Judge Linn in Dissent Reveals that Alice has No Clothes

In Smart Systems Innovations, LLC v. Chicago Transit Authority, [2016-1233] (October 18, 2017), the Federal Circuit affirmed the district court’s judgment on the pleadings that the asserted claims of U.S. Patent Nos. 7,566,003, 7,568,617, 8,505,816, and 8,662,390, relating to regulating entry in a transit system using information from a bankcard, were patent ineligible.

The claims of the patent were directed to “a method for validating entry into a first transit system using a bankcard terminal,” “a method of funding transit rides associated with at least one public transit network, from a plurality of funding sources,” and “a method of using a bank card as an identifying token for time-based mass transit fare products,
without using writeable memory on the bank card.”

The district court held that “[s]tripped of the technical jargon that broadly describes non-inventive elements (e.g., the ‘interfaces’ and ‘processing systems’), and further shorn of the typically obtuse syntax of patents, the patents here really only cover an abstract concept: paying for a subway or bus ride with a credit card.”  The district court further found that “the recent case law has reiterated that whatever bells and whistles may be added, when reduced to their core, claims directed to the performance of certain financial transactions—and paying a fare is a financial transaction—must be categorized as
involving abstract ideas.”

The Federal Circuit agreed with the district court, finding that taken together, the Asserted Claims are directed to the formation of financial transactions in a particular field (i.e., mass transit) and data collection
related to such transactions. The Asserted Claims were not directed to a new type of bankcard, turnstile, or database, nor do the claims provide a method for processing data that improves existing technological processes.

The Federal Circuit rejected the argument that the Asserted Claims are patent eligible because they improve prior systems of fare collection
by speeding up the process at the turnstile.  The Federal Circuit found that this was not an improvement in computer technology (as in DDR Holdings), but merely the use of computers as a tool. The Federal Circuit further found that the claims were not directed to a combined order of specific rules that improve any technological process (as in McRo), but rather invoke computers in the collection and arrangement of data. Finally the Federal Circuit rejected the arguments that the claims applied to a particular concrete field, saying that merely limiting the field of use of the abstract idea to a particular environment does not
render the claims any less abstract.

Agreeing with the district court that the claims are directed to an abstract idea at step 1, the Federal Circuit turned to step 2.  The district court held that invoking various computer hardware elements,
which save time by carrying out a validation function on site rather than remotely, does not change the fact that in substance, the claims are still directed to nothing more than running a bankcard sale—that is, the performance of an abstract business practice, and the Federal Circuit agreed.  The Federal Circuit distinguished Diehr because the claims at issue merely use generic computer components in which to carry out the abstract idea.  The Federal Circuit distinguished DDR Holdings because the asserted claims do not attempt to solve a challenge
particular to the Internet.

In dissent Judge Linn,  arguing that the majority engaged a reductionist exercise of ignoring the limitations of the claims in question, would have found the claims in two of the patents patent-eligible, but finding that the analysis with respect to the remaining two patents “consistent with past decisions finding ineligibility” reluctantly concurred because he was bound by precedent to reach that conclusion.

Judge Linn explained that the three nonstatutory exceptions to patentability are intended to foreclose only those claims that preempt and thereby preclude or inhibit human ingenuity with regard to basic building blocks of scientific or technological activity. He said they are intended to be read narrowly.  He observed that the contours of the abstract idea exception are not easily defined, and for that reason, the abstract idea exception is “almost impossible to apply consistently and coherently.”

Of the Alice test, Judge Linn said:

The problem with this test, however, is that it is indeterminate and often leads to arbitrary results. Moreover, if applied in a legal vacuum divorced from its genesis and  treated differently from the other two exceptions, it can strike down claims covering meritorious inventions not  because they attempt to appropriate a basic building block of scientific or technological work, but simply because they seemingly fail the Supreme Court’s test.

