IPR obviousness decision based on common sense modification of prior art affirmed


B/E Aerospace, Inc. v. C&D Zodiac, Inc.

Docket No. 2019-1935, -1936 (IPR2017-01275, -01276)
LOURIE, REYNA, HUGHES
June 26, 2020

Brief Summary: Board IPR obviousness decision based in part on common sense affirmed.

Summary: B/E appealed Board final written decision (FWD) finding certain claims of US 9,073,641 and 9,440,742 related “to space-saving technologies for aircraft enclosures such as lavatory enclosures, closets, and galleys” invalid for obviousness. Representative claim 1 of the ‘641 patent recites “a lavatory unit including a forward wall portion” including “a first recess” and a “second recess”. The Board concluded obviousness because the prior art shows a “contoured wall design” that meets “the ‘first recess’ claim limitation” and that the “second recess”, while not explicitly disclosed, “is nothing more than the application of a known technology…for its intended purpose with a predictable result”; agreed with Zodiac that a skilled artisan would have been motivated to include the second recess (“interested in maximizing space in airplane cabins”); and that “‘it would have been a matter of common sense’ to incorporate a second recess”. The FC panel reviewed “the Board’s legal conclusions of obviousness de novo and its factual findings for substantial evidence” (HTC, FC 2017; Consol. Ed., US 1938). The FC panel agreed with the Board that “modifying” the prior art “to include a second recess was nothing more than the predictable application of known technology…because a person of skill in the art would have applied a variation of the first recess and would have seen the benefit of doing so” (KSR, US 2007 (“combination of familiar elements according to known methods”, “no more than yield predictable results”); also supported by expert testimony). The FC panel also affirmed the Board’s conclusion that “it would have been a matter of common sense” to incorporate the second recess, and disagreed with B/E’s assertion that the Board relied “on ‘an unsupported assertion of common sense’ to ‘fill a hole in the evidence formed by a missing limitation in the prior art” (“failed to provide a ‘reasoned explanation and record evidence to support its position” (Arendi, FC 2016)). The FC panel explained that “[i]n KSR, the Supreme Court opined that common sense serves a critical role in determining obviousness” and “teaches that familiar items may have obviousness uses beyond their primary purposes, and in many cases, a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle”, also noting that “common sense cannot be used as a ‘wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art” (KSR, US 2007; Perfect Web, FC 2009 (“affirmed a [DC’s] invocation of common sense to supply a missing claim limitation…[t]he record showed that the technology was simple and that ‘step (D) merely involves repeating earlier steps’ until success is achieved”)). “Here,” the FC panel wrote, “just like in Perfect Web, the evidence showed the technology…is simple” and “[t]he missing claim limitation (the ‘second recess’) involves repetition of an existing element (the ‘first recess’) until success is achieved.” The FC panel also found that the Board did not rely on certain “design drawings” and did not reach B/E’s § 311(b) arguments.

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IPR obviousness determinations affirmed; preamble limiting due to reliance for antecedent basis


Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC

Docket No. 2019-1622, -1623 (IPR2017-01809, -01810)
LOURIE, MOORE, O’MALLEY
June 25, 2020

Brief Summary: Board finding that preamble do not limit the claims affirmed for one patent but not the other; obviousness conclusions affirmed.

