Federal Circuit Affirms Denial of JMOL, Partial Costs in Favor of Amazon

“The CAFC explained that when a jury returns a verdict based on ‘multiple independent factual bases…a lack of substantial evidence for some of those bases does not warrant JMOL.’ Instead, the verdict must be upheld if there is substantial evidence to support ‘any of the proffered factual bases.’”

https://depositphotos.com/103763568/stock-photo-affirmed-stamp-sticker-white.htmlThe U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a district court’s ruling denying Innovation Sciences’ post-trial motion for judgment as a matter of law (JMOL) that claims of three of its patents are not invalid and that Amazon.com, Inc. infringed them, or, alternatively, a new trial. The CAFC said that substantial evidence supported the district court’s finding of anticipation, which Amazon proved via expert testimony relating to a prior art home automation software called HAL.

The patents at issue are U.S. Patent Nos. 9,912,983, 9,729,918, and 9,942,798, which all share a common written description. Representative claim 22 recites:

A wireless HUB system for managing information communications comprising:

an input interface configured to receive a wireless signal through a wireless communication network;
a decoder; and
a network interface configured to provide a communication through a network communication channel,
wherein the wireless HUB system is configured to perform a conversion of the wireless signal to accommodate production of a corresponding information content, the wireless signal comprising a compressed signal, the conversion comprising decompressing the compressed signal;
wherein the decoder is configured to decompress the compressed signal;
wherein the wireless HUB system is further configured to communicate, through the network communication channel, information for managing an item status of an item in connection with a short range wireless communication regarding an updated status of the item; and
wherein the network communication channel is separate from a wireless channel for the short range wireless communication.

Innovation Sciences accused Amazon’s Echo, Fire Tablet, Fire TV, and Alexa Voice Service of infringing the three patents in the U.S. District Court for the Eastern District of Texas, but a jury found the patents invalid and not infringed. Innovation Sciences moved for JMOL that the claims were not invalid and that Amazon infringed, while Amazon moved for costs. The jury district court denied the JMOL motion and granted Amazon’s motion in part, awarding graphics and printing costs.

The CAFC explained that when a jury returns a verdict based on “multiple independent factual bases…a lack of substantial evidence for some of those bases does not warrant JMOL.” Instead, the verdict must be upheld if there is substantial evidence to support “any of the proffered factual bases.”

One of the bases for invalidity that Amazon presented was anticipation under 5 U.S.C. § 102. Innovation Sciences conceded that the appellate court could affirm the denial of JMOL if substantial evidence supported the finding of anticipation. Amazon relied on a prior art home automation system titled HAL, created by Tim Shriver, that existed before August 9, 2006, to show anticipation. Innovation Sciences argued that Amazon’s expert witness “improperly based his invalidity opinion on a reconstructed HAL system that is not prior art,” but the CAFC said substantial evidence supported that the relied upon HAL system was representative of prior-art systems. Innovation Sciences argued that Shriver’s testimony about the HAL system he provided in response to a subpoena request, during which he explained “that each customer’s system was ‘unique,’” proved “he did not know whether a customer ‘would have set up a system like this on August 9th of 2006.’” But the CAFC said Shriver also testified that, “except for some light bulbs, all the system’s components pre-dated the priority date…that his customers’ systems had the same components,…and that the system operated the way prior-art HAL systems did.” The court similarly found Innovation Sciences remaining arguments regarding Shriver’s and Johnson’s testimonies unpersuasive and ultimately found that substantial evidence supported the jury’s finding of anticipation.

As to Innovation Sciences’ request for a new trial, the court said its arguments were largely the same as those raised with respect to the denial of JMOL and rejected them for the same reasons. The only unique argument was that Amazon’s counsel made improper remarks to the jury about one of its other invalidity defenses, but the CAFC said Innovation Sciences forfeited this argument by failing to object at trial and had not provided argument as to the interest of justice warranting the CAFC to take action. Furthermore, Amazon’s other invalidity defenses would be moot anyway given the court’s affirmance of the anticipation finding.

