Posts Tagged: "35 USC 101"

A memorandum signed by Judge Sleet shows that Mallinckrodt’s patents were invalidated under the Section 101 patentability standard set by the U.S. Supreme Court in 2012’s Mayo Collaborative Services v. Prometheus Laboratories, Inc., a standard affirmed by SCOTUS’ 2014 decision in Alice Corporation v. CLS Bank International. Applying the two-step test for Section 101 patentability, the Delaware court found that the Mallinckrodt patents covered natural phenomenon which did not include an inventive step. The court found that patent claim limitations directed at echocardiography or severe adverse reactions did not satisfy the inventive concept step. “It does not matter what the severe adverse reaction is,” Judge Sleet’s memo reads. “Any reaction to treatment with iNO will be a natural phenomenon, dictated by the patient’s physiological response to the drug.”

The majority determined that the patent claims drawn to a computer memory system did not cover an abstract idea and, therefore, the second step of the Alice test was an unnecessary inquiry… “Our review of the ’740 patent claims demonstrates that they are directed to an improved computer memory system, not to the abstract idea of categorical data storage,” Judge Stoll wrote. “The specification explains that multiple benefits flow from the ’740 patent’s improved memory system.”

One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the courts. But, even this may not be convincing, if argued in the abstract, because, after all, we are dealing with abstract ideas to begin with, and it is all too easy for an examiner to dismiss an abstract argument as “not convincing”. A concrete, bright line test can be constructed, which may sway an examiner (or appeal board, if the rejection is appealed). Articulate a specific technological problem that the claims solve or are directed to solving. Analyze the claim and cite some of the important claim limitations that are not present in the alleged abstract idea, and explain the significance of these claim limitations in terms of the technological problem and technological solution.

Over the past few months, several of the major intellectual property organizations have developed proposed legislative fixes to patent subject matter holdings by the courts. The American Bar Association/ Intellectual Property Law Section (ABA/IPL), the Intellectual Property Owners (IPO), and the American Intellectual Property Law Association (AIPLA) have all released proposals, which contain a few similarities. All remove the novelty requirement from 101 since it is already contained in 102. Each provides that an applicant be “entitled” to a patent as long as the requirements of 101 and the other sections of the statute are met. These proposals offer thoughtful but distinctly different legislative options for legislative reform… Perhaps a focus on promoting understanding of the issues, coupled with time and patience, represent the most prudent course of action for now.

In Credit Acceptance Corp. v. Westlake Servs. the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“Board”) in a Covered Business Method (“CBM”) review proceeding, agreeing with the Board that petitioner Westlake was not estopped from maintaining a CBM review of the challenged claims and confirming that the challenged claims are unpatentable under 35 U.S.C. § 101… Dissenting-in-part, Judge Mayer would have held that the Court does not have jurisdiction to review a decision by the Board regarding a motion to terminate a post-grant review proceeding as barred by § 325(e)(1).

I have always argued that software patent eligibility is a must in a country where patent rights are guaranteed by the Constitution. That is, all fields of innovation should be treated equally under the law such that one field of endeavor (e.g., pharmaceuticals or electronics) is not deemed more “patent worthy” than other fields (i.e., computer science and information technology). This is especially true when one considers how important software is to the U.S. economy… A substantial amount of U.S. commerce is software-dependent and the associated innovation in the field – when novel and non-obvious – deserves stable and predictable patent law protection!

The industry is collapsing all because no one in a black robe has the guts to define the critical term that is the core of a test that is whimsically applied in arbitrary and capricious fashion. And why? The test is whimsical, arbitrary, and capricious precisely because it is unpredictable and never repeatable. Of course, the reason it is unpredictable and never repeatable is because different judges and panel configurations apply it based on their own subjective views because no one has ever taken the time to define the key term; no one cares to even attempt to interject objectivity to what is a hopelessly subjective, unpredictable and arbitrary test.

The few CAFC cases (since Alice) that have found inventions to be subject matter eligible is certainly a welcome development. These cases indicate that the CAFC does not believe all computer-related inventions are ineligible, and they provide helpful clues about what will weigh in favor of eligibility. Unfortunately, these cases do not demarcate the boundary between eligibility and ineligibility in any predictable, meaningful way. We still do not have an acceptable working definition of “abstract” and we likely never will. In these cases, the CAFC applied a variety of different, often inconsistent, rationale for finding the inventions at issue to be subject matter eligible.

“The results from the Patent Trial and Appeal Board reflect the procedures it applies, and in my judgment the procedures are wildly off base,” Judge Michel explained… “We’ve had PTAB final results… whatever the intentions were we don’t have to speculate… we have ample evidence of how it worked in practice. We know it doesn’t work satisfactorily.” *** “I don’t think things are really getting much better,” Kappos said. “We are in what I refer to as the leaky life raft.” When you are stranded and a leaky life raft comes along it looks great, but it doesn’t change the fact that it is still a leaky life raft. “The best you can say about 101 is that it has stabilized in a terrible space.”

In RecogniCorp, LLC v. Nintendo Co., the Federal Circuit affirmed the district court’s decision that RecogniCorp’s patent claims are directed to an abstract idea, and do not contain an inventive concept sufficient to make them patent-eligible under 35 U.S.C. § 101… Adding one abstract idea, such as math, to another abstract idea, such as encoding- decoding, does not make the claim non-abstract. A claim containing a mathematical formula can satisfy § 101 when it applies the formula in a structure or process which, as a whole, is performing a non-abstract function that the patent laws were designed to protect. Under Alice step two, a claim that is directed to a non-abstract idea is not rendered abstract simply because it uses a mathematical formula. However, the reverse is also true: A claim directed to an abstract idea does not automatically become patent eligible by adding a mathematical formula. The elements of the claim must be examined to determine whether there is an inventive concept beyond the addition of a mathematical formula, e.g. to be implemented on a computer. The claims must make it clear how the invention improves a specific technology, rather than simply stating to an abstract end-result.

The USPTO Memorandum of November 2, 2016 as to Recent Subject Matter Eligibility Decisions (“USPTO Memo”) inappropriately attributes the phrase “computer-related technology” to McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016). The phrase “computer-related technology” does not appear in McRO or even in Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014); rather, it appears in Enfish, LLC, v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016) and only after Enfish appropriately cites Alice.

Since the Supreme Court’s Alice decision, district courts and the Federal Circuit have been ruling on what they perceive as the “abstractness” of patents—not with analysis of the claimed invention, but by referring broadly to a patent’s field of invention, the problems a patent sets out to solve, even generalizations about what the patent means to the court. This is a marked departure from the historical analysis of patent claims. Disturbingly, this process can be used to invalidate any patent because it is based on broad generalities and assumptions rather than precisely defined and examined claims. While some applaud the courts’ actions as helping to extinguish so called “bad patents,” valid and enforceable patents are being destroyed as well. The resulting destruction of valuable intellectual property damages America’s innovating community… Appellant Evolutionary Intelligence has secured a 30-day extension to file the combined petition, now due April 19, 2017. Amicus briefs in support of the petition are due on April 26, 2017. FCR 29.