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Posts Tagged ‘Alice’

Alice Kills 3 MicroStrategy Data Storage Patents

August 1st, 2015 Alexander No comments

Three three data storage patents owned by MicroStrategy Inc. have been ruled invalid under the U.S. Supreme Court’s Alice ruling for claiming only abstract ideas. This was good news for accused infringer Apttus Corp., MicroStrategy’s rival in the business intelligence software industry.

MicroStrategy alleged that Apttus’ contract management software infringed three patents covering an intelligence server system, a method of providing business intelligence Web content and a system of remotely manipulating analytic reports.

Alice held that abstract ideas implemented using a computer are not patent-eligible. U.S. District Judge John A. Gibney Jr. noted that recent high court rulings have put limits on what can be patented. As a result, patents like MicroStrategy’s, which were granted before those rulings were issued, are now doomed, since “many inventors drafted their patents for an age of patent law that no longer exists.”

“Patentees relied on a low bar when writing applications to the U.S. Patent and Trademark Office, but since Bilski, Mayo and Alice, the rules have changed,” he said. “Unfortunately for the patentees, this results in ineligible patents.

Judge Gibney ruled that all three patents were directed at the abstract idea of report generation and data storage and do not include any elements that transform the idea into something patent-eligible.

With regard to one of the patents, which says it refers to data warehousing, the judge wrote that “this can mean nothing else but data storage, a concept that is absolutely an abstract idea.”

He rejected MicroStrategy’s arguments and claimed that doing something on a computer does not make it patent-eligible if it would not be eligible without a computer.

“Large amounts of data existed before the use of computers and the Internet,” he wrote. “The patent describes how individuals can gather information and identify trends within that data, just as people have done for many years.

For more information, see Law360.

Categories: Uncategorized


Patent Suit Filings Continue On Record Pace

July 26th, 2015 Alexander No comments

More than 3,100 new patent cases have been filed in federal court so far this year, a record-breaking number that could put patent filings in 2015 at an all-time high.

Legal analytics firm Lex Machina reported the first six months of 2015 were the busiest first-half-year period ever for patent litigation.  If filings continue at this rate, they would surpass the 6,000 mark by years end and top the 2013 record total.

Owen Byrd, Lex Machina’s general counsel, asserts that while the Patent Trial and Appeal Board has grown in importance since it opened for business in 2012, the numbers show that the district court remains the go-to venue in patent disputes.

“Federal courts continue to be critical forums for resolving patent disputes,” he said.

The potentially record-breaking numbers are a reversal from 2014, when filings dropped 40 percent in September compared to the year before. Experts at the time speculated that more plaintiffs might be opting not to file suit in the wake of the U.S. Supreme Court’s ruling in Alice, which held that abstract ideas implemented using a computer are not eligible for a patent.

Michael Sacksteder of Fenwick & West LLP also pointed to the Octane Fitness ruling as one that may have concerned patent owners, since that case made it easier for lower courts to require the losing party in patent cases to pay their opponents’ fees.

“I think we’re still seeing a lot of patents found invalid under Alice and seeing more fee awards than before,” he said. “But these entities that own these patents own these assets, and if they’re not doing anything with them, they’re definitely not getting anything out of them.”

Further, only 15 companies accounted for just more than 40 percent of all the cases filed in June and led by patent holding company Oberalis LLC, which filed 50 lawsuits, while taking on big name retailers like Toys ‘R’ Us, Macy’s Inc. and Petco Animal Supplies Inc.

The overall industry boom comes as lawmakers continue to debate legislation that proponents say will curb abusive patent litigation and reign in what some have called an abuse of the patent system.

For more information, see Law360.

Categories: Uncategorized


Google Says Alice Kills Priceline Founder’s Photo Tag Patent

April 10th, 2015 Alexander No comments

Google Inc. recently invoked the Supreme Court’s Alice decision in its bid to throw out a suit brought by the founder of Priceline.com over a patent for photo tagging technology, saying the patent does nothing more than identify a person in a photograph.

