Client Alert
Patents Are Presumed Patent-Eligible and the Specification Need Not Expressly List All the Reasons Why an Invention Is Unconventional
Client Alert
Patents Are Presumed Patent-Eligible and the Specification Need Not Expressly List All the Reasons Why an Invention Is Unconventional
June 25, 2019
Cellspin Soft, Inc. v. Fitbit, Inc., et al., 927 Nos. 2018-1817, 2018-1819, 2018-1820, 2018-1821, 2018-1822, 2018-1823, 2018-1824, 2018-1825, and 2018-1826 (Fed. Cir. June, 25, 2019)
The patent owner appealed the holding that claims in four asserted patents were not eligible for patent protection under 35 U.S.C. § 101 and a related award of attorneys’ fees. The patents related to “connecting a data capture device, e.g., a digital camera, to a mobile device so that a user can automatically publish content from the data capture device to a website.” The Federal Circuit panel reversed and remanded.
Under the first step of the Alice eligibility test, the panel analyzed the specifications and found the claims directed to the abstract idea of: “capturing and transmitting data from one device to another.” The panel disagreed with the argument that the claims recited a non-abstract technological improvement over internet-incapable prior art. Under the panel’s rationale: the claims’ recital of an internet capable mobile device to automate the prior approach of transferring images via USB cables did not save the claims, because “the need to perform tasks automatically is not a unique technical problem.”
Under Alice step two, however, the panel cited Berkheimer and reversed the ineligibility holding. The panel found there was no evidence that the “claimed techniques were well-known or conventional as a matter of law.” To the contrary, the patent owner had amended the complaint to allege that the claims recited inventive (i) use of HTTP in an intermediary mobile device and (ii) establishment of a paired connection before transmitting the images. In crediting these statements, the panel reasoned that: “[a]s long as what makes the claims inventive is recited by the claims, the specification need not expressly list all the reasons why this claimed structure is unconventional."
The panel also reversed the award of attorneys’ fees which were based upon the district court’s patent ineligibility finding. Notably, in reversing the award of fees, the panel stated that to the extent that the district court concluded that “issued patents are presumed valid but not presumed patent eligible, it was wrong to do so.”
