Maier & Maier Mounts Yet Another Successful Defense at the PTAB

Maier & Maier

In their latest triumph at the PTAB, Maier & Maier PLLC has won a major victory for GREE, Inc. by securing a non-institution decision, overcoming 3 challenges to their social gaming patent asserted by Supercell Oy in PGR2018-0037.

The challenged patent (9,662,573) covers a method for controlling a server device, a server device, a computer-readable recording medium and a game system. Supercell challenged the patent on three grounds: §101, §112(a), and §112(b).

The PTAB denied institution of the challenge as to all of the claims.  The PTAB explained their decision on the §101 challenge, stating “we are unpersuaded by Petitioner’s argument that providing these sequential incentives, as claimed, was conventional and known in the prior art.”  The analysis goes on to emphasize that Supercell failed to provide evidence, such as expert testimony or contemporaneous prior art, and also failed to provide relevant case law or persuasive argument to support its contention. Meanwhile for the §112 challenges, Maier & Maier successfully demonstrated that the patent was “cast in clear—as opposed to ambiguous, vague, indefinite—terms” and that Supercell “offered no credible evidence to support its assertion”.

Since Maier & Maier showed that none of the asserted grounds for unpatentability demonstrated a reasonable likelihood of success, as discussed above, the PTAB issued a decision denying institution, dealing Supercell a serious blow in their ongoing patent litigation.


Ex Parte Jadran Bandic Sheds New Light On 101 Guidance

Maier & Maier

The Patent Trial Appeal Board (PTAB) recently reversed an examiner’s 101 Alice rejection in Ex Parte Jadran Bandic, and in so doing, provided insight into how the PTO will administer Director Iancu’s 101 Guidance Memo. The PTAB found the examiner’s analysis in Step One of the Alice rejection only considered limited portions of the claim and did not address whether the claim as a whole amounted to an abstract idea. Despite the fact that the PTAB overruled the examiner’s finding in Step One of the Alice analysis and negated a need to continue their review, the PTAB specifically went on to discuss the merits of Step Two, where they found that “The Examiner’s analysis of the second step of the Alice analysis is conclusory and unsupported.”[1]  This ruling indicates a clear directive that examiners will need to provide detailed explanations and specific supporting evidence to withstand scrutiny on appeal.

After consistent promises made since his nomination, PTO Director Iancu fulfilled those promises last month when he proposed new guidance for patent subject matter eligibility under 35 U.S. 101 in a Federal Registry Notice. The proposal came on the heels of the Federal Circuit’s precedential decision in Berkheimer v. HP Inc., which held that patent eligibility analyses should not group claims together indiscriminately and that eligibility determinations are not solely questions of law, but also questions of fact.[2] The PTO issued a memorandum addressing 101 rejections after the Berkheimer decision which is available for public comments here and will remain open for comments until August 20th, 2018.

Since the Mayo v. Prometheus decision in 2012, where the Court first introduced the phrase “well-understood, routine, conventional activity previously engaged in by researchers in the field,” and the subsequent two-step framework for analysis set out by the Court in Alice in 2014, the exact parameters of patent eligibility under 101 have been under severe scrutiny. The PTO’s current guidance of the Mayo-Alice framework is found in MPEP 2106, directing that examiners “should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry.”[3]

Much of Iancu’s career before becoming PTO director came as a litigator, including experience in front of the PTAB. This has lead to a significant amount of interest in the approach he’ll take as PTO Director, and especially with PTAB procedural issues. In a senate hearing last November, Iancu espoused the belief that “[t]o a large extent we should see how the recent development in the case law and some of the recent acts of Congress are working out, and take stock of that.” When the Berkheimer decision came down from the Federal Circuit, he took one of his first opportunities to take such stock.

Berkheimer v. HP, Inc. originated in the Northern District of Illinois with a summary judgment decision on Berkheimer’s 7,44,713 patent concerning digital asset management, after he had sued HP for infringement. The court held claims 1-7 and 9 invalid as ineligible under § 101 and held claim 10 indefinite and claims 11-19 invalid for indefiniteness due to their dependency on claim 10. Berkheimer appealed this decision to the Federal Circuit.

