In Uniloc v. LG, the Federal Circuit held the claims were not patent ineligible under 35 U.S.C. § 101.
As background, Uniloc sued LG for infringement of U.S. Patent No. 6,993,049 ('the 049 patent) and LG moved to dismiss the complaint under FRCP 12(b)(6) arguing the claims of the '049 patent are ineligible under 35 U.S.C. § 101.
Section 101 provides that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent, but the Supreme Court has held that "abstract ideas are not patent eligible." Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In Alice, the Supreme Court stated two-steps for determining patent eligibility. A court: (1) determines whether the claims are directed to an abstract idea; and (2) if so, considers the claim elements individually and as an ordered combination to determine whether the additional elements transform the claim into a patent-eligible application.
In cases relating to software, step one often turns on whether the claims focus on specific improvements in computer or network capabilities or instead focus on a process or system that is an abstract idea for which computers are invoked merely as a tool.
The Federal Circuit reminded it has "routinely held software claims patent eligible under Alice step one when directed to improvements in the functioning of computers or network platforms itself." The Federal Circuit then buttressed this statement by summarizing some of its patent eligibility decisions: DDR Holdings v. Hotels.com, Enfish v. Microsoft, Visual Memory v. NVIDIA, Ancora v. HTC, Data Engine v. Google, Core Wireless v. LG.
The Federal Circuit then held the claims are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experience in parked secondary stations in communications systems.
The Federal Circuit explained:
"The claims at issue do not merely recite generalized steps to be performed on a computer using conventional computer activity. Instead, they are directed to 'adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.' See, e.g., ’049 patent at Claim 2. And this change in the manner of transmitting data results in reduced response time by peripheral devices which are part of the claimed system.
As the patent explains, for secondary stations joining a piconet in the prior art systems, “it could take half a minute or more from the time a user moves a mouse to a cursor moving on a screen.” Id. at 2:10–12. Because polling was “suspended during this cycle, for up to 10.24 seconds at a time,” parked secondary stations in prior art systems could experience similar delays after each period of inactivity. Id. at 2:13–16. The claimed addition of a data field for polling to the inquiry message significantly reduces the response time, enabling secondary stations to respond a fraction of a second later. See, e.g., ’049 patent at 5:36–41. Even LG concedes that this reduction in latency 'is the very reason for polling during the inquiry process in the first place.' Appellees’ Br. 54 (citing, e.g., J.A. 1375–77, 1394). To the extent LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error.
Claims need not articulate the advantages of the claimed combinations to be eligible. We conclude that the claims at issue are not directed to the abstract idea of performing additional polling in wireless communication systems or performing additional polling using inquiry messages. These claims are directed to a specific asserted improvement to the functionality of the communication system itself.
The claimed invention’s compatibility with conventional communication systems does not render it abstract. Nor does the fact that the improvement is not defined by reference to “physical” components."
As a patent attorney, Uniloc and its predecessors define a significant patent eligibility space for claims directed to "computer and network specific improvements."
Copyright © 2020 Robert Moll. All rights reserved.
Showing posts with label abstract idea. Show all posts
Showing posts with label abstract idea. Show all posts
Thursday, May 21, 2020
Saturday, December 28, 2019
Federal Circuit - Koninklijke v. Gemalto - Reverse Grant of Motion that Claims Ineligible under 35 USC 101
In Koninklijke KPN v. Gemalto, the Federal Circuit reversed a court's dismissal of claims as patent ineligible.
KPN sued Gemalto for infringement of US Patent No. 6,212,662 (the '662 patent). Gemalto moved for judgment on the pleadings under FRCP Rule 12(c) asserting claims 1-4 were patent ineligible under 35 USC 101. The district court granted the motion concluding that claims 1-4 recited no more than mere abstract data manipulation operations ineligible under Alice v. CLS Bank and subsequent court decisions.
