Posts Tagged: "abstract"

Surviving §101 Step 2: Is there ‘Significantly More’?

Earlier this year the Supreme Court issued a ruling in Alice Corp. v CLS Bank Int’l, which applied the Mayo 2-part test to computer-implemented subject matter.[2] The 2-part test asks: (1) whether the claims at issue are directed to patent-ineligible concepts; and (2) if yes, is there something “significantly more” in the claim to ensure that the claim is not…

Surviving 101 Challenges After Alice Gone Wild

The judge made exception to §101 for laws of nature, natural phenomena, and abstract ideas exists because a patent on these would impede innovation more than promote it, contrary to the primary objective of patent law. As the Supreme Court emphasized, we must distinguish between claims to the building blocks of human ingenuity versus those that integrate the building blocks into something more. The former would risk pre-empting or disproportionately tying up the use of the underlying ideas – to the detriment of progress in the useful arts. Basically, the purpose of the Mayo test is to ensure that patent law not inhibit further discovery by preempting or improperly tying up the future use of building blocks of human ingenuity.

The Disclosure Revolution – A Report from the Front, 2014

The Disclosure Revolution is an ongoing process that has transformed patent law over the last couple of decades. While courts continue to say, “The claims define the invention,” decision after decision rewrites broad claim terms to conform to the scope of disclosure. A single embodiment once served as an example supporting enabled claims bounded only by the prior art; now, a single embodiment signals the inventor’s intend to limit the invention to the embodiment itself, rather than to claim terms… Overall, 2014 will likely be remembered primarily for Alice and its eventual progeny. In addition to its impact on the law per se, the economic effects may prove enormous. An entire segment of the patent community stands vulnerable to a slowdown, or shutdown, of patenting activity in the business methods and software fields. Other areas, including definiteness, will feel the effects of 2014, but in a far more incremental fashion.

USPTO Releases Patent Eligibility Guidance

The USPTO guidance, which in large part is reminiscent of the KSR Guidelines put out by the Office in 2010, goes through cases one by one. The USPTO explains the facts, provides representative claims and then explains the holding in each case so that patent examiners can understand the teaching point of the case and how to apply the holding to similar situations moving forward. Perhaps most notable, at least on the first review, is that the USPTO incorporated the recent Federal Circuit decision in DDR Holdings, where the Federal Circuit (per Judge Chen) found that the software patent claims at issue in the case were patent eligible.

A Post-Alice Playbook: Practical Strategies for Responding to Alice-Based Rejections

Although the Supreme Court in Alice declined to provide an express definition of “abstract idea,” the opinion is packed with evidence that the Court intended for the term “abstract idea” to apply not to any “abstract idea” in the colloquial sense, but only more specifically to abstract ideas that are fundamental practices long prevalent in their fields… [A]lthough the Court did not provide a definition of “abstract idea,” its reasoning implies that it intended to limit the concept of “abstract ideas” to those concepts which are fundamental and long prevalent, possibly to concepts which have been well-known and extensively used for hundreds of years. An even more narrow, but very reasonable, interpretation of Alice, given the opinion’s strong emphasis on the risk hedging claims in Bilski, the “intermediated settlement” concept allegedly embodied in the claims at issue in Alice, and the repeated references to “economic practices,” “finance class,” “commerce,” and “the modern economy,” is that the Court intended for “abstract ideas” to be limited primarily or entirely to financial methods.

Abstraction in the Commonplace: Alice v. CLS Bank and its Use of Ubiquity to Determine Patent Eligibility

A troubling aspect of the analysis in the Alice opinion is the suggestion that an invention, once patent eligible, can become patent ineligible simply based on the passage of time and public adoption. Dialogue in the oral argument as well as statements in the Court’s opinion suggest this line of reasoning, which arguably originated in Bilski, has become an accepted principal . . . An invention may initially be susceptible to patenting but may later become ineligible for patenting (as opposed to becoming unpatentable due to lack of novelty or obviousness) as it becomes more adopted, ubiquitous, successful or commonplace. Ubiquity, it would seem, is now the touchstone not only for patentability but for patent eligibility too.

Alice at Court: Stepping Through the Looking Glass – Part II

There is a further gulf between those who view In re Alappat as sound logic and engineering (ABL, AIPLA, Alice, Mr. Ronald Benrey, BSA, CCIA, Mr. Dale Cook, Prof. of Computer Science Lee A. Hollaar, IEEE-USA, Microsoft) and those who it as mistaken (Electronic Frontier Foundation, Prof. Robin Feldman, Red Hat) and primarily responsible for an increase in such patents (Electronic Frontier Foundation, Google, “Law, Business and Economics Scholars”). The IEEE-USA provides an excellent analysis of the relationship between software and hardware, pointing out the incontrovertible principle of equivalency, that “special-purpose programming of general-purpose hardware” is “equivalent to special-purpose hardware,” though IEEE-USA fails to mention that this is a fundamental principle of computer science, as established by Alan Turing in the 1930s. To assert, as does the EFF, that the Federal Circuit “concocted” the equivalency of hardware and software goes beyond denying the foundational work of Turing and others. The equivalency of software and hardware is what makes it possible for Java to run on any type of computer using the Java Virtual Machine, as well the electronic design automation industry, which enables complex electronic circuits to be entirely designed in software before being implemented in hardware.

Alice at Court: Stepping Through the Looking Glass of the Merits Briefs in Alice v. CLS Bank – Part I

The fractured views of the world begin with the question presented, and reflect how different parties frame the debate in very different terms. Alice’s merits brief presents the question before the Court as “whether claims to computer implemented inventions…are patent-eligible.” Putting the question this way allows Alice to place its inventions and claims in the larger context of all computer-implemented inventions, the subtext being that if the Supreme Court holds that computer-implemented inventions are patent eligible—which is a fair bet—then Alice’s patents should be valid. Further, phrasing it this way allows Alice to distance itself from pure business method claims from the invalid claims in Bilski v. Kappos.

Software: The Heart and Soul of Many Innovative Advances

Broadly construing and applying the abstract ideas exception would jeopardize countless patents and patent-fostered innovations that are providing real, tangible benefits to all levels of society, and that are helping to fuel the domestic and global economies. Indeed, it is impossible to overstate the economic importance of software and other computer- implemented inventions. Virtually all industries now use computer-implemented inventions in some way… Notably, and notwithstanding the alarmist complaints of some interested parties that are most dependent upon computer-implemented technologies, high-tech industries are neither stagnating nor suffering from a dearth of innovation. To the contrary, these industries are highly competitive, vibrant fonts of innovation and economic vitality. The availability of patent protection for computer-implemented inventions has been a spur, not a bane, to their growth and development.

Ranting: Patent Hysteria Over Amazon Patenting Facebook

It is truly sad that massive anti-patent hysteria can be whipped up simply based on a single sentence in the Abstract of a patent. For crying out loud people, the Abstract is hardly considered to be a part of the patent application and has absolutely nothing to do with the exclusive rights granted. The claims are what defines the exclusive right, nothing else! But we will never get the anti-patent types to ever read a claim because there are just too difficult to understand and there are way too many details in the claim. WAKE UP! That is the point! The more details in the claim the more narrow the rights!