With respect to costs, the CAFC said the district court abused its discretion in awarding Amazon $126,399.19 in graphics costs because “[g]raphics do not meet the definition of exemplification [under 28 U.S.C. § 1920(4)], i.e., “[a]n official transcript of a public record, authenticated as a true copy for use as evidence.” The district court interpreted the language of the statute to “include[] graphics support” but the CAFC said “that was error.” It added:

“Graphics do not meet the definition of exemplification, i.e., ‘[a]n official transcript of a public record, authenticated as a true copy for use as evidence.’… And, as Amazon concedes, ‘creating graphics is not copying.’”

The court thus reversed the award of graphics costs but upheld the award of $25,698.85 for printing two sets of trial exhibits.

 

Image Source: deposit Photos
Image ID:103763568
Copyright:bigfatnapoleon 

 

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11 comments so far.

  • [Avatar for concerned]
    concerned
    July 21, 2022 04:37 pm

    Curious:

    You got me again. However, that is how case law and the judicial exceptions are applied, not how the law as written is applied. The Board told me as much.

    Your comments that the USPTO does not need evidence, just analysis (be it right or wrong) and that SCOTUS can say mental steps (when it is not) make be thankful I am just an “one and done” USPTO inventor.

    However, I am still an inventor that finds solutions to problems. Perhaps I have discovered another solution that does not require patent case law. If so, that would be great to not have compromised and still have met my original objective.

    Time will tell. Thank you for your insights.

  • [Avatar for Curious]
    Curious
    July 21, 2022 02:53 pm

    I think we got somewhere
    Think again

    My claimed process is a specific limitation, it is an unconventional step (never used in any commerce or my field) and is confined to only the useful application of finding errors and omissions committed by professionals and experts. Nothing else. My UNacknowledged evidence proved as much, so the Board switched theories.
    This shows (yet again) you don’t understand how the law is applied.

    Sure, people have got into dedicated networks before me, however, never in the capacity to waive consent and find SSDI errors and admissions.
    Not claimed – not relevant. Also, waiving consent, finding SSDI error, and admissions can be mental processes.

    Where is the proof that secured networks have been used to waive consent, and/or to waive consent to find SSDI errors and omissions?
    This kind of argument has been tried dozens and dozens and dozens of times. It doesn’t work. What makes you think that a repeatedly-failed argument is somehow going to be magically persuasive is beyond me.

    The problem is rooted in the computer network.
    No. Not even close. I’ve worked with 1000+ computer applications. Your problem is not rooted in the computer network. You are solving a problem that existed before computers were in widespread use. The process you’ve described (absent the generic computer components) could have been practiced back then.

    If you put all of the principals in the same room with all of the relevant (written) records/documents at their fingertips, could they perform the invention? If the answer that question is “yes,” then the USPTO is going to declare it to be a mental process. Your invention is one of the easiest examples of “yes” I have run across.

    Having a patent application rejected by the USPTO and standing up to this non-sense looks to be a Badge of Honor.
    I’ve made this point before, but you have no real interest in obtaining a patent. You want to become a martyr. I hate to break it to you but hundreds/thousands of inventors have already been martyred for the same reason.

  • [Avatar for concerned]
    concerned
    July 21, 2022 07:33 am

    P.E.

    I guess I am clueless as to what it takes to get a patent.

    Evidence can be tossed, statements do not need to be accurate to reject, words can be added to the law that was originally met, definitions do not need to be given and one branch of the USPTO can grant the software patent while the other branch, the Board, can invalidate that same patent 84% of the time.

    My attorney argues in the CAFC blue brief that my constitution rights have been violated, that there is no due process because the process is extremely capricious and the outcomes are all over the place.

    Yes, I am clueless, but I know when the playing field is not level.

    Questions: Did the patent owners get a refund when their valid patent was revoked?

    How should people act under these circumstances?

