Defendants’ motion for summary judgment that the asserted claims were invalid under 35 U.S.C. §101 was denied. First the court determined that the claim at issue was not directed to an abstract idea because it requires the use of a specific type of metal detector, which is not employed “merely as a tool to make [the claimed method] process more efficient.” Next, the court determined that even if the claim was directed to an abstract idea, the claim would fulfill the second Alice step. Again the court focused on the fact that the claimed method required the use of a specific metal detector and determined that without said detector the claimed method could not be performed. As such, the court reasoned the second Alice step was met.Read More
Polsinelli on Patentability | Keeping You Informed on Alice Updates
Polsinelli’s Patent Litigation team includes 22 experienced patent litigators in our offices across the country, representing global, national, and regional companies, and individuals in patent matters. We partner with our clients to develop creative and cost-effective solutions for the complex issues that arise in patent litigation. The practice was recently named one of four 2016 "IP Powerhouses" in the nation by BTI Litigation Outlook.
In 2016, the practice continues to closely monitor ongoing judicial interpretations related to Alice Corp. vs. CLS Bank Int'l, one of the most important patent litigation matters in history.
The court found that the claims concerned the abstract idea of assigning labels to channels to eliminate the need for large user generated “conversion chart” to locate desired channels necessitated by the increasing number of channels available in cable and satellite TV. Court further noted that this abstract idea was implemented through routine use of a computer to perform a function previously performed manually. In doing so, it rejected multiple arguments by the plaintiff that requiring a control signal to travel through multiple channel signals imparted any inventive concept primarily because such a transmission was generally known in the art.Read More
The patents were found to be directed to the abstract idea of expediting the vehicle immobilization process via self-service. Although Defendant argued that the patents claimed the “novel apparatus” of a self-releasing boot, the Court noted that the claims themselves never go into the technical specifications of the self-releasing boot. Rather, the claims describe the boot with no more specificity than “a locking boot having a unique code.” Further, neither patent claimed an inventive concept. The Court found that there was nothing inherently inventive about the inclusion of several technological devices, such as RFID, and reciting their functions.Read More
The claims were directed toward performing “statistical analysis” using mathematic formulas. Mathematic formulas and calculations are abstract ideas and are, therefore, patent-ineligible subject matter, absent finding ‘something more’ to transform the claim beyond the ineligible concept. The Court then examined the other limitations claimed in the patent, and found these claims merely represented insignificant pre- and post- solution activity insufficient to add an inventive concept, and further, that executing an abstract idea on a generic computer did not add an inventive concept. The patent was, therefore, invalid.Read More
Defendant argued the claims of the patents-in-suit were directed to an abstract idea, stating that the asserted patents bore similarities to the claims of an unrelated but previously invalidated patent. The invalidated patent was directed to the abstract idea of implementing “post office functionality” via a computer, with support for the “post office functionality” found in the specification. The Court, however, distinguished the present case, finding that there could be no such comparison made between the patents-in-suit and post office functionalities performed on a computer. Instead, as Plaintiff contended, the claims were directed to a “technical solution to a technical problem.” Because Defendant failed to carry its burden to prove that the claims were directed toward an abstract idea, the motion to dismiss was denied.Read More
PTAB found that “the challenged claims are directed to the abstract idea of “detecting fraud based on the time between two requests by the same client.” The PTAB further found that the claims were merely directed at using generic process and machinery to carry out this idea. The claims and specification merely described using ordinary computers and routine code to compare the time between clicks.
Noting that the claims simply implementing data collection and processing, the PTAB found that the claims were invalid because they were merely an abstract idea without an inventive step. In closing the court noted that “[t]he key to the claimed solution here lies in recording who is making a request and measuring the duration between two requests from the same source, using conventional and generic processes and machinery. That is insufficient to render the claimed invention patent eligible.Read More
Claims were directed to “addressing a problem particular to the Internet, dynamically generating websites and displaying web pages based on stored user-selected settings.” As such, the issues were necessarily rooted in computer technology and directed to a specific solution for that issue. Rather than being a “do-it-on-a-computer” claim, these claims appeared to include an inventive concept. Thus, at this early stage dismissal was not warranted as the court believed claim construction and a more complete record were necessary to determine patent eligibility.Read More
The court found the ‘767 patent was targeted at “the age-old concept of gathering a limited set of patient data and then determining whether it is necessary to gather additional data,” but found that it was unable to determine as a matter of law whether the claims laked an inventive concept.
