Posts Tagged: "Alice"

A Look into Uber’s Patent Prosecution History

Since the Supreme Court’s decisions in Mayo Collaborative Services v. Prometheus Laboratories (2012) and Alice Corp. v. CLS Bank Int’l (2014), patent practitioners have struggled in overcoming the newly imposed hurdle of patent eligibility. Uber is no stranger to this struggle. Of the 53 patent applications that Uber has filed since 2012, 27 of these applications have been examined, wherein Uber has received 13 final rejections based on §101. Uber has fought against many of the §101 rejections. However, Uber has thus far been unsuccessful in most of its attempts.

Federal Circuit Clarifies ‘Inventive Concept’ as Applied to Computers

This case concerned the subject matter eligibility of patents under 35 U.S.C. § 101, for a computer-related invention. The Federal Circuit affirmed the district court’s decision that two patents were ineligible, and reversed the court’s decision that one patent was eligible. All three patents at issue were held to be drawn to abstract ideas, and none of them had a patentable inventive concept… There was no inventive concept because the ’142 claims provided only generic computers performing generic functions. The proper inquiry is whether each step in a claim does more than require a generic computer to perform generic computer functions, not whether the prior computers already applied that concept.

It is time for Judge Mayer to Step Down from the Federal Circuit

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.

Affinity Labs of Texas loses two patent eligibility cases at the Federal Circuit

Affinity Labs of Texas, LLC, lost two cases at the Federal Circuit last week, both in decisions authored by Judge Bryson, which Chief Judge Prost and Judge Wallach joining the opinions. Although the patents at issue in the two cases were different, they shared a similar specification. In the DirecTV decision, the Federal Circuit followed the Alice/Mayo framework and found the claims patent ineligible. Perhaps of note, the Court rebuffed Affinity’s arguments regarding novelty, explaining patent eligibility does not turn on novelty of the claims. In the Amazon decision the Federal Circuit ruled that basic user customization is insufficient to qualify as inventive under Mayo and Alice.

Will Yahoo Feed the Patent Trolls?

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.

Is it Time To Amend 101?

Rather than the drastic measure of abolishing § 101, such as that proposed by previous USPTO Director Kappos, we think that a simple change to § 101 that removes the confusing notion of “inventiveness” from statutory interpretation would do the trick. Our proposal strikes a middle ground, in that, while removing “inventiveness” concepts from § 101 analysis, it retains the historical exceptions rooted in pre-emption that were reiterated in the Triad.

Federal Circuit Provides Additional Insight on §101 Protections for Software Patents

In a September 13, 2016 decision relating to subject matter eligibility of software patents under 35 U.S.C. § 101, the Federal Circuit vacated the district court’s order granting Defendants’ motion for judgment on the pleadings under Fed. R. Civ. P. 12(c), and held that McRO’s patents were eligible for protection under 35 U.S.C. § 101. The disputed patent claims recited a method for “automatically . . . producing accurate and realistic lip synchronization and facial expressions in animated characters.” The McRO patents identified that a problem in the prior art was that animators, even using the assistance of computers, had to manually manipulate the character model for lip movement. The McRO patents solved this problem by using rules to automatically depict more realistic synchronization of lip movements and speech.

Square fights off Alice rejection on payment transfer patent proving financial patents are not dead

U.S. Patent No. 9378491, entitled Payment Transfer by Sending E-mail. This discloses a computer-implemented method which enables the seamless initiation of a payment transfer through e-mail from one mobile device to another without creating an account or logging into a service. The innovative system is designed for both simplicity of use as well as security and authentication in online financial transactions. A final rejection issued by a patent examiner on the ‘491 patent dated December 8th, 2014, doesn’t specifically mention Alice v. CLS, but the case’s effect on the examiner’s decision seemed evident. In arguments made in response to the final rejection, Square’s prosecution team on the ‘491 patent noted that it had amended the claims to make the patentable features of those claims more explicit.

Medical software provides life-saving results, not abstract ideas

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.

Free Webinar: Learning what the most successful companies do to overcome Alice rejections

On Wednesday, August 24, 2016, at 2pm ET, I will be hosting a free webinar discussion on how to overcome Alice rejections. I will discuss the companies that are most successful at overcoming Alice rejections and what they are doing to be successful. We will also provide an update on secondary review and the off-the-record advice we received from an examiner in a 3600 art unit.

Would Monopoly® be patent ineligible under Alice?

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.

Hop on the Patent Prosecution Highway (PPH) via Australia

IP Australia actually has built into its quota system a driver for completing prosecution of open cases before taking up new cases. Therefore, there is a rule inside IP Australia that an Examiner must respond to communication from an applicant within 20 days of receiving the applicant’s communication. Oftentimes, it is sooner. Therefore, an application will not languish at the bottom of the Examiner’s work pile and the case will get attention from the Examiner in short order.

Why Removing Section 101 Won’t be Enough

Removing section 101 would remove the language granting patents only to processes, machines, manufactures, compositions of matter, or new and useful improvements thereof. These categories however have only rarely been used to limit patentablity. The Court has in fact described these terms as expansive. Their removal would not suddenly make the inventions found unpatentable by the Court as abstract ideas or articles of nature patentable. As shown by the discussion above, the judicial exceptions do not rest on a legal interpretation of section 101 in any of its forms. They come from Supreme Court precedent established BEFORE section 101 existed.

Using a European technical effect approach to software patent-eligibility

Unlike Judge Chen’s breadth-based approach, Judge Hughes appears to adopt the proposal of using the European technical effect ( or “technological arts”) analysis to determine whether a U.S. claim is patent-eligible… The CAFC decides that the above claim indeed is related to an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. This once again approaches the “technical problem” analysis of European law, which at least has the advantage of possessing something of a legal principle about it, as opposed to being a tautology.

Using narrow claim breadth as a sign of software patent-eligibility

In two cases written by Judge Chen (DDR Holdings, LLC v. Hotels.com L.P., 2013-1505 (Chen, Wallach, Meyer (dissent) and Bascom Global Internet Services, Inc., v. AT&T Mobility LLC, 2015-1763 (Newman, O’Malley, Chen)) the patents were found to be patent-eligible principally because analysis typically regarded as being under Mayo step 2 demonstrated that the claims added “something more” to the abstract ideas than merely well-understood and conventional steps. In effect, Judge Chen’s opinions focus on whether the narrowness of the claim is adequate. If it is, the claim is not abstract. How narrow is “narrow enough” is, like “abstract”, not defined, but this approach bears a closer resemblance to the original limiting principle of the abstract idea doctrine – preemption – than many recent decisions.