Eli Mazour on The Art of SEP Claim Drafting: SEP Couch Podcast

In a recent episode of the SEP Couch Podcast, Eli Mazour, Partner at Harrity and head of our Prosecution Team, shared his insights on the complex world of Standard Essential Patents (SEPs). The conversation revolved around the intricacies of patent drafting, the unique nature of SEPs, and the challenges faced by innovators in the current patent landscape.

In the episode, Eli emphasized the importance of understanding the complexity of SEPs. He explained that SEPs are not just about the technology they cover, but also about how they map to the standards. This mapping is a complex process that critics often overlook.

The conversation also touched on the increasing volume of SEPs due to the complexity and size of modern technologies like 5G. Eli noted that there’s more SEP activity because there are more inventions happening. He also highlighted the trend of implementers trying to obtain more SEPs, with companies like Apple and Google building up 5G teams.

Also discussed are the threats posed by third parties challenging patents, a practice made possible by the American Invents Act. He expressed concern about the impact on independent inventors, as it makes it harder to enforce patents. He also questioned the value of these third party challenges, suggesting that it increases transaction costs and diverts resources from innovation.

The podcast also delved into the proposed European Commission regulation to set up a register for SEPs. Eli expressed skepticism about the feasibility and effectiveness of such a register, given the complexity of determining essentiality and the potential for data manipulation.

In his advice to in-house counsel and outside counsel, Eli stressed the importance of not getting stuck in “zombie mode” and continuing to obtain patents in the same way as in the past. Instead, he urged them to think about the best way to build a patent portfolio with valuable patents in a cost-effective manner, in line with where technology and patent law are heading.

The podcast provides a deep dive into the world of SEPs, highlighting the complexities and challenges involved. It underscored the need for a nuanced understanding of SEPs and a strategic approach to patent portfolio building in the face of evolving technology and legal landscapes.

Listen to Eli’s full episode on the SEP Couch Podcast with Tim Pohlmann below for a deeper understanding of SEPs and the evolving patent landscape:

Check out the SEP Couch Podcast HERE and subscribe on your favorite podcasting app!

 

The Global Impact of Pro Bono Intellectual Property Work – Alexander Zajac

Alexander Zajac‘s article, “The Global Impact of Pro Bono Intellectual Property Work,” discusses the significant global effects that pro bono intellectual property (IP) services can have for the American Bar Association’s Landslide Magazine.

Despite the reluctance of lawyers to perform IP services pro bono due to liability concerns and marketing goals, Zajac argues that there are worthy clients with cross-border legal needs that can greatly benefit from such services.

Zajac identifies several impediments to global pro bono services in IP. Lawyers are often risk-averse, fearing malpractice liability from pro bono activities. The decentralized nature of licensure also makes cross-border pro bono work difficult. During the COVID-19 pandemic, these difficulties were exacerbated as more attorneys began working remotely from jurisdictions in which they were not licensed. Additionally, many lawyers look for pro bono opportunities that seem particularly philanthropic, and some believe that IP work does not help disadvantaged people and thus is not philanthropic.

However, Zajac argues that trademarks, patents, and copyrights are not mere tools of profitability. They can be used to fundraise for humanitarian causes or to keep unsafe products off the market, among other philanthropic uses. Even if pro bono IP services are not provided directly to disadvantaged people, social enterprises may benefit from pro bono IP services and use their saved costs and IP rights philanthropically.

The article presents two case studies to demonstrate the global impact of pro bono IP services. The first case study is Shimmy Technologies, a company that uses artificial intelligence to help apparel workers upskill and reskill in light of ongoing automation. The company benefited from pro bono IP work, which helped it protect its inventions, copyrights, and trademarks when it expanded into new countries. The pro bono work also provided peace of mind to the company, allowing it to focus more on developing its products and continuing to roll out upskilling programs.

The second case study is Be Girl, a social enterprise dedicated to providing access to sanitary supplies that are appropriate to cultural practices and socioeconomic conditions. The company’s founder, Diana Sierra, understood the importance of obtaining a patent on her invention and was able to accelerate her fundraising abilities with a pending patent application. As Be Girl grew, it continued to receive pro bono assistance, which helped it expand its patent portfolio and trademark filings. This expanded patent portfolio opened discussions with big players in the sanitary supplies market and allowed Be Girl to insist on the safety and affordability of sanitary supplies before such products are pushed to market.

In conclusion, Zajac emphasizes that providing pro bono IP advice and services can have positive global effects. There are many well-meaning enterprises that would benefit from pro bono IP services, and many of these potential clients have cross-border legal needs. For companies like Shimmy and Be Girl, receiving pro bono IP assistance helped them pursue their goals of upskilling workers and furthering female education around the globe.

Read the full article to learn more about the global benefits of providing pro bono intellectual property work.

 

Hindsight Bias in Patent Examination: How Language Models Can Help

Derek Abeyta covers “Hindsight Bias in Patent Examination: How Language Models Can Help” in a featured article for IPWatchdog.com.

The article discusses the issue of hindsight bias in the patent examination process and proposes the use of artificial intelligence (AI) models, specifically large language models, to address this problem. Hindsight bias occurs when a patent examiner unknowingly uses their knowledge of the invention to reject a claim as obvious. This can lead to incorrect determinations of obviousness, prolong prosecution, and result in unfair narrowing of independent claims. AI models can help mitigate this bias by providing an objective and consistent standard for determining obviousness. These models can analyze the examiner’s rationale for an obviousness rejection and identify instances of impermissible hindsight, thereby assisting the examiner in providing a more reliable assessment of patentability.

“Language models have the potential to reduce the likelihood of appeals and legal challenges, streamline prosecution, and lead to more consistent and cost-effective patent examination,” Derek says.

The article also highlights the challenge of determining whether an invention would have been obvious to a person of ordinary skill at the time of filing and how to overcome this challenge, the potential benefits of using language models, and whether they outweigh the initial costs and cons.

Read the full article to learn if language models offer a promising solution to mitigate hindsight bias, improve the patent examination process, and ensure consistency and objectivity in determining patentability on IPWatchdog.com.

Patents for Humanity

By Edward Kim, Harrity Associate

Some time ago, in discussing humanitarian efforts and engineering, a friend of mine told me about a concept project he worked on to create a new iteration of the Leveraged Freedom Chair (LFC), an all-terrain wheelchair manufactured by Global Research Innovation and Technology (GRIT).  The original LFC was created by engineering graduates of the Massachusetts Institute of Technology (MIT) to allow people with disabilities in developing countries to gain mobility and independence.  Conventional wheelchairs didn’t function well on the rugged terrain and rough local roads, and most were difficult and expensive to maintain.  The three-wheeled LFC uses a push-lever drivetrain to help people navigate over rugged terrain with ease and is built from commonly found bicycle parts to allow easy maintenance and repair.  Naturally, being an intellectual property professional, I started looking into patents related to the LFC.

That’s when I first discovered Patents for Humanity, an awards competition hosted by the United States Patent and Trademark Office (USPTO).  The creators of the LFC secured US Patent No. 8,844,959 in 2014 and was awarded a Patents for Humanity award in the subsequent year.  Nearly a decade has passed since the program itself started, but little is known about it.  Given the current situation with the global pandemic, and the season of giving around us, I thought it might be timely to share some information about the awards competition with our network of IP professionals.

Patents for Humanity was launched in February 2012 as part of an initiative to promote “game-changing innovations to address long-standing development challenges” and showcase how patent holders are pioneering innovative ways to provide affordable, scalable, and sustainable solutions for the less fortunate.  Awards have been given for innovations that range from Golden Rice that’s genetically enhanced to provide a source of vitamin A for people relying mainly on rice to the LFC to compact human wastewater converters called NEWgenerator.

Two types of awards are given – Patents for Humanity awards and Honorable Mentions awards.  Patents for Humanity award recipients are given an acceleration certificate, and of course, public recognition of their work at an awards ceremony sponsored by the USPTO.  The certificate can be used to accelerate a patent application examination, ex parte reexamination, and ex parte appeal to the Patent Trial and Appeal Board.*  Honorable Mentions award recipients receive accelerated examination of one patent application but not other types of matters.

The program is open to patent owners, applicants, licensees (including inventors who haven’t assigned their ownership rights to others), assignees, and exclusive and non-exclusive licensees.  Applicants must describe how they’ve used their patented technology or products to address a humanitarian issue, which, for the competition purposes, is defined as “one significantly affecting the public health or quality of life of an impoverished population.”

Applicants using a patent application as a basis for entry to the competition must show that a Notice of Allowance for one or more claims from that patent application has been issued before any certificate is awarded.  Applicants mainly compete in the following five categories:

  • Medicine: any medical-related technology such as medicines, vaccines, diagnostics, or medical devices.
  • Nutrition: technologies which improve nutrition such as higher yield crops, more nutritious food sources, food preservation, storage, or preparation.
  • Sanitation: improving lives by addressing environmental factors such as clean water, waste treatment, air pollution, and toxic substances.
  • Household energy: technologies providing power to energy-poor homes and communities for household needs like lighting, cooking, and heating.
  • Living standards: technologies that raise living standards to empower people to escape poverty, such as literacy, education, communications, information delivery, access to markets, and microfinance.

Applicants may also team together to submit joint applications explaining actions taken by multiple parties.  However, only one certificate will be issued to the joint applicants, and the certificate can be redeemed for only one matter.

The applications are then judged under one of two criteria: (1) Humanitarian Use (applying eligible technologies to positively impact a humanitarian issue, focusing on demonstrable real-world improvements) and (2) Humanitarian Research (making available patented technologies to other researchers for conducting research with a humanitarian purpose, particularly areas lacking commercial application).

The applications are reviewed and scored by qualified judges outside of the USPTO, and the USPTO forwards the top-scoring applications to participating federal agencies for award recipient recommendations.

As we prepare to bid farewell to a year that will live in infamy, I think it’s fitting to recognize this year’s award recipients: Global Vision 2020; Sisu Global; Sanaria Inc; Flexcrevator; NEWgenerator; Nonspec; Rubitection; and Lawrence Berkeley National Laboratory.  Congratulations!  Perhaps, now more than ever, we need and should honor more innovation that makes progress in human lives.  Keep an eye out for the next awards competition application period.

More information about the Patents for Humanity awards competition can be found at:

https://www.uspto.gov/ip-policy/patent-policy/patents-humanity

For those interested in the details of the Terms and Conditions:

https://www.uspto.gov/sites/default/files/documents/USPTO-P4H-2020Terms.pdf

 

*Inter partes matters and other post-grant proceedings may not be accelerated with the certificate at this time.

 

Maximize Your Patent Portfolio Using Helferich-Style Claims

By Michael Woodward, Harrity Associate

Patent owners often obtain patents to protect products, as well as complementary products or use cases associated with those products. However, when selling or licensing the patented products, a patent owner may inadvertently extinguish potential revenue streams associated with the complementary use cases due to the doctrine of patent exhaustion.

Patent exhaustion follows the basic idea that if a company sells or licenses a patented product to a buyer, the company cannot sue the buyer (or a third party that the buyer provides the patented product to under the license) for patent infringement for using the product. Patent owners should take care when preparing and licensing patents to ensure that infringement claims for complementary products or use cases associated with patented products are not exhausted by the sale or licensing of the patented products, as shown by the Federal Circuit case of Helferich Patent Licensing v. New York Times, 778 F.3D 1293 (Fed. Cir. 2015)…

Keep reading on IPwatchdog.com.

 

 

Automation in the Patent Field: From Fantasy to Reality

By Robert O’Loughlin, Harrity Associate

Before joining Harrity & Harrity, LLP at the beginning of 2020, I would have summarily dismissed the fairy tale that I could be drafting even half as many patent applications as I am regularly drafting today.  But, alas, here I am, bringing the tale to life.

Harrity, as a firm, has mastered a number of factors that play a large role in taking patent application drafting efficiency from fantasy to reality.  Such factors include, for example, employing a uniform writing style across the firm; utilizing a well-organized and uniform second attorney review structure that serves as the gatekeeper for the high level of quality that Harrity’s clients have come to expect from every piece of work product; having attorneys exclusively draft or prosecute applications to focus on and maximize each attorney’s strengths; and incentivizing efficiency with a pay-per-production compensation model.

One particular factor that deserves attention, however, is Harrity’s development and utilization of proprietary automation software.  It certainly has been no secret, as the decades have worn on, that automating tasks can greatly improve efficiency and, as a result, significantly increase output.  And it is no different in the world of patent application drafting.  Automation also improves the quality of the output, and it frees up an attorney to focus on the more substantive aspects of the application.  The automation software, known as Patent Draftr, at my disposal has been game-changing and has played no small role in making my decision to join Harrity life-changing.

Gone are the days of creating and maintaining folder after folder of template applications, file after file of template drawings, and page after page of boilerplate language.  The automation software (“the tools” as we so affectionately refer to them) takes care of these things.  With two or three mouse clicks to select options from a pull-down menu plugged right into my word processing user interface, I can generate a new patent application document, pre-filled with boilerplate language, templates for frequently used descriptions, client-approved formatting, and flags clearly identifying locations that require my attention.  Indeed, in many cases, even many of the personal preferences of a particular client or in-house attorney may already be incorporated into the document from those first two or three mouse clicks.

A few more clicks of the mouse gets me access to a library of client-specific, frequently-used drawings and drawing descriptions.  In the past, building the skeleton of a patent application meant searching for a previously drafted application that described similar subject matter, skimming the application for relevant language and/or drawings, copying the relevant material, pasting it into the new application, changing reference numbers to match the new figures, and removing material specific to the application from which I copied the material.  That process was only slightly more efficient than writing the entire application from scratch.  Now, a few clicks and I’m off and running.