  • [Avatar for concerned]
    concerned
    July 21, 2022 05:13 am

    Curious:

    I think we got somewhere:

    “If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility”

    My claimed process is a specific limitation, it is an unconventional step (never used in any commerce or my field) and is confined to only the useful application of finding errors and omissions committed by professionals and experts. Nothing else. My UNacknowledged evidence proved as much, so the Board switched theories.

    “This means that this “dedicated network” is a well-understood, routine, convention activity. Obviously, people got into State and Federal servers before you invention”

    Sure, people have got into dedicated networks before me, however, never in the capacity to waive consent and find SSDI errors and admissions. How is Diehr any different than my process? People used thermometers before, not to cure rubber though. Diehr got a patent.

    “Why do you continue to play this silly game? The USPTO doesn’t need proof — they need an analysis.”

    Thank you! And the USPTO analysis obviously can be inaccurate when proof is not offered to back it up. Where is the proof that secured networks have been used to waive consent, and/or to waive consent to find SSDI errors and omissions? My attorney is 100% correct, evidence matters regardless if the USPTO refuses to acknowledge it.

    “Your claims do not require any special consent procedure that can only be performed on a computer.”

    Actually the consent needs to be only performed on a computer network. SSDI applications are on-line. The problem is rooted in the computer network. The computer geeks were split on where in the computer process to put my claimed process, when applying for Medicaid eligibility or applying for benefits related to Medicaid eligibility.

    “The process of Alice could not be performed, in actuality, through mental steps. However, that didn’t stop the Supreme Court from invalidating the patents under 35 USC 101.”

    This admission that mental steps can be used as a rejection when it is actually not true makes the $500,000 challenge now unnecessary. That was the point of the challenge to prove if the USPTO says it is true, it is true regardless of how false the statement may be.

    Public opinion of SCOTUS is at an all time low. Having a patent application rejected by the USPTO and standing up to this non-sense looks to be a Badge of Honor.

  • [Avatar for Curious]
    Curious
    July 20, 2022 11:24 pm

    The USPTO and its Board wrote mental steps and offered no proof. Here is a chance to prove it. Do you want to prove mental steps on their behalf, take the challenge? You have dodge the challenge up to this point. Just prove it!
    Why do you continue to play this silly game? The USPTO doesn’t need proof — they need an analysis.

    The figures submitted with the application show computer network linked to State and Federal servers (not pencil and paper), the provisional and non-provisional application reveal how consent is waived.
    Big f’n deal. Do you know how many applications I’ve seen that “show computer network” linked to other computers/networks that were rejected under 35 USC 101? Dozens and dozens and dozens and dozens and dozens. A basic computer network isn’t going to help you. Your attorney should have told you that a long time ago.

    reveal how consent is waived
    Which isn’t claimed and even if it was it would NOT help you with regard to patent eligibility. Your claims do not require any special consent procedure that can only be performed on a computer. Without that, this “consent” doesn’t help you.

    It takes a dedicated network to get into a State and Federal server, I know you are not that ignorant.
    This means that this “dedicated network” is a well-understood, routine, convention activity. Obviously, people got into State and Federal servers before you invention, which means that this access isn’t anything special. This is from MPEP 2106.06(d):
    If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.
    You admit that this secure access is conventional, which means it isn’t going to help you.

    What upsets me are written statements that are not correct, period.
    If you understood the law, you would understand that your claims were dead on arrival. Seriously, I can write a nice article using your claims as an example of what not to do on so many different levels. Claim 1 takes up almost two pages worth of text in your Appeal Brief. A well-written claim should contain about 1/4 of the words your current claim 1 has. The claims have multiple actor issues, which makes it hard to pin infringement on any single entity. The amount of COMPLETELY UNNECESSARY claim language is astounding. Because of all the limitations, it would be a trivial matter for someone to design around these claims.

