Friday, December 9, 2016

MSJ of § 101 Ineligibility Denied for Characterizing Patents With "Reductionist Simplicity"

​ The court denied defendant's motion for summary judgment of invalidity on the ground that plaintiffs’ call center telecommunications patents encompassed unpatentable subject matter because the motion obscured patents' complexity with reductionist simplicity. "[V]irtually any invention could be described as simply addressing that which others long ago addressed . . . This reductionist simplicity may obscure underlying complexity, and it may jeopardize the innovative improvements upon longstanding accomplishments that patents are intended to incent. Patent law protects the builder of a better mousetrap, even if his or her invention could be described as, simply, a mousetrap -- or as a 'method to catch a mouse.' Many recent motions seeking determinations of patent ineligibility suffer from such reductionist simplicity -- from characterizing as simply a mousetrap that which is in fact a better mousetrap. Courts faced with such motions must scrutinize reductive descriptions with great care. It has also become increasingly common for litigants to pursue such judicial rulings, which can be as complex as Markman rulings but without a similar record. . . . [T]he current fad of ineligibility motions in patent cases has, in certain respects, gotten ahead of itself. . . . . [Defendant] presents its argument with the same reductionist simplicity common now in § 101 motions: It argues that all of the inventions claimed can be distilled to a single phrase: 'the abstract idea of processing (i.e., recording, monitoring, analyzing, and/or securing) data and information in telecommunications.'. . . There is, however, significant complexity in the patents obscured by this reductionist simplicity. Whether that complexity is novel or obvious is not at issue on this motion. Rather, the two questions properly addressed here are: (1) whether the patents simply claim an abstract concept (they do not); and (2) whether, even if they do, they are sufficiently inventive to be patentable nonetheless (most are)."

Verint Systems Inc. et al v. Red Box Recorders Ltd., 1-14-cv-05403 (NYSD December 7, 2016, Order) (Forrest, USDJ)

Thursday, December 8, 2016

Television Control System Patent Invalid Under 35 U.S.C. § 101​

The court granted defendant's motion for summary judgment that plaintiff's television control system patent encompassed unpatentable subject matter and found that the claims lacked an inventive concept. "[T]he claims are limited to a particular technological context: 'devices for viewer control of a television receiver,' and the inventor does not profess that the claimed system is innovative in the wider context of electronic circuitry or micro-processing. . . . [T]he specification describes the problem being solved as the confusion and inconvenience that resulted from the advent of cable and satellite television services with their multiplicity of channels and unfamiliar and inconsistent numbering systems. . . . In short, the need was to put a conversion chart on a remote control in an easily usable format, a task that would not suggest that innovative technology would be required to accomplish. . . . The claimed system is readily comparable to the electronic map found unpatentable for lack of an inventive concept in Peschke Map Technologies LLC v. Rouse Properties Inc., 168 F. Supp. 3d 881 (E.D. Va. 2016)."

Technology Development and Licensing, LLC v. General Instrument Corporation, 1-07-cv-04512 (ILND December 6, 2016, Order) (Lefkow, USDJ)

Wednesday, December 7, 2016

Enfish is Not an Intervening Change of Law Sufficient to Amend Judgment of Invalidity Under 35 U.S.C. § 101​

The court denied plaintiff's motion to amend an earlier judgment that the asserted claims of plaintiff's GPS patent were invalid for lack of patentable subject matter and rejected plaintiff's argument that Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. May 12, 2016), was an intervening change of law. "Enfish does not stand for the proposition that improvement to computer functionality is always sufficient to satisfy step one of [Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)]. . . . Enfish cautioned against describing claims at a high level of abstraction and untethered from the language of the claims. But in doing so, Enfish merely affirmed the existing law that claims are to be considered as a whole in order to evaluate what they are directed toward. That a court should not characterize an invention at too high of a level of abstraction, and should consider as a whole what a claim is directed toward, has previously been articulated in prior § 101 decisions, and does not present a change in the law. . . . [A]t the most, Enfish and subsequent cases suggest 'that there is considerable overlap between step one and step two,' but that 'whether the more detailed analysis is undertaken at step one or at step two, the analysis presumably would be based on a generally-accepted and understood definition of, or test for, what an 'abstract idea' encompasses.'"

Rothschild Location Technologies LLC v. Geotab USA, Inc., 6-15-cv-00682 (TXED December 5, 2016, Order) (Schroeder, USDJ)

Tuesday, December 6, 2016

Real Estate Search Patent Invalid Under 35 U.S.C. § 101​

The court granted plaintiff's motion for summary judgment because the asserted claims of defendants' real estate search patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[T]he [patent] is directed to a method for collecting and organizing information about available real estate properties and displaying this information on a digital map that can be manipulated by the user. . . . The fact that the map is digital, rather than physical, does not change the analysis. The [patent] relies on generic computing capabilities to render the map. . . . Organizing geographic data in this way is commonsensical – it is the type of approach anyone attempting to organize a large amount of geographic data would think to use. Allowing a user to orient herself using a larger map, and then to select a smaller, more detailed map corresponding to her geographic preference, is similarly commonsensical. All of these steps could be approximated by a realtor with an atlas. . . . Although the [patent] discloses pages of logical flow charts that explain how the computer should be programmed to perform the claimed method, [defendant] does not explain how the disclosed program differs from that which any programmer would have used to implement the claimed method."

