May 112013

In disputes involving computer-related patents, obviously the plaintiff needs to establish that the defendant is infringing at least one of the patented claims.  But when can the plaintiff peer into the defendant’s source code during discovery for purposes of lending support to infringement.  What if the defendant moves for summary judgment even before the plaintiff determines the meaning of the claim terms?  These questions are addressed in the above Federal Circuit case decided May 7, 2013.


Baron’s patent (‘525) relates to reporting and forecasting real-time weather information. Baron sued MWI alleging infringement of the ‘525 patent.  Two months later, Baron served MWI with a request to produce MWI’s source code in their allegedly infringing technology.  MWI moved for a protective order asserting that Baron’s asserted patent claims do not recite a computer-code based invention.  Claim 1 is representative:

Baron responded by arguing that the “logic” (i.e., of claim 1) is the source code and thus MWI’s source code was relevant to show infringement since MWI implemented their technology on a computer with its source code.  The district court granted MWI’s protective order “without prejudice” so Baron could seek the information at a more appropriate time in the litigation.  Discovery continued with MWI serving Baron with discovery requests on how MWI allegedly infringed the asserted patent.  In response, Baron moved for a Markman hearing and objected to the discovery requests as premature.   Baron then served its Disclosure of Asserted Claims and Preliminary Infringement Contentions, detailing how Baron believed MWI infringed its patent. Importantly, Baron renewed its request to peer into the source code.  Then, MWI filed a motion for Summary Judgment of noninfringement, arguing that its technology merely forwards National Weather Service warnings to subscribers.  MWI’s motion for Summary Judgment included an affidavit in which the affiant explained why the accused products did not satisfy the limitations of the claim terms given her understanding of the claim terms.  In response, Baron argued that Summary Judgment was premature because the claims had not yet been construed and it had not yet had the opportunity to review MWI’s source code.  Baron then filed a motion to compel production of MWI’s source code, arguing that without the source code, “[it] and the court would simply have to rely on MWI’s word as to how its products function.”  The district court granted MWI’s motion for Summary Judgment, holding that claim construction was unnecessary because the court only had to construe “disputed” claim terms.  Was the district court’s grant of Summary Judgment proper? Should Baron have been given a chance to look at MWI’s source code?


The majority opinion held that the district court should have allowed the claims to be construed and should have allowed Baron to look at MWI’s source code.  Thus, the district court erred in granting Summary Judgment.  Baron adequately showed how the additional discovery was relevant and essential for its opposition to Summary Judgment.  Thus, the Federal Circuit held that it was improper for the district court to have refused Baron’s request to delay ruling on Summary Judgment.


The dissent disagrees that the additional discovery was necessary, looking at the plain language of claim 1.  Judge Reyna argues that since MWI’s technology disseminates unmanipulated NWS warnings to subscribers, it cannot infringe “logic configured to make a determination . . . said logic further configured to transmit, if said logic determines . . . that said one contact identifier identifies a remote unit located within said geographic region,” as recited in claim 1.  The dissent stresses that since MWI’s affidavits attest that MWI’s source code does not analyze or manipulate the weather information, that’s the end of the story.

My thoughts

This case brings up an interesting point about the difference of reciting “configured to [some function]” versus “performs [some function]” in claims.  “Configured to” can be used to denote that the claim object is capable of doing, or allowed to do, some function.  For example, a ball can be configured to bounce, to throw, to deflate – all of these things are dependent on how the object is used, not on what functions the object performs.  With regard to infringement of software, without looking at the source code, it is difficult to say that a particular software is, or is not, configured to do something.  You may be able to determine that the software does not perform a particular function, but to say that the software is not configured to perform the function is a different analysis.  In the dissent, Judge Reyna states the functions of MWI’s program (i.e., merely disseminates to users) and states that the program does not perform other functions (i.e., determine or analyze).  The dissent then concludes that as a matter of law, MWI’s program does not infringe claim 1.  But when I look at the plain language of the representative claim (Judge Reyna’s own words), the inquiry is not whether MWI’s program performs these functions.  Instead, the inquiry is whether the program is “configured to” perform the functions.  So my question is this: without looking at the source code, can you state so confidently that MWI’s program is not “configured to make a determination” or “configured to transmit, if said logic determines . . .”?


 Posted by at 9:57 pm
Dec 012012

An interesting case was decided at the Federal Circuit a couple weeks ago dealing with enablement and permanent injunctive relief.

Edwards sued CoreValve for infringing its patent related to a heart valve. CoreValve argued that the patent was not enabled because at the time of filing the patent application, the heart valve had only been tested in pigs. The district court upheld the patent as being enabled.

