IP Newsflash

The Federal Circuit recently affirmed a Rule 12(b)(6) dismissal of patent claims directed to a graphical user interface that seeks to enhance how search results are displayed to a user. The court agreed that the claims are patent ineligible under 35 U.S.C. § 101 because they do nothing more than identify, analyze and present certain data to a user, without disclosing any technical improvement as to how computer applications are used.

Judge Wu in the Central District of California recently granted dismissal of patent infringement claims directed to generating and sharing video content over a social network because they are patent ineligible under 35 U.S.C. § 101. After deciding claim construction, the court held that the claims fail the Alice two-step framework. Under Alice step one, the court found that the claims are directed to the abstract idea of prompting a user to record and share content because the claimed steps involve generic actions without reciting any specific improvement to the claimed user interface or other computer technology. Under Alice step two, the court found that the claims lack an inventive concept because they are results-oriented and they do not recite any specific means of accomplishing the claimed results other than using existing, off-the-shelf computer technology.

Senior Circuit Judge Bryson of the Federal Circuit, sitting by designation in the District of Delaware, recently granted-in-part and denied-in-part a Rule 12(c) motion for judgment based on patent eligibility under 35 U.S.C. § 101. The patents are directed to restricting access to computer files. The court found certain claims eligible because they are directed to a problem arising in the realm of computers and they identify a specific improvement in computer capabilities. The court found other claims ineligible because they broadly recite generic steps and results and they were not limited to the technical advancement disclosed in the specification.

Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (Feb. 24, 2023).

During a Markman hearing, a judge in the Eastern District of North Carolina denied a plaintiff’s request that the defendant be judicially estopped from arguing claim constructions that were different from positions the defendant took in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).

The Federal Circuit reversed a summary judgment order of infringement after interpreting an asserted claim of U.S. Patent No. 9,736,689 (the “ʼ689 Patent”) more narrowly than the district court. In short, the district court erred when, and despite claim language to the contrary, it treated certain claim elements as “optional” in an effort to cover all disclosed embodiments. Because the patentee did not offer evidence of infringement under the correct construction, the Federal Circuit ordered the district court to enter summary judgment of noninfringement.

A federal judge in the Eastern District of Virginia granted defendant Amazon.com, Inc.’s motion for attorneys’ fees under 35 U.S.C. § 285, ordering plaintiff Innovation Sciences, LLC to pay over $700,000 in fees that accrued after the court’s Markman order.

On February 14, 2017, Judge Chhabria of the Northern District of California granted, in part, Apple’s motion to exclude the expert report of Unwired Planet’s survey expert, Dr. Allenby. Dr. Allenby was hired to conduct a consumer survey to assess the value of the claimed method for “provisioning” a mobile communication device. This process involves the mobile communication device connecting with a server and being authenticated to allow the user access to certain services. According to the decision, Dr. Allenby’s report, however, relied on Unwired Planet’s proposed definition of “provisioning,” and not the court’s construction. The expert had defined the term “provisioning” to mean something akin to “providing;” however, the court’s construction was far narrower.