Demonstrating Patent Eligibility Post- Alice Corp....

Demonstrating Patent Eligibility

Post- Alice Corp. Decision Navigating the Nuances and Leveraging Guidance From Federal Circuit and PTAB Opinions

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

The audio portion of the conference may be accessed via the telephone or by using your computer's

speakers. Please refer to the instructions emailed to registrants for additional information. If you

have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.

MONDAY, DECEMBER 8, 2014

Presenting a 90-Minute Encore Presentation of the Webinar with Live, Interactive Q&A

Michael L. Kiklis, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Stephen G. Kunin, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Sound Quality

If you are listening via your computer speakers, please note that the quality

of your sound will vary depending on the speed and quality of your internet

connection.

If the sound quality is not satisfactory, you may listen via the phone: dial

1-866-570-7602 and enter your PIN when prompted. Otherwise, please

send us a chat or e-mail [email protected] immediately so we can

address the problem.

If you dialed in and have any difficulties during the call, press *0 for assistance.

Viewing Quality

To maximize your screen, press the F11 key on your keyboard. To exit full screen,

press the F11 key again.

FOR LIVE EVENT ONLY

For CLE purposes, please let us know how many people are listening at your

location by completing each of the following steps:

• In the chat box, type (1) your company name and (2) the number of

attendees at your location

• Click the SEND button beside the box

If you have purchased Strafford CLE processing services, you must confirm your

participation by completing and submitting an Official Record of Attendance (CLE

Form).

You may obtain your CLE form by going to the program page and selecting the

appropriate form in the PROGRAM MATERIALS box at the top right corner.

If you'd like to purchase CLE credit processing, it is available for a fee. For

additional information about CLE credit processing, go to our website or call us at

1-800-926-7926 ext. 35.

FOR LIVE EVENT ONLY

If you have not printed the conference materials for this program, please

complete the following steps:

• Click on the ^ symbol next to “Conference Materials” in the middle of the left-

hand column on your screen.

• Click on the tab labeled “Handouts” that appears, and there you will see a

PDF of the slides for today's program.

• Double click on the PDF and a separate page will open.

• Print the slides by clicking on the printer icon.

FOR LIVE EVENT ONLY

PRESENTATION December 8, 2014

Steve Kunin

[email protected]

Michael L. Kiklis

[email protected] Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

THE SUPREME COURT’S HISTORICAL

TREATMENT OF PATENT LAW

6 From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.

THE SUPREME COURT’S HISTORICAL

TREATMENT OF PATENT LAW


Patentable Subject Matter

PATENTABLE SUBJECT MATTER



35 U.S.C. § 101:

• 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 therefor, subject to the conditions and requirements of this title.

35 U.S.C. § 100(b):

• The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

Judicially created exceptions:

• “laws of nature, natural phenomena, and abstract ideas.” Diehr (S. Ct. 1981)

11 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP


Le Roy v. Tatham (1852)

• Principles are not patent-eligible:

“It is admitted, that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known.”

• Need a practical application for patent eligibility:

“A new property discovered in matter, when practically applied . . . is patentable.”



Cochrane v. Deener (1876)

• Definition of process includes transformation:

“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result.”



Expanded Metal Co. v. Bradford (1909)

• Definition of process includes machines:

“We therefore reach the conclusion that an invention or

discovery of a process or method involving mechanical

operations, and producing a new and useful result, may be

within the protection of the Federal statute, and entitle the

inventor to a patent for his discovery.”



Recently active area of law

• Alice v. CLS

• Association for Molecular Pathology v. Myriad

• Mayo Collaborative Services v. Prometheus Labs. Inc.

