{"id":1454,"date":"2017-03-07T12:35:13","date_gmt":"2017-03-07T17:35:13","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1454"},"modified":"2017-03-09T11:22:55","modified_gmt":"2017-03-09T16:22:55","slug":"dont-take-your-eye-off-the-ball-or-your-patent-assignment-will-end-up-in-the-dirt","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1454","title":{"rendered":"Don’t Take Your Eye Off the Ball or Your Patent Assignment Will End Up in the Dirt"},"content":{"rendered":"

In Intellectual Ventures I LLC v. Erie Indemnity Company<\/em>, [2016-1128, 2016-1132] (March 7, 2017), the Federal Circuit affirmed in part, vacated in part, and remanded in part the district court’s decision\u00a0finding all claims of U.S. Patent Nos.\u00a06,510,434, 6,519,581 and 6,546,002\u00a0ineligible under 35 U.S.C. \u00a7 101, and the infringement claim of the \u2019581 patent for lack of standing.<\/p>\n

Lack of Standing<\/strong><\/p>\n

The rights of the parent application of the ‘581 patent, together with “all continuations” (including the ‘581 patent application, which was pending at the time, were assigned to ALLAdvantage.com. \u00a0AllAdvantage.com then assigned various patent (including the parent of the ‘581 patent) to Alset. \u00a0Although this\u00a0agreement expressly identified the various patents and\u00a0pending applications subject to assignment\u2014including
\nthe \u2019581 parent and several of its pending foreign patent\u00a0application counterparts\u2014it did not explicitly list the \u2019581\u00a0patent\u2019s then-pending application. \u00a0The assignment generally provided:<\/p>\n

\"\"<\/a><\/p>\n

The Federal Circuit concluded that the Alset Agreement did not include an\u00a0assignment of rights to the \u2019581 patent and affirmed the district court\u2019s Rule 12(b)(1) dismissal. \u00a0The Federal Circuit rejected the argument that the language implicitly included the ‘581 patent application. \u00a0Applying California contract law, the Federal Circuit agreed with the district court\u2019s\u00a0conclusion that there is no ambiguity within the Alset\u00a0Agreement that could render it reasonably susceptible to an interpretation that the ‘581 patent application was transferred. \u00a0The fact that Alset recorded\u00a0the assignment at the PTO, represented in a terminal disclaimer that it owned all the rights to the \u2019581\u00a0patent, and filed updated power\u00a0of attorneys and paid the \u2019581 patent\u2019s issuance fee. \u00a0The Federal Circuit said that although this evidence may lead one to reasonably\u00a0conclude that Alset believed it owned the \u2019581 patent application\u00a0at some later point in time, it would be error to\u00a0rewrite the parties\u2019 agreement to include that which was\u00a0plainly not included. \u00a0The fact that other pending applications were expressly listed also did not help plaintiff’s cause.<\/p>\n

Because the Federal Circuit agreed that plaintiff lacked standing to sue under the ‘581 patent, it vacated the finding that the ‘581 patent was invalid under\u00a0\u00a7101.<\/p>\n

Don’t Take Your Eye Off the Ball<\/span><\/strong><\/p>\n

Conveying a pending patent application should be routine. \u00a0And perhaps because it was so routine is the reason that things went wrong. \u00a0If you want to assign a pending application, it is a probably a good idea to specifically identify that application. \u00a0If you want to include all continuations, divisionals, and continuations in part, than it is a good idea idea to say “including all continuations,\u00a0<\/span><\/strong>divisionals, and continuations in part” rather than “together with the goodwill of the business symbolized\u00a0by said patents and applications and registrations\u00a0thereof.”<\/span><\/strong><\/p>\n

Invalidity Under\u00a0\u00a7101<\/strong><\/p>\n

As to the ‘434 patent, which contained\u00a0twenty-eight claims relating to methods and apparatuses\u00a0that use an index to locate desired information in a computer\u00a0database: \u00a0Under step one of the Mayo\/Alice test the Federal Circuit agreed\u00a0with the district court that\u00a0the invention is drawn to the abstract idea of \u201ccreating an\u00a0index and using that index to search for and retrieve\u00a0data. \u00a0The Federal Circuit noted that it had previously held patents\u00a0ineligible\u00a0for reciting similar abstract concepts that merely collect,\u00a0classify, or otherwise filter data. \u00a0Under step two of the Mayo\/Alice test\u00a0the Federal Circuit agreed with the district court that they lack an \u201cinventive\u00a0concept\u201d that transforms the abstract idea of creating an\u00a0index and using that index to search for and retrieve data\u00a0into a patent-eligible application of that abstract idea. \u00a0The fact that the claimed invention employed an index of XML tags was not significant in view of the patent’s admission that such tags are known. \u00a0Moreover limiting an abstract idea to a particular field does not make the idea any less abstract. \u00a0The Federal Circuit concluded that the\u00a0claimed computer functionality\u00a0can only be described as generic or conventional.<\/p>\n

As to the ‘002 patent, which contained 49 claims\u00a0relating to\u00a0systems and methods for accessing a user\u2019s remotely\u00a0stored data and files:<\/p>\n

Under step one of the Mayo\/Alice test the Federal Circuit agreed\u00a0with the district court that the claims are\u00a0drawn to the idea\u00a0of \u201cremotely accessing user specific information. \u00a0Under step two of the Mayo\/Alice test, the Federal Circuit concluded that the claims recite no\u00a0\u201cinventive concept\u201d to transform the abstract idea of\u00a0remotely accessing user-specific information into a patent\u00a0eligible application of that abstract idea. Rather, the Federal Circuit said that the\u00a0claims merely recite generic, computer implementations
\nof the abstract idea itself.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Intellectual Ventures I LLC v. Erie Indemnity Company, [2016-1128, 2016-1132] (March 7, 2017), the Federal Circuit affirmed in part, vacated in part, and remanded in part the district court’s decision\u00a0finding all claims of U.S. Patent Nos.\u00a06,510,434, 6,519,581 and 6,546,002\u00a0ineligible … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[15,45],"tags":[],"class_list":["post-1454","post","type-post","status-publish","format-standard","hentry","category-15","category-ownership"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1454","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1454"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1454\/revisions"}],"predecessor-version":[{"id":1458,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1454\/revisions\/1458"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1454"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1454"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1454"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}