On appeal, KPN only challenged the district court's ineligibility decision with respect to dependent claims 2-4, which recited:
1. A device for producing error checking based on original data provided in blocks with each block having plural bits in a particular ordered sequence, comprising:
a generating device configured to generate check data; and
a varying device configured to vary original data prior to supplying said original data to the generating device as varied data;
wherein said varying device includes a per-mutating device configured to perform a permutation of bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data.
2. The device according to claim 1, wherein the varying device is further configured to modify the permutation in time.
3. The device according to claim 2, wherein the varying is further configured to modify the per-mutation based on the original data.
4. The device according to claim 3, wherein the permutating device includes a table in which subsequent permutations are stored.
As to the appealed claims 2-4, the Federal Circuit reversed, stating:
"Rather than being merely directed to the abstract idea of data manipulation, these claims are directed to an improved check data generating device that enables a data transmission error detection system to detect a specific type of error that prior art systems could not.
In data transmission systems, it is common to generate something called “check data” to check whether data was accurately transmitted over a communications channel. Check data is generated based on the original data and thus serves as a shorthand representation of a particular block of data. By comparing the check data generated at both ends of the communication channel, error detection systems may be able to infer whether errors occurred during transmission. For example, if the check data from both ends match, the system infers that the content of the received data block is the same as what was transmitted and thus concludes that no errors occurred during transport.
But, as the ’662 patent recognizes, matching check data is not always a reliable indicator of accurate data transmissions. According to the patent, certain generating functions coincidentally produce the same check data for a corrupted data block and an uncorrupted data block. When this happens, the check data is functionally defective, because the system will mistakenly believe that there were no errors in the data transmission. The problem of defective check data is aggravated for a particular type of persistent error, i.e., “systematic error,” that repeats across data blocks in the same way.
According to the ’662 patent, prior art error detection systems were unable to reliably detect systematic errors. Once the prior art system generated defective check data for an initial data block with a given systematic error, the system would continue to generate defective check data for subsequent data blocks with the same systematic error, thus allowing these types of errors to persist in the system.
The ’662 patent solves this problem by varying the way check data is generated by varying the permutation applied to different data blocks. Varying the permutation for each data block reduces the chances that the same systematic error will produce the same defective check data across different data blocks. Claims 2–4 thus replace the prior art check data generator with an improved, dynamic check data generator that enables increased detection of systematic errors that recur across a series of transmitted data blocks.
As with other claims we have found to be patent eligible in prior cases, the appealed claims represent a nonabstract improvement in the functionality of an existing technological process and not simply an abstract idea of manipulating data. Accordingly, we reverse the district court’s grant of Appellees’ Rule 12(c) motion that claims 2–4 are ineligible on the pleadings."
Copyright © 2019 Robert Moll. All rights reserved.
KPN sued Gemalto for infringement of US Patent No. 6,212,662 (the '662 patent). Gemalto moved for judgment on the pleadings under FRCP Rule 12(c) asserting claims 1-4 were patent ineligible under 35 USC 101. The district court granted the motion concluding that claims 1-4 recited no more than mere abstract data manipulation operations ineligible under Alice v. CLS Bank and subsequent court decisions.
On appeal, KPN only challenged the district court's ineligibility decision with respect to dependent claims 2-4, which recited:
1. A device for producing error checking based on original data provided in blocks with each block having plural bits in a particular ordered sequence, comprising:
a generating device configured to generate check data; and
a varying device configured to vary original data prior to supplying said original data to the generating device as varied data;
wherein said varying device includes a per-mutating device configured to perform a permutation of bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data.
2. The device according to claim 1, wherein the varying device is further configured to modify the permutation in time.
3. The device according to claim 2, wherein the varying is further configured to modify the per-mutation based on the original data.
4. The device according to claim 3, wherein the permutating device includes a table in which subsequent permutations are stored.
As to the appealed claims 2-4, the Federal Circuit reversed, stating:
"Rather than being merely directed to the abstract idea of data manipulation, these claims are directed to an improved check data generating device that enables a data transmission error detection system to detect a specific type of error that prior art systems could not.
