Yahoo filed suit against Facebook on March 12, 2012 alleging infringement of 10 patents. The patents fall into five categories (1)  online advertising, (2) user privacy, (3) customized content for users, (4) social networking, and (5) user to user communications through messaging.

The patents corresponding to each category include (1) U.S. Patent No. 6,907,556; 7,100,111; 7,373,599; 7,668,861 (2) 7,3736,590; 7,599,935 (3) 7,373,509;  5,983,227 (4) 7,747,648 and (5) 7,406,501.

The complaint alleges that Facebook copied technology developed by Yahoo. The complaint quotes Mark Zuckerberg as saying “The thing that’s been really surprising about the evolution of Facebook is–I think then and I think now–that if we didn’t do this someone else would have done it . . . Getting there first is not what it’s all about.” In other words, Yahoo asserts that Facebook admits that it copies the technology of others, because they were not first to develop the technology.

MySpace, Inc. v. Graphon Corp.

MySpace and Craigslist sued Graphon for declaratory judgement of non-infringement of U.S. Patent Nos. 6,324,538, 6,850,940, 7,028,034, and 7,269,591 (patents in suit). Graphon counterclaimed for patent infringement. The district court found the claims at issue in the patents in suit were invalid as either anticipated or obvious based upon a system called the Mother of all Bulletin Boards (MBB) and the Federal Circuit agreed.

User Manipulable Database Entries. The patents in suit were directed to a method and apparatus that allowed a user to create, modify, and search for a database record over a computer network. The inventors of the patents in suit claimed the prior systems, like Yahoo! directory, provided that the search engine operator rather than the users would categorize website listings. Under this system of categorization, the categorizer would miscategorize entries without user input. The inventors attempted to overcome this problem by allowing users to create and edit one or more database entries with their own text and graphics and then to create for each entry searchable categories that best matched the information in each entry.

Prior Art. Before the earliest priority date of the patents in suit, the Mother of all Bulletin Boards (MBB) was developed at the University of Colorado. The MBB allows the creation of an Internet catalogue that grew through user input without intervention from an administrator. The data in the MBB system was stored hierarchically as apposed to relationally (e.g. a relational database).

“Database” Includes Hierachical and Relational. The Federal Circuit found that the disputed claim term “database” included both hierachical and relational databases in the patents in suit. Therefore, the MBB’s use of a hieracrchical system met the claim term “database” and therefore resulted in the invalidity of the subject claims of the patents in suit. The court noted that the term “database” is generally understood to include different types of data organization systems, including hierarchical and relational systems. The court rejected Graphon’s argument that the written description and the prosecution history of the patents in suit indicate that the term database should be limited to relational database. If the term was so limited, the MBB would likely not invalid the patents in suit. The court found that the written description described features contained in multiple types of databases and therefore the term database could not be limited to relational databases.

Written Description & Reading in Limitations. The court explain that two principles on claim construction were complementary rather than competing. The first principle is that the written description is the best source for understanding the technical meaning of a claim. The second principle is that limitation from the written description cannot be read into the claims absent a clear intention by the patentee. The court explained that there are two limiting factors during claim construction–what was invented and what was claimed. A patentee can claim less than was invented, but never more than was invented. The court directed that we look to the entire patent to determine what was invented. Yet to determine what was claimed, the precise words of a claim are to be reviewed and the written description is used as an aid in understanding those words.

Address Patentable Subject Matter First? The dissent argued that before considering whether the patents in suit were invalid as obvious or anticipated, the court had a duty in the first case to determine whether the patents claimed patentable subject matter under section 101, even if the issue was not raised by the parties or the trial court. The majority rejected this approach. The majority noted the difficulty that courts had in defining the bounds of patentable subject matter. The majority stated that validity determinations under section 102, 103, 112 (anticipation, obviousness, and enablement) are the best approach to resolving most cases. These approaches avoid the search for universal truths that may be necessary when searching the bounds patentable subject matter under section 101. However, the court did not say that section 101 could never be raised first in a patent suit. Yet in first looking to sections 102, 103, and 112, the court said that questions of patent validity could be concluded in many cases without wading into the “murky morass that is section 101 jurisprudence.”

