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Technical Issues Affirm Patent Validity but Preclude Pre-Suit Damages

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...

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

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., LLC, Case No. 19-1587 (Fed. Cir. May 14, 2020) (Prost, C.J.). Electronic Communication Technologies (ECT) filed suit against for infringement of a claim directed to an automated notification system enabling a user to select authentication information (e.g., a unique phrase) to be included with future delivery notifications, thus indicating that the notification is legitimate. The claim also recites enabling the user to communicate with someone regarding the “particulars” of the delivery. ShoppersChoice moved for judgment on the pleadings, arguing the patent was invalid under 35 U.S.C. § 101. The district court granted ShoppersChoice’s motion, finding the asserted claim was...

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Focusing on Functionality, Software Claims Found Patent Eligible

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.). Uniloc owns a patent directed to a communication system comprising a primary station, such as a computer, and at least one secondary station, such as a wireless computer mouse or keyboard. In conventional systems, the primary stations would alternate between sending (1) inquiry messages to identify new secondary stations and (2) polling messages to determine whether inactive, but previously connected, secondary stations have information to transit. In conventional systems, the secondary stations could experience long delays in connecting to the...

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Can’t Have Layered Architecture Cake and Eat It Too: No Importing Limitations from Specification in § 101 Analysis

Addressing both the availability of appeal in the absence of a Rule 50(b) motion and the appropriateness of importing limitations from the specification in a 35 USC § 101 analysis, the US Court of Appeals for the Federal Circuit reversed a district court’s ruling that a patent was not invalid under § 101. Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., Case No. 18-2003 (Fed. Cir. Apr. 14, 2020) (Prost, CJ.) (Newman, J., dissenting). Ericsson sued TCL for infringement of a patent directed to a method and system for limiting and controlling access to resources in a telecommunications system. The claims recite an access controller for accessing software services comprising an interception module, a decision entity and a security access manager, among other claim elements. Prior to trial, TCL moved for summary judgment of invalidity, arguing that the asserted claims were ineligible for patenting under § 101. The district court denied the motion, concluding at...

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

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). CardioNet owns a patent directed to cardiac monitoring systems and techniques. The patent describes detecting and distinguishing atrial fibrillation (AF or A-fib) and atrial flutter (AFL) from other forms of cardiac arrhythmia (abnormal heart rhythms), such as ventricular tachycardia (V-TACH). The patent describes using electrodes on a patient’s skin to measure electrical signals of the heart and determining beat-to-beat variability in heart rate over a series of between 20 and 200 recent R-waves (peaks of QRS complexes shown on an...

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

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). The patents at issue are directed to methods of preparing a fraction of cell-free DNA that is enriched in fetal DNA to solve the identified problem of distinguishing and separating the tiny amount of fetal DNA from the vast amount of maternal DNA in the mother’s blood. The solution to this problem was based on the inventors’ discovery that fetal DNA has a relatively small size of approximately 500 base pairs or less, while the majority of maternal DNA has a size greater than approximately 500 base pairs. Illumina filed suit against Ariosa and Roche alleging infringement of the patents at...

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