In data transmission systems, it is common to generate something called “check data” to check whether data was accurately transmitted over a communications channel. Check data is generated based on the original data and thus serves as a shorthand representation of a particular block of data. By comparing the check data generated at both ends of the communication channel, error detection systems may be able to infer whether errors occurred during transmission. For example, if the check data from both ends match, the system infers that the content of the received data block is the same as what was transmitted and thus concludes that no errors occurred during transport.
But, as the ’662 patent recognizes, matching check data is not always a reliable indicator of accurate data transmissions. According to the patent, certain generating functions coincidentally produce the same check data for a corrupted data block and an uncorrupted data block. When this happens, the check data is functionally defective, because the system will mistakenly believe that there were no errors in the data transmission. The problem of defective check data is aggravated for a particular type of persistent error, i.e., “systematic error,” that repeats across data blocks in the same way.
According to the ’662 patent, prior art error detection systems were unable to reliably detect systematic errors. Once the prior art system generated defective check data for an initial data block with a given systematic error, the system would continue to generate defective check data for subsequent data blocks with the same systematic error, thus allowing these types of errors to persist in the system.
The ’662 patent solves this problem by varying the way check data is generated by varying the permutation applied to different data blocks. Varying the permutation for each data block reduces the chances that the same systematic error will produce the same defective check data across different data blocks. Claims 2–4 thus replace the prior art check data generator with an improved, dynamic check data generator that enables increased detection of systematic errors that recur across a series of transmitted data blocks.
As with other claims we have found to be patent eligible in prior cases, the appealed claims represent a nonabstract improvement in the functionality of an existing technological process and not simply an abstract idea of manipulating data. Accordingly, we reverse the district court’s grant of Appellees’ Rule 12(c) motion that claims 2–4 are ineligible on the pleadings."
Copyright © 2019 Robert Moll. All rights reserved.
Friday, July 31, 2015
USPTO - Updated Interim Guidance on Patent Eligibility
The USPTO updated and provided new material to assist applicants seeking patents in technologies being rejected as seeking to patent "abstract ideas." See the 2014 Interim Guidance on Subject Matter Eligibility in July 2015.
As stated: "the USPTO has issued the 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance) for USPTO personnel to use when determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U.S. Supreme Court, including Alice Corp., Myriad, and Mayo. The Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Examination Instructions issued in view of Alice Corp. and supersedes the March 4, 2014 Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, and/or Natural Products issued in view of Mayo and Myriad.
The USPTO has produced another update pertaining to subject matter eligibility "July 2015 Update: Subject Matter Eligibility in response to the public comment on the 2014 Interim Patent Eligibility Guidance. The July 2015 Update includes a new set of examples and discussion of various issues raised by the public comments, and is intended to assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process. The USPTO is now seeking public comment on the July 2015 Update."
Copyright © 2015 Robert Moll. All rights reserved.
As stated: "the USPTO has issued the 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance) for USPTO personnel to use when determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U.S. Supreme Court, including Alice Corp., Myriad, and Mayo. The Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Examination Instructions issued in view of Alice Corp. and supersedes the March 4, 2014 Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, and/or Natural Products issued in view of Mayo and Myriad.
The USPTO has produced another update pertaining to subject matter eligibility "July 2015 Update: Subject Matter Eligibility in response to the public comment on the 2014 Interim Patent Eligibility Guidance. The July 2015 Update includes a new set of examples and discussion of various issues raised by the public comments, and is intended to assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process. The USPTO is now seeking public comment on the July 2015 Update."
Copyright © 2015 Robert Moll. All rights reserved.
Thursday, December 4, 2014
Professor Ronald Mann - Is the Patent Act more like the Sherman Act or the securities laws?
Professor Ronald Mann has a thought provoking article Is the Patent Act more like the Sherman Act or the securities laws? He discusses how the Supreme Court interprets various sections of the US Patent Act in very different ways.
