IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Results for "Patent Eligibility"
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PTAB May Reject Substitute Claims Under Any Basis of Patentability

by | Aug 5, 2020 | ,

The US Court of Appeals for the Federal Circuit considered for the first time whether a district court’s invalidity determination, when made final after all appeals are exhausted, divests the Patent Trial and Appeal Board (PTAB) of jurisdiction in a co-pending inter partes review (IPR) proceeding involving the same claims, and held that it does not. The Court also held that in an IPR proceeding, the PTAB is free to reject proposed substitute claims for failing to meet the subject matter eligibility requirements of § 101. Uniloc 2017 LLC v. Hulu, LLC, Case No. 19-1686 (Fed. Cir. July 22, 2020) (Wallach, J.) (Dyk, J., dissenting).

Hulu filed an IPR petition challenging claims of Uniloc’s patent directed to adjustable software licensing for digital products. After the PTAB instituted review, Uniloc filed a motion for substitute claims, conditional on whether the PTAB found the original claims unpatentable. Before the PTAB issued its final determination and before it ruled on the motion for substitute claims, a district court, in a related proceeding, held Uniloc’s asserted claims invalid as directed to patent-ineligible subject matter. Shortly thereafter, the PTAB issued a final written decision finding the challenged claims unpatentable over the prior art, and it found the substitute claims unpatentable under § 101. Uniloc appealed the PTAB’s use of § 101 to invalidate its substitute claims.

While Uniloc’s appeal of the Hulu IPR was pending, the Federal Circuit affirmed the district court’s invalidity finding as to the original claims. With respect to the Hulu appeal, the Federal Circuit ordered the parties to address whether the appeal was moot in view of the ultimate finality with respect to invalidity of the original claims, thereby divesting the PTAB of jurisdiction over the IPR.

The majority held that the finality of the district court’s invalidity finding did not necessarily divest the PTAB of authority to consider substitute claims. It determined that the mootness issue was waivable, and that Hulu had waived the argument because it failed to raise mootness during the pendency of the IPR at the time the district court issued its decision. Even if Hulu had not waived the argument, the majority found that the PTAB’s authority to consider substitute claims does not depend on any live dispute about the original claims, as long as the motion to amend in the IPR was timely filed.

As to the PTAB’s rejection of the claims under § 101, the majority held that although the PTAB is restrained in an IPR proceeding to invalidating a patent’s original claims only under the anticipation and obviousness grounds raised in the petition, the PTAB may use other invalidity tools as a “new ground of rejection” for substitute claims, including for lack of patentable subject matter under § 101. The majority also suggested that other grounds of patentability would be within the scope of the PTAB’s authority, including rejections under the various subsections of § 112. The majority was concerned that limiting the PTAB’s review might force it to issue substitute claims that fail to meet all the statutory [...]

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Technical Issues Affirm Patent Validity but Preclude Pre-Suit Damages

by | Jul 22, 2020 |

In a split decision, the US Court of Appeals for the Federal Circuit affirmed the subject matter eligibility of claims directed to collection, comparison and classification of information. The Court also unanimously found that the patent owner was not entitled to pre-suit or enhanced damages because it failed to prove pre-suit patent marking by its licensees. Packet Intelligence LLC v. Netscout Systems, Inc., Case No. 19-2041 (Fed. Cir. July 14, 2020) (Lourie, J.) (Reyna, J., dissenting in part).

This dispute began when Packet Intelligence sued Netscout for infringing three of its patents that were directed to a system and method for monitoring packets exchanged over a computer network. The case was tried before a jury, which found the patents-in-suit valid and infringed. The jury further determined that Packet Intelligence was entitled to pre-suit and post-suit damages, as well as enhanced damages. Netscout filed a motion for judgment as a matter of law that Packet Intelligence was not entitled to pre-suit damages, which the district court denied. Following a bench trial, the district court held that the claims of the patents-in-suit were not invalid under 35 USC § 101. Netscout appealed.

