Tag Archives | patentable subject matter

Computer Based Method of Determining Optimal Product Price Not Patent Eligible

By Eric Waltmire on June 19, 2015 in Patent

OIP Technologies sued Amazon alleging that Amazon infringed OIP’s patent 7,970,713 directed to a computer based method of automatically determining the optimal price for a product. The court of appeals determined that the claimed method was not patent eligible as an abstract idea under 35 USC 101 in OIP Technologies v. Amazon, No. 2012-1696 (Fed. Cir. 2015).

The court summarized the limitations of claims 1 of the ‘713 patent as: “(1) testing a plurality of prices; (2) gathering statistics generated about how customers reacted to the offers testing the prices; (3) using that data to estimate outcomes (i.e. mapping the demand curve over time for a given product); and (4) automatically selecting and offering a new price based on the estimated outcome.”

Following the two step test from Alice …

Non-invasive Prenatal Genetic Testing Method Not Patent Eligible

By Eric Waltmire on June 18, 2015 in Patent

NonInvasivePrenatalDiagnosisPatent Today test results from a pregnant mother’s blood can detect characteristics of the fetus, such as genetic defects or gender. The method of detecting such characteristics was found non patent eligible by the Court of Appeals in Ariosa Diagnostics v. Sequenom, Inc., Nos. 2014-1139, 2014-1144 (Fed. Cir. 2015).

In 1996, Drs. Dennis Lo and James Wainscoat discovered cell-free fetal DNA (“cffDNA”) in maternal plasma and serum. This plasma and serum was previously discarded as waste by researchers. cffDNA is non-cellular fetal DNA that circulates freely in the blood stream of a pregnant woman. Drs. Lo and Wainscoat used known laboratory techniques to detect the cffDNA and determine fetal characteristics, such as genetic defects or gender. U.S. Patent 6,258,540, titled “Non-invasive prenatal diagnosis” was granted on this method. But …

Method of Monetizing Copyrighted Content on the Internet Again Found Patent-eligible

By Eric Waltmire on July 15, 2013 in Feature, Software Patents

Ultramercial v. Hulu and Wildtangent, Dkt No. 2010-1544 (Fed Cir. June 21, 2013).

Ultramercial sued Hulu, YouTube, and Wildtangent Inc. alleging each infringed U.S. Patent 7,346,545. Hulu and YouTube were dismissed from the case. The trial court granted WildTangent’s motion to dismiss WildTangent from the case on the basis that the ’545 patent did not claim patent-eligible subject matter.

In the first round at the Federal Circuit, the court reversed finding the claimed method of monetizing copyrighted content on the Internet was a patent-eligible process. Then WildTangent appealed to U.S. Supreme Court and the Court vacated the Federal Circuit’s decision discussed below and remanded the case to the Federal Circuit to consider in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U. S. ___ (2012). …

CLS Bank v. Alice on Software Patentability: Can System Claims With Integral Tangible Components be Abstract?

By Eric Waltmire on June 17, 2013 in Feature, Software Patents

CLS Bank v. Alice Corp., Dkt. No. 2011-1301 (Fed. Cir. May 10, 2013) (en banc).

Previously I noted that the USPTO told its Patent Examining Corps that the Federal Circuit’s decision in CLS Bank v. Alice, Dkt. No. 2011-1301 (Fed. Cir. May 10, 2013) resulted in “no change in examination procedure for evaluating subject matter eligibility.” In this post I will summarize the various opinions in CLS Bank.

The district court held that certain claims of Alice’s U.S. Patents 5,970,479 (the “’479 patent”), 6,912,510 (the “’510 patent”), 7,149,720 (the “’720 patent”), and 7,725,375 (the “’375 patent”) are invalid under 35 U.S.C. § 101 as being directed to patent in-eligible subject matter.

Result without Agreement on Reasons. On May 10, 2013 the Federal Circuit issued its en banc opinion in…

Federal Circuit to Consider When A Computer-Implemented Invention Is Patentable

By Eric Waltmire on October 9, 2012 in Feature, Software Patents

CLS Bank International v. Alice Corporation, No. 2011-1301 (Fed. Cir. 2012) (Order granting en banc rehearing).

The Federal Circuit Court of Appeals has granted an en banc rehearing in the CLS Bank case. As I previously discussed, the majority of a panel found CLS patents directed to using an intermediary in a financial transaction were valid and enforceable. The majority asserted that “when-after taking all the claim recitations into consideration-it is not manifestly evident that the claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101.” The dissent criticized the majority’s manifestly evident test.

