Demonstrating Patent Eligibility Post-Alicemedia.straffordpub.com/.../presentation.pdfDec 20, 2016...

Demonstrating Patent Eligibility Post-Alice Navigating the Nuances and Leveraging Guidance From Federal Circuit and PTAB Opinion

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

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

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35 U.S.C. § 101:

Life After Alice

Copyright © 2016 Oblon, McClelland, Maier & Neustadt, LLP

Michael L. Kiklis Stephen G. Kunin

[email protected] [email protected] 703-413-2707 703.412.6011

[email protected] [email protected]

THE SUPREME COURT’S HISTORICAL

TREATMENT OF PATENT LAW

From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2015 CCH Incorporated. All rights reserved. 5

THE SUPREME COURT’S HISTORICAL

TREATMENT OF PATENT LAW


The Supreme Court’s

Treatment of

35 U.S.C. § 101

7

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)

10 Copyright © 2016 Oblon, 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.”

11

From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2015 CCH Incorporated. All rights reserved.


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.”

12 From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2015 CCH Incorporated. All rights reserved.


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.”

13

From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2015 CCH Incorporated. All rights reserved.


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 Supreme Court • Proactive Court

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

• Demonstrates a trend that § 101 should be construed narrowly

14 From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2015 CCH Incorporated. All rights reserved.


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)


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


GOTTSCHALK V. BENSON (S. CT. 1972)

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.”


PARKER V. FLOOK (S. CT. 1978)

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.”


DIAMOND V. DIEHR (S. CT. 1981)

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.”


BILSKI V. KAPPOS (S. CT. 2010)

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.

(S. CT. 2012)

“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


MAYO COLLABORATIVE SERVICES V.

PROMETHEUS LABS, INC.

(S. CT. 2012)

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?



(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



(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.

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.


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.”


The Federal Circuit’s

Post-Alice Treatment of

35 U.S.C. § 101

33

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.”


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

(FED. CIR. AUG. 15, 2014)(MAYER CONC.)

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.”

• Inventive Concept?

“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.’”


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.'’”


BUYSAFE, INC. V. GOOGLE, INC.

(FED. CIR. SEPT. 3, 2014)

Holding:


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.”


“The claims' invocation of computers adds no inventive

concept.”


ULTRAMERCIAL, INC. V. HULU, LLC

(FED. CIR. NOV. 14, 2014)

Holding:


Rationale:

• The panel “found” an abstract idea with little analysis: 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.

• The panel performed a point-of-novelty analysis In any event, any novelty in implementation of the idea is a factor to be

considered only in the second step of the Alice analysis.

Adding routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet does not transform an otherwise abstract idea into patent-eligible subject matter. Instead, the claimed sequence of steps comprises only “conventional steps, specified at a high level of generality,” which is insufficient to supply an “inventive concept.”

• The panel also applied the MOT test The claims of the ’545 patent, however, are not tied to any particular novel

machine or apparatus, only a general purpose computer.


ULTRAMERCIAL, INC. V. HULU, LLC

(FED. CIR. NOV. 14, 2014)(MAYER CONC.)

§ 101 is a threshold question that should be

decided at the outset of litigation

No presumption of eligibility for § 101

Alice announced a technical arts test


DDR HOLDINGS, LLC V. HOTELS.COM, L.P., 773

F.3D 1245 (FED. CIR. DEC. 5, 2014)

Holding:

• Claims valid under § 101 • Affirmed the district court’s denial of the motion for JMOL of invalidity

under § 101

Rationale:

• The panel found it difficult to determine the abstract idea: “[I]dentifying the precise nature of the abstract idea is not as

straightforward as in Alice or some of our other recent abstract idea cases.”

• The panel held that the claims satisfied the Mayo/Alice step two: “[T]hese claims stand apart because they do not merely recite the

performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”


BRCA1- & BRCA2-BASED HEREDITARY CANCER

TEST PATENT LITIG. V. AMBRY GENETICS CORP.

(FED. CIR. DEC. 17, 2014) Holding:

•Claims invalid under § 101 •Affirmed the district court’s denial of the motion for preliminary injunction because the claims are invalid under § 101

Rationale:

•The panel held that their previous 2012 opinion in Myriad already determined that the claims were directed to an abstract idea:

“Claims 7 and 8 at issue here depend from claim 1. … In our 2012 decision, we held that claim 1 was patent ineligible because it claimed an abstract mental process of 'comparing' and 'analyzing' two gene sequences.”

•The panel held that the claims “do not add ‘enough’ to make the claims as a whole patent-eligible”:

“Nothing is added by identifying the techniques to be used in making the comparison because those comparison techniques were the well-understood, routine, and conventional techniques that a scientist would have thought of when instructed to compare two gene sequences.”


CONTENT EXTRACTION & TRANSMISSION LLC V.