Google asserts that Inventor Holdings LLC is trying to claim an abstract idea that doesn’t disclose any new technology. Instead, the patent merely attempts to monopolize the high-level steps for taking two images, comparing them, determining the name of the person in the photo and asking the user if that name is correct.

“This method has been applied by any person who has ever put together a scrapbook,” Google said. “The patent does not claim or even disclose any new technology or algorithm for recognizing or comparing faces.”

Google argued in that the U.S. Supreme Court’s June 2014 ruling in Alice v. CLS Bank International should translate into a win for the tech giant.

The claims in the patent add “no inventive concept” to the abstract idea of identifying and labeling photographs based on the name of the person in the photo and should therefore be invalidated, Google argued.

Inventor Holdings, which owns the patents developed by inventor Jay Walker’s Walker Digital LLC, accused Google in a February 2014 lawsuit of infringing its patent, which covers technology that suggests and stores metadata of photos online.

Walker Digital assigned its patents to Inventor Holdings as part of a corporate restructuring in September 2013. In the restructuring, Inventor Holdings became a wholly owned subsidiary of Patent Properties Inc., a public company controlled by Walker and Walker Digital.

For more information, see Law360.

Categories: Intellectual Property


Patent Cases Plummet In California As Courts Embrace Alice

March 9th, 2015 Alexander No comments

California federal courts saw a 30 percent drop in patent cases last year, and attorneys say judges are showing a greater willingness to invalidate patents in light of the U.S. Supreme Court’s Alice decision. Thus, nonpracticing entities are concentrating on launching their litigation campaigns in friendlier jurisdictions outside the state.

Compared with a 19 percent decline from the previous year in patent complaints filed in all U.S. federal courts in 2014, California took in almost a third fewer patent cases, dropping from 876 cases in 2013 to 612 cases last year. Although the Central District of California retained its spot as the third most popular venue for patent filings — after the Eastern District of Texas and the District of Delaware — patent filings there decreased 27.9 percent, from 412 cases in 2013 to 297 cases in 2014.

The Southern District of California, which had emerged as the fourth hottest patent jurisdiction in 2013 with 222 cases, slipped to 11th place last year with 68 cases. The Eastern District saw a slight drop in filings, from 33 cases in 2013 to 28 cases in 2014, while the Northern District experienced a small boost, from 209 cases in 2013 to 219 cases in 2014.

The U.S. Supreme Court’s Alice ruling in June held that abstract ideas implemented using a computer aren’t eligible for a patent, putting at risk many software patents often asserted by nonpracticing entities. California courts appear to be more open than other jurisdictions to rely on the decision to invalidate questionable patents.

“I think the drop in filings was particularly acute among software and business method cases, and more of those may be filed in California because the technology is so prevalent here,” said Mark Lemley, a founding partner of Durie Tangri LLP.

“Federal court judges in California are no stranger to patent cases, and they are not shy to apply whatever the current patent law is,” said Case Collard, a Dorsey & Whitney LLP partner. “Judges in other states who don’t see as many patent cases might be more reluctant to invalidate patents in an early phase of a case, like through a motion to dismiss.”

“Savvy plaintiffs with patents vulnerable to an Alice challenge may be fleeing to Texas and Delaware instead [of California],” Lemley said.

The Central District of California may be seen as relatively unfriendly for litigants because it has a busy docket and some judges impose local patent rules or their own rules on patent cases, according to Peter Hahn, a partner at Pillsbury Winthrop Shaw Pittman LLP.

“Litigants don’t get the same face-to-face time with a judge as they would in other districts,” he said. “And some judges have their own rules for patent cases that can shift the timing of things around and make it difficult for everyone involved. The rules tend to be harsher on litigants in terms of flexibility. … For a lot of plaintiffs, they may feel they have a better shot at getting things to run more smoothly at other districts.”