Typhoon Touch v. Dell Inc., et al.

Typhoon sued Dell, Lenovo, San Due Ventures, Toshiba, Fujitsu, Panasonic, Apple, and HTC alleging infringement of US Pat. Nos. 5,379,057 and 5,675,362, each patent directed to a portable computer with touch screen. The appeals court reviewed the district courts finding of non-infringement and invalidity.

Claim 12 of the ’057 patent is a representative claim, with terms in dispute emphasized:

A portable, keyboardless, computer comprising:

an input/output device for displaying inquiries on a touch-sensitive screen, said screen configured for entry of responses to said inquiries;

a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen;

a processor coupled to said memory and said in-put/output device for executing said data collection application; and

an application generator for generating said data collection application and for creating different functional libraries relating to said contents and said formats displayed on said screen, said applica-tion generator further comprising means for cross-referencing responses to said inquiries with possible responses from one of said libraries; and

a run-time utility operating in conjunction with said processor to execute said application and said libraries to facilitate data collection operations.

Must Perform v. Capable of Performing. Typhoon argued that the district court erred in construing the claim term “a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen.” The district court found that the memory must perform the recited function.  Typhoon argued the district court was wrong and that an infringing device need only be capable of performing the recited function.  In other words, as long as the memory is capable  of being configured to (e.g. programmed to) store the data collection application, even if the memory is not so configured, the element is satisfied.

The Federal Circuit reviewed prior cases and noted that  ”capable of” did not mean “might be later modified to perform that function.” It said that infringement may not be based on “a finding that an accused product is merely capable of being modified in a manner that infringes the claims of a patent.” Further the specification supported the district court’s construction.

Algorithm Adequately Disclosed. The district court found the term means for cross-referencing responses to said inquiries with possible responses from one of said libraries” was indefinite because the specification failed to adequately provide an algorithm for carrying out the means element.  The court noted that “a means-plus-function term is impermissibly indefinite under §112 ¶ 2 when the specification “simply describes the function to be performed, not the algorithm by which it is performed.”

The court provided that an algorithm in computer systems encompasses “in essence a series of instructions for the computer to follow” whether in mathematical formula, or a word description of the procedure, or shown in a flow chart. The court also observed that “[t]he preferred definition of ‘algorithm’ in the computer art is: ‘A fixed step-by-step procedure for accom-plishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps.’”

The court review the specification of the patents at issue and found that the following excerpt of the specifcation sufficiently disclosed an algorithm:

Cross-Referencing imports that, for each answer field, the entered response can be related to a library to determine if the response in the answer field is existent in the library. In other words, the answer information is cross-referenced against that specific library. If it is available in that library, then, corresponding to that library entry, an action is executed. For instance, the associated action can involve an overlay window that alerts the user of the fact of the match with the library entry, or dis-plays the contents of an information field stored in association with that entry in the memory.

The court affirmed on the issue of non-infringement and reversed on the issue of invalidity.

HTC Corp v. IPCom GMBH

HTC sue IPcom for declaratory judgement of non-infringement of IPCom’s Patents, including U.S. Pat. No. 6,879,830 and IPCom countersued for infringement. The ’830 patent is directed to the handover of a cellular phone from one base (tower) to another, as for example, when a person uses a cell phone in a car traveling between coverage areas.  The invention is intended to reduce the chance of service interruption during the handover.

Claim 1 provides:

A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:

storing link data for a link in a first base station,

holding in reserve for the link resources of the first base station, and

when the link is to be handed over to the sec-ond base station:

initially maintaining a storage of the link data in the first base station,

initially causing the resources of the first base station to remain held in reserve, and

at a later timepoint determined by a fixed pe-riod of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:

an arrangement for reactivating the link with the first base station if the handover is unsuc-cessful.