WELLS FARGO BANK, N.A.

(FED. CIR. DEC. 23, 2014) Holding:


Rationale:

• The panel compared the claims at issue to those found invalid in Alice and held that the claims were directed to an abstract idea: “[T]he asserted patents are drawn to the abstract idea of 1) collecting

data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory. The concept of data collection, recognition, and storage is undisputedly well-known.”

• The panel held that the claims did not contain any limitation that transformed the patent-ineligible abstract idea into a patent-eligible invention: “There is no ‘inventive concept’ in CET’s use of a generic scanner and

computer to perform well-understood, routine, and conventional activities commonly used in industry.”


ALLVOICE DEVS. US, LLC V. MICROSOFT CORP.

(FED. CIR. MAY 22, 2015) (UNPUBLISHED)

Holding:


Rationale:

• The panel held that the claims were not directed to any of the categories of patent eligible subject matter: The independent claims were directed to a “speech-recognition

interface”

“Here, claims 60-68 of the ‘273 Patent do not recite a process or tangible or physical object and, thus, do not fall within any of the categories of eligible subject matter.”

• The panel rejected the patent owner’s argument that the claims were patent eligible as “software instructions”: “Software may be patent eligible, but when a claim is not directed

towards a process, the subject matter must exist in tangible form. Here, the disputed claims merely claim software instructions without any hardware limitations.”


OIP TECHS., INC. V. AMAZON.COM, INC.

(FED. CIR. JUNE 11, 2015)

Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea: “[T]he claims are directed to the concept of offer-based price

optimization. … This concept of ‘offer based pricing’ is similar to other ‘fundamental economic concepts’ found to be abstract ideas by the Supreme Court and this court.”

• The panel held that the claims did not contain any limitation that transformed the patent-ineligible abstract idea into a patent-eligible invention: “Beyond the abstract idea of offer-based price optimization, the

claims merely recite ‘well-understood, routine conventional activit[ies],’ either by requiring conventional computer activities or routine data-gathering steps.”


ARIOSA DIAGNOSTICS, INC. V. SEQUENOM, INC.

(FED. CIR. JUNE 12, 2015)

Holding:


Rationale:

• The panel held that the claims were directed to a naturally occurring phenomenon: “Thus, the claims at issue, as informed by the specification, are generally

directed to detecting the presence of a naturally occurring thing or a natural phenomenon, cffDNA in maternal plasma or serum.”

“[Q]uestions on preemption are inherent in and resolved by the § 101 analysis.… While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”

• The panel held that the claims did not contain an inventive concept: “The method at issue here amounts to a general instruction to doctors to

apply routine, conventional techniques when seeking to detect cffDNA. Because the method steps were well-understood, conventional and routine, the method of detecting paternally inherited cffDNA is not new and useful.”


INTERNET PATENTS CORP. V.

ACTIVE NETWORK, INC.

(FED. CIR. JUNE 23, 2015) Holding:

• Claims invalid under § 101 Rationale:

• The panel held that the claims were directed to an abstract idea: “We agree with the district court that the character of the

claimed invention is an abstract idea: the idea of retaining information in the navigation of online forms.”

• The panel held that the claims did not contain an inventive concept: The panel held that all the claims “are directed to the idea

itself” and do not contain any inventive concept.

The panel describes the claims as being directed to “conventional,” “well-known,” and “common” features.


INTELLECTUAL VENTURES I LLC V.

CAPITAL ONE BANK (USA)

(FED. CIR. JULY 6, 2015) Holding:

• Claims of the ’137 and ’382 patents invalid under § 101

Rationale for the ’137 patent:

• The panel held that the claims were directed to an abstract idea: “Here, the patent claims are directed to an abstract idea: tracking financial

transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting).”

“The abstract idea here is not meaningfully different from the ideas found to be abstract in other cases before the Supreme Court and our court involving methods of organizing human activity.”

• The panel held that the claims did not contain an inventive concept: “The recited elements, e.g., a database, a user profile (‘a profile keyed to a

user identity,’ …) and a communication medium, are all generic computer elements.”

“Instructing one to ‘apply’ an abstract idea and reciting no more than generic computer elements performing generic computer tasks does not make an abstract idea patent-eligible.”


INTELLECTUAL VENTURES I LLC V.

CAPITAL ONE BANK (USA)

(CON’T) Rationale for the ’382 patent:

• The panel held that “the claim relates to customizing information based on (1) information known about the user and (2) navigation data.”

• The panel held that both aspects of the claims were directed to abstract ideas: “With respect to the first aspect, … [t]his sort of information tailoring is ‘a fundamental . .

. practice long prevalent in our system . . . .’ Id. There is no dispute that newspaper inserts had often been tailored based on information known about the customer…. Providing this minimal tailoring … is an abstract idea.”

