Posts Tagged: "Alice"

Recent Cases Show Federal Circuit Is Concerned About ‘Over Abstracting’ Rejections of Method/ Process Patents

In one of its latest opinions attempting to parse precedent on the subject matter eligibility of software, method of use, and business method patents that arguably involve application of laws of nature or recitations of well-known, conventional methods and techniques, the U.S. Court of Appeals for the Federal Circuit found that a patent directed to a method for administering a naturally occurring beta amino acid to cause an increase in the concentration of a naturally occurring amino acid combination in muscle and brain tissues was subject matter eligible for patent protection (Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC, No. 18-1295, 2019 U.S. App. LEXIS 7647 (Fed Cir. March 15, 2019). The panel’s 2-1 majority decision conceded that the claims at issue involved laws of nature and had similarities to claims the U.S. Supreme Court had found subject matter ineligible but found that the claims possessed sufficient inventiveness beyond natural phenomenon and conventional methods to make them subject matter eligible for patent protection. Since Alice, the Federal Circuit and the federal district courts have been striving to implement and apply the Alice test to methods of use, software, and business method inventions that arguably involve applications of laws of nature and conventional methods. The challenge for the court in these cases has been to determine whether the claims sufficiently go beyond applications of laws of nature and known conventions to qualify as subject matter eligible for patent protection under Section 101. The Federal Circuit has found an inventive concept in several such cases.

How the EPO and USPTO Guidance Will Help Shape the Examination of Artificial Intelligence Inventions

It is safe to say that Artificial intelligence (AI) and Machine Learning (ML) are hot topics and, as with any rapidly growing technological area on the industry side, there is also a rapidly growing number of patent applications being filed.In view of this, the European Patent Office (EPO) issued new guidance for examination for AI and ML patent applications in November 2018. Meanwhile, in January 2019, the U.S. Patent and Trademark Office (USPTO) also issued revised guidance directed to what constitutes patent eligible subject matter under 35 U.S.C. §101. Although the USPTO’s revised guidance is more generally directed to software applications, at least one of the accompanying hypothetical examples (Example 39) is directed to the AI and ML space. Therefore, while there may be lingering concerns that AI and ML inventions will face extra scrutiny toward patentability due to their software-centric nature, the extra attention that the EPO and USPTO are paying toward AI and ML will likely help swing the pendulum of patentable subject matter toward a place that is in harmony with the current state of technology. The below analysis reviews the recent developments by the EPO and the USPTO to provide specific guidance on the topic of AI and ML.

Other Barks & Bites for Friday, March 15: Final Notice on USPTO MTA Practice, Boalick Appointed Chief PTAB Judge, and More

This week in Other Barks & Bites: the U.S. Patent and Trademark Office promotes Scott Boalick to Chief Judge of the Patent Trial and Appeal Board (PTAB); the agency also announces a new pilot program for motions to amend at the PTAB; India’s Cabinet votes to bring trademark and industrial design law into accord with international standards; a trial date is set in the copyright case brought by the heirs of Marvin Gaye against Ed Sheeran; a Southern California district judge rules that a Dr. Seuss/Star Trek mash-up is a transformative fair use; Apple alleges that someone has tampered with a key witness in the Qualcomm patent infringement case; and UK finance ministers issue a report calling for more antitrust activity against American tech giants, including Facebook and Google.

Post-Myriad Legal and Policy Considerations for Patenting Genetic Inventions

The U.S. Supreme Court’s 2013 ruling in Association for Molecular Pathology v. Myriad Genetics changed the landscape of what is considered patentable material in the context of genetic inventions. In the five years since Myriad, companies have pushed the boundaries of patenting certain types of genetic materials. Despite Myriad’s express statement that it was not considering “the patentability of DNA in which the order of the naturally occurring nucleotides has been altered,” the courts have not yet established the contours of how much nucleotide sequences need to be altered in order to “create something new” in order to be patentable. However, as we discuss in the next section, we expect the Court to address these questions as biotechnology companies increasingly invest resources into emerging, expensive technologies involving genes and seek to protect their investments through patents.