At summary judgement, HTC claimed that claims 1 and 18 (similar to claim 1), were invalid as indefinite because (1) they claimed both an apparatus and method steps and (2) the patent failed to disclose structure corresponding to the claimed means-plus-function element “arrangement for reactivating.”

Over Emphasis on Prosecution History. While the district court found the claims invalid because they claimed both apparatus and method steps, the Federal Circuit disagreed.  The Federal Circuit found the claim was an apparatus claim directed to a moble station (cellular phone) to be used within a network. In interpreting the claim language the Federal Circuit considered factors set out in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc): (1) the words of the claim, (2) the specification, (3) the prosecution history, and (4) extrinsic evidence. The Federal Circuit found that the district court put too much emphasis on the prosecution history. The patentee in response to an office action stated, “the cited section of [the prior art reference] clearly describes a process that is completely different from the claimed process. . .” (emphasis added). The Federal Circuit  noted that “claim language and the specification generally carry greater weight than the prosecution history.” The court found that the attorney’s signle reference to a “process” in response to an office action was insufficient when viewed in relation to the plain language of the claims and specification.

Sufficient Computer Structure. The Federal Circuit found that the district court erred in finding that the disclosure of a processor and transceiver was sufficient structure. The Federal Circuit noted that when considering whether their is sufficient support in the specification for a means-plus-function limitation, the disclosure of a general purpose computer or micro processor is not enough. Instead an algorithm must also be disclosed which the computer/processor executes. A patent must disclose ”a means for achieving a particular outcome, not merely the outcome itself.” Yet, the appellate court found HTC waived any argument regarding whether the ’830 patent disclosed a sufficient algorithm.

Further, the Federal Circuit rejected HTC’s argument that the specification needed to disclose the precise circuitry, components, or schematics or controllers would be employed. The court provided that level of hardware disclosure is not necessary, stating “as long as a sufficient algorithm describing how a general-purpose computer will perform the function is disclosed, reference to such general-purpose processors will suffice to overcome an indefiniteness challenge.”

Craig Thorner and Virtual Reality Feedback Co. sued Sony Corporation alleging  Sony’s game controllers with tactile feedback infringed U.S. Patent No. 6,422,941. On appeal Thorner argued that the district court erred in the construction of two term from claim 1.

Claim 1 provides in relevant part:

In a computer or video game system, apparatus for providing, in response to signals generated by said computer or video game system, a tactile sensation to a user of said computer or video game system, said apparatus comprising:

a flexible pad;
a plurality of actuators, attached to said pad, for selectively generating tactile sensation; and
a control circuit . . . for generating a control signal to control activation of said plurality of actuators . . . .

District Court Claim Construction. The district court construed the term (1) “flexible pad” to mean “capable of being noticeably flexed with ease” and (2) the term “attached to said pad” to mean attached to the outside of the pad.” The district court reasoned that the specification redefined the term attached by implication.

Claim Term Meaning. The Federal Circuit noted that words of a claim are given their ordinary and customary meaning (ordinary meaning rule) as understood by one skilled in the arts unless (1) the patentee acts as a lexicographer and provides his own definition, or (2) patentee disavows the full scope of a claim in the specification or during prosecution.

Term Use Only One Way in Spec Not Alone Limiting. The court held that the fact that the specification never used a word of a claim in reference to an embodiment that would cover the accused device–here the specification never used the word “attached” to refer to an actuator located on the interior of a controller–does not implicate either exception to the ordinary meaning rule. In other words the court said “[i]t is not enough that the patentee used the term when referencing an attachment to an outer surface in each embodiment.” The court noted that the plain meaning of the term attached included both internal and external attachment. Therefore, the court concluded that the district erred in restricting the term “attached” to only external attachment.