Summary: Firebug appealed Board IPR decisions finding the claims of US 8,992,038 and 9,301,574 directed to illumination systems for shoes unpatentable as obvious. The Board concluded that the preamble term “textile footware” was not limiting to the claim body describing the components and function of the illumination system. The Board also found “the disclosure of the references is not outweighed by Firebug’s evidence of secondary considerations of nonobviousness.” The FC panel reviewed the Board’s claim construction de novo as it was “based solely on evidence intrinsic to the patent” (Shire Dev., FC 2015). The FC panel also explained that “[w]hether to treat a preamble as a limitation is a determination ‘resolved only on review of the entire[]…patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim” and generally “limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim” (e.g., “dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope”), but not if the “patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention” (Catalina Mktg., FC 2002). It concluded “that the body of the ‘038 patent recites a structurally complete invention” and the preamble is “merely an intended purpose that does not limit the claims” (e.g., “the same element-the footwear-is independently recited in the body of the claim” that “does not go on to expressly impose any further limitation on the footwear requiring use of a specific material”; supported by written description stating “textile materials…are just one possible material type”). In contrast, the ‘574 claim was found to rely “on the instance of ‘footwear’ introduced in the preamble for ‘antecedent basis’” and to be limiting on the claim body (such reliance “can evince an inventor’s intent that the preamble limit the scope of the claim”) and the Board erred its analysis of this claim. However, that error was found to be “harmless” (In re Watts, FC 2004; Getcher, FC 1997) because its ultimate conclusion of obviousness was correct (also correct regarding the ‘038 patent; e.g., “[t]he Board was within its discretion to weigh the credibility of expert testimony” (Yorkey, FC 2010)). Firebug also argued “that the Board erred by failing to consider two license agreements” and testimony regarding those licenses that “establish a nexus between Firebug’s products and the challenged claims, which the Board otherwise found lacking.” Other expert testimony was struck by the Board because the expert refused to be deposed and had little weight. But the FC panel agreed with the Board that the evidence was weak and found no error in the Board’s determination. The Board’s decisions were therefore affirmed.

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Patent ineligibility decision affirmed as claims “recite no technological solution”


Dropbox, Inc. et al. v. Synchronoss Technologies, Inc.

Docket No. 2019-1765, -1767, -1823
PROST, WALLACH, HUGHES
June 19, 2020
Non-precedential

Brief Summary: DC holdings of patent ineligibility affirmed as claims did not, e.g., “describe how to solve the problem in a manner that encompasses something more than the ‘principle in the abstract’”.

Summary: Dropbox appealed DC decision holding US 6,178,505, 6,058,399 and 7,567,541 relating to delivery, upload and backup of computer data ineligible under § 101. The DC found “that the patents claim abstract ideas, and…provide no inventive concept transforming the abstract idea into patentable subject matter.” The FC panel agreed with the DC that under step one of the Alice framework “access checker element” of the ‘505 patent “offers nothing but a functional abstraction” and “[t]he specification…does little to instead define this abstraction as a technological solution” (“The technical aspects of the access filter, where present, are discussed only in terms of non-limiting embodiments” which “is not enough to modify the focus of the claims.”; Alice step one “look[s] at the focus of the claimed advance over the prior art to determine if the claim’s character as a whole is directed to excluded subject matter”. (Alice, US 2014; Koninklijke, FC 2019; Affinity Labs., FC 2016)). The FC panel also explained that certain other limitations “redirect the focus of the claims towards a technological problem” but “still recite no technological solution” (Ancora, FC 2018 (“Improving security…can be a non-abstract computer functionality improvement if done by a specific technique that departs from earlier approaches to solve a computer problem.”)). Further, it explained that an assertion that the patent “solved a technological problem…is not enough” and it “has to describe how to solve the problem in a manner that encompasses something more than the ‘principle in the abstract’”, and “that solution has to be evident from the claims” (ChargePoint, FC 2019). The FC panel also agreed the ‘505 claims did not provide an “inventive concept” under Alice step two since “[a]t best, the claims recite the application of an abstract idea using conventional and well-understood techniques specified in broad, functional language” (BSG Tech, FC 2018). Similar conclusions were reached regarding the ‘399 and ‘541 patents (e.g., claim “only discloses generalized steps to carry out generic computer functions” and “there are long-standing practices analogous to the claimed steps”; claim elements “arranged in a conventional manner”; “the purported improvements over the prior art have not been captures in the claim language”). The DC decisions were therefore affirmed.