Other Barks & Bites for Friday, March 8

This week in Other Barks & Bites: The United Nations highlights the importance of women in innovation on International Women’s Day; Comments due today on USPTO Section 101 Guidance; FDA Commissioner Scott Gottlieb resigns; a Senate bill with six bipartisan co-sponsors would increase requirements on patent disclosures for biologics; USPTO Director Iancu speaks out on Alice; Apple announces its intention to increase its presence in San Diego while its patent battle with Qualcomm heats up; Chinese copyright registrations increased by double digit percentage points in 2018; Stanley Black & Decker faces off against Sears in a trademark infringement battle over branding for Craftsman tools; Amazon announces that it will close dozens of pop-up stores in the U.S.; and Democrats from both houses of Congress introduce a new net neutrality bill.

Bioinformatics Innovations Thrive Despite 101 Chaos

Bioinformatics is a growing interdisciplinary technological field in which computing and software resources are applied to biological data and solve biological problems. For example, bioinformatics can be used to predict protein sequences through analysis of large databases of biological data to enable the development of new drug therapies. Advances in computing and software, like artificial intelligence (AI), open increasing possibilities in bioinformatics. Bioinformatics is growing rapidly—the market is predicted to exceed $16 billion by 2022. As with most growing industries, mechanisms that protect and promote innovations are key to supporting that growth. Thus, it is no surprise that the number of patent applications filed and assigned to the designated bioinformatics art unit was 40% higher in 2017 than it was in 2010. Despite this significant increase in applications, for the last five years, the subject-matter-eligibility requirement (codified as 35 U.S.C. § 101) of the U.S. patent law has been particularly vexing to applicants of computer-related inventions like bioinformatics.

Is 2019 the Year Clarity Returns to Section 101? Judge Paul Michel Is Hopeful

For almost ten years, U.S. patent law has experienced extraordinary confusion and uncertainty about what types of inventions and discoveries are patent eligible. The U.S. system changed from offering strong protection for novel and nonobvious inventions to questioning whether groundbreaking technologies are even the type the Founders thought would promote the progress of the “Useful Arts.” But recent developments, including the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (Section 101 Guidance), suggest that winds of change may clear the fog and bring back some clarity to U.S. patent law.

American Innovation at Risk: The New Congress Must Clarify Which Inventions Are Eligible for Patents

The U.S. Supreme Court has muddied the waters about patent eligibility in a way that threatens American innovation.  Capitol Hill is beginning to discuss this as a possible legislative issue for 2019.  Some would say it is as important as the intellectual property disputes in the tariff war with China… Intellectual property legislation traditionally is nonpartisan, which may make it a little easier to find a solution.  All members of Congress will support preserving the patent system’s incentives for innovation if they understand what is at stake for the country.

Why is SCOTUS Creating a Federal Common Law of Patents?

What makes SCOTUS’s assertions in patent law jurisprudence that there are these “exceptions” or additional “requirements” particularly annoying to many of us in the patent bar is that patent law is essentially statutory.  In other words, there should be no “federal common law of patents” that allows SCOTUS (or any other court for that matter) to make “exceptions” to or make additional “requirements” for what is already expressly written in the patent statutes.  Indeed, in other areas of federal law, SCOTUS has made it abundantly clear that “federal common law” doesn’t exist.  The most famous example is Erie v. Tompkins where SCOTUS overturned its prior view of a “federal common law” applicable in cases involving diversity jurisdiction.  So we in the patent bar may rightly ask:  why does SCOTUS believe it can create what is, in essence, a “federal common law of patents” to supplant or modify the existing patent statutes?