High Standard for Implied Redefinition. Further the court stated that for a term to be impliedly redefined, the redefinition must be be so clear that it equates to an explicit redefinition. The court stated that referring to two terms as alternatives or “disclosing embodiments that all use the term the same way” is not enough to redefine a claim term. The court said “A person of ordinary skill in the art would have to read the specification and conclude that the applicant has clearly disavowed claim scope or acted as its own lexicographer.”

The court also concluded that the district court erred in limiting the term “flexible pad” to those “capable of being noticeably flexed with ease.”

Ultramercial v. Hulu

Ultramercial sued Hulu, YouTube, and Wildtangent Inc. alleging each infringed U.S. Patent 7,346,545. Hulu and YouTube were dismissed from the case. The trial court granted WildTangent’s motion to dismiss WildTangent from the case on the basis that the ’545 patent did not claim patent-eligible subject matter. The Federal Circuit reversed finding the claimed method of monetizing copyrighted content on the Internet was a patent-eligible process.

The ’545 patent claims a method for distributing copyrighted products over the Internet where a consumer receives a copyrighted product for free after viewing an advertisement. The advertiser pays for the copyrighted content. Claim 1 of the ’545 patent provides:

A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and
an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

Patent-Eligible Subject Matter. Section 101 of the Patent Act provides that any new process, machine, article of manufacture, and composition of matter is patent eligible subject matter. Three areas excluded from patent eligibility are laws of nature, physical phenomena, and abstract ideas. The Supreme Court has previously stated that a process under section 101 can include a business method. Further, while abstract principles are not patentable, an application of an abstract idea may be patentable.

Monetizing Content via Internet was a “Process” under the Statute. The Federal Circuit court found that the claimed method of monetizing and distributing copyrighted products over the Internet was a “process” under the patent statute and was therefore patent-eligible subject matter. The court turned its focus on whether the claimed subject matter was not patent eligible as being and abstract idea.

The Claimed Process was Not An Abstract Idea. The court stated, “[I]nventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.” The court found that the ’545 patent sought to fix the problem of declining click-through rates of banner advertising by introducing a method of distribution that caused consumers to view advertisements before granting access to the desired media such as video.

The court found that the claimed invention of the ’545 patent was an application of an idea and not an abstract idea itself. The court termed the abstract idea as the idea that advertising can be used as a form of currency. Then the court noted that the patent disclosed a practical application of this idea. The court supported its conclusion by noting that the steps of the method are “likely to require intricate and complex computer programming” and that certain steps “require specific application to the Internet and a cyber-market environment” such as “providing said media products for sale on an Internet website.” It further noted that the invention would involve a “extensive computer interface.”

The court noted that the fact that the ’545 patent did not specify a particular way (e.g. FTP, email, streaming) for delivering the media content to the consumer did not render the claimed subject matter impermissibly abstract. In addition, as the claim provided a controlled interaction via a website with a customer, the claim did not comprise only purely mental steps.

No Bright Line Rule. However, the court refused to specify a minimum level of programming complexity required so that a computer-implemented method is patent-eligible. Further, the court cautioned that not every use of an Internet website in a method will be sufficient alone to find that method patent-eligible.

Privacash, Inc. v. Am. Express Co.

Privacash sued AMEX alleging that AMEX gift cards infringed U.S. Patent 7,328,181. The ’181 provides a system with the objective of providing an anonymous and untraceable means for transacting purchases over the internet.

AMEX cards are activated when purchased and a usable until the value of the card is exhausted. AMEX will deactivate a card if it is reported lost or stolen. If reported stolen, a replacement gift card will be issued with the value remaining on the deactivated card.