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IPR obviousness and non-obviousness findings affirmed (e.g,. the Board “explained why”)


Boston Scientific Neuromodulation Corp. v. Nevro Corp., Andrei Iancu (USPTO, intervenor)

Docket No. 2019-1582, -1635 (IPR2017-01812, -01920)
LOURIE, MOORE, O’MALLEY
May 29, 2020
Non-precedential

Brief Summary: Board IPR final written decisions finding certain of Boston’s claim unpatentable for obviousness and others patentable affirmed.

Summary: Boston appealed Board IPR decision finding certain claims of US 6,895,280 relating to “[a] spinal cord stimulation system”, methods for using, and recharging a battery used in the same unpatentable as obvious. Nevro cross-appealed Board IPR decision that certain ‘280 method claims are not unpatentable as obvious. The FC panel first concluded that the Board’s findings that the cited prior art discloses “detachable leads” are supported by substantial evidence (e.g., inventor testimony that “all SCS systems known to them employed detachable leads”, similar expert testimony, and the Board “explained why”). FN1 explains that while the Board’s conclusion did not “rest[] on a conclusion” of inherent disclosure in its obviousness conclusions, but noted that, even if it did, “substantial evidence supports such a finding” (Finnigan, FC 1999). The FC panel also reviewed the Board’s construction of “aligning” and “alignment” under the broadest reasonable interpretation standard (“applies in this IPR proceeding” (Personalized Media, FC 2020; “Changes to Claim Construction Standard…”, 83 Fed. Reg. 51,340 (Oct. 11, 2018; 37 CFR 42.100(b)) “in light of the specification, prosecution history, and the understanding of one skilled in the art” (Microsoft, FC 2015). The FC panel found no error in the Board’s construction since it is supported by intrinsic evidence, e.g., “[t]he plain language of the claims does not require positioning that achieves optimal charging efficiency” which is supported by the specification, as well as extrinsic evidence (“dictionary definitions”). The FC panel also found no error with the Board’s construction of “back telemetry receiver” as it is supported by the claim language and the specification. The FC panel also concluded that substantial evidence supports the Board’s finding of a motivation to combine the cited prior art “based on the disclosures in those references” and expert testimony. The Board’s exclusion of an exhibit from an expert declaration was found not be an abuse of discretion since 37 CFR 42.6(a)(3) does not allow arguments to be “incorporated by reference from one document into another document” (e.g., “certain elements of claims 8, 18, and 22-24 that are not present in exemplary claim 27” are “only address in Exhibit C” and not the Patent Owner’s Response). Regarding Nevro’s cross-appeal, the FC panel agreed with the Board’s construction requiring that “the ‘waiting’ limitation must occur after the first programming step (e) and before the second ‘re-programming’ step (f)” because, e.g., holding “otherwise would render the ‘waiting’ element superfluous and effectively obviate the need to ‘re-program’ the stimulation parameters”. The Board decisions were therefore affirmed.

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IPR obviousness decision affirmed; Board’s real-party-in-interest determination not appealable under § 314(d)


ESIP Series 2, LLC v. Puzhen Life USA, LLC

Docket No. 2019-1659 (IPR2019-02197)
LOURIE, REYNA, HUGHES
May 19, 2020

Brief Summary: Board IPR obviousness decision affirmed. Board’s real-party-in-interest determination not appealable under § 314(d).

