Harrity & Harrity Holds its Annual State of the Firm Meeting

On Friday, February 9, the Harrity Team came together from across the country to attend this year’s State of the Firm Address.  This is a time for our team to come together to look back on last year’s accomplishments, to learn about our goals for the coming year, and to recognize members of our staff for their accomplishments.

This year Harrity created a special award for the team member who has gone above and beyond their normal job duties.  This year the Harrity Cup was presented to Jazmine Hitt.  John Harrity says of Jazmine, “she’s a patent prosecution assistant, diversity coordinator, and she was in the UNICEF video.  She’s done an outstanding job from the second she walked in the doors and through the end of last year and continuing on obviously this year.  It was a unanimous decision.”

Finjan, Inc. v. Blue Coat Systems, Inc.

By Timothy Hirzel

February 9, 2018- In Finjan, Inc. v. Blue Coat Systems, Inc., 2016-2520 (Fed. Cir. Jan. 10, 2018), the Federal Circuit found that claims of U.S. Patent No. 6,154,844 (‘844 patent) were directed to patent eligible subject matter under 35 U.S.C. § 101 (“101”).  This opinion provides insight on how the first step of Alice’s two-step test is applied and provides an example of claims that are not “directed to” an abstract idea under Step 1 of the Alice test.

A jury found Blue Coat infringed the ‘844 patent owned by Finjan and the District Court held, as a matter of law, that the ‘844 patent was patent eligible under 101.  Blue Coat appealed the subject-matter eligibility decision under 101 to the Federal Circuit.

The ‘844 patent recites a system and method for providing computer security by attaching a security profile to a downloadable (i.e., an executable application program).  Representative claim 1 of the ‘844 patent reads:

  1. A method comprising:

receiving by an inspector a Downloadable;

generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and

linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.

The Federal Circuit applied Alice’s two-step test and reiterated that under Step 1, the court determines whether the claims at issue are “directed to” a patent-ineligible concept, such as an abstract idea.  If they are, the court proceeds to Step 2 and determines whether the additional elements of the claims transform the nature of the claim into a patent-eligible application.

Starting at Step 1, the Federal Circuit first examined the ‘844 patent’s “claimed advance” to determine whether the claims are directed to an abstract idea or whether the claims focus on a specific asserted improvement in computer capabilities.  During claim construction, the “identif[y] suspicious code” feature was construed to be only satisfied if the security profile includes “details about the suspicious code in the received downloadable such as ‘all potentially hostile or suspicious code operations that may be attempted by the Downloadable.’”  Importantly, the Federal Circuit further stated that “[t]he security profile must include the information about potentially hostile operations produced by a ‘behavior-based’ virus scan,” as opposed to “code-matching” virus scans.  The question under Step 1 then became whether this behavior-based virus scan in the ‘844 patent constitutes an improvement in computer functionality.

The Federal Circuit determined the behavior-based virus scan was in fact an improvement to computer functionality.  Behavior-based scans are not limited to recognizing the presence of previously-identified viruses like code-matching scans.  Accordingly, the behavior-based scans can be used to protect against previously unknown viruses as well as “obfuscated code” known virus that attempt to avoid detection by code-matching scans.  Moreover, the Federal Circuit found that claim 1 “employs a new kind of file that enables a computer security system to do things it could not do before.”  For example, the security profile approach allows administrators to tailor access for different users and ensures potential threats do not reach a user’s computer.

The Federal Circuit distinguished this case from Intellectual Ventures v. Symantec Corp., which held virus screening by itself constitutes an abstract idea, because the claimed method in the ‘844 patent “does a good deal more” than conventional approaches to virus screening.  The Federal Circuit also distinguished the ‘844 patent from other cases that have held a result, even an innovative result, is not itself patentable because the ‘844 claims recite more than just the desired result.  Instead, the claims recite specific steps to accomplish the desired results, such as generating a security profile that identifies suspicious code and linking it to a downloadable.

Accordingly, the Federal Circuit found the claims of the ‘844 patent not to be abstract and affirmed the District Court.  Because the claims were not abstract, the Federal Circuit found no need to proceed to Step 2 of Alice.

This opinion illustrates the importance to subject matter eligibility under 101 of tying the claims to the asserted technical advance.  In this case, the advance was a new type of file that enabled new capabilities in a computer that could not be performed before.  This opinion also shows that claims should be drafted to do more than simply recite the desired result of the invention, but actually, recite specific steps to accomplish that result.  This opinion further illustrates the importance of claim construction because even though the claims did not recite “behavior-based” virus scanning, this feature was read into the claims and became an important factor in determining whether the claims constituted an improvement to computers.  Rather than relying on a court’s hopefully beneficial claim construction, patent applicants should carefully draft claims to capture necessary features to illustrate the technical improvement or advance.

Download Finjan v. Blue Coat.

Harrity Announces its First Women’s Workshop

We’re excited to announce that Harrity will be holding its first Women’s Workshop this spring from May 21-23! This workshop includes presentations from some of the most successful women in Intellectual Property, and hands-on patent training from our firm’s attorneys. This workshop is open to any woman currently enrolled in an ABA-accredited law school and recent graduates. For more information, visit our website.