A Realistic Perspective on post-Alice Software Patent Eligibility

Much of the havoc wrought in the software patent system by the landmark decision Alice v. CLS Bank International, 134 S. Ct. 2347 (2014) stems from the unworkable two-part patent eligibility test based on vaguely defined and nebulous Abstract idea and significantly more constructs… In a patent eligibility landscape riddled with Alice-based rejections and invalidation it behooves patent practitioner and applicants alike to appreciate that not every innovation that achieves “a new, useful, and tangible result” is patentable… It is now more imperative than ever for practitioners to probe inventors with the right set of questions directed at identifying any distinctive technical features in the implementation, structure, configuration or arrangement of the software invention.

An Abdication of Collective Responsibility by the Federal Circuit

The Federal Circuit has often demanded some technical advantage under § 101 when none is required by U.S. patent law. The Federal Circuit has also made § 101 more burdensome, unpredictable and subjective than an obviousness determination under § 103, and § 101 is supposed to be a threshold test that acts to weed out only the most egregious attempts to patent fundamental principles. § 101 was never meant to weed out whole new areas of technology, particularly not nascent technologies. But that is exactly what is happening and the Court that has been charged to make sense of it all, the Federal Circuit, seems to be abdicating its collective responsibility by refusing to settle on a repeatable test that results in predictable outcomes.

Alice at Age Four: Time to Grow Up

Four years later, the patent landscape demonstrates that Alice has become a train wreck for innovation… Unfortunately, the Federal Circuit failed to rein in this rout of Machiavellian creativity, which it could have done by relying on well-settled procedural process and patent doctrines… This year, the Federal Circuit appears finally to have awakened from its slumber. In two recent opinions, Aatrix v. Green Shades and Berkheimer v. HP, the Federal Circuit embraced long-established procedural rules and patent doctrines… Savvy and creative patent lawyering will prevail. To be successful, patent practitioners must show the PTO, the courts, and Congress the importance of our clients’ innovations and explain why the type of technology should not dictate whether there is enforceability.

Bittersweet Milestone: Ten Million Patents Issued in the US, but What Are They Worth?

Last month, the U.S. Patent Office issued patent number 10,000,000. This historic occasion calls for rethinking our patent system and the future of American innovation… It is nothing short of misleading the public by telling inventors that in exchange for their invention disclosure they will receive a limited monopoly, a patent. Most of the time inventors get no monopoly rights whatsoever. At best, after years of litigation, millions of dollars in attorney fees and multiple challenges to their patent validity at the Patent Office, they may get some monetary compensation. But is it worth the hassle?

USAA Asserts Mobile Check Deposit Patents Against Wells Fargo

USAA alleges that Wells Fargo Mobile Deposit remote deposit capture system, which was released years after either of USAA’s remote deposit services were first offered, infringe upon the asserted patents. Wells Fargo Mobile Deposit has been downloaded more than 10 million times from the Google Play Store alone and by February 2018, Wells Fargo had 21 million users who were actively using a mobile banking account. Wells Fargo mobile check deposit system involves the use of alignment guides and feedback indicators which are designed to assist customers in orienting the camera, features covered by the USAA patents. Although USAA approached Wells Fargo last August to discuss the licensing of USAA’s remote deposit capture patents, Wells Fargo allegedly continues to practice the technologies without any compensation to USAA. Along with counts for infringement of each patent asserted, USAA is also seeking a finding of willful infringement to enhance the actual damages by three times.

Mayo/Alice ‘Directed to’ Inquiry and a Split Federal Circuit: Vanda Pharma v. West-Ward Pharma

In Vanda, Chief Judge Prost, one of the judges on the CellzDirect panel, dissented from the majority’s decision that found claims patent eligible for not being directed to a judicial exception in step one of the Mayo/Alice test. What differences between the claims in Vanda and those in CellzDirect led Judge Prost to dissent? Can these differences shed further light on the characteristics necessary for a claim to be found not directed to a patent-ineligible concept in step one?