E.D. Texas Splits Patent-Eligibility of E-Mail Patents

Considering two patents directed to e-mail applications, Judge Gilstrap of the Eastern District of Texas deferred a patent-eligibility determination of one of the patents as premature prior to claim construction, but held that claim construction was not required for claims of the second patent to be deemed patent-ineligible under the Mayo/Alice patent-eligibility test. Umbanet, Inc. […]

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Software’s Capability to Infringe Is Not Patent Infringement

A claim for direct patent infringement could not be sustained where Microsoft software, even under the plaintiff’s theory of infringement, would have required additional user configuration before all claim elements were met.  Parallel Networks Licensing LLC v. Microsoft Corp., No. 1-13-cv-02073 (D. Del. April 10, 2017). The court initially granted summary judgment because the plaintiff […]

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Broad Estoppel for IPR Petitioner Asserting Prior Art in District Court

Uncertainty over IPR estoppel continues. In Douglas Dynamics, LLC v. Meyer Products LLC, the Western District of Wisconsin recently ruled that grounds of invalidity left out of a petition for inter partes review are estopped and cannot be raised in district court—contrary to the rulings of other district courts. Civ. No. 14-cv-886-jdp (W.D. Wis. Apr. […]

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CAFC: Handling Search Queries Is Not Patent-Eligible

A Federal Circuit Panel needed little analysis to determine that retrieving and displaying information is not patent-eligible subject matter, and affirmed a district court’s dismissal of a suit alleging infringement of claims of three patents.  West View Research, LLC v. Audi AG, Nos. 2016-1947, 2016-1948, 2016-1949, 2016-1951 (Fed. Cir. April 19, 2017) (non-precedential).  The patents, […]

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PTAB: Social Media Privacy Management Is Patent-Eligible

Claims to managing privacy in a social network survive the Mayo/Alice patent-eligibility test, says the PTAB, reversing an Examiner’s rejection under 35 U.S.C. § 101.  Ex parte Drake Sutton-Shearer, Appeal 2015-003977, Application 12/770,4711, Technology Center 3600 (PTAB Feb. 28, 2017).  Citing Federal Circuit decisions in Enfish, LLC v. Microsoft Corp. and Affinity Labs of Tex., […]

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No CBM Patent Review for Delivering Files to a Cell Phone

A patent directed to wirelessly “delivering an audio and/or visual media file” was not a covered business method patent, leading the USPTO’s Patent Trial and Appeal Board (PTAB) to deny a petition to institute a covered business method review.  FaceBook, Inc. v. Skky LLC, Case CBM2017-00006, US Patent No. 9,215,310 (PTAB April 11, 2017).  Interestingly, […]

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Common Interest Privilege Covers Non-Attorneys in Patent Case

The District of Massachusetts held that the common-interest exception to third-party privilege waiver protected communications disclosed to a licensee and non-attorney expert. Crane Security Technologies, Inc. v.  Rolling Optics, AB, No. 14-12428-LTS (D. Mass. Feb 3, 20017).  Crane Security Techs. Inc sued Rolling Optics, AB for infringing patents related to anti-counterfeiting measures on currency, e.g., metallic […]

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Statutory Disclaimer Moots Covered Business Method Review

When a patent owner disclaims patent claims for which another party petitions for Covered Business Method Review, the petition is moot.  The rule is pretty clear on this point: “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a),” and “[n]o post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § […]

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PTAB Panel Can’t Agree on Patent-Eligibility

Lest anyone think that patent-eligibility determinations at the USPTO’s Patent Trial and Appeals Board (PTAB) are easy, even in appeals in ex parte patent prosecution, consider the recent case of Ex parte Plondke, Appeal 2016-006905, Application 13/241,673 (PTAB April 3, 2017).  The claims at issue were directed to data processing software patents, specifically to an […]

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Arguments of Impermissible Change in the Principle of Operation in Ex Parte PTAB Decisions

In roughly the last month, the PTAB has decided 41 ex parte appeals involving arguments that the proposed modification in an obviousness rejection impermissibly changes the principle of operation of the primary reference. By way of background, this type of argument, including caselaw, is outlined in MPEP §2143.01 IV. Of the 41 recent decisions, only […]

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