On appeal, Berkheimer argued that the district court had improperly neglected to consider his arguments as to claims 4-7’s validity, because it took arguments towards claim 1 as representative, and failed to apply the correct standard in deciding the validity of claims 4-7 for summary judgment. In its decision, the Federal Circuit determined that the question of whether something is “well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.”[4] This means that the decision with respect to claims 4-7 should have been considered “in the light most favorable to the non-movant,” in this case, Berkheimer’s. Therefore, the court decision vacated-in-part and remanded the validity of claims 4-7 to the district court.

This decision addressing § 101 interpretation prompted Iancu to release a memo on the PTO’s additional guidance for examiners issuing rejections under 101. In order for an examiner to ‘readily conclude’ that something is well-understood, routine and conventional, the PTO offers four options for support of that factual finding.[5] The first three possibilities are citations:

1). To an express statement in the specification or to a statement made by an applicant during prosecution, specifically explaining that the finding “cannot be based only on the fact that the specification is silent with respect to describing such element.”

2). To a court decision from MPEP § 2106.05(d)(II) noting the finding.

3). To a publication which notes the finding (book, manual, review article, that “describes the state of the art and discusses what is well-known and in common use in the relevant industry”). It should be noted that the definition of publication here is not defined the same as a printed publication under 102, because 102 requires only 1 publication of the idea, whereas “well-understood” would require further evidence of its prevalence in the field.

4). Lastly, the memo provided that the examiner may take official notice of the well-understood, routine, conventional nature of the elements, but this is limited to situations where an examiner is certain of such nature, and should be done in accordance with MPEP  § 2144.03. If the applicant challenges the official notice in the manner allowed per the MPEP, then the examiner would in turn need to cite to one of the other three options.

With Ex Parte Jandran Bandic, the PTAB has given more insight into how they will be implementing this emphasis on factual findings for Step Two. The patent at issue covers an “analytic method of tissue evaluation,“ with the rejected claims addressing optomagnetic fingerprinting. The examiner rejected those claims because they amounted to “mere data-gathering” and “optomagnetic fingerprinting itself is disclosed in disclosures dating back to 2008”. In reversing this decision, the PTAB noted that the examiner failed to “persuasively explain why [the claims] are steps of “data gathering” and took issue with the fact that the examiner failed to provide any citations for the claim that optometric fingerprinting has been disclosed in prior art since 2008. Additionally, the PTAB referenced the Berkheimer decision and emphasized that an appearance of an element in a “prior disclosure is not adequate to show that the additional element would not be an activity sufficient to transform a claim into a patent-eligible application of an abstract idea”.[6]

This PTAB ruling provides some much needed insight into the level of scrutiny that will be placed on Step Two moving forward, and bears watching as we continue to get more decisions under Iancu’s post-Berkheimer 101 Memo PTO.


[1] Ex Parte Jadran Bandic, Dec. at 6 (PTAB April 30, 2018) (available at https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016004417-04-30-2018-1).

[2] 881 F.3d 1360 (Fed. Cir. 2018).

[3] PTO Notice, Fed. Reg, April 20, 2018 (available at https://www.federalregister.gov/documents/2018/04/20/2018-08428/request-for-comments-on-determining-whether-a-claim-element-is-well-understood-routine-conventional).

[4] Berkheimer v. HP Inc, 881 F.3d 1369 (Fed. Cir. 2018).

[5] PTO Notice, Fed. Reg, April 20, 2018 (available at https://www.federalregister.gov/documents/2018/04/20/2018-08428/request-for-comments-on-determining-whether-a-claim-element-is-well-understood-routine-conventional).

[6] Ex Parte Jadran Bandic, Dec. at 6 (PTAB April 30, 2018) (available at https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016004417-04-30-2018-1).


Federal Circuit Extends §101 to Cover Graphical User Interfaces in Core Wireless v. LG

Maier & Maier

In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 2016-2684, 2017-1922 (Fed. Cir. Jan. 23, 2018), a panel of the U.S. Court of Appeals for the Federal Circuit (Moore, O’Malley, Wallach) upheld patent claims directed to a graphical user interface under 35 U.S.C. §101, concluding that the claims were not directed to a patent-ineligible abstract idea.