The court further found that Claim 31 of the ’850 Patent and Claim 12 of the ’996 Patent are directed to the abstract idea of correlating one set of data to another. It then noted that the claims simply directed a user to use conventional hardware and routine steps to execute the abstract idea. Accordingly, the claim were found invalid under § 101.
The court found that the claims of the ‘715 Patent were directed at abstract idea of filtering raw cardiogram data to optimize its output, rather than a specific improvement in the existing mobile cardiac telemetry field. Nevertheless, the claims disclosed a novel set of computer components that meet the machine or transformation test and therefore was sufficiently inventive.Read More
Court found the claim invalid because it failed to explain how the invention intends to optimize exposure. It sought to patent the idea of a solution rather than provide the actual solution of the problem. Given the breadth of the claims, the case was dismissed without prejudice. Patentee was given a chance to re-file and assert dependent claims that might avoid the issues of claim 1.Read More
The court determined that the asserted claims recited the abstract idea of providing and using feedback based on data gathered from subjects. It noted that such aggregation and use of information has long existed, and the patent does not disclose any unique sensor or require any special hardware or programming. The court rejected plaintiff’s reliance on Enfish because plaintiff failed to show how its patent taught an improvement in how a computer functions. The court then found no inventive concept in the ordered combination of the claim limitations.Read More
Samsung’s technology called “Best Face” in which users can substitute images in video streams was at issue. The court rejected Samsung’s argument that plaintiff’s technology is directed to the abstract idea of copying and pasting images that can be performed by humans alone, and its technology is simply a mathematical application. The court found that the technology was not as simple as “arts and crafts,” and the patent describes more than just a generic computer performing functions.Read More
In analyzing ten representative claims of the 974 claims asserted, after having construed some, but not all claims, the court agreed with defendants that the patents were directed to the abstract idea of tailoring marketing communications to recipients. The claims did not have an inventive concept as they used standard computer technology and did not support Plaintiff’s argument that its invention solved a technical problem, as the problems included those such as “substantial amount of human involvement,” “lack of personalization,” and “high volume product distribution.” The court stated that these aren’t true technological problems solved by inventions found to be patent eligibleRead More
The court found that the claims were directed to the abstract idea of “gathering, transmission, and display of location information of a certain subset of individuals from a list or of individuals requested to perform a service.”
In step two of the Alice inquiry, however, the court determined that the combination of the dynamic “buddy list” and “use specific group” system to GPS tracking was a “non-conventional” and “non-generic” arrangement of two conventional pieces. The court distinguished the child tracking prior art by noting that this invention allows users to add or remove persons being tracked through modifications of the buddy list or the creation of a use specific group.Read More
At the outset, the Court collected cases showing that “tailoring of content based on information about the user—such as where the user lives or what time of day the user views the content—is an abstract idea.” The claims further lacked an inventive concept because “containers,” “registers,” and “gateways” viewed individually and as an orderly whole were merely routine and conventional tools.Read More
The Court held that the ‘839 Patent is related to an unpatentable abstract idea. The Court explained that beginning at Alice step one, determining whether an object is in the right place at the right time, as claimed in the '839 Patent, fell squarely into a well-recognized category of claims directed to abstract ideas.
