Archive for the ‘Claim Drafting’ Category

Patent Eligibility of Computer Readable Medium Claims

Friday, August 12th, 2011

The patent eligibility of some Beauregard claims (i.e., computer readable medium claims) came up in the recent oral argument of Cybersource v. Retail Decisions.  A decision from the Federal Circuit panel (Judges Bryson, Dyk, and Prost) is expected shortly. 

The panel inquired whether a claim to a computer readable medium should be patent ineligible if the method that the computer readable medium can cause to be performed is itself an ineligible abstract idea.  It is hard to imagine the tortured logic that would be required for a court to hold that a patent claim that claims an article of manufacture (i.e., a physical object) is a claim to an abstract idea; nevertheless, we’ll have to wait and see if the court addresses the issue when it issues its opinion in the case. 

You can listen to the discussion of the patent eligibility of Beauregard claims during the oral argument [here] and [here].

You can listen to the entire oral argument here:  [Listen].

More Hybrid Claims Invalidated

Wednesday, February 23rd, 2011

The Federal Circuit expanded on its hybrid claim jurisprudence with its recent decision in In re Katz et al. v. American Airlines, et al., 2009-1450 et al., (Fed. Cir. February 18, 2011).  The court ruled that three of Katz’s claims – claims 1, 2, and 83 – were indefinite hybrid claims.  Those claims are shown below, but the relevant portion is in the independent claims 1 and 68:

1. An interface control system for use with, (1) a communication facility including remote terminals for individual callers to make calls, wherein said remote terminals comprise a telephone capability including voice communication means and some of said remote terminals comprise digital input means for providing data, (2) a multiple port, multiple format processor for concurrently processing data from a substantial number of callers in any one of a plurality of formats, said communication facility automatically providing call data signals, as to indicate called data (DNIS), to select a specific format from said plurality of formats, and (3) a plurality of live operator attended terminals, for a plurality of formats, said interface control system comprising:

call data means for receiving call data signals from said communication facility for a calling remote terminal indicative of calling number identification signals automatically provided by said communication facility and call data signals to indicate called data (DNIS) to select a specific format from said plurality of formats;

interface means for providing automated voice messages relating to said specific format to certain of said individual callers, wherein said certain of said individual callers digitally enter data, including at least caller information data, through said digital input means;

means for directly forwarding, under control of said specific format, a call coupled to said interface means from any one of said remote terminals to one of said plurality of live operator attended terminals for inputting of caller identification data and caller information data when said remote terminals do not have capability to digitally provide data; 

qualification means coupled to said live operator attended terminals for controlling access by at least certain of said callers to at least a portion of said system, said qualification being based at least in part on caller identification data entered through said digital input means by at least certain of said callers having digital input means and at said live operator attended terminal when said remote terminals do not have capability to digitally provide data,

means for processing coupled to said live operator attended terminals for processing caller information data entered by an operator at said live operator attended terminal; and

means for storing coupled to said interface means and said processing means for storing certain select data from said caller information data entered by said operator and data entered digitally by said individual callers to update records on said individual callers.

2. An interface control system according to claim 1, wherein said call data signals automatically provided from said communication facility for a calling remote terminal indicative of calling number identification signals are used to access a positive file of data with respect to said individual callers stored in said means for storing.

68. An interface control system for use with, (1) a communication facility including remote terminals for individual callers to make calls, wherein said remote terminals comprise a telephonic instrument including voice communication means and some of said remote terminals comprise digital input means for providing data, and (2) a multiple port, multiple format processor for concurrently processing data from a substantial number of callers in any of a plurality of formats, said communication facility automatically providing call data signals, as to indicate called data (DNIS), to select a particular format from said plurality of formats, and (3) a plurality of live operator attended terminals, for a plurality of formats, said interface control system comprising:

call data means for receiving signal-represented call data from said remote terminals indicative of called number identification signals (DNIS) automatically provided by said telephonic communication facility;

interface means for providing automated voice messages relating to a specific format to certain of said individual callers, wherein said certain of said individual callers digitally enter data through said digital input means;

means for directly forwarding certain of said calls coupled to said interface means from any one of said remote terminals to one of said plurality of live operator attended terminals under control of said call data signals when necessary;

qualification means for controlling access by at least certain of said callers to at least a portion of said system,

means for processing coupled to said live operator attended terminals for processing caller information data entered by an operator at said live operator attended terminal; and

means for transferring certain of said calls from said live operators to said interface means to receive processed data via a voice generator.

