- POLY-AMERICA, L.P. v. API INDUSTRIES, INC. (Fed. Cir. 2016) (P) – Disparaging a particular feature in the prior art generally constitutes a disclaimer of that feature
- FAIRWARNING IP, LLC v. IATRIC SYSTEMS, INC. (Fed. Cir. 2016) (P) – The automation of rule-processing is an abstract idea if the improvement is the automation not the rule
Disparaging a particular feature in the prior art generally constitutes a disclaimer of that feature in the claimed invention. Here, for example, a trash bag with so-called “short seals” in its upper corners was found to be limited to a design in which the short seals narrow the upper opening of the bag to provide a tighter fit around a trash can, even though not all claims made this explicit, because the specification extolled this benefit of using short seals over prior art trash bags. “[A]n inventor may disavow claims lacking a particular feature when the specification distinguishes or disparages prior art based on the absence of that feature.” It may therefore be best to avoid overly characterizing the prior art in the specification.
Background / Facts: The patent being asserted here is directed to an improved construction of an elastic drawstring trash bag. The specification describes so-called “short seals” at the bag’s upper corners. The specification explains that the short seals reduce the width of the bag’s upper opening, allowing the drawstrings to wrap around the rim of a trash receptacle more securely than prior art trash bags that do not have a narrowed upper opening. While all of the claims recite the use of short seals, some claims do not explicitly provide for a narrowed opening.
Issue(s): Whether the specification disavows trash bags with short seals that do not narrow the upper opening width.
Holding(s): Yes. “[A]n inventor may disavow claims lacking a particular feature when the specification distinguishes or disparages prior art based on the absence of that feature.  That is exactly what the specification to the  patent does by stating that prior art bags are difficult to secure over trash receptacle lips and explaining that the use of extended short seals reduces the claimed bag’s upper opening, making it easy to fit around a trashcan.” Moreover, “[e]very embodiment described in the specification has inwardly extended short seals and every section of the specification indicates the importance of inwardly extended short seals. These two facts provide together a proper reason to limit the claims in this way.”
The automation of rule-processing is a merely directed to an abstract idea if it is the automation rather than the rule that improves a technological process. Here, for example, claims reciting the automation of fraud and misuse detection were found to be directed to an abstract idea because the rules employed, which merely looked at user transaction frequency, were the same kind of rules—even if expressed differently—as humans in analogous situations detecting fraud have asked for decades, if not centuries. “Although [the] claims require the use of a computer, it is this incorporation of a computer, not the claimed rule, that purportedly ‘improve[s] [the] existing technological process’ by allowing the automation of further tasks.” It may therefore be best to focus any rule-processing claims on the nature of the rules themselves rather than their automation.
Background / Facts: The patent being asserted here is directed to ways of detecting fraud and misuse by identifying unusual patterns in user access of sensitive data. The claimed systems and methods record audit log data concerning user access of digitally stored patient health information (PHI), analyze it against a rule, and provide a notification if the analysis detects misuse.
Issue(s): Whether the claims are patent-eligible under 35 U.S.C. § 101.
Holding(s): No. “While the claims here recite using one of a few possible rules to analyze the audit log data, … [the] claims merely implement an old practice in a new environment.  The claimed rules ask whether accesses of PHI, as reflected in audit log data, are 1) ‘by a specific user,’ 2) ‘during a pre-determined time interval,’ or 3) ‘in excess of a specific volume.’  These are the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries. Although [the] claims require the use of a computer, it is this incorporation of a computer, not the claimed rule, that purportedly ‘improve[s] [the] existing technological process’ by allowing the automation of further tasks.”
It is generally not obvious to reach across fields and select an admittedly undesirable feature with which to modify another prior art reference. Here, for example, no motivation to combine was found for modifying a primary reference directed to a mobile phone with a particular unlocking mechanism from a research paper because the research paper was for a wall-mounted air conditioning controller and in fact identified the particular unlocking mechanism as the second to last preference among consumers. “Common sense and real world indicators indicate that to conclude otherwise would be to give in to hindsight, to allow the exact ex post reasoning against which the Supreme Court cautioned in Graham and KSR.” This would be a good case to consult and cite in response to an obviousness rejection that picks and chooses relatively arbitrary features from only tangentially-related art.
Background / Facts: The patents being asserted here are directed to various smartphone features, including a “slide to unlock” feature. This unlock feature addresses the issue of unintentional activation or deactivation of the smartphone due to inadvertent contact with the touch screen, a problem that is commonly referred to as “pocket dialing.” The prior art includes a mobile device that uses a different unlocking mechanism and a consumer research paper that lists a slider-based unlocking mechanism, but only for a wall-mounted air conditioning controller and only as a least-preferred option.
Issue(s): Whether an ordinary artisan would have been motivated to combine elements from the wall-mounted touchscreen for home appliances and a smartphone, particularly in view of the pocket dialing problem specific to mobile devices that the claimed invention sought to address.
Holding(s): No. “Common sense and real world indicators indicate that to conclude otherwise would be to give in to hindsight, to allow the exact ex post reasoning against which the Supreme Court cautioned in Graham and KSR. …Though the prior art references each relate to touchscreens, the totality of the evidence supports the conclusion that it would not have been obvious for a skilled artisan, seeking an unlock mechanism that would be both intuitive to use and solve the pocket dialing problem for cell phones, to look to a wall-mounted controller for an air conditioner. … That a skilled artisan would look to the [research] paper directed to a wall-mounted interface screen for appliances and then choose the slider toggle, which the study found rated fifth out of six options in usability, to fulfill a need for an intuitive unlock mechanism that solves the pocket dialing problem for cell phones seems far from obvious.”
Novelty and non-obviousness do not alone resolve the question of inventive concept at the second step of Mayo/Alice. Here, for example, although the prior art did not disclose the idea of “determining” and “outputting” a particular type of e-mail, these operations were found to add nothing more to the abstract idea because they did not improve the functioning of the computer itself. “[T]he jury’s general finding that … three particular prior art references do not disclose all the limitations of or render obvious the asserted claims does not resolve the question of whether the claims embody an inventive concept at the second step of Mayo/Alice.” It may therefore be helpful to point out how any new and nonobvious features help improve the functionality of a computer.
Background / Facts: The patents being asserted here are directed to screening emails and other data files for unwanted content. The court found that the underlying idea of characterizing e-mail based on a known list of identifiers is abstract. At trial, however, the jury found that the prior art did not disclose “determining … whether each received content identifier matches a characteristic” or “outputting … an indication of the characteristic of the data file.”
Issue(s): Whether the lack of anticipation and obviousness requires a finding of an “inventive concept” sufficient to transform the abstract idea into patent-eligible subject matter.
Holding(s): No. “While the claims may not have been anticipated or obvious … that does not suggest that the idea of ‘determining’ and ‘outputting’ is not abstract, much less that its implementation is not routine and conventional. Indeed, ‘[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.’  Here, the jury’s general finding that [the accused infringer] did not prove by clear and convincing evidence that three particular prior art references do not disclose all the limitations of or render obvious the asserted claims does not resolve the question of whether the claims embody an inventive concept at the second step of Mayo/Alice.”