In particular, Judge Linn took exception to Step 1 of the Alice Test:

Step one cannot be a hunt for the abstract idea underlying the claim, because underlying virtually every claim is an abstract idea. And if the task under step one is to assess whether the claim is directed to no more than an abstract idea, what is left for determination under step two? Where do you draw the line between properly determining what the claim is directed to and improperly engaging in an overly reductionist exercise to find the abstract idea that underlies virtually every claim?

In particular Judge Linn says that individual claim limitations
cannot be ignored. By virtue of their inclusion in the claims, every limitation warrants some consideration as to the role it plays in reciting the invention.  He said that it is also important to read the claims “in light of the specification.  Ultimately, the fundamental question in “abstract idea” cases is whether the claim is directed to such a basic
building block of scientific or technological activity as to foreclose or inhibit future innovation or whether the claim instead is directed to a tangible application that serves a new and useful end.

Judge Linn concluded that claims directed not merely to basic building blocks of scientific or technological activity but instead to innovative solutions to real problems that result from human activity and are not capable of performance solely in the human mind should be fully eligible for patent protection and not lightly discarded.

Judge’s Linn’s dissent correctly reveals that Alice’s Step 1, or at least the way that it is applied, does not correctly reveal whether a claim is directed to unpatentable subject matter.   Rather “it is indeterminate
and often leads to arbitrary results.”  He points out that claims to meritorious inventions are struck down “not because they attempt to appropriate a basic building block of scientific or technological work, but simply because they seemingly fail the Supreme Court’s test.”

Judge Linn is not the first to make these points, but his articulate and well reasoned dissent is like a shout — Alice isn’t wearing any clothes.  The question remains: will the rest of us stand around and gasp, or actually do something about it?

Posted in 101

Return to Sender: Secure Mail Patents Claim Abstract Idea

In Secured  Mail Solutions LLC v. Universal Wilde, Inc., [2016-1728](October 16, 2017), the Federal Circuit affirmed the grant of a motion to dismiss on the grounds that U.S. Patent Nos. 7,814,032, 7,818,268, and 8,073,787 (the “Intelligent Mail Barcode” patents), U.S. Patent Nos. 8,260,629 and 8,429,093 (the “QR Code” patents), and U.S. Patent Nos. 8,910,860 and 9,105,002 (the “Personalized URL” patents) are directed to subject matter ineligible for patenting under 35 U.S.C. § 101.

The Intelligent Mail Barcode patents recite a method for verifying the authenticity of the mail object. The identifier or barcode is a single set of encoded data that is generated by concatenating a sender-assigned unique identifier with sender data, recipient data, and shipping
method data.  The barcode is affixed to the outside of the mail object and an authenticating portion of the barcode is stored in a database. The
recipient of the mail object can access the database and use that authenticating portion to verify that a mail object is authentic.

The QR Code patents, require that the identifier is a QR code (two-dimensional barcode) which a user can scan to look up additional electronic information related to the mail object. Specifically, the barcode includes data that allows the recipient of the mail object to request data
directly from the sender and allows the sender to provide personalized data directly to the recipient, without the involvement of the mail carrier.

The Personalized URL patents are similar to the QR Code patents, except the identifier is a personalized network address, or URL. For example, the
user can type the URL into her web browser and be directed straight to a specific account, or to other personalized information.

The Federal Circuit rejected Secured Mail’s argument that the district court described the invents at too high a level of abstraction at Step 1 of the Alice inquiry.  The Federal Circuit noted that despite the district court’s statement that “a reasonably high level of generality” should be used, the district court’s analysis correctly found that Secured Mail’s claims are directed to an abstract idea.

The Federal Circuit distinguished Enfish, noting that Secured Mail’s
patents are not directed to an improvement in computer functionality — the were not directed to a new barcode format, an improved method of generating or scanning barcodes, or similar improvements in computer
functionality.

The Federal Circuit rejected Secured Mail’s argument that S the claims are specifically directed to a sender-generated unique identifier, which  improved on the existing process both by reliably identifying the sender of the mail object and by permitting the sender to create a bi-directional communication channel between the sender and recipient of the mail object. The Federal Circuit found that the fact that an identifier can be used to make a process more efficient, however, does not necessarily render an abstract idea less abstract.