“With respect to the second aspect, … Intellectual Ventures did not challenge the conclusion that tailoring content based on the time of day at which the user viewed the content is within the scope of the claim limitation. Tailoring information based on the time of day of viewing is also an abstract, overly broad concept long-practiced in our society.”

• The panel held that the claims did not contain an inventive concept: “Intellectual Ventures argues that claims limited to dynamic presentation of data …

supplies an inventive concept. … [T]he fact that the web site returns the pre-designed ad more quickly than a newspaper could send the user a location-specific advertisement insert does not confer patent eligibility.”

“Intellectual Ventures argues that the ‘interactive interface’ is a specific application of the abstract idea that provides an inventive concept. … Rather, the ‘interactive interface’ simply describes a generic web server with attendant software, tasked with providing web pages to and communicating with the user’s computer.”


VERSATA DEV. GROUP, INC. V. SAP AM., INC.

(FED. CIR. JULY 9, 2015)

Holding:


• Affirmed the PTAB’s Final Written Decision

Rationale:

• The panel held that the claims were directed to an abstract idea: “Claims 17 and 26-29 of the ’350 patent are directed to the abstract idea of

determining a price, using organizational and product group hierarchies, in the same way that the claims in Alice were directed to the abstract idea of intermediated settlement, and the claims in Bilski were directed to the abstract idea of risk hedging.”

• The panel held that the claims did not contain an inventive concept: “[T]he function performed by the computer at each step is purely conventional.”

“For example, the limitations of claim 17 involve arranging a hierarchy of organizational and product groups, storing pricing information, retrieving applicable pricing information, sorting pricing information, eliminating less restrictive pricing information, and determining the price. All of these limitations are well-understood, routine, conventional activities previously known to the industry.”


VEHICLE INTELLIGENCE & SAFETY LLC V.

MERCEDES-BENZ USA, LLC

(FED. CIR. DECEMBER 28, 2015) Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea: “The claims at issue are drawn to a patent-ineligible concept, specifically the

abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment. None of the claims at issue are limited to a particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the "expert system" to perform any screening or testing, or explain the nature of control to be exercised on the vehicle in response to the test results.”

• The panel held that the claims did not contain an inventive concept: “Nothing in these claims—considered as individual elements or an ordered

combination—disclose an inventive concept sufficient to transform the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment into a patent-eligible application of that idea.”


MORTG. GRADER, INC. V.

FIRST CHOICE LOAN SERVS.

(FED. CIR. JANUARY 20, 2016) Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea: “[W]e agree with the district court that the asserted claims are directed to the

abstract idea of ‘anonymous loan shopping.’ … The claim limitations, analyzed individually and "as a whole," … recite nothing more than the collection of information to generate a ‘credit grading’ and to facilitate anonymous loan shopping..”

• The panel held that the claims did not contain an inventive concept: “[T]he claims ‘add’ only generic computer components such as an ‘interface,’

‘network,’ and ‘database.’ These generic computer components do not satisfy the inventive concept requirement. … Nothing in the asserted claims ‘purport[s] to improve the functioning of the computer itself’ or ‘effect an improvement in any other technology or technical field.’ … Nor do the claims solve a problem unique to the Internet. … In addition, the claims are not adequately tied to ‘a particular machine or apparatus.’”


IN RE SMITH

(FED. CIR. MARCH 10, 2016)

Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea: “Applicants’ claimed ‘method of conducting a wagering game’ is drawn to an

abstract idea much like Alice's method of exchanging financial obligations and Bilski's method of hedging risk. … [W]e conclude that the rejected claims, describing a set of rules for a game, are drawn to an abstract idea.”

• The panel held that the claims did not contain an inventive concept: “The claims here require shuffling and dealing ‘physical playing cards,’ which

Applicants argue bring the claims within patent[]eligible territory. … We disagree. Just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are ‘purely conventional’ activities..”

“That is not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101. We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.”


GENETIC TECHS. LTD. V. MERIAL L.L.C.

(FED. CIR. APRIL 8, 2016)

Holding:


Rationale:

• The panel held that the claims were directed to a law of nature: “[T]he patent claim focuses on a newly discovered fact about human biology (the

linkage of coding and non-coding regions of DNA), involves no creation or alteration of DNA sequences, and does not purport to identify novel detection techniques. … The claim is directed to a natural law—the principle that certain non-coding and coding sequences are in linkage disequilibrium with one another.”

• The panel held that the claims did not contain an inventive concept: “Thus the physical steps of DNA amplification and analysis of the amplified DNA

to provide a user with the sequence of the non-coding region do not, individually or in combination, provide sufficient inventive concept to render claim 1 patent eligible.”

“We thus hold that the simple mental process step of ‘detect[ing] the allele’ in claim 1, either alone or in combination with the physical steps described above, does not supply sufficient inventive concept to make the claim patent-eligible under § 101.”