    IF my process CANNOT be done via mental steps, then false statements are being used to reject my application, not the law.
    The process of Alice could not be performed, in actuality, through mental steps. However, that didn’t stop the Supreme Court from invalidating the patents under 35 USC 101.

  • [Avatar for concerned]
    concerned
    July 20, 2022 05:48 pm

    Curious:

    Those are your opinions.

    I am not ignorant to the fact when an Agency supposedly has the law on their side, that Agency does not need to write statements that are incorrect on the surface. Write correct statements supported by the record.

    The USPTO and its Board wrote mental steps and offered no proof. Here is a chance to prove it. Do you want to prove mental steps on their behalf, take the challenge? You have dodge the challenge up to this point. Just prove it!

    The figures submitted with the application show computer network linked to State and Federal servers (not pencil and paper), the provisional and non-provisional application reveal how consent is waived. It takes a dedicated network to get into a State and Federal server, I know you are not that ignorant. Exactly what I claimed solves the problem. Nobody other than you have said otherwise.

    What upsets me are written statements that are not correct, period. Even if mental steps are a legitimate rejection, nobody wants to step up and prove me wrong and show mental steps can do my process. IF my process CANNOT be done via mental steps, then false statements are being used to reject my application, not the law.

  • [Avatar for Curious]
    Curious
    July 20, 2022 03:59 pm

    You, Sir, are a spam generator. Cool it.
    Bingo. I held my tongue for years and years, but I couldn’t any longer.

    His claims are rejected because at the time the claims were filed (within a few months after Alice was issued by SCOTUS), it should have been plain as day that his claims were not going make it past Alice. He could have had a patent by now if his attorney had drafted better claims and framed the invention as more of a data processing invention instead of a simplistic business method.

    Like it or not, the Supreme Court interprets the law, and his facts are close enough to Alice that no other case need be cited.

    you get the Social Security representative to waive consent from a request from your mind and release confidential information without the knowledge of the random person
    Too bad that isn’t claimed. Too bad that even if it was claimed, it wouldn’t help you with regard to patent eligibility. The fact that you don’t understand either of these two points is to your detriment in getting a patent.

    We all get that you don’t like how 101 is being applied. Most of who post here are in exactly the same boat. However, what you also evidence is an ignorance of the law. This is understandable as to non-patent attorneys. However, you’ve been on this blog long enough so that you no longer have that excuse.

  • [Avatar for concerned]
    concerned
    July 20, 2022 01:54 pm

    The challenge:

    We both put up a $500,000 bond. Ask IPWatchdog to cover the event. Your agency says mental steps, I say you cannot even get pass consent.

    I pick 10 random Social Security Offices in New Hampshire, I pick one name at random from the phone book at each office, and you get the Social Security representative to waive consent from a request from your mind and release confidential information without the knowledge of the random person.

  • [Avatar for concerned]
    concerned
    July 20, 2022 01:43 pm

    It was your Board that said I solved a problem and met the express law as written by Congress, plus your Agency has not provided a definition of inventive concept and/or significantly more. My attorney keeps asking for those definitions.

    Under the above circumstances, you will hear it again and again.

    Want to take the $500,000 challenge? Step right up and back up what your Agency puts in writing. I am ready, are you?

  • [Avatar for primary examiner]
    primary examiner
    July 20, 2022 01:28 pm

    Besides being clueless on what 101 requires and what your process lacks to overcome the 101 rejection, you are repeating yourself in every eligibility-related post, making the Comments section quite ummm spammy?

    Spam is bad. Although it can be quite delicious when fried.
    You, Sir, are a spam generator. Cool it.

  • [Avatar for concerned]
    concerned
    July 20, 2022 01:12 pm

    Evidence seems to always matter when against the patent holder or applicant.

    Conversely, my 55 documents of evidence on the record are not even acknowledged or disputed. The evidence showed experts could not do my process via mental steps and that nobody uses the my process, yet the claimed process is routine, conventional and well understood and can be done mentally in the brain.

    Amazing.

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