|
 |
PROTOTYPE REPORT
The data in this report is for demo purposes only. |
| Patent Appeals Report |
|
| Filer: Virginia Innovation Sciences, Inc. (Appellant) |
|
| Patents at Issue |
|
| RE46140 ─ Invalid |
| Method and system for conducting business in a transnational e-Commerce network |
|
| 9369844 ─ Invalid |
| System and method for providing locally applicable internet content with secure action requests and item condition alerts
|
|
| 8135398 ─ Not Infringed |
| Method and apparatus for multimedia communications with different user terminals |
|
|
|
| Decisions being appealed |
|
| Judge: District Judge Liam O'Grady |
| Motion for Attorney Fees (35 USC § 285) | GRANTED |
|
| Attorney Fees |
| Attorney Fees Granted |
|
| Exceptional Case |
| No Good Faith Belief/Objectively |
|
|
| Following plaintiff's voluntary dismissal, the court granted defendant's renewed motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions were objectively baseless. "The Court finds that [plaintiff's] litigation positions were so substantively weak after the claim construction occurred that this case stands out from others. First, [plaintiff] should have known each of its claims had become baseless upon issuance of the Markman order. Second, continuing to litigate each claim was objectively unreasonable. Accordingly, this is an exceptional case, and it became exceptional upon issuance of the claim construction order." |
|
|
| Motion for Summary Judgment -- Noninfringement | GRANTED |
|
| Direct Infringement |
| Comparing Claims With Accused Product/Service/Process |
|
|
| Following plaintiff's voluntary dismissal, the court granted defendant's renewed motion for attorney fees under 35 U.S.C. § 285 because plaintiff's litigation positions were objectively baseless. "The Court finds that [plaintiff's] litigation positions were so substantively weak after the claim construction occurred that this case stands out from others. First, [plaintiff] should have known each of its claims had become baseless upon issuance of the Markman order. Second, continuing to litigate each claim was objectively unreasonable. Accordingly, this is an exceptional case, and it became exceptional upon issuance of the claim construction order." |
|
|
| Motion for Summary Judgment -- Infringement | Denied |
|
|
| Motion for Summary Judgment -- Patent Invalid | GRANTED |
|
| Patent Ineligible Subject Matter |
| Abstract Idea |
|
|
| The court granted defendant's motion for summary judgment because the asserted claims of plaintiff’s transnational e-commerce patent encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "Although [plaintiff] claims the result of securely processing a credit card transaction with a payment server, the [patent] does not disclose or claim any new or improved technology for achieving the result. Instead, the [patent] claims a series of conventional steps performed in any online transaction: receiving and transmitting information." |
|
| Unpatentable Subject Matter (35 USC § 101) |
| Inventive Concept |
|
|
| The court granted defendant's motion for summary judgment because the asserted claims of plaintiff’s transnational e-commerce patent encompassed unpatentable subject matter and found that the claims lacked an inventive concept. "Here, the claims of the [patent] are not inventive. . . . [A]lthough [plaintiff] claims the 'switching' result, [plaintiff] has not identified any new or improved technology for achieving it. [Plaintiff] has not explained how the switching is accomplished; [plaintiff] identifies no algorithm, computer program, or mechanism for performing the switch. Indeed, [plaintiff's] own expert . . . could not identify how the buyer 'is shifted.'. . . . The Federal Circuit has invalidated similar patents directed to processing online financial transactions without providing any specific technical solution." |
|
|
| Motion to Dismiss - Voluntary Dismissal (FRCP 41(a)) | GRANTED |
|
|
| Motion to Dismiss - Failure to State a Claim (FRCP 12(b)(6)) | GRANTED |
|
| Patent Ineligible Subject Matter |
| Abstract Idea |
|
|
