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Intellectual Property | MONDAY, MARCH 27, 2017 | S9
trict court lifted the stay. Ariosa continued to pursue invalidity arguments tracking grounds (1) and (2) from the ’430 IPR peti- tion and grounds (1), (2), and (3) from its ’794 petition. According to Ariosa, all but one of these invalidity arguments were “grounds for which it petitioned IPR but the PTAB did not institute trial” making 315(e)(1) inap- plicable. While IPR had been instituted in connection with ground (1) in the ’794 peti- tion (anticipation by Fan), Ariosa argued that the PTAB’s nal written decision focused on a “technicality” and did not analyze “pat- entability” in a way that would give rise to estoppel. Verinata moved to strike all these invalidity defenses.
Following a number of Federal Circuit cas- es discussing §315(e)(1), including the Shaw decision cited above, the district court found that Ariosa was not estopped from pursu-
Wearable
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combination” to determine whether the additional elements transform the nature of the claim into a patent-eligible application.” The addition of “well-understood, routine, conventional activities” is not suf cient to render such claims patent eligible. While methods claims are most susceptible to patent-ineligibility challenges, claims reciting systems or apparatus may likewise be found patent ineligible. The system claim in Alice was invalidated because “none of the hard- ware ... offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment.’” Id. In a Decision on Appeal, the Patent Trial and Appeal Board found claims directed to a magnetic resonance imaging apparatus to be patent-ineligible. Ex parte Itagaki, No. 2015- 002702 (P.T.A.B. Dec. 30, 2016).
Thus, practitioners should be thoughtful when claiming wearable devices that pro- vide data gathering and analysis. In In re TLI Commc’ns v. LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016), claims directed to a method of (1) recording images by a digital pick up unit, (2) storing images at the device, (3) transmitting data to a server, (4) receiving data at a server, and (5) extracting and storing the data were found to be patent ineligible as directed to the abstract idea of “classifying and storing digital images in an organized manner.” The claims were “directed to the ‘use of conventional or generic technology in a nascent, but well-known environment, with- out any claim that the invention re ects an inventive solution to any problem presented by combining the two.’” Id. at 612.
Accordingly, a rst consideration for practi- tioners drafting claims to wearables and con- nected devices is to capture the “inventive solution” that permits the device or system to integrate the disparate technologies into a useful product. For example, sensors for
ing invalidity arguments that tracked ground (2) from its ’430 petition (obviousness over Quake and Craig), or grounds (2) and (3) in its ’794 petition (obviousness over Fan and Lizardi, and obviousness over Straus, Rothberg, and Walt). The court explained that estoppel did not apply to these argu- ments because “the PTAB did not institute” IPR on these grounds. Id. at 7, 8-9. The court did, however, nd that Ariosa was estopped from pursuing ground (1) from the ’794 peti- tion. While the court recognized that the PTAB “never speci cally compared Fan with the challenged claims of the ’794 patent,” it nonetheless issued a nal written decision in which it found that “failed to carry its burden to demonstrate that Fan was prior art under §102.” Id. at 9-10. This is all that is required to trigger §315(e)(1).
These decisions are consistent with and
collecting certain physiological data may be well-known, as well as techniques for analysis of the resulting data. However, a wearable device may necessarily require ingenuity to miniaturize a sensor device that includes a communications component in a small pack- age. Likewise, the ability to collect data over a long time in an implanted device may give rise to data analytics that were not previously possible or contemplated. The speci cation and claims should be drafted with such solu- tions rst and foremost to counter allegations that only “conventional or generic technolo- gies” were used.
As set forth in Alice, rejections under 35 U.S.C. §101 can arise when the claims are not directed to a speci c invention and instead improperly monopolize “[t]he basic tools of scienti c and technological work,” i.e., the potential for “preemption” by “tying up the future use of [] building blocks of human ingenuity.” Alice, 134 3. Ct. at 2354. Recent Federal Circuit decisions have considered preemption as an indicator for patent eligi- bility. In Amdocs (Israel) v. Openet Telecom, No. 15-1180 (Fed. Cir. Nov. 1, 2016), the Fed- eral Circuit surveyed the case law regarding preemption, and noted that the claims in DDR Holdings v. Hotels.Com, 773 F.3d 1245 (Fed. Cir. 2014) and BASCOM Global Internet Servs. v. AT&T Mobility, 827 F.3d 1341 (Fed. Cir. 2016) were directed to an abstract idea under step one of the Alice test, but narrowly drawn to describe a speci c, unconventional technological solution to a technological problem to withstand preemption concerns. For example, in DDR Holdings, the court found that the claims satis ed step two of the Alice test, and therefore were patent eli- gible, because the claims recited an “ordered combination that was not merely the routine or conventional use of the internet.” DDR Holdings at 1259. Similarly, in BASCOM, the court determined that the claims survived under step two because they did not preempt all ways of ltering content on the Internet. Rather the patent claimed that a particular
The ‘Lexmark’ decision exposes numerous companies to patent infringement liability, including foreign resellers and U.S. companies that rely on for- eign companies to procure and manufacture products that are imported into the United States.
