SoCal IP Law Group

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Monthly Archives: September 2011

SoCal IP Institute :: September 26, 2011 :: The Later Effective Provisions of the America Invents Act and Software as Patentable Subject Matter

We will be discussing the later effective provisions of the recently enacted America Invents Act and the patentability of software in our weekly SoCal IP Institute meeting on Monday, September 26, 2011. Brief synopses are presented below.

The America Invents Act, (Signed September 16, 2011) (attached).  We will be discussing the provisions of the America Invents Act that go into effect after September 26, 2011.  These include changes to the statute as it relates to:

Third Party Submissions of Prior Art

Supplemental Examination

The Inter Partes Review Procedure

The Post Grant Review Procedure

First to File Invention

Each of these changes take effect after September 26, 2011.  A useful summary of the effective dates prepared by the U.S.P.T.O is also attached.  We will discuss the effect these changes will have on prosecution practice and litigation strategy for our clients.

Ultramercial, LLC et al. v. Hulu et al., Case No. 2010-1544 (Fed. Cir. Sept. 15, 2011 (attached). This case is yet another in a recent line of cases including CyberSource that discusses the line between an abstract idea and Section 101 patentable subject matter in software. This case is most interesting because it appears to suggest that the complexity of a claimed algorithm or procedure may have some bearing upon its patentablity under Section 101.

This case includes an assertion of a patent related to payment for the display of media content including “intellectual property rights protection” (such as digital rights management).  Ultramercial asserted that Hulu, Youtube and WildTangent were infringing this patent by operating their respective video streaming sites.  WildTangent countered in a motion to dismiss that the software claimed by the patent encompassed non-statutory subject matter.  The district court agreed and dismissed Ultramercial’s claims for failure to state a claim.

The Federal Circuit disagreed and found that the patent claimed statutory subject matter.  In particular, the court went to great lengths to discuss that patent eligibility primarily rests upon the novelty, nonobviousness and adequate disclosure.  The court specifically considered the “machine or transformation” test, but declined to apply it to this case.  Here, the court concentrated on the complexity of the specific algorithm for obtaining payment for digital content distributed using the Internet.  As such, the court reasoned that it could not be “abstract.”  The case was reversed and remanded for further proceedings.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 26, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.

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SoCal IP Institute :: September 19, 2011 :: The Immediately Effective Provisions of the America Invents Act and Flowchart Support for Means Plus Function Terms

We will be discussing the immediately effective provisions of the recently enacted America Invents Act and the adequacy of flowchart disclosure for means plus function terms in our weekly SoCal IP Institute meeting on Monday, September 19, 2011. Brief synopses are presented below.

The America Invents Act, (Signed September 16, 2011) (attached).  We will be discussing the immediately effective provisions of the America Invents Act.  These include changes to the statute as it relates to:

Best Mode

Joinder

Fee Increases

The Priority Application Procedure

The New Micro Entity Status

Each of these changes take effect either immediately or within the next few weeks.  We will discuss the effect these changes will have on prosecution practice for our clients.

In re Aoyoma, Case No. 2010-1552 (Fed. Cir. August 29, 2011 (attached).  This is an appeal directly to the Federal Circuit from a rejection of claims 11 and 21 of U.S. Patent Application No. 10/798,505 (published as U.S. Patent Publ. No. 2001/0034673).  The Board of Patent Appeals and Interferences affirmed the Examiner’s rejection of these claims as indefinite.  The rejection centered on the claim limitation “reverse logistics means” which the Examiner rejected and the board affirmed as “any working computer” implementing the method shown in FIG. 8 and paragraphs [0088]-[0093] of the published application.

The Board searched the specification and found that the reverse logistics means was associated with FIG. 8.  They found that FIG. 8 lacked sufficient structure, but looked to the structure associated with generating “shipping data.”  This structure was effectively any computer.  As a result, the claim was rejected as indefinite.  The Federal Circuit found that this association was not supported by the specification and that it was improper.  The Federal Circuit then looked to the sufficiency of the disclosure of the “reverse logistics means” and found that the disclosure in the flowchart of FIG. 8 was insufficient.  As a result, the claims were invalid as indefinite.  The Federal Circuit affirmed on this alternative ground.  While the Federal Circuit stops short of asserting that every flowchart is insufficient to define sufficient structure to support a means plus function limitation, the decision suggests that structure should be disclosed in the specification and a structural figure or that any flowchart should make clear the structures, algorithmic or physical, necessary to define any means plus function limitations.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 19, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.

