If You Can’t Say Anything Nice About the Prior Art, Don’t Say Anything at All

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It turns out that Mom was right when she said: “If you can’t say anything nice about someone, don’t say anything at all.”  Criticism of the prior art can limit the scope of your claims.  In UltimatePointer, LLC v. Nintendo Co., 816 F.3d 816 [118 USPQ2d 1125, 1130] (Fed. Cir. 2016), the Federal Circuit found that the patentee’s disparagement of indirect pointing devices supported the conclusion that such devices were not encompassed by “pointing device” in the claim.  The Federal Circuit said that “the repeated criticism of indirect pointing” clearly pointed to the conclusion that the “handheld device” in the claims is limited to a direct-pointing device.

The lesson is to not disparage any feature of the prior art that might be incorporated into a device that you would want to claim infringes your claims.   You are free to disparage problems of the prior art that are eliminated by the claimed invention.  However, if you disparage the prior art, and the accused infringer’s product suffers from the same problem you criticized, then the accused product may not be found to infringe your claims.  And Mom would say, “it serves you right.”

 

When Does Meat Tenderizer Stop Working?

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Edmund C. Rogers, a well-known patent attorney in St. Louis, and a past president of the AIPLA, would often muse at lunch, “when does meat tenderizer stop working?”  A similar question might be posed about any of the qualifying language we lawyers pack into our applications and other legal writings.  In two cases this year, the Federal Circuit addressed to what the qualifications “in the preferred embodiment” and “the present invention” apply.

In Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312 [119 USPQ2d 1290] (Fed. Cir. 2016), the Federal Circuit (O’Malley, Plager and Wallach) rejected Stryker’s arguments that the introductory clause “in the preferred embodiment” applies to not only to the sentences in which it is located, but also to the entirety of the passage. Thus it is error to import the “essentially midway” language from the specification in the claim.  The Federal Circuit disagreed, finding that “context reveals that such introductory clauses limit only the sentences in which they are located in this case.”

In Unwired Planet, LLC v. Apple Inc., 119 USPQ2d 1517 (Fed. Cir. 2016), the Federal Circuit (Moore, Bryson and Reyna), rejected the District Court’s determination that details in a paragraph of the description following a sentence that began “The present invention” became mandatory claim limitations to be read into the claims.  The Federal Circuit disagreed that “the second sentence in the summary of the invention constitutes a disclaimer that limits the scope of every claim.”

The lesson from these cases is that when you use qualifying language, you have to be clear when it applies and when it doesn’t.  You need to be clear what is part of the preferred embodiment and what isn’t.  Likewise, if you can’t resist the temptation to use “the present invention,” you have to control to when, it applies and when it doesn’t.

Controlling language is within our power, meat tenderizer on the other hand . . .

Even Prior to Abrogation Form 18, Joint Infringement Pleadings Had to Meet Iqbal and Twombly

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In Lyda v. CBS Corporation, [2015-1923] (September 30, 2016), the Federal Circuit affirmed the dismissal under FRCP 12(b)(6) of the Complaint for infringement of U.S. Patent Nos. 7,434,243 and 7,730,506, directed to methods and systems for obtaining
real time responses to remote programming.

Making the case a historic artifact, the Federal Circuit found that because the Amended Complaint was filed in 2014, and the case was terminated when the complaint was dismissed in July 2015, the repeal of Form 18 did not apply to this case.  Until the abrogation of Form 18, compliance with Form 18 ws sufficient to plead direct infringement, but because allegations of induced or contributory infringement have additional elements than direct infringement, they are not governed by Form 18.

 

The Federal Circuit said that to prove joint infringement where multiple actors are involved in practicing the claim steps, the patent owner must show that the acts of one party are attributable to the other such that a single entity is responsible for the infringement.  According to the Federal Circuit, an entity will be responsible for others’ performance of method steps in two circumstances: (1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise. The Federal Circuit noted that allegations of joint infringement require elements beyond those for act of direct infringement, and concluded that Form 18 is not sufficient for claims of joint infringement, and that pleadings of joint infringement must be measured by the Iqbal and Twombly standard.  The Federal Circuit instructed:

A claim of joint infringement thus requires pleading facts sufficient to allow a reasonable inference that all steps of the claimed method are performed and either (1) one party exercises the requisite “direction or control” over the others’ performance or (2) the actors form a joint enterprise such that performance of every step is attributable to the controlling party.

