Patent News:

Fed. Cir. vacates BPAI's refusal to consider amended claim (posted 08/31/16)

In Veritas TEchnologies v. Veeam Software Corp., the Fed. Cir. vacated the BPAI's refusal to consider an amended claim. The BPAI denied Veritas' motion to add usbstitute claims because it considered the motion and supporting declaration deficient because Veritas “offered no discussion of whetehr the newly added features . . . were separately known in the art” (internal quotes omitted). All that Veritas discussed was that the newly added features in combination with other known features were not in the prior art.“

The Fed. Cir. concluded that because there is no reason to doubt that it is only the combination that was the “new feature” a scenario recognized in a long line of Supreme Court and Federal Circuit cases noting that novel and nonobvious inventions are also only a combination of known individual features. Stated the court: “In this case, we fail to see how describing the combination is meaningfully different from describing what is new about the proposed claims, even in comparison to the unamended claims.”

Fed. Cir. reverses BPAI obviousness holding (posted 08/15/16)

In Arendi S.A.R.L. v. Apple Inc., (Fed. Cir. 2016), the Federal Circuit reversed a holding by the BPAI that a claim to searching a contacts list for a matching contact on recognizing a name or phone number in a text was obvious in view of a reference teaching the phone number recognition, but not the search. As basis for the BPAI's rejection under 35 U.S.C. § 103(a) based on a single reference, the BPAI stated:

We find it reasonable to presume, as a matter of common sense and at the time of the invention, that the subroutine in Pandit would search for duplicate telephone numbers and, upon locating a duplicate entry, both the first information and associated (or second) information, such as the name and/or address associated with the telephone number, would be displayed to the user.

The Federal Court rejected “common sense” as a substitute for evidence when attempting to meet a claim limitation, and further expounded on appropriate uses for “common sense” in patent law:

  1. First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.
  2. Second, in Perfect Web, the only case Appellees identifies in which common sense was invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question was unusually simple and the technology particularly straightforward.
  3. Third, our cases repeatedly warn that references to “common sense”–whether to supply a motivation to combine or a missing limitation-—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.

Fed. Cir. suggests eligible under § 101 if patentable under §§ 102/103 (posted 07/31/16)

On June 27, the Federal Circuit, BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, issued another opinion interpreting Alice, Mayo, and now Enfish, in the field of computer software, vacating the district court's dismissal, and remanding to the lower court for further proceedings. In this case, the invention relates to a method to provide filtering internet requests at an ISP, where the filtering is customized for the particular user, as determined by a sign-in process.

The court addressed step 2 of the 2-step analysis outlined in Mayo without resolving step 1. Stated the court (internal citations and quotes omitted):

This case, unlike Enfish, presents a close call about how to characterize what the claims are directed to. The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.

Fed. Cir. criticized the District court's step 2 analysis of the claim limitations, stating (internal cites and quotes omitted):

In light of Mayo and Alice, it is of course now standard for a § 101 inquiry to consider whether various claim elements simply recite well-understood, routine, conventional activities. The district court's analysis in this case, however, looks similar to an obviousness analysis under 35 U.S.C. § 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

Jude Newman's Concurrence

Finally, Judge Newman’s concurs in result, but makes a forceful argument that, in order to resolve the issue presented in this case as to patent eligibility, you need to resolve patentability, and in such cases, the lower courts should litigate both eligibility and patentability together:

When evidence of patentability is needed or presented to resolve a challenge to eligibility of claims to a new method . . . the district court and the parties should have the flexibility to resolve patentability at this threshold. If the claims are unpatentable, any issue of abstractness, however defined, is mooted. And if the subject matter is patentable, it is not an abstract idea. We should clarify that such expediency is an available response to challenges on the ground of abstract idea.

Fed. Cir. en banc reverses panel on on-sale bar (posted 07/11/16)

Pfaff’s two-step framework for determining whether a sale triggers an on-sale bar requires

  1. that the claimed invention was the subject of a commercial offer for sale; and
  2. that the claimed invention was ready for patenting (can be met by (1) proof of a reduction to practice or (2) drawings or other descriptions sufficiently specific to enable a person of ordinary skill to practice the invention).