As Professor Mann puts it: "In some areas, the Justices view the language of the statute as calling for them to pour judicially created content into vague and general words in the statute: the most obvious examples are patentability cases like Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories, and Alice Corp. v. CLS Bank. I’d probably put the Court’s analysis of definiteness in Nautilus v. Biosig in the same pile."
"In other situations, the Court seems much more inclined to treat cases as purely statutory, to be resolved almost entirely by parsing the statute, however detailed or general it might be. Here I’m thinking of cases like Octane Fitness v. Icon and Highmark v. Allcare, cases that (in Justice Sonia Sotomayor’s words) “begin and end with” the language of the Patent Act. Limelight Networks v. Akamai Technologies – or at least Justice Samuel Alito’s explanation of the result – is another example."
In my opinion, Professor Mann is right. And we have watched the Supreme Court pour more judicial content into 35 USC 101. But why not resolve software patent eligibility standard by parsing the literal broad terms of 35 USC 101? I know talk about 150 years precedent, but also consider when Benson added an abstract idea exception to the broad language of 35 USC 101, the Supreme Court in effect wrote a "narrower 35 USC 101." Justice William Douglas apparently was seeking to not allow wholly preempting mathematical algorithm and expressed that patenting of software programs in general was a policy question and the Court was not competent to decide.
Further, Justice Douglas stated: "If these programs are to be patentable, considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. The technological problems tendered in the many briefs before us indicate to us that considered action by the Congress is needed."
It has been a while since the suggestion was made, but it seems maybe this is where the entire issue needs to go now-- before Congress.
Copyright © 2014 Robert Moll. All rights reserved.
As Professor Mann puts it: "In some areas, the Justices view the language of the statute as calling for them to pour judicially created content into vague and general words in the statute: the most obvious examples are patentability cases like Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories, and Alice Corp. v. CLS Bank. I’d probably put the Court’s analysis of definiteness in Nautilus v. Biosig in the same pile."
"In other situations, the Court seems much more inclined to treat cases as purely statutory, to be resolved almost entirely by parsing the statute, however detailed or general it might be. Here I’m thinking of cases like Octane Fitness v. Icon and Highmark v. Allcare, cases that (in Justice Sonia Sotomayor’s words) “begin and end with” the language of the Patent Act. Limelight Networks v. Akamai Technologies – or at least Justice Samuel Alito’s explanation of the result – is another example."
In my opinion, Professor Mann is right. And we have watched the Supreme Court pour more judicial content into 35 USC 101. But why not resolve software patent eligibility standard by parsing the literal broad terms of 35 USC 101? I know talk about 150 years precedent, but also consider when Benson added an abstract idea exception to the broad language of 35 USC 101, the Supreme Court in effect wrote a "narrower 35 USC 101." Justice William Douglas apparently was seeking to not allow wholly preempting mathematical algorithm and expressed that patenting of software programs in general was a policy question and the Court was not competent to decide.
Further, Justice Douglas stated: "If these programs are to be patentable, considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. The technological problems tendered in the many briefs before us indicate to us that considered action by the Congress is needed."
It has been a while since the suggestion was made, but it seems maybe this is where the entire issue needs to go now-- before Congress.
Copyright © 2014 Robert Moll. All rights reserved.
Thursday, November 20, 2014
Federal Circuit - Ultramercial Inc. v. Hulu, LLC - Patent-Ineligible Subject Matter Under 35 USC 101
In Ultramercial Inc. v. Hulu, LLC, the Federal Circuit stated a method for offering free videos in exchange for watching advertisements is not patent eligible subject matter under 35 USC 101.
