Posts Tagged: "Alice"

Defeating Alice with Data

Several questions every patent attorney should be asking before responding to an Alice rejection are: (1) How many Alice rejections has the examiner issued? (2) What does he or she consider to be the sticking points of the decision? (3) How many applications that received an Alice rejection were eventually allowed? Once an attorney has the answers to these questions in hand, the path to success in responding to an Alice rejection is considerably clearer.

Using contrasting examples to rein in capricious application of Alice by the patent examining corps

Although categorizing abstract ideas could be helpful, the use of categories expands the risk of overbreadth, especially when the categories have little definition, include sub-categories, and lack negative examples. The PTO should refine the categories of “judicial descriptors,” and do so both negatively and positively, to avoid overbroad application of Alice by examiners. The use of “judicial descriptors” not supported adequately by court decisions has the potential to do great mischief in the area in which I practice frequently, i.e., software and Internet-related patent applications.

The Patent Office should establish a more systematic approach to Alice-based 101 examination

Addressing the problem would be responsive to the overwhelming bulk of commenters who expressed opinions on the PTO’s most recent July 2015 Update on Subject Matter Eligibility (Section 101), who have agreed that the PTO has been applying Alice too vigorously and has been making more rejections than warranted, and that the excess rejections are reflected in the statistics. Examiners would welcome such efforts, because they would better know whether and when to make Alice-type abstract idea rejections under Section 101, in contrast with current guidance, which allow them to find reasons to make such rejections in virtually all cases. A more systematic approach to consideration of such rejections might look like this…

The 2015 Brokered Patent Market: A Good Year to be a Buyer

If you were buying patents in 2015, you likely did better than any previous year. The patent market, and, in particular, the brokered patent market, continues to be a robust market for buying and selling patents. Prices are down unless an EOU is available. Sales rates are up, and sales are tending to happen earlier. Caselaw impacted the market but not as much as you might have expected (Alice impacted fintech patents much more than software patents). With an estimated $233M in patent sales, we think the patent market will continue to provide interesting opportunities for both patent buyers and sellers.

The USPTO harms the economy with over-aggressive, haphazard Alice-based 101 rejections

It is poor patent policy to have broad areas of technology deemed patent-ineligible entirely, or ineligible without the high cost of attorney time to argue, and likely appeal, amorphous Alice-type rejections. This is particularly so as to technology that is central to the United States economy. Invention is central to U.S. economic might, and as our economy moves away from the “old line” manufacturing strength of the past, the U.S. has become especially strong in fields dependent on software technology and business methods. Strengths of the current U.S. economy include social media, the Internet, and the service economy, especially financial services. We are also strong in biotech. Yet those are precisely the fields most heavily damaged by Section 101 Alice-type rejections.

Surviving Alice: Signs that the patent market has weathered the Alice storm, at least for now

Alice certainly has dealt a huge blow to patent market, reversing the growth momentum of most market players, big or small. However, the decline in patent sales revenue has significantly decelerated to 5% in 2015, based on the estimated data. Not all segments of IP industry have weathered the Alice storm equally well. Most NPEs have seen their share prices plunging half to nearly 100%. There will be more restructuring and further consolidation in NPE business in 2016.

Portfolio Management: A Reassessment May Be In Order

For hoarders, once an item comes into their possession, such individuals develop an unreasonable emotional attachment to it. As these possessions, many of which are viewed by others as worthless, continue to accumulate, they become both a health and safety hazard to the hoarders and those about them until some concerned party, typically a family member or a governmental authority, intervenes. Much the same problem is found in some managers of patent portfolios.

McRo decision expected to clarify abstract idea doctrine under Alice

A case currently pending before the Federal Circuit is anticipated to provide greater guidance into the answer to this question, namely, how district courts should determine whether a claim is directed to an abstract idea. The case, McRo, Inc. v. Bandai Namco Games America, No. 2015-1080, recently heard oral argument on December 11, 2015. The panel’s questioning indicated that its anticipated decision may provide greater insight into how district courts are to determine whether a claim is, in fact, directed to an abstract idea. The patents are directed to automatic three-dimensional lip-synchronization for animated characters. Whereas prior art lip-synchronization required manually synchronizing an animated character’s lips and facial expressions to specific phonemes, the patents are directed to rules for automating that process.