The Federal Circuit, in an en banc decision in The Medicines Company v. Hospira, Inc. reversed the prior panel decision holding that the sale by a manufacturor to the patentee did not meet the requirements of the second step outlined by Pfaff v. Wells 1) on what constitutes an on-sale bar. This decision reverses the “no supplier exception” rule under Special Devices, Inc., v. OEA, Inc., 2).

Stated the court:

  • . . . the mere sale of manufacturing services by a contract manufacturer to an inventor to create embodiments of a patented product for the inventor does not constitute a “commercial sale” of the invention.
  • . . . commercial benefit – even to both parties in a transaction – is not enough to trigger the on-sale bar of § 102(b); the transaction must be one in which the product is “on sale” in the sense that it is “commercially marketed.”

The court found three reasons in the present case that the sale did not meet the first test in Pfaff:

  1. only manufacturing services were sold to the inventor – the invention was not;
  2. the inventor maintained control of the invention, as shown by the retention of title to the embodiments and the absence of any authorization to Ben Venue to sell the product to others; and
  3. “stockpiling,” standing alone, does not trigger the on-sale bar.

Fed. Cir. reverses district court's ruling requiring that continuations be filed at least one day before parent's grant (posted 06/21/16)

35 U.S.C. 120 (pre‑AIA) Benefit of earlier filing date in the United States:

An application for patent for an invention disclosed . . . in an application previously filed in the United States . . . which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application. . . .

In Immersion Corp. v. HTC Corp, The Federal Circuit reversed a lower court decision invalidating a patent because it was filed the same day as its parent application.

Stated the court:

The statutory language does not compel, though it certainly could support, adoption of a day as the unit of time for deciding if filing is “before” patenting. And history is decisive in permitting the same-day-continuation result, under which using units of time of less than a day, a “filing” is deemed to occur before “patenting.” The Supreme Court approved same-day continuations in 1863, and the 1952 Patent Act, which introduced section 120, was broadly a codification of existing continuation practices. And same-day continuations have been approved by a consistent, clearly articulated agency practice going back at least half a century, which has plausibly engendered large-scale reliance and which reflects the agency's procedural authority to define when the legal acts of “filing” and “patenting” will be deemed to occur, relative to each other, during a day. We reverse the district court’s contrary holding and remand.

Oral Arguments

S.Ct. affirms BRI standard for AIA reviews (posted 06/20/16)

In Cuozzo Speed Technologies LLC v. Lee, the Supreme Court affirmed the Federal Circuit's holding that (1) the decision whether to institute inter partes review is final and non-appealable, and (2) broadest reasonable interpretation of claims is “a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office.”

Oral Arguments

On April 25, 2016, the Supreme Court heard oral arguments.

Opinion below: Federal Circuit

In a 6-5 decision, In re Cuozzo Speed Technologies, LLC., the full Federal Circuit denied en banc review of its prior panel decision to let stand broadest reasonable interpretation (BRI) claim construction by the BPAI during inter partes review. Judge Dyk, joined by Lourie, Chen, and Hughes, authored a concurring opinion finding (1) the PTO has applied BRI standard in proceedings for more than a century, and (2) the AIA does not indicate congressional intent to change the prevailing BRI standard.

Judge Prost, joined by Newman, Moore, O'Malley, and Reyna, dissented, arguing that IPR is a new, court-like proceeding designed to adjudicate validity of issued patent claims and in such proceeidngs claims are given their actual meaning, not BRI. According to Prost, the AIA “is a new statutory regime” and Congress' silence as to the proper claim construction standard does not suggest congressional intent one way or the other on this new proceeding.

Newman wrote a separate dissent, highlighting the outlier nature of the majority opinion, noting that “[a]ll of the amici curiae criticize the panel majority position and urge en banc attention to this “matter of exceptional importance.” Separately she argues that “the legislative purpose [of the AIA] fails if the PTO applies different law than is applied in the courts” and again lists from her panel dissent the reasons BRI is improper in AIA proceedings.

Supreme Court nixes Seagate, relaxes treble damages rule (posted 06/14/16)

35 U.S.C. § 284:

Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.

