Do You Think Like a Federal Judge? Progeny from Alice, Nautilus, and other recent cases Group 4 January 15, 2015 How the Contestants Should Play the Game • We present the law. . . • We present the fact patterns. . . • You the tell us how the court should rule! • The table with the most correct answers wins . . . . . . (or ties) Good Luck! Section 101 Patentability Decisions Post Alice Review: Alice Supreme Court decision; Ultramercial Federal Circuit decision • • • • • • First step; whether an invention is directed to a patent-ineligible abstract idea Second step; if the invention is directed to an abstract idea, does the invention involve an “inventive concept” sufficient to transform the claimed abstract idea into a patent eligible application of that idea (“substantially more”) Recitation of a generic computer cannot transform a patentineligible abstract idea into a patent-eligible invention A claim embodies an abstract concept if a majority of the limitations are so directed, even if others are not and add a degree of particularity Novel and non-routine components do not, by themselves, render a claim sufficiently concrete. What constitutes “routine” or “conventional” practice under § 101 is a distinct inquiry from the novelty and nonobviousness questions of §§ 102 and 103 No test for determining whether an invention is an “abstract idea” Case 1 – Addressing Internet-centric Challenges • The patent-in-suit is directed to a system ensuring that when a visitor to a website clicks on a third-party hyperlink, such as an ad, the system generates and directs the visitor to a composite web page that displays product information from the third-party merchant, but retains the “look and feel” of the host website • The claims address the challenge of retaining control over the attention of the customer in the context of the Internet • VALID or INVALID? DDR Holdings, LLC v. Hotels.com, L.P., -- F.3d ----, 2014 WL 6845152 (Fed. Cir. Dec. 5, 2014) • VALID (2-1) • Two-step analysis • First, it was not clear that the claims are directed to a patentineligible abstract idea - they do not recite a mathematical algorithm or a fundamental economic or longstanding commercial practice. They do not broadly and generically claim ‘use of the Internet’ to perform an abstract business practice. • Second, the claims do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. It is not merely a routine or conventional use of the internet. Case 2 – Processing Information from Hard Copy • A method of processing information from hard copy documents. The method involved: 1. extracting data from hard copy documents using an automated digitizing unit such as a scanner, 2. recognizing specific information from the extracted data, and 3. storing that information in a memory • The lower court held claims invalid without undertaking discovery, expert reports or waiting for claim construction • What did the Federal Circuit do? • VALID or INVALID? Content Extraction v. Wells Fargo et al, (Fed. Cir. Nos. 2013-1588, -1589, 2014-1112, -1687; decided Dec. 23, 2014) • INVALID; Two-step analysis • First, the claims were directed to the abstract idea of collecting data, recognizing a subset of the data and storing the subset in memory. “[H]umans have always performed these functions.” – Plaintiff argued that “human minds are unable to recognize the streams of bits output by a scanner.” – The Court was not persuaded, noting that the claims rejected as abstract by the Supreme Court in Alice required a computer that processed streams of bits. • Second, “[t]here is no ‘inventive concept’ in … use of a generic scanner and computer to perform well-understood, routine and conventional activities commonly used in industry.” • The Court conceded that determination of patent eligibility “requires a full understanding of the basic character of the claimed subject matter” but found that claim construction was not an inviolable prerequisite to validity determination. The lower court applied a summary judgment standard. Case 3 – Detecting Alleles and Haplotypes • A method for detecting alleles and haplotypes by – amplifying genomic DNA with a primer pair that spans a non-coding region sequence, – the primer pair defines a DNA sequence which is in genetic linkage with the genetic region to be detected, and – the primer contains a sufficient number of non-coding region sequence nucleotides; – the steps above produce an amplified DNA sequence which is characteristic of the allele; – analyzing the amplified DNA sequence to detect the allele • District court decided on the pleadings • VALID or INVALID? Genetic Technologies Ltd v Bristol Myers-Squibb Company and Merial LLC, 2014 U.S. Dist. Lexis 154443 (D. Del. October 30, 2014) • INVALID; natural phenomenon • Is it appropriate to dismiss a claim for lack of patent eligibility at the pleading stage? • Yes; if the court is convinced that “the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility.” (quoting Ultramercial II) • Two-step analysis • First, the claim was directed to a natural phenomenon. The correlations between non-coding regions of DNA and coding regions of DNA, specifically alleles, are natural phenomenon. These genetic correlations preexist in the body apart from any human action. • Second, the additional steps in the claim consisted only of “routine and conventional techniques” Takeaways • A computer-based business