Two-Way Media LTD v. Comcast Cable Communications, LLC, et al.

By William Gvoth

January 23, 2018 – In Two-Way Media LTD v. Comcast Cable Communications, LLC, et al., 2017 U.S. App. LEXIS 21706 (Fed. Cir. Nov. 1, 2017), the Court of Appeals for the Federal Circuit found that claims of various patents owned by Two-Way Media LTD were directed to ineligible subject matter under 35 U.S.C. § 101 (“101”).

This opinion provides insight into how claims may be construed and how this might impact an analysis of the claims under 101.

Four continuation patents were at issue: 5,778,187 (’187 patent), 5,983,005 (’005 patent), 6,434,622 (’622 patent), and 7,266,686 (’686 patent).  The patents relate generally to a system for streaming audio/visual data over a communications system like the Internet.  Claim 1 of the ’187 patent is representative of all the claims of the ’187 patent and the ’005 patent; claims 1 and 29 are representative of the ’622 patent; and claims 1, 22, 26, and 30 are representative of the ’686 patent.

As an example, and at a high level, claim 1 of the ’187 patent is generally directed to a method for:

  • Converting a plurality of streams of data into a plurality of streams of addressed digital packets;
  • Controlling the routing of the stream of packets in response to selection signals; and
  • Monitoring receptions of packets by the users and accumulating records.

The other representative claims are directed to similar methods or to systems with means plus function claiming similar to the previously described claim.

The common specification describes the invention as a scalable architecture for delivering real-time information (e.g., a distribution architecture integrated with a control architecture).  Embedded in the architecture is a control mechanism that provides for the management and administration of users who are to receive real-time information.  The specification also describes monitoring network conditions and generating records about real-time streams.

The Federal Circuit first analyzed the ’187 and ’005 patents.  Under Step 1 of the Alice test – the district court found that the claims of these patents are directed to the abstract idea of 1) sending information, 2) directing the sent information, 3) monitoring the receipt of the sent information, and 4) accumulating records about receipt of the sent information.  In analyzing this determination, the Federal Circuit stated that “claim 1 recites a method for routing information using result-based functional language…but does not describe how to achieve these results in a non-abstract way.”  Further, the Federal Circuit rejected proposed claim constructions, offered by Two-Way Media, that the claims are tied to the network architecture described in the specification.  In rejecting the proposed claim constructions, the Federal Circuit stated that the “constructions recite only conventional computer components.”

After affirming the analysis of the district court under step 1 of the Alice test, the Federal Circuit analyzed these claims under step 2 of the Alice test.  Under step 2, the district court “found no saving inventive concept” in the claims.  Although the district court acknowledged that the specification describes “a system architecture as a technical innovation,” the claim is not tied to the described architecture.  The Federal Circuit rejected Two-Way Media’s assertions that the “claim solves various technical problems” because the claim recites generic functional language to solve these problems.  In addition, the Federal Circuit stated that the claim does not require anything other than conventional technology and that the claim merely recites a conventional ordering of steps.

After analyzing the ’187 and ’005 patents, the Federal Circuit analyzed the ’622 patent and ’686 patent under the Alice test.  For these patents, the district court concluded that the ’622 patent was directed to “the abstract idea of monitoring the delivery of real-time information to a user…and that the ’686 patent was directed to the abstract idea of measuring the delivery of the real-time information for commercial purposes.”  It is worth noting that the district court, in part, based its conclusion on the preamble of the claims at issue.  The Federal Circuit found no error in the district court citing the preamble in its review.  The Federal Circuit then concluded that the claims are “directed to monitoring the delivery of real-time information to user(s) or measuring such delivery for commercial purposes.”

Under step 2 of the Alice test, the Federal Circuit reviewed the district court’s finding that the claims of the ’622 and ’686 patents did not contain an inventive concept.  Similar to the claims discussed above, the Federal Circuit disagreed with the argument that the district court failed to account for the system architecture and failed to give weight the “nonconventional arrangement of components” of the system architecture.  The Federal Circuit agreed with the district court, stating that the claims do not include an inventive concept.  For example, the claims recite use of an “intermediate computer” and an “intermediate server.”  The Federal Circuit stated that these components are “conventional computer and network components operating according to their ordinary functions.”  Further, the Federal Circuit stated that the steps of the claims “are organized in a completely conventional way – data are first processed, sent, and once sent, information is recorded” and “fail to describe a ‘specific, discrete implementation of the abstract idea’ sufficient to qualify for eligibility under 101.”

One of the main takeaways from this opinion is that even though the specification of the patents at issue arguably recited a novel concept (e.g., a novel system architecture), the claims were not tied sufficiently to that novel concept.  This opinion highlights the importance of the relationship between the claims and the specification with regard to a 101 analysis.  It shows that it may be difficult to argue that broad terms used in the claims are tied to novel concepts described in the specification, unless those broad terms are explicitly, or very clearly, tied to the novel concepts.  For example, for purposes of a 101 analysis and with regard to this opinion, reciting generic devices in the claims, such as an “intermediate server” or an “intermediate computer,” may not sufficiently tie the claims to a novel system architecture described in the specification unless the specification or the claims describe the relationship between the terms and the novel concepts.

