IP Blog
Software Patents
Federal Circuit Vacates PTAB Opinion in Google Application
Google recently convinced a Federal Circuit panel to vacate a decision by the Patent Trial and Appeal Board that had found Google’s application obvious. The court decided that the Boardfailed to support the decision with sufficient reasoning. The claims in Google’s application pertained to delivering search results customized to an expected age of the searcher. The system calculates a “content...
Patent Office Introduces Deferred Responses for Subject Matter Eligibility Rejections
The Patent Office recently introduced a new pilot program called the Deferred Subject Matter Eligibility Response pilot program going into effect on February 1. As detailed in a Federal Register notice, the program permits applicants to delay responding to rejections for ineligible subject matter—e.g., that the claims are directed to an abstract idea or law of nature—until later in prosecution....
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...
Image Display Patents Fail Alice Test: Gabara v. Facebook, Inc.
In granting a motion to dismiss for lack of patent-eligible subject matter under 35 U.S.C § 101, a court determined that patents relating to moving a portable unit to view an image of a stationary map and using a portable wireless system to improve the operations of a group communicating electronically are abstract ideas that do not include an inventive...
Wireless Surveillance System with Generic Components is Patent-Ineligible: Sensormatic Elect., LLC, v. Wize Labs, Inc.
In granting a motion to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test, a court held that patent claims for multiple patents directed to “wireless surveillance systems for monitoring a target environment” are abstract ideas, and “merely implement[ing] the abstract idea of wireless communication and remote surveillance using well-known, generic computer components and...
Case Dismissed Because Lack of Direct Infringement of Patent Claims Requiring a Mobile Device: Garrett v. TP-Link Research
A district court recently dismissed a complaint for failing to properly allege direct infringement with the mobile device recited in the patent claims. Garrett v. TP-Link Research America (N.D. Cal.). An app for installation on a mobile device does not count as a mobile device or as using a mobile device for showing direct infringement, and when pleading indirect infringement,...
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,...
Conclusory Legal Statements are not Factual Allegations to Survive Section 101 Eligibility: Dropbox Inc. v. Synchronoss Techs, Inc.
Conclusory legal statements that attempt to invoke a factual allegation do not sufficiently allege an inventive concept to satisfy patent eligibility under 35 U.S.C. § 101. Dropbox Inc., Orcinus Holdings, LLC v. Synchronoss Techs. Inc, 2019-1765, 2019-1767, 2019-1823 (Fed. Cir. June 19, 2020) (nonprecedential). Plaintiff Dropbox asserted infringement of U.S. Patent Nos. 6,178,505, 6,058,399, and 7,567,541 against Defendant Synchronoss. The...
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...