THE DOMESTIC INDUSTRY REQUIREMENT FOR AN ITC COMPLAINT CAN BE SATISFIED BASED ON A SUBSET OF A PRODUCT IF THE IP INVOLVES ONLY THAT SUBSET
| March 22, 2024
Roku, Inc. v. ITC
Decided: January 19, 2024
Before Dyk, Hughes, and Stoll. Opinion by Hughes.
Summary:
Universal Electronics, Inc. (“Universal”) filed a complaint against Roku in the International Trade Commission (ITC) for importing certain TV products that infringe U.S. Patent No. 10,593,196. The issues on appeal include whether the final determination of the ITC is proper in finding that (1) Universal had ownership rights to assert the ‘196 patent in the complaint; (2) Universal satisfied the economic prong of the domestic industry requirement under 19 U.S.C. § 1337(a)(3)(C) to bring a complaint at the ITC; and (3) Roku failed to demonstrate that the ‘196 patent was obvious over the prior art. The CAFC affirmed the ITC’s findings.
Details:
The ‘196 patent is to a device for allowing communication between various devices such as smart TVs and DVD players that may use different communication protocols such as wired connections (e.g., HDMI) or wireless communication (Wi-Fi or Bluetooth) that may be incompatible with each other. The ‘196 patent discloses a universal control engine (referred to as a “first media device” in the claims) that can scan various target devices (referred to as “second media devices” in the claims). The first media device receives wireless signals from various devices such as a remote control or an app on a tablet computer and can transmit commands using wired or IR signals to controllable devices such as TVs, DVRs or a DVD player.
Claim 1 is provided:
1. [pre] A first media device, comprising:
[a] a processing device;
[b] a high-definition multimedia interface communications port, coupled to the processing device, for communicatively connecting the first media device to a second media device;
[c] a transmitter, coupled to the processing device, for communicatively coupling the first media device to a remote control device; and
[d] a memory device, coupled to the processing device, having stored thereon processor executable instruction;
[e] wherein the instructions, when executed by the processing device,
[i] cause the first media device to be configured to transmit a first command directly to the second media device, via use of the high-definition multimedia communications port, to control an operational function of the second media device when a first data provided to the first media device indicates that the second media device will be responsive to the first command, and
[ii] cause the first media device to be configured to transmit a second data to a remote control device, via use of the transmitter, for use in configuring the remote control device to transmit a second command directly to the second media device, via use of a communicative connection between the remote control device and the second media device, to control the operational function of the second media device when the first data provided to the first media device indicates that the second media device will be unresponsive to the first command.
1. Ownership Issue
After filing its complaint, Universal filed a petition for correction of inventorship to add an inventor (Mr. Barnett) to the patent. Roku had filed a motion for summary determination before the ALJ that Universal lacked standing to assert the ‘196 patent because at the time Universal filed its complaint, it did not own all rights to the ‘196 patent. Roku argued that a 2004 agreement between Mr. Barnett and Universal did not constitute an assignment of rights.
The ALJ agreed stating that the 2004 agreement was a “mere promise to assign rights in the future, not an immediate transfer of expectant rights,” and thus, the 2004 agreement “did not automatically assign any of Mr. Barnett’s rights to the Provisional Applications of the ‘196 patent that eventually issued from the priority chain.”
The Commission reversed stating that there was a separate agreement in 2012 in which Mr. Barnett assigned all his rights to a series of provisional applications including the provisional which led to the ‘196 patent. The language of the assignment states that Mr. Barnett “hereby sell[s] and assign[s] … [his] entire right, title, and interest in and to the invention,” including “all divisions and continuations thereof, including the subject-matter of any and all claims which may be obtained in every such patent.” The Commission further found that Mr. Barnett did not contribute any new or inventive matter to the ‘196 patent after filing the provisional applications. The Commission found that the 2012 agreement constituted a “present conveyance” of Mr. Barnett’s rights in the ‘196 patent. The CAFC agreed with the Commission that the agreement constitutes a “present conveyance,” and thus, Universal had ownership rights to assert the ‘196 patent.
2. Domestic Industry Requirement – Economic Prong
To bring complaint at the ITC under Section 337, the complainant must possess a domestic industry in the United States. Domestic industry can be satisfied by showing “substantial investment in [a patent’s] exploitation, including engineering, research and development, or licensing.” 19 U.S.C. § 1337(a)(3)(C).
