PTAB Finds Patent Claims Ineligible Under USPTO’s Revised Guidance On Section 101
On April 22, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) made public its Final Written Decision on the patentability of challenged claims in a covered business method patent review (CBM) proceeding. Fidelity Information Services, LLC v. Mirror Imaging, LLC, CBM Case No. CBM2017-00064 (PTAB Apr. 22, 2019). The PTAB held the challenged claims were patent ineligible under 35 U.S.C. § 101, consistent with the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
Contradicting U.S. Patent Office Guidance, Federal Circuit Affirms District Court Rule 12(b)(6) Ruling That Claims Are Directed To A “Natural Law” And Therefore Unpatentable
On April 1, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the United States District Court for the Eastern District of Virginia. Cleveland Clinic Foundation et al. v. True Health Diagnostics, —F. App’x—, (Fed. Cir. Apr. 1, 2019). The CAFC ruled that the district court had correctly decided that the asserted claims are invalid as patent ineligible abstract ideas under 35 U.S.C. § 101.
PTAB Designates Precedential Opinion Allowing Section 101 Consideration Of Proposed Amended Claims
On March 18, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential a Decision on Patent Owner’s Request for Rehearing. Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR Case No. IPR2017-00948 (PTAB Jan. 18, 2019). The PTAB held that, while a Petitioner may only challenge patent claims in an inter partes review based on prior art patents and publications under 35 U.S.C. §§ 102 and 103, it is nonetheless proper to consider patent eligibility under 35 U.S.C. § 101 for any proposed substitute claims.
Federal Circuit Affirms District Court Rule 12(b)(6) Dismissal For Lack Of Patent Eligible Subject Matter Where The Computer Components Were Described In “Purely Functional Terms”
On Tuesday, February 26, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the U.S. District Court for the Northern District of Florida. University of Florida Research Foundation, Inc. v. General Electric Company, —F.3d— (Fed. Cir. Feb. 26, 2019). The CAFC ruled that the district court had correctly decided that the patent claims are invalid under 35 U.S.C. § 101.
Federal Circuit Affirms District Court Rule 12(b)(6) Dismissal Of “Wholly Functional” Claims As Patent Ineligible
01/08/2019On Thursday, December 20, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the U.S. District Court for the Western District of Washington. Glasswall Solutions Ltd. v. Clearswift Ltd., —F.App’x—, (Fed. Cir. Dec. 20, 2018). The CAFC ruled that the district court had correctly decided that the asserted claims are invalid as patent ineligible abstract ideas under 35 U.S.C. § 101.
Federal Circuit Reverses Award Of Attorneys’ Fees In NPE Patent Case
On September 28, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision by the United States District Court for the Southern District of New York in which the District Court had sanctioned plaintiff’s counsel with an award of attorneys’ fees pursuant to 28 U.S.C. § 1927. Gust, Inc. v. AlphaCap Ventures, LLC, —F.3d— (Fed. Cir. September 28, 2018). Applying an “exacting” abuse-of-discretion standard, the CAFC ruled that the District Court erred in finding plaintiff’s lawyers to have litigated in bad faith, and therefore reversed the award of attorneys’ fees.
Federal Circuit Emphasizes Factual Nature Of Section 101 Determinations
On May 31, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) denied a request for en banc rehearing of its Berkheimer patent-eligibility panel opinion. Berkheimer v. HP Inc., Appeal No. 2017-1437. (See our prior post on the CAFC’s Berkheimer opinion here.) Eight of the Court’s twelve judges who decided the issue signed opinions concurring in or dissenting from the decision declining en banc rehearing. The concurring opinion filed by five of the judges (Judges Moore, Dyk, O’Malley, Taranto, and Stoll) is of particular interest because of its emphasis on the fact issue the Court recently found to be underlying the question of patent eligibility under 35 U.S.C. § 101.
District Court Grants Judgment Of Patent Invalidity On The Pleadings, Finding Insufficient Allegations Of Validity In Complaint
On March 27, 2018, Judge Leonard P. Stark of the United States District Court for the District of Delaware granted a motion to dismiss, finding the subject matter of plaintiff’s patent claims to be unpatentable pursuant to the abstract-idea exception to 35 U.S.C. § 101. Triplay, Inc. v. WhatsApp, Inc., No. 13-1703 (D. Del. Mar. 27, 2018). The Court based its ruling on, among other things, the lack of allegations relating to patentability in the complaint, explicitly declining to convert the motion from one for judgment on the pleadings into one for summary judgment.
Delaware Court Finds Industrial Invention Unpatentable Under Section 101
On February 27, 2018, the United States District Court for the District of Delaware granted summary judgment that claims of a patent directed to manufacturing driveline shaft assemblies are invalid under 35 U.S.C. § 101 because the claims are directed to unpatentable subject matter. American Axle & Mfg. v. Neapco Drivelines LLC, case no. 15-CV-1168. The decision is particularly interesting because it applies section 101 of the United States patent laws to mechanical inventions, outside of the computer context where recently such defenses have most often been raised.
Federal Circuit Waves Caution Flag On Section 101
On February 8, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming in part and vacating in part a finding of section 101 unpatentability. Berkheimer v. HP Inc., ___ F.3d ___ (appeal no. 2017-1437). The district court had granted a motion to dismiss on section 101 grounds, and while the CAFC affirmed the dismissal as to some claims, as to other claims it remanded the case to the district court, emphasizing the role of fact issues in section 101 analyses and thus complicating resolution of section 101 issues.
Federal Circuit Upholds Texas Trial Court On Section 101 And On Claim-Construction Burden-Of-Proof Issues, And Again Takes Appellate Jurisdiction While Damages Issues Remain Pending In The Trial Court
On January 25, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion affirming the trial court’s decisions that a user-interface patent claims patentable subject matter and that unrebutted expert testimony did not require a jury to find anticipation, as well as its claim-construction decisions, all while damages issues remained unresolved in the trial court. Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., appeals nos. 2016-2684 and 2017-1922.
Federal Circuit Finds Computer Security Method Patentable, But Overturns Damages Award
On January 10, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion considering the apportionment problem in patent damages and overturning a jury’s $40M reasonable-royalty award. Finjan, Inc. v. Blue Coat Systems, appeal no. 2016-2520.
District Of Delaware Magistrate Judge Recommends Denial Of Amazon’s Section 101 Motion To Dismiss
On December 11, 2017, Magistrate Judge Christopher J. Burke of the United States District Court for the District of Delaware issued a report and recommendation to Chief Judge Leonard Stark recommending denial of defendant Amazon.com, Inc.’s (Amazon) Section 101 motion to dismiss for failure to state a claim. M2M Sols. v. Amazon, Inc., case no. 17-cv-202.
Check-Processing Invention Found Patent-Eligible
On November 27, 2017, the United States District Court for the District of Minnesota ordered summary judgment of patent eligibility in Soultran, Inc. v. U.S. Bancorp, No. 13-cv-2637. The claimed invention was directed to a method of check processing comprising (i) receiving check data from a point-of-sale terminal, (ii) crediting the merchant’s account, (iii) receiving the physical check and scanning it, and (iv) comparing the resulting image to the check data. The Court ruled this invention to be patent-eligible pursuant to 35 U.S.C. § 101, as a matter of law.