83. An interface control system according to claim 68, wherein said qualification means controls access at least in part based upon said call data signals.

The Federal Circuit had the following to say about these hybrid claims:

The district court held that Statistical Interface claims 1, 2, and 83 of the ’893 patent are indefinite under IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), because they claim both an apparatus and a method of use. In IPXL, this court addressed a claim that covered a system with “an input means” and required a user to use the input means. This court held that the claim was indefinite because it was unclear “whether infringement . . . occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.” Id.

 

Claims 1, 2, and 83 of the ’893 patent cover a system with an “interface means for providing automated voice messages . . . to certain of said individual callers, wherein said certain of said individual callers digitally enter data.” The district court found “no meaningful distinction” between those claims and the claim at issue in IPXL.

 

Katz seeks to distinguish IPXL on the ground that the term “wherein” does not signify a method step but instead defines a functional capability. We disagree and uphold the district court’s ruling. Like the language used in the claim at issue in IPXL (“wherein . . . the user uses”), the language used in Katz’s claims (“wherein . . . callers digitally enter data” and “wherein . . . callers provide . . . data”) is directed to user actions, not system capabilities.

 

In the alternative, Katz contends that this court nar-rowed IPXL in the subsequent decision in Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1374-75 (Fed. Cir. 2008). That case dealt with a method claim that recited structural elements. The claim took the form of a “method of executing instructions in a pipelined processor comprising: [structural limitations of the pipelined processor]; the method further comprising: [method steps implemented in the pipelined processor].” Id. at 1374. The court in Microprocessor distinguished IPXL because the method claim in Microprocessor did not create any confusion as to when the claim was directly infringed; direct infringement occurred upon practicing the claimed method in a processor with the required structural limitations. Simply making or selling a proces-sor having that structure would not have infringed. Katz’s claims, however, create confusion as to when direct infringement occurs because they are directed both to systems and to actions performed by “individual callers.” Katz’s claims therefore fall squarely within the rationale of IPXL and are indefinite.

As a point of reference, the relevant portion of the IPXL v. Amazon decision discussing hybrid claims reads as follows:

The district court found that claim 25 is indefinite under 35 U.S.C. § 112, as it attempts to claim both a system and a method for using that system. Section 112, paragraph 2, requires that the claims of a patent “particularly point[] out and distinctly

claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 (2000). A claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1217 (Fed. Cir. 1991).

 

Whether a single claim covering both an apparatus and a method of use of that apparatus is invalid is an issue of first impression in this court. The Board of Patent Appeals and Interferences (”Board”) of the PTO, however, has made it clear that reciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2. Ex parte Lyell, 17 USPQ2d 1548 (BPAI 1990). As the Board noted in Lyell, “the statutory class of invention is important in determining patentability and infringement.” Id. at 1550 (citing In re Kuehl, 475 F.2d 658, 665 (CCPA 1973); Rubber Co. v. Goodyear, 76 U.S. 788, 796 (1870)). The Board correctly surmised that, as a result of the combination of two separate statutory classes of invention, a manufacturer or seller of the claimed apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus. Id. Thus, such a claim “is not sufficiently precise to provide competitors with an accurate determination of the ‘metes and bounds’ of protection involved” and is “ambiguous and properly rejected” under section 112, paragraph 2. Id. at 1550-51. This rule is well recognized and has been incorporated into the PTO’s Manual of Patent Examination Procedure. § 2173.05(p)(II) (1999) (”A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph.”); see also Robert C. Faber, Landis on Mechanics of Patent Claim Drafting § 60A (2001) (”Never mix claim types to different classes of invention in a single claim.”).

 

Claim 25 recites both the system of claim 2 and a method for using that system. The claim reads:

 

The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.

 

‘055 patent, col. 22, ll. 8-13 (emphasis added).

 

Thus, it is unclear whether infringement of claim 25 occurs when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction. Because claim 25 recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.

A total of four claims have now been invalidated by the Federal Circuit under the hybrid claim principle.