When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d) .

The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.

In a combined ruling for Halo Electronics v. Pulse Electronics and Stryker v. Zimmer, the Supreme Court struck down the two-part test under In re Seagate technology, LLC, 3) for determining when a district court may increase patent infringement damages under 35 U.S.C. § 284.

Holdings

Stated the court:

  • [Section 284] contains no explicit limit or condition, and we have emphasized that the “word 'may' clearly connotes discretion” [citing Martin v. Franklin Capital Corp.]] [. . .] At the same time, ”[d]iscretion is not a whim.“ . . . Thus, although there is “no precise rule or formula” for awarding damages under §284, a district court's “discretion should be exercised in light of the considerations” underlying the grant of that discretion. [Internal citations removed.]
  • That [Seagate]] test . . . “is unduly rigid, and it impermissibly encumbers that statutory grant of discretion to district courts” [quoting Octane Fitness]. In particular, it can have the effect of insulating some of the worst patent infringers from any liability for enhanced damages.
  • The principle problem with Seagate's two-part test is that it requires a finding of objective recklessness in every case before the district courts may award enhanced damages. [. . .] The existence of such a defense insulates the infringer from enhanced damages, even if he did not act on the basis of the defense or was even aware of it. Under that standard, someone who plunders a patent–infringing it without any reason to suppose his conduct is arguably defensible–can nevertheless escape any comeuppance under §284 solely on the strength of his attorney's ingenuity.
  • Section 284 allows district courts to punish the full range of culpable behavior. Yet none of this is to say that enhanced damages must follow a finding of egregious misconduct. As with any exercise of discretion, courts should continue to take into account the particular circumstances of each case in deciding whether to award damages, and in what amount. Section 284 permits district courts to exercise their discretion in a manner free from the inelastic constraints of the Seagate test. Consistent with nearly two centuries of enhanced damages under patent law, however, such punishment should generally be reserved for egregious cases typified by willful misconduct [emphasis added].
  • The Seagate test is also inconsistent with §284 because it requires clear and convincing evidence to prove recklessness. [. . .] Like §285, §284 “imposes no specific evidentiary burden, much less such a high one” [quoting Octane]. [. . .] As we explained in Octane Fitness, “patent-infringement litigation has always been governed by a preponderance of the evidence standard.” [. . .] Enhanced damages are no exception.
  • Finally . . . we . . . reject the Federal Circuit's tripartite framework for appellate review. [. . .] Because Octane Fitness confirmed district court discretion to award attorney fees, we concluded that such decisions should be reviewed for abuse of discretion. [. . .] The same conclusion follows naturally from our holding here.

Concurring opinion by Justice Breyer, joined by Kennedy and Alito

Stated J. Breyer:

  • First, the Court's references to “willful misconduct” do not mean that a court may award enhanced damages simply because the evidence shows that the infringer knew about the patent and nothing more. [. . .] Here, the court's opinion, read as a whole and in context, explains that “enhanced damages are generally appropriate . . . only in egregious cases.” [. . .] They amount to “punitive” sanction for engaging in conduct that is either “deliberate” or “wanton.”
  • Second, the Court writes against a statutory background specifying that the “failure of an infringer to obtain the advice of counsel . . . may not be used to prove that the accused infringer willfully infringed.” §298. The Court does not weaken this rule through its interpretation of § 284. Nor should it.
  • Third, . . . enhanced damages may not “serve to compensate patentees” for infringement-related costs or litigation expenses. [. . .] That is because §283 provides for the former prior to any enhancement.
  • Consider that the U.S. Patent and Trademark Office estimates that more than 2,500,000 patents are currently in force. [. . .] moreover, Members of the Court have noted that some “firms use patents . . . primarily [to] obtai[n] licensing fees” [citing eBay]. Amici explain that some of those firms generate revenue by sending letters to “tens of thousands of people asking for a license or settlement” on a patent “that may in fact not be warranted.” [. . .] How is a growing business to react to the arrival of such a letter, particularly if that letter carries with it a serious risk of treble damages? Does the letter put the company “on notice” of the patent? Will a jury find that the company behaved “recklessly” simply for failing to spend considerable time, effort, and money obtaining expert views about whether some or all of the patents described in the letter apply to its activities (and whether the patents are even valid)? These investigative activities can be costly. Hence the risk of treble damages can encourage the company to settle, or even abandon any challenged activity. [¶] To say this is to point to a risk: The more that businesses . . . adopt this approach, the more often a patent will reach beyond its lawful scope to discourage lawful activity, and the more often patent-related demands will frustrate, rather than “promote” the “Progress of Science and useful Arts” [quoting Art. I, §8, cl. 8 of the Constitution]. [. . .] Thus, in the context of enhanced damages, there are patent-related risks on both sides of the equation. That fact argues, not for abandonment of enhanced damages, but for their careful application, to ensure that they only target cases of egregious misconduct.
    • [Editor's note: Is Breyer saying that ignoring threads from patent trolls should not be considered “egregious”?]
  • One final point: The Court holds that awards of enhancement damages should be reviewed for an abuse of discretion. [. . .] I agree. But I also believe that, in applying that standard, the Federal Circuit may take advantage of its own experience in patent law. Whether, for example, an infringer truly had “no doubts about [the] validity” of a patent may require an assessment of the reasonableness of a defense that may be apparent from the face of that patent.

