Posts Tagged: "Alice v. CLS Bank"

The impact of Alice has been just what one would expect. The decisions of the USPTO examining corps, USPTO Patent Trial & Appeal Board, and lower courts have been wildly inconsistent. Far too many worthy inventions are being lost. Perhaps worse, the predictability innovators and investors in research and development require to effectively navigate the patent system has been eliminated. Change is sorely needed and overdue.

In many of the decisions, the examiners and appellants had an opportunity to make arguments based on Alice before the PTAB reached a decision. Yet, the outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection. As indicated above, the reversal rate for a § 101 rejection in December 2016 based on Alice was less than 9%. Equally worrying for potential appellants is that some decisions introduced a § 101 rejection even when prior art rejections were reversed. The PTAB seems to have stopped the practice of urging examiners to review the claims for compliance under § 101 in light of Alice, and, instead, has become more active in introducing § 101 rejections on their own.

On Tuesday, January 31, 2017, at 2pm ET, please join Gene Quinn (IPWatchdog) for a free webinar discussion on best practices for software patents and predictions for 2017… Since May 2016, Judges Moore, Taranto, Hughes, Chen, Newman, O’Malley, Reyna, Stoll, Wallach and Plager have all sign on to decisions that found at least some software patent claims to be patent eligible. That brings the total to ten (10) judges of the Federal Circuit indisputably in favor of patent eligibility for software in at least some instances over the last eight months.

When addressing the issue of generality vs. particularity, we come across a situation where the inventors described the most crucial aspect of the invention, the classification unit, in general terms in the claim. Consequently, in the PTAB’s assessment, the representative claim did not rise above the threshold test of patentability under section 101. But much of what the PTAB seems concerned about relates to disclosure and there is nothing in the PTAB panel decision in Itagaki to suggest that the PTAB reviewed the specification to determine whether the somewhat generally described terms were given particularized meaning by the applicant. It also raises questions about how the PTAB could have properly conducted an obviousness review if the classification unit was so abstract as to be infirm from a patent eligibility point of view.

In what can be described only as an utterly ridiculous, intellectually insulting, and idiotic decision, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) has done the truly absurd. In Ex parte Hiroyuki Itagaki the PTAB has ruled a magnetic resonance imaging (MRI) machine to be patent ineligible because it is an abstract idea, citing the United States Supreme Court’s decision in Alice v. CLS Bank for support.

Join us on Thursday, November 3, 2016 at 2pm ET for a discussion on drafting patent applications to overcome Alice, with JiNan Glasgow of Neopatents and Gene Quinn of IPWatchdog. In addition to taking as many of your questions as possible we will address the following: (1) Brief overview of Alice, Enfish, TLI Communications, BASCOM, McRo and FairWarning IP. (2) What these most recent Federal Circuit cases teach about drafting software patents. (3) How to cope with being unexpectedly assigned to an Art Unit.

Simply stated, the industry and the public deserve better than Judge Mayer. His anti-patent views so cloud his judgment that he twists, exaggerates and misrepresents in order to attempt to impose his radical views into the law. There is no place for a judge like that. It is time for him to leave the Court. If he chooses not to do that it would seem appropriate for the Court to do what they would with an attorney who grossly exaggerates and mischaracterizes cases and rulings.

Yahoo’s proposed auction of the Excalibur portfolio is likely to be the largest sale of computer-related patents since the Alice Corp. v. CLS Bank Int’l ruling in June of 2014. Alice may reduce the number of overly-broad patents in existence in the long run, but (ironically) in the short term the decision may have skewed patent value calculations in a way that encourages the kinds of behaviors it was supposed to negate. A sale of the Excalibur patents will provide an important test of Alice’s effects in the short term.

Those who make the argument that medical software is abstract, or trivial, are just wrong. Medical software has been developed to benefit both patients and medical practitioners by providing better diagnostics, which ultimately lead to new and better treatments… In the context of medical technology, the proper evaluation and effective treatment of patients depend upon complex correlations assessed over prescribed times. This, in turn, relies upon the generation of predictive models from a comparison of an individual patient’s signs and symptoms against a database of studied human wellness parameters, which contain patterns of diagnosis, chosen treatment, and outcome. These efforts are far from trivial.

One particularly disconcerting and largely unpredictable aspect of Alice is how it has been used to render games patent ineligible. This type of Alice-creep is particularly disconcerting because it ignores the primary concern of the Supreme Court in Mayo. Much of the 101 patent eligibility mischief we now experience can be traced back directly to Mayo v. Prometheus, where the Supreme Court ruled that conventional steps are not enough to transform a law of nature into a patent eligible process… Given that the Alice framework is really the Mayo framework applied to abstract ideas instead of laws of nature, why should Alice ever be used to deal with a process that a patent examiner acknowledges is new, non-obvious and appropriately described? It would seem that Alice simply has no relevance in such a circumstance.

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.

In every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even if they are ready to allow a case, nothing can be allowed without the approval of that Alice expert. This sounds quite similar to second pair of eyes review, which wreaked enormous havoc on the patent system over a decade ago. Second pair of eyes review was one of the primary reasons why patent pendency got out of control and the backlog of patent applications grew to well over 1 million unexamined patent applications. It seems to have returned under the guise of Alice.

What is happening in TC 3600 is prosecution is being re-opened for the purpose of issuing Alice rejections. With the help of readers, so far I’ve found eleven (11) separate cases over the last 10 months where prosecution was re-opened by Greg Vidovich, Director of TC 3600, after the Board issued a decision completely reversing the examiner on every rejection of every claim. In each case the Vidovich authorized re-opening of prosecution simply to issue Alice rejections… What good is an appeal when the TC Director has demonstrated that even if the appeal is successful prosecution can be re-opened and more bogus rejections made? What good is going back into prosecution with the same unreasonable examiner that has just has each and every rejection of each and every claim reversed? There is no relief for applicants, which is not how the system is supposed to work.

David Kappos, the director of the USPTO under President Obama from 2009 to 2013, recently called for congress to repeal section 101 of the patent act. According to Kappos, the current chaotic “I know it when I see it” 101 test that must be somehow consistently applied by thousands of USPTO examiners and hundreds of judges, means American inventors are better off seeking protection in China and Europe. While America “is providing less protection than other countries”, European countries are “putting their foot down in favor of innovation”.

What makes the Enfish case particularly interesting is that the court found that the software patent at issue was not even an abstract idea. As such, the inquiry as to patent eligibility did not proceed beyond the abstract idea analysis step. Basically the Enfish court used the wording in Alice to refute post-Alice perceptions that all improvements in computer related technology and/or software inventions are inherently abstract and therefore “are only properly analyzed at the second step of the Alice analysis.” Enfish at 11. This interpretation represents what could be a meaningful shift in the interpretation of software patent validity.