Written Description Compliance Requires Lack of Different Inventions Achieved by Claimed and Disclosed Ranges
Fumika Ogawa | April 19, 2024
RAI STRATEGIC HOLDINGS, INC. v. PHILIP MORRIS PRODUCTS S.A
Decided: February 9, 2024
Chen, Stoll, and Cunningham. Opinion by Stoll.
Summary
The CAFC addressed a question of written description compliance where a numerical range set forth in a patent claim is narrower than and encompassed by a disclosed range in the specification. The CAFC found that the written description requirement is met under fact-specific circumstances where substantial evidence indicates that a skilled artisan would see no different inventions resulting from the claimed range and the disclosed range.
Details
RAI appealed a final written decision by the Patent Trial and Appeal Board in a post-grant review (PGR) finding certain claims of RAI’s U.S. Patent No. 10,492,542 (“the ’542 patent”) unpatentable. RAI challenged, among other issues,[1] the Board’s finding that claims 10 and 27 of the ’542 patent lack adequate written description under 35 U.S.C. § 112.
The ’542 patent relates to electrically powered “smoking articles” which, as in e-cigarettes, use an electrical heating element to heat tobacco or like substance to form an inhalable vapor or aerosol. Claims 10 and 27—added by preliminary amendment in the underlying application which is a continuation from a former application having no such claims in the original filing—specify that the heating element has a certain range of length, which is not disclosed verbatim in the specification.
The written description requirement is a question of fact subject to substantial evidence review. The CAFC prefaced the written description analysis with the general threshold for compliance: the disclosure must “reasonably convey[ to a skilled artisan] that the inventor had possession of the claimed subject matter as of the filing date.” The CAFC then discussed precedents finding written description support, or lack thereof, for claimed ranges that are narrower than ranges described in specifications.
Courts finding adequate written description: Wertheim, Blaser, Kolmes[2]
In Wertheim, the parameter at issue was “solids content of the concentrated coffee extract.” The claimed range “between 35% and 60%” was found adequately supported by the specification disclosing a broader range of “25% to 60%” along with specific examples where the parameter was either “36% or 50%.” The Wertheim court held that presence of a clear indication that “the broad described range pertains to a different invention than the narrower (and subsumed) claimed range” (emphasis added) would negate adequacy of written description, whereas absence of such indication would support written description compliance.
Two subsequent courts followed Wertheim. InBlaser, the claimed range of temperature for heating a reaction blend for acylation, “80º to 200º C.” was found adequately supported by the disclosure of a broader range of “between 60º and 200º C.” In Kolmes, the claimed range of wrapping rate for cut-resistant yarn, “8–12 turns per inch,” was found adequately supported by the disclosure of a broader range of “4–12 turns per inch, with 8 turns per inch being preferred.”
Courts finding no adequate written description: Baird, Indivior[3]
Baird involved a patent application which included claims copied from an issued patent for an interference proceeding, i.e., the applicant was not the original author of the copied claims. The parameter at issue was a quench bath temperature in production of stretch-orienting polypropylene. The claimed range was “from about 40[º F] to … about 60 [º F].” While this range was explained in the issued patent as having certain criticality, the applicant’s specification disclosed a broader range of “between 32º F and 176º F,” while silent on the narrower range. Finding lack of adequate support, the Baird court reasoned that the copied claim pertained to a “different” invention from that disclosed in the specification.
In Indivior, the parameter at issue was a concentration of certain polymers in thin film formulation. Disputed claims recited two numerical ranges: (A) “about 40 wt % to about 60 wt %” and (B) “about 48.2 wt % to about 58.6 wt %.” The specification disclosed broader ranges—or lower bounds without express upper bounds—of “at least 25” and “at least 50,” as well as specific instances of “48.2” and “58.6” gleaned from data tables. The specification also stated that the parameter may be at “any desired level.” The claimed range (A) failed the written description requirement because the specification did not literally recite the range or the endpoints, while the “any desired level” statement obscured the scope of the invention. The claimed range (B) also failed the written description requirement because, although the endpoints were disclosed at least implicitly, it was unclear that the specification described the range bound by these endpoints.
Application to Claims 10 and 27 of the ’542 patent
After summarizing the precedents, the CAFC turned to the claims at issue. Claims 10 and 27 both recite that a heating member used in the smoking device has “a length of about 75% to about 85% of a length of the disposable aerosol forming substance.” The specification describes four progressively narrow, nested ranges for the parameter: “about 75% to about 125%,” “about 80% to about 120%,” “about 85% to about 115%,” and “about 90% to about 110%.” The Board’s finding of no written description was driven by the fact that the upper endpoint “85%” of the claimed range does not have a corresponding upper endpoint in any of the disclosed ranges.