While the Northern District of California, for instance, has more than 20 Article III judges with vastly different approaches to managing patent cases, the District of Delaware’s four judges have similar approaches to handling patent disputes and the Eastern District of Texas’ small subset of judges who handle patent cases allows litigants better odds of narrowing down who may preside over their suit.

“Although there is a reduced number of patent cases overall, we are seeing an increased focus on traditional forums that are preferred by plaintiffs,” he said. “The Eastern District of Texas and the District of Delaware are more plaintiff friendly and have a small number of judges … that give plaintiffs a good idea of who is going to be assigned to their case versus other places like California where there is more uncertainty.”

The Alice decision and renewed efforts in Congress to pass a patent bill that includes a provision requiring losing parties to pay their opponent’s fees in many patent cases indicate that patent filings in California and elsewhere may continue to go down.

For more information, see Law360.

Methodology: Law360’s analysis of trends in new patent complaints uses raw data from PACER filtered by Law360’s sophisticated docket tracking systems. The data is then normalized and reviewed by Law360 reporters to build a reliable and revealing data set.



USPTO Examples Show What Passes Under Alice

January 31st, 2015 Alexander No comments

The U.S. Patent and Trademark Office released a list of examples applying the U.S. Supreme Court’s Alice decision to hypothetical patents, which illustrates some of the computer-related inventions that can survive challenges under the ruling restricting the eligibility of patents involving abstract ideas.

The document includes eight examples: four inventions that are eligible for a patent under Alice and four that are not. Now, there some guidance of what the patent office is looking for.

Under Alice, abstract ideas implemented using a general-purpose computer are not eligible for a patent.

Many of the examples state that ways of performing long-standing business practices on a computer are not patent-eligible, while technological innovations dealing with the way a computer functions can pass.

For example, a method of providing a secure online sales transaction is not patent-eligible because it just a computerized way of creating a contractual relationship.

“This is simply a generic recitation of a computer and a computer network performing their basic functions,” the office wrote. “The claim amounts to no more than stating create a contract on a computer and send it over a network.”

However, a method of displaying multiple merchant websites within a single page, allowing Web users to visit several stores without leaving the page, was patent-eligible.

“The claim does not recite a mathematical algorithm; nor does it recite a fundamental economic or longstanding commercial practice,” the office said. “The claim addresses a business challenge (retaining website visitors) that is particular to the Internet.”

That theme runs through many of the examples, illustrating that in order to pass muster under Alice, inventions likely need to have a component that improves the functioning of a computer, rather than simply using a computer to make an existing process run more efficiently, said Donald Daybell of Orrick Herrington & Sutcliffe LLP.

The examples of things the USPTO found to be patent-ineligible tended to be much broader than those that were found eligible and involve things that had been done without a computer for a long time.

Nevertheless, the examination of any patent application is a fact-intensive inquiry, Daybell said, so the specific examples from the USPTO have a fairly limited practical value for determining whether any future application is patent-eligible or not. So even with this guidance, it’s tough for any practitioner to know where the line is drawn.

For more information, see Law360.

Categories: Intellectual Property


Patent Cases To Watch In 2015

January 6th, 2015 Alexander No comments

The U.S. Supreme Court will decide three patent cases involving claim construction, induced infringement and patent royalties in 2015, while the Federal Circuit grapples with the fallout from the high court’s recent patent-eligibility rulings and the standards for America Invents Act reviews.

Here are the patent cases attorneys will be watching in 2015:

Teva Pharmaceuticals USA Inc. v. Sandoz Inc.

The high court heard arguments in this case challenging the Federal Circuit’s rule that district court claim construction rulings must be reviewed afresh on appeal. If the justices discard that rule, it would mark a profound shift in patent law.

Teva is appealing a Federal Circuit decision invalidating its patents on the multiple sclerosis drug Copaxone after a district court found them valid. The company argues that claim construction, which is often dispositive in patent cases, involves factual findings that should be reviewed with deference on appeal.