Download Two-Way Media LTD v. Comcast Cable Communications, LLC, et al. 

Harrity & Harrity Welcomes Kenneth Kwan to the Firm

Harrity & Harrity is pleased to welcome Kenneth Kwan to our firm. Kenneth’s practice focuses on electrical, computer, and mechanical technologies. Prior to joining our team, Kenneth worked for Kramer Lavin, and served as a Patent Examiner for the U.S. Patent and Trademark Office.

To learn more about Kenneth and the rest of our team, visit our team page.

 

 

Changes in Patent Language to Ensure Eligibility Under Alice

By Peter Glaser and William Gvoth

December 6, 2017- When a rule becomes a target, it ceases to be a good rule.  In the three years since the Supreme Court issued its opinion in Alice, there have been positive changes to patent applications, but there remains a long-term risk that patent practitioners will use tricks to beat the Alice test.  Here, we focus on the changes to patent applications by drafters, as well as changes to patent applications that have issued since Alice.

*Please note, citations were inadvertently omitted from the original publication of this article. Please contact the authors, directly, to obtain a version of this article including citations*

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Harrity & Harrity Welcomes Rebecca Bachner to the Firm

Harrity & Harrity is excited to welcome Rebecca Bachner to our team as an associate. Rebecca has more than 10 years of experience in the patent field, and her practice focuses on patent preparation and prosecution of electrical and software-related inventions. Prior to joining our firm, Rebecca worked in private practice for over 10 years. She started her patent career as a Patent Examiner at the USPTO.

To learn more about Rebecca and the rest of our team, click HERE

Trading Technologies International, Inc. v. CQG, Inc.

By William Gvoth

November 16, 2017- Trading Technologies International, Inc. v. CQG, Inc. relates to abstract ideas under § 101.  In Trading Technologies, two patents were at issue: U.S. Patent Nos. 6,772,132 (’132) and 6,766,304 (’304) (referred to collectively as “patents”).  These patents shared a common specification and related to a method and a system for electronic trading of stocks, bonds, futures, options and similar products.  The patents describe a problem that arises when a trader attempts to enter an order at a particular price but misses the price because the market moved before the order was entered.  The patents describe implementations that reduce the time it takes for a trader to place a trade when electronically trading on an exchange and that improve the way information is displayed to the trader.  For example, the implementations display market depth, which moves visually up/down and left/right as the market for a product fluctuates.  In addition, the implementations described in the patents permit a user to place an order for a product via a click on a user interface.

Trading Technologies appealed, to the Federal Circuit, the decision of the District Court for the Northern District of Illinois (District Court), finding that the patents were directed to patent-eligible subject matter under the two step test from Alice Corporation Pty. Ltd. v. CLS Bank International (Alice), 573 U.S., 134 S. Ct. 2347 (2014).  The Federal Circuit affirmed.

To analyze the patent eligibility of the patents, the Federal Circuit selected claim 1 of the ’304 patent as the representative claim.  At a high level, claim 1 of the ’304 patent was directed to “a method for displaying market information relating to and facilitating trading of a commodity being traded in an electronic exchange…on a graphical user interface” that comprised dynamically or statically displaying various information and submitting a trade based on a user selection of a portion of the user interface.

The Federal Circuit analyzed the District Court’s analysis of the representative claim under the two step test from Alice.  Under the first step, the Federal Circuit reviewed, and agreed with, the District Court’s findings that the patents solve problems of prior graphical user interface devices used for computerized trading.  Specifically, the Federal Circuit stated that “the patents describe a trading system in which a graphical user interface ‘display[s] the market depth of a commodity traded in a market” including various static and dynamic displays and this graphical user interface solves “‘problems of prior graphical user interface devices…relating to speed, accuracy and usability.’”  Further, the Federal Circuit referenced the District Court’s findings that “the challenged patents do not simply claim displaying information on a graphical user interface” but rather “require a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art.”  Based on the reasons stated by the District Court, the Federal Circuit agreed that the patents presented patent-eligible subject matter.

The Federal Circuit then analyzed the District Court’s analysis of the representative claim under the second step of the test from Alice and concluded that the District Court correctly “determined that the challenged claims recite an ‘inventive concept.’”  The Federal Circuit agreed with the District Court’s identification of the feature of “the static price index as an inventive concept” that permits more efficient and accurate trade placement when using electronic trading systems.  In addition, Federal Circuit agreed with the District Court’s distinction of the trading system from a conventional computer or the Internet based in part on the idea that the trading system presents “specific technologic modifications to solve a problem or improve the functioning of a known system.”

One of the main takeaways from the Federal Circuit’s analysis is that the claimed graphical user interface addresses specific problems with prior art graphical user interfaces in electronic trading.  In other words, the claimed invention includes an improvement to the functioning of technology and steps that address a specific problem.  This decision highlights the importance of framing a problem solved by an invention in technical terms and then presenting claims that solve the problem.