The Commission found that Universal had substantial investments in domestic engineering and R&D related to a platform called QuickSet which is incorporated into multiple smart TVs. The Commission found that the QuickSet platform involves software and software updates that result in practice of the asserted claims when implemented on the Samsung DI products and that Universal’s asserted expenditures are attributable to its domestic investments in R&D and engineering. The Commission further found that Universal’s investments go directly to the functionality necessary to practice many claimed elements of the ‘196 patent. The CAFC held that the Commission’s findings are supported by substantial evidence.
Roku attempted to frame the argument with regard to the TV as a whole rather than the QuickSet technology that is installed on those TVs to argue that Universal has not satisfied the domestic industry requirement. However, the CAFC stated that the domestic industry requirement “does not require expenditures in whole products themselves, but rather, sufficiently substantial investment in the exploitation of the intellectual property.” The CAFC further stated “a complainant can satisfy the economic prong of the domestic industry requirement based on expenditures related to a subset of a product, if the patent(s) at issue only involve that subset.” The CAFC held that the IP at issue in this case is practiced by QuickSet and the related QuickSet technologies, which is a subset of the entire TV.
3. Obviousness
Roku argued obviousness of the claims based on prior art references Chardon and Mishra. The parties agreed that Chardon disclosed all of the limitations of claim 1 except for limitation 1[e][ii]. Roku cited Mishra for teaching this feature. The ALJ found that Universal had presented evidence of secondary considerations showing that QuickSet satisfied a long-felt but unmet need that outweighed Roku’s obviousness case. The Commission went further regarding non-obviousness finding that the combination of Chardon and Mishra does not disclose a system that automatically configures two different control devices to transmit commands over different pathways. The Commission further found that Roku failed to present clear and convincing evidence of a motivation to combine the references.
On appeal, Roku merely argued that the Commission erred by accepting Universal’s evidence of secondary considerations. Roku argued that the Commission erred in finding a nexus between the secondary considerations of non-obviousness and the claims because some of the news articles presented by Universal discuss features in addition to QuickSet. The CAFC held that this argument is meritless because Roku did not dispute that QuickSet is discussed in the references that the Commission relied on.
The CAFC further stated that Roku did not challenge the actual findings that the combination of Chardon and Mishra does not disclose limitation 1[e], i.e., allowing for a choice between different second media devices. Thus, the Commission’s obviousness determination was affirmed.
Comments
When filing a patent infringement suit, make sure inventorship and ownership are clear, and make any necessary corrections before filing suit. When filing a complaint at the ITC, keep in mind that the domestic industry requirement does not require showing expenditures on whole products if the patent at issue only involves a subset of the product.
Inventor declaration not related to what is claimed or discussed in the patent would not help the patent to survive from patent eligibility attack in the pleading stage
| March 8, 2024
INTERNATIONAL BUSINESS MACHINES CORPORATION v. ZILLOW GROUP, INC., ZILLOW, INC.
Decided: January 9, 2024
Hughes (author), Prost, and Stoll
Summary:
The Federal Circuit affirmed the district court’s decision holding that the claims of two IBM’s patents are directed to patent ineligible subject matter under §101, and properly granting Zillow’s motion to dismiss under FRCP 12(b)(6).
Details:
IBM appealed a decision from the Western District of Washington, where the district court granted Zillow’s motion to dismiss under FRCP 12(b)(6). The district court held that all patent claims asserted against Zillow by IBM were directed to ineligible subject matter under 35 U.S.C. §101.
At issue in this appeal were IBM’s two patents – U.S. Patent Nos. 6,778,193 and 6,785,676.
The ’193 patent
The ’193 patent is directed to a “graphical user interface for a customer self-service system that performs resource search and selection.”
This patent is directed to improving how search results are displayed to a user by providing three visual workspaces: (1) a user begins by entering their search query into a “Context Selection Workspace”; (2) a user can further specify the details of their search in a “Detail Specification Workspace”; and (3) a user can view the results of their search in a “Results Display Workspace.”
Independent claim 1 is a representative claim:
1. A graphical user interface for a customer self service system that performs resource search and selection comprising:
a first visual workspace comprising entry field enabling entry of a query for a resource and, one or more selectable graphical user context elements, each element representing a context associated with the current user state and having context attributes and attribute values associated therewith;
a second visual workspace for visualizing the set of resources that the customer self service system has determined to match the user’s query, said system indicating a degree of fit of said determined resources with said query;
a third visual workspace for enabling said user to select and modify context attribute values to enable increased specificity and accuracy of a query’s search parameters, said third visual workspace further enabling said user to specify resource selection parameters and relevant resource evaluation criteria utilized by a search mechanism in said system, said degree of fit indication based on said user’s context, and said associated resource selection parameters and relevant resource evaluation criteria; and,
a mechanism enabling said user to navigate among said first, second and third visual workspaces to thereby identify and improve selection logic and response sets fitted to said query.