Fed. Cir. hears args on limits of CBM review (posted 06/08/16)

AIA § 18(d)(1): IN GENERAL.—For purposes of this section, the term ‘‘covered business method patent’’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

In Unwired Planet v. Google, the Federal Circuit heard arguments regarding a PTAB CBM decision invalidating all claims under § 112 first paragraph. The arguments dealt with possible overreach by the PTO in instituting the CBM review of patent claims that relate to a system for providing location-based services to connected mobile devices.

Unwired Planet argued that the U.S. Patent 7,024,205 is not directed to covered business method and PTAB had no business instituting the CBM. From questioning, the judges appear inclined to avoid the question of CBM review by finding invalidity by reasons of obviousness in an IPR on the same patent proceeding in parallel with the CBM review. Judges grill Google's representative on whether this patent relates to a financial service starting at 30:28.

Fed. Cir. reverses 101 invalidity on "self referential database" (posted 05/17/16)

On May 12, 2016, in Enfish v. Microsoft Corp., the Fed. Cir. reversed a district court ruling of invalidity under § 101 of a claim directed to a self referential database.

§ 101 eligibility - Key Holdings

  • “We . . . see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs.”
  • ”[t]he first step in the Alice inquiry . . . asks whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.“

The Fed. Cir. held that, in finding that Enfish's claims were directed simply to “the concept of organizing information using tabular formats”, the district court oversimplified the self-referential component of the claims and downplayed the invention's benefits. Contrasting the facts of this case with Versata Development Group v. SAP America, the court rejected the argument that the claims are doomed under Alice because the invention can run on a general-purpose computer. For similar reasons, the court rejected the idea that because the improvement is not defined by reference to “physical” components, the claims are invalid under Alice, refusing to resurrect the bright-line machine-or-transformation test of Bilski.

Benefits of the Invention: The court, in several places and in particular in oral arguments expounded on the benefits the invention brings to the art. Stated the court: “Moreover, our conclusion that the claims are directed to an improvement of an existing technology is bolstered by the specification's teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. [. . .] In finding that the claims were directed simply to 'the concept of organizing information using tabular formats,' . . . the district court oversimplified the self-referential component of the claims and downplayed the invention's benefits.”

The opinion refers to a large extent to points made in oral arguments:

§ 112 definiteness

The court rejected Microsoft's argument that the means-plus-function element in claim 17 is indefinite under 35 U.S.C. § 112, finding that the district court's 4-step algorithm sufficiently identified a structure for a person of skill in the art to implement the function of “configuring said memory according to a logical table.”

Stated the court:

  • “The fact that this algorithm relies, in part, on techniques known to a person of skill in the art does not render the composite algorithm insufficient under § 112 ¶ 6. Indeed, this is entirely consistent with the fact that the sufficiency of the structure is viewed through the lens of a person of skill in the art and without need to 'disclose structures well known in the art,' 4).