The Federal Circuit noted that the claims of the Intelligent Mail Barcode patents are not directed to specific details of the barcode or the equipment for generating and processing it. The claims generically provide for the encoding of various data onto a mail object but do not set out how this is to be performed.  The Federal Circuit noted that in contrast to McRO and Thales, no special rules or details of the computers, databases, printers, or scanners are recited.  The Federal Circuit noted that there is no description of how the unique identifier is generated or how a unique identifier is different from a personal name, or return address. Rather, the claim language cited by Secured Mail merely recites that the unique identifier is generated by the sender.

The QR Code patents fared no better. The Federal Circuit noted taht their claims were not limited to any particular technology of generating, printing, or scanning a barcode, of sending a mail object, or of sending the recipient specific information over a network. Rather, the Federal Circuit found that each step of the process is directed to the abstract process of communicating information about a mail object using a personalized
marking.

Lastly, the Federal Circuit found that the Personalized URL patents are directed to the same abstract idea as the QR Code patents.

The Federal Circuit concluded:

The claims of the three sets of patents are not limited by rules or steps that establish how the focus of the methods is achieved. Instead, the claims embrace the abstract idea of using a marking affixed to the outside of a mail object to communicate information about the mail  object, i.e., the sender, recipient, and contents of the mail object. Because the claims are directed to an abstract idea, we turn to the second step of the Alice inquiry.

At step 2 of Alice, the Federal Circuit rejected Secured Mail’s argument that the district court erred by failing to search for an inventive concept, and instead only asking whether the underlying technology were conventional.  The Federal Circuit said that the claims in Secured Mail’s
patents are non-specific and lack technical detail. Rather than citing a specific way to solve a specific problem as in DDR, the asserted claims cite well known and conventional ways to allow generic communication between a sender and recipient using generic computer technology.  The Federal Circuit pointed out that the patents themselves admit that the technologies were well known, describing them as “generally known to those skilled in the art.”

The Federal Circuit affirmed the district court’s invalidation of all seven patents.

 

Posted in 101

Preemption is “Part and Parcel” of the §101; But Lack of Preemption Does Not Necessarily Establish Patentability

In Return Mail, Inc. v. United States Postal Service, [2016-1502] (August 28, 2017), the Federal Circuit affirmed the PTAB’s decision that the US Postal Service had standing to challenge Return Mails patents in an CBMR, and that as a result of that challenge the patents were not patentable subject matter under 35 USC §101.

The Federal Circuit held that it had authority to review the standing issue, concluding that Cuozzo and Achates are distinguishable and do not dictate the availability of judicial review in this case.  The Federal Circuit distinguished Cuozzo, finding that whether a party is statutorily allowed to petition for CBM review does not amount to “little more than a challenge to the [PTO’s] conclusion” about the petition’s likelihood of success on the merits.  The Federal Circuit distinguished Achates based on differences in the statutory framework for IPR and CBM review, CBM review being reserved only to parties who have have been sued for or charged with infringement of the underlying patent.  The Federal Circuit further noted that unlike the IPR time bar at issue in Achates, which is simply a procedural requirement that rights be exercised in a timely manner, § 18(a)(1)(B) relates to a party’s right to seek CBM review in the first instance.  The Federal Circuit held that § 324(e) does not bar judicial review of the Board’s decision that a party satisfies § 18(a)(1)(B)’s requirements to petition for CBM review.

On the standing issue, the Federal Circuit found that Return Mail made several cogent arguments why a §1498(a) suit is not one for “infringement,” but despite the important differences between §1498(a) suits against the government and suits for infringement against private parties, these differences, along with Return Mail’s other arguments,
were insufficient to compel a conclusion that Congress intended to exclude a government-related party sued under § 1498(a) from being able to petition for CBM review.

