Monthly Archives: September 2015

Using the Internet to Make Phone Calls is Not Patent Eligible

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In Telinit Technologies, LLC Alteva, Inc., [2:14-cv-369] (E.D. Tex. September 21, 2015), Judge Shroeder granted Judgment on the Pleadings that U.S. Patent Number 6,192,123 on a Method and Apparatus for Initiating Telephone Calls Using a Data Network is Invalid for Claiming Ineligible Subject Matter.

The Court applied the two-part test of Alice, first determining whether the claims at issue are directed towards one of the three patent-ineligible concepts, and then considering whether the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.

The Court first considered claim 1, directed to “a method for initiating telephone calls on a voice network in response to requests from a data network comprising the steps, performed by a processor.”

The Court rejected Telnit’s reliance on DDR Holdings, finding that the claim “describes a well-known and widely-understood concept—making a telephone call—and then applies that concept to the Internet using conventional computer components as an intermediary to place and monitor the telephone calls.”

The Court found the claim more analogous to the claims from the asserted patent in Dick’s Sporting Goods.Telinit challenged the assertion that the claim is abstract because “because a human being would be unable to receive a ‘data request’ or monitor a telephone call originating from the Internet.” The Court responded that taking an otherwise abstract idea and applying it to the Internet does not transform the claim into patentable subject matter, and found that the remaining stepsare tasks that human beings, such as telephone operators, have been doing for the past century.  The Court further noted that the claim does not contain any specific structural components—beyond a generic “processor” and generic “networks”—that remove it from the realm of an abstract idea.

The Court continued its analysis to determine whether the claims nonetheless disclosed an inventive concept.  The Court said, that even accepting the structures and corresponding functions identified by Telinit as those most favorable to Telinit, none, taken individually or in combination, transform the claim so as to cover an inventive concept. The primary structures identified by Telinit result in nothing more than generic computer and Internet based elements—“processor” and “networks.” Moreover, claim 1 does not direct the generic elements to a specific application beyond “receiving,” “identifying,” “signaling,” “monitoring,” or “providing” information. Consequently, the Court found that claim 1 does not contain any transformative elements, either alone or in combination, that transforms its abstract idea into patentable subject matter.

The Court also considered the application of the Machine-or-Transformation Test.  The Court noted that Bilski made it clear that the machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process, but noted tht it is a useful and important clue, an investigative tool, for determining patentability. The Court found that the patent was not tied to a particular machine or apparatus, and it did not operate to change articles or materials to a different state or thing.  Accordingly, the Court found that the machine-or-transformation test did not aid the Court in determining whether or not the claims recite patent-eligible subject matter.

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Inconsistent Positions: Never as Good in Practice as in Theory

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In Smith v.Orbcomm. Inc. [2:14-CV-666 (E.D. Tex. 2015), Judge Gilstrap invalidated as indefinite two claims of U.S. Patent No. 6,611,686 on a system of remotely tracking vehicles and cargo, rejecting the patent owner’s argument that the claims contained a typographical error that the court had the authority to correct in view of the patent owner’s alternative construction for the erroneous claim language.

The patent owner argued that the phrase “inputs to be controlled” in claims 15 and 48 contain an obvious typographical error that the court should correct to “inputs to be monitored,” explaining that the language arose from errors apparent in the prosecution.  In the alternative, the patent owner proffered an interpretation for the claims as written.

The found that the phrase “said inputs to be controlled” lacks antecedent basis in claim 15
and 48.  The district court found that in view of the patent owner’s alternate construction, this language could not be regarded as an obvious typographical error.  Furthermore the court noted the patent owner’s failure to obtain a Certificate of Correction.finding the patent owner’s arguments and actions show that correction is subject to reasonable debate. and thus not correctable by the court..  In addition, the court found that the error was not evident from the face of the patent, another requirement for the court to make the correction.

While FRCP 8(d)(2) allows pleading in the alternative, the court found the patent owner’s inconsistent position on claim construction prevented the correction that it sought, concluding thatt “Plaintiff cannot have it both ways.”

 

 

A Dose of Reality Can Treat Infectious Hindsight

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In Ivera Medical Corp. v. Hospira, Inc., [2014-1613, 2014-1614] (September 8, 2015), the Federal Circuit reversed the district court’s summary judgment of invalidity of U.S. Patent Nos. 7,780,794, 7,985,302, and 8,206,514, directed to a medical implement cleaning device.  One embodiment of the device was a threaded cap containing a cleaning material that contained a cleaning agent.  The invention as a vent in the cap “to allow evaporation of the cleaning agent from the inner cavity and to inhibit a buildup of pressure in the cap when the cleaning material is compressed.”  The district court said that a person of ordinary skill would not “need the benefit of hindsight to realize that adding a vent would relieve possible pressure on the inside of the cap.”  The district court found that a person of ordinary skill would recognize the benefits of adding a vent as allegedly taught in the prior art.  The district court concluded that there was no triable issue of material fact on obviousness for the asserted claims of the patents-in-suit.

