Chinese : CAFC Alert

Tailored Advertising Claims Are Invalidated Due to Lack of Improvements to Computer Functionality

| June 8, 2021

Free Stream Media Corp., DBA Samba Tv, V. Alphonso Inc., Ashish Chordia, Lampros Kalampoukas, Raghu Kodige

Decided on May 11, 2021

Before DYK, REYNA, and HUGHES. Opinion by REYNA.


       The Federal Circuit reversed the district court’s decision and found that the asserted claims directed to tailored advertising were patent ineligible under 35 U.S.C. § 101.


       Free Stream sued Alphonso for infringement of its US patents No. 9,026,668 (“the ’668 patent”) and No. 9,386,356 (“the ’356 patent”). The patents describe a system sending tailored advertisements to a mobile phone user based on data gathered from the user’s television. Claim 1 and 10 were involved in the alleged infringement. Free Stream conceded claims 1 and 10 are similar.  Listed below is claim 1.

1. A system comprising:

a television to generate a fingerprint data;

a relevancy-matching server to:

match primary data generated from the fingerprint data with targeted data, based on a relevancy factor, and

search a storage for the targeted data;

wherein the primary data is any one of a content identification data and a content identification history;

a mobile device capable of being associated with the television to:

              process an embedded object,

              constrain an executable environment in a security sandbox, and

execute a sandboxed application in the executable environment; and

              a content identification server to:

                           process the fingerprint data from the television, and

communicate the primary data from the fingerprint data to any of a number of devices with an access to an identification data of at least one of the television and an automatic content identification service of the television.

       The asserted claims of ‘356 patent includes three main components: (1) a television (e.g., a smart TV) or a networked device ; (2) a mobile device or a client device ; and (3) a relevancy matching server and a content identification server. The television is a network device collecting primary data, which can consist of program information, location, weather information, or identification information. The mobile phone is a client device that may be smartphones, computers, or other hardware showing advertisements. The client device includes a security sandbox, which is a security mechanism for separating running programs. Finally, the servers use primary data from the networked device to select advertisements or other targeted data based on a relevancy factor associated with the user.

       Alphonso argued that the asserted claims are patent ineligible under § 101 because they are directed to the abstract idea of tailored advertising.  But Free Stream characterized the claims as directed to a specific improvement of delivering relevant content (e.g., targeted advertising) by bypassing the conventional “security sandbox” separating the mobile phone from the television.

       The district court rejected Alphonso’s argument and applied step one of the Alice test to conclude that the asserted claims are not directed to an abstract idea.  The district court found that the ’356 patent “describes systems and methods for addressing barriers to certain types of information exchange between various technological devices, e.g., a television and a smartphone or tablet being used in the same place at the same time.”


       The Federal Circuit agreed with Alphonso’s contention that the district court erred in concluding that the ’356 patent is not directed to patent-ineligible subject matter. Claims 1 and 10 were reviewed by the Federal Circuit as being directed to (1) gathering information about television users’ viewing habits; (2) matching the information with other content (i.e., targeted advertisements) based on relevancy to the television viewer; and (3) sending that content to a second device.

       Free Stream contended that claim 1 is “specifically directed to a system wherein a television and a mobile device are intermediated by a content identification server and relevancy-matching server that can deliver to a ‘sandboxed’ mobile device targeted data based on content known to have been displayed on the television, despite the barriers to communication imposed by the sandbox.” Free Stream also asserted that its invention allows devices on the same network to communicate where such devices were previously unable to do so, namely bypassing the sandbox security.

       The Federal Circuit, however, noted that the specification does not provide for any other mechanism that can be used to bypass the security sandbox other than “through a cross site scripting technique, an appended header, a same origin policy exception, and/or an other mode of bypassing

a number of access controls of the security sandbox.” Also, the Federal Circuit pointed out that the asserted claims only state the mechanism used to achieve the bypassing communication but not at all describe how that result is achieved.

