For our weekly SoCal IP Institute meeting on Monday, May 17, 2021 at 1:00 pm, Mark Goldstein will lead a discussion of two recent Federal Circuit patent cases.

Free Stream Media Corp. dba Samba TV v. Alphonso Inc. (Fed. Cir. May 11, 2021, 2019-1506, 2019-213)

Samba sued Alphonso in two courts, asserting infringement of its 668 patent in the Northern District of California its 356 patent in the Eastern District of Texas. The cases were consolidated in the Northern District of California which adopted a claim construction from the Texas case.  After Samba stipulated to noninfringement as to the 668 patent, Alphonso moved to dismiss on grounds that the asserted claims of the 356 patent are ineligible subject matter under 35 U.S.C. 101. The district court denied the motion to dismiss and entered summary judgment of noninfringement. Two issues were raised on appeal, patentable subject matter of the 356 patent and claim construction of the 668 patent.  On appeal, the Federal Circuit reversed the denial of the motion to dismiss, holding the claims of the 356 patent are patent ineligible.  The court reasoned the “asserted claims are not directed to an improvement of a technology or creation of a new computer functionality” but are “directed to an abstract idea.” The court further explained “[t]he claims  here  simply  recite  that  the  abstract  idea  will  be  implemented  using  conventional  components  and functions generic to the technology.”   The claims are not directed to an improvement of technology or creation of new computer functionality.  As to the 668 patent, the court concluded Samba’s desired claim construction contradicts the specification and upheld the Texas court’s claim construction.


Uniloc 2017 LLC v. Apple Inc. (Fed. Cir. May 12, 2021, 2020-1403, 2020-1404)

Uniloc is the owner of the 552 patent directed to policing the use of Voice over Internet Protocol (VoIP)  features to maintain control over network features. These features include caller-ID, call waiting, multi-line service, and service quality.  To achieve control over the features, the patented system employs an enforcement mechanism within the VoIP provider’s core network to inspect “signaling messages” for setting up communication sessions to ensure that both sender and recipient are authorized to use particular features.  Apple contested the 552 patent by filing an inter partes review with the patent office.  On inter partes review, the Patent Trial and Appeal Board found claimd 1–17 and 23–25 invalid for obviousness in view of prior art, the Kalmanek patent, but that claims 18-22 were not obvious and survived the review.  The Federal Circuit affirmed, rejecting Uniloc’s argument that the Board’s construction of “intercepting” in the claims was erroneous and rejecting Apple’s argument that claims 18-22 were obvious in view of Kalmanek.


Please join the discussion by video conference.  Email elisham @ (remove the spaces which were added to to avoid spammers) to RSVP. This activity is approved for 1 hour of California MCLE credit.