Standing Reminder for Inter Partes Review Decisions
Stephen G. Adrian | October 28, 2024
Case Name: LATINUM OPTICS TECHNOLOGY INC. V. VIAVI SOLUTIONS INC.
Date of Decision: August 16, 2024
Panel: Moore, Taranto and Cecchi (sitting by designation)
Summary
This decision serves as a reminder that standing to appeal a decision of the Patent Trial and Appeal Board (PTAB) can be lost in an inter partes review (IPR). This is because the Federal Circuit’s jurisdiction to review final decisions of the PTAB is limited to cases and controversies under Article III of the U.S. Constitution. If a civil action is dismissed before a final decision in an IPR, it is necessary to show that there is still an injury in fact so that an appeal can be taken to the CAFC.
Background
Viavi owns U.S. patent no. 9,354,369 which relates to optical fibers. Viavi sued Platinum Optics Technology (PTOT) for infringement in two civil suits in the Northern District of California. Thereafter, PTOT filed an IPR of the ‘369 patent. In the civil suits, the patent infringement claims were dismissed with prejudice. The PTAB subsequently issued a final written decision holding that PTOT failed to show the challenged claims in the ‘369 patent were unpatentable. PTOT appealed the decision to the Federal Circuit.
Discussion
A party does not need to establish Article III standing to appear before an administrative agency (such as the PTAB), as set forth in Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 279 (2016). However, standing is required when the party seeks review of an agency’s final decision in a federal court (Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1171–72 (Fed. Cir. 2017)). The party seeking judicial review bears the burden of proving standing (JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1220 (Fed. Cir. 2018)). As set forth in JTEKT “[o]ur cases establish that typically in order to demonstrate the requisite injury in an IPR appeal, the appellant/petitioner must show that it is engaged or will likely engage ‘in an activity that would give rise to a possible infringement suit,’…or has contractual rights that are affected by a determination of patent validity”.
PTOT asserts that it has standing based on potential infringement liability stemming from supplying its bandpass filters accused in one of the civil suits to parts integrators overseas and due to developing new models of bandpass filters. A declaration from the Deputy Director of Operations Management of PTOT was submitted to support the argument of injury in fact based on development of new bandpass filters.
Although Viavi dismissed the patent infringement suits, PTOT maintains that it has suffered an injury in fact based on its continued distribution of bandpass filters. In support of this argument, PTOT relies on a letter sent by Viavi sent prior to the first and second civil suits being filed, and PTOT’s expectation that Viavi would sue a third time. The CAFC pointed out that mere speculation about the possibility of another suit, without more, is insufficient to confer standing, particularly since the letters were sent prior to the first two civil actions which were subsequently dismissed.
Regarding the declaration submitted to the record, there was no explanation regarding detailed plans for development of new filters, nor any details regarding the particulars of the new filters or how they might relate to the ‘369 patent. The CAFC acknowledged that IPR petitioners do not need to concede infringement but need to at least establish that its development activities “will cause a substantial risk of infringement or will likely cause Viavi to assert a claim of infringement.” As such, PTOT has failed to establish an injury in fact to confer standing.
Takeaways
Although 35 U.S.C. §141(c)) statutorily authorizes appeal of an adverse IPR decision to the Court of Appeals for the Federal Circuit, the court requires Article III injury in fact to establish standing.
If the civil suit(s) are dismissed, an injury in fact needs to be established to appeal a PTAB decision to the CAFC.
A declaration can be sufficient to establish standing if it identifies specific, concrete plans to develop a product which may implicate a patent in suit.
Liberal construction for pro se litigants does not mean ignoring the pleading requirements under the FRCP
Sung-Hoon Kim | October 28, 2024
Case Name: MASSOUD HEIDARY v. AMAZON.COM, INC., RING, LLC.
Decided: October 15, 2024
Panel: LOURIE, PROST, and STARK, Circuit Judges.
Summary:
The Federal Circuit affirmed the district court’s decision to dismiss a patent infringement claim for improper venue and failure to state a claim by a pro se litigant against Amazon.com, Inc. and Ring, LLC. The Federal Circuit held that a liberal construction of pleadings by pro se litigants does not mean ignoring the pleading requirements under the FRCP.
