Posts Tagged: "patentable"

Bahr tells examiners that based on the Federal Circuit ruling they “may determine that a claim direct to improvements in computer-related technology is not direct to an abstract idea under Step 2A of the subject matter eligibility examination guidelines (and is thus patent eligible), without the need to analyze the additional elements under Step 2B.” (emphasis in the original) Bahr goes on to tell examiners that a claim that is “directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have been previously identified as abstract by the courts.”

On May 6, 2016, the U.S. Patent and Trademark Office released new life science examples on subject matter eligibility (Examples 28-32, consecutively numbered after the previously released USPTO examples). Examples 28 and 30 illustrate the application of the “markedly different” and “significantly more” analysis to nature-based products. Examples 29 and 31 illustrate the USPTO approach to the eligibility analysis of diagnostic claims, which has been much anticipated. Finally, Examples 32 and 33 illustrate the use of a streamlined eligibility analysis. At first glance, the new life science examples, which identify most of the presented hypothetical claims as patent-eligible, provide several teaching points for achieving patent-eligibility in commonly encountered situations in the life sciences area.

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.

Versata presented four questions to the Supreme Court, some very specific to CBM proceedings. In its amicus brief, Broadband iTV more generally asks the Supreme Court to revisit its patent-eligibility precedents, and clarify how computer-implemented claims can be found patent-eligible under Alice to correct the ongoing misapplication of Alice in the lower courts and by the PTAB. Since Alice, more than 100 patents and thousands of claims have been declared invalid under 35 U.S.C. § 101 by the lower courts or PTAB using an overly broad interpretation of Alice. Thus, it is important for this Court to take up the issue of patent-eligibility once again and right the course.

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.

As we await the next Update from the Patent Office on subject matter eligibility, it may be worthwhile to consider further the role of examples given in the past by the PTO. The Patent Office’s July 2015 Update on Subject Matter Eligibility. Although examples of this sort can be helpful and are appreciated, they are not enough! In the Internet and computer arts, the existing examples offer limited use. The PTO has released only a few examples in the computer fields still, and in general they express fairly obvious points, such as the point that improvements to the computer itself remain eligible.

The Supreme Court’s own precedents provide overwhelming authority for interpreting § 101 broadly and, conversely, interpreting its judicial exceptions to § 101 narrowly. These precedents provide ample support for the Cluster Argument: (1) observing that the term “abstract idea” constitutes a legal term of art that, according to stare decisis, properly refers to looped mathematical algorithms and old and fundamental business practices and (2) declining to expand the set of “abstract ideas” beyond these two clusters without a signal from Congress.

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.

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…

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.

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.

This year our panel has a diverse variety of wishes. We see the usual wishes relating to patent eligibility and the abstract idea exception, with a reference to a Moody Blue’s song to make the point. We also see wishes relating to inter partes review (IPR) and the biotech industry, and a wish for uniformity at the Federal Circuit. There is a wish for federal trade secret legislation to finally pass, and a reminder that elections matter, even for us in the intellectual property space, a topic that we will return to quite a lot during 2016 here at IPWatchdog.com. We also see several exasperated wishes, hoping for solutions to the real problems facing the industry rather than the same old tired cries for “reform” that would benefit only a handful of large entities while harming practically everyone else.

If Gene (the “genie”) were to grant me patent and IP wishes for 2016, I would ask for (in no particular order) the passage of trade secrets legislation, resolution of the current patent reform legislation stalemate in Congress, that the USPTO consider evidence of non-preemption during its initial determination of patent eligibility; and that the USPTO prioritize accuracy, completeness and accessibility of the public record as part of its Patent Quality Review.