Download Trading Technologies International V CQG Inc.

Practice Insights in the Wake of Sonix Technology Co., LTD., v. Publications International, LTD

By Kris Rhu

October 30, 2017-  In Sonix Technology Co., LTD., v. Publications International, LTD (Fed. Cir. Jan. 5, 2017), the Federal Circuit found that the term at issue in U.S. Patent No. 7,328,845, i.e. “visually negligible,” did not render the asserted claims indefinite under 35. U.S.C. § 112, second paragraph.

The decision provides insight into how terms of degree in claims are treated and how the specification can be useful in providing an objective baseline in interpreting such terms.

The ‘845 patent of Sonix is directed to using a graphical indicator (e.g. a matrix of small dots) to encode information on the surface of an object, and an optical device that can read the graphical indicator and output additional information.  An example application is a children’s book with icons, where if one scans an icon (e.g. a horse) with the optical device, the book will output a sound (e.g. pronunciation of “horse”).  The patent admits that encoding graphical indicators is not new (e.g. barcode on a book cover), but the invention is an improvement over conventional methods because it renders the graphical indicators “visually negligible.”

The district court granted summary judgment against Sonix finding the patent invalid as being indefinite.  Particularly, the district court found the term “visually negligible” in the claim as indefinite under 35. U.S.C. § 112, second paragraph because the term was “purely subjective” and because the claim language provides no guidance on its meaning.  The court also determined that the specification does not provide a person of ordinary skill in the art “with a meaning that is reasonably certain and defines objective boundaries” of the claim scope.

On appeal, Sonix argued that the requirements and examples in the specification would have allowed a skilled artisan to know the scope of the claimed invention with reasonable certainty and establish that the term depends on human perception, not opinion.  They argued that this was consistent throughout the initial examination and reexamination processes.  Publications argued that there is no objective standard to determine whether something is “visually negligible” because it depends on the vagaries of a person’s opinion.

The Federal Circuit agreed with Sonix and reversed the district court, citing Enzo Biochem, Inc. v. Applera Corp., 599 F. 3d 1325, 1336 (Fed. Cir. 2010), where the court found that the clause “not interfering substantially” did not render a claim indefinite because the intrinsic evidence provided examples for non-interfering structures and criteria for their selection.  Thus, sufficient guidance was given to allow a skilled artisan to compare a potentially infringing product with examples from the specification to determine whether interference is “substantial.”

The court also cited Datamize, LLC v. Plumtree Software, Inc., 417 F. 3d 1342, 1348-1349 (Fed. Cir. 2005), where the court found the term “aesthetically pleasing,” with respect to a look and feel for interface screens, indefinite because the specification provided no guidance to a person making aesthetic choices.  Without any guidance, a determination of whether something is “aesthetically pleasing” was completely dependent on a person’s subjective opinion.

The court further cited Interval Licensing, LLC v. AOL, Inc., 766 F .3d, 1364, 1368 (Fed. Cir. 2014), where the court found displaying content “in an unobtrusive manner that does not distract a user” indefinite because the single example in the specification without more information leaves the skilled artisan to wonder what other forms of display are unobtrusive and non-distracting.  This leaves the skilled artisan to consult the “unpredictable vagaries of any one person’s opinion.”

Here, the Federal Circuit found that the term “visually negligible” does not depend on a person’s taste or opinion, but rather depends on whether something can be seen by the normal human eye.  The court found that this provides an “objective baseline” to interpret the claim, and thus, is not “purely subjective” even though it may be a term of degree.  When turning to the specification to determine whether there is some standard for measuring visual negligibility, the court found that the specification 1) has a general exemplary design for a visually-negligible indicator, 2) states “requirements for the graphical indicators [to be] negligible to human eyes”, and 3) contains two specific examples of visually negligible indicators.  Thus, the court found the existence of examples in the specification distinguishes this case from Datamize, and the existence of an additional example and specific requirements distinguishes the case from Interval Licensing.  The court also found the level of detail in the specification to be closer to that provided in Enzo because it provided guidance on how to create visually negligible indicators and specific examples that provide points of comparison for the result.  Further, the court found that Publications had not provided evidence that human perception varies so significantly that reliance on it as a standard renders the claim indefinite, noting that no one involved in the first or second reexamination had any difficulty in determining the scope of the term “visually negligible.”

The Federal Circuit made one final point about how their holding in this case does not necessarily mean that “the existence of examples in the written description will always render a claim definite, or that listing requirements always provide sufficient certainty.”  The court indicated that they simply held that “visually negligible” is not purely a subjective term and that the written description and prosecution history provided sufficient support to inform with reasonable certainty those skilled in the art of the scope of the invention.

Going forward, the decision provides some instruction regarding potential patent drafting strategies with regard to terms of degree.  For example, the decision highlights the importance of providing sufficient requirements and examples in the written description so that sufficient guidance is provided to those skilled in the art for interpreting such terms.