Details:
Massoud Heidary (“Heidary”) appeals from a decision of the U.S. District Court for the District of Maryland dismissing his patent infringement claims for improper venue and failure to state a claim.
Heidary owns U.S. Patent No. 10,380,862 (“the ’862 patent”). This patent is directed to a “fire protection system” for suppressing fire spread by shutting of the fan in an HVAC system when a fire is detected by a smoke detector.
Claim 1 of the ’862 patent reads as follows:
1. A system for suppressing fire in a building, the system comprising:
a plurality of smoke detector units,
each smoke detector unit comprising:
a smoke detector,
a power supply,
an auxiliary power supply,
a camera connected to the smoke detector, and
a wireless transmission unit connected to the camera
a normally closed relay,
a fan controller connected to an HVAC unit,
a thermostat,
a display unit,
a micro-controller for display unit,
a wireless receiver for the micro-controller,
a telephone system,
wherein upon detection of a smoke by any one of the smoke detectors, the respective smoke detector passes a signal to a normally closed relay to open and to cut-off the power supply to the thermostat as well as fan controller thereby shutting off the fan unit; and activates the respective camera and the wireless transmission unit to transmit a signal to a wireless receiver connected to the micro-controller so as to display the location of the fire on the display unit connected to the micro-controller.
District Court
Heidary filed a patent infringement suit against Amazon.com, Inc. (“Amazon”) and Ring, LLC (“Ring”) on September 13, 2022. Heidary argued that Amazon sells two products that meet each and every limitation of claim 1 of the ’862 patent.
Ring filed a motion to dismiss Heidary’s complaint for improper venue under Rule 12(b)(3) and both Ring and Amazon filed a motion to dismiss for failure to state a claim under Rule 12(b)(6) of the FRCP.
The District Court granted Amazon and Ring’s motion and dismissed the complaint without prejudice.
CAFC
Heidary appealed the district court’s decision to dismiss the complaint for each of improper venue as to Ring and failure to state a claim.
Improper Venue
Under § 1400(b), “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides or where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b). It is the plaintiff’s burden to establish proper venue. Westech, 927 F.3d at 1382.
A “domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.” TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258, 262 (2017).
If the defendant does not reside in the relevant district, then venue is only proper if each of the following requirements are met: “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.” In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017).
The Federal Circuit agreed with the district court decision that Heidary failed to establish that venue is proper for Ring because as a Delaware entity, Ring does not reside in the District of Maryland for patent venue purposes.
In addition, the Federal Circuit found that Heidary pleaded no facts and made no showing that Ring has a physical place of business in the District of Maryland.
Direct Infringement
With regard to pro se litigants, the Federal Circuit held that pleadings must be “construe[d] . . . liberally” for pro se litigants. Bing, 959 F.3d at 618.
However, the Federal Circuit that this liberal construction does not mean “overlooking the pleading requirements under the Federal Rules of Civil Procedure.” Id. (citing Weidman v. Exxon Mobil Corp., 776 F.3d 214, 219 (4th Cir. 2015)).
Therefore, the Federal Circuit held that a pro se litigant still must plead “factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678 (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007)).
The Federal Circuit held that Heidary’s complaint merely lists what he contends are the limitations of the patent and asserts that Amazon makes, sells, uses, offers to sell, or imports in the U.S. products that meet each and every limitation of claim 1 of his patent.
The Federal Circuit held that a screenshot that merely describes one of the accused products and summarily concludes that the accused products infringe claim 1 is not sufficient.
In addition, the Federal Circuit held that there is an apparent disconnect between the patent and the accused products because while the ’862 patent recites a system with multiple components, the accused products consist of only smoke detector.
Therefore, the Federal Circuit agreed with the district court decision that Heidary failed to state a claim of direct infringement.
Takeaway:
- Plaintiff needs to sufficiently show that if the defendant does not reside in the relevant district, venue is only proper if each of the following requirements are met: “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.
- Even pro se litigants are not immune to the pleading requirements under the FRCP.