A click here and a click there is all that is required to cause mirrored claim sets directed to statutory subject matter classes of my choice to appear in the document.  Just as easily, I can cause preliminary descriptions of flow charts to populate the document.  Summary paragraphs and an abstract also are mere mouse clicks away.  Before I even place my fingers on the keyboard, Patent Draftr may have prepared more than half the document for me.

I was skeptical at first, but have come to be a believer in “the tools.”  They fit seamlessly within the Harrity workflow to make my life infinitely easier than the days of old.  But I am not the only one that benefits from the “the tools” and the system in which they are employed.  Perhaps the greatest beneficiaries are the clients.  By automating portions of the patent application preparation process that tend to be otherwise menial tasks, “the tools” allow me to focus my time on the most important aspects of the application preparation – the aspects for which my skills and experience are most useful – understanding the invention, drafting the claims, and carefully describing the details of the invention.  The results: (1) a high quality, valuable, and thorough patent application; and (2) a stress-free patent attorney that can spend the evening resting and looking forward to doing it all over again the next day.

 

 

Core Wireless: Parsing the Data on Enforcement Trends Three Years On

By Alexander Zajac, Harrity Associate

To many patent practitioners, the Federal Circuit’s decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. was a watershed moment. In particular, this decision provided that claims directed to “display interfaces” that “improved” on existing interfaces were patent eligible under 35 U.S.C. § 101. In other words, Core Wireless decreased the chances of a court finding a graphical user interface (GUI) patent to be directed to ineligible subject matter and therefore invalid.

We don’t have to look far to see the impact that the nearly-three-year-old Core Wireless decision has had. Almost 100 district court decisions have cited the case since it came down in January of 2019, and nearly 30 inter partes review (IPR) proceedings filed after January of 2019 include citations of Core Wireless by practitioners, the Board, or both…

Keep reading on IPwatchdog.com.

 

 

Product Success Can Show Nonobviousness

By Patrick Hansen, Associate

The U.S. Supreme Court’s KSR decision has left an impression that any claimed invention based on a combination of known, related features is likely obvious under 35 U.S.C. § 103.  The recent Fox Factory, Inc. v. SRAM, LLC (Fed. Cir. May 18, 2020) decision is a heartening reminder that is not always the case.  In Fox Factory, the Federal Circuit affirmed a Board holding that claims 1-26 of U.S. Patent 9,291,250 (‘250 patent) are not unpatentable as obvious under Section 103.  What makes this decision reassuring for patent owners and applicants is that the Federal Circuit upheld SRAM’s ‘250 patent based on objective indicia of nonobviousness (also known as secondary considerations).

Fox Factory and SRAM are bicycle competitors, and SRAM’s ‘250 patent is directed to a single chainring of a bicycle that does not switch a chain between multiple chainrings.  The single chainring has teeth that fit more snugly into chain link spaces, and the single chainring (marketed as “X-Sync”) has been praised for retaining the chain in poor cycling conditions.

As shown in Fig. 1 from the ‘250 patent, link spaces alternate in size (D1 or D2) due to the manner in which pieces of a chain are linked.Claim 1 of the ‘250 patent recites a chainring with wider teeth of a first size that alternates with teeth of a second size, in order to snugly fit into respective outer (D2) and inner (D1) link spaces.  In particular, claim 1 recites that a wider tooth is designed to fill, at the midpoint, at least 80% of an outer link space.

SRAM asserted the ‘250 patent against Fox Factory in the U.S. District Court for the Northern District of Illinois.  In a corresponding inter partes review (IPR) proceeding, Fox Factory cited Japanese patent publication JP S56-42489 (“Shimano”) and U.S. Patent 3,375,022 (“Hattan”).  Shimano describes a chainring with widened teeth for wider link spaces, and Hattan describes filling link spaces between 74.6% and 96% of a space width at the bottom of a tooth.  Fox Factory argued that it would have been obvious to a skilled artisan to see the utility in designing a chainring with widened teeth to improve chain retention and to look to Hattan for filling the link space at least 80%.  However, the Board found that Hattan’s fill percentages applied to the bottom of a tooth rather than the midpoint of the tooth.  Notably, the Board found that SRAM’s evidence of secondary considerations rebutted Fox Factory’s argument that a skilled artisan would nevertheless find it obvious to modify Shimano’s chainring teeth to fill at least 80% of a wide link space at the middle of a tooth.  Judge Lourie, writing for the Federal Circuit panel that included Judges Mayer and Wallach, affirmed the Board’s decision.

As you may recall, the Graham v. John Deere Co., 383 U.S. 1 (1966) analysis includes four factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the patent claims; (3) the level of ordinary skill in the art; and (4) secondary considerations (also known more favorably as objective indicia of nonobviousness).  All four factors are to be evaluated collectively before a conclusion on obviousness is reached, and the burden of proof remains with the patent challenger.  Fox Factory argued that the only difference at issue is the degree to which a wider link space is filled, measured halfway up the tooth.  Fox Factory also argued that the Board erred in presuming a nexus between the claimed invention and evidence of success, arguing that it is the tall hooked teeth that drove the X-Sync chainring to be successful.

While acknowledging that a mere change in proportion may not meet the level of invention required by Section 103, the Federal Circuit agreed with the Board that SRAM’s design of the X-Sync chainring teeth, as claimed, displayed significant invention.  The X-Sync chainring’s success surprised skilled artisans who were skeptical about it solving the long-felt need of chain retention.  In fact, the industry awarded the X-Sync chainring “Innovation of the Year.”

The Federal Circuit found that the X-Sync chainring and the ‘250 claims met the nexus requirement – that a product from which the secondary considerations arose is “co-extensive” with the claimed invention.  The Federal Circuit also stated that the unclaimed features, such as the hooks and protrusions of the teeth, are to some extent incorporated into the >80% fill requirement.  The Federal Circuit concluded that substantial evidence supports the Board’s determination that a nexus exists between the X-Sync chainring’s success and the teeth profile that is essentially the claimed invention.

While Fox Factory does not present any new rule, it is a reminder that patent owners and applicants should keep records indicating a long-felt need and any industry skepticism, as well as records of subsequent success of a product to which claims are directed.  Claim drafters should learn from inventors which features could contribute to a product’s commercial success or acclamation.  Fox Factory reassures us that objective indicia of nonobviousness can still be a meaningful consideration at the Board and the Federal Circuit, even over what may be argued to be routine optimization.

 

Your Licensees’ Patent Marking Program is Also Your Concern

By McCord Rayburn, Associate

As an in-house IP attorney, you may take comfort in knowing that your patent marking program is thorough, well-established, and properly executed. You have standardized procedures to determine which patents cover which products. You monitor product release dates to ensure appropriate marking. You have set up a “virtual marking” website to take advantage of this form of marking established by the America Invents Act (AIA). You regularly update the virtual marking website to remove expired patents and add newly granted patents. Your patent marking program is a well-oiled machine. But what about your licensees’ programs? Do you know anything about your licensees’ programs? Do you even care about your licensees’ programs? Well, you should, and the Federal Circuit recently provided another opinion to remind patent licensors that a licensee’s failure to mark can be costly.

Continue Reading on IPWatchdog.com.

Obvious to Use Common Sense (If You Can Prove It)

By Jafar Ali, Associate

In KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme Court recalibrated the obviousness analysis to (re-)emphasize the relevance of “the background knowledge posted by a person having ordinary skill in the art” when determining whether there would have been an apparent reason to combine and/or modify prior art to arrive at the claimed invention.  Before KSR, the Federal Circuit and lower courts had regularly been applying the so-called “teaching, suggestion, motivation” (TSM) test, which generally required some “teaching, suggestion, or motivation” to combine and/or modify the prior art to support a conclusion of obviousness.  Critically, the Supreme Court held that the TSM test as-applied was a rigid and mandatory rule that improperly limited the obviousness inquiry by denying factfinders (e.g., examiners and juries) recourse to common sense.  KSR changed the obviousness landscape by rejecting the rigidity and formalism of the TSM test and setting forth “an expansive and flexible approach” in which the factual determinations underlying the obviousness analysis could consider “the inferences and creative steps that a person of ordinary skill in the art would employ.”

One question that was not fully resolved in KSR itself, however, was the extent to which a claimed invention could be rendered obvious based on general knowledge or common sense.  Instead, the Court simply stated that the fact-finding supporting an obviousness analysis “should be made explicit” to facilitate review while favorably citing earlier Federal Circuit decisions holding that “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”  In Koninklijke Philips N.V. v. Google LLC, 2019-1177 (Fed. Cir. Jan. 30, 2020), the Federal Circuit clarified that the “general knowledge” of a person having ordinary skill in the art can indeed be relied upon to render a claimed invention obvious, even to supply an admittedly missing claim limitation, provided that the record contains a reasoned analysis and evidentiary support for such general knowledge.

In Philips, the Federal Circuit upheld an inter partes decision of the Patent Trial and Appeal Board (“Board”) finding claims 1-11 in U.S. Patent No. 7,529,806 (“the ’806 patent”) to be invalid as obvious over a single prior art reference.  The representative claim at issue generally related to a method for delivering digital content for playback on a client device.  In particular, the claimed method recited steps to retrieve a next portion of a media presentation during playback of a previous portion, thus reducing delays relative to traditional downloading approaches in which playback cannot begin until the entire media presentation has finished downloading.  Google, in challenging the validity of the ’806 patent, referred to a publication explaining a conventional pipelining scheme to divide a media presentation into multiple segments and play a current segment (Sn) while a next segment (Sn+1) is downloading.  Citing the pipelining scheme and an expert declaration, Google argued, and the Board agreed, that the claimed method was invalid as obvious because the features admitted to be missing from the prior art were within the general knowledge of a person having ordinary skill in the art.

On appeal, the Federal Circuit held that “the skilled artisan’s knowledge [can be considered] when determining whether it would have been obvious to modify the prior art” regardless of the tribunal.  Indeed, citing KSR, the court stated that the obviousness analysis requires an assessment of the “background knowledge possessed by a person having ordinary skill in the art.”  However, reliance on general knowledge or common sense would be improper if based solely upon “conclusory statements and unspecific expert testimony,” and using background knowledge to supply a missing claim limitation should be reserved to cases where the missing limitation is “unusually simple and the technology particularly straightforward.”  In this case, the background knowledge was sufficient to supply the missing claim features because the Board relied upon expert evidence that was corroborated by the literature establishing that pipelining was within the general knowledge of a skilled artisan.

This case provides important context to further refine the impact that general knowledge has on patentability.  One noteworthy aspect is that, in Philips, the party asserting obviousness presented an expert declaration and supporting documentary evidence rather than simply making conclusory statements that a person having ordinary skill in the art would have known about the missing claim features.  Accordingly, if a patent applicant is faced with an obviousness rejection relying upon general knowledge during prosecution, the applicant can challenge the Examiner to produce supporting documentary evidence.  Furthermore, this case reaffirms the importance of having robust backup positions in a patent application, including dependent claims.  Features of independent claims believed to overcome the prior art might be alleged to be within the general knowledge of a skilled artisan in adversarial proceedings when parties asserting invalidity typically devote more resources to finding evidentiary support.  Strong dependent claims provide an avenue for at least some claims surviving in that situation.

 

$750 Million Dollar Patent Infringement Award May Hinge on Whether a Certificate of Correction was Properly Issued to Fix a “Typo”

By Steven Underwood, Counsel

On December 15, 2019, a Los Angeles jury found that Kite Pharma Inc. (“Kite”) had willfully infringed a cancer-treatment patent licensed by Juno Therapeutics Inc. from Memorial Sloan Kettering Cancer Center and Sloan Kettering Institute for Cancer Research (collectively, “MSKCC”), and held that Kite should pay MSKCC $752 million.  The litigation (Juno Therapeutics Inc. et al. v. Kite Pharma Inc., case number 2:17-cv-07639, C.D. Cal.) was widely reported in the press as potentially hinging on whether the patent-in-suit (U.S. Pat. No. 7,446,190) contained a simple “typo.”

During the litigation, Kite argued that the U.S. Patent & Trademark Office (PTO) had erroneously issued a Certificate of Correction (CoC) because the “[t]he mistake corrected by the certificate of correction . . . was not of a clerical or typographical nature and was not of minor character,” as required under 35 U.S.C. § 255.  Kite’s position was that the CoC should not have been granted, and that if the CoC had not been granted, Kite clearly would not infringe the claims of the patent.

In order to understand the nature of the mistake corrected by the CoC, we must briefly consider the claims.  Claim 1 of the patent requires a “nucleic acid polymer encoding a chimeric T cell receptor comprising . . . a costimulatory signaling region [that] comprises the amino acid sequence encoded by SEQ ID NO:6.”  Therefore, infringement of claim 1 can be determined only by reference to the definition of SEQ ID NO:6 (which is provided in the specification of the patent) – and that definition was modified by the CoC (seven bases, out of 328, were deleted).

When the application was filed on May 28, 2003, the SEQ ID NO:6 listing was, as explained by MSKCC to the PTO, incorrect.  On September 4, 2007, after receiving a Notice of Allowance, MSKCC submitted a Request for Continued Examination (RCE) with an Amendment that requested the same changes to the specification that were subsequently requested by the CoC.  In the Amendment, MSKCC argued that the changes were not new matter, since one skilled in the art would have recognized, as clerical errors, the errors being corrected.  As required, a copy of the revised sequence listing on a computer-readable disk was submitted with the Amendment.  However, on November 2, 2007, the Amendment was rejected by the PTO, on the ground that the sequence listing disk submitted with the Amendment was “flawed technically.” After two attempts, in April 2008 MSKCC submitted, along with a corrected paper copy of the sequence listing, a copy of the disk that was accepted, and on November 4, 2008, the patent issued.