Laches question still unsettled (updated 05/03/16)

Supreme Court grants petition

On May 2, 2016, the S.Ct. granted a petition in SCA Hygiene Products v. First Quality Baby Products, LLC. to address the question: “whether and to what extent the defense of laches may bar a claim for patent infringement. . . .”

At the Federal Circuit

In an en banc majority opinion authored by Chief Judge Prost, the Federal Circuit, in SCA Hygiene Products v. First Quality Baby Products, LLC, found that § 282 defenses provision of Title 35 includes laches (even though it is not mentioned) and that case law (pre-dating the Supreme Court's decision last year in Patrella) shows that laches is a defense to legal liability and hence a defense to patent infringement for prior damages, in contravention of the plain meaning of Patrella in view of § 286. Confused? Read on . . .

Background

In this case has an interesting background:

  • On October 31, 2003, patent holder SCA notifies defendant First Quality of infringement of Patent 6,375,646.
  • On November 21, 2003, First Quality informs SCA that it thinks SCA's patent is invalid because it is anticipated by prior patent 5,415,649, and therefore it is not infringing
  • On July 7, 2004, SCA requests reexamination of the '646 patent in light of the '649 patent. SCA does not notify or communicate with First Quality regarding the reexamination or otherwise, after the initial exchange.
  • On March 27, 2007, the PTO confirmed patentability of all 28 original claims and issued several other claims SCA added during reexamination.
  • On August 2, 2010 – over three years after reexamination concluded and nearly seven years since the original communication – SCA filed a complaint alleging First Quality of infringing the '646 patent.
  • The district court granted First Quality's summary judgment motion on latches and equitable estoppel.
  • SCA appealed and in an earlier panel decision, the summary judgment was affirmed the district court's analysis.
  • SCA filed a petition for rehearing en banc, posing the following questions:
    1. In light of the Supreme Court's decision in Petrella v. Metro-Goldwyn-Mayer 5), should A.C. Aukerman Co. v. R.L. Chaides Constr. Co. 6), be overruled so that the defense to latches is not applicable to bar a claim for damages based on patent infringement occurring within the six-year damages limitation period established by 35 U.S.C. § 286?
    2. In light of the fact that there is no statute of limitations for claims of patent infringement and in view of Supreme Court precedent, should the defense of latches be available under some circumstances to bar an entire infringement suit for either damages or injunctive relief?

Status Quo

35 U.S.C. 286 Time limitation on damages:

Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

In the case of claims against the United States Government. . . .

The majority opinion discussed judicial history of laches and equitable estoppel vis-à-vis the precedent set by Aukerman. Stated the court: ”Aukerman was motivated by preserving the distinction between laches – which bars only pre-suit damages – and equitable estoppel – which bars the entire suit. Estoppel, which does not necessarily involve delay in bringing the suit, requires 'statements or conduct of the patentee which must communicate in a misleading way that the accused infringer will not be disturbed by the plaintiff patentee in the activities in which the former is currently engaged” (internal quotes and citations removed).

The court explained that although Auckerman controlled the operation of laches in patent cases for over two decades, the recent Petrella decision in the Supreme Court upset the status quo by holding that laches was not a defense to legal relief in copyright law. Petrella calls portions of Aukerman's reasoning into question, necessitating this en banc reconsideration. Specifically, In Petrella, the Supreme Court reasoned that the copyright statute of limitations itself takes account of delay, crowding out the judiciary's power to decide whether a suit is timely. Therefore, the Supreme Court found, “laches is a defense developed by courts of equity; its principal application was, and remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitations.”

Holdings

The en banc opinion held that, under Petrella, Section 286 acts as a prescription by Congress of a time period for recovery of damages. Characterizing Section 286 as a statute of limitations or a limitation on damages is not dispositive or a relevant consideration. Because patent infringement is a continuous tort, there is no relevant functional difference between a damages limitation and a statute of limitations. However, the majority opinion held that, based on a “sufficiently reliable source on the meaning of § 282,” the defenses provision, that that section uses inclusive language, and hence includes within it codification of laches as a statutory defense to patent infringement. This is consistent with prior interpretations of § 282.