Core Wireless brought an action against LG in the Eastern District of Texas alleging infringement of U.S. Patent Nos. 8,713,476 and 8,434,020, having claims dealing with an application summary screen that is displayed while the one or more applications summarized are in an un-launched state. The District Court denied summary judgment based on 35 U.S.C. §101, and LG appealed.

The Federal Circuit began its analysis by determining that the claims of the two patents in question were directed to an “improved user interface,” a non-abstract idea, rather than the abstract idea of an index. Specifically, these claims were “directed to a particular manner of summarizing and presenting information in electronic devices.” For example, claim 1 required “an application summary that can be reached directly from the menu” and further limiting the application summary (such as having the application summary list a limited set of data with each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application) as well as a particular manner of accessing the summary window and certain other limitations.

The Court analogized the case to other cases in which a computer-implemented claim was found eligible, such as Enfish, LLC v. Microsoft Corp., Thales Visionix Inc. v. U.S., Visual Memory LLC v. NVIDIA Corp., and Finjan, Inc. v. Blue Coat Systems, Inc., specifically noting that the claims in each of these cases were found to improve a computer or technological system, and were thus not abstract. (Just like in many of these cases, the Court looked to the patent specifications in order to determine what aspects of a computer the claims were directed toward improving.)

Once the §101 matter was resolved, the Court also heard the issue of non-infringement. This turned, in large part, on the Court’s interpretation of the phrase “unlaunched state” in the claims, which LG had (unsuccessfully) argued in the District Court should refer to a situation in which the applications were “not running” rather than “not displayed.” LG argued that it would not infringe if the applications were required to be “not running.” The court (minus Judge Wallach, who dissented on this point) sided with the District Court, finding that the District Court correctly construed “unlaunched state” as “not displayed.”

Importantly, the claims in this case were considered to be an improvement to computer technology because they improved the ability of a user to use the computer. In order to use prior art systems, users had to “drill down through many layers to get to desired data or functionality [which] could seem slow, complex and difficult to learn, particularly to novice users,” while the claimed invention, by contrast, was much more user-friendly. This effectively adds “user-friendliness” or “usability” to the list of innovations which can be an improvement to computer technology, significantly expanding the list of patent-eligible subject matter.

It has also historically been a little unclear as to how graphical user interface designs can be protected by intellectual property rights. There is a circuit split between the Ninth Circuit and other circuits as to whether GUIs are copyrightable subject matter, and past Federal Circuit jurisprudence as to their patentability has come down on both sides of the line. However, the vast majority of cases (such as, for example, Intellectual Ventures I LLC v. Erie Indemnity Co., Intellectual Ventures I LLC v. Capital One Bank (USA), and Internet Patents Corp. v. Active Network, Inc.) have found GUIs to be ineligible, while the one case that upheld a GUI patent claim (Trading Technologies Int’l v. CQG Inc) was a non-precedential opinion that dealt with an extremely detailed claim. This case provides applicants with a clear model to follow for future applications on interface technology or any similar technology.


Clarifying 35 U.S.C. § 101 in McRO, Inc. v. Bandai Namco Games America

Timothy Maier

The U.S. Court of Appeals for the Federal Circuit, in McRO, Inc. v. Bandai Namco Games America, reversed the district court’s judgment on the pleadings that the asserted claims of U.S. Patent Nos. 6,307,576 (the ‘576 patent) and 6,611,278 (the ‘278 patent) were directed to patent-ineligible subject matter and therefore invalid under 35 U.S.C. § 101. The much-anticipated decision, issued on September 13, 2016, provides greater insight into identifying patent-eligible subject matter for computer-based inventions. In particular, the court highlights the significance of claim construction and preemption in conducting a patentability analysis.

BACKGROUND

The patents-in-suit, both issued to Maury Rosenfeld, relate to a method of automatically animating lip synchronization and facial expression of animated characters. The method uses a set of rules to define values for transitioning between facial expressions as a function of sequences of sounds in the speech of animated characters. According to the patentee, the prior art encompassed a “keyframe” approach, where a human animator would manually set the appropriate “morph weights” at certain important times in the transcript instead of at every frame. The claimed invention essentially “automate[s] a 3-D animator’s task, specifically, determining when to set keyframes and setting those keyframes through rules that are applied to the timed transcript to determine the morph weight outputs.”