Additionally, the district court denied a permanent injunction against CoreValve. Both parties appealed.

Regarding enablement, the Federal Circuit affirmed the district court, holding that human testing is not necessary to enable use in humans. It reasoned that when experimentation on humans is inappropriate, enablement may be met by animal tests or in vitro data.

Next, the Federal Circuit criticized the district court’s denial of a permanent injunction, stressing that a patentee’s right to exclude is fundamental. The majority even went so far as to say that, “Absent adverse equitable considerations, the winner of a judgment of validity and infringement may normally expect to regain the exclusivity that was lost with the infringement.” The Supreme Court eBay decision in 2006 held that a patentee that wins an infringement action is not automatically entitled to an injunction. As the majority opinion appears to be testing the boundaries of eBay, the majority clarified how its holding is consistent with eBay.

Judge Prost concurred, but disagreed with the majority’s standard for injunctive relief. Prost argued that creating a presumption of an injunction once the plaintiff prevails, which must then be rebutted by the defendant, is not the law according to what she considered was clear after eBay. To Judge Prost, the creation of a right to exclude is distinct from the remedies for violations of that right.

In the ongoing patent dispute between Apple and Samsung, Apple filed a “statement of recent decision” to support a permanent injunction against Samsung.



 Posted by at 4:45 pm
Aug 162011

I stumbled upon an interesting article (Can Beauregard Claims Show You The Money?) detailing the rise of the Beauregard claim. From its humble and shaky beginnings in 1995, the Beauregard claim had become a popular and successful style of claim for patent practitioners claiming inventions that involve computer programs. Last year, the claim seemed to have reached its zenith in, Finjan v. Secure Computing, 626 F.3d 1197 (Fed. Cir. 2010) where the Federal Circuit held that not only was it okay for a computer-readable medium with instructions on it to be enforced, but that the code needn’t even be active.

We fast forward to today, where the Federal Circuit decided Cybersource v. Retail Decisions. CyberSource brought suit against Retail Decisions, Inc., alleging infringement of its patent. Retail Decisions thereafter initiated an ex parte reexamination of the patent. The suit then resumed and the district court granted summary judgment for Retail Decisions of non-statutory subject matter. The CAFC affirmed the decision coming to its decision in an unprecedented way–that computer readable media with computer instructions should be treated as a process claim. Here is the analysis on why:

[P]rogramming a general purpose computer to perform an algorithm “creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994). But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind falls within the Alappat rule. Thus, despite its Beauregard claim format, under Abele, we treat claim 2 as a process claim for patent-eligibility purposes.

Anyone else confused by this analysis? Can’t all software be performed in the human mind if you break it down to the code?

I don’t agree with Judge Dyk’s analysis. This section of the opinion was extremely complicated, more complicated than it should have been. Claiming computer programs is not simple. In fact, the Beauregard claim is a very unique claim that doesn’t fit very nicely into a 1952 class of subject matter. Software claims resemble method claims in the sense that a series of methods are performed. But in this case, a computer is performing the methods, not a human. And in the case of a Beauregard claim, even though each task that a computer performs is a process, that’s not what is being claimed. Looking at Cybersource’s claim should put things into perspective.

2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:

a) obtaining credit card information relating to the transactions from the consumer; and

b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,

wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;

[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

[b] constructing a map of credit card numbers based upon the other transactions; and

[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

This claim should not be examined as a method claim because it more closely resembles an article of manufacture. The preamble is man-made–a computer readable medium containing computer instructions. It is also a manufacture. Therefore, the case should be closed. Judge Dyk should have consulted Occam’s Razor that the simplest answer is most likely the correct answer in deciding this case.

I think that the struggle that the Federal Circuit is having is how to reject a patent when the judges don’t think that the complexity or inventiveness exceeds the basic level. However, just because what the machine does is abstract does not mean that a 101 analysis is in order. An article of manufacture was nonetheless created and 101 is thus satisfied. The Patent Act contains many other provisions that can be relied on to kick out the claim. That’s what we have 102, 103 and 112 for.

Today the Beauregard claim has experienced a setback. But after being around for more than 16 years, it seems unlikely that it has met its demise so abruptly.

 Posted by at 1:27 pm
Apr 052011

Last September, I studied and helped write an Amicus brief for the Federal Circuit case Ass’n for Molecular Pathology v. PTO. As I reviewed Judge Sweet’s opinion, it struck me how sweeping and nonconforming to patent law his opinion was. In that light, I’ve been interested in knowing how this case will be decided because with the lower court’s opinion, there seems to be a lot of directions that the court could go in straightening the edges. I just listened to the oral arguments at the Federal Circuit and  here are some thoughts. Judges Bryson, Lourie and Moore made up the panel.