Netscout challenged the district court’s § 101 decision and the denial of Netscout’s motion for judgment as a matter of law on pre-suit damages. In a split panel decision, the Federal Circuit affirmed the district court’s determination on subject matter eligibility under § 101. Netscape specifically argued that the claims were directed to an abstract idea because the claims were merely directed to the collection, comparison and classification of information.

The majority reiterated that the Federal Circuit has recognized that software-based innovations may be deemed patent-eligible subject matter at Alice step 1. For example, in Enfish, the Court held that software claims were valid at step 1 because the claims were directed to a technical improvement over conventional systems. Similarly, in SRI International, the Court held that software claims were valid because the claims at issue were “necessarily rooted in computer technology in order to solve a specific problem in the realm of computer networks.” Applying these principles, the majority found that the claims were patent eligible because they presented a technical solution to a technical problem. Notably, the majority relied on the patent specification’s disclosures regarding the invention’s improvements over conventional systems.

Judge Reyna dissented. In his view, the claims were directed to an abstract idea because they lacked specific technological means for the collection, analysis and display of data. Because a concrete technical solution was absent, Reyna argued that the claims were distinguishable from the SRI International case on which the majority relied. He would have found the claims invalid under step 1 and remanded the case to the district court to fully address Alice step 2.

Regarding pre-suit damages, the Federal Circuit unanimously held that Packet Intelligence was not entitled to such damages. The primary issue was whether a Packet Intelligence licensee had properly complied with the marking requirements in order to provide the required constructive notice to [...]

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Verdict Delivered: Shipment Notification Claims are Patent Ineligible—Even with Security Flair

by | May 28, 2020 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s pleadings-stage determination that a patent claim directed to a delivery notification system was subject matter ineligible under 35 U.S.C. § 101. Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, Case No. 19-1587 (Fed. Cir. May 14, 2020) (Prost, C.J.).

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Focusing on Functionality, Software Claims Found Patent Eligible

by | May 14, 2020 |

The US Court of Appeals for the Federal Circuit found that patent claims directed to a communication system were patent eligible under 35 U.S.C. § 101 because the claimed invention changes the normal operation of a communication system to overcome a problem specifically arising in the realm of computer networks. Uniloc USA, Inc. v. LG Electronics USA, Inc., Case No. 19-1835 (Fed. Cir. Apr. 30, 2020) (Moore, J.).

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Patent’s Explicit Description of Claimed Advantages Defeats § 101 Challenge

by | Apr 30, 2020 |

Reversing a district court’s motion to dismiss, the US Court of Appeals for the Federal Circuit found patent claims directed to cardiac monitoring devices patent eligible under 35 USC § 101 because the claims were directed to a technical improvement to the function of such devices. CardioNet, LLC v. InfoBionic, Inc., Case No. 19-1149 (Fed. Cir. Apr. 17, 2020) (Stoll, J.) (Dyk, J., dissenting in part, concurring in the result).

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“Method of Preparation” Claims Found Patent-Eligible Under §101

by | Apr 9, 2020 |

Addressing the issue of patent eligibility under §101, the US Court of Appeals for the Federal Circuit reversed a district court, explaining that the method of preparation claims at issue are not directed to a patent-ineligible natural phenomenon. Illumina, Inc. v. Ariosa Diagnostics, Inc., Case No. 19-1419 (Fed. Cir. Mar. 17, 2020) (Lourie, J.) (Reyna, J., dissenting).

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Patent-Eligible Improvements to Computer Functionality Must Be Directed to an Improvement of the Computer or Network Platform

by | Mar 19, 2020 | ,

Applying the US Supreme Court’s Alice v. CLS framework, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) finding patent claims directed to data management and processing systems for merely storing advertising data were not patent eligible under 35 U.S.C. §101. Customedia Techs., LLC v. Dish Network Corp., Case No.18-2239 (Fed. Cir. Mar. 6, 2020) (Moore, J.)