 

The Federal Circuit summarized the role of motivation to the obviousness determination:

“A party seeking to invalidate a patent on obviousness grounds must demonstrate by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.”

The Federal Circuit explained that determining “motivation” is a flexible inquiry, and the motivation is not required to be found in any particular prior art reference.  While Hospira pointed to benefits of venting described in the prior art,  and in the written description of the patents in suit, Ivera pointed to evidence (Declarations from the inventors of the prior art patents)  that the conventional wisdom among those skilled in the art was that disinfecting caps should be fluid tight.  The Federal Circuit agreed that record evidence establishes a genuine dispute over whether a person of ordinary skill would be motivated to add a vent to a prior art disinfecting caps.

Ivera succeeded in creating a factual dispute by showing what members of the prior art actually believed at the time of the invention, providing declarations from the named inventors of two of the prior art references, both of whom explained that their goal was to provide a fluid tight seal, not venting.  Although the statements of an inventor are not controlling as to the content of a patent application, Hospira did not challenge that the inventor was a person of ordinary skill in the art.

Ivera shows the value of presenting an accurate picture of the state of the art, and those of ordinary skill working in it, to combat the tendency of hindsight to make simple inventions appear to be inevitable.

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Functional Language Made Claims Indefinite

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In Media Rights Technologies, Inc. v. Capital One Financial Corporation, [2014-1218] (September 4, 2015), the Federal Circuit affirmed judgment on the pleadings that all of the claims of U.S. Patent No. 7,316,033 were invalid for indefiniteness for containing means plus function elements without an identification of the corresponding structure in the specification.  At issue was the claim term “compliance mechanism” which appeared in every claim of the patent, which related to the prevention of unauthorized recording of media.

The Federal Circuit started with Nautilus’ definition of that a claim is indefinite if it fails to inform those skilled in the art about the scope of the claim with reasonable certainty.  The Federal Circuit noted that a  those skilled in the art about the t he indefiniteness — that a claim is indefinite if its language “might mean several different things and no informed and confident choice is available among the contending definitions.”

The Federal Circuit next address whether “compliance mechanism” was a means plus function element, noting that it is well settled that claim limitation that uses the word “means” invokes a rebuttable presumption that §112, ¶6 [now §112(f)] applies, and that a claim term that does not use “means” invokes a rebuttable presumption that § 112, ¶6 does not apply.  However, the presumption against the application of § 112, ¶ 6 to a claim term lacking the word “means” can be overcome if a party can “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.

Media Rights argued that “compliance mechanism” was analogous to “modernizing device” which was not a means-plus-function claim in Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011).  However the Federal Circuit distinguished Inventio because “modernizing device” described an electric circuit, which has sufficient structure, while in the present case “the claims do not use the term ‘compliance mechanism’ as a substitute for an electrical circuit, or anything else that might connote a definite structure.”  The Federal Circuit found no guidance in the intrinsic record as to what structure is being referenced. The Federal Circuit said that describing how the “compliance mechanism” is connected to and interacts with the other components of the system, what processes the “compliance mechanism” performs, and what structural subcomponents might comprise the “compliance mechanism,” were not enough.  It was the specification’s disclosure in Inventio regarding how the “modernizing device” and its internal components operated as a circuit, that connoted sufficient structure, and that was missing from Media Rights’ specification.  The Federal Circuit also distinguished Inventio as applying a heavy presumption against the application of §112, ¶6, which the Federal Circuit eliminated earlier this year.

Having determined that “compliance mechanism” was in fact a means-plus-function element, the Federal Circuit then proceeded to identifying the corresponding structure, material, or acts described in the specification to which the claim term is limited.  The Federal Circuit noted that where there are multiple claimed functions, as there are in this case, the patentee must disclose adequate corresponding structure to perform all of the claimed functions.  The Federal Circuit found that four functions were claimed, and the question is whether the specification discloses adequate structure to achieve all four of the claimed functions.

Because the functions are computer-implemented functions, moreover, the structure disclosed in the specification must be more than a general purpose computer or microprocessor, it must also disclose an algorithm for performing the claimed function.  The algorithm may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.

Relying on expert testimony, the Federal Circuit found that the disclosed portions of code in the specification did not explain how to perform at least one of the claimed function, making the disclosure inadequate.  The Federal Circuit also found a lack of disclosure of the means for performing another function, finding both a lack of detail and lack of explanation.  The Federal Circuit concluded that all the claims were invalid for indefiniteness.

Media Rights suggests that after Williamson v. Citrix Online, LLC, it more likely for functional language to be found to invoke §112(f), any time that functional language is used in a claim, the drafter should weigh the risk that §112(f), and provide an identification of corresponding structure, just in case.  When the invention is implemented by computer, the drafter must include the algorithm for all of the claimed functions.

 

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