Posts Tagged: "Alice"

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.

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.

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.

The waters surrounding Section 101 of the Patent Act are as muddied as they come. The statute sets forth only in broad strokes what inventions are patentable, leaving it to the courts to create an implied exception to patentability for laws of nature, natural phenomena, and abstract ideas. It has been difficult for lower courts to determine whether an invention falls within one of these excluded categories, and the U.S. Supreme Court has refused to provide a definition of what constitutes an “abstract idea.” Nonetheless, the Court in recent years has laid several foundation stones in Bilski, Mayo, Myriad and Alice for a bridge over these troubled waters. Trying to build upon these, the Federal Circuit issued two recent opinions dealing with Section 101: Enfish, LLC v. Microsoft Corporation and In re: TLI Communications LLC Patent Litigation. However, these decisions only create more confusion and cannot provide a safe means of passage over the turbulent waters of patent eligibility.

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.

Enfish bothers me. The Federal Circuit decision puts forth some great phrases, but I am concerned that Enfish will not be as useful as hoped in overcoming §101 Alice rejections. The patents at stake in Enfish appear to have been written with a confident view of the prior art and of the invention. So, if a specification does not confidently emphasize the “invention,” its “benefits over” conventional prior art, and “disparage” the prior art, will examiners and judges continue Step 1 characterizations at “such a high level of abstraction”? Is Enfish merely much ado about nothing?

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.

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.

Earlier this month, attorneys and patent practitioners from all over the nation, and far corners of the globe, descended upon Bethesda, Maryland for the 31st Annual Intellectual Property Law Conference of the American Bar Association (ABA). A panel of three distinguished practitioners, Tim Bedard of Visa, Eric Sutton of Oracle, and Gene Quinn, debated The Post-Alice Landscape. The presentation included…

The use of a mathematical formula in a claim can trigger a 35 USC 101 rejection or invalidation of the patented claim. However, the role of mathematics in physics and in inventions has changed dramatically over the last 50 years. Computers are programmed to operate on the numbers to perform a defined task, such as filtering or demodulation, by performing calculations in a certain order and at a certain speed. Cellphones, DVD players, telephone sets, 3D printers, cameras, MRI machines and the like are in essence computers with an A/D and D/A converter and/or transducers.

Showing a bowl of spaghetti on one of his first few PowerPoint slides set the tone. The law as it applies to software patent eligibility is a tangled mess. “The Supreme Court has continually taken cases in this area and rather than clarify they have continued to hang on,” Schecter explained referencing the fact that the Supreme Court seems committed to the belief that their 101 jurisprudence is consistent and reconcilable. Of course, that is not the case. “There are too many cases that conflict with each other.” He is right. Schecter would go on to say that we are at a point where a legislative fix seems necessary.

the Courts have found it difficult to use the Mayo two-part test in the examination of a patent’s validity thus creating great uncertainty… One should not confuse the uncertainty of the complex U.S. patent system with the clarity of the Alice decision. There is no reason to believe any new legislation will provide any improvement in deciding what should, and what should not, be patentable.

The District Court’s errors in the Broadband iTV decision are a paradigmatic and telling manifestation of certain of the manners in which district courts are misapplying the two-step Alice test in order to invalidate patents, creating something of a fait accompli at the outset of the filing of an Alice motion. Most notable is the alarming trend of certain district court Section 101 Alice invalidations that purport to resolve questions of law but that, upon closer scrutiny, only nominally invoke Section 101 to improperly sidestep the work of Sections 102, 103 and 112 of the Patent Act. The problem in so-doing is that district courts are utilizing the summary legal analysis permissible under Section 101 when, in fact, they should be undertaking the factually-intensive analysis required by Sections 102, 103 and 112. This sleight of hand has resulted in what is becoming a systematic invalidation of patents on a far lesser “legal” showing rather than the rigorous factual showing mandated by the Patent Act.