Posts Tagged: "Alice"

In Two-Way Media Ltd v. Comcast Cable Communs., LLC, (Opinion for the court, Reyna, J.), the Federal Circuit affirmed a district court decision finding four patents owned by Two-Way Media were directed to ineligible subject matter under 35 U.S.C. § 101. Claim 1 of the ‘187 patent was representative of the ‘187 and ‘005 patents, and described a method for transmitting message packets over a communications network, like the Internet… For claims directed to judicial exceptions under § 101, a patent cannot identify a sufficient inventive concept solely in the specification and survive the Alice inquiry; the inventive concept must be found in the claims themselves in order to transform the nature of the claims into a patent-eligible application.

The TC Heartland decision follows the trend of eroding patent holder rights due to the potential for infringers to more easily move the lawsuit to a more favorable forum and in some cases have the issues of infringement and discovery for same stayed for a year or more.  As patents and mechanisms to enforce patents become weaker, the high-tech economy of Northern California will begin to diminish as foreign companies encounter fewer obstacles in their way to compete against companies with weaker IP rights… Because so much hinges on a stay motion in modern patent litigation cases, this predominant statistic influences where plaintiffs should consider filing their patent complaint.

In Smart Sys. Innovations, LLC v. Chi. Transit Auth., the majority of a Federal Circuit panel affirmed a district court’s holding that several claims of four related patents “are directed to an abstract idea and otherwise lack an inventive concept, such that they are patent ineligible under § 101.” *** In a patent-eligibility analysis under Alice, characterizing what the claims are “directed to” is a key aspect of inquiry for abstract ideas. Overly broad and “categorical” characterizations of the claimed invention may be detrimental to the patentability of claims.

Many district courts have interpreted Alice as authorizing invalidation of issued patents as “abstract” based solely on the pleadings. They have done so even where the invalidation rests on resolution of a disputed issue of fact or of claim construction or scope. In short, since Alice, the Federal Circuit has done nothing to clear up the district courts’ confusion, but instead has affirmed pleading invalidations more than 90 percent of the time. Nothing in Alice, or Mayo for that matter, authorized these “pleadings invalidations.” Whether you agree with the decisions or not, both Alice and Mayo, were decided on summary judgment.

The Federal Circuit heard the case of Secured Mail Solutions LLC v. Universal Wilde, Inc., where the Appellant, Secured Mail Solutions LLC (“Secured Mail”) appealed from the grant of a motion to dismiss on grounds that the claims of seven asserted patents are directed to subject matter ineligible for patenting under 35 U.S.C. § 101. The Federal Circuit affirmed the district court’s grant of Universal’s motion to dismiss… Claims determined to be patent-ineligible based on intrinsic evidence from the specification can be dismissed, at the motion to dismiss stage, without need for “extraneous fact finding outside the record.”

The Internet of Things (IoT) has been upon us for some time now, though many are just beginning to see it — the interconnected network of devices that increasingly surrounds us. We actually welcomed the first personal IoT device a while ago in the smart phone, a device whose functionality depends on its connection to a cellular network or the internet. Imagine the impact your phone has had many times over — with billions of interconnected smart devices — and you get a sense of the IoT’s expected scale… Unfortunately, protecting your IP in the IoT is likely to be both more complicated and lead to more patent infringement lawsuits than ever before.

Today’s environment demands an agile approach, one that involves substantial up-front planning, followed by continuously learning from both the client and the marketplace, using a strategy that involves constructing a defensive and offensive patent portfolio from a collection of laser-focused patents, rather than a single overarching patent intended to cover the invention in one fell swoop… More concretely, the strategy that we typically follow nearly always avoids the need to appeal, and therefore avoids the pitfalls of the PTAB, as follows. The foundation is to write a solid and comprehensive patent specification, one that is intended to cover the invention both broadly and deeply, in an effort to enable as many embodiments as possible for as long into the future as possible, encompassing both the client’s and competitors’ technologies. The first patent application that we file, however, typically has relatively narrow claims for a variety of strategic reasons…

Margaret Weichert, Trump’s selection for deputy director of management at the OMB, is an inventor who has received “14 successful U.S. patents,” an indication that someone knowledgeable about patents and the U.S. patent system will have a role in shaping U.S. policy on the budget for the executive branch, including the U.S. Patent and Trademark Office. As an inventor and entrepreneur, Weichert’s focus was squarely on financial networking and online transactions.