Let's examine part of this opinion that indicates how the abstract idea exception to patent eligibility gives wide latitude to judges:
Federal Circuit: "We first examine the claims because claims are the definition of what a patent is intended to cover. An examination of the claim limitations of the '545 patent shows that claim 1 includes eleven steps for displaying an advertisement in exchange for access to copyrighted media. Without purporting to construe the claims, as the district court did not, the steps include: (1) receiving copyrighted media from a content provider; (2) selecting an ad after consulting an activity log to determine whether the ad has been played less than a certain number of times; (3) offering the media for sale on the Internet; (4) restricting public access to the media; (5) offering the media to the consumer in exchange for watching the selected ad; (6) receiving a request to view the ad from the consumer; (7) facilitating display of the ad; (8) allowing the consumer access to the media; (9) allowing the consumer access to the media if the ad is interactive; (10) updating the activity log; and (11) receiving payment from the sponsor of the ad."
Bob: Okay, claim 1 requires eleven steps that define the invention.
Federal Circuit: "This ordered combination of steps recites an abstraction—an idea, having no particular concrete or tangible form."
Bob: What happened to the eleven steps of claim 1?
Federal Circuit: "The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application."
Bob: Why does claim 1 recite an abstraction? The Federal Circuit makes a conclusion without much analysis. If the method allows the public to see free videos in exchange for watching ads how is this merely an abstract idea? It may not be novel or unobvious, but the claimed invention is in the real world. It would read on a service (e.g., YouTube) that allows people to watch ads (nobody likes) so they can watch they want to watch (e.g., soccer, real guitars) on a computer display. The method is implemented on the Internet, a global network of networked computers. This is a concrete and tangible application. So a judge gets to decide that it all adds up to an abstract idea, devoid of a concrete or tangible application, but what constrains that decision?
I don't see a real constraint exists on a judge's decision to make up an abstract idea, once we begin the process of allowing dissection of the claim. Unlike 35 USC 103, a judge applying Alice doesn't have to consider the subject matter of the claim as a whole. And once we allow the judge to split the claim into an abstract part and non-abstract part, what determines the "line" between abstract and non-abstract in the claim? Step 1 of Alice says identify if the claim recites an abstract idea. How does a judge decide? The judge selects a subset of the claim (e.g., the preamble) and thus the judge sets the line. Step 2 then asks if the remainder of the claim, that is, the non-abstract part of the claim is an inventive concept. If the judge thinks the non-abstract part is conventional, the judge concludes "no inventive concept." And now the test is completed, and the claim is deemed ineligible. The two-part Alice test is a mental process without reference to the prior art requirements of 35 USC 102. This patent eligibility test is the ultimate "abstract idea."
And as long as we ignore the broad language of 35 USC 101 that was purposely framed that way to promote innovation, bootstrap the novelty (35 USC 102) and obviousness (35 USC 103) analysis into 35 USC 101, we will see too many software inventions held ineligible for patents. I don't think any reasonable person wants obvious subject matter to get patent protection, but when we eliminate the requirement to assess the subject matter against the real world, i.e., prior art, we are left with just a judge's opinion with inadequate constraints.
Note Judge Mayer in concurrence goes further seeking to establish patent eligibility is a threshold question, arguing we give no presumption of validity to the USPTO's determination that the claims satisfy 35 USC 101, and ultimately arguing Alice establishes a "technological arts test for patent eligibility."
Also see WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101.
Copyright © 2014 Robert Moll. All rights reserved.
Let's examine part of this opinion that indicates how the abstract idea exception to patent eligibility gives wide latitude to judges:
Federal Circuit: "We first examine the claims because claims are the definition of what a patent is intended to cover. An examination of the claim limitations of the '545 patent shows that claim 1 includes eleven steps for displaying an advertisement in exchange for access to copyrighted media. Without purporting to construe the claims, as the district court did not, the steps include: (1) receiving copyrighted media from a content provider; (2) selecting an ad after consulting an activity log to determine whether the ad has been played less than a certain number of times; (3) offering the media for sale on the Internet; (4) restricting public access to the media; (5) offering the media to the consumer in exchange for watching the selected ad; (6) receiving a request to view the ad from the consumer; (7) facilitating display of the ad; (8) allowing the consumer access to the media; (9) allowing the consumer access to the media if the ad is interactive; (10) updating the activity log; and (11) receiving payment from the sponsor of the ad."