Divided Infringement Standard Still Evolving

Monday, May 3rd, 2010

In the oral argument of SiRF Technology v. ITC, 2009-1262 (Fed. Cir. April 12, 2010), there was an interesting discussion of the evolving standard for divided infringement.  Despite the court’s earlier decisions in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), one gets the impression that some of the judges feel that divided infringement is still an evolving doctrine and that there is some flexibility for de minimis involvement of an unrelated third party in a method claim.   Judge Dyk  remarks in the following sound bite: “[A]s a matter of patent policy, why shouldn’t somebody be able to draft a claim that includes as one of the steps ‘here’s all the available information’ and the last step is turning the machine on and that’s done by somebody else . . . . ”  He followed up by asking:  “Assuming that the earlier cases don’t answer this particular question, where is the appropriate place to draw the line?”  In addition, Judge Clevenger remarks that control of a third party analogous to principles of respondeat superior is one test for determining whether a third party was under the direction and control of a joint infringer, but it might not be the only test:   [Listen].

The panel was able to avoid the issue in this case because the panel determined that by virtue of its claim construction that there was no third party involvement — rather, SiRF was deemed to have performed all the limitations of the method.  The panel said:

Appellants contend that the Commission erred in concluding that SiRF directly infringes claims 1 and 2 of the ’651 patent7 and claims 1, 2, and 5 of the ’000 patent.8 The resolution of this issue depends in part on claim construction, which is an issue of law and is subject to de novo review. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).

 

Appellants argue that the claims are only infringed when actions are taken by SiRF’s customers and by the end users of the GPS devices; that SiRF accordingly can infringe the patents only when it is a joint infringer together with the customers and the end users; and that the requirements for joint infringement are not satisfied because SiRF does not control or direct the customers or end users. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008). The Commission found joint infringement. We do not reach the question of joint infringement because we do not read the relevant claims as requiring that any of the specified actions be taken by SiRF’s customers or by the end users of the GPS devices. This is not a situation where a method claim specifies performance of a step by a third party, or in which a third party actually performs some of the designated steps, and thus control or direction of the performance of that step by the accused infringer is required.9 Rather, the method claims at issue here are drawn to actions which can be performed and are performed by a single party. As they do not require that any of the steps be performed here by the customers or the end users, and the disputed steps are not in fact performed by third parties, we conclude that SiRF directly infringes.

 

First, at issue are the second, “communicati[ng]” step of claim 1 of the ’651 patent and the third, “transmitting” step of the ’000 patent. The second step of claim 1 of the ’651 patent provides for “communication [sic] the satellite ephemeris to a mobile GPS receiver at a second location.” ’651 patent col.10 ll.64-65. The third step of claim 1 of the ’000 patent provides for “transmitting the formatted data to a remote receiver.” ’000 patent col.6 l.47. Appellants argue that the performance of these steps necessarily involves actions by SiRF’s customers and by the end users of the GPS devices. They argue that in order for the data to be “communicat[ed]” or “transmit[ed]” to the GPS receiver, the data must travel first from SiRF’s server to the servers of its customers (the intermediate distributors and GPS product manufacturers). Then, SiRF’s customers must forward this data to the mobile GPS receivers, and the end users of the GPS devices must download the data from the customers’ servers.

 

Neither the claim language nor the patent specification requires that the communication/transmission be direct. In fact, indirect communication is specifically contemplated. See ’651 patent col.3 ll.42-48 (“The link may be a landline, or other direct communications path . . . . Alternatively, this link may have several parts . . . .”) (label numbers omitted). Therefore, we construe these limitations as encompassing “communicating, whether direct or indirect” and “transmitting, whether direct or indirect.”

 

With respect to infringement, under this construction it is clear that SiRF performs the step of communicating/transmitting the files to the end users’ devices because SiRF initiates the process of transmitting and communicating, and the files are actually transmitted to the end users. The entire “end-to-end service,” as SiRF’s marketing describes it, J.A. 16,206, was designed by SiRF so that the EE files would be transmitted to end-user GPS devices containing SiRF chips and software. Indeed, the EE files generated by SiRF only work in the end-user devices of those devices containing SiRF chips and SiRF software. Here, it is true that the “communicati[ng]” or “transmitting” can only occur if the customer forwards the data to the end user and the end user downloads the data. However, the actions of “forwarding” or “downloading” are not required by the claims, and, therefore, the fact that other parties perform these actions does not preclude a finding of direct infringement. By analogy, if a claim for a method of making a telephone call included the limitation: “placing a telephone call to a telephone at a second location,” the fact that the call must first be routed through a switched telephone network, and then eventually to the eventual recipient, would not prevent this claim limitation from being satisfied. Therefore, we conclude SiRF indirectly transmits or communicates the files to the GPS receivers and thereby meets these claim limitations.