Summary: ESIP appealed Board IPR decision finding the claims of US 9,415,130 relating to systems and methods for “germicidal protection and aromatic diffusion in enclosed habitable spaces” (“[a] method for introducing a scent into breathable air”) invalid for obviousness in view of two different combinations of prior art (Sevy and Cronenberg, Sevy and Giroux). The Board determined that “Sevy discloses every element of the challenged claims except for the ‘arcuate channel’ limitation of the ‘separating’ claim element” which are disclosed by the other references and that “a skilled artisan would have been motivated to combine the teachings”. ESIP argued Sevy does not teach the “separator” but the FC panel found “no error with the Board’s decision to credit the opinion of one expert over another” (Impax, FC 2018). The FC also found no error with the Board’s finding that ESIP’s expert testimony was “‘conclusory and unsupported’ and thus ‘unhelpful and unpersuasive’”. ESIP also argued that “a skilled artisan would have been motivated to substitute” the methods of Sevy with those of Cronenberg since, e.g., this “would require ‘substantial reconstruction’”. But the FC panel explained that for this proposition ESIP “relies solely on the discredited testimony of Dr. Bell”, found no error with the Board’s reliance on “the disclosures” per se and another expert’s testimony, and concluded that “[s]ubstantial evidence supports the Board’s finding” of a motivation to combine the references. For similar reasons, the FC panel agreed with the Board’s obviousness conclusions regarding the combination of Sevy and Giroux. ESIP also argued the Board erred “by failing to expressly define the applicable level of ordinary skill in the art” but the FC panel explained that “ESIP fails to make the requisite showing that there are ‘any meaningful differences’ between the parties proposed definitions or that ‘the outcome of [the] case would have been different based on which definition the Board used” (Genyzme, FC 2016) and reached a similar conclusion regarding ESIP’s claim construction arguments (Fresenius, FC 2009 (“no record support regarding why a modified claim construction would affect the [judgment]”)). ESIP also argued “that Puzhen failed to identify ‘all real parties in interest’ and the Board erred” in instituting the IPR but the FC panel explained that “the Board’s § 312(a)(2) real-party-in-interest determination is final and non-appealable” (Cuozzo Speed, US 2016 (§ 314(d) bars appellate review of…decision to initiate” IPR); Thryv/Click-To-Call, US 2020 (§ 314(d) also precludes judicial review of the…one-year time bar”)), and found “no principled reason why preclusion of judicial review under § 314(d) would not extend to…the ‘real parties in interest’ requirement of § 312(a)(2).” The Board decision was therefore affirmed.

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Fox Factory, Inc. v. SRAM, LLC

Docket No. 2019-1544 (IPR2017-01440)
NEWMAN, O’MALLEY, TARANTO
May 18, 2020
Non-precedential

Brief Summary: Board IPR obviousness FWD affirmed based on SRAM’s secondary evidence (e.g., “industry skepticism and subsequent praise and long-felt need”).

Summary: Fox appealed Board IPR final written decision (FWD) holding claims 1-26 of SRAM’s US 9,291,250 directed to the arrangement of teeth that engage a bicycle chainring set-up (“X-Sync chainring”) were not shown to be unpatentable for obviousness. The ‘250 patent states a wherein clause including an “axial fill limitation” requiring “widened teeth” that “‘fill[] at least 80 percent of [the width of] the outer link spaces’ at the midpoint of the tooth”. A parent patent (US 9,182,027) not including the “maximum axial width” limitation was previously disputed and the FWD and remanded to the Board (not at issue here (Fox, FC 2019)). In this IPR, the Board concluded that the axial fill limitation was “unmet by any of Fox Factory’s evidence” and that SRAM’s evidence of secondary considerations overcame Fox’s arguments that modifying the “chainring’s teeth to meet the axial fill limitation” would have nevertheless been obvious. Fox argued “that the Board’s conclusion of nonobviousness is in error because the only difference between the prior art and the claimed invention is the degree to which the widened teeth should fill the outer chain link spaces, measured halfway up the tooth”, “misapplied our precedent on secondary consideration, erroneously granting SRAM a presumption of nexus between the claimed invention and evidence of the success of the X-Sync chainring”, and “that various unclaimed aspects of the X-Sync chainring, such as its tall, asymmetric, and hooked teeth, were the real driver of its success.” While the FC panel agreed with Fox that “‘a mere change in proportion…involve[s] no more than mechanical skill,’ rather than the level of invention required by 35 U.S.C. 103” (Powers-Kennedy, US 1930), it also agreed with the Board’s conclusion that “SRAM’s optimization…displayed significant invention” based on SRAM’s secondary consideration evidence (e.g., “industry skepticism and subsequent praise and long-felt need to solve chain retention problem”; “such evidence defeated…contention of routine optimization”). The FC panel also agreed with the Board’s “determination of nexus, based on its finding that the X-Sync chainring’s success is largely due to its teeth profile, which is ‘essentially the claimed invention’”. The Board decision was therefore affirmed.