The CAFC found that the written description requirement is met. To reach the conclusion, the CAFC centered its analysis on “different invention” test set forth in Wertheim, restating that “[t]he specification need not expressly recite the claimed range to provide written description support.” The factual inquiry looked to specific factors, including:
- Express disclosure in the specification: Although the claimed range itself is not literally disclosed, both of its endpoints are identified as part of the disclosed ranges.
- Predictability and complexity of the invention: Since the smoking device invention relates to a relatively predictable, electro-mechanical field, and the claim language is simple, the level of clarity or details required to satisfy the written description requirement is low.
- Lack of indication that the claimed parameter affects the invention: The specification nowhere indicates that “operability, effectiveness, or any other parameter” of the invention is impacted by changing the claimed parameter.
Based thereon, the CAFC found no “different invention” arising from the claimed range than that disclosed in the specification.
The CAFC distinguished Indivior and Baird relied upon by the Board. Unlike Indivior, the ’542 patent discloses the endpoints and contains no inconsistent statements regarding the range (e.g., that “any desired level” may work); plus the predictability of the electro-mechanical invention is higher than the chemical invention set forth in the Indivior claims. Also, unlike Baird where the claimed range was shown to have criticality over the boarder disclosed range, no evidence was presented in the present case that the broader disclosed range operates differently than the claimed range.
Additionally, the CAFC dismissed an expert testimony offered by Phillip Morris pointing to different center points of the disclosed range (100%) and the claimed range (80%). The expert evidence was not enough to overcome the intrinsic evidence and the case law supporting adequacy of the written description.
Takeaways
This case exemplifies one way in which a court may apply case-by-case analysis of written description compliance. Where the claimed range is narrower than and subsumed in the disclosed range, the “different invention” test may not only examine the express disclosure and the nature of the technology, but also may consider whether varying the parameter inside and outside the claimed range would make any difference.
While the test could be useful in establishing written description support—given that a patent specification typically describes numerical ranges in connection with one general inventive concept—caution should be used in asserting lack of different inventions emanating from different numerical ranges; such admission might be used by an opponent to support obviousness of the claimed range. The dilemma may be avoided, for example, by drafting an original disclosure to describe both commonalities and differences across broad and narrow ranges as well as specific values of a key parameter.
[1] RAI’s other argument challenged the Board’s obviousness finding of other claims of the ’542 patent, which was affirmed by the CAFC on appeal.
[2] In re Wertheim,541 F.2d 257 (C.C.P.A. 1976), In re Blaser, 556 F.2d 534 (C.C.P.A. 1977), and Kolmes v. World Fibers Corp., 107 F.3d 1534 (Fed. Cir. 1997).
[3] In re Baird,348 F.2d 974 (C.C.P.A. 1965), and Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., 18 F.4th 1323 (Fed. Cir. 2021).
Depends On How You Slice It: CAFC reverses PTAB on Weber v. Provisur IPR ruling
Michael Caridi | April 5, 2024
Weber, Inc. v. Provisur Tech. Inc.
Decided: February 8, 2024
Before Reyna, Hughes and Stark. Authored by Reyna
Summary: The Court reversed the PTAB’s finding that Weber’s instruction manuals did not qualify as printed publications under 35 USC §102. The Court also reversed key claim construction taken by the PTAB in upholding Provisur’s patents.
Background:
Provisur sued Weber for patent infringement on two patents, USP 10,639,812 (“’812 patent”) and 10,625,436 (“’436 patent”) relate to high-speed mechanical slicers used in food-processing plants. Weber countered by filing IPR proceedings against both patents at the USPTO Patent Trial and Appeal Board (PTAB). The PTAB found both the ‘812 and the ‘436 patentable. During the PTAB proceeding, Weber had attempted to use their own instruction manual for the slicer they sold as a prior art publication under 35 U.S.C. §102. The Board found that the instruction manual was not a “printed publication” under §102 on the basis that the manuals were controlled in their circulation to only customers or potential customers by a strict copyright and confidentiality clause.
Further, the PTAB had construed three terms from the slicer components, (1) the “food article loading apparatus”; (2) the “food article feed apparatus”; and (3) the “food article stop gate” in a manner that maintained the patents’ validity while excluding the disclosures in Weber’s manuals.