On the patentable subject matter issue under 35 USC 101, Return Mail argued that the claims may involve the abstract idea of “relaying mailing
address data” but are not directed to such an abstract idea.  Return Mail first argued that the claims do not preempt other systems for relaying mailing address data; and second, that the claims are directed to a specific improvement to technology for relaying mailing address data.  The Federal Circuit disagreed, finding that the claims were directed to an abstract idea, much like the claims in Content Extraction and  FairWarning.  The Federal Circuit further found the argument that the claims were directed to a specific improvement was also unavailing, noting that limiting the abstract idea to a particular environment such as a mail processing system with generic computing technology, “does not make the claims any less abstract for the Alice Step 1 analysis.

On the Alice Step 2 analysis, the Federal Circuit said that the
claims at issue were not analogous to claims “directed to a specific implementation of a solution to a problem in the software arts,” which it has held not to be directed to an abstract idea.  The Federal Circuit found that the claims only recite routine, conventional activities such as identifying undeliverable mail items, decoding data on those mail items, and creating output data.

At Return Mail’s instance, the Federal Circuit expounded on the role of preemption in the  §101 analysis.  The Federal Circuit noted that preemption is the underlying concern that drives the §101 analysis.  The Federal Circuit said that monopolization of the basic tools of scientific and
technological work  would thwart the primary object of the patent laws to promote future innovation, concluding that “[p]reemption is therefore part and parcel with the §101 inquiry.”  The Federal Circuit noted that while it has often cited the lack of preemption concerns to support a determination that a claim is patent-eligible under § 101, it has consistently held that claims that are otherwise directed to patent-ineligible subject matter cannot be saved by arguing the absence of complete preemption.

Clarity in §101: Half of the Judges Considering the Question Find Plaintiff’s Computer Memory System to be Patentable Subject Matter

In Visual Memory LLC v. NVIDIA Corp., [2016-2254](August 15, 2017), the Federal Circuit reversed the district court’s determination that Visual
Memory’s U.S. Patent No. 5,953,740, on a memory system with programmable operational characteristics that can be tailored for use
with multiple different processors, was drawn to patent ineligible subject matter.

Claim 1 states:

   1. A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics
being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor
by a bus, said system comprising:
a main memory connected to said bus; and
a cache connected to said bus;
wherein a programmable operational characteristic of said system determines a type of data stored by said cache.

The Federal Circuit said that the framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts comprises two steps.  The first step requires courts to determine whether the claims at issue are directed to one of those patent-ineligible concepts.  If they are, the court must then analyze whether the claim elements, either individually or as an ordered combination, contain an “inventive concept” that transforms the nature of the claim into a patent-eligible application.

At step one, the Federal Circuit asked whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.  Analogizing to Enfish (self-referential table for a computer
database) and Thales (unique configuration of inertial sensors), the Federal Circuit  found that the claims were directed to an improved computer memory system, not to the abstract idea of categorical data storage.

The Federal Circuit noted the many benefits explained in the specification; the elimination of the one-size-fits-all approach of the prior art, which resulted in trade-offs; interoperability with multiple different processors; and improved performance over prior art systems with even larger caches.  The Federal Circuit said that the claims were directed a technological improvement: an enhanced computer memory system.  The Federal Circuit said this was not a case where the claims merely recite the “use of an abstract mathematical formula on any general purpose computer,” “a purely conventional  computer implementation of a mathematical formula,” or “generalized steps to be performed on a computer using conventional computer activity.”

The Federal Circuit went on to distinguish Content Extraction which merely employed a computer, and TLI Communications which used conventional hardware and were “not directed to a specific improvement to computer
functionality.”

The opinion addressed the dissent’s contention that the claimed programmable operational characteristic is “nothing more
than a black box” by pointing out there was a microfiche appendix of computer code, that enablement was a §112 issue not a §101 issue, and finally by pointing out that the innovative effort was not in the programminer required, but in the creation of the memory system.

The Federal Circuit conceded that the concept of categorical data storage underlies the patent’s claims, but said that this is not enough to doom a claim under § 101 because the claims are not so limited, and “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.”  The Federal Circuit ended the inquiry at Step 1 and remanded the case.

In the end the finding of patentable subject matter was 2 judges for and 2 judges (the dissent and the district court judge) against.  If only all patentability determinations were as certain as 50-50.