However, while the April 2008 submission made corrections that were requested by the PTO, those corrections were made to the original, not the amended, specification.  Consequently, the changes requested in the September 2007 Amendment/RCE were undone by the April 2008 submission.  As summarized in MSKCC’s Request of Correction: “Sequence ID Nos. 4 and 6 in the printed patent therefore contain the same errors that the RCE was filed to address.”  Thus, MSKCC argued, “The resubmission of the incorrect Sequence listing occurred through clerical error . . . and was not made in bad faith. The correction requested does not involve such changes in the patent as would constitute new matter . . . as it was the change that was presented to the Examiner in the initial amendment and arguments filed with the RCE.”

Regardless of the ultimate outcome of this case (an appeal seems likely), the clear takeaway for clients and practitioners is that a second pair of eyes should carefully review each filing with the PTO, including patent applications and responses.  Such a review will substantially reduce the risk of a patent application being filed with the wrong information, and better ensure that any mistakes are properly corrected.  As this case demonstrates, whether errors are properly (and promptly) corrected during prosecution may affect the validity or enforceability of a corresponding patent.

In Design Patents, Claim Language Matters

By Ryan Thelen, Associate

Often when a design patent application is prepared, the primary focus and effort of the drafting process is given to the drawings, while little thought is given to the wording of the actual claim.  However, the Federal Circuit recently issued a decision in a case of first impression in Curver Luxembourg, SARL v. Home Expressions Inc., 2018-2214 (Fed. Cir. Sep 12, 2019), in which the Federal Circuit highlighted how the words in a design patent claim can limit the scope of a design illustrated in a patent drawing.

Curver is the assignee of U.S. design patent no. D677,946 (’946 patent), which claims an “ornamental design for a pattern for a chair.”  However, the drawings of the ’946 patent do not show a chair and merely illustrate an overlapping Y design.  The term “chair” was added to the claim and title during prosecution as a result of an examiner objection to the use of the term “furniture part.”

Curver sued Home Expressions on the basis that Home Expressions sells baskets that incorporate an overlapping “Y” shape that infringes the ’946 patent.  The United States  District Court for the District of New Jersey first construed the scope of the ’946 patent to include the design illustrated in the drawings as applied to a chair, and then determined that Home Expressions’s baskets do not infringe under the “ordinary observer” test.  The District Court reasoned that the scope of the ’946 patent is limited to the article of manufacture listed in the ’946 patent, and found that an ordinary observer would not purchase Home Expressions’s basket with the ornamental “Y” design believing that the purchase was for an ornamental “Y” design applied to a chair, as protected by the ’946 patent.”

On appeal, Curver took issue with the claim construction aspect of the District Court opinion, arguing that the District Court improperly limited the scope of the claim due to the word “chair” in the claim, rather than focusing on the design shown in the drawings in which no chair is present.  35 U.S.C. § 171 permits patent protection for a “new, original and ornamental design for an article of manufacture” (emphasis added), yet no article of manufacture was illustrated in the drawings of the ’946 patent.  Thus, the issue before the Federal Circuit is how to construe the scope of a design patent in which the claimed design is illustrated in the abstract (i.e., is not applied to an article of manufacture in the drawings).

The Federal Circuit held that “claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.”  The Federal Circuit cited various persuasive sources to support its decision, such as Gorham Co. v. White (Sup. Ct. 1871), Ex parte Cady (USPTO 1916), 37 C.F.R. § 1.15, and the MPEP.  The Federal Circuit specifically noted that 37 C.F.R. § 1.15 permits the scope of a design patent to be defined by a combination of the drawings and the language of the design patent.

This case makes clear that when filing and prosecuting a design patent application, applicants and practitioners should ensure that the claimed design is tied to an actual “article of manufacture,” and should carefully choose the words that will be used in the claim, description, and title.

Why a Brief Response is the Best Response to an Office Action

By Rebecca Bachner, Associate

The Federal Circuit recently issued a decision that reminds us of the importance of always remembering prosecution history estoppel when presenting arguments in responses to the USPTO.  Specifically, in Amgen Inc v. Coherus Biosciences Inc., 2018-1993 (Fed. Cir. Jul. 29, 2019)) (“Amgen”), the Federal Circuit highlights how prosecution history estoppel can bar a patent owner from succeeding on its infringement claim under the doctrine of equivalents.

At issue was Amgen’s U.S. Patent No. 8,273,707 which was being asserted against Coherus for infringement.  During prosecution, the USPTO rejected Amgen’s claims as obvious in view of U.S. Patent No. 5,231,178 (“Holtz”).  In response, Amgen presented multiple different arguments.  First, Amgen argued that “the pending claims recite a particular combination of salts. No combinations of salts taught nor suggested in the Holtz et al. patent, nor [are] the particular combinations of salts recited in the pending claims taught nor suggested in this reference.” See Fed. Cir at pgs. 4-5.  Amgen further included a Declaration from the inventor of the ‘707 patent.  “The Declaration did not discuss any salt pairs other than sulfate/citrate, sulfate/acetate, and acetate/citrate—the only claimed pairs in the ’707 patent.”  See Fed. Cir at pg. 5.  The Patent Office issued another rejection and, in a final response, Amgen reiterated that Holtz did not disclose a combination of salts nor did Holtz disclose enhancing the dynamic capacity of an HIC column.  The Amgen patent issued after these arguments were filed.

Amgen filed suit against Coherus alleging infringement of the ‘707 patent under the doctrine of equivalents.  Coherus moved to dismiss Amgen’s complaint under Fed. R. Civ. P. 12(b)(6) stating that Amgen argued that Holtz did not disclose “one of the particular, recited combinations of salts.”  See Fed. Cir at pg. 7.  A magistrate judge issued a report that recommended that Coherus’ motion be granted due to prosecution history estoppel.  The report stated that Amgen “clearly and unmistakably—and indeed, repeatedly—indicated to competitors that it surrendered processes using combinations of salts different from the ‘particular combinations of salts recited in the . . . claims[.]’”  See id.  Therefore, the report found that “prosecution history estoppel bars Amgen from now attempting to reassert surrendered ground involving other combinations of salts.” See id.  The District Court adopted the magistrate judge’s recommendation and granted Coherus’ motion to dismiss.

At the appeal, the Federal Circuit agreed with the lower court’s dismissal.   The Court looked at the prosecution history and noted that “Amgen distinguished Holtz on the basis that Holtz did not teach or suggest the “particular combinations of salts” recited in Amgen’s claims.”   See Fed. Cir at pg. 9.  The Court further noted that “Amgen emphasized “particular” and referred to its particular salts three times in the span of two pages.”  See id.  As to Amgen’s argument that it distinguished from Holtz on the basis of increasing dynamic capacity, the Court states that “while Amgen did assert multiple reasons for why Holtz is distinguishable, our precedent instructs that estoppel can attach to each argument.”  See Fed. Cir at pg. 11.  Importantly, the Court stated that “[t]here is no requirement that argument-based estoppel apply only to arguments made in the most recent submission before allowance.”  See id.

This case is a strong reminder that everything written during prosecution can be used against the patent owner in later litigation.  The fact that “this particular combination” was a non-convincing argument, but still was used against Amgen with doctrine of equivalents shows how careful patent practitioners must be in drafting responses to the USPTO.  Each argument written down is part of the record that can be used against the ultimate patent.  As such, a high emphasis must be placed on having successful interviews with the Examiner.  Examiner interviews should be used at every stage of prosecution.  The Examiner interview is an invaluable way to receive feedback from the Examiner without adding to the written record.  Often, an agreement on claim language can be reached during the Examiner interview.  Based on the agreement, a response can be drafted in a way that minimizes the written record.  As such, Examiner interviews not only help with efficiency but are also a crucial part of obtaining high quality patents.

Matthew Allen, Harrity Team

Statements in Specification May Harm Patent Eligibility

By Matthew Allen, Associate

The Federal Circuit recently issued a decision that indicates how certain types of statements, made in an Applicant’s own specification, can undermine patent eligibility.  Specifically, in Solutran Inc. v. Elavon, Inc., U.S. Bancorp, 2019-1345, (Fed. Cir. Jul. 30, 2019) (“Solutran”), the Federal Circuit highlights how patent eligibility under 35 U.S.C. §101 might turn based on a specification’s background information and statements regarding proposed advancements, or benefits, of an invention .

At issue in Solutran is claim 1 of U.S. Patent No. 8,311,945 (’945 patent), which recites:

A method for processing paper checks, comprising:

a) electronically receiving a data file containing data captured at a merchant s point of purchase, said data including an amount of a transaction associated with MICR information for each paper check, and said data file not including images of said checks;

b) after step a), crediting an account for the merchant;

c) after step b), receiving said paper checks and scanning said checks with a digital image scanner thereby creating digital images of said checks and, for each said check, associating said digital image with said check s MICR information; and

d) comparing by a computer said digital images, with said data in the data file to find matches.

When analyzing the claim under part one of the Supreme Court’s Alice test, the Federal Circuit determined that claim 1 was “directed to the abstract idea of crediting a merchant’s account as early as possible while electronically processing a check.”  In making its determination, the court examined the purported benefits of the ‘945 patent.  Two benefits were identified in the specification: “improved funds availability,” and “outsourcing.”  However, the court noted that while two benefits were identified in the specification, the claims were not limited to an embodiment that resulted in both benefits, stating that “[t]he only advance recited in the asserted claims is thus crediting the merchant’s account before the paper check is scanned.”  In other words, because the claims did not include features that required “outsourcing,” the court considered the only relevant benefit to be “improved funds availability.”

The court determined that the claimed advance (“improved funds availability”) was similar to abstract concepts such as “hedging” and “mitigating settlement risk,” and that “[t]he desire to credit a merchant’s account as soon as possible is an equally long standing commercial practice.”  Thus, the Federal Circuit used the purported advance of the ‘945 patent, as indicated in the specification and supported by the claims, in determining that claim 1 was directed to an abstract idea.  The court also noted that its characterization of claim 1 was appropriate where “the abstract idea tracks the claim language and accurately captures what the patent asserts to be the ‘focus of the claimed advance over the prior art.’”  This further signifies the importance the court placed on the alleged benefits of the application.

When addressing step two of the Alice test, the Federal Circuit used the background of the ‘945 patent against the patentee by stating that “the background of the ’945 patent describes each individual step in claim 1 as being conventional. Reordering the steps so that account crediting occurs before check scanning (as opposed to the other way around) represents the abstract idea in the claim, making it insufficient to constitute an inventive concept.”  In other words, simply re-ordering admittedly known steps will not constitute an inventive concept for purposes of step two of the Alice test.  Thus, the court used the applicant’s own statements in the specification, indicating that certain steps are conventional, to find that the claim was not patent eligible.

This decision provides important lessons about drafting and prosecuting a patent application that may increase the application’s likelihood to survive a §101 challenge.  First, practitioners should make sure that benefits identified in a patent application are exhibited in the claimed embodiments.  The identified benefits should ideally be clearly technical.  Second, practitioners should ensure that the patent application does not include any statements that might be used to argue against the patent eligibility of the claims.  This may include considering whether a detailed background may do more harm than good.

Kenneth Hartmann Harrity Team

Technical Details are Needed to Avoid Patent Eligibility Issues for Patent Applications

By Kenneth Hartmann, Associate

Many patent practitioners have likely found success in overcoming and/or avoiding 35 USC §101 rejections since the USPTO’s Revised Patent Subject Matter Eligibility Guidance was released last January.  However, the Federal Circuit (“the court”) recently made it clear that continued attention and care should be given when drafting patent applications focused on payment systems and/or payment processing.

In Innovation Sciences, LLC v. Amazon.com, Inc. 2018-1495 (Fed. Cir. Jul. 2, 2019) (“Innovation Sciences v. Amazon”) the court determined that a claim to an “online method for a payment server to support online buying over the Internet” in U.S. Reissue Patent No. 46,140 (the ’140 patent) was ineligible under Step 2 of Alice.  More specifically, the court agreed with the district court that the claim was directed to the abstract idea of “securely processing a credit card transaction with a payment server” and that the claim lacked an inventive step, stating that the transmission of credit card payment information through the completion of a purchase are the same as those used in a “conventional Internet transaction system having adequate credit card information security” as admitted in the specification of the ’140 patent.

While Innovation Sciences argued that a “wherein” clause indicating the process involved a switch from a server with less security to a server with more security, the court held that that claim is directed to the abstract idea of “switching.”  The court further mentioned that the claim seeks to capture the broad concept of switching to a more secure server, rather than a “specific way of doing so.”  For Step 1 of the Alice test, the court indicated that the claim may have avoided being directed to an abstract idea if the claim and/or specification had indicated a specific way of carrying out the switch from a less secure server to a more secure server.

Patent applications directed to payments or other financial related processes will likely continue to receive the highest level of scrutiny with respect to patent eligibility due to the Alice decision being based on a financial/business method patent application.  The fact is, many of these patent applications and/or patents likely involve novel technical features, communications, and/or processes that were overlooked and/or not considered when the patent application was drafted.  In Innovation Sciences v. Amazon, the court specifically referred to a lack of detail with respect to switching between a less secure server and a more secure server.  In fact, the word “switched” is mentioned only ONCE in the specification and ONCE in a flowchart.  It is no wonder that the court found Innovation Science’s arguments regarding the switch between servers to be futile.

