Posts Tagged: "patentability requirements"

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.

A computer is a machine, yet there is an ongoing trend to “anthropomorphize” computers. That is: functions that are performed by humans are said to be able to be performed by computers. Anyone who has done any serious programming knows that is not how it works. Let me explain. Steps that humans can do almost mindlessly, for instance changing paragraph numbers in a text, may be excruciatingly difficult as programming steps. That is because computers are machines that process signals that follow very strict and inflexible routines that have no concept of what the signals mean.

The Federal Circuit affirmed a patentee’s burden included showing patentability over prior art from the patent’s original prosecution history. Prolitec failed to show that its amended claim would still be patentable (non-obvious) over the combination of an original prior art reference and Benalikhoudja. Accordingly, the Court affirmed the Board’s finding of anticipation and obviousness. In her dissent, Judge Newman argued that the PTAB erred in denying Prolitec’s motion to amend, explaining the motion should have been granted because refusing to enter a proposed amendment that would resolve a dispositive aspect of claim breadth contradicted the America Invents Act.

The law of patent eligibility is created by the nine least qualified people to make such a determination; the Justices of Supreme Court of the United States. The Supreme Court arbitrarily chooses which of its own prior decisions to follow and ignore, refuses to read and enforce the laws passed by Congress even when the statue is but a single sentence (as is 101), and they openly legislates from the bench by creating judicial exceptions to patent eligibility where no such statutory prerogative exists. If the Federal Circuit will not step up and do the right thing and limit the lawless Mayo decision, which instructs lower courts to ignore the patent statute and drive 100% of the analysis into 101, the U.S. will forfeit our lead in the biotechnology and medical device industries. That will be bad for the economy, but far worse for public health.

”There should be no serious question that computer-implemented inventions such as software constitute patent-eligible subject matter under § 101,” Paul Clement wrote in a brief filed on behalf of IBM to the Supreme Court in 2014. Ultimately, the IBM brief would argue that the abstract idea doctrine is unworkable, which it is. Sadly, nearly 18 months after the Supreme Court’s landmark decision in Alice v. CLS Bank we are no closer to having a working understanding about when and under what circumstances software is patent eligible.

In order for a patent applicant to satisfy the utility requirement the claimed invention must be “useful” for some purpose either explicitly or implicitly. Utility problems normally arise in one of two scenarios. First, it is not apparent why the invention is “useful,” which can occur when an applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. Second, there are rare instances where an assertion of a specific and substantial utility for an invention is simply not credible.

“As this group knows, I had further opportunity to see Supreme Court reversals in patent cases,” Lourie explained. “That has led to a lot of uncertainty in the law when they decided cases related to patent eligibility… the myriad case involving breast cancer patents. I wrote the majority opinion in that case which the Supreme Court unanimously reversed.” Judge Lourie would go on to say that the week following the reversal he received the outstanding public service award from the New York Intellectual Property Law Association. With the audience laughing loudly he wondered whether the Association regretted the decision. Being unanimously reversed by the Supreme Court in Myriad is and will remain a badge of honor in my opinion. Judge Lourie gets patent eligibility, and he gets the science.

A dim view of software patents does not make Mark Cuban unique, but his latest foray into the patent debate does provide interesting insights into his arbitrary views on innovation. Like your technophobic grandfather, Cuban seems to believe that innovators are entitled to patent rights as long as the innovations are tangible. When those innovations manifest themselves in the form of intangible software the underlying innovation is for some reason no longer entitled to patent protection. Surely Cuban has to realize that this self balancing scooter could accomplish the same exact functionality if the control logic were software based, right?

The legal determination about whether an invention is obvious seems completely subjective and sometimes even arbitrary. In some technology areas nothing ever seems to be obvious, in other areas virtually everything seems to be obvious. This requires a patent attorney or patent agent to have familiarity with how patent examiners interpret the law of obviousness in a particular innovative area. You might suspect that this would mean that for low-tech gadgets it is more difficult to describe an invention that is non-obvious; while in high tech areas it would be easier to describe an invention as non-obvious. That frequently isn’t the case though, which leads to even greater frustration for inventors.

3D printed human organs are coming increasingly close to being a reality according to several reports. In addition to potentially saving thousands of lives every year, this ground-breaking technology raises issues related to patent law that cannot be ignored. Are human organs and/or tissues that are created through 3D printing process that use naturally-occurring cells eligible for patenting? Or are such organs and tissues considered to be products of nature and therefore ineligible for patenting? The America Invents Act (AIA) creates serious questions, as do some recent Supreme Court ruling on patent eligibility.

A couple months ago I commented on Ex parte Khvorova, expressing disappointment in its analysis and concern over what this might mean since it is “the first PTAB decision in molecular biology since patenting in that field got turned upside down.” To follow up on these notions, and to give credit where credit is due, I wanted to briefly comment on Ex parte Boyden, which the PTAB issued September 2, 2015.

KAPPOS: “Back when I was an engineer we saw it in mainframe computers where you’d make an invention and frequently initially the software wasn’t fast enough to be able to run the algorithm. So the algorithm would first be built in silicon, really expensive, but you’d wind up then fabbing up chips to be special purpose chips to run the algorithm. And then later as the software got faster the underlying computer systems got faster you’d reimplement the same algorithm in software, same algorithm, same invention but just reimplement it in software and then even later after that when the ASIC density got good enough you’d reimplement yet again in an application-specific integrated circuit, an ASIC. And so you’d have a little bit of a hybrid, if you will, but more on the hardware side, it’s an IC. It’s again putting the algorithm in a chip. And so what you’d see by looking at that is that it made no sense to say that an algorithm was patentable if it was implemented in a hardware chip. But the same algorithm implemented in software was unpatentable. Just didn’t make sense to say that.”

KAPPOS: ”Companies like Microsoft and Apple and GE — all of whom are members [of the Partnership for American Innovation] along with IBM, Ford, DuPont and Pfizer as well as smaller companies like Many Worlds and Second Sight — all of them are engaged in the hard work of making major, I’ll call it bone-grinding innovations. Second Sight is literally coming up with electro mechanical and implantable human interfacing medical technology that enables blind people to see. And like you said, Gene, serious software development involving lots of super smart people and putting in tremendous amount of time with a lot of specialized expertise, devising solutions to very important problems. You know, enabling blind people to see — it’s hard to imagine a more tangible, practical and important problem than that.”

The United States Supreme Court is commonly known to resolve difficult issues of law. Yet, Alice v. CLS Bank[ii], last year’s unanimous Supreme Court decision, has caused confusion about whether computer-implemented business methods and software innovations are patentable under 35 U.S.C. §101. The question of patentability of software-related innovations – even those involving merely implementations of business-related innovations – seemed…

The panel decision in this case reads recent Supreme Court precedent to create an existential threat to patent protection for an array of meritorious inventions. It avowedly holds that “groundbreaking” new diagnostic methods that make a significant contribution to the medical field” are ineligible for a patent whenever they (1) incorporate the discovery of a natural phenomenon, and (2) the techniques involved in putting that discovery to its first practical use were individually known beforehand. In other words, the person who first discovers a natural phenomenon can never obtain a patent on any practical application of that new knowledge, however surprising or revolutionary the results, unless the steps she teaches to use it are independently novel. As the example of this case vividly shows, that cannot be correct.