Amici Ask Federal Circuit to Curb Misapplication of Alice to Specific, Novel, and Concrete Inventions

On December 18, 2015, several amici filed a brief in support of appellants in Netflix, Inc. v. Rovi Corp. et al., No. 15-1917 at the Federal Circuit. The amici Broadband iTV, Inc., Double Rock Corporation, Island Intellectual Property, LLC, Access Control Advantage, Inc., and Fairway Financial U.S., Inc. are all former practicing entities and patent holders that built, developed, and commercialized computer-implemented technology and maintain an interest in the patented results of their research and development that solved real world problems faced by their respective businesses. The district court found the five patents-at-issue in this case, generally relating to video-on-demand technology, patent-ineligible as allegedly directed to the abstract ideas.

Banks playing patent catch-up with tech companies on digital wallets, payment platforms

Mobile payment schemes and digital wallets have been a major topic of discussion in tech circles this year. In early December, Walmart (NYSE:WMT) became the first American retailer to announce its own mobile payment system that will be rolled out next year. Even in the wake of the Supreme Court’s decision in Alice, we have seen an interesting increase in the amount of patent filing activity for mobile payment systems from each of the three largest banks as valued by assets. This is a peculiar about-face from a sector that, until tech companies started encroaching on financial services, had rallied against strong patent rights for software for quite some time.

The Most Likely Art Units for Alice Rejections

While Alice rejections can be found all over the USPTO, roughly two-thirds of them are found in TC 3600. Only TC 2900 has not had any Alice rejections. Looking deeper into the 3620s, 3680s, and 3690s, the reach of Alice becomes apparent. Using Juristat’s data, we counted all rejections in these art units since June 19, 2014, the date Alice was decided. We then calculated the percentage of those rejections that cited Alice, focusing only on examiners that have issued at least ten rejections since the Alice decision. As shown in Figure 3, roughly three-quarters of all rejections in these art units are Alice rejections, with several examiners having a 100% Alice rejection rate.

Does the USPTO have authority to address patent eligibility in Covered Business Method review?

On November 5, 2015, patent owner Retirement Capital Access Management Company LLC filed the most important cert petition this term. This bold effort squarely presents a question circling around academic circles for years: whether the USPTO has the authority to address section 101 (subject matter eligibility) within Covered Business Method (CBM) reviews. To the untrained eye, this issue might sound wonky, jargony, technical and narrow. It is instead profound. If granted, the petition might help restore much needed certainty to the innovation ecosystem.

ABA CLE Webinar – The Agile Software Trend

The Agile Software Trend: How to be a Flexible Attorney in a Rigid IP System This program will explore some successful methods for working with clients following agile development to protect the clients’ IP. Panelists will also discuss how the decision in Alice Corp. v. CLS Bank International impacts such methods, as well as the USPTO’s implementation of the same.…

Are Business Method Patents Dead? It Depends on Who’s Applying for Them

Business method patents are still being granted after Alice, but are being granted at lower rates than before, and some assignees are better at obtaining them than others. The top assignees in the business methods art units have a wide range of allowance rates, from Oracle at 83.3% to Siemens at 35.3%, resulting in a difference of 48 percentage points. Even among the most successful assignees, only three have allowance rates of over 50%.

Time to Get Back to Business

While some companies continue to wait and see, we saw a dramatic shift in late 2014. The most sophisticated companies on IP matters used the uncertainty to their advantage. They hypothesized the market couldn’t get much worse, and since they would eventually need to engage in licensing discussions, they used the negotiation leverage they had during a slow market to get the best deal. Similar to a “buyer’s market” in real estate, the IP market was (and continues to be for some) a licensee’s market as many companies sit back and wait to see how the uncertainty will shake out.