The Federal Circuit has long held that claim construction is a question of law that must be reviewed de novo. As a result, it frequently reverses decisions by trial judges, and a Supreme Court decision requiring deference “could be a big, big change.”

Commil USA LLC v. Cisco Systems Inc.

The justices agreed to review a Federal Circuit decision that a defendant’s good faith belief that a patent is invalid can serve as a defense to induced patent infringement, in a case with significant implications for how difficult it is to prove inducement.

The ruling, which wiped out a $74 million damages award after a jury found that Cisco infringed a Commil wireless networking patent, created a defense to induced infringement that had never existed before.

The defense does not appear to have been used much since it was created, but that could change if it gets the high court’s blessing. It is easier for accused infringers to craft a defense that they believed a patent was invalid than to argue that they didn’t infringe. Permitting the defense would give another defense to inducement and make inducement harder to prove.

Kimble v. Marvel Enterprises Inc.

Also, the high court took on a case, in which it will review its own 50-year-old rule that royalty agreements cannot extend beyond the expiration of a patent, potentially opening the door to much longer licensing agreements.

The high court will consider an appeal by the inventor of a Spider-Man toy whose bid to collect royalties from Marvel Enterprises Inc. after his patent expired was denied by the Ninth Circuit.If the justices overrule that decision and end the ban on royalties for expired patents, “it will definitely make negotiations a bit more complicated and more interesting” by adding an entirely new aspect to licensing talks.

A win for the inventor may mean that licensees could conceivably end up paying royalties on patents in perpetuity, for a lower rate than they would currently pay during the limited life of the patent.

The case involves “a policy decision at the crossroads of antitrust and patent law,” DeVito said. “Antitrust cases have actually moved away from per se unenforceable rules, particularly in arms-length agreements where the parties have exercised their freedom to contract. This is a very important decision.”

Fallout from Alice and Myriad

While the justices busy themselves with new areas of patent law, the Federal Circuit, the Patent Trial and Appeal Board and the district courts will deal with the impact of the high court’s recent Alice and Myriad decisions on patent eligibility.

Many courts have cited those decisions to invalidate patents they say claim nothing more than abstract ideas or natural material.

“I call it the aftermath of Hurricane Alice,” Bart Showalter of Baker Botts LLP said. “Folks are very concerned about the scope of Alice. It’s a pretty fundamental case, and there is a concern among many companies that Alice has devastated a portion of their patent portfolio.”

In re: Cuozzo Speed Technologies LLC

By December, the Patent Trial and Appeal Board had issued just over 200 final written decisions in challenges to patents filed under America Invents Act proceedings. Although many have been appealed to the Federal Circuit, no appeals have yet been decided, and attorneys will be keeping tabs on how the court handles them and how often it upholds the board’s findings.

The court heard its arguments in an AIA case in November, and the decision in that appeal by Cuozzo could set important precedent on a key issue. Cuozzo argues that the board uses the wrong claim construction standard in reviews and should instead use the same standard as district courts, which makes it more difficult to invalidate patents.

If the court backs Cuozzo, the board would likely have to change the standard it issues in all future reviews. However the court rules, resolving the proper claim construction standard will make the system more stable.

“Clarity will be useful on either side,” he said. “It will make it more reliable for patentees and accused infringers.”



Inventor Asks High Court To Nix Alice Rulings

January 3rd, 2015 Alexander No comments

An inventor specializing in cybersecurity has started a petition with the U.S. Supreme Court, saying the Federal Circuit misinterpreted the high court’s Alice decision in Digitech Image Technologies v. Electronics for Imaging Inc. and three other published opinions and destabilized industries in the process.

The petitioner filed for writ of mandamus asking the Supreme Court to review a Federal Circuit decision in Digitech Image Technologies, where a digital image processing patent asserted against various companies is a patent-ineligible abstract idea.

The petitioner, who is not personally involved in the Digitech case, called the appeals court’s ruling an “utter and irresponsible misinterpretation” of the high court’s ruling in Alice v. CLS Bank International, which held that abstract ideas implemented using a computer cannot be patented.