| The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s video signal transfer patents encompassed unpatentable subject matter and found that the claims were directed toward an abstract idea. "The irony of . . . step one is that abstract ideas, by their nature, are often hard to define. Accordingly, it is difficult to zero-in on a precise articulation of what the [patent-in-suit's] family is 'directed to.'. . . The [patent] . . . is directed to the more generalized problem of reproducing a video from a mobile phone on a separate display device. . . . Though the [patent] describes the technology used to achieve this function, the improvement itself is not computer-specific. Indeed, there is no software or algorithm specified in the patent. . . . Using the practical touchstone of preemption as a guide, it is clear that converting a video signal for a mobile terminal to an 'alternative display terminal' qualifies as an abstract idea. The [patents'] claims encompass every mobile telephone, every video signal received by that phone, and every HD display terminal sold on the market. . . . Thus, the focus of the patents necessarily must be cast in broad terms in order to encompass all the claim limitations." |
|
| Invalidity |
| Obviousness (35 USC § 103) |
|
| Prior Litigation |
| Prior Adjudication by PTO/PTAB |
|
| Unpatentable Subject Matter (35 USC § 101) |
| Inventive Concept |
|
|
| The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s video signal transfer patents encompassed unpatentable subject matter and rejected plaintiff's argument that the claims did not lack an inventive concept because the PTAB found they were not obvious during inter partes review. "Plaintiff cites multiple opinions from the PTAB stating that the specifications of the intermediary device were not taught by the prior art and were therefore not obvious under 35 U.S.C. §§ 102 or 103. . . . Although there is some caselaw to suggest that obviousness, novelty, and eligibility inquiries overlap, the most recent and persuasive opinions conduct the eligibility inquiry in isolation. . . . That is not to say that the §§ 102 and 103 analyses are completely irrelevant to the eligibility question. Indeed, the same component or claim that distinguishes the invention from the prior art may also provide the 'innovative concept' that directs the claims to patent-eligible subject matter. . . . [T]he USPTO's inter partes decisions do not provide an answer to the question at hand. What those opinions do, however, is highlight the aspects of the [patent] family that might constitute an 'innovative concept' under step two of [Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014)]." |
|
| Unpatentable Subject Matter (35 USC § 101) |
| Inventive Concept |
|
|
| The court granted defendant's motion to dismiss because the asserted claims of plaintiff’s video signal transfer patents encompassed unpatentable subject matter and found that the claims lacked an inventive concept. "[T]he mobile network, the phone, the intermediary device, and the display monitor all perform their conventional functions. There is no contention that the [mobile signal conversion module's] data compression or conversion was unknown in the prior art; [plaintiff] only argues that it was unknown in this context. Moreover, the process for 'converting' and 'compressing' signals is described in purely functional terms, without any algorithm or code for achieving those results. [Plaintiff] asserts that adding the intermediary device to a method of transmitting a video signal from a network to a display device through a mobile device is in itself an inventive concept. . . . Rather than creating an innovative 'ordered combination,' the [mobile signal conversion module's] placement between ubiquitous conventional devices preempts future innovation in the field of mobile-to-HDTV conversion. Because preemption remains the guiding principle of the § 101 inquiry, the functional claims of the patents in the [patents'] family drive at the very heart of § 101 concerns and they must be found ineligible." |
|
|
|
| Challenged Construed Terms |
|
| RE46140 ─ online communication of the buyer has been switched from the website listing the items to a website supported by the payment server |
| plain meaning, which is online communication of the buyer has been switched from the website listing the items to a website supported by the payment server |
|
| 9369844 ─ an updated condition of a merchandise |
| a detected change in the condition of an item |
|
| 9369844 ─ communicate the information for the processing of the purchase request through a communication channel |
| transmitting information from the wireless device to process the purchase request |
|
| 9369844 ─ communicating information for a processing of the purchase request through a communication channel to accommodate a completion of the processing of the purchasing request |
| transmitting information from the wireless device to process the purchase request |
|
| 9369844 ─ communication through a communication channel to accommodate the processing of the purchase request |
| transmitting information from the wireless device to process the purchase request |