IN RE BROWN

(FED. CIR. APRIL 22, 2016) (UNPUBLISHED)

Holding:


Rationale: • The panel held that the claims were directed to an abstract idea:

“The limitations are drafted so broadly to encompass the mere idea of applying different known hair styles to balance one's head. Identifying head shape and applying hair designs accordingly is an abstract idea capable, as the Board notes, of being performed entirely in one's mind. These steps constitute an abstract idea.’”

• The panel held that the claims did not contain an inventive concept: “While it is true that a hair cut would not result without practicing the

final step of cutting hair, step (e) merely instructs one to apply the abstract idea discussed above with scissors. Such a limitation is not the type of additional feature Alice envisioned as imparting patent eligibility.”


ENFISH, LLC V. MICROSOFT CORP., 2016 U.S.

APP. LEXIS 8699 (FED. CIR. MAY 12, 2016)

Holding:

• Reversed the district court’s grant of summary judgment and found the claims patent eligible

Rationale:

• The panel held that the district court erred in finding that the claims were directed to an abstract idea: “The district court concluded that the claims were directed to the abstract idea of

‘storing, organizing, and retrieving memory in a logical table’ or, more simply, ‘the concept of organizing information using tabular formats.’”

“[W]e find that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.”

“Here, the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database.”

“[T]he claims are directed to a specific implementation of a solution to a problem in the software arts.”


ENFISH, LLC V. MICROSOFT CORP. (CONT’D)

Discussion of step 1 to the Alice inquiry:

• “We do not read Alice to broadly hold that all improvements in computer-related

technology are inherently abstract and, therefore, must be considered at step

two. Indeed, some improvements in computer-related technology when

appropriately claimed are undoubtedly not abstract, such as a chip architecture,

an LED display, and the like. Nor do we think that claims directed to software, as

opposed to hardware, are inherently abstract and therefore only properly

analyzed at the second step of the Alice analysis. Software can make non-

abstract improvements to computer technology just as hardware improvements

can, and sometimes the improvements can be accomplished through either

route.”

• “[W]e find it relevant to ask whether the claims are directed to an improvement to

computer functionality versus being directed to an abstract idea, even at the first

step of the Alice analysis.”

• “[T]he first step in the Alice inquiry in this case asks whether the focus of the

claims is on the specific asserted improvement in computer capabilities (i.e., the

self-referential table for a computer database) or, instead, on a process that

qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”


ENFISH, LLC V. MICROSOFT CORP. (CONT’D)

Claim 17:

A data storage and retrieval system for a computer memory,

comprising:

means for configuring said memory according to a logical table,

said logical table including:

a plurality of logical rows, each said logical row

including an object identification number (OID) to identify each said

logical row, each said logical row corresponding to a record of

information;

a plurality of logical columns intersecting said plurality

of logical rows to define a plurality of logical cells, each said logical

column including an OID to identify each said logical column; and

means for indexing data stored in said table.

Copyright © 2016 Oblon, McClelland, Maier & Neustadt, LLP 57

TLI COMMUNS. LLC V. AV AUTO., L.L.C.

(FED. CIR. MAY 17, 2016)

Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea: “[T]he claims here are not directed to a specific improvement to

computer functionality. Rather, they are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two. … [T]he claims, as noted, are simply directed to the abstract idea of classifying and storing digital images in an organized manner.”

• The panel held that the claims did not contain an inventive concept: “[T]he claims' recitation of a ‘telephone unit,’ a ‘server’, an ‘image

analysis unit,’ and a ‘control unit’ fail to add an inventive concept sufficient to bring the abstract idea into the realm of patentability.”


TLI COMMUNS. LLC V. AV AUTO., L.L.C.

(CONT’D)

Claim 17:

A method for recording and administering digital images, comprising

the steps of:

recording images using a digital pick up unit in a telephone unit,

storing the images recorded by the digital pick up unit in a digital form

as digital images,

transmitting data including at least the digital images and classification

information to a server, wherein said classification information is prescribable

by a user of the telephone unit for allocation to the digital images,

receiving the data by the server,

extracting classification information which characterizes the digital

images from the received data, and

storing the digital images in the server, said step of storing taking into

consideration the classification information.


BASCOM GLOBAL INTERNET SERVS. V.

AT&T MOBILITY LLC, 2016 WL 3514158

(FED. CIR. JUNE 27, 2016) Holding:

• Vacated and remanded the district court’s dismissal under 12(b)(6)

Rationale:

• The panel held that the claims were directed to an abstract idea: “[T]he claims of the ‘606 patent are directed to the abstract idea of filtering

content. . . .”

• The panel held that the district court erred in finding that the claims did not contain an inventive concept in the ordered combination of limitations: “We agree with the district court that the limitations of the claims, taken

individually, recite generic computer, network and Internet components, none of which is inventive by itself.”

