Posts Tagged: "patentable"

The Alice/Mayo framework is the decisional approach adopted by the United States Supreme Court for determining whether a patent claim exhibits, such as software patent claims, embody patent eligible subject matter… Over the last six months the Federal Circuit has provided a great deal of clarity, with 9 judges (Judges Moore, Taranto, Hughes, Chen, Newman, O’Malley, Reyna, Stoll, and Plager) signing on to decisions that found software patent claims to be patent eligible. What follows is a a summary of the significant developments over the last six months.

In a nutshell, if you are going to write a patent application in such a way that at the end of the it the reader is left wondering what the innovation is, what the problem being solved is, or the technical particulars on how the innovation actually solves the problem, you should not expect a patent. In other words, if you write your patent applications without actually defining the technological solution and how it is implementing the desired functionality you describe, and how that is an improvement, you will not get a patent because the claims will be patent ineligible. On the other hand, if you write your patent applications to describe (and claim) an invention that is adequately described so that someone of skill in the art will understand what is innovative (i.e., how and why), thick with technical disclosure and explanation as to how computer functionality is being improved, or even generic components are working in unconventional ways, then you will get a patent because your claims will be patent eligible.

The ’510, ‘984, and ‘797 patents were each held eligible for similar reasons. Again, the court found that even if the claims were directed to an abstract idea, they would be eligible under step two of the Alice framework. The Court again relied on the unique and unconventional distributed architecture found in the specification and construed into the claim in the previous proceeding. This architecture allowed for load distribution – a technological and unconventional solution to a technological problem. While the ‘984 claims contained generic components and functions, the overall ordered combination of the limitations were unconventional and solved the technological problem.

Earlier today the United States Patent and Trademark Office issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to the patent examining corps from Robert Bahr, who is Deputy Commissioner for Patent Examination Policy, explains that this most recent memorandum provides examiners with discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility.

Amdocs (Israel), Ltd. v. Openet Telecom, Inc., Appeal No. 2015-1180, is a precedential case from the U.S. Court of Appeals for the Federal Circuit that reverses a judgment on the pleadings that certain asserted software claims directed to gathering network information were patent-ineligible. In so doing, Step One of Alice/Mayo is not clarified at all, because the majority accepted “for argument’s sake” the district court’s view of the disqualifying abstract ideas, and in each instance then explained why the claims seen in their entirety are not disqualified under Step two… The Federal Circuit concluded that the claim is “much closer to those in BASCOM and DDR Holdings than those in Digitech, Content Extraction, and In re TLI Commc’ns. The Court explained that even if it were to agree that claim 1 is directed to an ineligible abstract idea under step one, the claim is eligible under step two because it contains a sufficient ‘inventive concept.’

Join us on Thursday, November 3, 2016 at 2pm ET for a discussion on drafting patent applications to overcome Alice, with JiNan Glasgow of Neopatents and Gene Quinn of IPWatchdog. In addition to taking as many of your questions as possible we will address the following: (1) Brief overview of Alice, Enfish, TLI Communications, BASCOM, McRo and FairWarning IP. (2) What these most recent Federal Circuit cases teach about drafting software patents. (3) How to cope with being unexpectedly assigned to an Art Unit.

The Court reasoned that the claims were limited to straightforward steps that a skilled artisan could perform mentally and that the inventors admitted to doing so. The claims, on their face, do not call for computer implementation, and Synopsys did not advance a claim construction requiring a computer. Additionally, complex details in the specification are insufficient to transform broad claims from an abstract idea into patentable subject matter. Given the breadth of the claims, the Court declined to decide if a computer-implemented version of the invention would be patentable under § 101.

Using new or improved rules applied by a computer may be patent-eligible, and improving the operation of the computer itself may be patent-eligible, but using a computer to implement old practices is not patentable under § 101. Further, claiming a combination of data sources, or limiting claims to the computer field, does not transform an otherwise abstract idea into “something more” that is patent-eligible.

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.

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.

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.

It is hard to ignore the fact that the Federal Circuit again continued to point out that the innovation at issued was an improvement. This should give patent practitioners important clues into how to characterize software related innovations so as to maximize the likelihood of prevailing in Alice inspired challenges and rejections. Hopefully the United States Patent and Trademark Office will not ignore McRo and will issue guidance to patent examiners. Taking a “nothing to see here” approach to this case would be inexcusable.

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.

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.

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.