Posted in 101

Providing a Service Alone is not Contributory Infringement

In the Cleveland Clinic Foundation v. True Health Diagnostics LLC, [2016-1766](June 16, 2017), the Federal Circuit affirmed that the asserted claims of U.S. Patent Nos. 7,223,552, 7,459,286, and 8,349,581 are not directed to patent-eligible subject matter, and that Cleveland Clinic failed to state a claim of contributory or induced infringement of U.S. Patent No. 9,170,260.

The patents were all directed to methods for detecting the risk of cardiovascular disease in a patient.  The district court next found the three testing patents patent ineligible under the two-step framework for analyzing patent subject matter eligibility under §101 articulated in Alice.  More specifically, the district court found that the testing patents’ claims were directed to a law of nature under Alice step one because the claims were directed to the correlation between MPO in the blood and the risk of cardiovascular disease.  Under Alice step two, the district court found there was no saving inventive concept, employing well-known methods to detect MPO, comparing MPO levels with a control value in what could be a bare mental process, and ultimately, instructing a user to apply a natural law.

The district court further found that True Health’s testing service was not a “material or apparatus” that could form the basis for a contributory infringement claim.  The district court further found that the Cleveland Clinic did not allege facts sufficient to show the specific intent to induce third parties to infringe.

The Federal Circuit affirmed the propriety of deciding §101 rejections at the motion to dismiss stage, before claim construction or significant
discovery has commenced.  On the merits, the Federal Circuit agreed that the claims of the testing patents were directed to multistep methods for observing the law of nature that MPO correlates to cardiovascular disease.  Because this relationship exists in principle apart from human action, the claims are directed to a patent ineligible law of nature.  The Federal Circuit found the case similar to Ariosa.  At step two of the Alice inquiry, the Federal Circuit agreed that the practice of the method claims
does not result in an inventive concept that transforms the natural phenomena of MPO being associated with cardiovascular risk into a patentable invention.

On the issue of contributory infringement, the Federal Circuit said that a party that provides a service, but no “material or apparatus,” cannot be liable for contributory infringement.  Because the defendant was merely providing testing services, the Federal Circuit agreed that the claim should be dismissed.  On the issue of inducement, the Federal Circuit observed that the mere knowledge of possible infringement by others does not amount to inducement; and that specific intent and action to induce infringement must be proven. The Federal Circuit found that merely providing test reports to physicians falls short of showing the specific intent and action to induce infringement of the ’260 patent.

 

Estoppel in CBMR is Both Reviewable and Determined on a Claim by Claim Basis

In Credit Acceptance Corp. v. Westlake Services, [2016-2001](June 9, 2017), the Federal Circuit affirmed the PTAB decision that Westlake was not estopped to bring a CBMR challenge to U.S. Patent No. 6,950,807, and that the challenged claims of this patent were invalid under  35 U.S.C. § 101.

On the estoppel issue Westlake petitioned for CBMR review of all of the claims fo the ‘807, but the Board instituted only as to some of the claims,.  Westlake filed a second CBMR, and Credit Acceptance argued that Westlake was estopped to petition for a second review.  However, since the first CBMR had not yet resulted in a Final Written Decision, the Board found the estoppel argument premature.  After the Final Written Decision in the first CBMR, Credit Acceptance renewed its effort to terminate the second proceeding on estoppel grounds, but the Board decided that estoppel is applied on a claim by claim business, and thus the first proceeding did not impact the second proceeding.

At the outset, the Federal Circuit rejected Westlake’s and the USPTO’s position that the decision on estoppel was akin to a institution decision that is not reviewable.  After finding the estoppel provision was reviewable, the Federal Circuit went on to agree with the Board, that estoppel is determined in on a claim by claim basis.

As to the merits of the CBMR, The Federal Circuit noted that Board determined that the claims are directed to the abstract idea of “processing an application for financing a purchase,” and agreed.  The Federal Circuit said that each of the claims is directed to the abstract idea of processing an application for financing a purchase. The Court saw no meaningful distinction between this type of financial industry practice and “the concept of intermediated settlement” held to be abstract in Alice, or the “basic concept of hedging” held to be abstract in Bilski.

