Posted: Friday, Nov 21, 2014 @ 2:16 pm | Written by Ron Laurie | 73 comments
Should a District Court decide the question of patent-eligible subject matter under Section 101 as a “threshold issue” at the outset of the case – i.e., without the benefit of expert testimony and/or claims construction?
Former CAFC Chief Judge Rader at AIPLA on 10/25/14.
On November 14, the Federal Circuit issued its third opinion on the question of whether the claims in Ultramercial v. Hulu & Wild Tangent describe patent–eligible subject matter under 35 USC 101. In the first two decisions, the panel consisting of Chief Judge Rader and Judges Lourie and O’Malley, reversed the District Court’s granting of defendants’ Rule 12(b)(6) motion to dismiss based solely on the pleadings, i.e., prior to any discovery, expert testimony or formal claim construction.
In the latest decision (“Ultramercial-3”), the panel reached the opposite conclusion and affirmed the dismissal. This apparent turnaround was based on two intervening events: (1) the Supreme Court’s Alice decision in June; and (2) the fact that Chief Judge Rader was no longer on the court, and his place on the panel was taken by Judge Mayer. Much has, and will be, written about the first of these factors, so I would like to focus on the second, and in particular, the diametrically opposed views of Judges Rader and Mayer on a very important procedural issue; namely, whether the lack of patent-eligible subject matter should be a basis for dismissing a case at the outset based only on the “intrinsic” evidence, i.e., the patent itself and its prosecution history in the USPTO, without any discovery, expert testimony and/or claim construction. Notwithstanding the importance of the substantive Alice holding re how to distinguish a claim to an abstract idea from one that has a practical application, the procedural question is at the heart of the reversal of the CAFC’s holding in Ultramercial-3. The two judges’ opposing perspectives can most clearly be seen by comparing Judge Rader’s opinion of the court in Ultramercial-2 with Judge Mayer’s concurrence in Ultramercial-3.
In this current tenor of the global discussion on cybersecurity, multiple U.S. governmental agencies are joining with academic institutions and industry leaders to develop more proactive measures of handling and responding to cybersecurity risks. On Friday, November 14th, the U.S. Patent and Trademark Office hosted the nation’s first Cybersecurity Partnership meeting at the USPTO’s Silicon Valley office in Menlo Park, CA. A full day of events brought together officials from the PTO, the National Institute of Standards and Technology (NIST) and a variety of other stakeholders in cybersecurity development to talk about ongoing efforts to strengthen the cybersecurity response of American businesses and governmental agencies to the growing threat of computer crime. We were able to catch some of the day’s proceedings through a webcast provided by the PTO.
General Electric is a regular feature of the Companies We Follow series. What we saw today in the patent applications filed by this company with the U.S. Patent and Trademark Office showed us that research and development at the company is very focused on industrial and medical sectors. Many of the technologies we discuss in more detail below pertain to railway and other vehicular technologies. A few patent applications discuss improvements to electrical utility systems, including one technique for monitoring plant activity near electrical grid components to identify exactly when to clear vegetation away from power lines.
The strong patent portfolio enjoyed by General Electric enjoyed a number of important additions in recent weeks. Some of the most intriguing that we saw today involve medical innovations, including systems for the synchronization of imaging data collected during a procedure to better guide a medical professional during a procedures. We’re also sharing a patent protecting a useful technology for locating defects in an underground cable to ensure consistent delivery of electrical utilities. Gas turbines and another innovation regarding railway tech is also explored more deeply in today’s column.
Posted: Tuesday, Nov 18, 2014 @ 12:42 pm | Written by Gene Quinn | 4 comments
Harvey Sener (left) and Eran Zur (right)
On November 6, 2014, at the IP Dealmakers Forum there was a particularly interesting and entertaining discussion about financing patent owners. The discussion was, in my opinion, one of the most insightful and informative presentations over the two day event. That is typically what happens when you have intelligent, thoughtful individuals with strongly held but divergent viewpoints. Indeed, the discussion highlighted two distinct strategies for making money providing financing to patent owners who are seeking to monetize their patents. The panel discussion was largely dominated by Eran Zur, Head of IP Finance of Fortress Investment Group, and Ashley Keller, Managing Director of Gerchen Keller Capital. Zur and Fortress lend money to patent owners who pledge a portfolio, or subset of a portfolio, as collateral to secure the loan. On the other hand, Keller and GKC finance patent litigation, employing an equity model.
The panel kicked off in a spirited way when the moderator, Harvey Sener, who is a Partner with Sichenzia Ross Friedman Ference, asked the panelists whether they would lend to or finance non-practicing entities or others who might be from a class of actors that has been vilified in the public — or in other words “patent trolls.” Zur explained that he and Fortress do not label potential borrowers, instead choosing to keep their eye on the assets and employing good, old fashion best lending practices. . “We focus myopically on the value of the patent — we are agnostic,” Zur explained. “If we think the assets are good enough to provide a loan based on the asset as collateral we will loan the money.”
