Blockchain & Business: Improving Your Companies’ Future

By Pablo N. Garcia Rodriguez As a second post on this blog series regarding Blockchain, Stein IP introduces “Blockchain & Business: Improving Your Companies’ Future.” Considering the power of Blockchain, it is not surprising that it can also be applied to business. In fact, companies such as Walmart and FedEx implement Blockchain technology as a way to manage their supply chains since it makes possible tracking a product from its origin[1] and controlling assets’ conditions instantly. There are a lot of applications for this technology in the business field, such as smart contracts and transactions recording which can be achieved thanks to Blockchain being a distributed ledger. But what is a distributed ledger and why is everyone talking about it? A distributed ledger is a decentralized, synchronized and shared database where information is recorded. Decentralized: Data doesn’t rely on a central point of control, it is stored within a network of nodes. Due to lack of a single authority[2], is

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Blockchain 101: The Basics

By Carla Vercellone As the first post in our new series on Blockchain technology, we will comment on the basics of blockchain, who participates in a blockchain network and how it works, and finally we’ll touch on the major cryptocurrency in the network, Bitcoin. Since its introduction in 2008 as the creation of a person, or group of people, known by the pseudonymous Satoshi Nakamoto, blockchain has grown and evolved into becoming the future of today’s internet and transactions. What is blockchain? The blockchain is a decentralized, shared, and immutable ledger that facilitates the process of recording transactions and tracking assets in a business network. An asset can be tangible (a house, a car, etc.) or intangible (intellectual property, patents, copyrights, etc.). Anything of value can be tracked and traded on a blockchain network, reducing risk and cutting costs for all involved. Transactions made in bitcoin or other cryptocurrencies are recorded chronologically and publicly between two parties, being efficient and in

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Building on Abstract Ideas: Alice v CLS Bank

By Evan Jensen In its much-anticipated Alice v CLS Bank decision the Supreme Court held that Alice’s software patent was patent-ineligible subject matter under §101. But in its decision the Supreme Court seems to have blended a §101 analysis with a §103 analysis. The Court seems to infer that well-known ideas, such as methods that are fundamental to modern economy, are abstract and therefore patent-ineligible under §101. There is no debate that abstract ideas are not patentable subject matter. No one may claim exclusive rights to the idea of addition, or of binary-decimal conversion, or any other generic abstract mathematical or conceptual idea. To allow a patent on an abstract idea would preempt everyone else from using that idea, greatly discouraging innovation, which is contrary to the primary goals of the patent system. The issue is which software claims, or whether software claims in general, are made patent-ineligible by the Alice decision.

Cell Phone Network Patent Survives § 112 Attacks in Federal Circuit

By Chris Reaves HTC Corporation v. IPCom GmbH & Co., KG, No. 2011-1004, Fed. Cir. Jan. 30, 2012 In a recent infringement suit, a patent for a cell phone network mobile station narrowly survived several attempts at invalidation through indefiniteness.  The Federal Circuit applied numerous rules of claim interpretation, especially for means-plus-function claims, and reminded the defense of the importance of addressing all issues at the trial level.  The case serves as a good lesson in “what not to do” for both prosecutors and litigants. Background IPCom GmbH & Co., KG owns US Patent No. 6,879,830 (‘830) and other patents, which go to cell phone networks and their methods.  ‘830 in particular discusses an efficient cellular phone network “handover” – the process by which one cell tower takes over a call from another as the phone moves from place to place. IPCom and the HTC Corporation countersued each other for, respectively, infringement of three of IPCom’s patents, including ‘830, and

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Federal Circuit Says § 101 Requires “Concrete Steps” In Software Methods

By Chris Reaves Dealertrack, Inc. v. Huber, No. 2009-1566, Fed. Cir. Jan. 20 2012 The Federal Circuit on January 20 once again addressed the question of 35 U.S.C. § 101 eligibility for a software method.   The court found the patent at issue closer to CyberSource than Ultramercial, drawing a distinction between “a practical application with concrete steps” and a mere declaration that the method is “computer-aided.”  It also looked to the interpretation of claims, expanding the rule of Phillips v. AWH to cover exemplary lists. Background Plaintiff Dealertrack, Inc. owns three patents related to the same concept: the use of a computer system as a loan intermediary, converting one generalized application for a car loan into several bank-specific applications and processing said applications with their respective banks.  The original patent, U.S. Patent No. 5,878,403 (‘403), was filed in 1995.  Later, 7,181,427 (‘427), patenting the computer system, was filed as a continuation-in-part, and 6,587,841 (‘841), patenting the method, was filed as

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Federal Circuit Confirms Expansive View of Patent Eligibility

In Ultramercial LLC v. Hulu LLC, 657 F.3d 1323 (Fed. Cir. 2011), Ultramercial LLC’s patent claims a method “for distribution of products over the Internet via a facilitator”. As part of the claim, the facilitating web server offers a “sponsor message” to a potential viewer, who, if he views the sponsor message, is then allowed access to a desired “media product”. The claim also recites limitations related to interactions with the sponsors both before and after delivery of the sponsor message.