• Bilski v. Kappos

Lessons from Myriad and Mayo

• Proactive Court

• Little deference to the U.S. Government’s position or USPTO’s

practice

• Demonstrates a trend that § 101 should be construed narrowly

From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved. 15


Trilogy of Supreme Court cases:

• Gottschalk v. Benson, 409 U.S. 63 (1972)

• Parker v. Flook, 437 U.S. 584 (1978)

• Diamond v. Diehr, 450 U.S. 175 (1981)


GOTTSCHALK V. BENSON (S. CT. 1972)

Binary Coded Decimals (BCD) to pure binary conversion

process

Abstract:

• “Here the ‘process’ claim is so abstract and sweeping as to

cover both known and unknown uses of the BCD to pure

binary conversion.”

The practical effect of patenting the claimed BCD to binary

conversion system would be to patent an idea

Congress should decide whether computer programs are

patentable


PARKER V. FLOOK (S. CT. 1978)

Method of updating alarm limits

The only difference between conventional methods and that

described in the patent application was the inclusion of a

mathematical formula

Point-of-novelty test:

• “Respondent’s process is unpatentable under § 101, not

because it contains a mathematical algorithm as one

component, but because once that algorithm is assumed to

be within the prior art, the application, considered as a

whole, contains no patentable invention.”


DIAMOND V. DIEHR (S. CT. 1981)

Process for molding rubber • “We view respondents’ claims as nothing more than a process for molding rubber

products and not as an attempt to patent a mathematical formula. We recognize, of course, that when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract.”

Review claim as a whole, no dissection: • “[W]hen a claim containing a mathematical formula implements or applies that

formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.”

Reject point-of-novelty test: • “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of

no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”


BILSKI V. KAPPOS (S. CT. 2010)

The Machine-or-Transformation Test: • “a claimed process is patent eligible if: (1) it is tied to a particular machine or

apparatus, or (2) it transforms a particular article into a different state or thing.”

M-O-T is not the sole test for determining patent eligibility, instead it is

"a useful and important clue, an investigative tool.”

Abstract Idea Analysis:

• Preemption: “The concept of hedging . . . is an unpatentable abstract idea . . . .

Allowing [Bilski] to patent risk hedging would preempt use of this approach in all

fields, and would effectively grant a monopoly over an abstract idea.”

• Limiting an abstract idea to one field of use or adding token post-solution components

is not enough

Back to the Wild West: • “And nothing in today’s opinion should be read as endorsing interpretations of §101

that the [Fed. Cir.] has used in the past.”


MAYO COLLABORATIVE SERVICES V. PROMETHEUS LABS, INC. (S. CT. 2012)

Appeal following post-Bilski GVR

Claims directed to a drug administration process

“to transform an unpatentable law of nature into a patent-eligible application of such law, one must do more than simply state the law of nature while adding the words ‘apply it.’”

Patents should not be upheld where the claim too broadly preempts the use of the natural law

Court dissected the claim elements: • “To put the matter more succinctly, the claims inform a

relevant audience about certain laws of nature; any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community”


MAYO COLLABORATIVE SERVICES V. PROMETHEUS LABS, INC. (CONT’D)

“Other cases offer further support for the view that simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.”

Point-of-novelty test? • “We recognize that, in evaluating the significance of additional steps,

the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry might sometimes overlap. But that need not always be so.”

The M-O-T test does not trump the law of nature exclusion

The proper role of §101: • The Court rejected the Government’s argument that virtually any step

beyond the law of nature should render the claim patent-eligible under §101, because §§102, 103, and 112 are sufficient to perform the screening function


CLS BANK V. ALICE CORP. (FED. CIR. 2013, EN BANC)

Case was heard en banc in an attempt to address uncertainty

Questions presented:

1) What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

2) In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?