       Further, the Federal Circuit went on to note that “even assuming the specification sufficiently discloses how the sandbox is overcome, the asserted claims nonetheless do not recite an improvement in computer functionality.” The asserted claims do not incorporate any such limitations of bypassing the sandbox. The Federal Circuit determined that the claims were directed to the abstract idea of “targeted advertising.”

       The Federal Circuit further reached Step 2 because the district court concluded that the claims were not directed to an abstract idea at Step 1. Free Stream argued that the claims of the ’356 patent “specify the components or methods that permit the television and mobile device to operate in [an] unconventional manner, including the use of fingerprinting, a content identification server, a relevancy-matching server, and bypassing the mobile device security sandbox.”

       The argument on Step 2 was also directed around bypassing sandbox security. The Federal Circuit explained that the security sandbox may limit access to the network, but the claimed invention simply seeks to undo that by “working around the existing constraints of the conventional functioning of television and mobile devices.” It was concluded that “such a ‘work around’ or ‘bypassing’ of a client device’s sandbox security does nothing more than describe the abstract idea of providing targeted content to a client device.” The Federal Circuit emphasized that “an abstract idea is not patentable if it does not provide an inventive solution to a problem in implementing the idea.” Finally, the Federal Circuit found that the asserted claims simply utilized generic computing components arranged in a conventional manner but failed to embody an “inventive solution to a problem.”


  • An abstract idea is not patentable if it does not provide an inventive solution to a problem in implementing the idea.
  • The “work-around” does not add more features that give rise to a Step 2 “inventive concept.”

Improper NDA Defeats Trade Secrets and Overly Broad Patent Claims are Invalid

| July 29, 2013

Convolve v. Compaq Computer

July 1, 2013

Panel:  Rader, Dyk and O’Malley.  Opinion by O’Malley


Convolve, Inc. (“Convolve”) and Massachusetts Institute of Technology (“MIT”) appeal the decision of the U.S. District Court for the Southern District of New York (“District Court”) granting summary judgment in favor of Compaq Computer Corp. (“Compaq”), Seagate Technology LLC. and Seagate Technology, Inc. (“Seagate”).

Convolve and MIT sued Compaq and Seagate in July 2000 for breach of contract; misappropriation of trade secrets listed in Amended Trade Secret Identification (ATSI); direct patent infringement; and inducement of patent infringement along with other complaints such as fraud; violation of California Business and Professions Code §17200 (“CA Unfair Competition”), etc.

In May 2006, the District Court disposed of all other charges from the suit except the breach of contract, misappropriation of trade secrets and patent infringement charges. The District Court later granted summary judgment in favor of Compaq and Seagate and dismissed the remaining charges. With regard to the trade secret charges, the District Court found that:

(1)    some of Convolve’s trade secrets (ATSI 1B, 2A, 2C, 2E, and 3B-D) were covered under a Non-Disclosure Agreement (NDA), which Convolve failed to properly preserve according to the NDA procedures;

(2)    some of Convolve’s trade secrets (ATSI 2A, 6B, and 7A) were public known or common knowledge in the industry, which were not entitled to protection;

(3)    some of Convolve’s trade secrets were never used by the defendants (ATSI 2F and 7E); and

(4)    because New York law does not extend trade secret protection to marketing concepts, some of the trade secrets alleged by Convolve are not recognized by the District Court.

With regard to the patent infringement charges, the District Court found that:

(1)   out of the four models of products alleged by Convolve as infringing Patent’473, none read on the claims of the patent;

(2)   Patent’635 was found invalid for being non-enabling based on the inventor’s testimony; and

(3)   since no direct infringement was found, the claim for inducement of patent infringement must fail.

Taking all inference in favor of Convolve, the CAFC affirmed all counts of summary judgment with regard to the trade secret allegations, as well as the invalidity of Patent’635, but reversed the non-infringement decision about Patent’473.


