We will be discussing two recent Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, February 6, 2012. Brief synopses are presented below.
Dealertrack v. Huber et al., Case No. 2009-1566, 1588 (Fed. Cir. Jan. 20, 2012) (attached). Dealertrack obtained patent protection for a process of applying for multiple loans simultaneously by filling out forms including all necessary data only once. Dealertrack sued each of the defendants for their use of similar systems. The defendants filed a summary judgment motion of noninfringement, invalidity as indefinite and invalidity as directed to non-patentable subject matter. The district court granted summary judgment of noninfringement and invalidity under Section 101.
On appeal, the Federal Circuit reversed the district court’s construction of “communications medium” to explicitly exclude the internet. In addition, the court reversed the construction of “central processing means.” In addition, the Federal Circuit agreed that the prior patent was properly incorporated by reference. Therefore, the Federal Circuit reversed the finding of noninfringement and remanded for further proceedings in view of the revised claim construction. The Federal Circuit also reversed the finding that claims 14, 16 and 17 were not indefinite because no algorithm was provided for “tracking” credit applications.
The Federal Circuit then turned to a discussion of patent eligible subject matter for the “computer-aided method” of claim 1. The Federal Circuit found that the claim was not tied to a particular machine and the claim was not limited to a particular application and, therefore, was not directed to patent-eligible subject matter. Dealertrack asserted that it was limited to credit clearinghouse applications, but the Federal Circuit rejected this argument as insufficient to confirm patent eligibility to abstract “computer implemented” ideas. Accordingly, the Federal Circuit affirmed the district court’s grant of summary judgment of invalidity under Section 101.
HTC Corp. et al. v. IPCom GMBH & Co., KG, Case No. 2011-1004 (Fed. Cir. Jan. 30, 2012 (attached). HTC sued IPCom for declaratory judgment that a patent asserted by IPCom was invalid. The district court granted HTC’s summary judgment motion of invalidity as indefinite. On appeal, the Federal Circuit reversed the grant of summary judgment and denied HTC’s attempt to assert an alternative basis for indefiniteness as waived.
The patent covers a mobile station and associated network for handling a “handover” when a mobile station switches between two base stations. The district court granted HTC’s motion based upon an argument that a patent claim cannot be a hybrid of an apparatus and method claim. On appeal, the Federal Circuit disagreed finding that the claim, properly construed, was clear as to which portions of the claimed elements of the apparatus and the functions they perform. In short, the claims provided for method steps performed by the base station and also claimed an aspect of the mobile station. Accordingly, the district court’s finding of invalidity as directed to hybrid subject matter was reversed.
HTC also argued that the claims failed to disclose corresponding structure to adequately support the means-plus-function claim elements. The district court found that the processor and transceiver were sufficient. The Federal Circuit disagreed finding that the processor and transceiver were sufficient structure, but that their precedent also requires that the patent disclose a specific algorithm for the means-plus-function element “an arrangement for reactivating . . . .” However, because HTC failed to make an argument regarding the specific algorithm at the district court, the Federal Circuit found that the argument was waived on appeal.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, February 6, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.