IP Blog
The Software IP Report and the Claims Interpreted Report.
Data Processing Claims Held Patent-Ineligible: Personal Web Technologies LLC v. Google LLC
In a precedential decision, the Federal Circuit has held patent-ineligible, under 35 U.S.C. § 101 and the Alice/Mayo test, claims of three patents directed to “data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.” PersonalWeb Techs. LLC v. Google LLC, Nos. 2020-1543, 2020-1553, 2020-1554 (Fed. Cir. August 12, 2021) (Opinion by...
Lessons of Yu v. Apple: The Law of § 101 Patent-Eligibility Is Chaos
Here is a case that both demonstrates the dysfunction of U.S. patent law with respect to eligible subject matter under 35 U.S.C. § 101, and offers lessons for practitioners wishing to buttress the patent-eligibility of their claims. In Yu v. Apple, Inc., NO. 2020-1760 (Fed. Cir. June 11, 2021)(precedential) a split Federal Circuit panel affirmed a district court’s holding of...
Internet Data Backup Not Patent-Eligible under § 101: WhitServe LLC v. DropBox, Inc.
Patent claims directed to backing up data to a client’s computers where the data has been outsourced for processing via the Internet failed the patent-eligibility test under the Alice/Mayo test and 35 U.S.C. § 101. WhitServe LLC v. DropBox, Inc., No. 2019-2334 (Fed. Cir. April 26, 2021) (non-precedential; opinion by Judge Reyna, joined by Judges Schall and Wallach). Perhaps the most...
Federal Circuit Holds Patent Claims to Software Functionality Indefinite: Rain Computing, Inc. v . Samsung Electronics Co., LTD
The Federal Circuit affirmed the invalidity based on indefiniteness under 35 USC § 112(b) of patent claims “directed to delivering software application packages to a client terminal in a network based on user demands.” Rain Computing, Inc. v . Samsung Electronics Co., LTD, 2020-1646, 2020-1656 (Fed. Cir. March 2, 2021) (precedential, opinion by Judge Moore, joined by Judges Lourie and...
Simio, LLC v. FlexSim Software Products, Inc.: Important Precedent for § 101 Patent-Eligibility of Software (or Lack Thereof)
The Federal Circuit ended 2020 with a precedential opinion holding that patent claims directed to providing a graphical user interface for controlling a software object’s behavior were patent-ineligible under the Alice/Mayo test and 35 USC § 101. Simio, LLC v. FlexSim Software Products, Inc., No. 2020-1171 (December 29, 2020; opinion by Chief Judge Prost, joined by Judges Clevenger and Stoll)....
How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn
A patent plaintiff saw its jury trial victory vacated when the court granted a defense motion for judgment as a matter of law under FRCP 50(b), finding that the plaintiff had not proved that the accused products had structure corresponding to claimed means. SPEX Technologies, Inc. v. Apricorn, No. CV 16-07349 JVS (AGRx) (C.D. Cal. Aug. 10, 2020). The jury...
CAFC Split Favors Patent-Eligibility of Network Monitoring Claims: Packet Intelligence LLC v. NetScout Systems, Inc.
A split Federal Circuit panel disagreed whether patent claims directed to network monitoring for whether received packets belong to a particular “conversational flow” are directed to an abstract idea. Judge Lourie was joined by Judge Hughes in affirming a district court’s findings of fact and conclusions of law rejecting a defense of patent-eligibility, under 35 U.S.C. § 101 and the...
Patent Claims to Authenticating Users in Transactions Lack Technical Improvement, Fail Patent-Eligibility: Universal Secure Registry LLC v. Apple Inc.
Claims directed to authenticating users for a transaction are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo patent-eligibility test, and therefore the court granted a Rule 12(b)(6) motion to dismiss in Universal Secure Registry LLC v. Apple Inc., Civ. No. 17-585-CFC-SRF (D. Del. June 30, 2020). The court overruled a Magistrate Judge’s report and recommendation that the motion be denied,...
Claimed Improvement Not Patent-Eligible Where Reducible to Mental Steps: Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc.
A Rule 12 motion to dismiss was granted where patent claims directed to “authenticating a user to a transaction at a terminal” failed the 35 U.S.C. § 101 and Alice/Mayo patent-eligibility test. Money and Data Protection Lizenz GMPH & Co. KG v. Duo Security, Inc., Civil Action No. 18-1477-CFC (D. Del. June 24, 2020). Notably, the plaintiff attempted to rely on...
Barcode Patent Fails Alice § 101 Test: Coding Technologies, LLC v. Mississippi Power Co.
Patent claims directed to scanning a code pattern for billing information and then processing a bill based on billing information obtained thereby have been held ineligible under 35 U.S.C. § 101 and the Alice/Mayo test. In Coding Technologies, LLC v. Mississippi Power Co., No. 1:19-CV-994-LG-RHW (S.D. Miss. June 4, 2020), the court granted a Rule 12(b)(6) motion to dismiss based on...