(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- In this mixed precedential decision involving encoder / decoder communication systems, CAFC addresses a whole host of issues. Focusing here on 101 eligibility (found eligible below), CAFC distinguishes between "the optimization claims and the constellation claims" and begins with the former:
"Claim 17
recites a QAM symbol constellation that is “optimized” for
PD capacity to achieve a particular result: capacity at a
reduced signal-to-noise ratio compared to conventional
QAM signal constellations that maximize dmin . . . The claim itself does not recite how to
achieve a constellation “optimized” for PD capacity. Rather, this important and distinguishing element of the
claim is described in a result-oriented way . . . That is, the
claim recites a constellation optimized for PD capacity such
that it achieves a better capacity when compared to the prior art constellations that were maximized for dmin. Similar to the Supreme Court’s reasoning in O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853), we conclude that claim 17 is
ineligible because it is an abstract, result-oriented claim
directed to all ways of achieving a recited result . . . Applying the principles in Morse and ChargePoint
here, the breadth of claim 17 demonstrates that the claim
is directed to the abstract idea of “optimizing” a constellation for PD capacity . . . This broad claim language covers all manners and ways of optimizing a constellation
based on one of a limited number of known characteristics
of constellations—capacity—and one of a limited number
of known capacity measures—PD capacity."
Notably, though predictably, CAFC discounts related 102/103 analysis ("Constellation points to LG’s unsuccessful attempts to challenge the obviousness of Constellation’s patents both at trial and before the Patent Trial and
Appeal Board as evidence of an inventive concept . . . Constellation conflates the separate novelty and obviousness inquiries under 35 U.S.C. §§ 102
and 103, respectively, with the search for an inventive concept and fails to identify what in the claim provides the inventive concept other than the abstract idea itself."). Ergo, vacated and remanded on the optimization claims as to eligibility.
As for the constellation claims:
"Instead of claiming the abstract idea of “optimizing” a
constellation for capacity without limiting the optimization
to any meaningful process or any constraints, the constellation claims are directed to “specific constellations” that
the inventors developed using the techniques described in
the specifications . . . this distinction between
the result-oriented optimization claims and constellation
claims makes all the difference . . . Rather than broadly claiming all means of “optimizing,”
claim 21 is an application of the described process with parameters representing the described invention, including
that “the plurality of unique point locations are unequally
spaced,” “each have a location and a different label,” and
“the locations of at least two of the constellation points are
the same.” . . . Thus, claim 21 in
its entirety is directed to solving a particular technological
problem—overcoming capacity constraints to improve coding gains—using a particular technological solution—specific, non-uniform constellations with overlapping
constellation point locations."
Indeed, CAFC likes these constellation claims so much that it stops its analysis at Step 1 and affirms. So this is a nice precedential case with a side-by-side true positive and true negative on 101 eligibility.
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- This is an SEP case where defendant's acknowledgement that:
- “our device complies with the standard” and “if the patent is genuinely an SEP, then the FRAND obligations should be considered when calculating damages”
is not ALSO a stipulation by the defendant that
- “Because our device complies with the standard, we admit to infringement.”
Here, when the jury found noninfringement, the plaintiff sought JMOL, trying to argue that a) was really b), and so the jury couldn’t find noninfringement.
CAFC doesn’t agree. Relevant tidbits:
- “The jury instructions demonstrate that the stipulation was conditional and directed only to the damages context upon a finding of infringement.”
- “That TQ Delta and the ITU have such an agreement does not end the standard essentiality inquiry for infringement purposes; it merely reflects the existence of a contractual commitment to license those patents on FRAND terms”
- “CommScope also pointed to the jury verdict form, which left infringement of the ’008 patent for the jury to decide”; and
- Plaintiff's expert made some unfortunate statements: “[Plaintiff’s expert] . . . conceded on cross examination that he did not know whether the ITU makes any official or binding standard essentiality determination . . . Indeed, CommScope provided evidence that the VDSL2 standard itself provides that the ITU “takes no position” on whether a patent is essential to a standard . . . The jury therefore could have reasonably discounted TQ Delta’s conclusory testimony and found that it failed to establish that practicing the VDSL2 standard necessarily practices claim 14 . . . The jury was also free to find that compliance with the VDSL2 standard did not require “computing a phase shift,” as the claim requires.”
Ergo, jury verdict affirmed.
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- CAFC affirms invalidity for indefiniteness on claims directed to "methods for “linking traditional media to new
interactive media, such as that provided over the internet,”
and “identifying a work . . . without the need to modify the work.”" The language at issue recites:
"electronically determining an
identification of the electronic work based
on the extracted features, wherein the
identification is based on a non-exhaustive
search identifying a neighbor; "
Owner asserts that non-exhaustive search means a "search designed to locate a [near] neighbor
without comparing to all possible matches (i.e., all records
in the reference data set), even if the search does not locate
a [near] neighbor." In a previous IPR consideration, CAFC determined that the "written description did not “draw a clear line between
‘exhaustive’ and ‘non-exhaustive’ searching in terms of how
much data within a record a search must consider in order
to qualify as one or the other”" and, despite the change in standard here in a DCT case, reapplies the reasoning:
"The written description does
not contain the terms “exhaustive” or “non-exhaustive,” but
instead contrasts “linear search[es]” which “can be
computationally very expensive” with “[o]ther forms of
matching,” including “kd-trees, vantage point trees and
excluded middle vantage point forests” / / / / nothing in the written description suggests
that a skilled artisan would understand a “linear search”
to be interchangeable with a “non-exhaustive search” . . . [i]ndeed, the phrase “non-exhaustive search” appears
nowhere in the original patent application that led to the
’988 and ’464 patents, but rather was added to the claims
nine years after the filing."
