Method to Screen Equipment Operator for Impairment Not Patent Eligible

In Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, [2015-1411] (December 28, 2015), the Federal Circuit affirmed that claims 8, 9, and 11–18 of U.S. Patent No. 7,394,392 were  invalid as drawn to patent-ineligible subject matter under 35 U.S.C. § 101.  The claims were directed to a method to screen an equipment operator for impairment (and a corresponding system).

The Federal Circuit applied the two step Mayo test, determining whether the claims at issue are directed to a patent-ineligible concept, and if so, examining the elements of the claim, individually and as an order combination, to determine whether it contains an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent eligible application.  The Federal Circuit agreed that step 1 was met, the claims being drawn to the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment.  The Court noted:

None of the cl aims at issue are limited to a particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the “expert system” to perform any screening or testing, or explain the nature of control to be exercised on the vehicle in response to the test results.

The Federal Circuit rejected Vehicle Intelligence’s argument that it did not totally preempt the field, noting that “while assessing the preemptive effect of a claim helps to inform the Mayo/Alice two-step analysis, the mere existence of a non-preempted use of an abstract idea does not prove that a claim is drawn to patent-eligible subject matter.”

The Federal Circuit also agreed that the claims at issue fail the second step of the Mayo test, finding nothing in the claims sufficient to transform the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment into a patent-eligible application of that idea.  The Federal Circuit further rejected the fact that the method was tied to a particular apparatus, nothing that post-Mayo/Alice, this is no longer sufficient to render a claim patent-eligible.

Vehicle Intelligence attempted to identify inventive concepts, but the Federal Circuit found these to general. The claims merely state the abstract idea of testing an equipment operator for impairments using an unspecified “expert system” running on equipment that already exists in various vehicles, and found that was not enough.



Posted in 101

Belief in Invalidity Does Not Prevent Liability for Inducement, Lack of Infringement Does

In Commil USA, LLC v. Cisco Systems, Inc., [2012-1042] (December 28, 2015), the Federal Circuit considered the case after the Supreme Court held that belief that the patent is invalid does not negate intent to induce infringement.  Because it reversed and was remanding the case for a new trial on damages, the Federal Circuit chose not to address Cisco’s arguments that U.S. Patent No. 6,430,395 was not infringed.  Because the Supreme Court decision eliminated the need for a new trial, the Federal Circuit address Cisco’s non-infringement argument, finding them persuasive.

The district court construed the claims as requiring “for each connection of a mobile unit with a Base Station, running at the Base Station a copy of the low-level protocol supportingonly that connection and running at the Switch a corresponding separate copy of the high level protocol supporting only that connection.  The Federal Circuit was persuaded that Cisco’s system employs a single copy of the protocol to support all the connected devices. In view of this, the Federal Circuit found that a reasonable jury could not have found that Cisco’s devices run a separate copy of the protocol for each connected device, precluding liability under either direct or inducement theories.

While Cisco’s belief that the patent was invalid did not save it from liability for inducement, the fact that it was not infringing in the first place, did.




Frustoconical – the Right Word for the Right Shape

Another unusual pair of words that are common only in a patent attorney’s lexicon are frustoconical and frustopyramidal, meaning  truncated cone and truncated pyramid, respectively.  Frustoconical appears in the claims fo 8432 patents since 1976, frustopyramidal in only 80 patents since 1976.

If you need to describe the shape of a truncated cone, frustoconical is exactly what you need to use.  Even though the work is obscure, it is doubtful that it is any harder for a lay person to understand than “truncated cone” than frustoconical.

U.S. Patent No. 8,534,460, Fig. 2 showing a “tapering frustoconical sidewall 32”


Teaching Away Must Be Apparent from the Art as a Whole, and not Just Isolated Examples

In Merck & Cie v. Gnosis S.P.A., [20140-1779] (Fed. Cir. 2015) the Federal Circuit affirmed a PTAB decision in an IPR that the claims were invalid for obviousness, rejected patent owner Merck’s arguments that the prior art taught away form the claimed method, and that objective indicia of non-obviousness further support the patentability of the claims of U.S. Patent No. 6,011,040 relating to methods of using folates to lower levels of homocysteine in the human body.

The Federal Circuit said that if all elements of the claims are found in a combination of prior art references, as is the case here, the fact finder should further consider whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have a reasonable expectation of success, and found that the Board’s finding of a motivation to combine the prior art to arrive at the claimed method was supported by substantial evidence.