“The decision below is misguided and ideologically driven and has spread like a cancer to digital machines and entire industries founded on using digital machines,” the petitioner wrote.

Furthermore, the petitioner stated, the Federal Circuit’s ruling to invalidate claims in the Digitech case has resulted in the destabilization of entire industries vital to the American economy.

“Entire industries are thereby unable to obtain the necessary funding for research and development, are unable to enter into licensing arrangements with existing intellectual property, and are unable to defend against infringers, both domestic and foreign, when it comes to innovations that are almost invariably domestic in origin,” the petition stated.

For more information, see Law360.

Categories: Intellectual Property


The “Abstract Idea” Under Alice

December 22nd, 2014 Alexander No comments

A federal judge recently invalidated a pair of digital file identification patents used to sue Amazon and Barnes & Noble, ruling they described nothing more than an abstract idea under the U.S. Supreme Court’s Alice Corp. decision.

U.S. District Judge Robinson granted Amazon and Barnes & Noble’s joint motion for invalidity in Cloud Satchel’s suits against the retailers. The patents described a way to transfer location information for documents, allowing mobile users to access a host of files without being limited by the memory on their device.

Judge Robinson held the patents essentially described the abstract idea of cataloging documents to aid retrieval efforts, a concept the defendants had called “as old as libraries themselves,” dating back two millennia.

Cloud Satchel launched its suits and said that while the patented ideas do facilitate the identification and retrieval of documents from storage, they do so in a specific way, with portable devices that have less memory than centralized databases.

But those limitations were not an “inventive concept” sufficient to transform that idea into patent-eligible subject matter. It was an inherent limitation to cataloging that the mobile devices would have less memory than the larger database, Judge Robinson said. Other restrictions, including using computers with processors and receivers, were also generic because they applied to virtually every portable computer.

Cloud Satchel commented, “We are hopeful the Federal Circuit will correct this overreaction, which if allowed to stand has the potential to significantly diminish the value of many existing patents – including Amazon’s own ‘One-Click’ technology — and dissuade the research and development efforts of companies both large and small.”

Futhermore, another federal judge also invalidated two content-on-demand technology patents asserted by OpenTV against Netflix saying they claimed nothing more than abstract ideas under the Alice Corp. decision, but refused to nix a third patent.

Judge Seeborg refused to strike down the third OpenTV patent because the patentability of the subject matter described in that patent was still in doubt. The patent describes a system for allowing advertisers to direct customized ads to individuals based on data gathered as to those individual’s specific interests and possible needs. Judge Seeborg found that it was unclear prior to claim construction if the patent describes abstract ideas or if it relates to a technological solution to a problem pertaining to interactive television.

“[T]he mere fact that generic computer processors and internet technology can now be used to implement the basic idea, with certain perceived greater advantages, does not give rise to a patentable method.”

“At least at this juncture in the case, the patent appears to be directed at providing a technological solution to a problem that arises in the computer and interactive television context,” Judge Seeborg said.

For more information, see Law360.

Categories: Litigation


LinkedIn Victory Over AvMarkets Patent Infringement Suit

November 14th, 2014 Alexander No comments

In February 2013, AvMarkets Inc. filed suit against accussing LinkedIn of infringing a patent, the claims of which are directed to creating a product catalog to generate sales leads over the Internet.

AvMarkets, which runs AvMarkets.com, describes itself as a technology and aviation services company whose core product is its online marketplace, where aviation and aerospace companies buy and sell their products and services.

In June 2013 LinkedIn filed a petition for covered business method patent review of the patent in suit under Title 35 of the U.S. Code’s Section 101, a section of federal patent law pertaining to what is eligible for patent protection. In the following November, the Patent Trial and Appeal Board granted a review and held an oral hearing in June.

