Posts Tagged: "patent eligibility"

This article reviews the 50 years of controversy on software patents. Because there continues to be a cloud over computer-implemented inventions, the article makes the argument, through indisputable facts, that computer-implemented inventions are no different from inventions that have been patented since the beginning of the Patent System in 1790. Finally, the article reviews three innovative patented computer-implemented inventions and explains why the phrase “software patent” is meaningless.

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.

Affinity Labs of Texas, LLC, lost two cases at the Federal Circuit last week, both in decisions authored by Judge Bryson, which Chief Judge Prost and Judge Wallach joining the opinions. Although the patents at issue in the two cases were different, they shared a similar specification. In the DirecTV decision, the Federal Circuit followed the Alice/Mayo framework and found the claims patent ineligible. Perhaps of note, the Court rebuffed Affinity’s arguments regarding novelty, explaining patent eligibility does not turn on novelty of the claims. In the Amazon decision the Federal Circuit ruled that basic user customization is insufficient to qualify as inventive under Mayo and Alice.

Rather than the drastic measure of abolishing § 101, such as that proposed by previous USPTO Director Kappos, we think that a simple change to § 101 that removes the confusing notion of “inventiveness” from statutory interpretation would do the trick. Our proposal strikes a middle ground, in that, while removing “inventiveness” concepts from § 101 analysis, it retains the historical exceptions rooted in pre-emption that were reiterated in the Triad.

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.

Those who make the argument that medical software is abstract, or trivial, are just wrong. Medical software has been developed to benefit both patients and medical practitioners by providing better diagnostics, which ultimately lead to new and better treatments… In the context of medical technology, the proper evaluation and effective treatment of patients depend upon complex correlations assessed over prescribed times. This, in turn, relies upon the generation of predictive models from a comparison of an individual patient’s signs and symptoms against a database of studied human wellness parameters, which contain patterns of diagnosis, chosen treatment, and outcome. These efforts are far from trivial.

Bahr explained a number of things, including the reason the USPTO has not updated patent eligibility guidance to address the pro-patent decision of the Federal Circuit in BASCOM v. AT&T. Many in the industry have been critical of the fact that the USPTO, which has been otherwise quick to provide guidance with respect to important precedential decisions, did not provide examiners with guidance in this case which found the software claims at issue patent eligible. Bahr explained that the USPTO did not think the case changed anything they had previously told patent examiners, which is why no further guidance had been issued.

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.

The CAFC then approvingly noted that the district court invoked “an important common-sense distinction between ends sought and particular means of achieving them, between desired results (functions) and particular ways of achieving (performing) them.” As the district court reasoned, “‘there is a critical difference between patenting a particular concrete solution to a problem and attempting to patent the abstract idea of a solution to the problem in general.’” According to the CAFC, the claims at issue in this case do the latter, namely, “rather than claiming ‘some specific way of enabling a computer to monitor data from multiple sources across an electric power grid,’ some ‘particular implementation,’ they ‘purport to monopolize every potential solution to the problem’…Whereas patenting a particular solution ‘would incentivize further innovation in the form of alternative methods for achieving the same result’… allowing claims like [the ones at issue here] would ‘inhibit[] innovation by prohibiting other inventors from developing their own solutions to the problem without first licensing the abstract idea.’”

Removing section 101 would remove the language granting patents only to processes, machines, manufactures, compositions of matter, or new and useful improvements thereof. These categories however have only rarely been used to limit patentablity. The Court has in fact described these terms as expansive. Their removal would not suddenly make the inventions found unpatentable by the Court as abstract ideas or articles of nature patentable. As shown by the discussion above, the judicial exceptions do not rest on a legal interpretation of section 101 in any of its forms. They come from Supreme Court precedent established BEFORE section 101 existed.

Amongst the appeals involving patent-eligibility rejections, the most recently filed appeal brief was filed in November 2015. Thus, all of the appeal briefs and most of the PTAB decisions were filed prior to the development of more recent case law that has further illustrated why and how various software technologies can be patent eligible. Further, most of the eligibility-involved PTAB decisions were issued prior to these recent cases, which may further have disadvantaged the appellants. Continued assessment of PTAB decisions on post-Alice appeals will provide further insight as to the Board’s interpretation of this area of law fraught with uncertainty and applicant frustration.