Bob: Okay, claim 1 requires eleven steps that define the invention.
Federal Circuit: "This ordered combination of steps recites an abstraction—an idea, having no particular concrete or tangible form."
Bob: What happened to the eleven steps of claim 1?
Federal Circuit: "The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application."
Bob: Why does claim 1 recite an abstraction? The Federal Circuit makes a conclusion without much analysis. If the method allows the public to see free videos in exchange for watching ads how is this merely an abstract idea? It may not be novel or unobvious, but the claimed invention is in the real world. It would read on a service (e.g., YouTube) that allows people to watch ads (nobody likes) so they can watch they want to watch (e.g., soccer, real guitars) on a computer display. The method is implemented on the Internet, a global network of networked computers. This is a concrete and tangible application. So a judge gets to decide that it all adds up to an abstract idea, devoid of a concrete or tangible application, but what constrains that decision?
I don't see a real constraint exists on a judge's decision to make up an abstract idea, once we begin the process of allowing dissection of the claim. Unlike 35 USC 103, a judge applying Alice doesn't have to consider the subject matter of the claim as a whole. And once we allow the judge to split the claim into an abstract part and non-abstract part, what determines the "line" between abstract and non-abstract in the claim? Step 1 of Alice says identify if the claim recites an abstract idea. How does a judge decide? The judge selects a subset of the claim (e.g., the preamble) and thus the judge sets the line. Step 2 then asks if the remainder of the claim, that is, the non-abstract part of the claim is an inventive concept. If the judge thinks the non-abstract part is conventional, the judge concludes "no inventive concept." And now the test is completed, and the claim is deemed ineligible. The two-part Alice test is a mental process without reference to the prior art requirements of 35 USC 102. This patent eligibility test is the ultimate "abstract idea."
And as long as we ignore the broad language of 35 USC 101 that was purposely framed that way to promote innovation, bootstrap the novelty (35 USC 102) and obviousness (35 USC 103) analysis into 35 USC 101, we will see too many software inventions held ineligible for patents. I don't think any reasonable person wants obvious subject matter to get patent protection, but when we eliminate the requirement to assess the subject matter against the real world, i.e., prior art, we are left with just a judge's opinion with inadequate constraints.
Note Judge Mayer in concurrence goes further seeking to establish patent eligibility is a threshold question, arguing we give no presumption of validity to the USPTO's determination that the claims satisfy 35 USC 101, and ultimately arguing Alice establishes a "technological arts test for patent eligibility."
Also see WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101.
Copyright © 2014 Robert Moll. All rights reserved.
Monday, September 15, 2014
IP Navigator - Did the Supreme Court Intend to Kill Software Patents?
Tonight, check out IP Navigator's Did the Supreme Court Intend to Kill Software Patents? It may sound a crazy question until you notice examiners, PTAB, and lower federal courts have consistently interpreted Alice v. CLS Bank to prevent software inventions from being held patent eligible.
Copyright © 2014 Robert Moll. All rights reserved.
Copyright © 2014 Robert Moll. All rights reserved.
Tuesday, August 5, 2014
USPTO Commissioner for Patents Explains the USPTO Implementation of Alice v. CLS Bank
The Supreme Court decision in Alice v. CLS Bank has had lots of critical commentary. Perhaps the most warranted is Alice affords at best murky guidance for decision makers (e.g., judges and examiners) seeking to determine if a software invention is an abstract idea. Many are puzzling over what the USPTO will consider patent eligible in the realm of business software. And this is not an academic point.
At least the USPTO is seeking to help the public. Recently, USPTO Commissioner for Patents Peggy Focarino posted Update on USPTO's Implementation of 'Alice v. CLS Bank'.