 

The Federal Circuit found that Lyda was claiming joint infringement, and by his own admission did not plead in compliance with Iqbal and Twombly, and thus the case was properly dismissed.

Judge Mayer Finds that Section 101 Bars Patents on Software

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In Intellectual Ventures v. Symantec, [2015-1769, 2015-1770, 2015-1771](September 30, 2016), the Federal Circuit affirmed summary judgment, that the asserted claims of the ‘050 and ‘142 patents were directed to ineligible subject matter, and reversed the finding that the asserted claim of the ‘610 patent covered eligible subject matter.

At Step I of the Alice/Mayo Test for the ‘050, the Federal Circuit agreed that the ‘050 patent was directed to the abstract idea of filtering emails, noting that it it was long-prevalent practice for people receiving paper mail to look at an envelope and discard certain letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the mail.  At Step II of the Alice/Mayo Test the Federal Circuit rejected the argument that because the jury determined that the prior art did not anticipate or make obvious the claimed invention, the claims necessarily met Step II, noting the fact that the claims may not have been anticipated or obvious does
not suggest that the idea of “determining” and “outputting” is not abstract, much less that its implementation is not routine and conventional.

At Step I of the Alice/Mayo Test for the ‘142 patent, the Federal Circuit found that the ‘142 patent itself demonstrates that the claims were directed to abstract ideas, analogizing the technology to post offices, and demonstrating that the concepts were well-known and abstract.  At Step II, again the ‘142 patent was its own undoing, the Federal Circuit finding that the “specification thus confirms that the implementation of the abstract idea is routine and conventional.”

At Step 1 of the Alice/Mayo Test for the ‘601 patent, the Federal Circuit again found that patent was its own undoing, acknowledging that virus screening was known prior to the invention.  As a result the Federal Circuit said that virus screening is both well-known and an abstract idea.  The Federal Circuit disagreed that the narrowness of the claim made it patent eligible, noting that a narrow claim directed to an abstract idea is not necessarily patent eligible.  The Federal Circuit said that the claims were directed to the use of conventional or generic technology in a nascent but wellknown environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.

What is most notable about the case is Judge Mayer’ concurrence, where he makes to points:

(1) patents constricting the essential channels of online communication run afoul of the First Amendment; and

(2) claims directed to software implemented on a
generic computer are categorically not eligible for patent.

Mayer comments that although the claims at issue here disclose no new technology, they have the potential to disrupt, or even derail, large swaths of online communication.  He further suggests that Essential First Amendment freedoms are abridged when the Patent and Trademark Office (“PTO”) is permitted to balkanize the Internet, granting patent owners the right to exact heavy taxes on widely-used conduits for online expression.  Mayer points to the distinction between idea and expression in copyright law as providing a balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author’s expression.”  Mayer further points to fair use, that even permits the use of the author’s expression.  He concludes that restrictions on patent eligibility restrictions on subject matter eligibility can be used to keep patent protection within constitutional bounds. He states that:

Section 101 creates a “patent-free zone” and places within it the indispensable instruments of social, economic, and scientific endeavor.

He believes that Section 101, if properly applied, can preserve the Internet’s open architecture and weed out those patents that chill political expression and impermissibly obstruct the marketplace of ideas.

Mayer goes on to state that “m]ost of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents.  Arguing that software is a form of language, he states that it is It is inherently abstract because it is merely an idea without physical embodiment, and concludes that all software implemented on a standard computer should be deemed categorically outside the bounds of section 101.

This is justified in Mayer’s mind because computer are indispensible, and a basic tool of modern life and thus not subject to the patent monopoly:

In the section 101 calculus, adding software (which is as abstract as language) to a conventional computer (which rightfully resides in the public domain) results in a patent eligibility score of zero.

Mayer goes on to identify four insurmountable problems with patent protection for software:

  1. Their scope is generally vastly disproportionate to their technological
    disclosure.
  2. They provide incentives at the wrong time.
  3. Their sheer number.
  4. Most fundamentally, generically implemented software invariably lacks the concrete borders the patent law demands.