CLS BANK V. ALICE CORP. (FED. CIR. 2013, EN BANC) (CONT’D)

Fed. Cir. issued one-paragraph per curiam opinion

• Majority found method and computer-readable

medium claims patent ineligible

• Even split on the patent eligibility of system

claims

• Result: patent-ineligibility affirmance of lower

court’s decision

• No rationale was provided


CLS BANK V. ALICE CORP. (FED. CIR. 2013, EN BANC) (CONT’D)

Five non-precedential opinions were issued that provide insight into thinking of majority of Judges

Agreement between Judges (Lourie and Rader opinions):

• Mayo decision does not resurrect the point-of-novelty test

• Broad claims do not necessarily fail the §101 inquiry

• District Court §101 challenges must overcome clear-and-convincing evidentiary standard

• Proper §101 inquiry under Mayo involves determination of whether claim includes meaningful limitations beyond an abstract idea instead of novelty assessment

No agreement on what makes a limitation meaningful


ALICE V. CLS

(S. CT. 2014)

Issue: • Patentable subject matter for computer-

related inventions under 35 U.S.C. § 101.

Decided: June 19. Unanimous decision.

Invention: Mitigating settlement risk

High level points: • Court dissected claims and considered them

as an ordered whole

• System and C-R medium claims fell with method claims

• Point-of-novelty test?


ALICE V. CLS

(CONT’D)

Court’s concern is with preemption

Must distinguish between the “building

blocks of human ingenuity and those that

integrate the building blocks into

something more” rendering them patent

eligible.


ALICE V. CLS

(CONT’D)

Used Mayo framework:

1. Determine whether claims are directed to a law of nature, natural phenomena, or abstract idea;

2. If so, then ask “What else is there in the claims before us?” Consider elements of claim individually and as an

ordered combination to determine if the additional elements “transform the . . . claim into patent-eligible” subject matter.

This is a “search for an ‘inventive concept’ . . . An element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon” the abstract idea.

28

Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP

ALICE V. CLS

(CONT’D)

Step one: • The Court refers to two books and states:

The claims are drawn to the “abstract idea” of intermediated settlement, which is a fundamental concept

It “is a building block of the modern economy”

• Compared to Bilski: Like Bilski’s hedging, intermediated settlement is an

abstract idea.

“In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here.”

• No clear guidance


ALICE V. CLS

(CONT’D)

Step two:

• A claim that recites an abstract idea must include

“additional features” to ensure “that the [claim] is

more than a drafting effort designed to

monopolize the [abstract idea].”

• Per Mayo, need more than “apply it.”

• The computer implementation must supply the

necessary “inventive concept” – what does

“inventive concept” mean?


ALICE V. CLS

(CONT’D)

Step two (cont’d):

• Mere recitation of a generic computer is not

enough

• Nor is limiting the claim to a technological

environment

• “[T]he relevant question is whether the claims

here do more than simply instruct the practitioner

to implement the abstract idea of intermediated

settlement on a generic computer. They do not.”


ALICE V. CLS

(CONT’D)

Step two (cont’d): • The claim elements separately are “purely

conventional”

• “In short, each step does no more than require a generic computer to perform generic computer functions.”

• Considered as an ordered combination, the claims “simply recite the concept of intermediated settlement as performed by a generic computer.” They do not improve the functioning of the computer

itself

“Nor do they effect an improvement in any other technology or technical field.”

Safe harbors?


ALICE V. CLS

(CONT’D)

System and C-R Medium Claims

• “Petitioner conceded below that its media

claims rise or fall with its method claims.”

• System claims

Purely functional and generic

None of the hardware recited “offers a meaningful

limitation beyond generally linking” the method to

a “particular technological environment” –

implementation on a computer

“Put another way, the system claims are no

different from the method claims in substance.”


ALICE V. CLS - CONCLUSIONS

Clarity?

Will the Fed. Cir. resist the point-of-novelty test and continue with its “meaningful limitations” test?

Will the PTO do the same?


BUYSAFE, INC. V. GOOGLE, INC.

(FED. CIR. SEPT. 3, 2014)

Holding:

• Claims invalid under § 101

Rationale:

• Abstract Idea?

“The claims are squarely about creating a contractual

relationship—a ‘transaction performance guaranty’—that

is beyond question of ancient lineage.”

“The claims thus are directed to an abstract idea.”

• Inventive Concept?