The ’140 patent claims priority to a patent application filed back in April 2000.  That was obviously a different era of patent preparation and prosecution.  Today, patent practitioners should consider and outline the technical aspects of processes (especially business method processes) without taking for granted that one or more steps of the process are inventive, in and of, themselves.  Clearly, the switch between servers, considered to be one step in the overall process for performing an online method for a payment server, involved its own processes and/or steps.  How/when was the decision made to switch the servers?  What parameters were used to select the new server?  How were those parameters analyzed to make the selection? What types of communications (and/or how many) were needed to perform the switch?  Again, it was a different era of drafting patent applications in 2000.  However, if the patent application drafter was able to predict the future, those are just a few example questions that, if answered in the claim and/or specification, would have improved Innovation Sciences’ case for patent eligibility.  Moreover, to have the best chances of success, patent drafters should continue to discuss the technical problems solved by these processes (and/or by the steps of the processes) and any corresponding technical benefits.

Recent Court Decisions Weigh in on Prior Art Standard in Patent Law

By Jonathan Goodman

Is a printed publication that predates a patent application always considered prior art?  Many may think that a reference published, and available to the public, prior to a patent application’s filing date is prior art.  While this is usually the case, recent court decisions have highlighted exceptions to this standard.

Courts Clarify What Constitutes Prior Art

In GoPro, Inc. v. Contour IP Holding LLC,  2017-1894, 2017-1936 (Fed. Cir. July 27, 2018) (“GoPro”), the Federal Circuit determined that a catalog distributed at a trade show open only to dealers of action sports vehicles was prior art to patents relating to action sports video cameras.  Particularly, the Court noted that the trade show’s focus on action sports vehicles did not preclude persons of ordinary skill in the art from attending because a primary purpose of action sports cameras is for use on action sports vehicles.

GoPro clarifies that a printed publication disclosed at a trade show is publicly accessible within the meaning of section 102 even if the trade show is not aimed at persons of ordinary skill in the relevant art.  While GoPro takes an expansive view, practitioners seeking to overcome a printed publication distributed at a trade show, conference, meeting, or similar gathering may still find success arguing that the printed publication was not publicly accessible when there is no credible reason that a person of ordinary skill in the relevant art would have been in attendance.  For example, a slight change to the facts in GoPro, such as the cameras at issue being used for portrait photography rather than action sports photography, may have persuaded the Court to find that the catalog was not publicly accessible.

In Acceleration Bay, LLC v. Activision Blizzard Inc., 2017-2084 (Fed. Cir. Nov. 6, 2018), the Federal Circuit found that an article published on a university website was not prior art to later-filed patents because the website only indexed articles by author and year, and lacked a reliable search function.  Specifically, the Court noted that the test for public accessibility is not whether a reference has been indexed, but whether the reference was indexed in a meaningful way that would permit a person of ordinary skill in the art to locate it.

It is worth noting that the university website at issue in Acceleration Bay was from 1999 and may have lacked competent search functionality that is now commonplace.  Moreover, today, articles published on a website likely would be keyword indexed by a search engine, thus making it difficult to argue against public accessibility regardless of the manner of indexing performed by the website.  Nevertheless, practitioners should be mindful that articles published on a website are not necessarily publicly accessible if it can be shown that no meaningful indexing of the article was performed.  In particular, if an article is not keyword indexed by the publishing website or a search engine—which may occur if the website prevents pages from being indexed by search engine crawlers—it may indicate that the article was not publicly accessible.

Key Takeaways

Although not every printed publication is considered prior art under Section 102, the growing ease with which nearly all printed material is easily accessible online makes that determination less and less likely.  Thus, when filing and prosecuting patent applications, practitioners should be wary of withholding references from the USPTO in reliance on prior art exceptions, such as those implied by GoPro and set forth in Acceleration Bay.

Kenneth Hartmann Harrity Team

Case Summary of Data Engine Technologies LLC v. Google LLC

By Ken Hartmann

Data Engine Technologies LLC v. Google LLC, 2017-1135 (Fed. Cir. Oct. 9, 2018) is an appeal from the district court for the District of Delaware (No. 1:14-cv-01115-LPS).  The district court held that the asserted claims of Data Engine Technologies’ (DET) US patents are ineligible under 35 USC §101.  This decision was based on finding that the asserted claims are directed to abstract ideas and fail to provide an inventive concept.

The patents at issue are U.S. Patent Nos. are 5,590,259; 5,784,545; 6,282,551; and 5,303,146.  The first three patents (referred to herein as “the Tab Patents”) are directed to electronic spreadsheets with tabs used to identify the spreadsheets and navigate between the spreadsheets.  The fourth patent (referred to herein as “the ‘146 patent”) is directed to identifying changes to spreadsheets.  This case law study analyzes the decision made by the court regarding the Tab Patents.

The Tab Patents are titled “Systems and Methods for Improved Spreadsheet Interface With User-Familiar Objects” and share a substantially common specification.  The Tab Patents describe a three-dimensional, electronic spreadsheet:

that includes a number of tabs to navigate through different two-dimensional matrices of the spreadsheet:

where each of the tabs include identifiers that enable access to information on the respective spreadsheets.

The Tab Patents describe the tabs as familiar, user-friendly interface objects to navigate through spreadsheets while circumventing arduous process of searching for, memorizing, and entering complex commands.  Accordingly, the Tab Patents present the tabs as a solution to problems that users had 25 years ago when navigating through complex spreadsheets, finding commands associated with the spreadsheets, manipulating the spreadsheets, etc.  Several articles associated with Quattro Pro (the commercial embodiment based on the claimed method and systems) were published that touted the usefulness of the technology in the Tab Patents.

DET filed suit against Google, asserting claims from the Tab Patents.  The district court considered claim 12 of the ‘259 patent as representative of all asserted claims of the Tab Patents.  Claim 12 of the ‘259 patent included the following features:

while displaying [a] first spreadsheet page, displaying a row of spreadsheet page identifiers along one side of said first spreadsheet page, each said spreadsheet page identifier being displayed as an image of a notebook tab on said screen display and indicating a single respective spreadsheet page, wherein at least one spreadsheet page identifier of said displayed row of spreadsheet page identifiers comprises at least one user-settable identifying character.

Google filed a motion for judgment on the pleadings under Federal Rule of Civil Procedure 12(c), arguing that the asserted claims of the Tab Patents are directed to patent-ineligible subject matter under § 101.  The district court granted the motion with respect to the Tab Patents, concluding that representative claim 12 is “directed to the abstract idea of using notebook-type tabs to label and organize spreadsheets” and that claim 12 “is directed to an abstract idea that humans have commonly performed entirely in their minds, with the aid of columnar pads and writing instruments.”  Further, the district court did not find that any features of claim 12 recited an inventive concept.

On appeal, the Court of Appeals for the Federal Circuit (the Court) analyzed whether the Tab Patents are patent eligible under §101 according to the two-step test of Alice Corp. v. CLS Bank International (“the Alice test).   In performing this analysis, the Court performed a de novo review of the Tab Patents and the evidence (including the articles about Quattro Pro) submitted to the district court.

The Court disagreed with Google, except with respect to claim 1 of the ‘551 patent.  Claim 1 of the ‘551 patent recites:

In an electronic spreadsheet for processing alphanumeric information, said […] electronic spreadsheet comprising a three-dimensional spreadsheet operative in a digital computer and including a plurality of cells for entering data and formulas, a method for organizing the three-dimensional spreadsheet comprising:

partitioning said plurality of cells into a plurality of two-dimensional cell matrices so that each of the two-dimensional cell matrices can be presented to a user as a spreadsheet page;

associating each of the cell matrices with a user-settable page identifier which serves as a unique identifier for said each cell matrix;

creating in a first cell of a first page at least one formula referencing a second cell of a second page said formula including the user-settable page identifier for the second page; and

storing said first and second pages of the plurality of cell matrices such that they appear to the user as being stored within a single file.

Note that claim 1 of the ‘551 patent does not include an “implementation of a notebook tab interface” as recited in representative claim 12 of the ‘259 patent.

In disagreeing with the district court and Google on representative claim 12 (and the remaining claims of the Tab Patents other than claim 1 of the ‘551 patent), the Court determined that claim 12 recites “a specific structure (i.e., notebook tabs) within a particular spreadsheet display that performs a specific function (i.e., navigating within a three-dimensional spreadsheet).”  The Court asserted that claim 12 claims a particular manner of navigating three-dimensional spreadsheets, implementing an improvement in electronic spreadsheet functionality.  The Court frequently referred to the benefits described in the specification with respect to navigating through the spreadsheets.  For example, the Court identified that claim 12 recited a structure that enables a user to avoid “the burdensome task of navigating through spreadsheets in separate windows using arbitrary commands.”

Further, the Court rejected Google’s notion that the claims merely cite “long-used tabs to organize information” and that such tabs are common in physical notebooks, binders, file folders, etc.  The Court stated that it is not enough to simply point to a real-world analogy of the electronic spreadsheet because eligibility is not based on such concerns.  Notably, the court acknowledged that those concerns are reserved for §102 and §103.  As such, the Court determined that claim 12 was not directed to an abstract idea, and thus was patent eligible according to step 1 of the Alice test.

On the other hand, during review of claim 1 of the ‘551 patent, the Court concluded, under step 1 of Alice test, that the above claim is directed to the abstract idea of “identifying and storing electronic spreadsheets.”  As mentioned above, claim 1 does not recite the notebook tab structure, but simply “associating each of the cell matrices with a user-settable page identifier which serves as a unique identifier for said each cell matrix.”  The Court concluded that claim 1 of the ‘551 patent does not recite the specific implementation of a notebook tab interface.  Furthermore, the Court concluded under step 2 of the Alice test that the additional features did not provide an inventive concept as the claim merely recites “partitioning cells to be presented as a spreadsheet, referencing in one cell of a page a formula referencing a second page, and saving the pages such that they appear as being stored as one file.”

This case provides a few practice insights for practitioners with a noticeable compare/contrast result between claim 12 of the ‘259 patent and claim 1 of the ‘551 patent.  First of all, it is important to identify any functionality that a particular feature of a claim may have.  Though an “identifier” may “identify,” such a feature is considered abstract.  The identifier in the Tab Patents included the function of enabling navigation between the tabs and reference to other information in spreadsheets associated with the tabs.  Including that functionality likely would have swayed the court to find the ‘551 patent eligible as well.  Additionally, the Court frequently referred to the benefits of the tabs.  These benefits included removing burdens on the user.  As such, it obviously would not hurt to acknowledge such benefits when preparing patent applications.  Best practices would also involve including and/or discussing any technical benefits that the tabs may have provided.  For example, among other technical benefits, the tabs may have conserved processing resources associated with navigating to other spreadsheets by enabling a single click of the tab, rather than navigating multiple clicks through menus and/or windows to reach other spreadsheets.

Download Data Engine Technologies LLC v. Google LLC

Ted Nissly, Harrity Team

Case Summary of Natural Alternatives v. Andrei Iancu

By Ted Nissly
October 17, 2018- Case Summary of Natural Alternatives v. Andrei Iancu

On October 1, 2018, the Federal Circuit issued an opinion regarding the removal of a priority claim in an application, of a chain of applications, and its detrimental effect on the priority claims of pending and subsequently filed applications in the chain.  In Natural Alternatives International v. Andrei Iancu, No. 2017-1962 (Fed. Cir. Oct. 1, 2018), the court affirmed the Patent Trial and Appeal Board’s (“PTAB”) final determination in an inter partes reexamination affirming an examiner’s rejection of the challenged claims of U.S. Patent No. 8,067,381 (“the ’381 patent”) as anticipated by or obvious over cited prior art, including a parent of the ’381 patent, because the ’381 patent could not claim priority to the parent.

Natural Alternatives International (NAI) filed a chain of eight U.S. patent applications between 1997 and 2011.  NAI filed the first application on August 12, 1997 and included a priority benefit statement under 35 U.S.C. § 120 to the first application in each subsequent patent application of the chain.  On April 10, 2003, NAI filed a provisional application while the fourth application in the chain was still pending.  On November 18, 2003, NAI filed the fifth application as a continuation-in-part of the fourth application.  The fifth application claimed priority to the first through fourth applications and the provisional application.  On August 29, 2008, NAI filed a sixth application that claimed priority to the first through fifth applications and the provisional application.  The court noted that at the time NAI filed the sixth application, the fifth application and the sixth application correctly claimed priority to the August 12, 1997 filing date of the first application.

On September 2, 2008, four days after filing the sixth application, NAI amended the benefit claim of the fifth application to claim priority under 35 U.S.C. § 119(e) to only the provisional application as an attempt to extend the potential patent term of the fifth application.  NAI subsequently filed the seventh and eighth patent applications that claimed priority to the first through fifth applications and the provisional application.  The eighth patent application issued as the ’381 patent on November 29, 2011.

In December 2011, NAI and Woodbolt Distributors (“Woodbolt”) became involved in litigation concerning the ’381 patent.  In May 2012, Woodbolt sought inter partes reexamination of the asserted claims of the ’381 patent.  Woodbolt’s request alleged that “the asserted claim to priority of the ’381 patent is defective” because NAI “deliberately and expressly terminated [its] claim to the priority of the first four applications[,]” which thus “broke[] the chain of priority between” the fourth and fifth applications.  NAI did not dispute that it had waived priority to the first through fourth applications when it amended the fifth application, but rather argued that the sixth application maintained priority to the first application because the sixth application’s priority claim was never amended.  Accordingly, NAI maintained that the sixth application became entitled to the first application’s filing date before it amended the fifth application.  The examiner rejected the asserted claims of the ’381 patent in view of prior art that included U.S. Patent No. 5,965,596 (i.e., the patent that issued from the first application.)

