the case moot and therefor must be dismissed under the U.S. Constitution.  In its decision, the court held that Nike had the burden of showing that it could not “reasonably be expected” to resume enforcement efforts.

The difference between Already and the present Sanofi case is the breadth of the disclaimer. While Nike disclaimed any TM action based upon products already on the market, Sanofi only disclaimed a handful of claims within a patent – and maintained many other family-member claims as well as the ability to amend claims.

MyMail, Ltd. v. ooVoo, LLC (Fed. Cir. 2019)

In a split decision, the Federal Circuit has remanded this case — holding that the district court needs to construe the claims before adjuding patent eligibility.

MyMail’s patents cover the method method of modifying toolbars on a (PC) computer display from the server-side without user interaction.  N.D. Cal. Judge Koh dismissed the case on the pleadings — finding the claims directed to the abstract idea of “updating toolbar software over a network without user intervention.”  The court noted that the claims basically gather, analyze and process information and generate a response to transmitted data — all of which are generally abstract functions. In addition the court noted that the claims “relate to [the abstract idea of] using communications networks to update software stored on computers.” Under Alice Step 2, the court found no inventive concepts in the claim — but rather generic, conventional components such as “Internet-connected computers and servers.”  While a “toolbar” might be interesting, they were already in widespread use as of the invention and so not an inventive concept.

In an earlier proceeding, the E.D. Tex. construed the term “toolbar” with some particularity as a “button bar that can be dynamically changed or updated via a Pinger process or a MOT script.” MyMail, Ltd. v. Yahoo! Inc., 16-CV-1000 (E.D. Tex. Sept. 9, 2017). MyMail requested the same construction in this case — hoping that the added complexity would either (1) take the concept out of the abstract idea realm or (2) be considered an inventive concept.  ooVoo argued that the prior claim construction was “wrong.”

Judge Koh did not address claim construction in her R. 12(c) dismissal on the pleadings and, on appeal, the Federal Circuit has vacated that holding:

[T]he district court’s failure to address the parties’ claim construction dispute is error under Aatrix.

Although claim construction is a question of law, the Federal Circuit deferred on the idea of construing the term itself — noting its role of providing “de novo review” is quite different from and more limited than a district court’s initial determination of the merits. So, on remand, the district court will need to construe the claims and then consider whether they are still ineligible.

The majority opinion was authored by Judge Reyna and joined by Judge O’Malley.  Judge Lourie wrote in dissent and argued that the claim construction issue is a “mirage” because the claims are “clearly abstract, regardless of claim construction.”

The claims’ breadth illustrates their abstract nature. They cover any toolbar modification, on any of the multitudes of Internet-connected devices, using generic servers and Internet functionality. . . .  [A]ny invention in using known devices in a new way to transmit data must lie in using the devices themselves differently to accomplish a new process, not simply transmitting a different type of data according to the same process.

According to Judge Lourie, this is not a case of “inventive programming.”

= = = =

The patent here stems from a broad provisional application filed in 1997 by Netsafe. Netsafe owed Robert Derry $70,000. He obtained judgment and was awarded the patent rights as payment back in 2000. Derry is the head of MyMail and lead inventor Thomas Selgas is a co-founder.

Mymail obtained $6.8 million settlement on the patents from various companies back in 2005 and Selgas reportedly received a distribution of $1.1 million. According to IRS court filings, Selgas bought gold coins rather than paying taxes on the income. [US v. Selgas][DOJ Press Release]. That case is ongoing.

= = = =

In a separate IPR, the PTAB found the patent not proven invalid as obvious. Unified Patents Inc. v. MyMail, Ltd., IPR2017-00967.

= = = =

Eric Buether from Buether Joe & Carpenter (Dallas) argued for the patentee MyMail; Robert Hails from Baker Hostetler (DC) argued for the defendants.

Iridescent Networks, Inc. v. AT&T Mobility, LLC  (Fed. Cir. 2019)

AT&T’s legal arguments get a win — by proving that its products a loss.

Iridescent’s patent covers a method of providing “high quality” bandwith “on demand” using custom routes (rather than ad hoc packet-by-packet routing) to maximize the availability of bandwidth, minimize packet loss, and reduce latency.

On appeal, the main issue was the meaning of “high quality” network service as used in the claims.  AT&T argued particularly that the term should be defined as having a connection speed of >= 1 mbps; packet loss <= 0.0001%; and latency of < 1 second. Under that definition, everyone agreed that AT&T’s service was not “high quality.”

On appeal, the Federal Circuit agreed.  Although the patent does not define “high quality,” it did provide a chart that appeared to delineate between some services that are high quality and those that are not.

When looking at the prosecution history, this appears to be an easy case. In response to an enablement rejection over the “high quality” term, the patentee explained the term’s meaning has being tied to particular numbers:

High QoS (quality of service) may be viewed in the present application as having speeds varying from approximately 1–300 megabits per second, packet loss requirements that are typically about 10-5, and latency requirements that are typically less than one second. These are commonly used parameters . . . .

Ordinarily, the Federal Circuit looks to the prosecution history when there is some disavowal of scope.  Here, the statement might not have risen to disavowal, but were still considered important because the term “high quality” service did not have a clear ordinary and custom meaning in the field.

In these circumstances, where there is no clear ordinary and customary meaning of a coined term of degree, we may look to the prosecution history for guidance without having to first find a clear and unmistakable disavowal.

Thus, the decision here provides some caution and guidance to patent prosecutors using “coined terms:” (1) even if your term uses “ordinary words” it can be considered coined if it lacks an “ordinary and customary meaning” in the art; (2) the court is more willing to look to prosecution history to understand the meaning of a coined term.