Posts Tagged: "patentable"

These revisions favor patent owners, according to Palmer, but not everyone is supportive. For instance, Bilski, Mayo, Myriad, and Alice have given several accused infringers an additional tool for fighting non-practicing entities. So. the level of support for these revisions will depend where you fall on this spectrum. That being said, Palmer does not think the Court will change its eligibility analysis in the foreseeable future, and Congress is not likely to take up these anytime soon.

The Cleveland Clinic’s diagnostic or “testing” patents at issue dealt with a process by which an enzyme was measured and correlated against known levels of the enzyme in patients who were healthy or had cardiovascular disease. The Federal Circuit applied the two step Alice analysis, affirming a finding of Section 101 ineligibility and a failure by plaintiff to state a claim of contributory or induced infringement.

Unfortunately, the patentability requirements are frequently misunderstood. For many who are not well versed in patent law one of the reasons it can be confusing when considering patentability is due to the fact that the first of the patentability requirements asks whether the invention exhibits patentable subject matter, or is patent eligible. The question of patent eligibility leads the many anti-patent zealots and other patent newbies to erroneously conclude that if an invention is patent eligible then a patent issues. Nothing could be further from the truth. So what is required for an invention to be patented? The patentability requirements mandate that the subject matter of the claimed invention be: (1) patent eligible; (2) useful, (3) new; (4) non-obvious; and (5) described with the particularity required so that people of skill in the relevant technology field or science can understand what the invention is, make the invention and use the invention without engaging in what the law calls undue experimentation.

The few CAFC cases (since Alice) that have found inventions to be subject matter eligible is certainly a welcome development. These cases indicate that the CAFC does not believe all computer-related inventions are ineligible, and they provide helpful clues about what will weigh in favor of eligibility. Unfortunately, these cases do not demarcate the boundary between eligibility and ineligibility in any predictable, meaningful way. We still do not have an acceptable working definition of “abstract” and we likely never will. In these cases, the CAFC applied a variety of different, often inconsistent, rationale for finding the inventions at issue to be subject matter eligible.

On April 13, 2017, Broadband iTV, Inc. (“BBiTV”) filed a petition for a writ of certiorari with the Supreme Court of the United States, requesting that the Court to take the case to resolve three recurring issues relating to patent-eligibility and the procedure by which courts analyze patent-eligibility… BBiTV appeals from the Federal Circuit’s Rule 36 affirmance of two summary judgment decisions in which the district court found claims of U.S. Patent No. 7,631,336, entitled “Method for converting, navigating and displaying video content uploaded from the internet to a digital TV video-on-demand platform,” to be directed to the abstract idea of “using the same hierarchical ordering based on metadata to facilitate the display and locating of video content.” Amicus briefs in support of the Petition are due by May 15, 2017.

Since the Supreme Court’s Alice decision, district courts and the Federal Circuit have been ruling on what they perceive as the “abstractness” of patents—not with analysis of the claimed invention, but by referring broadly to a patent’s field of invention, the problems a patent sets out to solve, even generalizations about what the patent means to the court. This is a marked departure from the historical analysis of patent claims. Disturbingly, this process can be used to invalidate any patent because it is based on broad generalities and assumptions rather than precisely defined and examined claims. While some applaud the courts’ actions as helping to extinguish so called “bad patents,” valid and enforceable patents are being destroyed as well. The resulting destruction of valuable intellectual property damages America’s innovating community… Appellant Evolutionary Intelligence has secured a 30-day extension to file the combined petition, now due April 19, 2017. Amicus briefs in support of the petition are due on April 26, 2017. FCR 29.

“In our time together today we are going to try and take stock of the health of the American patent system,” Michel began. “It is important to remember that the patent system was founded in the Constitution… and although the world ‘right’ appears many times in the Bill of Rights, in the original Constitution the only ‘right’ mentioned is the patent right.”… Investment is being disincentivized by uncertainty created by the aforementioned three waves of changes to the system. We should be looking at the impact on the flow of money, Michel explained.

There can be little doubt that today the claims of the ‘703 patent would be considered to cover a patent ineligible abstract idea. In other words, had the United States Supreme Court decided Alice v. CLS Bank prior to the issuance of the ‘703 patent, Leighton and Lewin would never have received the ‘703 patent and they would not be eligible for induction into the National Inventors Hall of Fame… Obviously, a test that would render claims to a Hall of Fame patent invalid is a broken test.

A recent opinion by the Federal Circuit suggests that there will be considerable uncertainty about the respective boundaries of §§ 101 and 112 in the years ahead. In Trading Technologies Intl. Inc. v. CQG, Inc., Judge Newman wrote on behalf of a unanimous panel, following up on her concurrence in Bascom… Of particular interest is her continued endorsement of a flexible approach to § 101 and the traditional measures of patentability, such as § 112. Judge Newman wrote that the “threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability,” and that this approach is in harmony with the Supreme Court’s reasoning in in Alice.

JP Morgan has created revolutionary software capable of doing in seconds the same work that it would take a large team of lawyers 360,000 hours to complete. Clearly, this extraordinary software solution for engaging in tedious contract review is nothing more than an abstract idea and is not the type of thing that can be patented in America. The United States Supreme Court has put an end to these types of revolutionary innovations being patented, and if the hard working patent examiners at the United States Patent and Trademark Office make a mistake and issue a patent on such a ridiculously simple innovation that a second year engineering student could clearly have programmed over a weekend while sipping latte’s at the corner coffee shop the PTAB, some district court or the Supreme Court will step in and set the record straight.

One Administrative Patent Judge — Judge Meredith Petravick — dissented. Petravick said it was inappropriate for the PTAB to terminate the ‘304 patent CBM because the parties were different when compared to the Federal Circuit case. Petravick said that the review should be limited to the record of the ‘304 patent and not consider extraneous, out of record matters such as a Federal Circuit determination that the very same claims are, in fact, patent eligible. Petravick dissented saying that he would find the claims to the graphical user interface just found patent eligible by the Federal Circuit to be patent ineligible.

While we have damaged our patent system, China has strengthened theirs. Job creation is stagnant, economic growth is anemic and the America Dream is dying. Congress must act to correct this damage and fix the patent system… The PTAB must be eliminated because no matter what changes are made to the rules it is difficult to see how this Board could ever be reigned in after starting and existing for the purpose of killing patents. Just changing the rules will not fix its systemic problems nor create a fairer process for patent owners.

If the Eastern District of Virginia can dispatch patent cases in less time than the PTAB, why should we suffer the indignity of the lack of due process and constitutional infirmity of an Article II tribunal striping vested property rights without much, if any, real oversight by an independent judiciary?

Mathematics has long been accepted as a tool to model the physical reality. For many it is hard to grasp that math actually “does something.” The reality is that mathematics based instructions in computers generate signals that are useful and used. This type of mathematics may be called “operational mathematics.” Operational math already replaces devices that used to be made from valves and gears or from electronic components. Operational mathematics also enables new devices that were previously unimaginable.

Taking a hint from what has worked before can give patent prosecutors an advantage. The question is then how to find such examples for use in forming arguments and claim amendments to address Alice v. CLS Bank rejections…. If you happen to face an Alice v. CLS Bank rejection or are sorted into an art unit that experiences a high volume of Alice v. CLS Bank rejections, consulting the prosecution history of successful cases in Public PAIR can prove fruitful for identifying analogous claim limitations and arguments that may help stimulate your thinking in forming a successful strategy for patentability.