CAFC Reverses Summary Judgment for Lack of Adequate Written Description

In ScriptPro, LLC v. Innovation Associates, the Federal Circuit recently addressed the sufficiency of a disclosure vis-a-vis the patent claims issued.

The dispute arose when ScriptPro, LLC and ScriptPro USA, Inc. (collectively, “ScriptPro”) sued Innovation Associates, Inc, alleging infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601. The district court granted summary judgment for Innovation Associates, holding that the asserted claims were invalid under 35 U.S.C. § 112(a) because the specification describes a machine containing “sensors” and the claims at issue describe a machine that does not need to have “sensors.” ScriptPro appealed and the Federal Circuit, per Judge Taranto (with Judges Bryson and Hughes) reversed, finding summary judgement inappropriate.

Generally speaking, the ’601 patent describes as the invention a “collating unit,” which works with an “automatic dispensing system” that automatically fills and labels pill bottles or other prescription containers. The collating unit has a number of storage positions (e.g., slots) into which containers are placed as they emerge from the dispensing system. The claims at issue do not require “sensors,” although other claims of the ’601 patent do require the use of a “plurality of sensors.”

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Head-Mounted Wearable Tech

The field of wearable technology became somewhat “sexy” with the much-anticipated release of Google Glass, a lightweight pair of glasses that incorporates computer elements, sensors and other components, all for $1,500.  One goal of this system is to allow media capture of images, video and sound that replicate the Glass wearer’s point of view.

In February 2012, Google filed a patent application to protect a system of capturing pictures through a wearable device by analyzing a user’s gaze. A user looks through the viewfinder, which can detect the field of vision of a user based on the direction of that user’s gaze. This gaze information can be processed to determine the exact field of view for a user, and this data can be used to adjust the image being captured by the device. This patent application, U.S. Patent Application No. 20130222638, just recently received a non-final Office Action on August 12, 2014.

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08.13.14 | inventions, Patent Issues, posts | Gene Quinn

Judge Michel Sounds Off About Alice v. CLS Bank

Recently, I had the opportunity to sit down with Paul Michel, who we in the patent community know as the former Chief Judge of the United States Court of Appeals for the Federal Circuit. When Judge Michel stepped down as Chief Judge and retired several years ago, he told me that he decided to retire so he could say what needed to be said on behalf of the patent system, something he felt he couldn’t do while a member of the federal judiciary. Judge Michel has been true to his promise. He keeps an active schedule.

Judge Michel has been generous with his time over the past several years, and I have interviewed him on a number of topics. Most recently we discussed the Supreme Court’s patent decisions during the October 2013 term, spending most of our discussion on Alice v. CLS Bank.

Below are the highlights of my interview with Judge Michel. If you would like to read the entire interview, which lasted for approximately one hour and spans over 9,000 words, please see: Judge Michel says Alice Decision ‘will create total chaos’.

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PTO & Alice – Things Have Really Changed

Despite what the United States Patent and Trademark Office suggested in their initial guidance to patent examiners, the Supreme Court’s decision in Alice v. CLS Bank has substantially changed the prosecution landscape for computer implemented inventions (i.e., software).

At least initially, the USPTO guidance to examiners seemed extremely patentee friendly. In a memo to the patent examining corps, the USPTO explained that the reason Alice’s claims were determined to be patent ineligible was because “the generically-recited computers in the claims add nothing of substance to the underlying abstract idea.” The USPTO then went on to point out to patent examiners that there is no new category of innovation that is patent ineligible, nor is there any new or special requirements for the eligibility of either software or business methods. Deputy Commissioner for Patent Examination Policy Andrew Hirshfeld explained: “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”

Hirshfeld also explained that there is now a slight change in the way applications are to be examined when claims involve abstract ideas. Essentially, it was said, Alice stands for the proposition that the same analysis should be used for all types of judicial exceptions and the same analysis should be used for all categories of invention. Still, even recognizing this shift in analysis, Hirshfeld told examiners: “[T]he basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” (emphasis added). Therefore, this initial guidance clearly took the position that nothing has changed from a substantive law point of view as far as the USPTO was concerned.

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Talking Patent Litigation with Ray Niro

Ray Niro is one of the most well-known patent litigators in the country, and the attorney who was famously dubbed “a patent troll” some 14 years ago, marking the first time the term was used. See The Man They Call the Patent Troll. The label “patent troll” doesn’t really fit Niro, if you ask me, because he hs been extraordinarily successful at proving that large corporations have infringed valid patents, sometimes on fundamentally important innovations. In fact, Niro has been a champion for independent inventors and small businesses who have created some of the most revolutionary inventions. WiFi is an example.

Over the past few years, I have gotten to know Ray…he has written several op-ed articles for IPWatchdog.com…and about once a year we catch up in an ‘on the record’ interview. I spoke with Niro at length on June 25, 2014. The complete transcript of my interview with him is available at A Conversation with Patent Defense Litigator Ray Niro.

What prompted this interview was seeing an announcement that he and his firm are now offering flat fee defense representation in patent litigation matters. Ray Niro defending a patent infringement case? I have to admit I didn’t realize he did defense work, so I wanted to talk to him about this new business model. We discuss this at length during the first segment of our conversation.

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07.28.14 | Patent Issues, Patent Litigation | Gene Quinn

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