Posts Tagged: "patent eligible"

Since U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu took office, I have observed, with admiration, how he has taken bold action to improve perceived problems in the patent system. The Director’s bold action has also caught the attention of members of the Supreme Court. Justice Gorsuch, joined by Chief Justice Roberts, observed, “[n]or has the Director proven bashful about asserting these statutory powers to secure the [policy judgments] he seeks.”
Oil States Energy v. Greene’s Energy Group, 138 S.Ct. 1365, 1381 (2018) (Gorsuch, J., dissenting).

I wonder, however, whether the law now permits Director Iancu to do something even bolder: create rules interpreting Section 101, at least within the limited context of the America Invents Act’s (AIA’s) post-grant review trials, such that courts may defer to the Director’s interpretation under Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984).

On November 10, the Federal Circuit reversed-in-part and vacated-in-part a decision of the District of Delaware in C R Bard Inc. v. Angiodynamics, Inc. In particular, the CAFC held that there was substantial evidence in the record to support a jury finding of infringement and willfulness and that the asserted claims were not directed solely to printed matter and were patent eligible under 35 U.S.C. 101.

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.

On November 6, the Northern District of Illinois, Eastern Division, granted a motion to dismiss an infringement suit on the grounds that the patents in suit were directed to ineligible subject matter under 35 U.S.C. 101 in Karamelion LLC v. Intermatic, Inc. The court explained that although Karamelion’s solution may be a novel application of network communication to a particular problem, “no matter how novel or groundbreaking the advance, the abstract idea cannot supply the inventive concept.”

On November 2, the United States District Court for the Northern District of California, in Google LLC v. Sonos, Inc., issued an order granting Sonos’s motion to dismiss a cause of action for infringement of Google’s U.S. Patent No. 8,583,489 (the ‘489 patent). The court found that the ‘489 patent was patent ineligible as being directed to an abstract idea. Google filed a patent infringement suit against Sonos alleging that Sonos infringed five of Google’s patents, including the ‘489 patent, which is directed to systems and methods for bookmarking media content for future availability. Sonos moved to dismiss the cause of action with respect to the ‘489 patent on the ground that it was directed to ineligible subject matter under 35 U.S.C. § 101 as an abstract idea. The ‘489 patent relates to a method of “determining if media content is available from different content sources” and “notifying a user when the availability of the media content changes.”

An untold story of the patent “reform” era is how the High Court (as well as the Congress) blithely accepted an exaggerated narrative spun by the PR campaign of the Coalition for Patent Fairness (CPF). It might have been more accurately named the “Coalition for Patent Weakness.” That is what its massive PR/lobbying campaign relentlessly sought and the result CPF members ultimately got, including at the Supreme Court. But how did it happen? To see it emerging, one need only look at three opinions of retired Justice Anthony Kennedy:  eBay in 2006, KSR in 2007 and Bilski in 2010. Then compare his many factual assertions, although unsupported, except for two, to the widely publicized narrative of the CPF.

Thankfully, there has been a recent and noticeable drop in precedential abstract idea cases from the U.S. Court of Appeals for the Federal Circuit. But on October 23, 2020, the Federal Circuit provided further “guidance” with respect to Alice Step 1 and upheld a district court finding that a TecSec patent was eligible under Section 101. The case is TecSec v. Adobe, Appeal Nos. 2019-2192 and 2019-2258 (Fed. Cir. 2020). The Federal Circuit panel for the case consisted of Chief Judge Prost along with Judges Reyna and Taranto. Judge Taranto wrote the opinion for the court. While there were some other interesting issues that the opinion raises, here we will focus on the Federal Circuit’s abstract idea analysis.

On Friday, the United States Court of Appeals for the Federal Circuit (CAFC) issued a precedential order in American Axle & Manufacturing, Inc. v. Neapco Holdings denying American Axle & Manufacturing, Inc.’s (AAM’s) motion to stay issuance of the mandate pending the filing of a petition for writ of certiorari in the Supreme Court. AAM’s motion to stay was the result of the CAFC’s precedential modified opinion that issued on July 31, 2020 modifying a prior October 3, 2019 opinion.  In the July 31 opinion, the CAFC vacated the prior judgment with respect to claim 1 of U.S. Patent No. 7,774,911
and remanded to the district court to address eligibility with respect to claim 22 and related claims.