“The claims' invocation of computers adds no inventive

concept.”


PLANET BINGO, LLC. V. VKGS LLC

(FED. CIR. AUG. 26, 2014)

Holding: • Claims invalid under § 101

Rationale: • Abstract Idea?

“[T]hese claims are directed to the abstract idea of ‘solv[ing a] tampering problem and also minimiz[ing] other security risks’ during bingo ticket purchases.”


“[T]he claims recite a program that is used for the generic functions of storing, retrieving, and verifying …. And, as was the case in Alice, ‘the function performed by the computer at each step of the process is “[p]urely conventional.”’”


I/P ENGINE, INC. V. AOL INC.

(FED. CIR. AUG. 15, 2014)

Holding: • Claims invalid under § 101

Rationale: • Abstract Idea?

“The asserted claims simply describe the well-known and widely-applied concept that it is often helpful to have both content-based and collaborative information about a specific area of interest.”


“I/P Engine’s claimed system is merely an Internet iteration of the basic concept of combining content and collaborative data, relying for implementation on ‘a generic computer to perform generic computer functions.’”


DIGITECH IMAGE TECHS., LLC V.

ELECTRONICS FOR IMAGING, INC.

(FED. CIR. JULY 11, 2014) Holding:

• Claims invalid under § 101

Rationale: • “Device profile” claims:

“The asserted claims are not directed to any tangible embodiment of this information (i.e., in physical memory or other medium) or claim any tangible part of the digital processing system.”

• Process claims: Abstract Idea? - “The method in the '415 patent claims an abstract

idea because it describes a process of organizing information through mathematical correlations and is not tied to a specific structure or machine.”

Inventive concept? - “Contrary to Digitech's argument, nothing in the claim language expressly ties the method to an image processor.


DISTRICT COURT CASES

District Case Name Outcome Procedural

Context

S.D.N.Y. DietGoal Innovations LLC v. Bravo Media LLC (Div. of NBC

Universal Media, LLC)

Claims invalid under § 101 Summary Judgment

D. Del. Helios Software, LLC v. Spectorsoft Corp. Claims valid under § 101 Summary Judgment

D. Del. Genetic Techs. Ltd. v. Lab. Corp. of Am. Holdings Claims invalid under § 101 Motion to Dismiss

(Magistrate Judge

Opinion only)

D. Del. Tuxis Techs., LLC v. Amazon.com, Inc. Claims invalid under § 101 Motion to Dismiss

D. Del. Walker Digital, LLC v. Google, Inc. Claims invalid under § 101 Summary Judgment

D.N.J. Data Distrib. Techs., LLC v. Brer Affiliates, Inc. Denied Motion to Dismiss

D. Del. Comcast IP Holdings I, LLC v. Sprint Communs. Co. L.P. Claims invalid under § 101 Summary Judgment

E.D. Tex. Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc. Claims invalid under § 101 Motion to Dismiss


DISTRICT COURT CASES

District Case Name Outcome Procedural

Context

E.D. Mich. Autoform Eng'g GMBH v. Eng’g Tech. Assocs. Denied Summary Judgment

N.D. Ill. Card Verification Solutions, LLC v. Citigroup Inc. Denied Motion to Dismiss

N.D. Cal. Cogent Med., Inc. v. Elsevier Inc. Claims invalid under § 101 Motion to Dismiss

C.D. Cal. McRO, Inc. v. Namco Bandai Games Am., Inc. (consolidated

case combining 20 cases) and McRo, Inc. v. Valve Corp.

