March 19-31, 2015: The past couple of weeks have been busy, with a number of district court and PTAB decisions. In the district courts, there have been five decisions, Certified Measurement v. Centerprint Energy Houston Elec., My Health, Inc. v. LifeScan , Ameritox Ltd. v. Millennium Health, Tuxis Techs v. Amazon.com, and Advanced Auctions v. eBay. The Certified Measurement, MyHealth and Ameritox decisions went favorably for the patentee. Both Ameritox and Tuxis were sequel from prior decisions: Ameritox on a motion for reconsideration, and Tuxis invalidating an additional 99 claims, following the earlier decision invalidating a single independent claim.
The sharp drop in the claims index (-7.4%) is a bit misleading. This is an artifact of the Certified Measurement decision, where the court denied a motion to dismiss four patents with 378 claims, thereby pushing down the claim invalidity rate. The 4.1% drop in the Motions on Pleadings rate is a reflection of the denial of the motions in Certified Measurements and MyHealth.
I discuss these Ameritox, Certified Measurement, and MyHealth decision in more detail in a separate posting.
PTAB has maintained an aggressive streak of Section 101 invalidations in CBMs. Between March 20 and March 31, PTAB instituted five CBMs on Section 101 grounds, and issued four final decisions invalidating patents; only one institution decision was denied, but on procedural grounds, not substantive ones. Overall, PTAB has issued 18 final ineligibility decisions (100%) in CBMs that were instituted on patent ineligibility grounds. That is a very harsh statistic: essentially once PTAB has instituted on 101 grounds, it appears to be a foregone conclusion that they'll "go final" as well and invalidate the patent.
March 11-18, 2015: Two decisions this week, Priceplay.com v. AOL Advertising and Modern Telecom Systems v. Juno Online. In Priceplay, the J. Andrews in the Delaware district court invalidated two patents of Priceplay that covered pricing a good in an auction based on both the buyer's bid and the buyer's participation in a "competitive activity" such as a video game, board game, card game, etc. The better the buyer did in the competitive activity the more the auction price would be reduced. An odd idea, but at least one that doesn't seem to be a fundamental economic practice. The court found this combination to be abstract and lacking inventive concept. The court finessed the unusual combination of auctions and competitive activity by considering each as ineligible by itself: "Priceplay's claimed invention merely combines the abstract ideas found to patent ineligible in Schrader [auctions], Planet Bingo [competitive activity] and OIP [price setting]." The word "merely" is awesome in its ability to leap over gaps in logic and law.
At least the court in Modern Telecom was not so willing to play this fast and loose. The court denied a motion on the pleadings to invalidate six patents. The court found that defendants "have failed to meet their burden of establishing that the patents in suite lack an inventive concept". The court rejected the notion that software is ineligible per se, stating "Defendants emphasize the “software focus” of the patents as if recent Federal Circuit cases support a rule that software is categorically patent-ineligible. The Court does not interpret the cases that way and, instead, agrees with the conclusion in Hughes Commc’ns that “software must be eligible under § 101."