Claim 1 of the ’181 patent provides :

1. A method of transacting a purchase, comprising:

distributing a plurality of unfunded purchase cards from a purchase card provider to a plurality of purchase card outlets, wherein each of the purchase cards is a bearer instrument having an associated account number issued by a major branded credit card organization, an expiration date and a non-personalized cardholder name selected by the purchase card provider printed thereon, wherein the purchase card does not include information identifying the specific perspective cardholder, wherein information associated with each of the purchase card accounts is maintained in a software implemented application operated by the purchase card provider;

issuing a purchase card to a cardholder at the a purchase card outlet;

contacting the purchase card provider to fund and activate the purchase card account of specific purchase card issued with a software implemented application or via the telephone; and

transacting a cardholder purchase at any one of a number of retailers not associated with the purchase card outlet which accepts credit cards of the major branded credit card organization, wherein the cardholder presents the purchase card and the retailer contacts the purchase card provider over a network connection to interface with the software implemented application transmitting the purchase amount and the purchase card account number without requiring the retailer to collect and transmit personalized card holder identifying information, to verify using the software implemented retail application that the  purchase card is unexpired and that the purchase amount does not exceed the cardholder’s funding limit, whereupon the purchase card account information will be debited by the amount of the purchase and the account of the retailer will be electronically credited completing the purchase transaction.

A cancelable card is not a bearer instrument. The Federal Circuit  agreed with the district court that the AMEX card was not a bearer instrument or bearer card because it was capable of being cancelled or deactivated. Therefore the AMEX card was not  “as good as cash” and may not be  “used up to the limit available on the card by anyone in possession of the card” as provided in the ’181 patent description.

The court noted that the purpose of the card in the ’181 patent was to ensure anonymity of a purchase. However because the AMEX card allowed the true owner of the AMEX card to deactivate the card and get a replacement for the value remaining, the AMEX card did not provide anonymity, which was the purpose of the system of the ’181 patent.

Inventor Odom sued Microsoft alleging that Microsoft infringed Odom’s U.S. Patent 7,363,592 directed to a method for manipulating groups of tools in toolbars in a computer software application. The district court found certain claims the of ’592 patent invalid as obvious in view of U.S. Patent 6,057,836, stating that Odom had simply “cobbled together various pieces of what was already out there in a manner . . . that would have been obvious to anyone skilled in the art at the time of the invention.”  On appeal the Federal Circuit affirmed.

Claim 8 is a representative claim of the ’592 patent:

8. A computer-implemented method comprising:

displaying a toolbar comprising at least one first tool group,

wherein said first tool group comprises at least one user-selectable tool,

wherein visibly designating said first tool group by at least one user-manipulatable divider located near at least one end of said first tool group,

wherein said first tool group divider is visually distinct from a said tool and from any visible means for directly manipulating said toolbar in its entirety, and

wherein said tool group divider is user-manipulatable for altering the condition of said tool group;

selecting said first tool group;

interactively tracking user indication of move-ment related to said first tool group until receiv-ing user indication to cease tracking; and

altering the condition of at least one tool group on said toolbar based upon said tracked user indica-tions.

Prior Art. The prior art ’836 patent discloses “customizing a composite toolbar via direct on-screen manipulation by resizing the composite toolbar and by rearranging sections within a composite toolbar.” The ’836 patent discloses toolbars that include “groups of command buttons. ” The toolbars can be modified by adding or deleting buttons or customizing buttons according to user preferences. The prior art patent further teaches that a toolbar can be collapsed or expended to allow the user to view as many or as few buttons as the user desires.

Manipulation on a Single Toolbar is Not New. The Federal Circuit found that the concepts claimed in the ’592 patent were the same as those the ’836 patent except that in the ’529 patent the groups of tools were on a single toolbar. The court found that this was an insignificant advance over the  prior art ’836 patent. The court noted that the prior art ’826 patent explained, in the words of the court, “that although its invention has been described in the context of a web browser, employing collections of buttons and toolbars that are relevant to that application, a person of skill in the art would appreciate that the invention can be adopted to other application where a different arrangement or combination of tools may be desired.” Further the court found that it was only a trivial change for a person skilled in the art to add an indicator that could indicate any altered condition of the tool group, as was claimed in the ’592 patent.