The Commissioner states the Supreme Court held the claims to "a computerized scheme for mitigating settlement risk" patent ineligible because they are drawn to an abstract idea. Somehow this reminds how the Court deleted many claim limitations to find the claim was a "scheme for mitigating settlement risk" then an abstract idea. This analysis has no objective principle and it gives no real credit to way applicant wrote the claimed invention. The scope of the claim is entirely up to the decision-maker. If the decision-maker is "anti-patent" the claim is paraphrased to a pithy gist that is abstract, the stripped out limitations are then brought back into the analysis but somehow deemed to be insufficient to render the claim patent eligible, and the applicant or patent owner is turned away for the audacity of seeking a patent on an abstract idea.
On June 25, 2014, she notes the USPTO "issued preliminary examination instructions to assist examiners when evaluating subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, in view of Alice Corp." Nice document but I don't see how to resolves what is an abstract idea anymore than the case.
Ms. Focarino notes the USPTO examiners reviewed a small group of applications (note actual number was not given) likely affected by the Alice and withdrew notice of allowances (i.e., withdrew from issuance) if the application includes one or more claims reciting an abstract idea and no more than a generic computer to be reexamined by the original examiner in light of Alice.
Of course, the USPTO can withdraw applications from issuance, but should probably just send all applicants a check rather than saying they must now request refunds.
I expect the public comments on the preliminary examination instructions to sound much like Sean Sullivan's comment to Ms. Focarino post:
"The problem with the preliminary examination instructions and the withdrawal of the notices of allowance is that there is no guidance as to how an "abstract idea" is determined. The post-Alice office actions have offered no analysis of whether a claim is drawn to an abstract idea, but rather a mere conclusory statement that the claim is abstract. This appears to have resulted in a per se exclusion of business method patents, which impermissibly broadens the scope of the Supreme Court decisions on subject matter eligibility."
Copyright © 2014 Robert Moll. All rights reserved.
At least the USPTO is seeking to help the public. Recently, USPTO Commissioner for Patents Peggy Focarino posted Update on USPTO's Implementation of 'Alice v. CLS Bank'.
The Commissioner states the Supreme Court held the claims to "a computerized scheme for mitigating settlement risk" patent ineligible because they are drawn to an abstract idea. Somehow this reminds how the Court deleted many claim limitations to find the claim was a "scheme for mitigating settlement risk" then an abstract idea. This analysis has no objective principle and it gives no real credit to way applicant wrote the claimed invention. The scope of the claim is entirely up to the decision-maker. If the decision-maker is "anti-patent" the claim is paraphrased to a pithy gist that is abstract, the stripped out limitations are then brought back into the analysis but somehow deemed to be insufficient to render the claim patent eligible, and the applicant or patent owner is turned away for the audacity of seeking a patent on an abstract idea.
On June 25, 2014, she notes the USPTO "issued preliminary examination instructions to assist examiners when evaluating subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, in view of Alice Corp." Nice document but I don't see how to resolves what is an abstract idea anymore than the case.
Ms. Focarino notes the USPTO examiners reviewed a small group of applications (note actual number was not given) likely affected by the Alice and withdrew notice of allowances (i.e., withdrew from issuance) if the application includes one or more claims reciting an abstract idea and no more than a generic computer to be reexamined by the original examiner in light of Alice.
Of course, the USPTO can withdraw applications from issuance, but should probably just send all applicants a check rather than saying they must now request refunds.
I expect the public comments on the preliminary examination instructions to sound much like Sean Sullivan's comment to Ms. Focarino post:
"The problem with the preliminary examination instructions and the withdrawal of the notices of allowance is that there is no guidance as to how an "abstract idea" is determined. The post-Alice office actions have offered no analysis of whether a claim is drawn to an abstract idea, but rather a mere conclusory statement that the claim is abstract. This appears to have resulted in a per se exclusion of business method patents, which impermissibly broadens the scope of the Supreme Court decisions on subject matter eligibility."