|
| 9369844 ─ item status signa |
| a signal conveying information regarding the status of an item |
|
| 9369844 ─ the merchandise |
| the specific item for which a change in condition is detected |
|
| 9369844 ─ unique identifier |
| plain meaning, which is unique identifier |
|
| 8135398 ─ destined for a destination device located within the designated location |
| directed to a destination device within the home/designated location |
|
| 8135398 ─ multimedia content item |
| the multimedia content in the format received by the wireless terminal device from the source |
|
| 8135398 ─ navigational command to the destination device for the predetermined channel |
| a command to the destination device to select the communication pathway |
|
| 8135398 ─ predetermined channel |
| specified communications path |
|
| 8135398 ─ received through a wireless communication network and from a wireless terminal device |
| received through a wireless communication network and sent from a wireless terminal device |
|
|
|
|
|
|
|
| Opinion Author: Sharon Prost |
| CAFC Presidential Opinion |
|
| Patent Ineligible Subject Matter |
| Abstract Idea |
|
|
| In a precedential opinion, the Federal Circuit reversed an order granting patent owner's motion to amend because the substitute claims of patent owner's customer reward redemption patent encompassed unpatentable subject matter. "[Patent Owner] attempts to distinguish claim 16 at both steps one and two on the basis of its added requirement that the GUI 'is able to convert vendor-related information into information formatted for the GUI, which GUI-formatted information may then be provided to the claimed participants.' [Patent Owner] argues that the added limitation constitutes a technological solution to a technological problem. However, [Patent Owner] does not contend that the claimed invention improves the use of computers as a tool by reciting a new way for computers to conduct format conversion. Nor do the claims provide any guidance as to how this purported function is achieved. Thus, claim 16 does not claim a patent-eligible technological solution to a technological problem." |
|
| Unpatentable Subject Matter (35 USC § 101) |
| Inventive Concept |
|
|
| In a precedential opinion, the Federal Circuit affirmed a final written decision finding claims of patent owner's customer reward redemption patent encompassed unpatentable subject matter because the Board did not err in finding that the asserted claims lacked an inventive concept. "The claims amount to nothing more than applying the above-identified abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional. The claims apply the abstract idea on a computer by replacing the human intermediary with a GUI and API, but as the Board concluded, representative claim 1 'merely recites generic and conventional computer components (i.e., "processor," "GUI," and "API") and functionality for carrying out' the abstract idea. And the 'communication of information by GUIs and APIs' was 'well-known in the prior art.' Accordingly, the claims do not survive step two." |
|
| Patent Ineligible Subject Matter |
| Abstract Idea |
|
|
| In a precedential opinion, the Federal Circuit affirmed a final written decision finding claims of patent owner's customer reward redemption patent encompassed unpatentable subject matter because the Board did not err in finding that the asserted claims were directed to an abstract idea. "[W]e agree with the Board that representative claim 1 is directed to 'facilitating, or brokering, a commercial transaction (i.e., the sale and purchase of goods and services) between a purchaser using a first form of value (i.e., a rewards program participant using points in whole or in part) and a seller transacting in a second form of value (i.e., a vendor system which transacts purchases in currency).' The system of claim 1 facilitates such a transaction via transfers of information between the participant, vendor system, and the intermediary (the GUI and API). Humans have long intermediated these very transactions by collecting and relaying the very same information." |
|
| Patent Grounds for Review: CBM |
| PTAB Institution Discretionary (37 C.F.R. § 42.208) |
|
|
