Tag Archives | software patents

Claims to Intermediated Financial Settlement Not Patent Eligible; Software Patents Still Alive

Alive_v_CLSBankThe U.S. Supreme Court issued its decision in Alice v. CLS Bank (June 19, 2014) touching on the patent-eligibility of software implemented inventions. The decision continues to allow patent protection for software innovation and technological solutions implemented with software. Therefore all software patents are not dead in the wake of this opinion, in fact, most survive under the USPTO’s interpretation.  However, this decision limits or eliminates, depending on the circumstances, the ability of one to obtain a patent covering a fundamental economic practice long prevalent in commerce that is merely implemented in a generic computer using generic functions without more.

The patents at issue in Alice were directed to using a computer to mitigate financial settlement risk, i.e., the risk that only one party to an agreed-upon financial exchange will satisfy …

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Risks of Waiting: Independent Invention & Google PageRank

InThePlexQuestions often arise about the risks of waiting. Waiting to get started, waiting to file a patent application, waiting to launch a product or service, etc. The risk is that someone else is independently working on the same problem or the same idea and beat you to the market or the patent office or both. What’s the chance of someone independently inventing in your space?  It is impossible to know for a particular circumstance, but we do know that independent invention around the same time happens. According to In The Plex: How Google Thinks, Works, and Shapes Our Lives, Larry Page of Google was not the only person in 1996 to recognized that the link structure of the internet was the basis for a powerful way to find information on the …

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

Ultramercial v. Hulu and Wildtangent, Dkt No. 2010-1544 (Fed Cir. June 21, 2013)Fig1_USPAT7346545.

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). …

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

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…

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Real Estate Software Patent: User Action Steps Prevent Direct Infringement

US5032989Fig3Move, Inc. v. Real Estate Alliance Ltd., Dkt. No. 2012-1342 (Fed. Cir. March 4, 2013)

Move sought declaratory judgement of non-infringement of two of Real’s patents, U.S. 5,032,989 and U.S. 4,870,576. Real counterclaimed  that Move’s “Search by Map” and “Search by Zip Code” website functions infringed the patents. The district court issued summary judgement of non-infringement.

Claim 1 of the ‘989 patent was at issue on appeal and was directed to a method for locating real estate properties using a zoom enabled map on a computer. Claim 1 provided:

1. A method using a computer for locating available real estate properties comprising the steps of:

(a) creating a database of the available real estate properties;
(b) displaying a map of a desired geographic area;
(c) selecting a first area having

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

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.

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

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 …

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

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

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

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 …

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Method of Monetizing Copyrighted Content on Internet is Patent-Eligible

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.

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 …

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