In Visual Memory LLC v. NVIDIA Corp., a district court dismissed a patent infringement complaint under FRCP 12(b)(6) for failure to state a claim, because the patent was drawn to patent ineligible subject matter. On appeal, the Federal Circuit found that the patent “claims an improvement to computer memory systems and is not directed to an abstract idea.” Accordingly, the Court reversed and remanded for further proceedings.

The majority determined that the patent claims drawn to a computer memory system did not cover an abstract idea and, therefore, the second step of the Alice test was an unnecessary inquiry… “Our review of the ’740 patent claims demonstrates that they are directed to an improved computer memory system, not to the abstract idea of categorical data storage,” Judge Stoll wrote. “The specification explains that multiple benefits flow from the ’740 patent’s improved memory system.”

In the years after the Alice decision, it had seemed as though examiners in the business method art units felt as though their hands were tied with respect to issuing applications. Even if they had recommended an application for allowance, it was often sent back by quality review with an indication that a patent-eligibility rejection should be made or maintained. However, in early 2017 – at least with respect to a handful of applications – examiners’ perspectives seem to have changed, where they were more willing to work with the applicants to find eligible claim material and/or suitable arguments to be put on the record that would suffice for an allowance… While we note that the business method allowance prospects still remain substantially below those in other Technology Centers, the beyond-doubling of this statistic is of practical significance.

In RecogniCorp, LLC v. Nintendo Co., the Federal Circuit affirmed the district court’s decision that RecogniCorp’s patent claims are directed to an abstract idea, and do not contain an inventive concept sufficient to make them patent-eligible under 35 U.S.C. § 101… Adding one abstract idea, such as math, to another abstract idea, such as encoding- decoding, does not make the claim non-abstract. A claim containing a mathematical formula can satisfy § 101 when it applies the formula in a structure or process which, as a whole, is performing a non-abstract function that the patent laws were designed to protect. Under Alice step two, a claim that is directed to a non-abstract idea is not rendered abstract simply because it uses a mathematical formula. However, the reverse is also true: A claim directed to an abstract idea does not automatically become patent eligible by adding a mathematical formula. The elements of the claim must be examined to determine whether there is an inventive concept beyond the addition of a mathematical formula, e.g. to be implemented on a computer. The claims must make it clear how the invention improves a specific technology, rather than simply stating to an abstract end-result.

The Federal Circuit held that the claim was directed to the abstract idea of encoding and decoding image data. According to the panel, the claim recited “a method whereby a user displays images on a first display, assigns image codes to the images through an interface using a mathematical formula, and then reproduces the image based on the codes… This method reflects standard encoding and decoding, an abstract concept long utilized to transmit information.” The Federal Circuit went on to note under step one that RecogniCorp’s Claim 1 differed from the invention in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) because, unlike Enfish’s invention, Claim 1 did not recite a software method that improved the functioning of a computer but instead recited a process “for which computers are invoked merely as a tool.”

Though patent sales rates have decreased in 2016, the patent market remains viable and robust. We continue to see a trend in the increased speed at which packages sell (over 50% are sold within four months) as well as an increased sales premium for packages with Evidence of Use (EOU) — a 27% price boost. 2016 also saw a rise in sales rates from larger patent packages; its highest sales rates were from packages with between 11 and 25 assets, an increase in package size from 2015, which counted its highest sales rates from packages with six to 10 assets.

When comparing the per-asset price to the asking price for packages, we found that per-asset pricing is relatively constant in the pricing brackets from $250,000 to $2 million, with the low being $180,000 per asset and the high being $234,000 per asset (Figure 9). We observed a slight premium on asking prices in the $4 million to $10 million range – $323,000 – which was not seen in 2015. However, the $10 million to $20 million range per asset prices dropped significantly, from $356,000 to $257,000. Because of a limited number of packages in the $4 million-plus range, it can be challenging to draw firm asking price conclusions for those packages. However, it may be that sellers are becoming more reasonable; the outliers in the $4 million to $10 million range are being driven by smaller packages with many EOUs, as opposed to large undifferentiated packages. Price per asset continues to drop for packages below $250,000, indicating higher-risk or lower-value patents (eg, no infringement, recent priority dates or almost expired patents).