At the second stage of the Alice framework, the Court found that the '839 Patent did not add the requisite inventive material to transform the Patent into more than an abstract idea. The Patent holder CalAmp argued that the '839 Patent contained an inventive concept because a subset of database records is stored on the tracking device while the complete database is stored on the server, and that this specific arrangement of database records provided technological improvements over the prior art systems. The Court rejected this argument and explained that long before the filing of the Patent, computer systems had been configured in such a way to allow remote terminals to access information stored on a centralized database. Thus, applying this database structure to a tracking system was far from unconventional and insufficient to establish an inventive concept.Read More
The Court concluded that the Patents claim patentable subject matter under 35 U.S.C. § 101.
Under the first step of the Alice framework, the Court declined to decide whether the claims' particular variant of portable device pairing was an abstract idea, and assessed whether, even if it was, the concrete improvements they recited are inventive concepts under step two. The Court declined because, although the overall concept of device pairing is abstract, the claims here could be characterized as purporting to improve the functioning of the computer itself, or improving an existing technological process.
The Court then determined that under step two of the Alice framework, both the use of tapping and the use of a server, when considered along with the rest of the claims as an ordered combination, supply an inventive concept that transformed the asserted claims into patent eligible subject matter. The addition of tapping as the form of validation is an inventive concept. One problem that confronted the process of pairing small, portable devices was that they were purposefully designed to eliminate keyboards and multiple buttons in order to satisfy other design criteria. Tapping overcame this problem in an inventive way because it took advantage of the inherent, technical capabilities of the portable monitoring device—its ability to detect motion with a motion sensor—to provide a manner of validating the device that was different from traditional forms of input (i.e., buttons and keyboards).
The Court next explained that the use of a server as a part of the claimed pairing process supplied an inventive concept. As the name suggests, the concept of pairing traditionally involves two devices: the device that gets paired and the device it is paired with. By injecting a third device—a server—into this process, the asserted claims shift this paradigm so that all of the information needed for pairing does not have to be provided through the two devices. Instead, the server can also regulate and facilitate this process.Read More
Defendants erred in requesting the court consider whether the patents were an advancement over the prior art, improperly importing a 102/103 analysis. The court focused its analysis on the problem the claims set out to solve. That problem is patent-eligible: lack of precision in agrochemical spraying caused by the inability to control sprayer nozzles individually. Although this is completed in part by a mathematical formula, the focus of the claims was control of the nozzle, not the formula itself. Although the court noted that this alone resolved the issue, the court went on to analyze the inventive step. Construing the complaint in plaintiffs’ favor, the court credited plaintiffs’ position that the individual valve controls were not in the prior art. And the court said that given the parties’ disagreement on how to construe the claims, this dispute precluded early dismissal.Read More
The key claim of a first patent was not directed to an abstract idea, but instead tied to a specific structure that produced a technological improvement. The claim is directed to a “physical structure that contains a combination of components, not a method or system that uses a general computer to secure access to secret information.” Similar, the claim of a second patent has steps that “occur for the purpose of creating a technological improvement, which is to enhance security operations, so this claim is not an abstract idea.”Read More
The court found that the claims were directed to the abstract idea of “merely recit[ing] the familiar concepts of gathering data, analyzing that data for certain characteristics, and storing the results of that analysis. These are fundamental concepts germane to any type of content analysis.” But, in step two of the Alice inquiry, the court determined that when taken as an ordered combination, the claims included both spatial and temporal alterations to virus protection at the time of the invention. At that time, virus protection was localized and reactive. The invention moved malware profiling from end-user computers to an intermediate location on network, and also shifted the profile logic from one that must be applied to single, complete files to extracted aspects or components of a file after it has been decomposed. The court’s determination was based in large part on the specification of a parent patent that had been incorporated into the patent-in-suit by reference.Read More
The court determined that the ’511 patent’s claim at issue (claim 16) is directed to the abstract idea of keeping track of players’ accounts and making adjustments thereto based on the results of games between the players. These functions can be done in the mind of “a sufficiently intelligent person” and the claim simply instructs the practitioner to perform the method using generic computing devices. Similarly, the court found that claim 39 of the ’166 patent is “a textbook example of a computer utilized for its generic computing abilities to perform abstract calculations that could be performed in the mind of a sufficiently intelligent person.”Read More