 

Second, at issue are the third step of claim 1 of the ’651 patent, which requires “processing [the] satellite signals received at the mobile GPS receiver,” ’651 patent col.10 ll.66-67 and the fourth step of claim 1 of the ’000 patent, which requires “representing [the] formatted data in a second format supported by the remote receiver,” ’000 patent col.6 ll.48-49. With respect to the ’651 patent, the ALJ noted that the processing “occurs at the mobile GPS receiver.” Initial Determination, slip op. at 140-42. With respect to the ’000 patent, the ALJ noted that “[t]he parties are in agreement that [this limitation] is to be construed as ‘converting the data received in the first format to a second format supported by the remote receiver.’” Id. at 125-26. The parties agree that the “processing” and “representing” steps must take place in the mobile GPS device.

 

Appellants argue that SiRF does not perform this step because though the GPS receivers employ SiRF chips and InstantFix software, end users must actually initiate the process of downloading the EE data by connecting the device to the Internet and activating the InstantFix functionality. Then, the end user must either enable the “auto update” feature or enable the “manual update” feature in order for EE files to be transmitted to the receiver. Appellants argue that this action by an end user negates performance by SiRF of the “processing” or “representing” claim limitations.

 

Appellants’ argument misreads the claim limitations. There exists no method step in any of the disputed claims that requires “enabling” or “activating” the devices that perform these claim limitations. Nor is there a step which requires “downloading” the data into the GPS receiver. Appellants, in essence, ask us to read such limitations into the claims. We decline to do so. See, e.g., Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340-41 (Fed. Cir. 1999). We therefore construe the “processing” and “representing” steps of the asserted claims as taking place in a GPS receiver that is enabled and ready to process data.

 

When properly construed, it is clear that SiRF infringes as its devices and software dictate the performance of the “processing” and “representing” steps. Once the technology is enabled, SiRF’s SiRFstarIII chip and software, designed and built by SiRF, automatically perform the disputed steps of the claims at issue because the SiRFstarIII chips are programmed by SiRF to use the InstantFix ephemeris data automatically if it has been transmitted to the remote device. Neither SiRF’s customers (the equipment manufacturers and software developers) nor the end users of the GPS receivers can modify the use of the EE files by SiRF’s software or the functionality of the SiRFstarIII chip. Once the GPS receiver is enabled and ready to process the data, only SiRF’s actions are involved in “processing” or “representing” the data.

 

SiRF performs all of the claim limitations of claim 1 of the ’651 patent and claim 1 of the ’000 patent, and therefore directly infringes the asserted claims.

7 Claim 1 of the ’651 patent reads as follows:

1. A method of receiving global positioning system (GPS) satellite signals comprising:

receiving satellite ephemeris at a first location;

communication [sic] the satellite ephemeris to a mobile GPS receiver at a second location; and

processing satellite signals received at the mobile GPS receiver using the ephemeris to reduce code and frequency uncertainty in the mobile GPS receiver to improve acquisition sensitivity of the mobile GPS receiver.

 

8 Claim 1 of the ’000 patent reads as follows:

1. A method of creating and distributing compact satellite orbit models comprising:

receiving satellite signals from at least one satellite and at least one receiving station;

extracting at least a portion of the satellite tracking data from said satellite signal, representing said data in a first format;

transmitting the formatted data to a remote receiver; and

at the remote receiver, representing said formatted data in a second format supported by the remote receiver.

 

9 For example, in Muniauction, the method at issue required actions to be taken by both a “bidder” and an “issuer.” See 532 F.3d at 1322. In BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed. Cir. 2007), the parties “agree[d] [that] Paymentech [the accused infringer] does not perform every step of the method at issue in this case.”  

 

 

You can listen to the entire oral argument here: [Listen].

You can read the decision here: [Read].