The result in CLS Bank appeared to be in conflict with a prior panel’s decision in Bankcorp v. …

Method of Managing Stable Value Protected Life Insurance Policy Found Not Patentable

By Eric Waltmire on July 28, 2012 in Feature, Software Patent News

Bankcorp v. Sun Life, No. 2011-1467 (Fed. Cir. 2012) [PDF].

Bankcorp sued Sun alleging infringement of U.S. Patent 5,926,792 and 7,249,037. The patents are directed to methods and systems for administering and tracking the value of life insurance policies. The district court found both patents invalid as claiming an unpatentable abstract idea under section 101. The Federal Circuit agreed.

Background: Life Insurance Policies. The claims are directed to dealing with a particular type of life insurance plan where the policy owner pays additional premiums beyond that required to fund the death benefit and specifies the type of investment assets in which the additional premiums are invested. This arrangement provide certain tax-advantages. However, the value of this type of policy will fluctuate with the market value of the …

New Manifestly Evident Test Maintains Broad View of Patent Eligible Subject Matter

By Eric Waltmire on July 21, 2012 in Feature, Software Patents

CLS Bank International v. Alice Corporation, Dkt No. 2011-1301 (Fed Cir. July 9, 2012) [11-1301 Opinion].

CLS sued Alice for declaratory judgement that U.S. Patent No. 5,970,479, 6,912,510, 7,149,720, and 7,725,375 owned by Alice were invalid, unenforceable, or otherwise not infringed. The district court held that each of Alice’ s patents were invalid under section 101 for failure to claim patent eligible subject matter. The Federal Circuit reversed maintaining a broad view of patentable subject matter.

Representative Claim 33 of the ‘497 patent provides: A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:

(a) creating a shadow

…

MySpace and Craigslist Invalidate Patents on Database with User Creatable and Categorizable Entries

By Eric Waltmire on March 4, 2012 in Feature, Software Patents

MySpace, Inc. v. Graphon Corp., Dkt. No. 2011-1149 (Fed. Cir. March 2, 2012).

MySpace and Craigslist sued Graphon for declaratory judgement of non-infringement of U.S. Patent Nos. 6,324,538, 6,850,940, 7,028,034, and 7,269,591 (patents in suit). Graphon counterclaimed for patent infringement. The district court found the claims at issue in the patents in suit were invalid as either anticipated or obvious based upon a system called the Mother of all Bulletin Boards (MBB) and the Federal Circuit agreed.

User Manipulable Database Entries. The patents in suit were directed to a method and apparatus that allowed a user to create, modify, and search for a database record over a computer network. The inventors of the patents in suit claimed the prior systems, like Yahoo! directory, provided that the search engine operator …

Method of Monetizing Copyrighted Content on Internet is Patent-Eligible

By Eric Waltmire on December 31, 2011 in Feature, Software Patents

Ultramercial v. Hulu and Wildtangent, Dkt. No. 2010-1544 (Fed. Cir. Sept 15, 2011) [PDF].

Update: WildTangent appealed to U.S. Supreme Court and The Court vacated the Federal Circuit’s decision discussed below and remanded the case the Federal Circuit to consider in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U. S. ___ (2012).

Second Update: On remand from the Supreme Court, the Federal Circuit again found that the claimed method of monetizing copyrighted content on the Internet was a patent-eligible process.

Eric Waltmire on Twitter

When weak marks leave only stylistic elements protected, DIY Auto Edition, and an alternative approach… https://t.co/H4UPlYBgob 07:48:02 PM November 03, 2018 from Buffer
@tm4smallbiz Identification of services/goods is a place of frequent trouble in trademark applications. Sometimes c… https://t.co/N4PbDn2J4M 09:08:08 AM November 02, 2018 from Twitter for iPhone in reply to tm4smallbiz
Five years is most relevant time period for considering third party trademark use, Federal Circuit says #converse… https://t.co/NuLbCDWpln 07:48:00 PM October 31, 2018 from Buffer
Likely phonic similarity dooms registration attempt: MIKA blocks MYCAH #trademarks https://t.co/csQgq6UlbW 07:48:00 PM October 30, 2018 from Buffer
Card games using a standard deck face a tough road at the patent office https://t.co/xFYQaun4ZK 07:48:00 PM October 26, 2018 from Buffer

@waltmire