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IPR obviousness findings affirmed except for one claim that “describes a stand-alone alternative” to means-plus-function limitation


Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, et al.

Docket No. 2019-1105, -1106 (IPR2017-01018, -01019)
NEWMAN, O’MALLEY, TARANTO
May 15, 2020

Brief Summary: Board IPR obviousness findings affirmed, while its analysis of one means-plus-function claim vacated and remanded. The FC panel also emphasized that indefiniteness is not at issue in an IPR.

Summary: Cochlear appealed Board IPR finding that Oticon proved claims 4-6 and 11-12 of US 7,043,040 directed to “bone-conducting bone-anchored hearing” aids unpatentable for obviousness. Oticon appealed the Board’s decision that claims 7-10 were not shown to be unpatentable. Cochlear disclaimed claims 1-3 and 13 during the IPR; the challenged claims are dependent on disclaimed claim 1. The Board originally declined to review claims 7-10 after finding those to be means-plus-function claims and that “there is no identified corresponding structure in the specification” leaving it unable to compare the claim to the prior art, but later added the claims following the SAS decision (US 2018). That reasoning led to the Board’s final decision that claims 7-10 were not shown to be unpatentable. Regarding claim 1, the Board concluded that the “preamble phrase ‘for rehabilitation of unilateral hearing loss’ does not limit the scope of the claims”. The FC panel explained that “[i]n general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim” or if “necessary to provide antecedent basis for the body of the claim”, but not if it “merely extol[s] benefits” and “does not limit the claim scope without clear reliance on those benefits” (Catalina Mktg., FC 2002; Symantec, FC 2008). And the FC panel found the Board correctly found the disputed preamble is not a limitation but “merely a statement of intended use” (“no additional structure” to claim “furnished by the preamble”, “not necessary to provide antecedent basis”), and therefore rejected Cochlear’s first argument. The FC panel also rejected Cochlear’s second argument “that the ‘specifically adapted to’ limitation requires that the frequency characteristics ‘account for the mechanics of the skull’”, finding the Board correctly construed the limitation by “ordinary-meaning construction” (e.g., “‘adapted to’ generally means ‘made to,’ ‘designed to,’, or ‘configured to’ perform the stated function” (In re Man Machine, FC 2016; In re Giannelli, FC 2014; Aspex, FC 2012), and correctly concluded obviousness based on its construction. Cochlear also argued that there was no motivation to combine the prior art that it acknowledged disclosed all the claimed limitations, but the FC panel found the Board’s obviousness findings to be supported by substantial evidence (e.g., the preamble is not a limitation). Regarding Oticon’s cross-appeal as to claims 7-10, the FC panel also concluded that the Board did not err in finding “it could not construe the” means-plus-function limitations of claims 7-9 “in order to compare the claim requirements with the prior art” (Samsung, FC 2020 (cannot compare where “the meaning of that requirement is entirely unknown”); “Each of those claims plainly contains at least one required means-plus-function claim element for which the specification provides no corresponding structure.”; Williamson, FC 2015 (“[s]uch a claim is indefinite…but that is not the inquiry in an” IPR (311(b); Cuozzo, US 2016)). In finding the Board erred in its analysis of claim 10 and vacating this decision, the FC panel found it did not “contain a required claim element in means-plus-function form” and “also describes a stand-alone alternative to the signal processing means” (still indefinite but not relevant to IPR). Judge Newman’s dissent argued that “the court employ[ed] an improper analytic technique” here in part because it “dispose[d] of…limitations by designating the introductory clause as a mere ‘preamble’ that does not limit the claims”.