The question remained:

If laches as codified in § 282 is a defense only against only equitable relief, Petrella prohibits judicial application of laches to bar legal damages. If, however, laches as codified operates as a defense to both legal and equitable relief, patent law's statutory scheme–like the Lanham Act . . . – does not implicate Patrella. In that case § 286 obligates us to apply laches as a defense to a legal relief, notwithstanding § 286's time limitation on the recovery of damages.

Based on tenuous at best logic, the court further held, “[i]n sum, the case law strongly supports the availability of laches to bar legal relief. In applying laches to ongoing relief, the court held awarding ongoing relief requires that the court act within its equitable discretion, which, according to eBay must be exercised consistent with traditional principles of equity. This means following the four-fact test laid out in eBay.

Dissent

In a dissent-in-part authored by Judge Hughs, joined by Moore, Wallace, Taranto, and Chen, Judge Hughes writes:

In Petrella v. Metro-Goldwyn-Mayer, Inc., the Supreme Court emphasized that it had never approved the use of laches to bar a claim for legal damages brought within a statutory limitations period. The majority reasons that Petrealla is not controlling here because Congress specifically incorporated laches as a defense to legal damages into the Patent Act of 1952. But the majority has no sound basis for finding that Congress intended to displace the uniform limitations period in § 286 with the case-specific doctrine of laches. The majority's key logic – that Congress adopted the view of some lower courts that laches could bar legal relief in patent cases – requires us to presume that Congress ignored the Supreme Court. For in 1952, the Supreme Court had already recognized the common-law principle that laches cannot bar a claim for legal damages. I know of no precedent for inferring a congressional departure from a common-law principle recognized by the highest court based solely on aberrational lower-court decisions.

Delaware rejects Alice arguments (posted 04/15/16)

In a pair of cases, the U.S. District court for Delaware rejected defendant's arguments that patent claims pertaining to network technologies were invalid under Alice.

SRI's claim 1 of U.S. Patent 6,711,615:
1. A computer-automated method of hierarchical event monitoring and analysis within an enterprise network comprising:

deploying a plurality of network monitors in the enterprise network;

detecting, by the network monitors, suspicious network activity based on analysis of network traffic data selected from one or more of the following categories: {network packet data transfer commands, network packet data transfer errors, network packet data volume, network connection requests, network connection denials, error codes included in a network packet, network connection acknowledgements, and network packets indicative of well-known network-service protocols};

generating, by the monitors, reports of said suspicious activity; and

automatically receiving and integrating the reports of suspicious activity, by one or more hierarchical monitors.

Network Congestion claim 1 of U.S. Patent 6,826,620:
1. A method for alleviating congestion in a communication network, the communication network enabling the flow of data to and from a plurality of end user devices that are connected to the network through a plurality of communication devices, the method comprising the steps of:

monitoring data flows to and from the plurality of end user devices for indications of congestion; and

controlling the data rate of at least one end user device in response to said congestion indications.

In SRI International, Inc. v. Cisco Systems Inc., the Delaware district court held that a patent claiming automated monitoring of a network. Quoting DDR 7), Judge Robinson held, “the claims (informed by the specification) must describe a problem and solution rooted in computer technology, and the solution must be (1) specific enough to preclude the risk of pre-emption, and (2) innovative enough to 'override the routine and conventional' use of the computer.” Judge Robinson rejected Cisco's argument that the claims are directed to the abstract idea “of monitoring and analyzing data from multiple sources to detect broader patterns of suspicious activity,” holding instead that:

“That Cisco can simplify the invention enough to find a human counterpart (or argue that a human could somehow perform the steps of the method) does not suffice to make the concept abstract as '[a]t some level “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas” [quoting Alice quoting Mayo].' [. . .] The claims at bar are, therefore, more complex than 'merely recit[ing] the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet,' and are better understood as being 'necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks'” (quoting DDR).