(consolidated case combining 3 cases)

Claims invalid under § 101 Motion to Dismiss

N.D. Cal. Open Text S.A. v. Alfresco Software Ltd. Claims invalid under § 101 Motion to Dismiss

C.D. Cal. Eclipse IP LLC v. McKinley Equip. Corp. Claims invalid under § 101 Motion to Dismiss

C.D. Cal. CMG Fin. Servs. v. Pac. Trust Bank, F.S.B. Claims invalid under § 101 Summary Judgment

M.D. Fla. Every Penny Counts, Inc. v. Wells Fargo Bank, N.A. Claims invalid under § 101 Summary Judgment


MAKING A § 101 CASE AT THE PTAB PTAB CASES

PTAB Approach – SAP America, Inc. v. Versata

Development Group, Inc. (CBM2012-00001)

• Claim 17 – a method of determining a price

• Claim 27 – a computer-implemented method of determining a

price

• Claims 26 and 28 – computer-readable storage media claims

implementing the methods of Claims 17 and 27

• Claim 29 – “apparatus” for determining a price including

computer program instructions capable of performing the same

method steps recited in Claim 27

• PTAB analyzed all claims together





• “The key question is, therefore, whether the claims do

significantly more than simply describe the law of nature or

abstract idea.”

• The abstract idea: “determining a price using organizational and

product group hierarchies, which are akin to management

organizational charts.”

• Having found an abstract idea, “we must further analyze

Versata’s claims to determine whether they incorporate

sufficient meaningful limitations. . . .”





• Mental steps test: “while the challenged claims are drafted to

include computer hardware limitations, the underlying process . .

. could also be performed via pen and paper.”

• General purpose computer: “The claimed invention . . . requires

only routine computer hardware and programming.”

• Additional meaningful limitations: “the additionally claimed steps

. . . are well-known, routine, and conventional steps.”



PTAB Approach – CRS Adv. Tech., Inc. v. Frontline

Tech. Inc. (CBM2012-00005) • Holding – All challenged claims (method and system) are

unpatentable under § 101

• “[T]he terms ‘one or more computers,’ ‘website,’ and

‘communication link’ at issue in this case do not impose

meaningful limits on the challenged claims’ scope.”

• Compared technology limitations to those of: SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)

Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013)

Dealertrack, Inc. v. Huber, 674 F.3d 1315, (Fed. Cir. 2012)

Bancorp Servs. v. Sun Life Assurance Co., 687 F.3d 1266 (Fed. Cir. 2012)

Accenture Global v. Guidewire Software, 728 F.3d 1336 (Fed. Cir. 2013)

• Note: PTAB did not discuss/use CLS Bank decision



PTAB Approach – Interthinx, Inc. v. CoreLogic

Solutions, LLC (CBM2012-00007) • Found all claims (method claims) unpatentable:

Patent Owner: Under M-O-T, “the computer plays a necessary and vital role to

the development and storage of the predictive and error models.” o PTAB: “Although the preamble recites a computer implemented process, none of

the claim elements, with the possible exception of the ‘storing’ limitations,

specifically recites a relationship to the computer.”

Patent Owner: “[T]he claims pass the Federal Circuit’s ‘mental process test’

because they … cannot be performed entirely manually or in the human mind.” o PTAB: “However, the claims …do not tie necessarily these steps to a computer

or a particular application.”

Patent Owner: “[T]he claims satisfy the “abstract idea” test for patentable subject

matter because, rather than being tied preemptively to a field of use, they are

narrowly tied to a specific application” o PTAB: “A claim is not patent eligible if, instead of claiming an application of an

abstract idea, the claim instead is drawn to the abstract idea itself.”



PTAB Approach – U.S. Bancorp v. Retirement Capital

Access Management Co. (CBM2013-00014) • Found all claims (method and system) unpatentable

• First case after CLS

• Abstract idea – (not disputed) advancing funds based on future retirement

payments, which is “an economic practice long prevalent”

• Preamble reciting “computerized method” ignored (relying upon Digitech)

• Used mental steps test

• Method required only a generic computer

• Noted that “preemption is only one test” to use

• System claims requiring only “use of a computer in a generalized fashion”

does not meaningfully limit the claims



PTAB Approach – SAP America Inc. v. Lakshmi

Arunachalam. (CBM2013-00013) • Found claims at issue unpatentable

• Abstract idea – “claim 1 recites an abstract method, i.e., performing a real-

time Web transaction by displaying and providing at least one application a

user selects to access checking and savings accounts, and transferring

funds (i.e., debiting or crediting) in response to user signals from an input

device.”