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Board IPR FWD finding BSN’s claims obvious affirmed, claim construction arguments waived


Boston Scientific Neuromodulation Corp. v. Nevro Corp., USPTO as Intervenor

Docket No. 2019-1584 (IPR2017-01899)
LOURIE, MOORE, O’MALLEY
May 18, 2020
Non-precedential

Brief Summary: Board IPR FWD finding BSN’s claims obvious affirmed (e.g., BSN “waived any claim construction argument…by failing to raise it before the Board”, obviousness decision supported by substantial evidence).

Summary: BSN appealed the Board’s final written decision (FWD) holding claims 1-20 of US 7,587,241 claiming “[a] method for controlling an implantable medical device” by “monitoring a voltage of a power source” and, “if…above a first threshold…listening for a first type of telemetry” and a second type and discontinuing listening for the first but not the second “if the voltage falls below the first threshold”. The Board found two sets of claims unpatentable in view of two different combinations of references, respectively. Regarding the first set of claims, BSN argued that the Board incorrectly construed “telemetry’ and what it means to ‘listen[] for…telemetry’” but Nevro argued BSN “waived any claim construction argument…by failing to raise it before the Board”, and the FC panel agreed (explaining that BSN had “amply opportunity to offer a construction for the ‘listening for’ term in its patent owner response”). The Board also found the “Torgerson ‘756” patent “covers the use of a second type of telemetry” but BSN argued the reference “discloses only one type of telemetry”. The FC panel found “nothing in the ‘241 patent specification that precludes” the type of telemetry described by Torgerson ‘756 “from constituting a second ‘type of telemetry’ merely because it is not a different type of energy transfer modality” and support for this point in BSN’s expert testimony. The FC panel, therefore, found the Board’s conclusion to be supported by substantial evidence. BSN also argued “that substantial evidence does not support” the motivation to combine the cited references, but the FC panel disagreed (e.g., “adequate motivation has been provided for a POSA to look to Torgerson ‘883” (another reference) “for another technique (involving telemetry)”). The FC panel similarly found the second set of claims (dependent claims) requiring a particular “first telemetry type” were also properly found to be invalid for obviousness (e.g., “Substantial evidence supports the Board’s finding that it would have been obvious to use FSK for the first type of telemetry and OOK for the second type of telemetry.”) The Board decision was therefore affirmed.

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Corrected assignment effective to show ownership, willful infringement finding and prejudgment interest award affirmed


Jodi A. Schwendimann, Cooler Concepts, Inc. v. Arkwright Advanced Coating, Inc.

Docket No. 2018-2416, 2019-1012
O’MALLEY, REYNA, WALLACH
May 13, 2020

Brief Summary: DC finding of willful infringement and award of prejudgment interest affirmed; “corrected nunc pro tunc” assignment effective to show ownership.