Ergo, CAFC affirms as to the indefiniteness, affirms as to SJ noninfringement on some claims, but remands as to noninfringement SJ for other claims so the factfinder can further examine the target system ("With all reasonable inferences in Network-1’s favor, a
factfinder could find that the Siberia version as an overall
system was designed to have an execution time which
scaled in less than a proportional relationship to the size of
the reference set because the “tunable knobs” allowed the
system to adapt to a growing dataset size.").
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- CAFC affirms 101 invalidity on claims directed to "augmented-reality (AR)
devices or systems." Specifically:
- The first claim set relates to “mapping AR objects and rendering them on a device display”; and
- The second relates to “incorporating visual objects into a digital representation of an environment surrounding an AR device”
Regarding the first set of claims, despite reciting the “technical” step: “access an area tile map of the area of interest, the area tile map represented by a set of tile subareas that includes one or more tessellated tiles from a tessellated tile map” CAFC finds the claims to just be an effort to claim “receiving information about a location and displaying materials based on that information” since such “technical” terms are so broad and generic.
“The parties agreed that “tessellated tiles” just means “tiles fitted together to cover an area without gaps” . . . NantWorks’s purported specific steps all comprise determining a location on a map, providing relevant information based on that location, and displaying that information . . . Using tessellated tiles and tile subareas to pick an area of a map to display with objects in a view of interest is part of the abstract idea, which “cannot supply the inventive concept that renders the invention ‘significantly more’ than” that abstract idea.”
Regarding the second set of claims, CAFC finds these are just about “receiving information about a location and displaying materials based on that information.” Here, the claims mostly focus on ordering information, and CAFC deprecates their being directed to “a mode of organizing human activity, not a technological improvement to a technological problem.” Owner again tried to celebrate specific terms (e.g., “virtual element attribute”), but because these terms were each so broadly construed, CAFC again just finds them to be generic (“The “virtual element attribute” was construed according to its plain meaning, meaning a “virtual” “feature or quality” that is “part of something else” . . . This generic term does not add anything beyond the abstract steps in claim 1 of the ’051 patent.”).
In sum, as CAFC says: “[A] claim for a new abstract idea is still an abstract idea.”
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- A very brief reminder that "modest" license options often aren't sufficient in themselves to confer a case or controversy - here following 101 invalidation below ("We held that
there was no live case or controversy for the court to resolve
because Avid had not shown that the $50,000 reduction in
payment was anything more than a “token or arbitrary
sum introduced for the purpose of manufacturing a controversy” . . . we emphasized that the $50,000 sum
was “completely untethered to the value of any of the issues
on appeal” and could not “be fairly characterized as a reasonable estimate of a prospective damages award that
would take the place of an adjudicated damages award following the appeal” . . . Here, the $100 option to add the ’043 patent to the list
of licensed patents in the Settlement Agreement serves the
same purpose as the $50,000 payment reduction in Allflex: it is “a ‘side bet’ on the outcome of the appeal” . . . unsubstantiated speculation does not
convince us that a real and imminent injury or threat of
future injury exists to save this appeal from mootness."). If Owner genuinely intended to contest 101 invalidity here on appeal, then this is also a warning to craft settlement agreements carefully with that intention in mind (i.e., keep the case or controversy alive).
James Skelley is a solo practitioner based in Mountain View, California since 2015, focusing primarily upon technology transactions and intellectual property procurement. James' practice also serves as an "incubator" for new legal service technologies / methodologies and a "living example" of their application. To this end, James regularly partners with larger law firms and with his clients so as to improve the practice of intellectual property law.
- Utility / Design / PCT Patent Prosecution
- Open Source Diligence
- Technology Transactions (typically as a team)
- Litigation / Inter Partes Review Support (typically as a team)
- James tends NOT to handle low-volume trademark work (though referrals are available)
- USPTO - #59458 - 10/16/2006
- California - #257829 - 12/01/2008
- District Columbia - #1014986 - 08/05/2013
- James is available by email, 8x8 hangout, and in-person meetups in the Valley.
- Email is typically the best way to reach James.
- Machine Learning / Robotics
- Cryptograpy / Cryptocurrency / Smart Contracts
- Medical Device
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- Signal Processing (primarily wireless and compression)
- Quantum Physics (primarily semiconductor) / Electromagnetics (antennae, waveguides, etc.)
- Manufacturing / 3D Printing
- James tends NOT to handle pure chemistry applications (though referrals are available), however James HAS handled matters involving computational proteomics, cellular modeling, and diagnostic lab protocols
LawMux Bites are (very) short, one-page summaries of various legal concepts, cases, and technologies. As informal summaries, you certainly shouldn't rely upon them as legal advice / for business use, but they can help orient you if you're new to the subject matter.