He concludes that eliminating generically-implemented software patents would clear the
patent thicket, ensuring that patent protection promotes, rather than impedes, “the onward march of science,” and allowing technological innovation to proceed apace.

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Friday Musings: Newton’s Laws of Claim Construction

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When you stop and think about it, Newton’s Laws can be applied to the all-important issue of claim construction.

Newton’s First Law of Claim Construction:  A term in a claim has its ordinary meaning to a person of skill in the art, unless acted upon by the specification or prosecution history.

Newton’s Second Law of Claim Construction: Claim scope is directly proportional to specification disclosure, and inversely proportional to the scope of the prior art.  Put another way, claim scope is the product of the patent’s disclosure and the prior art.

Newton’s Third Law of Claim Construction: For every canon of claim construction, there is an equal an opposite canon of claim construction.

For example: Canon: “Each Word in Claim is Presumed to Have Meaning.”  See Foremost In Packaging Sys. v. Cold Chain Technologies, 485 F.3d 1153 (2007); In re Gabapentin Patent Litigation, 503 F.3d 1254, (2007); Stumbo v. Eastman Outdoors, Inc., 508 F3d 1358, [85 USPQ2d 1275] (Fed. Cir. 2007); Bicon v. Straumann, 441 F.3d at 950 (2006)(Rejecting patentee’s proferred construction, in part because that construction would render some of the claim language superfluous.).   Opposite Canon: “A Preamble is Generally Not a Limitation.”  See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 [63 USPQ2d 1769] (Fed. Cir. 2002)(“Generally”. . . the preamble does not limit the claims.”).

Look for more on Newton’s Third Law of Claim Construction in future posts.

 

 

Let the Punishment Fit the Crime

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In Drone Technologies, Inc. v. Parrot S.A., [2015-1892, 2015-1955] (September 29, 2016), the Federal Circuit vacated the final judgment and the awards of damages ($7.8 millon) and attorney fees ($1.7 million), finding that the district court abused its discretion in issuing the two discovery orders and in entering a default judgment against Parrot for its failure to comply with those orders.

Parrot first contested jurisdiction, arguing that Drone did not have standing to bring suit. Relying on the presumption that the named inventors  are the true and only inventors, the Federal Circuit saw no reason why Parrot should be allowed to reassert an invalidity challenge under the guise of a motion to dismiss for lack of standing.

Parrot’s main argument on appeal is that the district court twice abused its discretion: first, when it directed Parrot to turn over its on-board source code; and, second, when it sanctioned Parrot by entering a default judgment against it after it failed to produce the source code.  Parrot contended that it produced documents sufficient to show the operation of the accused products as required by LPR 3.1, while Drone argued, and the Court agreed, that Parrot had to produce its source code.   Parrot failed to produce the Source Code, the district court rejecting Parrots attempts to avoid having to disclose its source code.  The district concluded that “lesser sanctions” would have been inadequate, and entered a default judgment against Parrot as to liability and struck its
answer and counterclaims.  The Federal Circuit denied Parrot’s petitions for mandamus, and the case went to trial on the issue of damages.

The Federal Circuit found that the district court twice abused its discretion: first, when it issued the July 1 and July 25 Orders; and second, when it imposed a default sanction on Parrot for not complying with those orders. Regarding the discovery orders, the Federal Circuit said found that the district court failed to follow its local patent rules (as well as the Federal Rules) and also failed to provide any explanation for its deviation from those rules. The Federal Circuit noted that there was no finding that Parrot did not comply with LPR 3.1.  The  Federal Circuit also found no explanation why the source code had to be produced, instead of the inspection and copying mentioned in the rule. was not sufficient.  The Federal Circuit also found no explanation why the orders were not limited to the products “identified in the claims pled.”  Finally the Federal Circuit noted the absence of any showing of relevance or need for the source code.

The Federal Circuit observed district court should have compared the needs of the case with both the burden placed on Parrot to produce “all source code” and the significant
consequences that might result from unauthorized or inadvertent disclosure, noting that protective orders are not fool -proof.