“BASCOM has alleged that an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea. We find nothing on this record that refutes those allegations as a matter of law or justifies dismissal under Rule 12(b)(6).”


BASCOM GLOBAL INTERNET SERVS. V.

AT&T MOBILITY LLC (CONT’D)

Claim 1:

A content filtering system for filtering content retrieved from an

Internet computer network by individual controlled access network

accounts, said filtering system comprising:

a local client computer generating network access requests for

said individual controlled access network accounts;

at least one filtering scheme;

a plurality of sets of logical filtering elements; and

a remote ISP server coupled to said client computer and said

Internet computer network, said ISP server associating each said

network account to at least one filtering scheme and at least one set of

filtering elements, said ISP server further receiving said network access

requests from said client computer and executing said associated

filtering scheme utilizing said associated set of logical filtering

elements.


RAPID LITIG. MGMT. V. CELLZDIRECT, INC.

(FED. CIR. JULY 5, 2016)

Holding:

• Vacated and remanded the district court’s grant of summary judgment that the claims were invalid under § 101

Rationale:

• The panel held that the district court erred in finding that the claims were directed to a law of nature: “The district court identified in these claims what it called a ‘natural

law’—the cells' capability of surviving multiple freeze-thaw cycles.”

“We need not decide in this case whether the court's labeling is correct. It is enough in this case to recognize that the claims are simply not directed to the ability of hepatocytes to survive multiple freeze-thaw cycles. Rather, the claims of the '929 patent are directed to a new and useful laboratory technique for preserving hepatocytes. This type of constructive process, carried out by an artisan to achieve ‘a new and useful end,’ is precisely the type of claim that is eligible for patenting.”


SHORTRIDGE V.

FOUND. CONSTR. PAYROLL SERV., LLC

(FED. CIR. JULY 13, 2016) (UNPUBLISHED) Holding:


Rationale:

• The panel held that the PO conceded that the claims were directed to an abstract idea: “Thus, as Mr. Shortridge has conceded that the '933 patent is directed

to an abstract idea (or ideas) [a payroll program] and has not urged our adoption of a different abstract idea (or ideas), we begin our analysis at step two of the Alice framework.”

• The panel held that the claims did not contain an inventive concept: “While it may be true that, as Mr. Shortridge argues, a human could not

easily process core payroll while simultaneously generating CPRs, ‘relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.’”


LENDINGTREE, LLC V. ZILLOW, INC.

(FED. CIR. JULY 25, 2016) (UNPUBLISHED)

Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea: “On its face, representative method claim 1 is directed to an abstract

idea; namely, a loan-application clearinghouse or, more simply, coordinating loans. Indeed, claim 1 is directed to a practice similar to ‘fundamental economic practice[s]’ found abstract by the Supreme Court.”

• The panel held that the claims did not contain an inventive concept: “‘At best, the claim[] describe[s] the automation of [a] fundamental

economic concept . . . through the use of generic-computer functions.’”

“It is well settled, though, that automating conventional activities using generic technology does not amount to an inventive concept.”


ELEC. POWER GROUP, LLC V. ALSTOM S.A.

(FED. CIR. AUGUST 1, 2016)

Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea: “The focus of the asserted claims … is on collecting information, analyzing it, and

displaying certain results of the collection and analysis. We need not define the outer limits of ‘abstract idea,’ or at this stage exclude the possibility that any particular inventive means are to be found somewhere in the claims, to conclude that these claims focus on an abstract idea—and hence require stage-two analysis under § 101.”

• The panel held that the claims did not contain an inventive concept: “The claims in this case do not even require a new source or type of information,

or new techniques for analyzing it. … Inquiry therefore must turn to any requirements for how the desired result is achieved. … Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”



(CONT’D)

Functional claiming and § 101: “The [district] court’s

description is one helpful way of double-checking the

application of the Supreme Court’s framework to

particular claims - specifically, when determining whether

the claims meet the requirement of an inventive concept

in application. Indeed, the essentially result-focused,

functional character of claim language has been a

frequent feature of claims held ineligible under § 101,

especially in the area of using generic computer and

network technology to carry out economic transactions.”



(CONT’D)

Claim 12: A method of detecting events on an inter-connected electric power grid in real time over a

wide area and automatically analyzing the events on the interconnected electric power grid, the

method comprising:

receiving a plurality of data streams, each of the data streams comprising sub-second,

time stamped synchronized phasor measurements wherein the measurements in each stream are

collected in real time at geographically distinct points over the wide area of the interconnected electric

power grid, the wide area comprising at least two elements from among control areas, transmission

companies, utilities, regional reliability coordinators, and reliability jurisdictions;

receiving data from other power system data sources, the other power system data

sources comprising at least one of transmission maps power plant locations, EMS/SCADA systems;

receiving data from a plurality of non-grid data sources;

detecting and analyzing events in real-time from the plurality of data streams from the wide

area based on at least one of limits, sensitivities and rates of change for one or more measurements

from the data streams and dynamic stability metrics derived from analysis of the measurements from

the data streams including at least one of frequency instability, voltages, power flows, phase angles,

damping, and oscillation modes, derived from the phasor measurements and the other power system

data sources in which the metrics are indicative of events, grid stress, and/or grid instability, over the

wide area; …



(CONT’D)

