18
Nov
By Eric Schweibenz
On November 16, 2010, the International Trade Commission issued a notice determining to modify an Initial Determination (“ID”) issued by ALJ Carl C. Charneski on July 16, 2010 and terminate the investigation with a finding of no violation of Section 337 in Certain Machine Vision Software, Machine Vision Systems, and Products Containing Same (Inv. No. 337-TA-680).  The Commission also issued an opinion on November 16, 2010 supplementing the ALJ’s analysis concerning his finding that U.S. Patent Nos. 7,016,539 (the ‘539 patent) and 7,065,262 (the ‘262 patent) are invalid under 35 U.S.C. § 101 for failure to claim patent-eligible subject matter.

By way of background, the Complainants in this investigation are Cognex Corporation and Cognex Technology & Investment Corporation.  The Respondents are MVTec Software GmbH, MVTec LLC, Omron Corporation, Resolution Technology, Inc., Visics Corp., Daiichi Jitsugyo Viswill Co., Ltd., and Daiichi Jitsugyo (America), Inc. (collectively, “Respondents”).  In the ID, ALJ Charneski determined that:  (1) the Respondents’ accused products do not infringe any asserted claim of the ‘539 and ‘262 patents; (2) certain claims of the ‘262 patent are invalid due to anticipation under 35 U.S.C. § 102; and (3) all asserted claims of both patents are invalid for failure to claim patent-eligible subject matter under 35 U.S.C. § 101.  See our August 26, 2010 post for more details.

On September 24, 2010, the Commission issued a notice determining to review the ID in part.  In the notice, the Commission determined to review:  (1) certain of ALJ Charneski’s claim construction, infringement, invalidity, and domestic industry findings with respect to the ‘539 patent; (2) the ALJ’s finding that the ‘539 and ‘262 patents are invalid for failure to claim patent-eligible subject matter; and (3) the ALJ’s findings concerning anticipation of certain claims of the ‘262 patent.  The Commission requested briefing from the parties on a question relating to issue (1) under review.  See our September 28, 2010 post for more details.

According to the November 16 notice, after examining the record of the investigation, including the ID and the parties’ briefing, the Commission determined to:  (1) modify-in-part the final ID and issue an opinion supplementing the ID’s analysis concerning its finding that the ‘539 and ‘262 patents fail to claim patent-eligible subject matter pursuant to 35 U.S.C. § 101; (2) set aside the ID’s finding that certain claims of the ‘262 patent are invalid as anticipated; and (3) affirm all other findings of the ID under review.  The Commission further determined to terminate the investigation with a finding of no violation of Section 337.

In the November 16 opinion, the Commission supplemented ALJ Charneski’s analysis of the patent-eligible subject matter issue and upheld his finding that the ‘539 and ‘262 patents are invalid under 35 U.S.C. § 101 in view of Bilski v. Kappos, 130 S.Ct. 3218 (2010), Gottschalk v. Benson, 409 U.S. 63 (1972), and Parker v. Flook, 437 U.S. 584 (1978).  The Commission determined that “the asserted claims of both patents cover an idea without a link to any real-world undertaking” and that “the asserted claims have absolutely no tie to any particular machine and fail to claim a process, using an algorithm, that transforms a claimed article from one form to another as required for an industrial process.”  Instead, “the claims merely recite data gathering steps that, even if executable by a computer (as in Benson and Flook), fail to transform any article into a different state or thing.”  Accordingly, since the Commission found that the claims of the ‘539 and ‘262 patents do not cover more than abstract ideas and do not to satisfy the “machine-or-transformation” test approved by the Supreme Court in Bilski, the Commission affirmed ALJ Charneski’s finding, as modified, that the claims are invalid under 35 U.S.C. § 101.
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