Summary: Arkwright appealed DC finding of willful infringement of six US patents regarding methods for transferring images onto a colored base and about $2.6 million damages and pre-judgment interest award. Ms. Schwendimann became the owner of patent applications leading to the disputed patents as part of a settlement with her previous employer. The original complaint against Arkwright was filed in 2008 and re-filed in 2011 following reexamination of one of the disputed patents. Arkwright moved to dismiss the complaint because an assignment was incorrect (i.e., Ms. Schwendimann was not the owner) but the assignment was corrected (also in 2011) and the DC found standing. Arkwright unsuccessfully filed an interlocutory appeal of this issue, which was denied in 2013 (Schwendimann, FC 2013). In this appeal, Arkwright argued unsuccessfully that Ms. Schwendimann lacked standing and that the DC erred in its prejudgment interest award. The FC panel explained that all that was required of the complaint is an allegation of facts by Ms. Schwendimann “that she is the owner by assignment of the ‘845 patent and Appellants infringed that patent”, which was present in the complaint and, therefore, “there is no ‘standing’ issue to be decided in this appeal” (citing Lone Star, FC 2019 (unavailable to the DC at the time of its decision) which brought the FC “into accord with” Lexmark, US 2014 (“whether a party possesses all substantial rights in a patent does not implicate standing or subject-matter jurisdiction”); see FN6 for a discussion of the dissent). “[T]he only questions” the FC needed to decide here, it explained, was “whether Ms. Schwendimann was a patentee at the time her action was filed and, if that status was conferred upon her by assignment, whether that assignment is reflected in a written instrument with the meaning of 35 U.S.C. § 261” for which “there are no form or content requirements” (§ 261; Enzo, FC 1998 (citing 35 U.S.C. § 100(d)). And “[w]ho has legal title is a question of state law.” (Enovsys, FC 2010; Jim Arnold, FC 1997; Tri-Star, FC 2010 (“interpreted in accordance with contract statutes and common law in the state where the assignment took place”); i.e., Minnesota in this case). The FC panel found no error with the DC decision (e.g., “ACT intended to assign” it, “the 2011 Assignment…merely reaffirmed the 2002 agreement”, “mutual mistake of the parties”, “good faith mistake” (Tri-Star); Speedplay, FC 2000 (license agreement listing wrong patent number effective since “substantial patent rights were transferred”); “By virtue of the reformation, the written instrument was corrected nunc pro tunc, to the point of the assignment.”) The FC panel also found no error with the DC’s award of prejudgment interest at “10 percent per year, starting from the first date of infringement” which was proper under Minnesota statutes (Nickson, FC 1988; Comcast IP, FC 2017).

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Uniloc claim ineligible under § 101 as abstract, claim includes “no specific asserted improvements”


Cisco Systems, Inc. v. Uniloc 2017 LLC

Docket No. 2019-2048
MOORE, O’MALLEY, TARANTO
May 13, 2020
Non-Precedential

Brief Summary: DC finding of patent ineligibility under § 101 affirmed (abstract idea since claim includes “no specific asserted improvements”).

Summary: Uniloc appealed DC finding that claim 6 of US 6,980,522 relating to a radio communication system with “a plurality of stations capable of forming an ad-hoc network” ineligible under § 101. Under the Alice (US 2014) eligibility framework, the DC found “that the claims were directed to the abstract idea of ‘ranking stations based on antenna performance characteristics and selecting the station with the highest rank to act as master in a network’” and “lacked an inventive concept as ‘neither the claim nor the specification provides for implementation of the abstract idea using anything other than existing, conventional technology.’” The FC panel agreed with the DC that the claim covers an abstract idea since, e.g., “[t]he general recitation of the familiar concepts of ranking and selecting leaves the claimed method ‘untethered to any specific or concrete way of implementing it’” (Affinity Labs, FC 2016). Uniloc argued that the claimed method is directed “to an improvement in the computer network or network functionality” (citing Uniloc, FC 2020; Customedia, FC 2020; Finjan, FC 2018), but the FC panel disagreed (“Here there are no specific asserted improvements.”; citing Finjan, FC 2018 (“‘behavior-based virus scan’ provided greater computer security”); SRI, FC 2019 (“a specific technique for improving computer network security”); Data Engine, FC 2018 (“specific method for navigating through three-dimensional electronic spreadsheets”); Thales Vision, 850 F.3d 1343 (2017) (“more accurately calculate the position and orientation of an object on a moving platform”))). Uniloc also argued the DC’s dismissal was incorrect because Uniloc “presented ‘specific, plausible factual allegations’ about why the invention…was not conventional’” as it “involves dynamically analyzing relative rankings of antenna performance” and “effectuat[ing] a hand-off of the master station”. The FC panel disagreed since the disputed claim does not include these limitations and the argument are “sweeping conclusory statements” (In re Gilead, 9th Cir. 2008). Regarding Alice’s step two (“whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application”), the FC panel agreed with the DC that “neither the claim nor the specification provides for implementation of the abstract idea using anything other than existing, conventional technology” which was not disputed by Uniloc. Thus, the DC decision was affirmed.

Posted in Patent Eligibility (101), Patentability, Software | Leave a comment