very closely track past Federal Circuit and district court rulings. The Verinata court also determined, however, that Ariosa was estopped in connection with ground (1) from the ’430 petition (obviousness over Dhallan
arrangement of elements was a “technical improvement over prior art ways of lter- ing content.” BASCOM at 1350. The Federal Circuit in Amdocs determined that “even if we agree that the claim 1 is directed to an ineli- gible abstract idea under step one, the claim is eligible under step two because it contains suf cient ‘inventive concept.’” Amdocs, slip op., at *21. In particular, the court found that the claim “entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological prob- lem (massive record ows which previously required massive databases.) “While “the solution requires arguably generic compo- nents,” “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner.” Id., slip op., at *22-23.
The court in McRo DBA Planet Blue v. Bandai Namco Games, No. 15-1080 to 15-1101 (Fed. Cir. Sept. 13, 2016) took a different approach and determined that the claims at issue were not directed to an abstract idea under step one of the Alice test. The court explained that “[t]he con- cern underlying the exceptions to §101 is not tangibility, but preemption.” Id. slip op., at *25. Accordingly, the court looked to whether the claims “focus” on a “spe- ci c means or method that improves the relevant technology or instead directed to a result or effect that itself is the abstract instead and merely invoke generic pro- cesses and machinery.” Id. slip op., at *23. The court found no preemption of the use of rule-based lip-synchronization by the genus of rules claimed. Rather the genus was narrowly “limited to a speci c process [] using particular information and tech- niques and does not preempt approaches that use rules of a different structure or different techniques.” Id. slip op., at *27.
As the patent eligibility case law continues to evolve, or indeed whether there is an even- tual legislative solution enacted, the Federal Circuit’s recent focus on the underlying con-
and Binladen). The district court recognized that the “PTAB did not institute on this exact ground” because it viewed it as “redundant” of the Dhallan, Binladen, and Shoemaker. Id. at 7. Estoppel does not typically apply to non-instituted grounds. Regardless, the dis- trict court found the combination of Dhallan and Binladen to be “simply a subset of the instituted grounds.” Id. Thus, the court held that Ariosa had effectively raised obviousness over references Dhallan and Binladen dur- ing IPR and was estopped from continuing to pursue invalidity arguments based on those two references in district court. Id. at 7-8.
In sum, while §315(e)(1) has been interpret- ed relatively narrowly, the Verinata decision provides patent owners with a new avenue to argue—in certain circumstances—that an IPR petitioner should be estopped from asserting non-instituted IPR grounds in district court.
cern of preemption in DDR Holdings, BASCOM, Amdocs and McRo provides useful guidelines for stakeholders prosecuting and litigating wearable technology patents attempting to overcome a §101 challenge.
First and foremost, patent applications should be carefully drafted to articulate the technological innovation that distinguishes the invention from prior art processes or devices. In cases where the sensors being used are well-established or the processor handling data analytics is conventional, the practitioner drafting the patent application is obligated to conduct a more searching inquiry with the inventors to identify and document in detail the technological challenges that were recognized and the technological solutions that were implemented. The distribution of components, data storage and compression techniques, or material selection may point to unconventional solutions. The speci ca- tion should provide suf cient support and concrete examples of the novel process steps or machinery.
Second, the patent claims should be draft- ed with preemption in mind. Claims should recite a speci c means or method for obtain- ing a desired result or effect, rather than the result or effect itself as obtained by generic processes or machinery. Preemption can be avoided where the claims at issue are directed to a speci c implementation and leave open other possible approaches to achieving the desired result or effect.
Third, since the key to prevailing in a pat- ent eligibility challenge is the manner in which the innovation is framed, arguments should focus on the claim language. Oversimpli ca- tion of the claims can be fatal; instead, the Of ce or the Court should be guided to the speci c claim language when determining what the claims are “directed to.” In McRo, the claims were not directed to “all rules” in computer animation. Rather, it was the nar- rower, “unconventional” use of rules that operated “as function of sequence and time.”
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