In Network Congestion Solutions, LLC v. United States Cellular Corp (combined with Network Congestion Solutions, LLC v. WideOpenWest Finance, LLC) Judge Robinson again turned to DDR Holdings for guidance, but noted that, ”[s]ince providing that explanation, the Federal Circuit has not preserved the validity of any other computer-implemented invention under § 101“ and specifically called out Intellectual Ventures 8). Judge Robinson quoted paragraph from Intellectual Ventures in which the Fed. Cir. distinguished that case from DDR, which concluded: “The patent claims [in Intellectual Ventures] do not address problems unique to the Internet, so DDR has no applicability.”

Judge Robinson rejected Defendants' characterization of the claim as directed to the abstract idea of “resource control management, namely managing resource flow by monitoring the usage of a resource, and then controlling that usage based on that monitoring” which defendants analogized to resource management by a TSA worker at an airport checkpoint or factory line supervisor of widgets down a production assembly line. Stated the court:

“The claims address the problem of 'network congestion' in a defined environment, which includes end user devices and communication devices. Although defendants argue that the environment and devices are well known in the prior art and cannot provide an inventive concept, the claim as a whole (the equipment recited and steps claimed) provides the requisite degree of specificity. Moreover, the claims are directed to a solution for a problem that arises in the computer context. This specificity also suffices to alleviate concerns of pre-emption.”

Fed. Cir. reverses PTAB invalidity finding (posted 04/07/16)

In Cutsforth v. MotivePower, the Fed. Cir. reversed PTAB's invalidity finding, looking specifically at two limitations that the BPAI construed unreasonably broadly in its determination that the claims were anticipated by two separate references.

"projection"

The Fed. Cir. first addressed the claim limitation, “a brush release extending from the mounting block . . . said brush release is a projection extending from the mounting block.” The Board rejected Cutsforth's proposed construction “a structure that protrudes outwardly from the mounting block” as not supported by the specification and contended that the phrase is not limited only to projections extending outwardly from the mounting block. The Federal Circuit held that, while claims are given their broadest reasonable interpretation (BRI) in IPR proceedings, claim interpretation “must be reasonable in light of the claims and specification” (quoting PPC Broadband Inc. v. Corning Optical Commc'ns RF, LLC (Fed. Cir. Feb. 22, 2016). Held the court: “The Board's interpretation of 'a projection extending from the mounting block' far exceeds the scope of its plain meaning and is not justified by the specification. We hold that the Board's interpretation, which encompasses a structure that recedes into themounting block rather than jutting out from it, is unreasonable.”

"coupled to"

The Federal Circuit also addressed a second limitation reciting, “a brush catch coupled to the beam.” The BPAI held despite this limitation, the “brush catch” may be a sub-component of the “beam” and still be considered to be “coupled to the beam.” The Federal Circuit again sided with Cutsforth's argument that the claim requires a “bursh catch” to be a physical structure that is separate from, and not a sub-component of, the claimed, “beam.” It goes beyond the plain meaning of “coupled” to say that a sub-component (e.g., an engine in a car) is “coupled to” the component as a whole (e.g., the car).

Inventorship presumed correct

In Meng and Hor v. Chu, the Federal Circuit held that ”[b]ecause issued patents are presumed to correctly name their inventors, the burden of proving nonjoinder of inventors is a 'heavy one,' which must be demonstrated by clear and convincing evidence.“ Quoting Symantec Corp. v. Computer Assoc s. Int'l, Inc., 9) the court added ”[a]n alleged co-inventor's testimony, standing alone, cannot rise to the level of clear and convincing evidence; he must supply evidence to corroborate his testimony“ In this case, collaborators Meng and Hor failed to adequately corroborate allegations that they contributed more than that of a person of ordinary skill to the idea of completely substituting Gadolinium for Yttrium in developing high temperature superconducting material and should therefore be added as inventors to U.S. Patents 7,709,418 and 7,056,866.

1) 525 U.S. 55 (1998)
2) 270 F.3d 1353, 1355 (Fed. Cir. 2001)
3) 497 F.3d 1360) (2007)
4) Biomedino, 490 F.3d at 952
5) 134 S.Ct. 1962 (2014)
6) 960 F.2d 1020 (Fed. Cir. 1992)
7) DDR, 773 F.3d at 1257
8) 792 F.3d 1363
9) 522 F.3d 1279, 1295 (Fed. Cir. 2008)
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