Claim 12 (cont’d):

displaying the event analysis results and diagnoses of events and associated

ones of the metrics from different categories of data and the derived metrics in visuals,

tables, charts, or combinations thereof, the data comprising at least one of monitoring

data, tracking data, historical data, prediction data, and summary data;

displaying concurrent visualization of measurements from the data streams

and the dynamic stability metrics directed to the wide area of the interconnected electric

power grid;

accumulating and updating the measurements from the data streams and the

dynamic stability metrics, grid data, and non-grid data in real time as to wide area and

local area portions of the interconnected electric power grid; and

deriving a composite indicator of reliability that is an indicator of power grid

vulnerability and is derived from a combination of one or more real time measurements or

computations of measurements from the data streams and the dynamic stability metrics

covering the wide area as well as non-power grid data received from the non-grid data

source.


IN RE CHORNA

(FED. CIR. AUGUST 10, 2016) (UNPUBLISHED)

Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea: “In the present case, Mr. Chorna seeks patent protection for prospective

evaluation of the market (over some specified period of time), and the invention’s goal is to help investors automatically choose the best performing index/financial instrument over that period. These are the very same economic practices that were deemed to be patent-ineligible subject matter in Bilski and Alice.”

• The panel held that the claims did not contain an inventive concept: “Taking the claim elements separately, the claims invoke the use of an ‘organized

securities exchange, commodities exchange, alternative trading system, and “over the counter” system.’ … However, ‘[s]imply appending conventional steps, specified at a high level of generality,’ and ‘attempting to limit the use of [the idea] to a particular technological environment’ is insufficient to supply an inventive concept.”


TDE PETROLEUM DATA SOLUTIONS, INC. V.

AKM ENTER.

(FED. CIR. AUGUST 15, 2016) (UNPUBLISHED) Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea: “Turning to the first step of the Alice inquiry, we conclude that claim 1 is directed

to an abstract idea. The steps of claim 1 recite operations performed by any general-purpose computer. … [I]t is evident from our precedent that claim 1 is the sort of data gathering and processing claim that is directed to an abstract idea under step one of the Alice analysis.”

• The panel held that the claims did not contain an inventive concept: “[W]e find nothing in claim 1 that adds anything more to the abstract idea of

storing, gathering, and analyzing data. TDE does not and cannot argue that storing state values, receiving sensor data, validating sensor data, or determining a state based on sensor data is individually inventive.”


TDE PETROLEUM DATA SOLUTIONS, INC. V.

AKM ENTER. (CON’T)

Claim 1:

An automated method for determining the state of a well

operation, comprising:

storing a plurality of states for a well operation;

receiving mechanical and hydraulic data reported for the well

operation from a plurality of systems; and

determining that at least some of the data is valid by comparing

the at least some of the data to at least one limit, the at least one limit

indicative of a threshold at which the at least some of the data do not

accurately represent the mechanical or hydraulic condition purportedly

represented by the at least some of the data; and

when at least some of the data are valid, based on the

mechanical and hydraulic data, automatically selecting one of the

states as the state of the well operation.


MCRO, INC. V. BANDAI NAMCO GAMES AMERICA,

NO. 2015-1080 (FED. CIR. SEPTEMBER 13, 2016)

Holding:

• Claims valid under § 101

Rationale:

• The panel held that the claims were not directed to an abstract idea: “The claimed rules [speech to lip synchronization/facial expressions] here,

however, are limited to rules with certain common characteristics, i.e., a genus. … We therefore look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”

“By incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques. When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Claim 1 . . . Is not directed to an abstract idea.”


MCRO, INC. V. BANDAI NAMCO GAMES AMERICA

(CONT’D)

Claim 1:

A method for automatically animating lip synchronization and facial

expression of three dimensional characters comprising:

obtaining a first set of rules that define output morph weight set stream

as a function of phoneme sequence and time of said phoneme sequence;

obtaining a timed data file of phonemes having a plurality of sub-

sequences;

generating an intermediate stream of output morph weight sets and a

plurality of transition parameters between two adjacent morph weight sets by

evaluating said plurality of sub-sequences against said first set of rules;

generating a final stream of output morph weight sets at a desired

frame rate from said intermediate stream of output morph weight sets and said

plurality of transition parameters; and

applying said final stream of output morph weight sets to a sequence

of animated characters to produce lip synchronization and facial expression

control of said animated characters.


