Posts Tagged: "abstract"

The CAFC then approvingly noted that the district court invoked “an important common-sense distinction between ends sought and particular means of achieving them, between desired results (functions) and particular ways of achieving (performing) them.” As the district court reasoned, “‘there is a critical difference between patenting a particular concrete solution to a problem and attempting to patent the abstract idea of a solution to the problem in general.’” According to the CAFC, the claims at issue in this case do the latter, namely, “rather than claiming ‘some specific way of enabling a computer to monitor data from multiple sources across an electric power grid,’ some ‘particular implementation,’ they ‘purport to monopolize every potential solution to the problem’…Whereas patenting a particular solution ‘would incentivize further innovation in the form of alternative methods for achieving the same result’… allowing claims like [the ones at issue here] would ‘inhibit[] innovation by prohibiting other inventors from developing their own solutions to the problem without first licensing the abstract idea.’”

First, this type of circular “logic” is at the heart of virtually all Alice rejections. Here the examiner concludes there is nothing significantly more than the judicial exception (which in this case is an abstract idea) because the additional elements add no more than the abstract idea. In other words, the examiner says there is nothing significantly more than the abstract idea because there is nothing more than the abstract idea. The Alice equivalent of this “how dare you ask me, I’m your mother” simply says what you’ve claimed is abstract because it is abstract, period. Clearly, a conclusory rejection like this without any real explanation does not satisfy the examiner’s prima facie burden to articulate a valid reason to reject. After all “because” is not a reason.

Jericho’s access control model was first used as the blueprint for the Department of Defense Global Information grid in 2007. The software was later deployed across two Department of Defense secure network enterprises, providing access control to over six million persons and entities. Five years later, President Obama mandated the use of this model in every U.S. Government enterprise. The district court found the patent claims to be patent ineligible under the abstract idea doctrine, saying it did not matter that the system operated faster and more efficiently. The Federal Circuit affirmed without opinion in a Rule 36 summary affirmance.

In March 2016, Vehicle Intelligence filed a petition for writ of certiorari with the Supreme Court arguing that the two-part Alice test is “a universal pesticide to kill and invalidate virtually all patents.” Vehicle Intelligence has posed the following questions: (1) whether the Mayo/Alice test states that use or application of an abstract idea is automatic, conclusive proof of preemption of the abstract idea; (2) whether the Mayo/Alice test requires that any patent which improves on technology existing in the prior art to be retaught in a vacuum in order to present inventive concepts to satisfy the second step of the Mayo/Alice test; and (3) whether a patent would satisfy the second step of the Mayo/Alice test by having independent claims that include multiple explicitly-stated inventive concepts.

Earlier today the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) declined to institute a covered business method (CBM) review of U.S. Patent No. 6,006,227, which is owned by Mirror World Technologies, LLC. The decision is significant not only because the PTAB refused to institute a covered business method review, but because the panel — Administrative Patent Judges Thomas Giannetti, David McKone, and Barbara Parvis — cited the Federal Circuit’s recent decision in Enfish v. Microsoft when they found that the challenged claims of the ‘227 patent were not abstract.

Days before this Federal Circuit decision, the Patent Trial and Appeal Board (PTAB) issued its decision for Informatica Corp. v. Protegrity Corp. The patent at issue in this case – U.S. Patent No. 8,402,281 – is directed to a database management system that includes an operative database and an information assets manager database. It is conceivable that the Board erred by pushing past the initial Mayo/Alice question and finding that these claims, which cover a data storage innovation of the kind found in Enfish, may have been erroneous. In other other words, when the Board determined that the combination of the methods did not add significantly more than the already determined abstract idea, that question might have never been properly reached in the first place.

Where the claims are directed to an improvement to computer functionality, they are not abstract under the first step of Alice, and thus no step-two analysis is necessary. Here, the Federal Circuit found that Enfish’s self-referential table was directed to a specific improvement in computer capabilities, unlike Alice, where the claimed technology only added a computer to a traditional business practice. For this reason, the Court held that Enfish’s claims were not abstract under the first step of Alice, and therefore did not warrant the application of step two.

Bahr tells examiners that based on the Federal Circuit ruling they “may determine that a claim direct to improvements in computer-related technology is not direct to an abstract idea under Step 2A of the subject matter eligibility examination guidelines (and is thus patent eligible), without the need to analyze the additional elements under Step 2B.” (emphasis in the original) Bahr goes on to tell examiners that a claim that is “directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have been previously identified as abstract by the courts.”

A case currently pending before the Federal Circuit is anticipated to provide greater guidance into the answer to this question, namely, how district courts should determine whether a claim is directed to an abstract idea. The case, McRo, Inc. v. Bandai Namco Games America, No. 2015-1080, recently heard oral argument on December 11, 2015. The panel’s questioning indicated that its anticipated decision may provide greater insight into how district courts are to determine whether a claim is, in fact, directed to an abstract idea. The patents are directed to automatic three-dimensional lip-synchronization for animated characters. Whereas prior art lip-synchronization required manually synchronizing an animated character’s lips and facial expressions to specific phonemes, the patents are directed to rules for automating that process.

On December 18, 2015, several amici filed a brief in support of appellants in Netflix, Inc. v. Rovi Corp. et al., No. 15-1917 at the Federal Circuit. The amici Broadband iTV, Inc., Double Rock Corporation, Island Intellectual Property, LLC, Access Control Advantage, Inc., and Fairway Financial U.S., Inc. are all former practicing entities and patent holders that built, developed, and commercialized computer-implemented technology and maintain an interest in the patented results of their research and development that solved real world problems faced by their respective businesses. The district court found the five patents-at-issue in this case, generally relating to video-on-demand technology, patent-ineligible as allegedly directed to the abstract ideas.

A computer is a machine, yet there is an ongoing trend to “anthropomorphize” computers. That is: functions that are performed by humans are said to be able to be performed by computers. Anyone who has done any serious programming knows that is not how it works. Let me explain. Steps that humans can do almost mindlessly, for instance changing paragraph numbers in a text, may be excruciatingly difficult as programming steps. That is because computers are machines that process signals that follow very strict and inflexible routines that have no concept of what the signals mean.

The United States Supreme Court is commonly known to resolve difficult issues of law. Yet, Alice v. CLS Bank[ii], last year’s unanimous Supreme Court decision, has caused confusion about whether computer-implemented business methods and software innovations are patentable under 35 U.S.C. §101. The question of patentability of software-related innovations – even those involving merely implementations of business-related innovations – seemed…

If U.S. patent eligibility rules were more clear and predictable, the useful art of software development would be more prevalent. The “notorious computer” of the European Patent Office offers a viable option for reaching this objective. This approach would make business less uncertain as to whether not their proposed investments in software could receive patent protection. And reducing this risk would promote the future useful art of software development.

”A few years ago we ramped up our foreign filings and recognized that we’re writing this one document, this one patent application for so many different audiences. We started settling in on the European technical standard as a guide for how to draft, how to cover the innovation from that vantage point, in order to try to write this document that would satisfy the USPTO as well as the EPO, Chinese Patent Office, the Japanese Patent Office, and so on. So for me, what this environment means as a practitioner has more to do with how the patent is drafted and how we capture the innovation, and not really a huge difference about what the underlying innovation is or how it’s implemented.”

Earlier today the United States Patent and Trademark Office released the promised patent eligible subject matter examples, which together with the recently released guidance will give applicants, patent prosecutors and patent examiners more information about how the USPTO interprets the state of the law in this all important area. The USPTO guidance with respect to biotechnology has been much further…