NAI appealed the examiner’s decision to the PTAB, which affirmed the examiner’s rejection.  The PTAB determined that because NAI deleted the claim of priority to the fourth application in the fifth application and the eighth application claimed priority to the first application via the fifth application, the eighth application was not entitled to the priority claims of the fourth through first applications.  NAI appealed the PTAB’s priority determination to the Federal Circuit.

APPLICATION CHAIN

Application Chain for Natural Alternatives v. Andrei Iancu

On appeal, NAI asserted four arguments: (1) that priority to the first application “vested” with the sixth application once the sixth application satisfied the criteria of 35 U.S.C. § 120; (2) waiver of priority in an application is limited to the instant application (i.e. that application with the amended priority claim) and does not extend to subsequent applications; (3) priority is not a single growing chain, but rather multiple fixed chains; and (4) the PTAB’s view on priority limits an applicant’s ability to amend a priority claim to gain patent term.

Regarding NAI’s first argument, the court explained that a patent application is “not entitled to an earlier priority date merely because the patentee claims priority,” but rather “the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120.” citing In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011) (emphasis in opinion).  The court also noted that its decision in In re Janssen Biotech, 880 F.3d 1315 (Fed. Cir. 2018) was instructive.  In that case, where an applicant attempted to delete a priority claim of an application during reexamination, the court explained that amending the priority claim of an earlier-filed parent application may affect the priority of its child applications.  Accordingly, the court here found that the PTAB “did not err in determining that the ’381 patent was not entitled to claim the benefit of the filing date of the first application under § 120, as the priority claim in the ’381 patent was defective from the start.”

Regarding NAI’s second argument, NAI averred that under Manual of Patent Examining Procedure (MPEP) § 201.11, altering a claim of priority “applies only to the instant application—not other, … applications.”  The court noted, however, that the MPEP “does not have the force of law.” citing Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995).  Regardless, the court rejected NAI’s second argument because the text of MPEP § 201.11 does not limit “the scope of waiver to only the instant application.” (emphasis in opinion).  Regarding NAI’s third argument, the court cited the Supreme Court’s decision in Godfrey v. Eames, 68 U.S. 317, 326 (1863), which held that “parent and continuing applications ‘are to be considered as parts of the same transaction, and both as constituting one continuous application” to support the court’s finding that priority is “a single chain, growing with each additional continuation.”

Regarding NAI’s fourth argument, the court noted a natural trade-off exists between priority and patent term.  The court explained that an “uncommon but permissible way for patent applicants to avoid losing term [for a patent application] . . . is to disclaim the benefit of earlier filing dates” which in turn makes the patent application’s “children become vulnerable to rejections based on a larger pool of prior art—including former parent applications in some cases.”  The court therefore rejected NAI’s attempt to gain patent term for the fifth application while maintaining the priority claims of its children.  Accordingly, the court affirmed the PTAB’s final decision invalidating the challenged claims of the ’381 patent.

This case highlights some potential pitfalls to consider when deciding whether to amend a patent application’s priority claim.  A practitioner may understand the limiting effect the amendment has on the priority of the amended patent application, but she must also keep in mind that the amendment may irreversibly limit the priority of any child application of the amended patent application too.  To ensure that a priority claim is not lost, the practitioner should consider maintaining the priority claim in currently pending applications, especially applications with pending child applications, and filing a new continuation and/or continuation-in-part with a different priority claim.  In this way, the claim of priority can be protected for the chain of currently pending patent applications and a longer patent term can be pursued for the new application.

Download Natural Alternatives v. Andrei Iancu

William Gvoth Harrity Team

Case Summary of GoPro, Inc. v. Contour IP Holding LLC

By William Gvoth
September 27, 2018- Case Summary of GoPro, Inc. v. Contour IP Holding LLC

GoPro, Inc. v. Contour IP Holding LLC, 2017-1894, 2017-1936 (Fed. Cir. July 27, 2018) (“GoPro”) is an appeal from the Patent Trial and Appeal Board (PTAB) (Nos. IPR2015-01078, IPR2015-01080). At the PTAB, GoPro, Inc. challenged two patents owned by Contour IP Holding LLC as obvious in light of a GoPro catalog that GoPro distributed at a trade show in July of 2009. The PTAB found against GoPro, Inc. in the challenge. This decision was based on finding that the GoPro catalog was not prior art for the claims of the patents owned by Contour IP Holding LLC.

The patents at issue are U.S. Patent Nos. 8,890,954 (the ‘954 patent) and 8,896,694 (the ‘694 patent), which have a common specification. The common specification of these patents generally describe video cameras or camcorders that can be controlled remotely (e.g., for remote image capture and/or viewing). Specifically, these patents claim use of global positioning system (GPS) technology to track a location of a camera and/or a camcorder during use and further describe use a wireless connection to facilitate remote control of the camera and/or the camcorder. The common specification of these patents further describe that the claimed device can be deployed in areas that do not permit easy use by an individual, such as in a sports scenario. Both patents claim priority to a provisional application filed on September 13, 2010, resulting in a one year prior art date of September 13, 2009.

In July of 2009, GoPro, Inc. attended the Tucker Rocky Dealer Show (the trade show) hosted by Tucker Rocky Distributing, a trade organization related to off-road, all-terrain-type vehicles and related products (e.g., snowmobiles, ATVs, etc.). The trade show was attended by numerous dealers and there were over 1000 attendees, including some potentially interested in video cameras and/or camcorders. There was no evidence presented to the PTAB that the 2009 trade show was advertised to the public, nor was the trade show open to the public. At the trade show, GoPro, Inc. distributed copies of its catalog for its HD Motorsports HERO camera. The catalog described the camera as a “1080p [high-definition (HD)] wearable camera [with] optional wireless remote with an omni-directional range of 30 feet.” In addition, the catalog included several images of the camera and wireless remote, including an image showing attachment of the camera to a helmet (specifically a motocross/ATV-type helmet).

In analyzing the evidence presented, the PTAB determined that a bachelor’s degree in computer science, electrical engineering, and/or the like and experience with video cameras and/or cameras (e.g., creating, programming, etc.) constituted the ordinary skill in the art. Next the PTAB determined that the GoPro, Inc. catalog was not a prior art printed publication by applying Blue Calypso v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016). In making this determination, the PTAB found that the trade show at which the GoPro catalog was distributed was not advertised or announced to the public, such that a person of ordinary skill in the art would have known about it, and in addition, the trade show was not publicly accessible and was only open to members of the Tucker Rocky Distributing trade organization. Essentially, the PTAB failed to see how the general public would have obtained the GoPro catalog from the trade show, especially in light of the fact that the trade show was closed to the general public and was for dealers only. Further, the PTAB did not find any evidence that the catalog was distributed at the show to any persons of ordinary skill in the art, or that any one of such skill was actually in attendance (besides

GoPro’s representatives at the trade show) given that the trade show was focused on off-road, all-terrain-type vehicles and related products.
On appeal, the Court of Appeals for the Federal Circuit (the Court) analyzed whether the catalog constituted a printed publication under 35 U.S.C. 102(b) (Pre-AIA). In performing this analysis, the Court performed a de novo review and reviewed the PTAB’s factual findings for substantial evidence. Under section 102(b), “a person shall be entitled to a patent unless the invention was described in a printed publication more than one year prior to the date of application for the patent in the United States.” Contour IP Holding LLC did not dispute any of the evidence presented regarding distribution of the catalog, nor did they dispute that the trade show occurred more than one year before the application for patent of the ‘954 and ‘694 patents. As such, the issue before the Court was “whether the GoPro catalog was sufficiently accessible as contemplated under 102(b).

The Court agreed with GoPro, Inc.’s argument that the evidence submitted was sufficient to establish that the GoPro catalog was publicly accessible. Citing Medtronic v. Barry, 891 F.3d 1368 (Fed. Cir. 2018), the Court found that the PTAB relied too heavily on the target audience of the distributed GoPro catalog in finding that the GoPro catalog was not publicly accessible. In addition, the Court stated that the PTAB failed to consider other factors, such as “the nature of the conference or meeting at which material is distributed, whether there are restrictions on public discourse of the information, expectations of confidentiality, and expectations of sharing the information.”

In examining these factors, the Court noted that there was no restriction on distribution of the GoPro catalog at the trade show and that the GoPro catalog was freely on display for anyone in attendance. The Court further rejected the notion that the trade show’s focus on “action sports vehicles is not preclusive of persons ordinarily skilled in the art from attending to see what POV digital cameras were being advertised and displayed.” Similarly, the Court found that the patents at issue described that “a primary purpose of POV cameras is for use on vehicles in extreme action environments, such as the ones advertised at the Tucker Rocky Dealer Show.” With regard to attendees of the of the trade show, the Court determined that nothing about the trade show would have excluded cameras, camcorders, or related products from the trade show, and that it would have been likely for people attending the trade show to be interested in such products. Lastly, the Court determined that the vendor lists for the trade show included a number of vendors that would have likely been involved in selling and/or producing cameras and/or camcorders of the type shown and described in GoPro’s catalog.

Based on these determinations, the Court determined that “a dealer show focused on extreme sports vehicles is an obvious forum for POV action sports cameras,” and that “dealers of POV cameras would encompass the relevant audience such that a person ordinarily skilled and interested in POV action cameras, exercising reasonable diligence, should have been aware of the show,” despite the trade show not being open to the general public or advertised to the general public. In addition, the Court determined that the lack of restrictions placed on the dissemination of the GoPro catalog indicates that the GoPro catalog was “intended to reach the general public.” As such, the Court concluded that the GoPro catalog was a printed publication under 102(b) and that the GoPro catalog was prior art for purposes of the patents at issue. The Court remanded to the PTAB for an obviousness determination in light of the GoPro catalog.

This case provides a few practice insights for practitioners. This case highlights that when working with clients, practitioners should broadly interpret non-confidential disclosures of material as public disclosures. Despite the closed nature of the trade show and the lack of evidence that any persons skilled in the art, outside of GoPro, Inc.’s attendees, attended the trade show, the Court nonetheless found that dissemination of the GoPro catalog at the trade show constituted a prior art reference under 102(b). Similarly, this case highlights that a public disclosure can occur as long as the distributed material is not restricted from reaching the general public. Even if the material is not necessarily distributed to anyone of ordinary skill in the art, as long as there are no restrictions on further dissemination by those individuals, a court may find that such dissemination is a public disclosure as the material could, in theory, reach someone skilled in the art. As such, practitioners should work with clients to determine the exact nature of past or future disclosures of invention-related material for purposes of identifying relevant public disclosures.

Download GoPro, Inc. v. Contour IP Holding LLC

Rebecca Bachner, Harrity Team

Case Summary of SAP America, Inc. v. InvestPic, LLC

By Rebecca Bachner

In SAP America, Inc. v. InvestPic, LLC, 2017-2081 (Fed. Cir. May 15, 2018), the Federal Circuit (“the Court”) agreed with the U.S. District Court for the Northern District of Texas (the “District Court”) that the claims of U.S. Patent No. 6,349,291 (“the ‘291 patent”), were invalid because their subject matter is invalid under 35 U.S.C § 101 (“Section 101”).

The ‘291 patent is directed to calculating and analyzing investment data in order to generate a resampled distribution.  In 2016, SAP America, Inc. filed a declaratory judgment alleging the that ‘291 patent was invalid and moved for a judgment on the pleadings on that ground.  In May 2017, at the judgment on the pleadings, the District Court granted the motion and held all claims ineligible under Section 101 and hence invalid.  The District Court concluded that the claims were directed to performing statistical analysis based on the language in the claims and the mathematical calculations in the written description and dependent claims.  InvestPic, LLC appealed the grant of the motion.

On the merits with regards to the claims of the ‘291 patent, the Court found, as did the District Court, that the claims in the ‘291 patent are ineligible under Section 101.  The Court stated that “[w]e may assume that the techniques claimed are ‘groundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility.” Ass’n for Molecular Pathology v. Myriad Genetics Inc, 569 U.S. 576, 591 (2013).  The Court reiterated that overcoming novelty and non-obviousness is not enough and that “[t]he claims here are ineligible because their innovation is an innovation in ineligible subject matter.”  SAP America, Inc. v. InvestPic, LLC at p. 3.  The Court said that the subject matter is nothing but a series of mathematical calculations and the presentation of the results in the plot of a probability distribution function.

To make this determination, the Court looked to the patent’s description of existing practices being improved by the ‘291 patent.  The ‘291 patent discusses that conventional financial information websites perform rudimentary statistical functions relying on a false presumption of a probability distribution and that the patent proposes a technique that “utilizes resampled statistical methods for the analysis of financial data.”  The patent then discusses using a bootstrap method and bias parameters.

The Court then looked to the independent claims.  Independent claims 1 and 11 are method claims and claim 22 is a system claim.

Claim 1: A method for calculating, analyzing and displaying investment data comprising the steps of:
(a) selecting a sample space, wherein the sample space includes at least one investment data sample;
(b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process; and,
(c) generating a plot of the distribution function.

Claim 11: A method for providing statistical analysis of investment data over an information network, comprising the steps of:
(a)storing investment data pertaining to at least one investment;
(b)receiving a statistical analysis request corresponding to a selected investment;
(c)receiving a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling processing; and
(d)based on upon investment data pertaining to the selected investment, performing a resampled statistical analysis to generate a resampled distribution.

Claim 22: A system for providing statistical analysis of investment information over an information network comprising:
a financial data databased for storing investment data;
a client database;
a plurality of processors collectively arranged to perform a parallel  processing computation, wherein the plurality of processors is adapted to:
receive a statistical analysis request corresponding to a selected investment;
based upon investment data pertaining to the elected investment, perform a resampled statistical analysis to generate a resampled distribution; and
provide a report of the resampled distribution.