AIPLA Proposes New 101 to Save the Patent System

The AIPLA has proposed a new Section 101:

35 U.S.C. § 101—Inventions Patentable

(a) Eligible Subject Matter.—Whoever invents or discovers any useful process, machine, manufacture, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

(b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

(c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

This proposed version of 101 would eliminate the “abstract idea” exception created by the Supreme Court, and which the courts have been unwilling (and unable) to properly define, and which has denied protection to inventors or novel and useful computer related inventions.

It is about time that the patent bar solved the patentability problem it created.  Hopefully this proposal or something similar will end the  tyranny that is the Alice v. CLS.

Posted in 101

A Claim to an Abstract Idea does not Automatically Become Eligible Merely by Adding a Mathematical Formula

In Recognicorp, LLC v. Nintendo Co., Ltd., [2016-1499](April 28, 2017), the Federal Circuit affirmed the district court’s grant of judgment on the pleadings that U.S. Patent No. 8,005,303 on a method and apparatus
for building a composite facial image using constituent parts was directed to the abstract idea of encoding and decoding image data.

At Alice step one, the district court concluded that the asserted claims are “directed to the abstract idea of encoding and decoding composite facial images using a mathematical formula.”  At Alice step two, the district court found that the ’303 patent contains no inventive concept, stating that “the entirety of the ’303 Patent consists of the encoding algorithm itself or purely conventional or obvious pre-solution activity and post-solution activity insufficient to transform the unpatentable abstract idea into a patent-eligible application.”

The Federal Circuit agreed that claim 1 is directed to the abstract idea of
encoding and decoding image data, noting that it claims 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.  The Federal Circuit rejected the argument that, like the claims in Enfish, the claim was being parsed at too high a level of abtractions.  The Federal Circuit found Digitech Image Technologies more analogous.

At step two of the Alice inquiry, the Federal Circuit found that nothing
“transforms” the abstract idea of encoding and decoding into patent-eligible subject matter.  The Federal Circuit said that claims that are directed to a nonabstract idea are not rendered abstract simply because they use a mathematical formula, but that the converse is also true: A claim directed to an abstract idea does not automatically become eligible merely by adding a mathematical formula.

The Federal Circuit concluded that the claims of the ’303 patent are directed to encoding and decoding image data, an abstract idea, adding that the claims provide no inventive concept to render them eligible under
§ 101.

Posted in 101

Among Other Things, the Federal Circuit Affirms Viability of Assignor Estoppel

In Mentor Graphics Corporation v. EVE-USA, Inc., [2015-1470, 2015-1554, 2015-1556] (March 16, 2016), the Federal Circuit:

  • affirmed the jury verdict of infringement of U.S. Patent Nos. 6,240,376, the denial of JMOL, and the award of $36,000,000 in damages, and that that assignor estoppel bars Synopsys from challenging the validity of the patent.
  • reversed summary judgment that U.S. Patent No.
    6,132,109 is indefinite.
  • affirmed summary judgment that U.S. Patent No. 7,069,526 lacks patent-eligible subject matter.
  • vacated the motion in limine precluding Mentor from
    presenting evidence of willful infringement.
  • reversed summary judgment that U.S. Patent No. 6,947,882 lacks
    written description.
  • reverse summary judgment that Mentor’s infringement allegations
    regarding U.S. Patent Nos. 6,009,531 and 5,649,176 are barred by
    claim preclusion.

Regarding Assignor Estoppel, the Federal Circuit rejected Synopsys argument that the Supreme Court abolished the doctrinal underpinnings of assignor estoppel in Lear, Inc. v. Adkins.

Regarding the Damage Award, the Federal Circuit noted that the facts of this case are remarkably simple for a patent damages appeal and Synopsys does not dispute any of them.