The board has handed LinkedIn a win in the company’s petition for a covered business method patent review of a Web sales lead generation patent held by a company whose core product is an aviation and aerospace marketplace, ruling that the challenged claims are too abstract to be patentable.

The board found that LinkedIn has proven that the patent’s claims, which describe a “method for generating increased numbers of leads via the Internet,” are directed to the abstract idea of creating a product catalog on the Internet and are unpatentable subject matter under the standard clarified in the U.S. Supreme Court’s recent ruling in Alice Corp. v. CLS Bank International.

The claims “lack limitations that meaningfully limit the abstract idea” of the patent, the board said.

Under Alice, a patent’s claims were invalid because they were tied to an abstract idea and that implementing the claims on a computer did not render them a patentable invention.

LinkedIn argued that the claims in the patent are directed toward an abstract idea and do not implement a practice application warranting patent protection. The limitations in the claims only add “conventional and routine limitations to the underlying abstract idea” and only require technology that already existed in 2007, when the patent was filed, LinkedIn said.

AvMarkets rejected that argument, saying that the claims cannot be performed on a general-purpose computer and require specially programmed Web servers in order to function.

The board found that the claimed invention only required a general-purpose computer, and furthermore, the limitations AvMarkets identified as meaningful “represent merely routine computer technology” used in conjunction with a conventional network such as the Internet in a conventional manner, generating Web pages when a hyperlink is clicked, according to the decision.

AvMarkets had also contended that since other methods of providing product catalogs exist on the Internet, the claims are not an inherent attempt to preempt all ways of creating a product catalog and providing it over the Internet.

However, according to the board, that argument didn’t render the claims patentable because limiting an abstract idea to a specific field of use or adding some token post-solution activity does not render an abstract concept patentable.

Receiving part numbers, listing them on a Web page and generating a Web page for any activated part number link all represent such “insignificant post-solution activity as they do not represent significant meaningful limitations on the claims,” the board said.

“The fact that AvMarkets’ claims could be written differently does not demonstrate that the limitations added to the abstract idea are meaningful,” the board said.

For more information, see Law360.



Microsoft Seeks Dismissal of Enfish Database Patent Claims

October 14th, 2014 Alexander No comments

The dispute centers on Microsoft’s .NET Framework, which Enfish alleged infringes its patents. However, Microsoft urged a federal judge to dismiss the patent-infringement suit brought by Enfish, saying the patent claims covering improved database structures are too generally drawn and abstract to survive in the wake of the recent U.S. Supreme Court’s Alice Corp. decision.

Under Alice, to determine whether software can be patented, the analysis is two-fold: (1) determine if the claim covers an “abstract idea”, and (2) determine if there is an additional “inventive concept” that turns the abstract idea into a patent-eligible application.

Microsoft argued that the database patents are “very abstract” and would cover essentially any kind of table containing multiple rows and columns to store data, paired with an index.

“Under Alice, claims directed to such abstract ideas are unpatentable unless they further include elements that individually or collectively transform the idea into something that in practice would be significantly more than a patent on the abstraction itself,” Microsoft stated.

“For hundreds of years, human beings have been using tables to organize data. … It’s fundamental to the way we interact with data on a routine basis. … That’s abstract. That’s fundamental. That’s something a person could do with a pen and paper,” said Microsoft.

Enfish contends that its software is actually a novel improvement in the architecture of memory that has a “transformative impact” on the computer. “It’s not just an abstract idea,” said Enfish.
Enfish stated that two of its patents overcome Alice because they claim improvements in database structures, cover a particular approach to organizing digital information for storage and quick retrieval, and present no risk of preempting any abstract idea.

“The asserted claims are the antithesis of claims covering abstract ideas because they claim a specific and concrete data structure in computer memory,” Enfish said. “The claims do not simply recite an abstract idea and say ‘apply it.’”

Further, Microsoft’s contention that the asserted claims can be practiced either mentally or with pencil and paper is “grossly misleading and inaccurate,” according to Enfish.

For more information, see Law360.