| In a precedential opinion, the Federal Circuit determined it lacked jurisdiction to review patent owner's challenge to the PTAB's institution of Covered Business Method Review. "In its briefing, [Patent Owner] argued that 'cxLoyalty did not satisfy its burden of establishing that the '087 patent is eligible for CBM review.' After the close of briefing but before oral argument, this court decided [SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865 (Fed. Cir. 2020)], in which we explained that 'the Supreme Court's decision in Thryv makes clear that the threshold determination' that a 'patent qualifies for CBM review is a decision that is non-appealable under 35 U.S.C. § 324(e).' We concluded that we were therefore 'precluded from reviewing' this 'challenge to that threshold determination.' As [Patent Owner] acknowledged during oral argument, SIPCO forecloses [Patent Owner's] CBM eligibility challenge." |
|
|
|
| Patents at Issue |
|
| 7134087 ─ Amendment Allowed |
reversed |
| System and method for transacting purchases with a cash vendor using points |
|
| 7134087 ─ Unpatentable/Canceled |
affirmed |
| System and method for transacting purchases with a cash vendor using points |
|
|
|
| Decisions being appealed |
|
| Judge: Justin T. Arbes |
| PTAB Final Written Decision -- Motion to Amend (Substitute Claims) ─ GRANTED |
reversed |
|
| PTAB Motion to amend claims |
| PTAB Reasonable Number of Substitute Claims (37 C.F.R. § 42.121(a)(3)) |
|
| PTAB Motion to Amend Claims |
| PTAB Amendment Responds to Ground of Unpatentability |
|
|
| The Board granted patent owner's contingent motion to amend because the patent owner proposed a reasonable number of substitute claims, which were responsive to a ground of unpatentability. "Patent Owner proposes eight substitute claims for eight of the original claims. We determine that the number of proposed substitute claims is reasonable . . . . Patent Owner adds limitations to every original claim being replaced and explains how the proposed substitute claims are patent-eligible under 35 U.S.C. § 101, the sole ground of unpatentability involved in the trial. We determine that the amended language in the proposed substitute claims is responsive to the ground of unpatentability involved in this trial[.]" |
|
| PTAB Motion to amend claims |
| PTAB Scope of Proposed Substitute Claims |
|
|
| The Board granted patent owner's contingent motion to amend and rejected petitioner's argument that the proposed substitute claims enlarged the scope of the claims. "Petitioner argues that Patent Owner fails to explain how the cited disclosures 'provide any support for searching for flights/displaying flight results based in whole or in part on points or concealing the currency costs of flights from the user.' Patent Owner responds that 'the '309 application repeatedly states that the invention facilitates making purchases on the basis of points from a participant's perspective,' and Figure 4 depicts one implementation of that invention in the context of purchasing an airline ticket. We agree with Patent Owner." |
|
| PTO 2019 Revised Patent Subject Matter Eligibility Guidance |
| Addition of Limitation to Judicial Exception |
|
|
| The Board granted patent owner's contingent motion to amend and rejected petitioner's argument that the proposed substitute claims were directed to an inventive concept. "[T]he record before us contains unrebutted evidence that the use of a [Graphical User Interface 'GUI'] and [Application Programming Interface 'API'] positioned between a participant and vendor system that convert vendor-related information from the vendor system into a format of the GUI so that the information can be presented to the participant was unconventional prior to the [at-issue] patent. This is different from original claim 1, for example, which merely recites the GUI and API 'receiving' and 'providing' information. . . . Petitioner has not shown sufficiently that the overall arrangement recited in claim 16 involving conversion of vendor-related information between a particular vendor format and a GUI format was well-understood, routine, and conventional, and Patent Owner provides persuasive evidence to the contrary." |
|
|
| Judge: Justin T. Arbes |
| PTAB Final Written Decision -- Patentability of Challenged Claims |
affirmed |
|
| PTAB Jurisdiction/Eligibility (CBM) |
| PTAB Technological Inventions (AIA § 18(d)(1)) |
|
|
| In a final written decision, the Board found claims of a patent directed to program participation and reward points accumulation unpatentable under 35 U.S.C. § 101 after finding the claims were not directed to a technological invention. "Claim 1 . . . only recites that the [Graphical User Interface 'GUI'] 'receives' vendor-related information from the API and 'provides' that information to the participant, such that 'from the perspective of the participant, the participant uses the GUI to conduct a purchase transaction with the vendor system based in whole or in part on the points in the participant's point account.' The claim does not include any further limitations regarding how the vendor-related information would be organized or displayed when provided to the participant." |