 

Upon reviewing the claims, the Court found them directed to abstract ideas.  The Court found this case to be similar to Electric Power Group v. Alstom S.A. 830 F.3d 1350 (Fed. Cir. 2016) as the claims select certain information, analyze it using mathematical techniques and report or display the results of the analysis.

The Court distinguished this case from McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) by stating that McRO was directed to the creation of something physical and the improvement was to how the physical display operated.  However, the claims in the ‘291 patent claimed an improvement to a mathematical technique with no improved display mechanism.  The Court further distinguished these claims from McRO stating that McRO had the specificity required to transform a claim from claiming only a result to claiming a way of achieving it.  Similarly, the Court stated that Thales Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017) taught an improvement of a physical tracking system.

In contrast, the Court stated, the focus of the claims in the ‘291 patent is not a physical-realm improvement, but an improvement in the selection and mathematical analysis of information followed by reporting or displaying the results.  The Court stated that it did not matter as to whether the information claimed is information about real investments as the limitations were not enough to make the collection or analysis of that information not abstract.

Further, the Court also distinguished the claims in the ‘291 patent from the results of the first test of the Alice inquiry in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC., 827 F.3d 1341 (Fed. Cir. 2016), stating that those claims were directed to improvements in the way the computers and networks carry out their basic functions.  Alice Corp Pty. Ltd v. CLS Bank Int’l, 134 S.Ct 2347 (2014).  The Court said that the claims of the ‘291 patent are directed to improved mathematical analysis and that the technology used can be off-the-shelf computer technology.  As such, the claims of the ‘291 patent did not meet the first test of the Alice inquiry.

Looking to the second test of the Alice inquiry, the Court concluded that there is nothing in the claims sufficient to transform them to patent eligible and that the claims in the ‘291 patent are merely an advance of mathematical techniques in finance.  As such, the Federal Circuit agreed with the District Court that the claims of the ‘291 patent lack subject matter eligibility.

This case illustrates the importance of having claims that are specific and solve a technical problem.  Furthermore, the decision in SAP America, Inc. v. InvestPic, LLC emphasizes the importance of having claims focused on advancements in an area of technology.

Download Case Summary of SAP America, Inc. v. InvestPic, LLC. 

Peter Glaser Team

Case Summary of Vivint, Inc. v. Alarm.com Inc.

By Peter Glaser and So Ra Ko
August 22, 2018- Case Summary of Vivint, Inc. v. Alarm.com Inc.

In Vivint, Inc., v. Alarm.com Inc., 2017-2076 (Fed. Cir. July 26, 2018), the Federal Circuit (“the Court”) affirmed an inter partes review decision of the U.S. Patent Trial and Appeal Board (“the PTAB”) that the claims of U.S. Patent No. 6,924,727 (“the ‘727 patent”), were invalid because their subject matter is invalid under 35 U.S.C § 103 (“Section 103”).

The ‘727 patent is directed to a method that allows a user to remotely control electronic devices located in the user’s home.  The United States Patent and Trademark Office (“USPTO”) issued the ‘727 patent in 2005 with a priority date in 2001.  Independent claim 1 is representative (emphasis added):

A method for remote control of home-located electronic devices, comprising the steps of:
receiving, at a management facility, from a terminal via a network, a request signal and a terminal identifier that identifies said terminal;
identifying, in said managing facility a server, said server being identified by a server identifier that corresponds to said terminal identifier;
obtaining, in said management facility, from said server via said network, status information and said server identifier, said status information indicative of the status of home-located electronic devices controlled by said server;
generating display information for said terminal dependent upon the performance of said terminal, wherein said display information includes the status of said home-located electronic devices based on said status information and a prompt for input of a control instruction for said home-located electronic devices, said terminal being identified by said terminal identifier, said terminal identifier corresponding to said server identifier;
transmitting said display information from said management facility to said terminal;
displaying, with said terminal, a screen showing the status of said home-located electronic devices and a screen to prompt for input of a control instruction of said home-located electronic devices on the basis of the received display information;
transmitting, by said terminal, said terminal identifier and first control information;
generating, by said management facility, second control information that directs said server to perform control of said home-located electronic devices, on the basis of said first control information;
transmitting, by said management facility, said second control information to said server, said server being identified by said server identifier that corresponds to said terminal identifier, and
controlling, by said server, said home-located electronic devices on the basis of said second control information.

In 2015, Vivint sued Alarm.com in United States District Court for the District of Utah (“the District Court”) alleging infringement on 6 patents relating to smart home technology, and Alarm.com challenged 5 of the 6 patents in an inter partes review.  The District Court stayed the infringement suit pending results of the inter partes review.  The PTAB concluded that the claims were obvious in view of two earlier patents directed to internet-based home communications system.  Vivint appealed the finding of obviousness arguing that the PTAB misconstrued a term of the claims by departing from the term’s plain meaning.

The PTAB adopted Alarm.com’s proposed construction of “terminal identifier” to mean “an identifier associated with a terminal that enables the home network management facility to identify or communicate with the terminal” rather than “an identifier associated with a terminal that enables a terminal to be identified” as proposed by Vivint.  The PTAB based this construction on several grounds.  First, the ‘727 patent did not include an explicit definition of a “terminal identifier.”  Second, the claims of the ‘727 patent recite “a terminal identifier that identifies said terminal” and “said terminal identifier to determine at least one of a display capability or a communication capability of said terminal,” which the PTAB found instructive in construing a terminal identifier as identifying a terminal and being used to determine a format of information that is to be communicated to a terminal.  Further, the ‘727 patent’s claims recite “wherein said identifier is a manufacturer model identifier of said remote terminal,” which the court indicated is informative in identifying a manufacturer model identifier as a type of terminal identifier.  Third, the PTAB confirmed that the specification of the ‘727 patent recited that the ‘727 patent did not intend to limit an identifier to a specific type of identifier, such as an alphanumeric number or a unique identifier specific to a device.  Fourth, the PTAB found that a definition of “server identifier” was relevant to a definition of “terminal identifier” insofar as each was a type of “identifier” distinguished by the entity being identified.  See Chamberlain Grp., Inc. v. Lear Corp., 516 F.3d 1331, 1337 (Fed. Circ. 2008).  Here, the term “server identifier” was construed parallel to a terminal identifier as “an identifier associated with a home server that enables the home network management facility to identify or communicate with the home server” and this construction was unchallenged, resulting in it being applied to the construction of the “terminal identifier.”

Based on this construction, the PTAB found that U.S. Patent 6,580,950 (“Johnson”) and U.S. Patent 6,161,140 (“Moriya”) independently taught “receiving, at a management facility, … a terminal identifier” (“the terminal identifier limitation”).  The PTAB found that Johnson inherently taught the terminal identifier limitation based on the Johnson’s IP address being a form of terminal identifier.  The PTAB found that Moriya taught the terminal identifier limitation based on Moriya’s model code being a form of the terminal identifier.

Reviewing the claims of the ‘727 patent de novo, the Court found, as did the PTAB, that the claims in the ‘727 patent are ineligible under Section 103.  The Court first reviewed the claims construction decision of the PTAB, confirming that the PTAB correctly applied the claims and specification to arrive at the construction of the term “terminal identifier.”  Although the Court, however, found that the PTAB erred in finding that Johnson inherently disclosed a limitation of the ‘727 patent, the Court found that such error was harmless as Moriya independently taught the limitation of the ‘727 patent.

In concluding that the PTAB erred with regard to Johnson the Court analyzed inherency doctrine—finding that “inherency ordinarily applies in an anticipation context where a prior art reference, which does not expressly disclose every limitation of a claim, may still anticipate that claim,” but that use of inherency doctrine in the context of obviousness is limited to cases where “the limitation at issue [is] necessarily… present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Par Pharm., Inc. v. Twi Pharm. Inc., 773 F.3d 1186, 1194-96 (Fed. Circ. 2014).  Thus, inherency “requires more than agreement; inherency requires inevitability” and evidence that a limitation “comport[s] with” a claim construction is insufficient.

Furthermore, the Court reinforced the point that inherency and obviousness are “distinct concepts” by finding that expert testimony discussing obviousness did not constitute substantial evidence to support an inherency finding.  See In re Spormann, 363 F.2d 444, 4848 (CCPA 1966)).  In this case, the PTAB had supported its inherency finding through expert testimony that, based on an Examiner’s Official Notice, the use of IP addresses in Johnson would have been “obvious” to a skilled artisan.  The Court rejected the PTAB’s reliance on the expert testimony to support its inherency finding, because “what would have been obvious to a skilled artisan is not a valid consideration in an inherency analysis.”

Nevertheless, the Court agreed with the PTAB that Moriya teaches model code capable of identifying a generic terminal rather than a specific terminal.  The ‘727 patent distinguishes between the terminal identifier and a model name (which identifies a generic model).  Thus, Vivint argues, the model code of Moriya should be analogous to the model name and not the model identifier.  The Court agreed with the PTAB finding that claims 29 and 37 of the ‘727 patent, which recite that the terminal identifier is “a manufacturer model identifier,” were sufficient to conclude that the model code was analogous to the model identifier based on the claims construction of the “terminal identifier” as including a manufacturer model identifier.  Further the Court found that the functionality of the model code in Moriya—to allow a system to determine a terminal’s display capability—was the same functionality of the terminal identifier in the ‘727 patent.

The take-aways from this decision include the relevance of dependent claims in the eventual construction of an independent claim, the risks in using similar phrasing for different elements (i.e., use of the common word “identifier” for both a “terminal identifier” and a “server identifier”) and the importance of precision in identifying the functionality of each term in a patent.

Download Case Summary of Vivint, Inc. v. Alarm.com Inc.

Matthew Allen, Harrity Team

Practice Insights in the Wake of Blackbird Tech LLC v. ELB Electronics, Inc.

By Matthew Allen
July 26, 2018- Practice Insights in the Wake of Blackbird Tech LLC v. ELB Electronics, Inc.

In Blackbird Tech LLC v. ELB Electronics, Inc. (Fed. Cir. July 16, 2018), the Federal Circuit found, with one judge dissenting, that the district court erred during claim construction by construing a claim limitation to include a requirement not included in the plain language of the claim, and not supported during the prosecution history.

The decision provides insight into how choices made during drafting and prosecution may affect claim construction, and provides insight into how issues of claim construction might be avoided.

The patent at issue (7,086,747) describes an energy efficient lighting apparatus designed to be retrofitted with an existing light fixture. At issue was claim construction regarding the meaning of “attachment surface,” and whether the attachment surface must be secured to a “ballast cover.” Specifically, claim 12 recites:

12. An energy-efficient lighting apparatus for retrofit with an existing light fixture having a ballast cover, comprising:
a housing having an attachment surface and an illumination surface;
a plurality of illumination surface holes in the illumination surface;
a circuit board comprising a plurality of light-emitting diodes, wherein the circuit board is positioned adjacent the housing so that the plurality of light-emitting diodes protrude through the plurality of illumination surface holes in the illumination surface; and
a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface, wherein the lighting apparatus is coupled to a wall switch and wherein the illumination of the light-emitting diodes is controllable based upon the position of the wall switch.

Blackbird argued that “attachment surface” should be construed as “layer of the housing to which the illumination surface is secured,” while ELB argued (and the district court agreed) that “attachment surface” should be construed as “layer of the housing that is secured to the ballast cover.”

In concluding that “claim 12 does not require the attachment surface to be secured to the ballast cover,” the Federal Circuit relied on the plain language of claim 12, stating that claim 12 “does not require the attachment surface be secured to anything other than the illumination surface.” The Court also pointed out that there was no suggestion (e.g., in the specification or during prosecution or litigation) indicating that the fastening mechanism securing the attachment surface to the ballast cover was an important feature of the claimed invention.

Interestingly, the Federal Circuit also noted that “possibly the most important reason why the fastener for connecting the attachment surface to the ballast cover disclosed in an embodiment ought not be imported into the claim is because that limitation was originally present in claim 12 and was expressly eliminated during prosecution.” During prosecution, an amendment made “to resolve 112 issues” deleted “ballast cover” and replaced it with “illumination surface.” The federal circuit concluded that “[n]o ordinary artisan could read the prosecution history as anything other than eliminating the requirement that a fastening mechanism secures the attachment surface to the ballast cover.”

In his dissent, Circuit Judge Reyna concluded “that the district court correctly construed ‘attachment surface’ to mean ‘layer of the housing that is secured to the ballast cover.’” In particular, Circuit Judge Reyna states:

The plain language of claim 12, read in the context of the specification, implicitly requires that the attachment surface be secured to the ballast cover to achieve the retrofit function. Apart from the preamble, which the parties agree is limiting, claim 12 contains no reference to the ballast cover, the existing light fixture, or where or how the apparatus is retrofit with the existing light fixture. Because the only feature of the existing light fixture described in claim 12 is the ballast cover, a person of ordinary skill would necessarily conclude that the attachment surface is secured to the ballast cover of the existing light fixture.

In addition to the plain language argument, Circuit Judge Reyna noted that “[e]very single embodiment of the retrofit lighting apparatus in the specification describes securing the attachment surface to the ballast cover of the existing light fixture.” He also cites a portion of the specification, which states that “[i]n typical operation, the attachment surface 530 is secured to the ballast cover,” to support his conclusion that the attachment surface should be read as being secured to the ballast cover.

Clearly, this case was not as clear cut as the plain language of claim 12 might have made it seem. However, the case does provide insight into how practitioners might draft and prosecute an application in a manner designed to avoid unfavorable claim construction.