When to Apply Printed Matter Doctrine to Communications and Program Code
John Kong | May 15, 2024
Case Name: IOENGINE v. INGENICO
Date of Decision: May 3, 2024
Panel: : Lourie, Chen, and Stoll
Summary:
The Federal Circuit reversed the Board’s preclusion of patentable weight to the limitations involving “encrypted communications” and “program code” under the printed matter doctrine. The court determined that neither “encrypted communications” nor “program code” constitute “printed matter” because these terms do not recite the communicative content or informational content of the “encrypted communications” and “program code.”
Procedural History:
This is a consolidated appeal of several Final Written Decisions in several inter partes reviews (IPRs) in which the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (the Board) found numerous claims in U.S. Patent Nos. 8,539,047, 9,059,969, and 9,774,703 unpatentable. Most of the Board’s unpatentability determinations were affirmed. However, the Federal Circuit reversed the Board’s unpatentability of a subset of the claims due to an error in the Board’s application of the printed matter doctrine.
Decision:
Representative claims 4 and 7 of the ‘969 patent (and claims 1 and 2 from which they depend) are as follows:
1. A portable device configured to communicate with a terminal comprising a processor, an input component, an output component, a network communication interface, and a memory configured to store executable program code, including first program code which, when executed by the terminal processor, is configured to present an interactive user interface on the terminal output component, and second program code which, when executed by the terminal processor, is configured to provide a communications node on the terminal to facilitate communications to the portable device and to a communications network node through the terminal network communication interface, the portable device comprising:
(a) an external communication interface configured to enable the transmission of communications between the portable device and the terminal;
(b) a processor; and
(c) a memory having executable program code stored thereon, including:
(1) third program code which, when executed by the portable device processor, is configured to provide a communications node on the portable device to coordinate with the communications node on the terminal and establish a communications link between the portable device and the terminal, and facilitate communications to the terminal and to a communications network node through the terminal network communication interface; and
(2) fourth program code which is configured to be executed by the portable device processor in response to a communication received by the portable device resulting from user interaction with the interactive user interface;
wherein the portable device is configured to facilitate communications through the communication node on the terminal and the terminal network interface to a communications network node.
2. The portable device according to claim 1, wherein the fourth program code which, when executed by the portable device processor, is configured to cause a communication to be transmitted to the communication network node.
4. The portable device according to claim 2, wherein the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal.
7. The portable device according to claim 2, wherein the communication network node comprises a database and the communication caused to be transmitted to the communication network node facilitates the download of program code on the communication network node to the terminal.
The Board held that certain claims were anticipated by one of the cited references because no patentable weight was given to limitations that recite “encrypted communication” and “program code” (illustrative claims 4 and 7 reproduced above) under the printed matter doctrine.
The Federal Circuit reversed the Board’s determination of unpatentability of such claims because the Board erred in applying the printed matter doctrine to “encrypted communication” and “program code.”
Refresher on The Printed Matter Doctrine:
- “printed matter” is not patentable subject matter, and limitations that recite “printed matter” are not given patentable weight
- while this doctrine started out with literally “printed” material (information printed on paper), it has evolved over time to encompass “conveyance of information using any medium,” and “any information claimed for its communicative content”
- the printed matter doctrine prohibits patenting printed matter unless it is “functionally related” to its “substrate” (“substate” includes the structural elements of the claim)
- To determine the existence of a functional relationship, the court considers whether the printed matter merely informs people of the claimed information, or whether it instead interacts with the other elements of the claim to create a new functionality in a claimed device or to cause a specific action in a claimed process.
The Federal Circuit applied a two-step test to determine whether a limitation should be accorded patentable weight under the printed matter doctrine.
Step 1: determine whether the limitation in question is directed toward printed matter. The focus is on whether the limitation is claiming certain informational content or “matter claimed for what it communicates.”
Examples of “printed matter” provided by the court include: an FDA label providing dosage instructions for using a medical product; a label instructing a patient to take a drug with food; instructions on how to perform a DNA test; and numbers printed on a wristband.