Turning to the propriety of the sanctions, the Federal Circuit reviewed the Poulis factors applied by the Third Circuit:

(1) the extent of the party’s personal responsibility; (2) whether the party had a history of dilatoriness; (3) whether the conduct of the party or the attorney was willful or in bad faith; (4) the meritoriousness of claims or defenses; (5) the prejudice to the adversary caused by the party’s conduct; and (6) the effectiveness of sanctions other than dismissal or default.

Because the apparent prejudice to Drone is unsubstantiated, the Federal Circuit said that the fifth factor disfavors a severe sanction.Turning to the effectiveness of the sanctions, the Federal Circuit said that the district court’s analysis suggests it did not seriously consider alternative sanctions, observing:

Notwithstanding the “strong presumption” against a “drastic” sanction like default, the court rejected all alternatives without explanation.

The Federal Circuit found that Parrot’s offers of alternative production were not indicative of a party trying to hide a smoking gun. Accordingly, it found that the district court abused its discretion in concluding that default was the only available remedy.

The Federal Circuit did not find Parrot blameless, however, and noted that if Drone should bring a further motion for actions, the Court was free to consider whether lesser sanctions were warranted.

 

 

GERUNDTOLOGY

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§112(f) allows a patent applicant to claim an element by the function it performs, however functionally claimed elements using §112(f) are limited to what is disclosed in the specification and equivalents.  The classic form of a 112(f) claim element is:

means for + [GERUND]

for example “means for fastening.”  However, many prosecutors, attempting to free themselves from the bounds of the structures disclosed in their specifications, attempt to claim an element by the function it performs.]

However, it is not possible to write a truly functional claim that avoids 112(f).  A claim element that does not use the word “means” is presumed to not invoke §112(f), but if it fails to recite “sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function,” then that element will nevertheless be construed under 112(f).  The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.  Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346 [115 USPQ2d 1105] (Fed. Cir. 2015).

If the functional term is found to have  a sufficiently definite meaning as the name for structure, the prosecutor has succeeded in broadly claiming the invention, while if it is not found to have a sufficiently definite structural meaning, then 112(f) applies, whether or not that is what the prosecutor intended.

While converting the gerund “fastening” in the example above, to “fastener” would seem to be safe, one cannot be completely certain that the selected term conveys a sufficiently definite structural meaning. See Advanced Ground Info. Sys., Inc. v. Life360, Inc., 119 USPQ2d 1526 (Fed. Cir. 2016)(symbol generator) ; Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, [116 USPQ2d 1144, 1148] (Fed. Cir. 2015)(compliance mechanism); Williamson v. Citrix Online, LLC, 792 F.3d 1339 [115 USPQ2d 1105, 1112 (Fed. Cir. 2015) (distributed learning control module). Thus, whenever a claim element is named functionally, the prosecutor should make sure that specification broadly discloses corresponding structure, in case the courts decide to construe the element under 112(f).

 

 

Stripped of Excess Verbiage, Claim Directed to Streaming Out-of-Region Media to Cell Phones in an Abstract Idea

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In Affinity Labs of Texas, LLC v. DirecTV, LLC, [2015-1845, 2015-1846, 2015-1847, 2015-1848] (September 23, 2016), the Federal Circuit affirmed the dismissal of the Complaint for patent infringement for failure to state a claim, because U.S. Patent
No. 7,970,379 was directed to an abstract idea.  The patent was directed to to streaming regional broadcast signals to cellular telephones located outside the region served by the regional broadcaster.

The Federal Circuit began with the “abstract idea” stage of the two-stage framework device by the Supreme Court to determine patentability under Section 101.  The “abstract idea” stage requires focus on the claimed advance over the prior art to determine if the “claim’s character as a whole” is directed to excluded subject matter.

The Federal Circuit said that the concept of providing out-of-region access to regional
broadcast content is an abstract idea, as that term is used in the section 101 context. It is a broad and familiar concept concerning information distribution that is untethered to any specific or concrete way of implementing it.  The Federal Circuit further noted that rhere is nothing in the claims directed to how to implement out-of-region broadcasting on a cellular telephone. Rather, the claims were drawn to the idea
itself.

