The Broadest Reasonable Interpretation Must Be Consistent with the Specification

Stephen G. Adrian | December 7, 2017

Mexichem Amanco Holding S.A. de C.V., Appellant v. Honeywell International Inc., Appellee

November 17, 2017

Before Prost, Dyk and Chen. Opinion by Prost

Summary

This non-precedential opinion provides an important reminder that the broadest reasonable interpretation does not mean the broadest possible interpretation. The decision also highlights (indirectly through the decisions on appeal rendered by the PTAB) that a limitation contained in the preamble can carry weight. In unpredictable arts, an Examiner’s assertion of inherency may not necessarily shift the burden of proof to show otherwise.


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Claims directed to an abstract idea without specifying an inventive concept would fail the Step Two of Alice

Shan Gong | December 6, 2017

Two-Way Media Ltd. v. Comcast Cable Communications, LLC

November 1, 2017

Before Lourie, Reyna and Hughes.  Opinion by Reyna.

Summary

This is a case appealed from a decision of district court that asserted that the claims of the patent are directed to patent ineligible subject matter under 35 U.S.C. § 101.

United States Court of Appeals for the Federal Circuit (the “Court”) applied Alice’s two-step framework to analyze whether the claim in question is eligible subject matter. In the first step, the Court ruled that the claims are directed to an abstract idea of “gathering and analyzing information of a specified content, then displaying the result.” In the second step, the Court decided that the claims do not have an inventive concept sufficient enough to transform the nature of the claim into a patent eligible application. Therefore, the decision of district court is affirmed.

Chinese Summary

这是一个从地区法院上诉上来的案件,该地区法院判决本案涉及专利的权利要求不符合35 U.S.C. § 101中关于专利适格性的要求规定.

美国联邦巡回上诉法院(下称“法院”)运用了爱丽丝的两步法框架来分析本案涉及的权利要求是否为专利可授权主题。在爱丽丝第一步中,法院裁定,这些要求是针对“收集和分析指定内容的信息,然后显示结果”的抽象思想.而爱丽丝第二步时,法院裁定,这些权利要求没有足够的创造性概念使权利要求转化为符合专利可授权主题要求规定的权利要求。因此,法院肯定了地方法院的判决。

Details

The subject patent 5,778,187 describes “a system for streaming audio/visual data over a communications system like the internet.” The invention is described as “an improved scalable architecture for delivering real-time information.” It also provides for a control mechanism to manage and administrate users. Figure 1 below shows the architecture of the system provided by the patent.

Figure 1

 

 

 

 

 

 

 

 

 

 

 

Claim 1 of the patent which is agreed by both parties as the representative claim of the patent recites:

1.  A method for transmitting message packets over a communications network comprising the steps of:

converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol,

for each stream, routing such stream to one or more users,

controlling the routing of the stream of packets in response to selection signals received from the users, and

monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.

(emphasis added).

The Court reviewed de novo whether claim 1 contains patent eligible subject matter by applying the two-step frame work. The Court held that claim 1 is directed to an abstract idea and does not contain an “inventive concept” sufficient to “transform the nature of the claim into a patent-eligible application.”

Alice Step One

Although Two-Way Media argued that claim 1 is tied to particular scalable network architecture, the Court ruled that claim 1 only recites conventional computer components to manipulate data in an abstract way.

For example, the Court adopted Two-Way Media’s proposed claim construction. The proposed construction construes “controlling the routing of the stream of packets in response to selection signals received from the users” as “directing a portion of the routing path taken by the stream of packets from one of a designated group of intermediate computers to the user in response to one or more signals from the user selecting the streams.” The Court held that this construction did not indicate how the claim is directed to the particular scalable network architecture. The Court also noted that, the construction did not provide “any parameters for the “signals” purportedly dictating how the information is being routed.”

Overall, the Court held that claim 1 is “directed to the abstract idea of gathering and analyzing information of a specified content, then displaying the result, and not any particular asserted inventive technology for performing those functions.”

Alice Step Two

The Court held that the claim as opposed to something purportedly described in the specification is missing an inventive concept, thus it cannot save the claim in Alice Step Two. The Court agreed with what is found by district court that although the specification described a system architecture as a technological innovation, the claim itself is missing an inventive concept.

For example, the Court noted that claim 1 refers to certain data “complying with the specification of a network communication protocol” and the data being routed in response to one or more signals from a user. However, claim 1 does not contain details of the “rules forming the communication protocol or specifying parameters for the user signals” which preclude their contribution to the inventive concept determination.

Two-Way Media argued that the claim solves technical problems including excessive loads on a source server, network congestion, variation in delivery times etc. However, the Court notes that the claim “only uses generic function language to achieve these purported solutions.”

Two-Way Media also argued that the district court did not include its proffered evidence to the purported technological innovation. Whereas, the Court held that the proffered material is relevant to a novelty and obviousness analysis which is not relevant to eligible subject matter.