AFFINITY LABS OF TEXAS LLC V. DIRECTTV, LLC

(FED. CIR. SEPTEMBER 23, 2016)

Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea and did not contain an inventive concept: “The ‘abstract idea’ step of the inquiry calls upon us to look at the

‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.”

Under step one of the Alice test, “The concept of providing out-of-region access to regional broadcast is an abstract idea … It is a broad and familiar concept concerning information distribution that is untethered to any specific or concrete way of implementing it.”

Under step two of the Alice test, there was no inventive concept that transformed the abstract idea into a patent-eligible application of the idea. “The claim simply recites the use of generic features of cellular telephones … as well as routine functions … to implement the underlying idea.”



(CONT’D)

The claims were functional

• “The claimed invention is entirely functional in nature”

• “There is nothing in claim 1 that is directed to how to implement

out-of-region broadcasting on a cellular telephone. Rather, the

claim is drawn to the idea itself.”

The specification

• “Even if all the details contained in the specification were imported

into the … claims, the result would still not be a concrete

implementation of the abstract idea.”

• “The specification describes the wireless communication of

information at a high level of generality.”

• “Nothing in the flow chart or the text of the specification provides

any details regarding the manner in which the invention

accomplishes the recited functions.”



(CONT’D)

Claim 1: A broadcast system, comprising:

a network based resource maintaining information associated with a network

available representation of a regional broadcasting channel that can be selected by a

user of a wireless cellular telephone device; and

a non-transitory storage medium including an application configured for

execution by the wireless cellular telephone device that when executed, enables the

wireless cellular telephone device:

to present a graphical user interface comprising at least a partial

listing of available media sources on a display associated with the wireless cellular

telephone device, wherein the listing includes a selectable item that enables user

selection of the regional broadcasting channel;

to transmit a request for the regional broadcasting channel from the

wireless cellular telephone device; and

to receive a streaming media signal in the wireless cellular telephone

device corresponding to the regional broadcasting channel, wherein the wireless cellular

telephone device is outside of a broadcast region of the regional broadcasting channel,

wherein the wireless cellular telephone device is configured to receive the application via

an over the air download.


INTELLECTUAL VENTURES I LLC V. SYMANTEC

CORP.

(FED. CIR. SEPTEMBER 30, 2016) Holding:

• Claims of U.S. Patent No. 6,460,050 invalid under § 101

Rationale:

• The panel held that the claims were directed to an abstract idea and did not contain an inventive concept: “We agree with the district court that receiving e-mail (and other data file)

identifiers, characterizing e-mail based on the identifiers, and communicating the characterization - in other words, filtering files/e-mail - is an abstract idea.”

“[I]t was long-prevalent practice for people receiving paper mail to look at an envelope and discard certain letters, without opening them, from sources from which they did not wish to receive mail based on characteristics of the mail. The list of relevant characteristics could be kept in a person’s head. Characterizing e-mail based on a known list of identifiers is no less abstract. The patent merely applies a well-known idea using generic computers ‘to the particular technological environment of the Internet.’”

“The steps of the … claims do not ‘improve the functioning of the computer itself,’ … [r]ather, these claims use generic computers to perform generic computer functions.”



CORP.

(FED. CIR. SEPTEMBER 30, 2016) ’050 Rationale Cont’d:

• IV argued that the jury did not find the claims anticipated or obvious which shows the claims recite patent-eligible subject matter.

• “While the claims may not have been anticipated or obvious because the prior art did not disclose [the “determining” and “outputting” claim elements] that does not suggest that the idea of ‘determining’ and ‘outputting’ is not abstract, much less that its implementation is not routine and conventional.”

• Really? – “Indeed, ‘[t]he “novelty” of any element or steps, 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 possible patentable subject matter.’” Diamond v. Diehr, 450 U.S. 175, 188-89 (1981)



CORP. (CONT’D)

Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea and did not contain an inventive concept: “The written description is particularly useful in determining what is well-known or

conventional … [t]he … abstract describes the invention as ‘[a] system, method and various software products … for automatic deferral and review of e-mail messages and other data objects in a networked computer system, by applying business rules to the messages as they are processed by post offices.”

“[T]he ... [specification] itself demonstrates that the claimed systems and methods of screening messages are abstract ideas, ‘fundamental … practice[s] long prevalent in our system’ and ‘method[s] of organizing human activity.’”

“This demonstrates that the concept is well-known and abstract. Furthermore, with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”

“The specification thus confirms that the implementation of the abstract idea is routine and conventional. The … [specification] does not ‘improve the functioning of the computer itself … [n]or does it solve a ‘challenge particular to the Internet.’”

“[T]he inquiry is not whether conventional computers already apply, for example, well-known business concepts like hedging or intermediated settlement. Rather, we determine whether ‘each step does no more than require a generic computer to perform generic computer functions.’”



