Do You Think Like a Federal Judge?

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
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
DDR Holdings, LLC v., 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
• 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,
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?
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
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”
• 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.
Post Nautilus
Review: Nautilus Supreme Court
• 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.”
“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”
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
• 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
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”
DDR Holdings, LLC v., L.P., 954 F.
Supp. 2d 509 (E.D. Tex. 2013)
• DEFINITE (according to Judge Gilstrap, affirmed by Judge
• “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
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
The beverage provides both rapid energy utilization and rapid
energy storage
Harcol Research, LLC v. Europea Sports Products
Inc., 2014 Markman 5603653, 2014 WL 5603652
(E.D. Tex. 2014)
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
• 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
• 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”
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
• Spec example of “one approach” is not enough, particularly
where spec also notes that modifications can be made to the
one approach
• 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
Noteworthy Trademark Cases
Case 1 –
Eat In Peace
Is New York Pizzeria’s Plating Theory
What About Other Plates?
Case 2 – Is Likelihood of Confusion
An Issue of Fact or Law?
Circuits Confused on Confusion
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 Softee
Question: Is there likelihood of consumer
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
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
• 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
[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

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