Docket No. 2016-1128, -1132
PROST, WALLACH, CHEN
March 7, 2017
Brief Summary: DC finding the IV lacked standing affirmed because assigning rights “‘in and to’ a particular patent” does not “automatically include[s] its child applications” (must explicitly refer to continuations and/or “invention” vs. “patents”). DC invalidity findings regarding ‘434 and ‘002 patents under § 101 affirmed.
Summary: IV appealed DC finding that all claims of the asserted patents (US 6,510,434; 6,519,581; and 6,456,002) are ineligible under § 101 and dismissing the ‘581 patent infringement claims for lack of standing because, the DC determined, IV does not own the patent. Regarding dismissal of the ‘581 patent, the FC explained that the review is de novo and under California law. The ‘581 ownership issue was whether an assignment assigning rights “‘in and to’ a particular patent automatically include[s] its child applications”. The first assignment considered “expressly assigned the [‘581 parent patent US 6,236,983] patent and any continuation of that patent” to AllAdvantage.com. AllAdvantage then executed an assignment that “expressly identified the various patents and pending applications subject to assignment”, without “explicitly list[ing] the ‘581 patent’s then pending application”, to Alset using the “in and to” language. Alset recorded the assignment as including the ‘581 patent, filed POAs and paid the issue fee. It later assigned its patents to IV. The FC panel concluded the “in and to” language did not support IV’s position that the ‘581 patent was assigned to Alset since that assignment did “not disclose that continuation applications or other family members of the enumerated patents [were] assigned” (“[I]f AllAdvantage intended to convey the application leading to the ‘581 patent to Alset, it knew how to do so…IV seems to conflate the meaning of the word ‘patent,’ as used in the agreement, with ‘invention’; the latter of which we held conveyed rights to continuation applications.” (DDB Techs., FC 2008 and § 261 (“must be assigned by an instrument in writing”)). As IV was found not to own the ‘581 patent and therefore to lack standing, the DC finding of invalidity of the ‘581 patent was vacated. Under the two step “abstract idea” (“determine if the claim’s ‘character as a whole’ is directed to excluded subject matter”) / “inventive concept” § 101 analysis (Alice, US 2014; Mayo, US 2012; Affinity Labs, FC 2016; Ultramercial, FC 2014), the FC panel agreed with the DC that the ‘434 patent is ineligible under § 101 since the “claimed elements either individually or as an ordered combination…recite no more than routine steps involving generic computer components and conventional computer data processing activities to accomplish the well-known concept of creating and index and using that index to search for and retrieve data.” The FC panel also affirmed the DC’s decision that the ‘002 patent is ineligible under § 101 because, e.g., “[t]he claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieved the user-specific resources” and “provides no more than similar user interfaces recited in claims that we have previously held ineligible” (Intell. Vent. I, FC 2015; Enfish, FC 2016).