SoCal IP Institute :: September 12, 2011 :: Insurance Coverage for Intellectual Property Claims and Section 101 Patentable Subject Matter

Obviously, we didn’t meet on Labor Day. So, now we will be discussing one California appellate case involving the availability of insurance coverage for intellectual property claims and a Federal Circuit case discussing patentable subject matter. We will discuss these cases in our weekly SoCal IP Institute meeting on Monday, September 12, 2011. Brief synopses are presented below.

Aroa Marketing, Inc. v. Hartford Ins. Co., Case No. B228051 (Cal. App. Div. 4 August 23, 2011) (attached). Hartford had issued a commercial general liability insurance policy to Aroa for the policy period September 9, 2006 to November 1, 2007. The policy covered “personal and advertising injury” arising out of Aroa’s business. “Personal and advertising injury” was defined to include, “oral or written or electronic publication of material that violates a person’s right of privacy,” but specifically excluded, “personal and advertising injury” arising out of, “any violation of any intellectual property rights, such as copyright, patent, trademark, trade name, trade secret, service mark, or other destination of origin or authenticity.”

Aroa hired actress Tara Radcliffe to take part in an exercise video that, it was said, would be used in promotions at the Consumer Electronics Show (CES). Aroa later used the video (including her likeness) to sell other products and at locations other than CES. She requested they compensate her for that use and they refused. She sued for various claims stemming from the use of her likeness and the parties eventually settled. Aroa sought indemnity from its insurer, Hartford who refused. Eventually, Aroa brought suit against Hartford in an effort to enforce the terms of the insurance policy. The trial court granted Hartford’s demurrer on the complaint without leave to amend.

Aroa argued that the suit was a violation of a California “right of privacy” covered by the policy. Hartford disagreed. The appellate court agreed with Aroa. However, the policy’s specific exclusion of “intellectual property” related claims included expansive language including “such as” and “any intellectual property rights.” This was sufficient to remove right of publicity-related claims from the coverage provided by the policy. The court concluded that the decision to grant the demurre without leave to amend was proper because under no circumstances could Aroa succeed.

CyberSource Corp. v. Retail Decisions, Inc., Case No. 2009-1358 (Fed. Cir. August 16, 2011 (attached). CyberSource is the owner of a U.S. Pat. No. 6,029,154 which claims a “method and system for detecting fraud in credit card transactions between [a] consumer and a merchant over the Internet.” In particular, the claims seek to detect fraud by determining whether the current internet address matches one of a number of prior internet addresses from which legitimate purchases have originated.

CyberSource brought suit against Retail Decisions in 2004. Retail Decisions immediately requested a reexamination of the patent. The district court resumed proceedings after the reexamination ended in 2008. After the Federal Circuit’s In re Bilski decision, Retail Decisions was granted summary judgment under 35 U.S.C. Section 101. 545 F.3d 943 (Fed. Cir. 2008). The district court found that claims 2 and 3 of the patent were invalid. The Federal Circuit stayed the appeal until the Supreme Court’s Bilski v. Kappos decision was handed down. 129 S. Ct. 2735 (June 1, 2009).

The at issue claim 3 reads:

3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:
a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;
b) constructing a map of credit card numbers based upon the other trans-actions and;
c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Claim 2 recites “computer readable media” for performing those same steps. On appeal, the Federal Circuit agreed that the steps recited by claim 3 could not meet the machine-or-transformation test. In addition, the Federal Circuit found that claim 3 was merely a “mental process.” The inclusion of “the Internet” did not take the claim out of the realm of purely mental steps and, therefore, it was not patent-eligible subject matter. The court also noted that no specific algorithm was disclosed in either the claims or the specification.

Asserted claim 2 was a so-called “Beauregard claim” drawn to a “computer readable medium containing program instructions for a computer to perform” a particular process. The court disregarded CyberSource’s argument that this claim defines an article of “manufacture,” and was thus clearly-patentable subject matter under Section 101. Instead, the Federal Circuit looked to the “underlying invention for patent-eligibility purposes” and found that it was a method claim directed to purely mental processes. The court suggested that if a specific algorithm were disclosed that was beyond practical application by a human mind, then claim 2 (and presumably claim 3) might define patentable subject matter. This was not the case in claim 2. The district court’s invalidity decision was, therefore, affirmed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 12, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.