Download Practice Insights in the Wake of Sonix Technology Co., LTD., v. Publications International, LTD.

Harrity & Harrity Attends The 2017 Leadership Council on Legal Diversity Annual Membership Meeting

We are proud to announce that Harrity & Harrity has joined the Leadership Council on Legal Diversity.  John Harrity, Managing Partner, and Sandra Maxey, Chief Diversity Officer, attended the Annual Membership Meeting, Vision 2020: The Power of Networks, in Washington, D.C. on October 17.  Sandra Maxey said of the event, “I was excited to attend the 8th Annual LCLD Meeting.  Their vision for creating a diverse workforce is solid, and I have no doubt that they inspire change.”  We are excited to work with this driven organization and do our part to increase diversity and inclusion in the legal field. 2017 LCLD Annual Membership Meeting Conference Screen

Harrity & Harrity Joins the Leadership Council on Legal Diversity

Harrity & Harrity has joined the Leadership Council on Legal Diversity.  This is their most recent advancement in their Diversity and Inclusion commitment.  The Leadership Council on Legal Diversity works to connect more than 265 law firms and major corporations through various programs that target attorneys at all stages of their careers.

John Harrity, Managing Partner, says of this step forward, “We look forward to utilizing the resources this great organization has to offer us, and to helping diversity in the legal community grow.  Since implementing our diversity program almost four years ago, we’ve seen tremendous growth at our firm, and we’re excited to see that growth continue across our field.”

Harrity & Harrity mentioned in Law 360 Article “3 Law Firms With Their Own Riff On The Mansfield Rule”

Harrity & Harrity was mentioned in Law360’s article regarding firms that have adopted alternative hiring practices to the Mansfield Rule. The Mansfield Rule, created in 2016, states that at least 30% of the candidate pool for promotions, leadership positions, and senior level hiring must be comprised of either diverse candidates or women. The Super Sized Rooney Rule expands on that idea.

“Virginia-based patent law boutique Harrity & Harrity launched what it calls the “super-sized Rooney Rule” at the end of 2015. The law firm has committed to interview at least one woman or minority candidate for every nonminority male candidate it interviews for both attorney and nonattorney positions.

According to one of the law firm’s founding partners, John Harrity, the law firm has seen a good deal of progress since it implemented the rule. Of the eight attorneys it has hired since November 2015, half were either minorities or women, and across the law firm, out of the 19 employees hired during that time period, 12 are women and minorities.”

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To learn more about Harrity & Harrity’s diversity initiatives, please visit our Diversity Page.

Practice Insights in the Wake of Visual Memory LLC v. NVIDIA Corp.

By Sean Quinn & Peter Glaser

August 25, 2017- In Visual Memory LLC v. NVIDIA Corp. (Fed. Cir. Aug. 15, 2017), a divided panel at the Federal Circuit determined that U.S. Patent No. 5,953,740 is not directed to an abstract idea.

The decision provides a positive result in the context of software-based inventions, and provides a few insights regarding potential patent drafting strategies.  Namely, the decision highlights the importance of focusing the specification on improvements to hardware components, and bolsters the importance of mentioning technical benefits wherever appropriate.  

The ‘740 patent teaches a memory system having programmable operational characteristics that are capable of being configured for use with multiple different types of processors without causing a reduction in performance ostensibly present in the prior art computer systems.  This enables the memory system to be used efficiently with multiple types of processors, rather than only with a single type of processor.  Further, the ‘740 patent claims a computer memory system comprising a main memory, a cache, and programmable operational characteristics that determine a type of data stored by the cache.

On appeal from a district court’s grant of NVIDIA’s motion to dismiss based on the asserted claims being directed to patent -ineligible subject matter, Judge Stoll, writing for the majority, stated that “[courts] must articulate with specificity what the claims are directed to (citing Thales Visionix Inc. v. United States),” and “ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea (citing Enfish LLC v. Microsoft).”  (Opinion at 7).

Using Enfish and Thales as guidance, the majority stated that the ‘740 patent’s claims are directed to an improved computer memory system rather than to an abstract idea of categorical data storage and  mentioned that claim 1 of the ‘740 patent requires a memory system “having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor,” and “determin[ing] a type of data stored by said cache.”  (Opinion at 9).  Further, the  majority stated that dependent claims 2 and 3, respectively, narrow the memory system’s programmable operational characteristic to storing certain types of data and buffering data from certain sources and that none of the claims recite all types and all forms of categorical data storage.

The majority noted that the ‘740 patent’s specification mentions various technical benefits associated with the memory system, such as permitting different types of processors to be installed with the subject memory system without significantly compromising their individual performance, obviating the need to design a separate memory system for each type of processor, avoiding the performance problems of prior art memory systems, enabling interoperability with multiple different processors, and outperforming prior art memory systems having larger cache sizes.

Analogizing the ‘740 patent to the self-referential table in Enfish and the motion tracking system in Thales, the majority noted that the ‘740 patent’s claims are directed to a technological improvement and focus on a specific asserted improvement in computer capabilities rather than a process that qualifies as an abstract idea for which computers are invoked merely as a tool.  Further, the majority noted that the specification of the ‘740 patent discusses the advantages offered by the proffered technological improvement.  