Copyright © 2014 Robert Moll. All rights reserved.
Monday, March 31, 2014
Supreme Court - Alice Corp. v. CLS Bank - Computer-Implemented Inventions Patent Eligibility, 35 USC 101 - Today's Hearing Transcripts
Today, the U.S. Supreme Court held an oral hearing in Alice Corporation v. CLS Bank International which will determine the patent eligibility standard for computer-implemented inventions.
Here's a copy of the written transcript of the oral hearing.
Here's a copy of the audio of the oral hearing from The Oyez Project at IIT Chicago-Kent College.
Here's Columbia law professor Ronald Mann's summary of the hearing: Argument analysis: Justices seeking path between Scylla and Charybdis for financial services patent in SCOTUSblog.
Copyright © 2014 Robert Moll. All rights reserved.
Here's a copy of the written transcript of the oral hearing.
Here's a copy of the audio of the oral hearing from The Oyez Project at IIT Chicago-Kent College.
Here's Columbia law professor Ronald Mann's summary of the hearing: Argument analysis: Justices seeking path between Scylla and Charybdis for financial services patent in SCOTUSblog.
Copyright © 2014 Robert Moll. All rights reserved.
Sunday, July 29, 2012
Software Patent Eligibility - Ending 40 Years of Controversy?
Today, one of the most controversial topics in US patent law is whether and when software related inventions are patent eligible.
The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility illustrate the controversy today.
Professor Crouch's article Ongoing Debate: Is Software Patentable? notes the different results seem to stem from differences in how to construe what is the invention (by the claim as a whole or by its "core inventive concept") and the frustration of watching the controversy remain unresolved after 40 years of case law. (Groklaw's Does Programming a Computer Make a New Machine? citing In re Prater in 1969 suggests this controversy goes back at least 43 years).
Because of the uncertainty associated with a Supreme Court that finds it difficult to affirm the Federal Circuit (See WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101), the PTO community (applicants, attorneys, and examiners) should not keep chasing down if a claimed invention (or the slippery "core inventive concept") is an abstract idea.
Instead, let's address software patentability under tests that are readily applied as recommended by Director Kappos' Some Thoughts on Patentability under 35 USC 102 (novelty/statutory bars), 35 USC 103 (obviousness), and 35 USC 112 (written description, enablement, and definiteness), and recast the abstract idea exception to 35 USC 101 as an overclaiming test as proposed by Professors Mark Lemley, Michael Risch, Ted Sichelman, and Polk Wagner in the Stanford Law Review article Life After Bilski.
Copyright © 2012 Robert Moll. All rights reserved.
The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility illustrate the controversy today.
Professor Crouch's article Ongoing Debate: Is Software Patentable? notes the different results seem to stem from differences in how to construe what is the invention (by the claim as a whole or by its "core inventive concept") and the frustration of watching the controversy remain unresolved after 40 years of case law. (Groklaw's Does Programming a Computer Make a New Machine? citing In re Prater in 1969 suggests this controversy goes back at least 43 years).
Because of the uncertainty associated with a Supreme Court that finds it difficult to affirm the Federal Circuit (See WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101), the PTO community (applicants, attorneys, and examiners) should not keep chasing down if a claimed invention (or the slippery "core inventive concept") is an abstract idea.
Instead, let's address software patentability under tests that are readily applied as recommended by Director Kappos' Some Thoughts on Patentability under 35 USC 102 (novelty/statutory bars), 35 USC 103 (obviousness), and 35 USC 112 (written description, enablement, and definiteness), and recast the abstract idea exception to 35 USC 101 as an overclaiming test as proposed by Professors Mark Lemley, Michael Risch, Ted Sichelman, and Polk Wagner in the Stanford Law Review article Life After Bilski.
Copyright © 2012 Robert Moll. All rights reserved.
Labels:
35 USC 101,
35 USC 102,
35 USC 103,
35 USC 112,
abstract idea,
academic papers,
examination,
PTO
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