For example, both the district court, and the dissenting Circuit Judge, felt that the specification did not make it clear that the attachment surface might not be secured to the ballast cover. In describing various components, a patent drafter might avoid similar issues by describing components as having multiple functions or capabilities, or avoiding describing a component as serving only one function.

In addition, the inclusion of “ballast cover” in the preamble of claim 12 was given weight in both the majority and dissenting opinions. During drafting, or prosecution, a practitioner might wish to avoid including (or amend to exclude), in the preamble of a claim, limitations, structure, or the like, which might be construed as being somehow tied into other claimed features.

Also, during prosecution, the elimination of claim features is clearly given weight in determining whether an eliminated feature might be required for patentability. Accordingly, rather than leaving in unnecessary claim features, it may be beneficial to remove claim features in a manner designed to pre-empt a claim construction that requires a claim feature that is actually not necessary for patentability.

Download Blackbird Tech LLC v. ELB Electronics, Inc..

Kris Rhu Harrity Team

Case Summary of Zeroclick, LLC. v. Apple Inc.

By Kris Rhu
June 26, 2018- Case Summary of Zeroclick, LLC. v. Apple Inc.

Zeroclick sued Apple alleging that Apple infringed claims 2 and 52 of U.S. Patent No. 7,818,691 and claim 19 of U.S. Patent No. 8,549,443, which relate to modifications of graphical user interfaces (GUIs) that allow the GUIs to be controlled using pre-defined pointer or touch movements instead of mouse clicks.  Apple responded by asserting invalidity of those claims.  The U.S. District Court for the Northern District of California found that the claims recited means-plus-function terms for which the specification did not have sufficient structure, and therefore, were invalid for indefiniteness.  However, the Court of Appeals for the Federal Circuit (CAFC) vacated and remanded, holding that the district court did not undertake the relevant inquiry when making factual findings to support its conclusion that the claims recited means-plus-function terms.

Claim 2 of the ’691 patent recites:

2. A graphical user interface (GUI), which may comprise an update of an existing program, that may fully operate a GUI by a two step method of movement of a pointer (0) to operate one or more functions within the GUI,
wherein, said existing program is any existing program that can operate the movement of the pointer (0) over a screen (300) and has one or more functions operated by one or more other methods apart from said two step method,and/or one or more functions operated by said one or more other methods in said existing program can be updated to operate by said two step method,
wherein said GUI executes one or more functions within the GUI by the completion of the following said two step method:
first said pointer (0) is immediately adjacent or passes within a control area (1), which is an area of the screen (300) that may be any size including from a pixel on the screen (300) to occupying the whole screen (300), and
second by the completion of a subsequent movement of said pointer (0) according to a specified movement generates a ‘click’ event, thereby triggering one or more functions within the GUI.

Claim 52 is directed to the “method of operating a graphical user interface” described in claim 2.

Claim 19 of the ’443 patent recites:

  1. A device capable of executing software comprising:

a touch-sensitive screen configured to detect being touched by a user’s finger without requiring an exertion of pressure on the screen;a processor connected to the touch-sensitive screen and configured to receive from the screen information regarding locations touched by the user’s finger;executable user interface code stored in a memory connected to the processor;the user interface code executable by the processor;the user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation; andthe user interface code is further configured to cause one or more selected operations, which includes one or more functions available to the user interface code of the device, to deactivate while the user’s finger is touching one or more locations on the screen.

During claim construction, the district court found that the limitation “program that can operate the movement of the pointer (0)” in claim 2 of the ‘691 patent is a means-plus-function term.  Specifically, it found “program” to be a means that performs the function of operating the movement of the pointer.  The district court also found that “user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation” in claim 19 of the ‘443 patent is a means-plus-function term.  Specifically, it found “user interface code” to be a means that performs the functions of detecting one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determining therefrom a selected operation.

The CAFC cited Williamson v. Citrix Online, LLC, which stated that the failure to use the word “means” creates a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply, but that the presumption can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.”  792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc).  Williamson further stated that the essential inquiry in determining whether a claim limitation involves § 112, ¶ 6 is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id.  The CAFC found that the district court failed to undertake this inquiry and make related factual findings.

The CAFC noted that the claims did not include the word “means,” which invokes the presumption.  The CAFC also noted that Apple provided no evidentiary support for their position that the claim limitations must be construed under § 112, ¶ 6, and therefore, failed to rebut the presumption.  By relying on Apple’s arguments without evidentiary support, the district court legally erred by not giving effect to the unrebutted presumption.

The CAFC further found that the district court effectively treated the features “program” and “user interface code” as nonce words that operate as a substitute for “means,” and found such treatment to be erroneous for three reasons: 1) just because the disputed limitations incorporate functional language does not necessarily convert those words into means for performing those functions.  There are plenty of devices that take the names of the functions they perform (e.g. brake, clamp, screwdriver); 2) the district court removed those terms from their context, which otherwise strongly suggests the plain and ordinary meaning of the terms.  Claim 2 of the ‘691 patent recites a “graphical user interface” which may “comprise an update of an existing program” using a two-step method.  Claim 19 of the ‘443 patent tethers “user interface code” to the code “stored in a memory connected to the processor.”  That processor, in turn, is configured to perform the indicated functions.  Thus, a person of ordinary skill in the art could reasonably discern from the claims that the words “program” and “user interface code” are not used as generic terms, but rather as specific references to conventional GUI programs or code existing previously.  The written description further bolsters this conclusion because it describes the distinction drawn between GUIs in the prior art and the improvement to such interfaces in the claimed invention; and 3) the district court made no findings that compel the conclusion that a conventional GUI program or code is commonly used as a substitute for “means.”

This opinion illustrates the importance of avoiding the use of the word “means” in order to create a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply to a claim.  The opinion also illustrates the importance of tethering software-esque terms like “program” or “code,” or other terms that may not inherently have structure, to a specific structure in the claims and/or providing context to such claim limitations.  Such strategies can help prevent claim limitations from being construed under 35 U.S.C. § 112, ¶ 6.

Download Summary of Zeroclick LLC. v. Apple Inc. 

James Olsen, Harrity Team

Case Summary of Medtronic, Inc. v. Barry

By James Olsen
June 17, 2018- Case Summary of Medtronic, Inc. v. Barry, C.A. No. 2017-1169 (Fed. Cir. June 11, 2018)

Background
This is an appeal from two related decisions of the U.S. Patent and Trademark Office’s Patent Trial and Appeals Board (Board) in inter partes review (IPR) proceedings.  The Board concluded that the petitioner, Medtronic, Inc., had not proven that the challenged patent claims are unpatentable.  The Federal Circuit affirmed-in-part and vacated-in-part the decision.

Dr. Mark Barry sued Medtronic for patent infringement in the Eastern District of Texas.  Barry alleged that Medtronic’s products infringed U.S. Patent Nos. 7,670,358 (the 358 Patent) and 7,776,072 (the 072 Patent).  Medtronic petitioned for, and the Board instituted, IPR proceedings for all claims in both patents.

During the IPR proceedings, Medtronic asserted that the claims of the patents were obvious over three references: (1) U.S. Patent Application No. 2005/0245928 (the 928 Application), (2) a book chapter which appears in Masters Techniques in Orthopaedic Surgery: The Spine (2d ed.) (MTOS); and (3) a video entitled “Thoracic Pedicle Screws for Idiopathic Scoliosis” and slides entitled “Free Hand Thoracic Screw Placement and Clinical Use in Scoliosis and Kyphosis Surgery” (Video and Slides).  The Board determined that the claims of the patents were not obvious over the 928 Application and MTOS, and that the Video and Slides were not prior art since they were not publicly accessible.

The primary dispute is whether the Video and Slides were publicly accessible, and thus, prior art to the 358 patent and the 072 patent.

Patents at Issue
The 358 patent relates to a method for ameliorating aberrant spinal column deviation conditions, such as scoliosis.  The 072 patent is a continuation-in-part of the application that led to the 358 patent and shares substantially the same specification.

Analysis
The Federal Circuit affirmed the Board’s determination that the claims of the patents were not obvious over the 928 Application and MTOS.  However, Federal Circuit held that the Board erred in concluding that the Video and Slides were not accessible to the public.

On appeal, the parties disputed whether the Video and Slides constituted printed publications within the meaning of 35 U.S.C. § 102(b).  A CD containing the Video was distributed at three separate programs in 2003: (1) a meeting of the “Spinal Deformity Study Group” (SDSG) in Scottsdale, Arizona, (the Scottsdale program); (2) the Advanced Concepts in Spinal Deformity Surgery meeting in Colorado Springs, Colorado (the Colorado Springs program); and (3) the Spinal Deformity Study Symposium meeting in St. Louis, Missouri.  Binders containing relevant portions of the Slides were also distributed at the Colorado Springs and St. Louis programs.  The earliest of the three 2003 programs, the Scottsdale program, was limited to 20 SDSG members (e.g., experts within the field of spinal deformity), and the other two programs were attended by 20 and 55 surgeons at the Colorado Springs and St. Louis programs, respectively.

The Federal Circuit found that the determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).  A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.

The Federal Circuit held that the question becomes whether such materials were sufficiently disseminated at the time of their distribution at the conferences.  The Federal Circuit pointed to Massachusetts Institute of Technology v. AB Fortia (MIT), where a paper that was orally presented at a conference to a group of cell culturists interested in the subject matter was considered a “printed publication.” 774 F.2d 1104, 1109 (Fed. Cir. 1985).  In that case, between 50 and 500 persons having ordinary skill in the art were told of the existence of the paper and informed of its contents by the oral presentation, the document was disseminated without restriction to at least six persons, and whether the copies were freely distributed to interested members of the public was a key consideration in the analysis.

The Federal Circuit also pointed to Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009), where the issue pertained to whether a set of research papers distributed by a doctor to certain colleagues and two commercial entities rendered the documents printed publications.  In that case, the Federal Circuit concluded that such documents were not publicly accessible since academic norms gave rise to an expectation that disclosures would remain confidential, and there was an expectation of confidentiality between the doctor and each of the two commercial entities.

Finally, the Federal Circuit identified In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004), where a reference in dispute was a printed slide presentation that was displayed prominently for three days at a conference to a wide variety of participants.  The reference was shown with no stated expectation that the information would not be copied or reproduced by those viewing it, but copies were never distributed to the public and never indexed.  In that the case, the Federal Circuit identified the relevant factors to include: (1) the length of time the display was exhibited, (2) the expertise of the target audience (to determine how easily those who viewed the material could retain the information), (3) the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and (4) the simplicity or ease with which the material displayed could have been copied.  After reviewing these factors, the Federal Circuit determined that the reference was sufficiently publicly accessible to count as a “printed publication” for the purposes of § 102(b).

The Federal Circuit held that the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed are important considerations.  The Federal Circuit further held that another consideration is whether there is an expectation of confidentiality between the distributor and the recipients of the materials.

The Federal Circuit found that the Board did not fully consider all of the relevant factors.  For example, the Board did not address the potentially-critical difference between the SDSG meeting in Arizona and the programs in Colorado Springs and St. Louis, which were not limited to members of the SDSG but instead were attended by at least 75 other surgeons, collectively.  The Board’s analysis was silent on the distribution that occurred in the two non-SDSG programs.  Further, even if the Board were correct in its assumption that Medtronic only gave the Video and Slides to the SDSG members, it did not address whether the disclosures would remain confidential.

Accordingly, the Federal Circuit held that whether dissemination of the Video and Slides to a set of supremely-skilled experts in a technical field precludes finding such materials to be printed publications warrants further development in the record.  For these reasons, the Federal Circuit vacated the Board’s finding that the Video and Slides are not printed publications and remanded for further proceedings.

Practice Insights
Consider counseling inventors and clients regarding the appropriate factors to consider when presenting materials at conferences and distributing materials without a legal obligation of confidentiality.  It may be wise to file a provisional patent application before presenting or distributing materials related to an invention.  Also, one may enter non-disclosure agreements with parties viewing a presentation or receiving distributed materials.

Download Medtronic, Inc. v. Barry.

Elaine Spector, Harrity Team

Case Summary of Vanda Pharma v. West-Ward Pharma

By Elaine Spector
May 18, 2018- Case Summary of Vanda Pharma v. West-Ward Pharma

Background
This is an appeal to the Court of Appeals for the Federal Circuit from the U.S. District Court for the District of Delaware holding the asserted claims of U.S. Patent No. 8,586,610 (the ‘610 patent) to be infringed and not invalid. The Federal Circuit affirmed.

West-Ward filed an Abbreviated New Drug Application (ANDA) that substantially copied Vanda’s New Drug Application, which Vanda was able to obtain approval from the FDA for treatment of patients with schizophrenia. After the ‘610 patent issued, Vanda filed an infringement action against West-Ward in the U.S. District Court for the District of Delaware. After a bench trial, the district court held that the asserted claims were not invalid under §101, §103, or §112 for lack of written description.

The primary dispute is whether the claims are patent eligible in view of Mayo v. Prometheus, or are they instead directed to a law of nature.

Patent at Issue
The ‘610 patent relates to a schizophrenia treatment using iloperidone. The claims require a dosage according to a patient’s metabolization rate of iloperidone (“CYP2D6 activity”).