In 2012 and 2013, patentee McRO, Inc. filed lawsuits against various video game developers and publishers (collectively, Bandai) for alleged infringement of the ‘576 and ‘278 patents. The U.S. District Court for the Central District of California granted the defendants’ motion on the pleadings that the asserted claims were directed to patent ineligible subject matter under § 101, thereby holding the patents invalid. Although admitting the claims facially did not appear to be directed to an abstract idea, the district court nonetheless found the claims too broadly preemptive to satisfy §101. The district court reasoned that because the claims were not limited to specific rules, but rather “purport to cover all such rules,” the claims merely call for the application of the abstract idea of using rules. Ultimately, the district court found that “while the patents do not preempt the field of automatic lip synchronization for computer-generated 3D animation, they do preempt the field of such lip synchronization using a rules-based morph target approach.” The district court concluded that the claims were ineligible for patent protection because the “novel portion of [the] invention are claimed too broadly.”

McRO subsequently appealed, arguing that its patents were not directed to an abstract idea and further that the specific claimed rules did not preempt the field of using rules in speech animation. Bandai, on the other hand, maintained that the McRO patents merely amounted to an automation of a preexisting process on a general-purpose computer.

Claim 1 of the ’576 patent was deemed representative and dispositive of the asserted claims for the purposes of appeal:

A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;

obtaining a timed data file of phonemes having a plurality of sub-sequences;

generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;

generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and

applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

DISCUSSION

In reversing the district court’s ruling, the Federal Circuit cautioned against an oversimplification of the claims. The court noted that under the Alice test, “a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps” in determining the patentability of a method.  Here, the court determined that the claims are limited to rules with particular characteristics. Specifically, “the claims themselves set out meaningful requirements for the first set of rules: they ‘define[] a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence.’”

Addressing the defendant’s position that the claims are abstract because they do not claim specific rules, the court explained that the claimed rules “are limited to rules with certain common characteristics, i.e., a genus.” While acknowledging a greater risk of preemption, the Federal Circuit pointed out that claims to the genus of an invention, rather than a particular species, have long been acknowledged as patentable. The preemption concern arises when the claims improperly monopolize “the basic tools of scientific and technological work.” To this end, the court shifted its attention to “whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” The court noted that preemption, not tangibility, is the underlying concern, and emphasized “the narrower concern here is whether the claimed genus of rules preempts all techniques for automating 3-D animation that rely on rules.”

Ultimately, the court concluded that the specific structure of the claimed rules prevents broad preemption of all rules-based means of automating lip synchronization. The court noted that the claims focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type to be rendered in a specific way. The court explained that while the rules are embodied in computer software that is processed by general-purpose computers, there was no evidence that claims would preempt all uses of rules in 3-D animation or that they even encompassed the same process previously used by animators. In particular, the cited prior art discloses that “an animator’s process was driven by subjective determinations rather than specific, limited mathematical rules.” Moreover, “motion capture animation provides an alternative process for automatically animating lip synchronization and facial expressions.”

Significantly, the Federal Circuit rejected the assertion that the claims ““simply use a computer as a tool to automate conventional activity,” noting how “the incorporation of the claimed rules, not the use of the computer” improved the existing animation process. This, according to the Federal Circuit, differentiates the present case from that of Flook, Bilski, and Alice, where “the claimed computer-automated process and the prior method were carried out in the same way.”

As a result, the Federal Circuit held “that the ordered combination of claimed steps, using unconventional rules that relate sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea and is therefore patent-eligible subject matter under § 101.”

CONCLUSION

In McRO, the Federal Circuit further clarified Alice and its application to computer and software-related patents. The Court reached its holding after a detailed preemption analysis in step one of the Alice test. The Federal Circuit premised its patent eligibility determination on the construction of the asserted claims, thus emphasizing the highly fact-specific nature of the Alice inquiry.  Additionally, the Federal Circuit’s decision also underscores the importance of preemption in the §101 analysis.