patent appeals Flashcards
McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016)
Background: Owners of patents for automatically animating the lip synchronization and facial expressions of three-dimensional animated characters brought infringement actions, and cases were consolidated.
- patent claims were limited to rules with specific, common characteristics, i.e., genus, rather than covering all rules; and
- patent claim was not directed to abstract idea, and did not merely invoke generic processes and machinery, thus favoring patentability.○ Specific limitations
§ This is to a specific genus of invention rather that a particular species
§ “We therefore look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”
“Claim 1 of the ‘576 patent is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type.”
-directed to:
This is unlike Flook, Bilski, and Alice, where the claimed computer-automated process and the prior method were carried out in the same way
the automation goes beyond merely “organizing [existing] information into a new form” or carrying out a fundamental economic practice. Digitech, 758 F.3d at 1351; see also Alice, 134 S.Ct. at 2356. The claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters. While the result may not be tangible, there is nothing that requires a method “be tied to a machine or transform an article” to be patentable.
Affinity Labs of Texas, LLC v. DIRECTV, LLC (Fed. Cir. 2016)
Background: Owner of patent related to means for wirelessly delivering regionally broadcasted radio or television content to an electronic device located outside a region of the regionally broadcasted content brought infringement action against broadcast media companies.
holding
§ concept of providing out-of-region access to regional broadcast content, as claimed in patent, was patent-ineligible abstract idea, and patent and its specification contained no “inventive concept” that transformed abstract idea into patent-eligible application of that abstract idea, thus patent was invalid.
- All the limitation does is to confine the abstract idea to a particular technological environment—in this case, cellular telephones
- The “abstract idea” step of the inquiry calls upon us to look at the “focus of the claimed advance over the prior art” to determine if the claim’s “character as a whole” is directed to excluded subject matter. *1258 The “inventive concept” step requires us to look with more specificity at what the claim elements add, in order to determine “whether they identify an ‘inventive concept’ in the application of the ineligible subject matter” to which the claim is directed.
Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014)
Background: Banks brought action seeking declaration that patents for mitigating settlement risk in financial transactions by using a computer system as a third-party intermediary were invalid, and patents’ assignee filed counterclaim for infringement.
The Supreme Court has set forth a two-step framework whereby a court determines: (1) whether a claim is “directed to a patent-ineligible concept,” and, if so, (2) whether the elements of the claim “an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Holdings: The Supreme Court, Justice Thomas, held that:
1 the abstract idea of an intermediated settlement was not patentable, and
2 method claims requiring generic computer implementation failed to transform the abstract idea of intermediated settlement into a patent-eligible invention
Amdocs (Israel) Ltd. v. Openet Telecom, Inc.
Background: Patentee brought infringement action against competitor, claiming infringement of four patents related to solving an accounting and billing problem faced by network service providers.
holding: claims passed on step 2
- focus on specificity dovetails with concerns about preemption
- found a critical advancement over the prior art
Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)
Background: Owner of patent claiming a method and system for filtering Internet content, providing customized filters at a remote server, brought infringement action against competitor.
Holding: Patent claims were directed to the inventive concept of filtering content, but the ordered combination of claim limitations revealed an inventive concept that transformed the abstract idea into a patent-eligible invention
invention: § This patent describes its invention as combining the advantages of the then-known filtering tools while avoiding their drawbacks
§ The claimed filtering system avoids being “modified or thwarted by a computer literate end-user,” and avoids being installed on and dependent on “individual end-user hardware and operating systems” or “tied to a single local area network or a local server platform” by installing the filter at the ISP server
- “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”
- The inventive concept described and claimed in the ‘606 patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server.
Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)
Background: Patentee brought action for infringement of patent that described methods for digitally processing and archiving files.
holding
- patent claims were directed to abstract ideas of parsing, comparing, storing, and/or editing data; but
- genuine issue of material fact existed as to whether some of those claims contained transformative inventive concept.
- “Whether a claim recites patent eligible subject matter is a question of law which may contain disputes over underlying facts. Patent eligibility has in many cases been resolved on motions to dismiss or summary judgment.”
- “Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art.”○ Holding disposition:
§ “At this stage of the case, however, there is at least a genuine issue of material fact in light of the specification regarding whether claims 4–7 archive documents in an inventive manner that improves these aspects of the disclosed archival system. Whether claims 4–7 perform well-understood, routine, and conventional activities to a skilled artisan is a genuine issue of material fact making summary judgment inappropriate with respect to these claims.”
Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed. Cir. 2019)
Background: Patentee brought action alleging infringement of patents setting forth method of connecting data capture device to mobile device allowing users to automatically publish content from the data capture device to website.
holding: passed step 2
- “factual disputes about whether an aspect of the claims is inventive may preclude dismissal at the pleadings stage under § 101”.
- Claims that “use an environment—a computer, a mobile phone, etc.—to do significantly more than simply carry out an abstract idea are patent eligible”.
Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341 (Fed. Cir. 2019)
Background: Owner of patent reciting a moveable barrier operator, such as a garage door opener, featuring a wireless status condition data transmitter that wirelessly relayed status condition messages to one or more remote devices, and patent directed to a rechargeable battery backup for use with both a barrier movement operator and electrically powered equipment, such as a power tool, brought infringement action against competitor.
holding: 1 claim reciting movable barrier was directed to abstract idea;
2 claim reciting movable barrier did not contain inventive concept sufficient to overcome directed to abstract idea;
Two distinct questions that guide the analysis under Alice step two. A court asks: (1) whether each of the elements in the claimed product (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field, and (2) whether all of the steps as an ordered combination add nothing to the laws of nature that is not already present when the steps are considered separately.
- ○ concept of communicating information wirelessly, without more, is an abstract idea.
ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019)
only used to say that the specification helps in analyzing the scope of the patent claims
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. Cir. 2014)
only really used for: “These improvements to the prior art described in the patent specification lend themselves to showing there is at least a factual dispute regarding whether the invention can be described as well understood, routine, and conventional. “
Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)
Background: Patentee brought action against competitor, alleging infringement of patents disclosing improved display interfaces, particularly for electronic devices with small screens like mobile telephones
holding: claims in patents were not directed to abstract idea of index
- “Although the generic idea of summarizing information certainly existed prior to the invention, these claims are directed to a particular manner of summarizing and presenting information in electronic devices.”
- “Claim 1 of the ‘476 patent requires “an application summary that can be reached directly from the menu,” specifying a particular manner by which the summary window must be accessed. The claim further requires the application summary window list a limited set of data, “each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application.” This claim limitation *1363 restrains the type of data that can be displayed in the summary window. Finally, the claim recites that the summary window “is displayed while the one or more applications are in an un-launched state,” a requirement that the device applications exist in a particular state. These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer. “
- ultimately says this was a a specific improvement over prior systems, resulting in an improved user interface for electronic devices. (similar to Enfish, Thales, Visual Memory)
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)
background: Patentee brought infringement action against competitors, alleging infringement of patents relating to an e-commerce system and method providing hosts with transparent, context sensitive e-commerce supported pages.
holding: non abstract. passes step 1
- these claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
- ○ Addressing the dissents point that this is just a store within a store and this the internet analog of that
§ While that concept may have been well-known by the relevant timeframe, that practice did not have to account for the ephemeral nature of an Internet “location” or the near-instantaneous transport between these locations made possible by standard Internet communication protocols, which introduces a problem that does not arise in the “brick and mortar” context
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
background: Owner of patents directed to an information management and database system brought action against competitors, alleging infringement.
holding: not directed to an abstract idea. passes step 1
- we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.
- These claims are directed to a specific improvement to the way computers operate, embodied in the self-referential table
- ○ the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database.
- The specification also teaches that the self-referential table functions differently than conventional database structures. According to the specification, traditional databases, such as “those that follow the relational model and those that follow the object oriented model,”
Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018)
background: Patentee brought action against competitor, alleging infringement of patents directed to identifying and protecting against malware. technology = a method of providing computer security by scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a “security profile.”
holding: patent claims constituted sufficient non-abstract improvement in computer functionality to render claims patent-eligible
- the method of claim 1 employs a new kind of file that enables a computer security system to do things it could not do before. The security profile approach allows access to be tailored for different users and ensures that threats are identified before a file reaches a user’s computer. The fact that the security profile “identifies suspicious code” allows the system to accumulate and utilize newly available, behavior-based information about potential threats. The asserted claims are therefore directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large.
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)
Background: Licensee of patents claiming methods for calibrating proper dosage of thiopurine drugs to treat autoimmune diseases filed infringement suit.
Holding: The Supreme Court, Justice Breyer, held that patents effectively claimed the underlying laws of nature themselves, and thus were invalid.