Comparison of Vanda to Mayo claims

Vanda

Mayo

A method for treating a patient with iloperidone, wherein the patient is suffering from schizophrenia, the method comprising the steps of: A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
determining whether the patient is a CYP2D6 poor metabolizer by: obtaining or having obtained a biological sample from the patient; and performing or having performed a genotyping assay on the biological sample to determine if the patient has a CYP2D6 poor metabolizer genotype; (a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
and if the patient has a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount of 12 mg/day or less, (b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
and if the patient does not have a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount that is greater than 12 mg/day, up to 24 mg/day, wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein a risk of QTc prolongation for a patient having a CYP2D6 poor metabolizer genotype is lower following the internal administration of 12 mg/day or less than it would be if the iloperidone were administered in an amount of greater than 12 mg/day, up to 24 mg/day. wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

Analysis

The Federal Circuit analyzed the findings of the lower court and noted that “[t]he [district] court did conclude that ‘the asserted claims depend upon laws of nature,’ specifically, ‘the relationship between iloperidone, CYP2D6 metabolism, and QTc prolongation.”  Id at 7.  But the Federal Circuit continued by explaining that the ‘610 patent “addresses natural relationships to which the claims add conducting CYP2D6 genotyping tests to determine the appropriate dose of iloperidone to reduce QTc-related risks.”  Id.

 The Federal Circuit held that the claims at issue were not directed to one of the patent-ineligible concepts.  Since the claims were directed to patent-eligible subject matter, no step two inquiry Alice inquiry is needed.  The Federal Circuit explained, that “at step one, ‘it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether the patent-ineligible concept is what the claim is ‘directed to.’’”  Id. at 28 (quoting Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016).

In distinguishing Mayo, the Federal Circuit explained that the “claims in Mayo were not directed to a novel method of treating a disease.  Instead, the claims were directed to a diagnostic method based on the ‘relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of thiopurine drug will prove ineffective or cause harm.’ Id.  This ‘relation is a consequence of the ways in which the thiopurine compounds are metabolized by the body- entirely natural processes.  And so a patent that simply describes the relations sets forth a natural law.”  Id. at 29 (quoting Mayo v. Prometheus).

The Federal Circuit distinguished the claims in Mayo by explaining that “the claim as a whole was not directed to the application of a drug to treat a particular disease.” Id.  As noted by the Supreme Court in Mayo, “the administering step was akin to a limitation that tells engineers to apply a known natural relationship or to apply an abstract idea with computers.”  Id.  “To underscore the distinction between method of treatment claims and those in Mayo, the Supreme Court noted that ‘[u]nlike, say, a typical patent on a new drug or a new way of using an existing drug, the patent claims do not confine their reach to particular applications of those laws.’”  Id. (quoting Mayo v. Prometheus).

The Federal Circuit noted the following three distinctions in the claims of the ‘610 patent:

  1. The claims require a doctor to administer a drug in a certain amount.
  2. The claims do not tie up the doctor’s subsequent treatment plan. (In Mayo, a doctor could infringe even if he/she did not change up his/her treatment plan).
  3. The claims recite the steps of carrying out a specific dosage regimen based on the results of the genetic testing. (In Mayo, the claims did not prescribe a specific dosage regimen or other added steps to take as a result of the indication).

The Federal Circuit summarized that “the claims here are directed to a specific method of treatment for specific patients using a specific compound at specific doses for a specific outcome.”  Id. at 32.

The dissent disagreed, concluding that “[w]hile the claims here do not solely state a law of nature, they do no more than simply direct the relevant audience to apply it.”  (Dissenting Opinion, p. 2).  The dissent reasoned that the claims are directed to “no more than optimization of an existing treatment of schizophrenia, just as the claims in Mayo concerned ‘optimizing therapeutic efficacy’ of thiopurine drugs.’”  Id. at 5.  “It claims no more than instructions directing the audience to apply the natural law in a routine and conventional manner.”  Id. at pp. 5-6.  With regard to the difference in claiming a specific dosage, the dissent highlighted that Mayo considered “the ‘administering’ step in its search for an inventive concept, not as part of the determination whether the claims were directed to a natural law at the threshold.”  Id. at 6.  As noted by the dissent, “the specific dosage adds nothing inventive to the claims beyond the natural law.”  Id.  Similarly, the dissent noted that requiring treatment instead of indicating a dosage is not sufficient at step two of the analysis.

Practice Insights
It is important to be specific about a particular method of treatment, and also to be specific about a particular dosage for a specific outcome. In particular, a specific treatment should be claimed, instead of an optimization of a treatment, as in Mayo.  The treatment should also include a specific dosage, intended for a specific outcome.  Although not determinative, careful consideration should be given to drafting the preamble, as it also plays a role in finding the claims patent eligible, particularly as it related to specifying the particular method of treatment.

Download Case Summary of Vanda Pharma v. West-Ward Pharma.

Nathan Phares Harrity Team

Hologic, Inc. v. Smith & Nephew, Inc.

By Nathan Phares
Satisfying the Written Description Requirement for a Genus based on a Disclosure of a Species of the Genus

May 8, 2017 – Hologic, Inc. v. Smith & Nephew, Inc. is related generally to the written description requirement under 112 paragraph 1 (pre-AIA). The Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeals Board’s (PTAB’s) decision that a genus, claimed in a child application, was adequately disclosed by a species in the specification of a parent application in accordance with the written description requirement.

Smith & Nephew (appellees) secured U.S. Patent No. 8,061,359 on a surgical endoscopic cutting device and method for the cutting device’s use (the ‘359 patent, issued Nov. 22, 2011). The ‘359 patent claims priority to earlier-filed PCT International Publication WO 99/11184 by the same inventor (the Emanuel PCT, published March 11, 1999).

Claim 1 of the ‘359 patent recites a “light guide” that is “permanently affixed” to a “first channel” of the apparatus. This article focuses on the analysis surrounding the light guide. The Emanuel PCT specifies “a connection 8 for a light source . . . for connection to a fibre optics bundle which provides for lighting” (emphasis added). The Examiner of the ‘359 patent objected to the drawings for not showing the “light guide.” Smith & Nephew addressed this objection by amending the specification to state: “A connection 8 for a light source . . . for connection to a light guide, such as a fibre optics bundle which provides for lighting” (emphasis added). The Examiner issued the ‘359 patent thereafter.

Hologic (appellant) requested inter partes reexamination (IPR) of the ‘359 patent, and the PTO granted the reexamination. The IPR Examiner found that the ‘359 patent could not claim priority to the Emanuel PCT because the “fibre optics bundle” of the Emanuel PCT did not provide adequate written description for the “light guide” of the ‘359 patent’s claims. Thus, priority to the Emanuel PCT was severed, so the Emanuel PCT invalidated the ‘359 patent’s claims as obvious in view of a secondary reference.

Smith & Nephew appealed to the PTAB. The PTAB found that the disclosure in the Emanuel PCT provides sufficient written description for the “light guide” of the ‘359 patent, thereby preserving the priority claim of the ‘359 patent to the Emanuel PCT. Thus, the PTAB reversed the IPR Examiner’s rejection of the ‘359 patent’s claims. A more detailed description of the PTAB’s reasoning is provided below. Hologic appealed to the Federal Circuit and appeared before Judges NEWMAN, WALLACH, and STOLL. Judge STOLL authored the opinion.

Claim 1 of the ‘359 patent reads in relevant part:

1. A method for removal of tissue from a uterus, comprising: inserting a distal region of an endoscope into said uterus, the endoscope including a valve and an elongated member defining discrete first and second channels extending from a proximal region of the elongated member to the distal region, the second channel having a proximal end in communication with the valve such that fluid from the valve is able to flow into and through the second channel to the uterus, and the first channel having a light guide permanently affixed therein and being sealed from the second channel to prevent fluid from the valve from entering the uterus through the first channel. . . (emphasis added).

The specification of the ‘359 patent reads, as amended and in relevant part: “[a] connection 8 for a light source is also present, for connection to a light guide, such as a fibre optics bundles which provides for lighting at the end of lens 13.” Col. 3 ll 55-58.

The specification of the Emanuel PCT reads in relevant part:

“A connection 8 for a light source is also present, for connection to a fibre optics bundle which provides for lighting at the end of lens 13.” Emanuel PCT at 4:34-36. See also U.S. Patent No. 7,249,602, which issued from the Emanuel PCT and of which the ‘359 patent is a divisional, at para. [0030].

Hologic appealed the PTAB’s decision that the ‘359 patent is entitled to priority to the Emanuel PCT.  Specifically, Hologic contended that the obviousness rejection should be reinstated based on the Emanuel PCT not satisfying the written description requirement of pre-AIA 35 U.S.C. 112 paragraph 1.  Hologic contends that the Emanuel PCT does not provide adequate description of the “light guide,” as well as the “permanent affix[ture]” of the light guide in a “first channel” claimed in the ‘359 patent. As stated above, this article focuses on the analysis of the written description of the light guide.

The CAFC affirmed the PTAB’s findings that the Emanuel PCT provides written description support for the claims of the ‘359 patent, and that the ‘359 patent is entitled to claim priority to the Emanuel PCT, using a substantial evidence standard. Thus, the Emanuel PCT is not prior art to the ‘359 patent and the obviousness rejection was reversed.

A summary of the relevant written description law follows. To support priority, the specification of a parent patent must disclose what the child patent claims according to the written description requirement of pre-AIA 112 Paragraph 1. Slip Op. at 6, citing In re Katz at 1322. Ariad Pharm. v. Eli Lilly provides the standard: “based on ‘an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art . . ., the specification must describe an
invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed . . . . In other words, the test for sufficiency is whether the disclosure of the [earlier] application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter’ as of that earlier filing date.” Slip Op. at 7, citing Ariad at 1351.

The PTAB reasoned (and the CAFC agreed) that field of the invention is a predictable art, meaning that a lower level of detail is required to satisfy the written description requirement than for unpredictable arts (e.g., pharmaceutical arts, biological arts, etc.). Slip Op. at 7, citing Ariad at
1351. The PTAB further found that the Emanuel PCT discloses a “light guide” based on the facts that the parties do not dispute that a “fibre optic bundle” is a type of light guide, and that various types of light guides were well-known in the art. Slip Op. at 8. Hologic’s experts did not dispute these points. Because the Emanuel PCT showed possession of a “fibre optic bundle,” because a “fibre optic bundle” is a type of light guide, and because various “light guides” were known in a predictable art, the PTAB concluded that the Emanuel PCT reasonably conveys to a skilled artisan that the inventor of the Emanuel PCT had possession of a “light guide.” The CAFC affirmed.

This decision provides a framework for arguing against a written description rejection of a claimed genus over a disclosed species, particularly in the case of a priority claim to an earlier application. For example, this decision could be used to go after a broader scope in a continuation application, a divisional application, or a utility that claims priority to a provisional. Seek to establish that the specification shows possession of a species of a genus, and that the various other species of the genus are known in the art. After this, you may assert that the genus is adequately described in the specification based on the species. This may be particularly useful in predictable arts, although the prosecutor may lower the bar for obviousness by arguing that the art is predictable or that other species of the genus are known in the art. For the patent drafter, this decision provides a cautionary tale to think in terms of the genus as well as the species – add value for your clients by ensuring that your specification covers reasonable alternatives where possible.

The PTAB also found that the “permanently affixed” element and the “first channel” elements were adequately disclosed in the Emanuel PCT, and the CAFC affirmed – this aspect of the decision is not discussed any further in this article, as it is not particularly instructive for prosecutors.

Download Hologic, Inc. v. Smith & Nephew, Inc.
Harrity Blog

Steven E. Berkheimer v. HP Inc.

By Kenneth Kwan

March 28, 2018- In Steven E. Berkheimer v. HP Inc., 2017-1437 (Fed. Cir. Feb. 8, 2018), the Federal Circuit affirmed the district court’s summary judgment that claim 1 (among other claims) of U.S. Patent No. 7,447,713 (the ’713 Patent) is patent-ineligible under 35 U.S.C. 101, but reversed the district court’s summary judgment that claims 4 and 5 (among other claims) of the ’713 Patent are patent‑ineligible.

The ’713 Patent is directed to archiving files.  Different files can have portions (objects) that are the same.  A main aspect of the invention in the ’713 Patent is to archive files by linking the objects (that are in common) to one another, such that an update to one of the objects of one file can be reflected in linked objects of other files.

The specification of the ’713 Patent provides the following:

By eliminating redundancy in the archive 14, system operating efficiency will be improved, storage costs will be reduced and a one-to-many editing process can be implemented wherein a singular linked object, common to many documents or files, can be edited once and have the consequence of the editing process propagate through all of the linked documents and files. The one-to-many editing capability substantially reduces effort needed to up-date files which represent packages or packaging manuals or the like as would be understood by those of skill in the art.

Claims 1, 4, and 5 of the ’713 Patent read:

  1. A method of archiving an item comprising in a computer processing system:

presenting the item to a parser;
parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;
evaluating the object structures in accordance with object structures previously stored in an archive;
presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.

  1. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.
  2. The method as in claim 4 which includes selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.

The Federal Circuit found that claim 1 is not patent eligible under 35 U.S.C. 101, since parsers and parsing functions are conventional in the art, the analysis and comparison of data, to reconcile differences between two objects, fail to transform the abstract idea into something patent-eligible, and the claim does not contain limitations that relate to the benefits of the invention.

In contrast, the Federal Circuit found that dependent claims 4 and 5 may be patent eligible, since these claims contain limitations relating to the benefits of the invention—i.e., the recitation “without substantial redundancy” in claim 4 and the recitation “to thereby effect a one-to-many change in a plurality of archived items” in claim 5 relate to the benefit of redundancy elimination, which leads to increased operating efficiency and reduces storage costs.

This opinion illustrates the potential importance of including claim limitations that directly relate to the technological improvements described in the patent’s specification, since this might help with the question of subject matter eligibility (particularly Step 2 of the Alice test).

Download Steven E. Berkheimer v. HP Inc.

Tim Hirzel Harrity Team

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.

William Gvoth Harrity Team

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. 

William Gvoth Harrity Team

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.

Kris Rhu Harrity Team

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 Blog

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.