Federal Circuit Clarified Abstractness in the Context of Software

Court Finds Software Patentable Unless Unmistakably Abstract In Research Corp. Technologies, Inc. v. Microsoft Corp., Civ. Case. No. 10-1037 (Fed. Cir. December 8, 2010), Research Corporation Technologies, Inc. (“RCT”) owns six related patents: U.S. Patent Nos. 5,111,310 (“’310 patent”); 5,341,228 (“’228 patent”); 5,477,305 (“’305 patent”); 5,543,941 (“’941 patent”); 5,708,518 (“’518 patent”); and 5,726,772 (“’772 patent”).  The six related patents relate to digital image half toning which allows a computer to create more colors than otherwise possible with the limited number of pixel colors available in a typical printer.  In order to measure the quality of the half toning, the inventors created a method of detecting a power spectrum which measures the frequency of the dots used to create the half tone and compares this power spectrum to an ideal spectrum stored in a mask.  By comparing the stored mask and detected power spectrum, the method determines half tone quality.

Central District of California Extends Bilski Holding to Find Computer Aided Method Not Tied To A Particular Machine If Merely Tied to Computer

In Dealertrack, Inc. v. Huber et al., CV 06-2335 AG (C. D. Calif. July 7, 2009), the patent at issue, U.S. Patent No. 7,181,427 (the ‘427 patent), is directed toward an automated credit application system.  Dealertrack at 2.  The independent claim at issue, claim 1, recites a “computer aided method” of managing a credit application.  The method consists of steps of receiving credit application data and forwarding the application and subsequent funding decisions to remote devices. Id. at 2.  The only issue in the case was the validity of the claims under 35 U.S.C. § 101. Since Dealertrack did not argue the “transformation” prong of the test outlined in In re Bilski, 545 F. 943 (Fed. Cir. 2008) (en banc), the court considered only the “particular machine” prong of the Bilski test – whether the claimed process was tied to a particular machine.  Dealertrack at 5.  However, the Bilski decision provided no guidance as to the nature of the “particular machine”,

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Feature Comment: The Heightened Disclosure Requirement for Software Claimed Using Means-Plus-Function Limitations

By Gregory L. Clinton[1] I.        INTRODUCTION The question of whether a computer component discloses adequate structure for a corresponding means-plus-function claim limitation has been a recurrent issue in recent Federal Circuit jurisprudence, most recently in the cases of Blackboard Inc. v. Desire2Learn Inc., 91 U.S.P.Q.2d 1481, 1483 (Fed. Cir. 2008).  and Net MoneyIN Inc. v. VeriSign Inc., 88 U.S.P.Q.2d 1751 (Fed. Cir. 2008).    In both cases the specification of the patents at issue did not provide adequate support for means-plus-function limitations in the claims.  Although the use of means-plus-function claims has fallen out of favor in recent years, means-plus-function claims remain useful in some situations.  Accordingly, a brief discussion on what to include in a specification to ensure proper support for such claims may be helpful to avoid problems during prosecution or litigation II.       ENABLEMENT OF SOFTWARE MEANS-PLUS-FUNCTION CLAIMS Both of the two cases previously mentioned, Blackboard and Net MoneyIN, revolved in part around whether the specification provided adequate support

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Federal Circuit Invalidates Software Claim for Indefiniteness

Federal Circuit Finds Means plus Function Element in Claim Indefinite Since Specification Did Not Describe Structure in Specification In Blackboard, Inc. v. Desire2Learn Inc., 91 U.S.P.Q.2D 1481 (Fed. Cir. 2009), the Court of Appeals for the Federal Circuit (CAFC) deliberated on two issues raised by the respective parties on appeal from the United States District Court for the Eastern District of Texas.  Specifically, Desire2Learn contested the district court’s holding of infringement of claims 36-38 of Blackboard’s U.S. Patent No. 6,988,138, which relates to an Internet-based educational support system and corresponding methods.  In turn, Blackboard cross-appealed the District Court’s ruling, on summary judgment, that claims 1-35 of the ‘138 patent are indefinite. Single login feature Turning to the first issue, Desire2Learn argued that claims 36-38 do not include a “single login” limitation for the recited method of providing an online education system, and thus were anticipated by two prior art references.  The ‘138 patent discloses a system that allows for online

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