The ’676 patent
The ’676 patent is directed to enhancing how search results are displayed to users by disclosing a four-step process of annotating resource results obtained in a customer self service system that performs resource search and selection.”
Independent claim 14 is a representative claim:
14. A method for annotating resource results obtained in a customer self service system that performs resource search and selection, said method comprising the steps of:
a) receiving a resource response set of results obtained in response to a current user query;
b) receiving a user context vector associated with said current user query, said user context vector comprising data associating an interaction state with said user and including context that is a function of the user;
c) applying an ordering and annotation function for mapping the user context vector with the resource response set to generate an annotated response set having one or more annotations; and,
d) controlling the presentation of the resource response set to the user according to said annotations, wherein the ordering and annotation function is executed interactively at the time of each user query.
The District Court
Initially, IBM sued Zillow in the Western District of Washington for allegedly infringing five patents. The claims for two patents were dismissed, and Zillow filed a motion to dismiss under FRCP 12(b)(6) for the remaining three patents.
As for the ’676 patent, the district court found that the claims were merely directed to offering a user ‘the most beneficial and meaningful way’ to view the results of a query… and not advancing computer capabilities per se.”
The district court noted that four steps could be performed with a pen and paper, and that the claims were merely result-oriented.
Therefore, the district court found the asserted claims of the ’676 patent ineligible under §101.
As for the ’193 patent, the district court found that the claims were directed to the abstract idea of “more precisely tailoring the outcome of a query by guiding users (via icons, pull-down menus, dialogue boxes, and the like) to make choices about specific context variables, rather than requiring them to formulate and enter detailed search criteria.”
The district court did not find user context icons, separate workstations, and iterative navigation to be inventive concepts and held that they were well-understood, routine, or conventional at the time of the invention.
Therefore, the district court similarly found the asserted claims of the ’193 patent ineligible under §101.
The CAFC
The CAFC reviewed de novo.
As for the ’193 patent, the CAFC agreed with the district court that the claims do nothing more than improving a user’s experience while using a computer application.
Here, the CAFC noted that IBM failed to explain how the claims do anything more than identify, analyze, and present certain data to a user and that the claims did not disclose any technical improvement to how computer applications are used.
Furthermore, the CAFC agreed with the district court that IBM’s allegations of inventiveness “do[] not . . . concern the computer’s or graphical user interface’s capability or functionality, [but] relate[] merely to the user’s experience and satisfaction with the search process and results.”
Finally, the CAFC noted that the inventor declaration (“one of the key innovative aspects of the invention of the ’193 patent was not just the multiple visual workspaces alone, but how these various visual workspaces build upon each other and interact with each other,” as well as “the use of one visual workspace to affect the others in a closed-loop feedback system.”) did not cite the patent at all, and that neither the claims nor the specification include any such information. Therefore, the CAFC held that simply including allegations of inventiveness in a complaint with the inventor declaration did not make the complaint survive at the pleading stage.
Accordingly, the CAFC affirmed the district court’s decision holding that the ’193 patent is directed to ineligible subject matter under §101 and granting Zillow’s motion to dismiss as to the ’193 patent.
As for the ’676 patent, the CAFC agreed with the district court that the claims are directed to an abstract idea of displaying and organizing information because the representative claims use results-oriented language without mentioning any specific mechanism to perform the claimed steps.
In addition, the CAFC agreed with the district court that IBM failed to plausibly allege any inventive concept that would render the abstract claims patent-eligible.
IBM argued that the district court erred by failing to consider a supposed claim construction dispute regarding the term “user context vector”.
However, the CAFC noted that Zillow adapted IBM’s construction and did not propose an alternate construction. Therefore, the CAFC found that there was no claim construction dispute for the district court to resolve.
Accordingly, the CAFC affirmed the district court’s decision holding that the ’676 patent claimed ineligible subject matter under §101 and granting Zillow’s motion to dismiss as to the ’676 patent.
Dissenting opinion by Stoll
Stoll would vacate the district court’s holding of ineligibility of the claims of the ’676 patent because the majority, like the district court, did not meaningfully address IBM’s proposed construction of “user context vector.”
Takeaway:
- Conclusionary allegations of inventiveness in the inventor declaration would not help the patent to survive from patent eligibility attack in the pleading stage.
- The inventor declaration should be closely tied to the claims and the specification to help the patent to survive from patent eligibility attack.
Tags: 35 U.S.C. § 101 > declaration > Motion to Dismiss > patent eligible subject matter