Juxtaposing the ‘740 patent and the claims in Content Extraction & Transmission LLC v. Wells Fargo Bank and In re TLI Communications LLC Patent Litigation, the majority noted that the ‘740 patent recites an ostensibly new, improved, and more efficient memory system as opposed to claims that are not directed to an improvement in computer functionality and cover abstract ideas operating on generic hardware.

In dissent, Justice Hughes posited that the ‘740 patent fails to describe how the invention’s purpose is achieved, fails to describe how to implement the programmable operational characteristic, requires a third party to supply the innovative programming, and, as such, is not properly described as being directed to an improvement in computer systems.

In response, the majority identified three flaws with Justice Hughes’s posit.  

First, the majority noted that the ‘740 patent includes an appendix having 263 frames of code, and noted that the assumption that the code does not teach a person of ordinary skill in the art was improper at the stage of reviewing a Rule 12(b)(6) motion, where all factual inferences must be drawn in favor of the non-moving party.

Second, the majority noted that the question of whether a patent specification teaches a person of ordinary skill in the art how to implement the claimed invention presents an enablement issue under 35 U.S.C. § 112 rather than an eligibility issue under § 101.  Further, the majority noted that the implementation details regarding how to configure a programmable operational characteristic may very well fall within the routine knowledge of persons having ordinary skill in the art and, as such, may have been permissibly omitted.  

Third, the majority noted that Justice Hughes’s assumption that the innovative effort in the ‘740 patent lies in the programming required for a computer to configure a programmable operational characteristic of a cache memory was misplaced.  In support, the majority noted that the assumption was inconsistent with the ‘740 patent’s specification and claims, which expressly state that the improved memory system is achieved by configuring a programmable operational characteristics of a cache memory based on the type of processor connected to the memory system.

In closing, the majority refrained from proceeding to step two of the Alice test because of the finding that the claims of the ‘740 patent are not directed to an abstract idea.   

Going forward, the decision provides some instruction regarding potential patent drafting and prosecution strategies regarding software-based inventions and § 101 issues.  For example, the decision highlights the importance of directing the specification and claims to improvements in computer systems, and the importance of mentioning technical benefits provided by the invention wherever feasible.  Moreover, the case highlights a distinction that can be drawn between enablement and eligibility.

Download Practice Insights in the Wake of Visual Memory LLC v. NVIDIA Corp.

 

Diversity: An Interview With John Harrity

By Mauricio Velásquez, MBA

August 7, 2017- At a recent Association of Legal Administrators, Washington, D.C. Chapter meeting, John Harrity, Managing Partner of Harrity & Harrity, spoke about his firm’s Diversity and Inclusion initiative. Harrity & Harrity is an innovative boutique patent law firm based in Fairfax, VA. When asked about his firm’s commitment to Diversity and Inclusion, he explained, “We believe that the ‘practice of law’ is advanced by a more diverse legal team – with diversity of background, upbringing, education, and perspective comes quality legal innovation. At Harrity & Harrity, we are committed to The Supersized Rooney Rule. This is a hiring practice that shows our firm’s commitment to diversity and inclusion is something that we take seriously; it’s something we’re very proud of.”

The Rooney Rule is a National Football League policy that requires league teams to interview minority candidates for head coaching and senior football operation jobs. But there was a flaw – the football team only had to interview at least one minority candidate for an NFL coach opening but could interview an unlimited number of other candidates. “The Rooney Rule is just not going far enough,” Mr. Harrity said, “we wanted to go much further and so we decided that for every opening – attorney or non-attorney – we are committed to interviewing a female or minority candidate for every male, non-minority candidate we interview.”

After his presentation, I asked Mr. Harrity what sort of benefits his current team could expect to see from their diversity efforts. “We are creating and nurturing a workplace culture that is inclusive, values differences, and is authentic, and we want our team to know we really care about them, their well-being, and their future. This will make us the patent law firm employer of choice. We are looking for good people from all backgrounds to help our team grow and to help us become the number one patent law firm.”

There has been recent press about the Mansfield Rule. This rule, introduced in 2016, requires that women and minorities comprise at least 30 percent of the candidates for leadership and governance roles, equity partner promotions, and lateral positions in law firms. Again Mr. Harrity countered, “Just like the Rooney Rule, we don’t think the Mansfield Rule goes far enough.”

Sandra Maxey, Chief Diversity Officer at Harrity & Harrity told me that “making the commitment is one thing, executing the everyday work of finding, hiring, and retaining divers talent is the real challenge. We are fully committed to diversity and inclusion at our firm.”

For more information about Harrity & Harrity’s Diversity Program, please visit their website (www.harrityllp.com/diversity). Please join Harrity & Harrity and the ranks of other law firms in implementing the Supersized Rooney Rule.

Mauricio Velásquez, MBA, is President and CEO of the Diversity Training Group based in Herndon, VA. He can be reached at 703-478-9191 or mauriciov@diversitydtg.com. DTG is in our 21st year of operation.