First oralist, Myriad

Representing Myriad, Greg Castanias first talked about jurisdiction. He stressed how there was no immediate threat to the plaintiffs. Plaintiffs who would carry out tests (could or would engage in competitive activities), but there were no real consequences. Courts require actions or meaningful preparations by the declaratory plaintiffs AND affirmative acts taken. One letter was sent out since in 1998. This is against MedImmune’s immediate threat. But is it still a continuing threat? It wasn’t sufficient, according to Castanias.

Next, Castanias made an interesting and new redressability argument. The plaintiffs perceived the threat from the patents as a whole and not individual claims. Why? They wanted to invalidate the whole patents, even though some of the claims were valid.

Next, the debate that garnered the most attention, the composition claims. Isolated DNA never exists in nature, Castanias powerfully articulated. Product of human ingenuity, should be the test. Then there was a discussion on rocks and of course covalent bond breaking. I think that Castanias’ test is a good one that fits the court’s precedent cases. Before the Patent Act of 1952, and indeed even after, courts would kick out inventions as not patentable, but confuse it with terminology of obvious, not useful, or not novel. These cases probably should have used subject matter as their argument, but now that they didn’t, we are stuck with trying to make sense of a couple centuries of patent law.

On to the method claims, a little bit of time was spent on how sequences is not information. I agree with this. The specification, for instance, talked about specific technological methods that can be used to compare and analyze. I agree that this might pass the same analysis as Prometheus.

It was funny when in a hypothetical, Judge Moore referred to how God made her product, not man. I thought that the ACLU crowd might not be too pleased with this analysis!

Second up? ACLU

The ACLU’s Christopher Hansen was next. He first spoke about how Myriad has all but conceded the first half of standing for a declaratory judgment, which I got the sense as well from listening to Castanias. But does Myriad meet the second part of being willing? One declaration says that they will consider. Hmm. To me, this is not enough.

In response to the redressability argument, Hansen said that Myriad doesn’t identify claims that get in the way. Probe and primer claims aren’t identified specifically.

I wished there was more time spent on the merits of the case (my background makes such topics quite interesting to me), but Hansen did discuss how isolating is not purifying. All Myriad does is snip the gene out of the body. It should not matter what instrument is used, if the product is the same as its natural state, it should not be patent-eligible. Applying this to the case at hand, a kidney should not be patent-eligible in much the same way as an isolated DNA is patent-eligible. Whether the method is using tweezers, scalpels, or genomic methodologies.

Solicitor General Neal Katyal on behalf of the US government

The test articulated is the now-famous magical microscope test. If you could see the exact claim in nature, then that is a product of nature. CDNAs are fine because the magical microscope won’t find it.

Even though this oral argument went pretty smoothly for the most part, the government’s position was kind of awkward. This wasn’t really pointed out until the end, but I found it kind of funny. I love Judge Moore’s “you’re not changing anything with this theory of yours? What about the last 35 years buddy? What you are advocating goes against what’s on the PTO’s website right now.”

I got the sense that this case will be decided on jurisdiction from Judge Moore’s question next: Why not Congress? The Federal Circuit doesn’t need to make policy on such a controversial issue as gene patenting. The smartest thing for them to do is kick it out on jurisdiction and have Congress or the PTO make policy on it. Katyal answered that this is a pure question of law, but I don’t really agree. I think that a lot of research should go into deciding whether genes should be patent-eligible.

Finally, I love how Judge Hand made it in to this case. It’s been 100 years and he’s still a legend.


I got the sense that Judge Moore didn’t understand probes and primers. Correct me if I’m wrong, but you can use a non-CDNA nucleotide as a probe, can’t you? The way she was questioning at this point made it appear that only CDNAs are probe and primer material. Castanias answered that the definition of isolated answers the question that it’s not the entire sequenced genome.

A funny aside, I thought it was funny how everyone seemed to pronounce BRCA differently. When I studied this gene in college, I always went with how Greg Castanias pronounced the acronym, which I think is how Myriad prefers to pronounce it too: Bracka. But Judge Moore used Bricka-1, Judge Bryson used Berca-1  and attorney Hansen decided to not risk it at all, by just spelling it out B-R-C-A.

A good presentation by all parties, overall. I got the sense that the judges were leaning toward standing as the most important issue, even though the ACLU and government wished to talk about other things. That may not be a good thing for their case! I think jurisdiction will prove to be the most powerful argument in favor of Myriad.

 Posted by at 8:09 am