Weber appealed the Board’s finding that their instruction manual was not a printed publication under §102 and the claim construction of the three terms.
Decision:
(a) Weber’s Instruction Manual as a “Printed Publication”
The Board had relied upon the CAFC’s prior holding in Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009), in finding that Weber’s manuals were not “printed publications.” In Cordis, the references in question were two academic monographs describing an inventor’s work that were only distributed to a handful colleagues and two companies potentially interested in the technology.
The CAFC was quick to distinguish the current case from Cordis. First, the CAFC noted that the statutory phrase “printed publication” from § 102 has been defined to mean a reference that was “sufficiently accessible to the public interested in the art,” citing In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004) and that “public accessibility” was based on the relevant public being able to “locate the reference by reasonable diligence,” citing Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1376 (Fed. Cir. 2021). Next, the Court found that Weber’s operating manuals were created for dissemination to the interested public to provide instructions for Weber’s slicer. The Court stated the Weber manuals were in “stark contrast” to the confidential monographs in Cordis which were subject to “academic confidentiality norms.” The Court went on to describe that the evidence provided by employees of Weber, stating that the manuals were readily provided to potential buyers, clearly indicated that the manuals did in fact qualify as “printed publications” under §102.
The Court also found the Board’s reliance on the copyright and confidentiality of Weber’s manuals to be misplaced. The Board had keyed in on the copyright language restricting the reproduction or transfer of the manuals and Weber’s “terms and conditions” stating that documents related to a sale of a slicer “remain the property of” Weber. The CAFC was not convinced that these statements made the manuals confidential to the point of not being a “printed publication”, stating:
Weber’s assertion of copyright ownership does not negate its own ability to make the reference publicly accessible. Cf. Correge v. Murphy, 705 F.2d 1326, 1328–30 (Fed. Cir. 1983) (“A mere assertion of ownership cannot convert what was in fact a public disclosure and offer to sell to numerous potential customers into a non-disclosure.”). The intellectual property rights clause from Weber’s terms and conditions covering sales, likewise, has no dispositive bearing on Weber’s public dissemination of operating manuals to owners after a sale has been consummated.
The Court reversed the PTAB’s finding that Weber’s instruction manuals were not “printed publications” within the meaning of 35 U.S.C. §102.
(b) Claim Construction – “disposed over” and “stop gate”
The Court next addressed the PTAB’s claim construction as to the term “disposed over” as used in the claims. The Board had construed the term “disposed over” to require that the “feed apparatus and its conveyor belts and grippers are ‘positioned above and in vertical and lateral alignment with’ the food article loading apparatus and its lift tray assembly.” The Court rejected this interpretation asserting that it reads elements into the claim which are not present. The Court noted that the specification and prosecution history did not impart any limited meaning to the term “disposed over” and therefore there was no basis for including the additional aspect that the feed apparatus and loading apparatus were in alignment. Citing Cyntec Co. v. Chilisin Elecs. Corp., 84 F.4th 979, 986 (Fed. Cir. 2023), the Court held that “Had the patent drafter intended to limit the claims” to address the alignment of the conveyor belts and lift tray assembly between the apparatuses, “narrower language could have been used in the claim.”
Running Provisur through the figurative slicer, the Court noted that Provisur did not dispute that Weber’s manuals satisfy the limitation under Weber’s proposed construction (i.e. that alignment is not required between the feed and loading apparatus). Hence, they concluded that their review of the Board’s claim construction is dispositive of the issue and that the Weber manuals do disclose the “disposed over” limitation.
As to the “stop gate” term in the claims, Weber asserted that the Board erred in determining that the “product bed conveyer” disclosed in Weber’s operating manuals (as shown in Figures 10 and 227 thereof), does not disclose the “stop gate” limitation.
After analyzing the figures, the Court only commented that given these disclosures of the Weber manuals there was no substantial evidentiary support for the Board’s finding. Thus, the Court again reversed on the “stop gate” determinations.
Take aways:
- The Court clarifies the meaning of “printed publication” in 35 U.S.C. §102 by further defining the line between documents primarily intended to be confidential, such as the monographs in Cordis, and those primarily intended to be disseminated to the interested public, such as Weber’s manuals.
- By reversing the PTAB’s claim interpretation that had read a required alignment of parts into the claim where no such requirement was present, the Court also reiterates the standing law of claim construction that claim terms have their ordinary meaning unless intrinsic evidence demonstrates otherwise.
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
Andrew Melick | 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
Sung-Hoon Kim | 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