Diversity Semi

Editor’s Note: The Supersized Rooney Rule was created in 2015 by the Diversity Committee at Harrity & Harrity, LLP. For a brief period in 2017, it was known as The Harrity Rule, however, after careful consideration, the name was changed back.

 

 

Harrity & Harrity, LLP Announces Charitable Giving Initiative Harrity 4 Charity

Harrity & Harrity, LLP, has announced the launch of their charitable giving initiative, Harrity 4 Charity.

Harrity 4 Charity is an initiative that launched in July 2017 that represents a partnership between Harrity & Harrity and the American Heart Association, INOVA Children’s Hospital, Zero: The End of Prostate Cancer, and UNICEF.  Harrity & Harrity has pledged to donate 5% of profits to the partner charities, and 100% of the firm’s employees have pledged to donate a portion of their paychecks, as well. “We’re fortunate to be in a position where we can give back in such an extraordinary way,” says John Harrity, Managing Partner. “We couldn’t be more proud of our team and their commitment to helping others.”

These organizations were chosen by John Harrity, Paul Harrity, Sandra Maxey, and the Diversity Committee because each one was near and dear to their hearts.  The partners of Harrity & Harrity will also give the firm’s clients the opportunity to designate which charity they would like their portion of the firm’s profits to be donated.

Paul Harrity says of the initiative, “We see this as a way for us to make a difference in the world, and we hope other firms will do the same.”

Harrity & Harrity’s commitment to the community is manifested in other ways, as well.  The firm frequently volunteers time and in kind goods to benefit a number of charitable organizations, including Fairfax CASA, Alex’s Lemonade Stand, Duke Cancer Institute, and JDRF.  In October 2017, they will host the Sixth Annual Harrity Race Against Heart Disease benefitting the American Heart Association.

To learn more about the Harrity 4 Charity initiative, please visit www.Harrity4Charity.com.  To register for the Sixth Annual Harrity Race Against Heart Disease, please visit www.harrityllp.com/harrityrace.

Harrity & Harrity is an IP boutique that has been specializing in the preparation and prosecution of electrical and mechanical patent applications since 1999.  Our services include patent preparation and patent prosecution, patent opinions, patent analytics, patent quality support, and patent preparation and patent prosecution training.

Unmanned Aerial Vehicle Patents: A Survey

By Peter Glaser

July 26, 2017- Although many think of unmanned aerial vehicles (UAVs) or “drones” as a modern development, UAVs have an extensive history dating back to the original development of lighter-than-air flight.  Initial attempts were limited by the technology of the age – an attempt by the Austrian empire to launch balloon bombs against the Venetian state failed when a shift in wind resulted in the balloon bombs returning toward the Austrian troops.  Early engineering efforts to support unmanned aerial flight included the development of radio-based remote control by Serbian-American Nikola Tesla, an “Aerial Target” developed in 1916-17 by Englishman Archibald Low, and an “AutomaticAirplane” developed in 1916-18 by Americans Elmer Sperry and Peter Cooper Hewitt.  Early attempts often ended in failure – Low’s Aerial Target crashed during all three test flights before being abandoned; Sperry and Hewitt’s Automatic Airplane successfully completed a single successful test flight of 1000 feet, but all completed test airframes were destroyed in subsequent crashes resulting in abandonment.

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John Harrity Speaks About Successful Diversity Initiatives at ALA Diversity Panel

On June 15, 2017, John Harrity, Managing Partner and Diversity Partner of Harrity & Harrity, spoke on a diversity panel hosted by the Association of Legal Administrators. Mauricio Velasquez, of Diversity Training Group, began the program with a presentation on the importance of diversity and inclusion in the legal field, and lack thereof.

Kendal Tyre, Partner at Nixon Peabody, discussed diversity initiatives within his firm.  At Nixon Peabody, associates, partners, and support staff, are expected to commit 40 hours annually to diversity initiatives.  Diversity initiatives can include meeting with an affinity group, attending diversity seminars, and attending recruiting functions.  These practices can improve firm morale and maintain a positive culture at the firm.

John Harrity’s presentation focused on internal diversity initiatives and the results that the firm has seen since their launch in 2015.  Despite having a diverse support staff, it is difficult to recruit women and minority patent attorneys.  To change this, Harrity & Harrity has taken the following steps to recruit women and minorities. The first step was initiating the Harrity Rule, which is a supersized version of the Rooney Rule. The Harrity Rule means that we are committed to interviewing a female or minority candidate for every male, non-minority candidate we interview for any position at our firm.  The firm began hiring for reduced hours and remote work positions.  The firm also started a 1L Diversity Fellowship in 2016 and launched the first Diversity Summer Workshop in 2017.

Since the launch of our diversity initiatives in 2015, Harrity & Harrity has hired seven new attorneys, four of whom are considered diverse by the EEOC Diversity Scorecard.  Across the firm as a whole, there have been 18 new hires in the past two years, 12 of whom are considered diverse.