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2019 IP Law Year in Review: Patents

by | Feb 20, 2020 |

Executive Summary

2019 was another important year in intellectual property law that resulted in hundreds of decisions by the courts and Patent Trial and Appeal Board (PTAB) that may affect your company’s litigation, patent prosecution or business strategy. This special report on patents discusses some of the most important cases from 2019 from the US Supreme Court, the US Court of Appeal for the Federal Circuit and the PTAB.

On January 22, 2019, the Supreme Court addressed in Helsinn Healthcare S.A. v Teva Pharmaceuticals, USA, Inc. the question of whether, under the America Invents Act (AIA), an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention. In a unanimous decision authored by Justice Clarence Thomas, the Supreme Court concluded that such a sale qualifies as prior art.

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Data Processing Software Checks Out as Patent Eligible

by | Jan 3, 2020 |

PATENTS / SUBJECT MATTER ELIGIBILITY / ABSTRACT IDEA

Addressing an issue of software subject matter eligibility, the US Court of Appeals for the Federal Circuit reversed the district court’s judgment on the pleadings under 35 USC § 101, finding claims related to error checking patent eligible. Koninklijke KPN N.V. v. Gemalto M2M GMBH et al., Case Nos. 18-1862, -1864, -1865 (Fed. Cir. Nov. 15, 2019) (Chen, J).
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Not Just a Blip: Section 101 as Affirmative Defense

by | Aug 15, 2024 |

On appeal from a motion to dismiss based on subject matter eligibility, the US Court of Appeals for the Federal Circuit held that a district court appropriately analyzed certain claims as representative claims and that the claims were directed to an abstract idea and did not recite an inventive concept. Mobile Acuity, Ltd. v. Blippar Ltd., Case No. 22-2216 (Fed. Cir. Aug. 6, 2024) (Lourie, Bryson, Stark, JJ.)

Mobile Acuity sued Blippar for infringement of claims from two patents directed to software for accessing stored information with a captured image. Mobile Acuity’s operative second amended complaint asserted that Blippar infringed “at least Claims 9, 11, and 16” of one patent and “Claims 9, 11, and 16” of the other. Blippar asserted that claim 9 of each patent was “representative of the entire claim set in each respective Asserted Patent” and that the patents were invalid under 35 U.S.C. § 101. The district court granted Blippar’s motion and subsequently denied Mobile Acuity’s motion to amend the judgment and for leave to file a third amended complaint.

Mobile Acuity appealed, asserting that the district court committed several errors, including the treatment of claim 9 in each asserted patent as a representative claim and the holding that the asserted patents were invalid as claiming ineligible subject matter.

Mobile Acuity first argued that the district court erred in holding that a challenge under § 101 is not an affirmative defense. The Federal Circuit agreed that an eligibility challenge on § 101 grounds is an affirmative defense but found that the district court simply misspoke when it stated during oral argument “[w]e are not talking about an affirmative defense.” However, the Federal Circuit concluded that the “error in word choice was harmless because the district court applied the correct legal standard for evaluating an affirmative defense at the motion to dismiss stage.”

In support of its denied motion to amend, Mobile Acuity argued that “the district court required it to ‘anticipate [the] defendant’s affirmative defense in its complaint.’” The Federal Circuit rebuffed this argument, concluding that the district court did not grant the motion to dismiss on the grounds that Mobile Acuity failed to address patentable subject matter in its complaints but correctly dismissed based on an affirmative defense that “clearly appears on the face of the pleading.” The Court stated that “as we have repeatedly recognized, it is possible and proper to determine patent eligibility under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.”

On the merits, the Federal Circuit first determined that the district court did not merely treat claim 9 of each of the asserted patents as representative of all claims. The Federal Circuit explained that “the court did more, separately analyzing all six claims Mobile Acuity specifically identified in the operative complaint,” as well as two additional claims. The Federal Circuit also agreed with the district court that the six claims were representative “of all claims of the two Asserted Patents.”

As to the merits of the motion to dismiss, [...]

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