As a debt provider they focus on the value of the patents and not what the borrower may want to do with the money obtained. On the other end of the spectrum Keller explained that he does care about whether they are financing a patent troll or non-practicing entity because who you are financing needs to be taken into account because financing is all about risk — when you finance a patent troll the litigation risk is much higher for a variety of reasons.
Posted: Tuesday, Nov 18, 2014 @ 11:11 am | Written by Ernest Graff | 6 comments
The Australian Full Federal Court recently handed down its decision in Research Affiliates LLC v Commissioner of Patents. The decision is an important addition to Australian case law concerning the patentability of business methods and software.
Judges Kenny, Bennett, and Nicholas ruled that the Appellant’s claimed computer implemented method for generating an index for use in securities trading was unpatentable as an abstract idea. The Court held that “[t]he claimed method in this case clearly involves what may well be an inventive idea, but it is an abstract idea. The specification makes it apparent that any inventive step arises in the creation of the index as information and as a scheme. There is no suggestion in the specification or the claims that any part of the inventive step lies in the computer implementation. Rather, it is apparent that the scheme is merely implemented in a computer and a standard computer at that. It is no part of the claimed method that there is an improvement in what might broadly be called ‘computer technology’.”
In our opinion this case does not present a major change in the law in Australia regarding the patentability of business methods and software, but clarifies that mere reference to computer implementation in patent claims will not be enough to satisfy Australia’s requirements of patentable subject matter. Otherwise, the patentability of business methods and software, where a computer is “inextricably linked with the invention itself”, appear to remain patentable in Australia.
Posted: Monday, Nov 17, 2014 @ 8:00 am | Written by Steve Brachmann | 2 comments
As humans, all of our greatest dreams and biggest fears about technology seem to be provoked by the stirring topic of robotic technologies. Robots have the potential to eliminate a great amount of monotonous work, provide assistance to human workers and serve in highly specialized environments, like hospitals or factories. At the same time, people can be concerned with how this technology will change daily life and worry about increasing isolation among humans or the loss of a job as a result.
Even major names in technology development have showed signs of being spooked by robotics. In a talk given at a technology symposium held at the Massachusetts Institute of Technology, SpaceX CEO Elon Musk called robots the “biggest existential threat” to the human race, even arguing for national and international regulatory oversight on artificial (AI) development. Musk is even an investor in robotics, having put money into the AI development firm Vicarious, making his unease over the negative potential of robotics all the more telling.
This holiday season, robots will likely have a much higher profile than they typically enjoy. Retail stores will prove to be a major testing ground for the consumer use of robotic technologies, as Lowe’s recently unveiled a lineup of robotic sales assistants, known as OSHbots, for certain stores. The robot can communicate in multiple languages and can direct customers to the exact location of an item they’re seeking in the store. Collision avoidance and autonomous navigation technologies are incorporated into these sales assistants, helping them travel across large stores safely.
Posted: Sunday, Nov 16, 2014 @ 11:46 am | Written by Gene Quinn | 48 comments
On Thursday, November 14, 2014, the United States Court of Appeals for the Federal Circuit issued its latest decision in Ultramercial v. Hulu, which deals with the patent eligibility of software related patent claims. The district court originally held that U.S. Patent 7,346,545 (the “’545 patent”), the basis for the complaint filed by Ultramercial, does not claim patent-eligible subject matter under 35 U.S.C. § 101. This decision was appealed to the Federal Circuit, which reversed, concluding that the district court erred in granting WildTangent’s motion to dismiss for failing to claim statutory subject matter. WildTangent filed a petition for certiorari with the Supreme Court, which was granted. The Supreme Court vacated the Federal Circuit decision, and remanded the case for further consideration in light of its decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.
On remand the Federal Circuit once again found that the claims asserted by Ultramercial defined patent eligible subject matter. WildTangent again filed a petition for certiorari with the Supreme Court. While WildTangent’s petition was pending, the Supreme Court issued its decision in Alice Corp. v. CLS Bank International. Ultimately, the Supreme Court once again granted WildTangent’s petition for a writ of certiorari, vacated the Federal Circuit decision, and remanded the case for further consideration, this time in light of Alice.
Ultramercial’s Federal Circuit luck has now run out. Gone from the original panel was Chief Judge Rader who retired and was replaced by Judge Mayer, which does not bode well for any patent owner. This time in an opinion written by Judge Lourie the Ultramercial claims were found to be patent ineligible because they constitute nothing more than an abstract idea. If Judge Lourie were trying to predict what the Supreme Court would do when faces with patent claims that are clearly NOT abstract, his decision makes sense. Still, it is extraordinarily troubling that patent claims are being invalidated left and right based upon the so-called “abstract idea doctrine,” where the critical term “abstract idea” has never been defined by the Supreme Court or the Federal Circuit.