• “The remaining limitations in claim 1 do not contribute any patent–eligible

subject matter. The service network atop the Web … is an abstract concept

under which customers and service providers communicate over a network

so that the service provider can service the customer…. This does not

impose a meaningful limitation on the scope of the claim.”



PTAB Approach – Salesforce.com, Inc. v.

Virtualagility, Inc. (CBM2013-00024) • Found claims at issue unpatentable

• Abstract idea – “we find that the challenged claims are directed to an

abstract idea, the creation and use of models to aid in processing

management information by organizing and making the information readily

accessible by the collaborators of the project”

• “The model, as described by the specification, is a disembodied concept

that is not tied to a specific algorithm or specialized computer.”

• “[T]he claims do not recite a specialized algorithm that could move the

claims from the abstract to the concrete.”

• “[W]ith respect to the processor, we note that at least operations (ii) through

(vi) actually are carried out by the user, albeit, via the processor.”

• “[S]imply executing an abstract concept on a computer does not render a

computer ‘specialized,’ nor does it transform a patent-ineligible claim into a

patent-eligible one.”


ALICE V. CLS – LITIGATION TIPS

Defendants: • SJ motion for 101, or renewed motion

• Argue the law of 101 has dramatically changed such that business methods are no longer effectively patent-eligible and neither are software inventions using nothing but generic computer hardware

Plaintiffs: • Argue that the law did not change – the Supreme

Court supported the Fed Cir’s meaningful limitations test

• Rely on the clear-and-convincing standard

• Rely on factual underpinnings via Ultramercial


ALICE V. CLS – PTAB TIPS

Build a sufficient factual record to support your argument

Build a sufficient legal record to support the changing landscape

• Machine-or-transformation test

• Generic computer hardware/special computer test

• Abstract idea analysis

• Mental steps test

• Point-of-novelty test

• Case-specific factual comparisons

Know the Supreme Court section 101 cases

Frame the issue

Tips for Petitioner

Tips for Patent Owner


JUNE 25, 2014 PRELIMINARY

EXAMINATION INSTRUCTIONS

51

Methodology following the Supreme Court

decision in Alice Corp.

Examples of abstract ideas

Safe Harbors

What does not pass muster as adding

significantly more


EXAMINERS FAIL TO FOLLOW THE GUIDELINES

BY MAKING BOILER PLATE SECTION 101

REJECTIONS

Broad characterization of the abstract

idea, natural law or physical phenomenon

Treating software as an abstract idea even

when embodied as executable code in the

claims

Treating claim limitations as old and

conventional without citing prior art to

support the findings


PTO ADMINISTRATIVE ACTIONS

Withdrawing applications from issue to

reopen prosecution

PTAB remanding of appealed case

PTAB deciding appeals and

recommending further examination for

Section 101 compliance − Ex parte Abraham; ex parte Martin; ex parte

Bomma; ex parte Dean; ex parte Darin;

ex parte Baardse

Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP 53

REJECTIONS UNDER SECTION 101 OF

COMPUTER RELATED APPLICATIONS

54

Claim 1: An automatic analyzer comprising:

a reaction disc configured to hold a plurality of cuvettes, each

of the cuvettes containing a sample and a reagent;

a cleaning mechanism configured to clean the plurality of

cuvettes using a plurality of nozzles;

a setting unit configured to set role in cleaning of a target

cuvette to each of the plurality of nozzles for sequentially cleaning the

target cuvette used in measurement of a plurality of measurement

items, for each of the plurality of measurement items of the sample; and

a controller configured to control the cleaning mechanism to

clean the target cuvette according to the set role in cleaning.