SoCal IP Institute :: September 12, 2011 :: Insurance Coverage for Intellectual Property Claims and Section 101 Patentable Subject Matter

We will be discussing one California appellate case involving the availability of insurance coverage for intellectual property claims and a Federal Circuit case discussing patentable subject matter.  We will discuss these cases in our weekly SoCal IP Institute meeting on Monday, September 12, 2011.  Brief synopses are presented below.

Aroa Marketing, Inc. v. Hartford Ins. Co., Case No. B228051 (Cal. App. Div. 4 August 23, 2011) (attached). Hartford had issued a commercial general liability insurance policy to Aroa for the policy period September 9, 2006 to November 1, 2007. The policy covered “personal and advertising injury” arising out of Aroa’s business. “Personal and advertising injury” was defined to include, “oral or written or electronic publication of material that violates a person’s right of privacy,” but specifically excluded, “personal and advertising injury” arising out of, “any violation of any intellectual property rights, such as copyright, patent, trademark, trade name, trade secret, service mark, or other destination of origin or authenticity.”

Aroa hired actress Tara Radcliffe to take part in an exercise video that, it was said, would be used in promotions at the Consumer Electronics Show (CES).  Aroa later used the video (including her likeness) to sell other products and at locations other than CES.  She requested they compensate her for that use and they refused.  She sued for various claims stemming from the use of her likeness and the parties eventually settled.  Aroa sought indemnity from its insurer, Hartford who refused.  Eventually, Aroa brought suit against Hartford in an effort to enforce the terms of the insurance policy.  The trial court granted Hartford’s demurrer on the complaint without leave to amend.

Aroa argued that the suit was a violation of a California “right of privacy” covered by the policy.  Hartford disagreed.  The appellate court agreed with Aroa.  However, the policy’s specific exclusion of “intellectual property” related claims included expansive language including “such as” and “any intellectual property rights.” This was sufficient to remove right of publicity-related claims from the coverage provided by the policy.  The court concluded that the decision to grant the demurre without leave to amend was proper because under no circumstances could Aroa succeed.

CyberSource Corp. v. Retail Decisions, Inc., Case No. 2009-1358 (Fed. Cir. August 16, 2011 (attached).  CyberSource is the owner of a U.S. Pat. No. 6,029,154 which claims a “method and system for detecting fraud in credit card transactions between [a] consumer and a merchant over the Internet.”  In particular, the claims seek to detect fraud by determining whether the current internet address matches one of a number of prior internet addresses from which legitimate purchases have originated.

CyberSource brought suit against Retail Decisions in 2004.  Retail Decisions immediately requested a reexamination of the patent.  The district court resumed proceedings after the reexamination ended in 2008.  After the Federal Circuit’s In re Bilski decision, Retail Decisions was granted summary judgment under 35 U.S.C. Section 101. 545 F.3d 943 (Fed. Cir. 2008).  The district court found that claims 2 and 3 of the patent were invalid.  The Federal Circuit stayed the appeal until the Supreme Court’s Bilski v. Kappos decision was handed down. 129 S. Ct. 2735 (June 1, 2009).

The at issue claim 3 reads:

3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:
a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;
b) constructing a map of credit card numbers based upon the other trans-actions and;
c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Claim 2 recites “computer readable media” for performing those same steps.  On appeal, the Federal Circuit agreed that the steps recited by claim 3 could not meet the machine-or-transformation test.  In addition, the Federal Circuit found that claim 3 was merely a “mental process.”  The inclusion of “the Internet” did not take the claim out of the realm of purely mental steps and, therefore, it was not patent-eligible subject matter.  The court also noted that no specific algorithm was disclosed in either the claims or the specification.

Asserted claim 2 was a so-called “Beauregard claim” drawn to a “computer readable medium containing program instructions for a computer to perform” a particular process.  The court disregarded CyberSource’s argument that this claim defines an article of “manufacture,” and was thus clearly-patentable subject matter under Section 101.  Instead, the Federal Circuit looked to the “underlying invention for patent-eligibility purposes” and found that it was a method claim directed to purely mental processes.  The court suggested that if a specific algorithm were disclosed that was beyond practical application by a human mind, then claim 2 (and presumably claim 3) might define patentable subject matter.  This was not the case in claim 2.  The district court’s invalidity decision was, therefore, affirmed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 12, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.