Convolve (原告)与Compaq, Seagate(康柏电脑和希捷数码,被告)就原告开发的一些硬盘技术进行技术合作谈判,双方就谈判涉及内容签订了保密协议。但原告在向被告透露相关技术时没有严格按保密协定约定的程序处理涉密内容。后来改谈判未能达成一致,原告诉被告在谈判涉及的保密内容上侵犯商业机密及在另一些技术问题上专利侵权。一审结果,联邦区域法院裁定原告败诉。


另外, 关于专利侵权案,原告的专利在当年提出申请时对该发明的描述超过了发明人的当时可以实施实际该发明的范畴,故该专利被认定未能适当描述其实施方法因而无效。上述法院部分维持一审法院的判决。

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Claim Construction and Expert Testimony in Pharmaceutical Patent Litigation

| January 31, 2013

Allergan, Inc. v. Barr Laboratories, Inc., Teva Pharmaceutical USA, Inc., and Teva Pharmaceutical Industries Ltd. and Sandoz Inc.

January 28, 2013

Panel: Rader, Bryson and Wallach.  Opinion by Bryson.


Barr Lab. and Sandoz Inc. etc. (collectively Defendants) filed a Abbreviated New Drug Application (ANDA), listing the patented product in Allergan’s ‘819 patent. Allergan filed an infringement suit against the Defendants. The district court ruled for Allergan, and the Defendants brought it to appeal.

One major point of dispute was about one moiety in the claimed compounds described in claim 5 of patent ‘819 as representable by –N(R4)2. The Defendants asserted that the two R4 moieties must be construed as identical. The district court and the CAFC both found for Allergan in holding that the R4 units did not need to be identical.

Another point of dispute was about the requirement for courts’ independent inquiry into “obviousness” type of patent invalidity case. The CAFC affirmed the district court’s decision that the expert testimony may be a required part of patent invalidity cases based on obviousness, and that independent review of a case involving complex technology, in absence of expert witness, is not required.

Barr Labs和Sandoz公司(以下统称被告)向联邦食品药品管理局提出简化新药申请(ANDA)中将Allergan公司的819专利所保护的专利药品列为仿制药。 Allergan公司对被告提起侵权诉讼。联邦地区法院裁定Allergan胜诉,被告遂到联邦巡回法庭提出上诉。

争议要点之一是,在专利819的权利要求5,对要求受保护药物的描述包括该化合物含有基团 “–N(R 42”。被告声称,这两个R4基团应该理解为相同基团。区法院和联邦巡回上诉法院都认同Allergan的理解,认定对R4基团定义应基于该专利文件中的具体描述,所以两个R4基团不一定相同。


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Using Trademark in Categories Other than the One as Filed May Result in Abandonment

| August 15, 2012


August 3, 2012

Panel:  Newman, Linn and Moore.  Opinion by Linn.

Summary, Inc. (“”) appeals a decision of the Trademark Trial and Appeal Board (“Board”) granting a motion for summary judgment by 1-800 Contacts, Inc. (“1-800 Contacts”) and ordering the cancellation of’s registration for the mark LENS due to nonuse.  The mark was filed to be used in connection with computer software, but the business of is in the field of retail sales of contact lenses.  The issue at dispute is whether software incidentally distributed in connection with retail business in the context of an internet service constitutes a “good in commerce.” The court applies a three-prong test established in non-internet-related case law to the current case in finding nonuse of the mark, and distinguishes the current case from an Eleventh Circuit decision.

Lens.com公司就商标裁决上诉委员会批准关于注销 LENS 商标登记的动议提出上诉。 该动议由1-800 Contacts公司提出,称lens.com已停止使用该商标。该商标注册为“计算机软件相关业务”的商标,而Lens.com仅在隐形眼镜零售领域开展业务。该案中的争议问题是互联网零售业务中偶尔附带发送的软件是否构成“商品”。法院利用了建立在非互联网相关案件的判例法上的“三因素测试”认定该商标已停止使用, 并且将本案与第十一巡回法庭判决的一个互联网相关案件加以对比区分。

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