|
| PTO 2019 Revised Patent Subject Matter Eligibility Guidance |
| Judicial Exceptions to Eligibility |
|
|
| In a final written decision, the Board found claims of a patent directed to program participation and reward points accumulation unpatentable under 35 U.S.C. § 101 because the claims were directed to a judicial exception. "[C]laim 1 recites facilitating, or brokering, a commercial transaction (i.e., the sale and purchase of goods and services) between a purchaser using a first form of value (i.e., a rewards program participant using points in whole or part) and a seller transacting in a second form of value (i.e., a vendor system which transacts purchases in currency). Doing so is a fundamental economic practice, which is one of the certain methods of organizing human activity identified in the Guidance, and, thus, an abstract idea." |
|
| PTAB Jurisdiction/Eligibility (CBM) |
| PTAB Technological Inventions (AIA § 18(d)(1)) |
|
|
| In a final written decision, the Board found claims of a patent directed to program participation and reward points accumulation unpatentable under 35 U.S.C. § 101 after finding the claims did not solve a technical problem using a technical solution. "According to Patent Owner, using a 'hidden program account' solved the problem of integrating a 'web-based vendor system with a reward program' to allow a participant to make purchases using points 'while hiding the nature of the transaction from the participant.' Patent Owner, however, does not explain in sufficient detail what the alleged 'technical obstacles' were or how those obstacles related to communications over the 'Internet'/'web' or 'web-based' systems." |
|
| PTO 2019 Revised Patent Subject Matter Eligibility Guidance |
| Integration of Judicial Exception Into Practical Application |
|
|
| In a final written decision, the Board found claims of a patent directed to program participation and reward points accumulation unpatentable under 35 U.S.C. § 101 because the judicial exception was not integrated into a practical application. "The five 'wherein' clauses of claim 1 recite the [Graphical User Interface 'GUI'] and [Application Programming Interface 'API'] 'receiving' and 'providing' information, and it is those communications that facilitate the transaction. No further functionality is attributed to the GUI and API. Thus, the GUI and API are each merely invoked as a tool to perform the abstract idea. . . . Petitioner has proven that claim 1 is directed to facilitating, or brokering, a commercial transaction (i.e., the sale and purchase of goods and services) between a purchaser using a first form of value (i.e., a rewards program participant using points in whole or part) and a seller transacting in a second form of value (i.e., a vendor system which transacts purchases in currency), which is a fundamental economic practice, one of the certain methods of organizing human activity identified in the Guidance." |
|
| PTO 2019 Revised Patent Subject Matter Eligibility Guidance |
| Addition of Limitation to Judicial Exception |
|
|
| In a final written decision, the Board found claims of a patent directed to program participation and reward points accumulation unpatentable under 35 U.S.C. § 101 because the claims did not recite additional elements that elevated the claim to patent eligibility. "[T]he problem addressed by the [at-issue] patent was the need for a human intermediary to facilitate certain reward purchases, which was a business, rather than technical, problem. As to the recited [Graphical User Interface 'GUI'] and [Application Programming Interface 'API'], the only functions attributed to the components are 'receiving' and 'providing' information and the participant 'using' the GUI to conduct the transaction, which are the abstract idea itself, rather than additional elements that could transform the claim into a patent-eligible application of an abstract idea." |
|
|
|
|
|
| Denied Petitions for Writ of Certiorari |
|
| Granted Petitions for Writ of Certiorari |
|
| LOGIN TO DOCKET NAVIGATOR |
|
Delivered to Test User under an individual license and subject to restrictions on dissemination. Please review Terms of Use before forwarding. |
|
|
|
Copyright © 2021 by Hopkins Bruce Publishers, Corp. No claim to copyright as to original U.S. government work. Receipt and use of the Docket Navigator Patent Appeals Report™ is subject to your agreement to the Terms of Use. Patents.
|
|
|