REJECTIONS UNDER SECTION 101 OF

COMPUTER RELATED APPLICATIONS

55

Con’t

Claims 1-3, 5 and 6 are rejected under 35 U.S.C. 101

because the claimed invention is directed to non-

statutory subject matter.

− the instant apparatus claims recite a controller, which

can be construed as software (i.e., a set of

instructions/algorithm capable of being executed by a

computer), which is not statutory subject matter.


RESPONDING TO § 101 REJECTIONS


EX PARTE PTAB DECISION

Many decided on In re Nuijten rationale

− Ex parte Handekyn; ex parte Raghunath; ex parte Hopkins; ex parte

Crockett; ex parte Desai; ex parte Guo;

New grounds of rejection using Alice test

− Ex parte Blankenship; ex parte Cruz-Hernandez; ex parte Kahl;

ex parte Ould-Brahim; ex parte Jung; ex parte Hyde; ex parte Cote

Very few decisions reversing the examiners’ section 101 rejections

− Ex parte Facett; ex parte Futrell; ex parte Short


IMPLICATIONS

A major problem could exist for pending applications that lack sufficient disclosure regarding the details of advances to technology provided by an invention.

Need to adopt claim-drafting techniques that target a lower level of abstraction, including incorporating implementation details into claims that illustrate an improvement of the functioning of a computer, technology, or technical field provided by an invention.


PRACTICAL TIPS FOR DRAFTING

SPECIFICATIONS

Explain the technical implementation in detail

− Stress improvements in functioning of computer

Emphasize technical solution to a technical problem being solved and novel technical effects

Avoid generic computer description

− Emphasize specialized technical features

Use technical terminology to distance invention from pure business method

− E.g., “advertisement” -> “multimedia content file”


PRACTICAL TIPS FOR DRAFTING

CLAIMS

Draft method and system claims differently – System claims should not merely be written as means plus function claims that mirror the method claims

Draft and prosecute narrow claims first

Focus on specialized technical features of invention

Prosecute system claims first

Avoid claim limitations that read on mental steps

Per In re Alappat, claims should emphasize how the general purpose computer is configured into a specific purpose computer


COMPARISON OF U.S. AND EUROPEAN SOFTWARE

PATENTABILITY


35 U.S.C. §101 (Prometheus, Alice) EPC Article 52

Is claim directed to excluded

category?

Do elements, separately or

together, transform the nature

of the claim?

− Cannot be merely a

generic computer or

general application of

abstract idea or law of

nature

52.2: Excluded categories

53.3: Exclusion only applicable

to 52.2 categories “as such”

− Practically, reciting

“computer” or “email” may

be sufficient

CONCLUSION

Take advantage of safe harbors

− Improvements to another technology or technical fields

− Improvements to the functioning of the computer

Emphasis that claimed invention provides technical solutions to

technical problems

Emphasize the novel and non-obvious limitations that are not

conventional and are subject to the MOT test.

Point out why the new combination of old elements achieves a novel

and non-obvious result (i.e., an inventive contribution


THE SUPREME COURT ON PATENT LAW

“In this well organized, readily accessible and highly readable treatise, Michael Kiklis analyzes the serial interventions by the Supreme Court that keep altering the purely statutory patent law as interpreted by the Federal Circuit and understood by patent practitioners. Because these alterations are continuing and even accelerating, practitioners need to anticipate where the Court is headed next if they are to serve their clients well. By stressing trends and explaining dicta for what it may portend, Kiklis provides an invaluable chart for navigating shifting seas." – Paul Michel, former Chief Judge, United States Court of Appeals for the Federal Circuit

“In this one volume, Michael Kiklis has filled in a critical gap in our understanding of modern American patent law. Every person interested in the field must study the current Supreme Court’s take on patents, and there is no better source than this treatise.” – Tom Goldstein, Publisher, Scotusblog.com


Demonstrating Patent Eligibility Post- Alice Corp....

Documents

Transcript of Demonstrating Patent Eligibility Post- Alice Corp....