Judge Plager troubled with Federal Circuit’s “Indefiniteness” law

Wednesday, March 31st, 2010

On the heels of the Ariad v. Eli Lilly en banc case which dealt with the issue of “written description” under 35 USC §112, the Federal Circuit has now issued several decisions dealing with “indefiniteness” under 35 USC §112.  One of those cases is Enzo v. Applera, 2009-1381 (Fed. Cir. Mar. 26, 2010).

In the oral argument of Enzo, Judge Plager expressed some frustration with the Federal Circuit’s current law on the issue of indefiniteness: [Listen].

You can read the court’s opinion here: [Read].

You can listen to the entire oral argument here:  [Listen].

Judge Plager was the author of the “nose of wax” line from Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553 (Fed. Cir. 1995) in which he stated:

Claim drafting is itself an art, an art on which the entire patent system today depends.  The language through which claims are expressed is not a nose of wax to be pushed and shoved into a form that pleases and that produces a particular result a court may desire.  The public generally, and in particular, the patentees’ competitors, are entitled to clear and specific notice of what the inventor claims as his invention.  That is not an easy assignment for those who draft claims, but the law requires it, and our duty demands that we enforce the requirement.  There is no room in patent claim interpretation for the equivalent of the cy pres doctrine; that would leave the claiming process too indefinite to serve the purposes which lie at the heart of the patent system.

Judge Rader’s District Court Opinion from the E.D. Texas

Saturday, March 20th, 2010

Judge Rader has been sitting by designation on several cases in the Eastern District of Texas.  The 271 Blog noted that Judge Rader’s written opinion in one of those cases, PA Advisors LLC v. Google, Inc. et al., Case No. 2:07-cv-480 (E.D. Tex., March 11, 2010, order), has now been published.

In the opinion, Judge Rader granted summary judgment of non-infringement in view of BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) due to the fact that multiple independent actors were required to act in order to fulfill all the elements of a method claim (i.e., divided infringement).  Claim 1 at issue in this regard recited:

1. A data processing method for enabling a user utilizing a local computer system having a local data storage system to locate desired data from a plurality of data items stored in a remote data storage system in a remote computer system, the remote computer system being linked to the local computer system by a telecommunication link, the method comprising the steps of:

(a) extracting, by one of the local computer system and the remote computer system, a user profile from user linguistic data previously provided by the user, said user data profile being representative of a first linguistic pattern of the said user linguistic data;

(b) constructing, by the remote computer system, a plurality of data item profiles, each plural data item profile corresponding to a different one of each plural data item stored in the remote data storage system, each of said plural data item profiles being representative of a second linguistic pattern of a corresponding plural data item, each said plural second linguistic pattern being substantially unique to each corresponding plural data item;

(c) providing, by the user to the local computer system, search request data representative of the user’s expressed desire to locate data substantially pertaining to said search request data;

(d) extracting, by one of the local computer system and the remote computer system, a search request profile from said search request data, said search request profile being representative of a third linguistic pattern of said search request data;

(e) determining, by one of the local computer system and the remote computer system, a first similarity factor representative of a first correlation between said search request profile and said user profile by comparing said search request profile to said user profile;

(f) determining, by one of the local computer system and the remote computer system, a plurality of second similarity factors, each said plural second similarity factor being representative of a second correlation between said search request profile and a different one of said plural data item profiles, by comparing said search request profile to each of said plural data item profiles;

(g) calculating, by one of the local computer system and the remote computer system, a final match factor for each of said plural data item profiles, by adding said first similarity factor to at least one of said plural second similarity factors in accordance with at least one intersection between said first correlation and said second correlation;

(h) selecting, by one of the local computer system and the remote computer system, one of said plural data items corresponding to a plural data item profile having a highest final match factor; and

(i) retrieving, by one of the local computer system and the remote computer system from the remote data storage system, said selected data item for display to the user, such that the user is presented with a data item having linguistic characteristics that substantially correspond to linguistic characteristics of the linguistic data generated by the user, whereby the linguistic characteristics of the data item correspond to the user’s social, cultural, educational, economic background as well as to the user’s psychological profile.

You can read Judge Rader’s written opinion for the district court here: [Link].

Patent Eligibility of Computer Readable Medium Claims

Saturday, January 30th, 2010

The All Things Pros blog and IP Spotlight blog have noted that David Kappos  issued a memo on January 26, 2010 in regard to the patent eligibility of computer readable medium claims (aka “Beauregard” claims): [Link][PDF].