John Harrity says of the seminar, “This was a great opportunity to not only talk about our diversity initiatives, but to share ideas and learn new skills from other firms, as well.  I strongly believe that cultivating a highly diverse firm is one of the keys to success, and I look forward to working towards this goal.”

Harrity & Harrity Launches it’s First Annual Diversity Summer Workshop

Harrity & Harrity wrapped up the 2017 Harrity Diversity Summer Workshop on Friday, May 26.  The workshop brought together ten engineering students, law students, and recent law school graduates to learn the skills involved in being a patent attorney.  During the workshop, participants had an opportunity to learn about patent preparation and patent prosecution, as well as receive mentorship from associates and partners at Harrity & Harrity.

Participants also had opportunities to hear perspectives from attorneys in other positions throughout the country.  Teresa Rea, former acting director of the USPTO, met with participants and provided advice about forging a career as a patent attorney, balancing life and work, and government service.  Similarly, Allen Lo, Deputy General Counsel for Patents at Google, and Courtney Holohan, Chief IP Counsel at Accenture, gave tips for succeeding as an attorney and navigating career paths and opportunities.  Participants ended the week receiving hands on advice on crafting their resumes and cover letters, practicing mock interview skills, and traveling with Harrity & Harrity attorneys and support staff to see a Washington Nationals game.

Sandra Maxey, Chief Diversity Officer, says of the workshop, “This week was an incredible success, and we hope to start looking for participants for our 2018 workshop soon to help diverse students with an interest in the patent field gain the skills to succeed as private practice attorneys, patent examiners, and in-house counsel.”

 

Diversity Workshop Participants at Nationals Park

Kenneth Hartmann Joins Harrity & Harrity

Kenneth Hartmann has joined the firm as an Associate. He brings with him more than 10 years of experience in the patent field. Ken specializes in patent preparation and patent prosecution of electrical, electromechanical, and software technologies. He also has experience in portfolio analysis, validity and invalidity analysis, infringement analysis, and clearance opinions.
Prior to joining Harrity & Harrity, he worked in house at Hewlett Packard Enterprise. He also worked as a Patent Examiner at the United States Patent and Trademark Office.

Learn more about Ken and the rest of the Harrity & Harrity team HERE.Kenneth Hartmann

IAM Patent 1000 2017 Recognizes Harrity & Harrity For Patent Prosecution

For the third year in a row, Harrity & Harrity has been named an IAM Patent 1000 Recommended Firm for Patent Prosecution.

Distinguished by the most exacting standards of quality, Harrity & Harrity is a prime pick for companies seeking to obtain patents that will stand the test of time and push their commercial agenda. Whether through training on the customer-facing aspects of legal practice or exploring innovative new approaches to data analytics, the set always goes the extra mile to exceed expectations. The architects of one of the most thorough second-attorney-review policies in the patent business and a uniform writing style that leaves no gaps while promoting efficiency, John Harrity and Paul Harrity are clever prosecution minds with a growing fan base among blue-chips. They have promoted a very proactive, team-oriented approach to account management, so customers can always get 100% attention from someone who knows their technology, business and portfolio.”

IAM 1000

First Annual Harrity Diversity Summer Workshop Is A Great Success!

On May 22, 2017, Harrity & Harrity launched its first annual Diversity Summer Workshop. This program brought together undergraduates, law students, and recent graduates to learn about patent law. During this week long program, students attended presentations from Teresa Rea, Former Director of the USPTO, Courtney Holohan, Chief IP Counsel for Accenture, and Allen Lo, Deputy General Counsel of Patents at Google. They also had to opportunity to attend patent-related presentations from our Partners and Associates, and participate in hands-on training in drafting patent applications and responding to office actions.

Chief Diversity Officer, Sandra Maxey, says of the workshop, “This week was an incredible success and we hope to start looking for participants for our 2018 workshop soon to help diverse students with an interest in the patent field gain the skills to succeed as private practice attorneys, patent examiners, and in-house counsel.”

To learn more about the Diversity Summer Workshop and how to apply, click HERE.

Imran Hossain Selected as the 2nd Annual Harrity 1L Diversity Fellow

Harrity & Harrity is pleased to announce that Imran Hossain has been selected as the 2017 1L Diversity Fellow. Imran earned his undergraduate degree in Electrical Engineering from Boston University, and is working towards his Juris Doctor at Boston College Law School.

As a Diversity Fellow, Imran will receive mentoring from both associates and partners, a scholarship, and summer clerkship from mid-May until July.

Learn more about our Diversity Fellowship Program HERE.Imrain Hossain- Diversity Fellow

Elaine Spector Joins Harrity & Harrity

Harrity & Harrity is excited to welcome Elaine Spector to our firm as Counsel. Elaine has more than 20 years of experience in intellectual property law, and her practice consists primarily of patent prosecution in electromechanical technologies. Prior to joining Harrity & Harrity, she worked in private practice for nearly 15 years, and most recently she worked in-house for 6 years at Johns Hopkins Technology Ventures.

Learn more about Elaine and the rest of the Harrity & Harrity team HERE.

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