Only if the limitation in question is determined to be “printed matter,” then Step 2 asks “whether the printed matter nevertheless should be given patentable weight … if the claimed informational content has a functional or structural relation to the substrate.”
Here, claims 4 and 7 are illustrative of the issue regarding application of the printed matter doctrine. Claim 4 depends from claim 2 which causes a communication to be transmitted from the portable device to a communication network node. Claim 4 recites “wherein the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal.” The Board held that the “encrypted communications” in claim 4 claimed only the communicative content (i.e., “printed matter”) whose transmission is being facilitated and there is “no functional relationship of the encrypted data to the communication carrying it.”
However, the Federal Circuit disagreed. The court clarified that “printed matter is matter that is claimed for its communicative content – i.e., the content specifically being communicated.”
The fact that there is a communication itself is not content; content is what the communication actually says. Nor is the form of a communication, such as whether the communication is encrypted, considered to be content. Printed matter encompasses what is communicated – the content or information being communicated – rather than the act of a communication itself.
With regard to claim 7, the Board likewise applied the printed matter doctrine to decline giving patentable weight to the “program code” limitation. Claim 7 also depends from claim 2 and recites that “the communication caused to be transmitted to the communication network node facilitates the download of program code on the communication network node to the [portable device’s] terminal.” The Board held that the “program code” is printed matter “because it claims the content of the information that is downloaded” and that downloaded code has no functional relationship with the portable device or the portable device’s terminal.
Again, the Federal Circuit disagreed. The court found that the “program code” is not being claimed for its communicative content. No informational content contained within the “program code” is being claimed. Nothing is recited about the contents of the claimed “program code.”
Takeaways:
For application of the printed matter doctrine to preclude patentable weight for a limitation containing the printed matter, the focus is on whether the claim reciting, or relies on, the communicative content of that “printed matter” – “the content specifically being communicated.” This case draws a clear distinction between “communication” or “program code” versus the communicative content or information being communicated or conveyed in that “communication” or “program code.”
Software Patents Demand Specific, Technologically Grounded Claims
Bo Xiao | May 3, 2024
AI Visualize, Inc. vs. Nuance Communications, Inc. and Mach7 Technologies, Inc.
Decided: April 4, 2024
Before: MOORE, Chief Judge, REYNA, and HUGHES, Circuit Judges.
Summary
The Federal Circuit upheld a district court decision that dismissed AI Visualize’s patent infringement lawsuit against Nuance Communications and Mach7 Technologies. The court agreed with the lower court’s finding that the patents claimed patent-ineligible subject matter under 35 U.S.C. § 101, focusing on abstract ideas without enough inventive concept to warrant patent protection.
Background
AI Visualize asserted that Nuance Communications and Mach7 Technologies had infringed on its patents related to the visualization of medical scans through a web-based portal. The patents at issue include four patents: U.S. Patent Nos. 8,701,167; 9,106,609; 9,438,667; and 10,930,397. All these patents share a common specification that describes systems and methods aimed at improving the access and visualization of volumetric medical data, such as that obtained from MRI and CT scans, through a web-based portal. The patented technology demonstrates a centralized system that processes medical scan data and visualizes it remotely, allowing efficient transmission of three-dimensional views over low-bandwidth connections, thus facilitating better diagnostic capabilities across diverse medical environments.
The central dispute revolved around whether the patented methods and systems constituted an abstract idea under the Alice two-step framework. Nuance and Mach7 argued that the patent claims failed to transform this abstract idea into a patent-eligible application due to lack of an inventive concept. The district court agreed, finding that the patents were directed to the basic concept of manipulating and displaying data, a task it considered routine and conventional in the field.
Claim 1 of the ‘609 patent, representing the first group of claims, was central to this dispute.