The Federal Circuit noted that the claims were limited to cellphones, but merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.  The Federal Circuit further noted that the idea underlying the inventions in this case was akin to the ideas underlying the claims in several of this court’s recent cases.  Although the technology at issue differed from that involved in TLI and Ultramercial, the Federal Circuit found the analysis of the “abstract idea” step in those cases instructive, as the patent involves the conveyance and manipulation of information using wireless communication and computer technology.

The Federal Circuit distinguished DDR Holdings as requiring doing something to a web
page, not simply doing something on a web page.  The patent in suit was not directed to a technological problem, it claims the general concept of out-of-region delivery of
broadcast content through the use of conventional devices, without offering any technological means of effecting that concept.  The Federal Circuit also distinguished Enfish as related to an improvement to computer functionality itself, while the claims in the patent in suit were not directed to an improvement in cellular telephones but simply to the use of cellular telephones as tools in the aid of a process focused on an abstract idea.

As to the second stage of the analysis, the Federal Circuit found no “inventive concept” that transforms the abstract idea of out-of-region delivery of regional broadcasting into a patent-eligible application of that abstract idea. The Federal Circuit said that the claim simply recites the use of generic features of cellular telephones, such as a storage medium and a graphical user interface, as well as routine functions, such as transmitting and receiving signals, to implement the underlying idea, and that was not enough.

 

 

Posted in 101

Structural Element Does Not Make Method Claims Indefinite

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In Cox Communications, Inc. v. Sprint Communication Company LP, [2016-1013] (September 23, 2016), the Federal Circuit reversed the district court’s determination that the asserted claims of U.S. Patent Nos. 6,452,932; 6,463,052; 6,633,561; 7,286,561; 6,298,064; and 6,473,429 were not invalid for indefiniteness.

The parties agreed that “processing system” is not a means-plus-function
term, and confined its review to whether “processing system” renders the asserted patents indefinite under 35 U.S.C. § 112, ¶ 2.  The Federal Circuit found that the claim term “processing system” does not prevent the claims, read in light of the specification and the prosecution history, from informing those skilled in the art about the scope of the invention with reasonable certainty.

The Federal Circuit noted that the  case presented a peculiar scenario because the disputed term, “processing system,” plays no discernable role in defining the scope of the claims. The Court noted that all of the asserted claims are method claims, and
the point of novelty resides with the steps of these methods, not with the machine that performs them. The Federal Cricuit pointed out that if the words “processing system” were removed from the claims, therein meaning would not discernably change.  The Federal Circuit reasoned that if “processing system” does not discernably alter the
scope of the claims, it is difficult to see how this term would prevent the claims from serving their notice function under § 112, ¶ 2.

The Federal Circuit said that the common practice of focusing on individual terms is a “helpful tool,” but ultimately indefiniteness under § 112, ¶ 2 must ultimately turn on whether the “claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The Federal Circuit found that “processing system”
does not prevent the claims from doing just that.

Function Claim Language Shows That Claims are Directed to Abstract Idea, Not a Concrete Technical Innovation

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In Affinity Labs of Texas v. Amazon.com, Inc., [2015-2080] (September 23, 2016) the Federal Circuit affirmed judgment on the pleadings that U.S. Patent No. 8,688,085 on a System and Method to Communicate Targeted Information was directed to unpatentable subject matter.

The Federal Circuit found that the district court’s conclusion was consistent with its
approach to the “abstract idea” step in prior cases, including In re TLI Communications LLC Patent Litigation, which involved a patent on a method for uploading digital images from a cellular telephone to a server, which would then classify and store the images.  The Federal Circuit further found that the idea of the ‘085 patent was “even broader and more abstract” than the idea in Ultramercial, where a process of allowing
a consumer to receive copyrighted media in exchange for watching a selected advertisement was found to be an abstract idea.

The Federal Circuit rejected the argument that ’085 patent embodied a concrete
technological innovation, noting the purely functional nature of the claim, which confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.  The Federal Circuit said that claims thus do not go beyond stating the relevant functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.

The Federal Circuit concluded that In sum, the ‘085 patent was not directed to the
solution of a “technological problem,” nor was it directed to an improvement in computer or network functionality.  It claims the general concept of streaming user-selected content to a portable device. The addition of basic user customization features to the interface did not alter the abstract nature of the claims and does not add an inventive component that renders the claims patentable.