Takeaways

  • A claim uses functions of gathering and analyzing information of a specified content, then displaying the result will be directed to an abstract idea when there is no any particular asserted inventive technology for performing those functions specified in the claim
  • When a claim is directly an abstract idea, it needs to contain details of the inventive concept of the invention in the claim in order to be qualified as a patentable subject matter under 35 U.S.C. § 101
  • More particularly, when the technological invention is an improvement of communication system architecture, it would be helpful to contain details of the inventive concept of the invention such as the rules forming the communication protocol used in the system architecture, specifying parameters for the user signals etc.

Full Opinion

U.S. Patent 5,778,187

 

Bayer left hard up when CAFC reversed district courts final judgment with some stiff words for the lower court.

Adele Critchley | November 9, 2017

Bayer Pharma AG, Bayer Intellectural Property GMBH, Bayer Heathcare Pharaceuticals, inc., v. Watson Laboratories Inc., Activis Pharma, Inc.

November 1, 2017

Before Lourie, Moore and O’Malley.  Opinion by Moore

Summary:

The CAFC held that the district court clearly erred in finding that a skilled artisan would not have been motivated to arrive at claims 9 and 11 of the patent-in-suit.

The patent at issue is directed to a formulation of vardenafil and at least two sugar alcohols in the form of an uncoated oral disintegrating table (ODT). It was agreed by both parties that the claim covered an immediate-release formulation. Bayer markets a commercial embodiment of the patent under the name Staxyn, and its utility is erectile dysfunction.


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Masterminding functional claiming of an apparatus, but too soft on intrinsic evidence for claim construction.

Michael Caridi | November 3, 2017

MasterMine Software, Inc. v. Microsoft Corp.

October 30, 2017

Before Newman, O’Malley and Stoll. Opinion by Stoll.

Summary

MasterMine appealed from a stipulated judgment of noninfringement and invalidity following adverse claim construction and indefiniteness rulings from the United States District Court for the District of Minnesota. The CAFC found that the District Court had correctly interpreted the term “pivot table” based on the intrinsic evidence.  However, the Circuit reversed the District’s indefiniteness determination finding the claim language sufficiently directed to an apparatus and noting that functional language is appropriate when it is describing what the apparatus is capable of while not describing the actions of a user.

Discussion

I.  Background

MasterMine sued Microsoft Corporation for infringement of its two related patents, U.S. Patent Nos. 7,945,850 and 8,429,518. MasterMine asserted claims 1, 8, 10, and 12 of the ’850 patent and claims 1, 2, and 3 of the ’518 patent.

The District Court entered a claim construction order, construing the term “pivot table” to mean “an interactive set of data displayed in rows and columns that can be rotated and filtered to summarize or view the data in different ways”.  In the same order, the District agreed with Microsoft that claims 8 and 10 of the ’850 patent and claims 1, 2, and 3 of the ’518 patent were indefinite for improperly claiming two different subject-matter classes.

II. Opinion

a.  Claim Construction

MasterMine argues that the district court improperly construed the term “pivot table,” which it proposed should be construed as a “computer software object [or structure] defining an interactive table that can show the same data from a list or a database in more than one arrangement” so as to include tables that do not display data.  The Circuit detailed the intrinsic record including review of the specification and prosecution history of the patent family.  They found no evidence supporting a “pivot table” that did not display data outside of the specification containing excerpts of computer code that would generate a pivot table with an empty data display area.  With no compelling evidence to support doing otherwise, the CAFC upheld the District’s ruling.

b.  Indefiniteness

The Circuit focused on claim 8 of the ‘850 patent which the district court had used as the basis for the indefiniteness rulingThe parts of the claim in issue were:

“[a] system comprising”:

. . . .

a reporting module installed within the CRM software application . . . ;

. . . .

wherein the reporting module installed within the CRM software application presents a set of user selectable database fields as a function of the selected report template, receives from the user a selection of one or more of the user-selectable database fields, and generates a database query as a function of the user selected database fields;

After a thorough review of precedent regarding a claim directed to both a method and an apparatus being indefinite, the Court found that despite the hefty amount of functional language, the claims at issue were clearly directed to an apparatus.  Specifically, the Court noted that although claim 8 includes active verbs (“presents” “receives” and “generates”) these verbs represent permissible functional language used to describe capabilities of the “reporting module.” The claims were clearly describing that the system possesses the recited structure which is capable of performing the recited functions.  Differentiating the current claims from those found invalid in preceding opinions, the Court noted that the claims at issue do not claim activities performed by the user. The claims only “make reference to user selection, they do not explicitly claim the user’s act of selection, but rather, claim the system’s capability to receive and respond to user selection.”  Further, the functional language does not appear in isolation, but is specifically tied to the claimed structure. The CAFC concluded:

Because the claims merely use permissible functional language to describe the capabilities of the claimed system, it is clear that infringement occurs when one makes, uses, offers to sell, or sells the claimed system. Accordingly, because these claims inform those skilled in the art about the scope of the invention with reasonable certainty, we reverse the district court’s determination…

Take Away

  • Claim construction should be supported by clear recitations in the intrinsic record. Unclear extrapolations from the specification, such as interpreting fragments of code to reach the construction, will not suffice.
  • Functional language which describes what the recited structure is capable of doing or is configured to do will not render a claim indefinite even if active verbs are used. Using language which describes the user interaction rather that how an apparatus is capable of being acted upon should be avoided.

Full Opinion

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