A look into the recently published patent applications assigned to Dow from the U.S. Patent and Trademark Organization shows us that GMOs and herbicides have been a major area of focus for Dow and Dow AgroSciences, its chief subsidiary in agricultural chemical engineering. Plastics used for packing fragile items or for providing a barrier between soil and building foundations in construction projects.
The patent portfolio of Dow has also been increasing recently, incorporating chemical engineering innovations designed for a wide range of industrial sectors. One patent protects a method of developing fragrances for laundry detergents which evaporate less quickly, helping clothes to retain a fragrance for a longer period of time. Oil-in-water emulsions were the focus of a number of patents which we decided to share today, including one discussing a herbicidal composition for agricultural uses. Another patent we noticed protects a topically-applied pharmaceutical drug designed to treat bacterial infections or acne rosacea.
Posted: Saturday, Nov 15, 2014 @ 10:00 am | Written by Steve Brachmann | 1 Comment »
Over the past decade, the consumer world has experienced a revolution in mobile computing technologies which saw the cellular phone take on an amazing array of new functions through the use of electronic circuitry and computer-connected sensors. Considering the current ubiquity of smartphones, it’s amazing to think that this technology was still being developed in the early 2000s and had not yet reached widespread popularity and use.
The spurts and starts of wearable technology in recent days are reminiscent of that earlier period of smartphone development. We’ve all heard that wearable gadgets are a major part of the future of computing, but most of the consumer world is still waiting for a product that can appeal to the masses. Google Glass was released with a lot of hype earlier this year, for example, but it hasn’t reached a wide consumer base. A high price tag and an unfashionable look have been cited by some as reasons why the product hasn’t seen the sort of sales expected.
Developers of wearable technology haven’t exactly figured out the secret to commercial success with these products as of yet, but the time in which they will is soon coming. Holiday shopping forecasts for England show that sales of wearable gadgets will be 182 percent greater than they were during the 2013 holiday season. Other industry reports are predicting that global shipments of wearable tech devices will likely explode from 27 million shipments in 2014 to 116 million shipments in 2017. The demand for wearable tech is growing; as many of us saw with the meteoric rise of the iPhone smartphone device or the Android operating system, all it will take is a single functional and design improvement to unleash the power of wearable tech for practical and personal use. Today, we wanted to take a look at advances in this sector of technology well before the wave of its popularity crests, as well as some of the issues which have proven to be obstacles in the way of consumer acceptance of wearable tech.
Posted: Friday, Nov 14, 2014 @ 12:11 pm | Written by Gene Quinn | 7 comments
The Federal Circuit recently issued a decision in CardSoft v. Verifone, which the Court overturned the district court’s claim construction. Overturning a district court’s claim construction is hardly unusual, and perhaps more typical than it really should be, but that is another story for another day. What was unique about this particular case was that the Federal Circuit also went on to rule that CardSoft had waived any argument that the defendants had infringed under what they determined to ultimately be the correct claim construction.
CardSoft filed this patent infringement suit in March 2008 against VeriFone, Inc., VeriFone Systems Inc., and Hypercom Corp. (collectively, “Defendants”), asserting infringement of U.S. Patent Nos. 6,934,945 (“the ’945 patent”) and 7,302,683 (“the ’683 patent”). The district court held a Markman hearing in July 2011 and conducted a jury trial in June 2012. The jury determined that certain of the Defendants’ devices infringed claim 11 of the ’945 patent and claim 1 of the ’683 patent and that these claims were not invalid. The Defendants moved for a new trial and for judgment as a matter of law, but the district court denied both motions.
Qualcomm is a regular part of IPWatchdog’s Companies We Follow series, and the recently published patent applications that we surveyed taught us some intriguing things about this corporations research and development activities. Neighborhood-aware networks, which can provide digital services to many homes within the same neighborhood, are the focus of a few filings. Qualcomm is also seeking to protect both an electronic scale with conversion table software and a pair of headphones with a novel technique for overcoming popping and clicking noises when plugging the headphone connector into an audio port.
The strength of Qualcomm’s patent portfolio is a major reason why this company is so successful internationally. Most of the patents recently issued to this corporation protect various mobile device innovations, including the use of an inclinometer to detect the incline of a device display and adjusting the way an image is rendered to improve the view relative to the incline. Gesture-based financial transaction completed across mobile devices, as well as methods of providing location information on indoor environments, have also been protected for Qualcomm through patents issued over the past few weeks.