Consumer 2.0, Inc. d/b/a Rently has filed a petition with the U.S. Supreme Court asking it to review a U.S. Court of Appeals for the Federal Circuit decision holding its patent claims ineligible for patent protection under 35 U.S.C. § 101. The claims are directed to “the use of lockboxes able to recognize time-limited codes and coordination of those codes with software to facilitate secure automated entry.” Rently’s petition was filed just as the High Court kicked off its new term by denying certiorari yesterday in Chamberlain v. Techtronic, which also sought review of a Section 101 eligibility decision.

In the latest episode of a long-running saga between Apple and Voip-Pal, the U.S. Court of Appeals for the Federal Circuit on Friday denied Apple’s request to reverse the Patent Trial and Appeal Board’s (PTAB’s) determination that 15 claims of Voip-Pal’s voice over IP communications patents were not invalid for obviousness. The Court also affirmed the PTAB’s sanctions order, which Apple had appealed because the Board did not enter adverse judgment against Voip-Pal or vacate the final written decisions and assign a new panel. The opinion was authored by Judge Reyna.

In Part I of this article, we briefly summarized how O’Reilly v. Morse was relied upon in the denial for rehearing in the recent case of AAM v. Neapco to assert that a patent claim to a method of making a motor vehicle axle failed to qualify as patent eligible subject matter under 35 U.S.C. § 101. The concurring opinions concluded that claim 22 of the patent at issue, U.S. 7,774,911, “merely invoked” natural law, and did not describe what had been obtained in the patent. Consequently, as in O’Reilly v. Morse, the claim was “too broad, and not warranted by law.”  We also noted an apparent paradox in that, while claims cannot preempt natural law and must be supported by an enabling specification, they necessarily must be able to read on embodiments that incorporate later-developed technology. The key to resolving this dilemma is the notion of invention, which was the basis for the holding by the Court of the King’s Bench in Hornblower v. Boulton.

It may seem surprising that the patent eligibility of making an axle for a motor vehicle could be so divisive among judges of a court tasked by design with the most difficult questions of patent law. And this internal division might appear particularly surprising given that the roots of the views expressed among the judges in the split decision by the Court of Appeals for the Federal Circuit in American Axle & Mfg., Inc. v. Neapco Holdings LLC et al., Case No. 2018-1763, slip op. (Fed. Cir., July 31, 2020) pre-date a famous 170-year old Supreme Court decision involving Samuel F. B. Morse’s telegraphy method, which was featured by the concurring opinions in the denial of the petition to rehear the case en banc. When viewed in a larger context, however, the most significant realization might be a unifying and constructive underlying message from the Federal Circuit bench.

Intellectual property rights continue to be the Rodney Dangerfield of assets – they “can’t get no respect.” The reasons are complex, but not terribly surprising, given the increased speed and importance of technology in recent years. Compounding the disconnect are many individuals and businesses who prefer to view IP rights as impediments, not assets that can be licensed or otherwise monetized. In their mind, pilfering content, using someone else’s invention or borrowing a name or image is akin to a “white” lie that does no real harm. This myth has been perpetuated over time in different ways by other IP holders and consumers who would prefer not to pay for what they need. The result is a strangely inhospitable environment for IP that dissuades innovation and depresses value.

Headlining day two of IPWatchdog’s CON2020 was Retired U.S. Court of Appeals for the Federal Circuit (CAFC) Chief Judge Paul Michel, who offered attendees 12 “perspectives” on the present-day Federal Circuit to provide context for some of the Court’s current problems. Ultimately, said Michel, these problems need to be fixed via legislation, not the courts, and the key to speeding up that legislative process is for individuals and companies to become involved and proactively advocate for patent reform at the local level.

Everyone agrees that the 2014 Alice v. CLS Bank decision dramatically changed courts’ approach to patent eligibility analyses under Section 101. Six years later, the Federal Circuit has issued enough opinions on the issue to allow for quantitative analysis to aid patent practitioners before that venue. We gathered our data set by reviewing every Federal Circuit decision addressing Section 101 since the Supreme Court’s Alice ruling. We tracked the judges’ individual Step 1 and Step 2 votes in each case and the ultimate panel decisions. We also recorded the opinions’ authors and the authors of any dissents, and which decisions were per curiam. Numerous cases involved independent analyses of different groups of claims. In those circumstances, we coded the votes on each claim or group separately. As a result, some cases ended up with multiple votes by a single judge being recorded on both Step 1 and Step 2.