In this case the court considered the scope of patentable subject matter under 35 USC 101. While the patents-in-suit are directed toward methods of medical treatment, the scope of patent able subject matter under section 101 is often considered in computer science and business method related patents. This case raises the issue of what constitutes a purely mental process and further what constitutes a insignificant post-solution activity.

Classen sued BioGen, GlaxoSmithKline, Merck, and Kaiser Permanente for infringement of US Patent Nos. 6,638,739, 6,420,139, and 5,723,283 (“Classen Patents”) each titled, “Method and Composition for an Early Vaccine to Protect Against Both Common Infectious Diseases and Chronic Immune Mediated Disorders or their Sequelae.” On remand from the Supreme Court, in view of Bilski v. Kappos, 130 S. Ct. 3218 (2010), the Federal Circuit considered whether the claims of the Classen Patents were in valid under 35 USC 101 as being directed to an abstract idea. The Federal Circuit found that the claimed subject matter two ( the ’139 and ’739 patents) of the three Classen Patents were within the scope of section 101.

The court summarized that the Classen patents state “Dr. Classen’s thesis that the schedule of infant immunization for infectious diseases can affect the later occurrence of chronic immune-mediated disorders such as diabetes, asthma, hay fever, cancer, multiple sclerosis, and schizophrenia, and that immunization should be conducted on the schedule that presents the lowest risk with respect to such disorders. ”

Patents-in-Suit. Claim 1 of the ’739 patent, representative of the ’139 and ’739 patents, provides:

1. A method of immunizing a mammalian subject which comprises:

(I) screening a plurality of immunization schedules, by

(a) identifying a first group of mammals and at least a second group of mammals, said mammals being of the same species, the first group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a first screened immunization schedule, and the second group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a second screened immunization schedule, each group of mammals having been immunized according to a different immunization schedule, and

(b) comparing the effectiveness of said first and second screened immunization schedules in protecting against or inducing a chronic immune-mediated disorder in said first and second groups, as a result of which one of said screened immunization schedules may be identified as a lower risk screened immunization schedule and the other of said screened schedules as a higher risk screened immunization schedule with regard to the risk of developing said chronic immune mediated disorder(s),

(II) immunizing said subject according to a subject immunization schedule, according to which at least one of said infectious disease-causing organism-associated immunogens of said lower risk schedule is administered in accordance with said lower risk screened immunization schedule, which administration is associated with a lower risk of development of said chronic immune-mediated disorder(s) than when said immunogen was administered according to said higher risk screened immunization schedule.

Claim 1 of the ’283 patent provides: A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment  group of mammals, relative to a control group of mammals, which comprises immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group.

Majority. The majority noted, quoting Diamond v. Diehr, 450 U.S. 175, 187 (1981), that “[i]t is now common place that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” The court found that the ’139 and ’739 patents included a physical step of immunization, and therefore was not a purely mental method. The court found with the immunization step the claims were directed to a specific tangible application under Bilski v. Kappos.  In upholding the validity of the claims of the ’139 and ’739 patents, the court did not find that the immunization step was an “insignificant postsolution activity” under Diehr.

However, the court characterized claim 1 of the ’283 patent as covering the idea of collecting and comparing known information.  The court characterized the “immunizing” in the ’283 patent as referring to the gathering of published data and therefore not a further act to set apart the claims from the abstract principle that a variation in immunization schedules may have consequences for certain diseases. As a result, the court found the claims of the ’283 patent were invalid under section 101 as being directed to an abstract idea.

Additional View of Chief Judge Rader. Judge Rader wrote separately to comment on “significant unintended implications” of the patent eligibility doctrine under section 101. One implication is that creative claim drafting can be employed to avoid subject matter exclusions under section 101, such as the Beauregard claim for “computer programs embodied in a tangible medium” rather than computer programs themselves to avoid being rejected as a mathematical algorithm. Another implication was that subject matter limitations increase the expense and difficulty in obtaining a patent and may frustrate innovation and drive research funding to other “more hospitable locations” (countries). Judge Rader seems to encourage litigants to focus on novelty and adequate disclosure rather than whether the subject matter should be excluded under section 101 from patentability.