method claim is more likely to survive a Section 101 challenge if the claim is “rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” • An early determination of invalidity is appropriate when the plaintiff offers no claim construction that would, if adopted, make the claim patent-eligible. • Pre-claim construction determinations of patent ineligibility are not limited to business method and software patents. All claims that generally rely for their “inventive concept” on technologies or techniques that were obviously or admittedly well understood at the time of application for a patent are vulnerable to pre-claim construction, pre-discovery attack. Indefiniteness Post Nautilus Review: Nautilus Supreme Court decision • A patent is indefinite “if its claims, read in light of the specification … and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention” • Not enough that a court could “ascribe some meaning” • Some uncertainty is tolerable given the inherent limitations of language, but the statute “mandates clarity.” Case 1 – IN AN UNOBTRUSIVE MANNER • “enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device … from a primary interaction with the display device or apparatus, an image or images generated from a set of content data” • • No expert testimony directly on point Wallpaper embodiment in specification shows that “unobtrusive manner” is defined by a spatial relationship A screen saver embodiment describes a further aspect of the invention displaying content only after a period of idle time PTO examiner thought “unobtrusive manner” was linked to wallpaper embodiment only, but PTAB (in IPR proceeding) said it includes the screensaver embodiment Summary of the Invention explains “e.g., the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus” • • • • DEFINITE or INDEFINITE? Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) • INDEFINITE (according to both Chief Judge Pechman, and affirmed by the Judge Chen) • “unobtrusive manner” is highly subjective on its face, with no boundaries in the claim language itself, so must look to the specification for guidance • “unobtrusive manner” has an uncertain relationship to the embodiments • The “e.g.” preceding the single example from the Summary of Invention would not be understood by a person of skill in the art to be the exclusive definition Case 2 – VISUALLY PERCEPTIBLE ELEMENTS • Patent describes dynamically constructing web pages with data from different host websites and merchants: – “on a computer store containing data, for each of a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of web pages…” • • • • Parties agree it means “look and feel elements that can be seen” Defendants say “look and feel” is purely subjective Spec says look and feel elements “include logos, colors, page layout, navigation system,s frames, ‘mouse-over’ effects or other navigation elements that are consistent through some or all of a Host’s website.” Patentee’s expert says that a skilled artisan would interpret “other elements” as headers, footers, fonts, and images Defendant’s own prior art used the term “look and feel” • DEFINITE or INDEFINITE? • DDR Holdings, LLC v. Hotels.com, L.P., 954 F. Supp. 2d 509 (E.D. Tex. 2013) • DEFINITE (according to Judge Gilstrap, affirmed by Judge Chen) • “visually perceptible elements” is not facially subjective • “look and feel” has an established meaning in the art • The patent’s use of the term was consistent with the established meaning in the art Case 3 – LARGE AND RAPID ENERGY SUPPLY • • • • • • Claim 1: An energy beverage “providing an energy source in situations with demand of large and rapid energy supply to a healthy mammal” Claim 7: “A method of large and rapid energy supply to a healthy mammal, comprising providing” a beverage… Specification describes “individuals undergoing significant physical exertion whether for athletic or other purposes” and “leading to improved exercise endurance”. Gives examples of 6km run, 50-60 sit ups, 30-40 push ups The beverage “may” be used before, during or after physical activity The beverage provides both rapid energy utilization and rapid energy storage DEFINITE or INDEFINITE? Harcol Research, LLC v. Europea Sports Products Inc., 2014 Markman 5603653, 2014 WL 5603652 (E.D. Tex. 2014) • BOTH DEFINITE AND INDEFINITE (Magistrate Judge Payne) • Claim 1 – “in situations with demand of large and rapid energy supply” is definite – Specification frequently describes situations during which the drink was to be used – for significant physical exertion • Claim 7 – “method of large and rapid energy supply” is indefinite – The patent provides no boundaries on when or how the beverage delivers the energy – Unclear if method is used before, during, or after exercise, or for storage or immediate use Case 4 – INCREASES AND OPTIMIZES DEMAND SERVED • Patent describes converting a ring network to a mesh network, “according to a strategy that increases and optimizes demand served by the telecommunications netowrk, wherein the strategy takes into account the cost of conversion” • Parties agree that optimization is the process of finding the best possible solution to a problem given certain constraints” • Specification says the optimization strategy “may take into account the cost of conversion of the node” • Specification identifies some parameters as the “Objective Function” and says it is “one approach” • Spec