Move, Inc. v. Real Estate Alliance, Ltd. et al, 2-07-cv-02185 (CACD December 1, 2016, Order) (King, USDJ)

Monday, December 5, 2016

Experts’ Testimony Excluded as to Opinions That Cost and Regulatory Constraints Would Have Suppressed Motivation to Combine​

The court partially granted defendant's motion to exclude the testimony of plaintiff's nonobviousness experts with respect to their opinions that cost and regulatory constraints would have suppressed a skilled artisan’s motivation to combine the prior art. "In a number of instances, [plaintiff's] experts conclude that because a proposed prior art combination would have been costly or legally prohibited by the FDA, a person of ordinary skill in the art would not have been motivated to change the prior art in the proposed manner. The Court will not permit [plaintiff's] experts to testify that such economic or regulatory concerns would have inhibited a person of ordinary skill in the art from changing the prior art or affected the person’s expectation that the change would have been successful. . . . [Plaintiff's] experts are not, however, prevented from testifying . . . that costs or regulatory factors are probative of whether a proposed prior art combination would have been technically feasible. . . . Similarly . . . although less probative of nonobviousness, the fact finder could conclude that regulatory restrictions reflect some technical feasibility, assuming there is evidence or opinion that the regulatory restrictions are based on technical limitations."

Arthrex, Inc. v. Smith & Nephew, Inc. et al, 2-15-cv-01047 (TXED December 1, 2016, Order) (Payne, MJ)

Friday, December 2, 2016

Web Based Communication Patent Ineligible Under 35 U.S.C. § 101​

The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s web based communication patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "[Plaintiff] argues that that the patent claims are like those in [Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016)] because they focus on improvements to apparatuses (computers and computing devices), not processes. [Plaintiff] contends that '[p]rior to the [patent-in-suit], no computer existed that had the same capabilities as those claimed in the [patent].'. . . [P]atent eligibility does not depend on the form of the claim. . . . The language of the claims and specification make clear that the focus of the claims is on the abstract process of retrieving and transmitting data, and that this process is performed on general-purpose, ordinary computer components. . . . [T]he claim language is silent as to how to actually achieve the collection and transmission of information. There are no specifics about what those pre-stored sequences of actions are, what action is taken on a remote Internet site, how information is accessed and returned from the Internet site, or what information is returned. . . . The patent claims a process that humans have long performed, but implements it on a generic Internet-connected device used in its ordinary capacity. This is not sufficient to be deemed non-abstract."

Content Aggregation Solutions LLC v. BLU Products, Inc., 3-16-cv-00527 (CASD November 29, 2016, Order) (Benitez, USDJ)

Thursday, December 1, 2016

Newly Assigned Judge Vacates Earlier Summary Judgment Invalidating Advertising Campaign Analysis Patents Under 35 U.S.C. § 101​

The court sua sponte vacated the prior district judge's summary judgment order invalidating defendant's advertising campaign analysis patents for lack of patentable subject matter because the asserted claims were not directed toward an abstract idea. "The invention set forth in the [patent-in-suit], and claim 71 in particular, seeks to solve a known industry problem: determining the value proposition of an advertising campaign in today’s fragmented digital environment. . . . [C]laim 71 is not directed at an abstract idea of double-blind matching. . . . Instead, claim 71 is directed at the concrete idea that there are today numerous digital media platforms which can be mined for information about second-by-second or minute-by-minute household viewing; that data can be as granular as whether the volume is turned down during a commercial break, or whether the channel is switched away and then switched back. That viewing data can be gathered as to a substantial number of households -- privacy protected -- and compared to equally granular data on purchasing behavior, and then various analyses can be created that rely on this level of detail. This is no abstraction and is described [as] an advancement. . . . It is, of course, possible for a court to reduce the method to an abstract description of, for example, 'collecting viewing and purchasing data to analyze the utility of an advertising campaign.' Indeed, virtually any invention can be reduced to a concept. . . . The key question is whether the abstract summary embodies the totality of the invention is all that the invention is—in other words, is the invention nothing more than the abstract concept? Here, the answer is plainly no."

TNS Media Research, LLC, et. al. v. TRA Global, Inc., 1-11-cv-04039 (NYSD November 29, 2016, Order) (Forrest, USDJ)