The Federal Circuit rejected Merck’s argument that the prior art taught away from the combination, stating that Merck was citing isolated prior art disclosures, and that viewing the prior art as a whole.  The Federal Circuit also rejected Merck’s argument that there was no showing that a person of ordinary skill would have a reasonable expectation of success, stating that KSR does not require an explicit statement of a reasonable expectation of success in every case.  The Federal Circuit said the Board impliedly found a reasonable expectation of success, and declined to overturn the Board’s decision for failure to state expressly that a person of ordinary skill would have had a reasonable expectation of success.

With respect to objective indicia of non-obviousness, the Federal Circuit noted that even when present, however, objective indicia “do not necessarily control the obviousness determination.”  The Federal Circuit found that the Board properly considered Merck’s evidence regarding objective indicia of nonobviousness, but found that the nexus between the merits of the invention and the evidence of commercial success, licensing, copying, and industry praise was weak.  Thus, the Board’s finding that this evidence of commercial success should be afforded little weight was supported by substantial evidence.






PTAB Incorrectly Determined that Claimed Element was Printed Matter where that Matter was not Claimed for its Communicative Content

In In re Distefano, [2015-1453] (Fed. Cir. 2015), the Federal Circuit reversed the PTAB’s affirmance of the rejection of claim 24 of Distefano’s patent application, rejecting the PTAB’s determination that “one of the limitations of independent claim 24 fell within the printed matter doctrine and therefore was not entitled to patentable weight.”

Distefano claimed a method of designing web pages.  Claim 24 required:

     24. A method of designing, by a user in a user interface having first and second display regions each capable of displaying a plurality of element [sic], an electronic document, comprising:

selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user;

displaying the first element in the second display region;

interactively displaying the electronic document in the first display region;

modifying the first element displayed in the second display region upon receiving a first command to modify the first element in the second display region; and

displaying the modified first element in the first display region, wherein the modified first element forms at least part of the electronic document.

The parties agreed that the  elements other than the highlighted selecting limitation were anticipated, and the PTAB refused to give the selecting limitation patentable weight under the printed matter doctrine. The Federal Circuit explained that it has consistently limited the printed matter rule to matter claimed for its communicative content.  The Federal Circuit explained that only if the limitation in question is determined to be printed matter does one turn to the question of whether the printed matter nevertheless should be given patentable weight. The determination of whether printed matter is given such weight turns on whether the claimed informational content has a functional or structural relation to the substrate.

The Federal Circuit found that the PTAB erred in its application of the first step.  The Federal Circuit recognized that the selected web assets “can and likely do communicate some information” but found that “the content of the information is not claimed.”  Thus, it did not have to decide whether the printed matter should be give printed matter.








A “Connection” Between the Patented Feature and Consumer Demand Is Enough to Support an Injunction

In Apple Inc. v. Samsung Electronics Co., Ltd., [2014-1802] (Fed. Cir. 2015), the Federal Circuit vacated and remanded the denial of Apple’s request for a permanent injunction.

The trial court denied Apple’s proposed injunction despite public interest favoring the injunction, and the narrowness of Apple’s proposed injunction (which tilted the balance of hardships in Apple’s favor), because these factors did not overcome Apple’s lack of irreparable harm.

Apple argued to the district court that it was irreparably harmed by Samsung’s infringement due to damage to its reputation as an innovator, lost market share, and lost downstream sales.  The district court rejected Apple’s arguments regarding irreparable harm, finding that Apple had not shown that a causal nexus connected Samsung’s infringement to these alleged injuries.

The Federal Circuit held that a causal nexus linking the harm and the infringing acts must be established regardless of whether the injunction is sought for an entire product or is narrowly limited to particular features, rejecting Apple’s argument to the contrary.

The Federal Circuit found the district erred, however, with respect to Apple’s allegations of lost market share and lost downstream sales.  The Federal Circuit said that the patent owner proving a causal nexus requires the patentee to show “some connection” between the patented features and the demand for the infringing products.  The Federal Circuit said that it was legal error for the district court to effectively require Apple to prove that the infringement was the sole cause of the lost downstream sales.  Instead, the Court should have determined whether the features “impact” customer’s purchasing decision.  The Federal Circuit said that the fact that the infringing features are not the only cause of the lost sales may well lessen the weight of any alleged irreparable harm, it does not eliminate it entirely.  Thus, the district court thus erred when it required Apple to prove that the infringing features were the exclusive or predominant reason why consumers bought Samsung’s products to find irreparable harm.

The Court concluded that on the record, applying the correct legal standard for irreparable harm, Apple has established irreparable harm.