says “a person skilled in the art could make immaterial modifications to the invention described … without departing from the essence of the claimed invention” • DEFINITE or INDEFINITE? In Re: TR Labs Patent Litigation, MDL No. 2396, Civ. Action No. 09-3883-PGSDEA (D. N.J.) • INDEFINITE (Judge Sheridan) • Referring to the results of goals of a strategy is not enough; must actually lay out parameters and strategy for optimization • Spec example of “one approach” is not enough, particularly where spec also notes that modifications can be made to the one approach Takeaways • Terms identifying general goals are most susceptible to indefiniteness challenge • Enumerate the spec support and show it is clearly linked to the claim language • If there is a clearly understood meaning in the art, find extrinsic support (including documents and expert testimony) Noteworthy Trademark Cases Case 1 – COME TO WHERE THE FLAVOR IS Eat In Peace Is New York Pizzeria’s Plating Theory “Half-Baked”? What About Other Plates? Case 2 – Is Likelihood of Confusion An Issue of Fact or Law? Circuits Confused on Confusion MISTER v. MASTER A former licensee and franchisee of “Mister Softee” was accused of trademark infringement for labeling and branding ice cream trucks “Master Softee” and “Soft King” and using a strikingly similar truck design. MISTER v. MASTER Mister Softee Question: Is there likelihood of consumer confusion? Mister Softee, Inc. et al., v. Dimitrios Tsirkos, 2014 WL 2535114 (S.D.N.Y. June 5, 2014) • Case Ruling. Mister Softee established the requisite consumer confusion for a preliminary injunction. Mister Softee’s combination of logos and trade dress elements are distinctive. Defendant’s truck motifs using the marks “Master Softee” and “Soft King” are strikingly similar to Mister Softee’s distinctive logos and trade dress. • The Master Softee trucks were painted white with blue trim on the bottom. The trucks display red script writing in identical, or nearly identical, locations on the truck. The trucks also display nearly identical anthropomorphized ice cream cone figures, with blue jacket[s] and red tie[s], located in the same position on the side of the truck. The slogans, “the Very Best” and “the World’s Best” are located in similar positions on the truck…. Mister Softee, Inc. et al., v. Dimitrios Tsirkos, 2014 WL 2535114 (S.D.N.Y. June 5, 2014) • Key Takeaway. Although none of defendant’s trucks used the same theme song as Mister Softee, the court found children and other customers passing-by would not be able to distinguish between the respective ice cream trucks. • The fact that the plaintiff offered evidence of actual confusion figures in the decision. This is not necessary, but it’s compelling evidence to present if you can get it – it was presumably gathered through survey evidence and no doubt influenced the Court in its ultimate finding of likelihood of confusion. And, Again . . . “A” Replaces “I” AKEA filed an application for a mark covering nutritional, herbal, vitamin and mineral supplements and related services. IKEA claimed likelihood of confusion with, and dilution of, its registered mark covering “food products, restaurant services and educational services in the field of personnel management and personal development.” Question: Can IKEA and AKEA coexist in connection with their respective goods and services without 1) a likelihood of consumer confusion or 2) dilution of the IKEA Mark? Inter IKEA Systems B.V. v. Akea, LLC., No. 91196527 (TTAB May 2, 2014) • Case Ruling: • Likelihood of confusion as IKEA’s “educational courses and seminars in the fields of … personal development” cover AKEA’s services of “providing advice and information in the field of career and business opportunities.” • Because the services are partially “legally identical” a presumption arises that “the services move in the same channels of trade and are sold to the same classes of customers.” • As to dilution, IKEA could not prove its mark was famous before AKEA’s filing date. Inter IKEA Systems B.V. v. Akea, LLC., No. 91196527 (TTAB May 2, 2014) • Analysis. The relevant factors to be weighed on the issue of likelihood of confusion: • [T]he fame of opposer’s mark, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, the similarity or dissimilarity and nature of the goods and services, the established likely-to-continue channels of trade and classes of consumers, and the conditions under which and buyers to whom sales are made (i.e., “impulse” vs. careful, sophisticated purchasing). Id. • The term “dilution by blurring” is defined by the Trademark Act as “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Section 43(c) of the Trademark Act, 15 U.S.C. §1125(c)(2)(B). Inter IKEA Systems B.V. v. Akea, LLC., No. 91196527 (TTAB May 2, 2014) • Key Takeaway. Where goods and services of the trademark holder with priority encompass the goods and services identified by a junior applicant, a presumption arises that the parties’ channels of trade and classes of purchasers necessarily overlap. • On the flip side, the board may find that an opposer’s fame and the similarity of the sight, sound and meaning of the marks are outweighed where there is dissimilarity in the nature of the goods and services, no evidence as to overlap in the-channels of trade and classes of consumers, and a moderate “degree of care” exercised by applicant’s consumers.