Dissent. The dissent would have held all the claims in question invalid as an unpatentable abstract idea. The dissent asserted that there was no difference, for section 101 purposes, between the claims of th2 ’283 patent and the claims of the ’139 and ’739 patents, all of which require two steps according to the dissent: “(1) compare the incidence of chronic immune mediated disease in two groups of mammals who were immunized according to different schedules and then (2) immunize a mammal according to the lower risk schedule.” The dissent stated that the ’283 patent claims “the scientific method as applied to the field of immunization.” The dissent said the ” claims do nothing  more than suggest that two immunized groups be compared to determine which one is better” and therefore are “exactly the type of ‘abstract intellectual concepts that ‘are the basic tools of scientific and technological work.’  (citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). The dissent provides one absurd example of liability under the patents-in-suit,  “[a] patient might be liable for joint infringement  by receiving an immunization, and then wondering why their friend got sick when he got the same immunization.”

Conclusion. This case is favorable for clients seeking patent coverage in computer science, business methods, and related fields as it takes broad view of patentable  subject matter.

Innovention Toys, LLC v. MGA Entm’t, Inc.

Innovation sued MGA, Wal-Mart, and Toys “R” Us (collectively, MGA) for infringement of Innovation’s U.S. Patent No. 7,264,242. The ’242 patent is directed to a light-reflecting physical board game. MGA’s accused game is Laser Battle, a physical board game for playing a chess-like strategy game. One issue on appeal was whether certain prior art articles regarding chess-like computer games were analogous art for determining whether the claims directed to a physical board game of the ’242 patent were invalid as obvious. The district court found the articles were non-analogous art. The appeals court disagreed and vacated with remand.

The ’242 Patent. The ’242 patent discloses a game that includes “a chess-styled playing surface, laser sources positioned to project light beams over the playing surface when ‘fired,’ mirrored and non-mirrored playing pieces used to direct the lasers’ beams, and non-mirrored ‘key playing pieces’ equivalent to the king pieces in chess.” Slip op at 2.  Representative claim 31 of the patent provides:

A board game for two opposing players or teams of players comprising:

a game board, movable playing pieces having at least one mirrored surface, movable key playing pieces having no mirrored surfaces, and a laser source,

wherein alternate turns are taken to move playing pieces for the purpose of deflecting laser beams, so as to illuminate the key playing piece of the opponent.

Prior Art At Issue. The prior art at issue included articles on Laser Chess and Advanced Laser Chess published in Compute! Both articles disclosed “chess-like computer games with virtual lasers and mirrored and non-mirrored pieces which are moved or rotted by players during alternating turns on a virtual, chess-like playing board.” Slip Op. at 4.

Analogous Art and Non-Analogous Art. A reference is prior art for the purposes of determining whether an invention is obvious if it is analogous to the claimed invention. Slip op at 12. The appeals court stated, “Two separate tests define the scope of analogous art:  (1) whether the art is from the  same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 12-13. It further provided, “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 13.

Argument. Innovation argued that Compute! articles were non-analogous art because the invention dealt with a non-virtual, 3-D, laser-based board game. Innovation argued the invention involved mechanical engineering and not computer programming.

Court’s ruling. The appeals court rejected this view finding the the district court erred in holding the Compute! articles on a electronic, laser based strategy game were non-analogous because even if the Compute! articles were not in the same field of endeavor, they were reasonably pertinent to the problem facing the inventors of a new physical laser based strategy game. The court said that, “the ’242 patent and the Laser Chess references are directed to the same purpose: detailing the specific game elements comprising a chess-like, laser-based strategy game.” As a result, the case was remanded to the district court to consider the Compute! articles in addressing MGA’s claim that the patent was invalid as obvious.