The jury found, and Synopsys does not dispute on appeal, that Mentor
satisfied all of the Panduit factors with regard to the sales to Intel for which the jury awarded lost profits:
(1) there was a demand by Intel for the patented product; (2) there were no non-infringing alternative emulator systems acceptable to Intel; (3) Mentor had the manufacturing and marketing capability to satisfy Intel’s demand; and, (4) Mentor established the amount of profit it would
have made if Synopsys had not infringed.  Synopsys argued that the lost profits shuold be apportioned to cover only the patentee’s inventive contribution.  The Federal Circuit agreed with Synopsys that apportionment is an important component of damages law generally, and we believe it is necessary in both reasonable royalty and lost
profits analysis.  However, the Federal Circuit said that Panduit’s requirement that patentees prove demand for the product as a whole and the absence of non-infringing alternatives ties lost profit damages to specific claim limitations and ensures that damages are commensurate with the value of the patented features.

Regarding indefiniteness, the Federal Circuit said that “a method for displaying the results of synthesized circuit analysis visually near the
HDL source specification that generated the circuit” was not indefinite.The Federal Circuit held that the term “near” informs a person of ordinary skill in the art about the scope of the invention with
reasonable certainty, noting that a skilled artisan would understand “near” requires the HDL code and its corresponding circuit analysis to be displayed in a manner that physically associates the two.

Regarding patentable subject matter, the Federal Circuit held that claims containing “machine-readable medium” renders the claimed
subject matter invalid under 35 U.S.C. § 101.  The specification defined machine-readable medium as including carrier waves, found to be unpatentable in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007).

With respect to willful infringement, the Federal Circuit found the district court erred in barring evidence of willful infringement.  Specificaly, the Federal Circuit rejected a rigid rule that post-filing willful infringement cannot be presented unless the party moves for a preliminary injunction.

With respect to written description, the Federal Circuit found that there was adequate written description.  The Federal Circuit found that the very language of claim 1 which the court held was not supported by the specification was present in the originally-filed claims. Original claims are part of the original specification and in many cases will satisfy the written description requirement.

Finally, with respect to claim preclusion, the Federal Circuit said that claim preclusion does not bar later infringement allegations with respect to accused products that were not in existence at the time of the previous actions for the simple reason that claim preclusion requires that in order for a particular claim to be barred, it is necessary that the claim either was asserted, or could have been asserted, in the prior action.

 

Oh Diehr Me, Another Case With Patent Eligible Subject Matter

In Thales Visionix, Inc., v. U.S., [2015-5150](March 8, 2017), the Federal Circuit reversed the Court of Claims determination that the claims of U.S. Patent No. 6,474,159 were directed to patent ineligible subject matter.

The Federal Circuit observed that the Supreme court “has not established a definitive rule to determine what constitutes an ‘abstract idea.'”  Because all inventions at some level embody, use. reflect rest upon or apply laws of nature, natural phenomenon, or abstract ideas, the Federal Circuit said it was important to articulate what the claims are directed to with sufficient specificity to ensure that the step one inquiry is meaningful.  The Federal Circuit looked to Rapid Litigation Management, Enfish, and Diamond v. Diehr, and concluded that for purposes of evaluating patent eligibility, the claims in the ‘159 patent were nearly indistinguishable from the claims at issue in Diehr, explaining that just as the claims in Diehr reduced the likelihood that the rubber molding process would result in over curing or under curing, the claims at issue result in a system that reduces errors in an inertial system that tracks an object on a moving platform.

The Federal Circuit also (and less aptly) analogized to Rapid Litigation, stating that just as claims directed to a new and useful technique for defining a database that runs on general-purpose computer computer equipment are patent eligible, so too are claims directed to a new an useful technique for using sensors to more efficiently track an object on a moving platform.  Editorial comment: the similarity of these two cases is hard to see.

In a line that is sure to be quoted by applicants (and patent owners), the Federal Circuit said:

That a mathematical equation is required to complete the claimed method and system does not doom the claims to abstraction.

The Federal Circuit explained that far from claiming the equations themselves, the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed, and concluded that the claims pass Step 1 of the Alice test.

Posted in 101