1. A system for viewing at a client device at a remote location a series of three-dimensional virtual views over the Internet of a volume visualization dataset contained on at least one centralized database comprising:
at least one transmitter for accepting volume visualization dataset from remote location and transmitting it securely to the centralized database;
at least one central data storage medium containing the volume visualization dataset;
a plurality of servers in communication with the at least one centralized database and capable of processing the volume visualization dataset to create virtual views based on client request;
a resource manager device for load balancing the plurality of servers;
a security device controlling the plurality of communications between a client device, and the server; including resource manager and central storage medium;
at least one physically secured site for housing the centralized database, plurality of servers, at least a resource manager, and at least a security device;
a web application adapted to satisfy a user’s request for the three-dimensional virtual views by: a) accepting at a remote location at least one user request for a series of virtual views of the volume visualization dataset, the series of views comprising a plurality of separate view frames, the remote location having a local data storage medium for storing frames of views of the volume visualization dataset, b) determining if any frame of the requested views of the volume visualization dataset is stored on the local data storage medium, c) transmitting from the remote location to at least one of the servers a request for any frame of the requested views not stored on the local data storage medium, d) at at least one of the servers, creating the requested frames of the requested views from the volume visualization dataset in the central storage medium, e) transmitting the created frames of the requested views from at least one of the servers to the client device, f) receiving the requested views from the at least one server, and displaying to the user at the remote location the requested series of three-dimensional virtual views of the volume visualization dataset by sequentially displaying frames transmitted from at least one of the servers along with any frames of the requested series of views stored on the local data storage medium.
Discussion
The Federal Circuit’s analysis focused on whether the district court was correct in its application of the Alice two-step test for patent eligibility. This two-step framework is critical for determining whether a patent’s claims involve patent-eligible subject matter under Section 101.
In the first step of the Alice analysis, the court examines whether the claims at issue are directed to an abstract idea. For AI Visualize’s patents, the Federal Circuit assessed whether the system and method for visualizing medical scans, as claimed, merely recited an abstract concept without applying or using it in a uniquely technological manner.
The court found that the patents were primarily directed to the abstract idea of manipulating and displaying data, specifically the storage, retrieval, and graphical representation of medical imaging data. The court referenced their conclusion in Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349 (Fed. Cir. 2023), noting that “converting information from one format to another . . . is an abstract idea.”
Having determined that the claims were directed to an abstract idea, the court then proceeded to step two of the Alice test, which involves determining whether the claim elements, either individually or as an ordered combination, add something significantly more to the abstract idea to transform the claim into patent-eligible subject matter. This “something more” must be an inventive concept that is not merely an instruction to implement or apply the abstract idea on a generic computer or using generic technology.
In reviewing AI Visualize’s claims, the court concluded that the methods described for processing and visualizing medical data did not involve an inventive concept sufficient to warrant patent protection. The claims were found to involve routine and conventional computer functions that are generic enough to be performed on any computer network. This included the creation of virtual views from medical data, transmitting these views over low-bandwidth networks, and enabling remote access via a web portal—none of which constituted a technological improvement over existing practices.
AI Visualize cites several sections of the specification to argue that creating virtual views offers a technical solution to a technical problem. This includes a section that explains how dynamic and static virtual views are formed by selecting related image frames from a volume visualization dataset. However, the court declined to consider details from the specification that are not specifically claimed.
Moreover, the court noted that the claimed invention did not solve a technical problem in an innovative way but rather applied a known solution (data manipulation and visualization) to a practice long prevalent in the field of computer systems.
The decision reaffirms the strict standards imposed by the Federal Circuit for patent eligibility under Section 101, emphasizing that a patent’s claims must do more than simply apply an abstract idea using conventional and well-understood applications. They must demonstrate a specific, inventive concept that enhances the technological process in a non-obvious way. This ruling highlights the challenges patent applicants face in securing protection for software-based innovations, particularly those that could be viewed as abstract ideas without clear, specific, and technologically rooted implementations.
Takeaway
- The decision reinforces the importance of demonstrating a specific, technologically rooted inventive concept in patent claims, particularly in fields involving software and data manipulation.
- Patents that broadly claim the performance of “abstract ideas” such as data retrieval and display without a clearly defined inventive mechanism are likely to face challenges under 35 U.S.C. § 101.
- It is essential to provide detailed technical descriptions in patent applications and include technological specificity in the patent claims to effectively present the unique contributions.
Tags: abstract idea > Data Manipulation > Mayo/Alice Test > patent eligibility