CORP. (CONT’D)

Holding:


Rationale:

• The panel held that the claims were directed to an abstract idea and did not contain an inventive concept: “Unlike the asserted claims of the ’050 and ’142 patents, claim 7 [of ‘610 patent]

involves an idea that originated in the computer era - computer virus screening.”

“The ’610 patent is directed to the use of well-known virus screening software within the telephone network or the Internet. We have previously determined that performing otherwise abstract activity on the Internet does not save the idea from being patent-ineligible.”

“A narrow claim directed to an abstract idea … is not necessarily patent-eligible, for ‘[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.’”

“[T]he record does not indicate that claim 7 recites any improvement to conventional virus screening software, nor does claim 7 solve any problem associated with situating such virus screening on the telephone network.”

“[T]he claim here is ‘not directed to a specific improvement to computer functionality. Rather, [it is] directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.’”



CORP. (CONT’D)

Judge Mayer believes that software is per se

patent ineligible.

Judge Mayer concurrence: “I write separately,

however, to make two points: (1) patents

constricting the essential channels of online

communication run afoul of the First

Amendment; and (2) claims directed to software

implemented on a generic computer are

categorically not eligible for patent.”


AMDOCS V. OPENET TELECOM, NO. 2015-1180

(FED. CIR. NOVEMBER 1, 2016)

Holding:

• Claims of four patents found not invalid under § 101

Rationale:

• Assumed the existence of an abstract idea: “For argument’s sake we accept the district court’s view of the

disqualifying abstract ideas”

• Claims found valid in light of specification: “The dissent concedes that the written description discloses a

network monitoring system ‘eligible for patenting….’ We agree. Unlike the dissent, however, we find the claims at issue, understood in light of that written description, to be eligible for patenting.”

“[W]e construed ‘enhance’ as being dependent upon the invention’s distributed architecture.”

“As explained in the patent, the distributed enhancement was a critical advancement over the prior art.”


AMDOCS V. OPENET TELECOM

(CONT’D)

Claim 1 of ’065 Patent:

1. A computer program product embodied on a computer readable storage medium for processing network accounting information comprising:

computer code for receiving from a first source a first network accounting record;

computer code of correlating the first network accounting record with accounting information available from a second source; and

computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.


TRANXITION, INC. V. LENOVO (US) INC.


Holding:

• Claims of two patents found invalid under § 101

Rationale:

• The claims were directed to an abstract idea : “[T]he stated aim of the patent is to automate the migration of

data between two computers. This is not sufficient under step one of Alice.”

• The claims did not contain an inventive concept : “Here, the claim instructs a practitioner to (1) provide

configuration information, (2) generate an extraction plan, (3) extract the configuration settings, (4) generate a transition plan, and (5) transition those settings to a new computer. These steps, both individually, and as an ordered combination, do not disclose an inventive concept.”

“[The claims] merely describe a generic computer implementation, using ‘routine, conventional activities,’ of the abstract idea….”


APPLE, INC. V. AMERANTH, INC.


Holding:

• Claims of three patents found invalid under § 101

Rationale:

• The claims were directed to an abstract idea : “The patents claim systems including menus with particular

features. They do not claim a particular way of programming or designing the software to create menus….”

• The claims did not contain an inventive concept : “The claimed invention replaces a [restaurant] server’s notepad

or mental list….”

“[T]he specifications describe the hardware elements of the invention as ‘typical’ and the software programming needed as ‘commonly known.’ The invention merely claims the addition of conventional computer components to well-known business practices.”

The difficulty of the programming details for this functionality is immaterial because these details are not recited in the actual claims.”


CONCLUSIONS/SUGGESTIONS

STEP 1: Does the claim improve functioning of the computer

itself? (Enfish)

STEP 2: Are conventional elements arranged in a

nonconventional way? (BASCOM)

Does the claim recite a technical solution to a technical

problem? (DDR)

Is claim functional? (Elec. Power)

Is the claim preemptive? (Ariosa, but see MCRO)

Does the claim improve over the prior art? (MCRO, but IV v.

Symantec)

Is the claim merely data gathering, analysis and display? (Elec.

Pwr. Group, and TDE Petroleum)

86

District Court


35 U.S.C. § 101

87

DISTRICT COURT CASES

Date District Case Name Outcome Procedural Context

7/8/2014 S.D.N.Y. DietGoal Innovations LLC v. Bravo Media LLC (Div. of

NBC Universal Media, LLC)

Claims invalid under § 101 Summary Judgment

7/16/2014 D. Del. Comcast IP Holdings I, LLC v. Sprint Communs. Co. L.P. Claims invalid under § 101 Summary Judgment

8/19/2014 D.N.J. Data Distrib. Techs., LLC v. Brer Affiliates, Inc. Denied Motion to Dismiss

9/2/2014 E.D. Tex. Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc. Claims invalid under § 101 Judgment on the

Pleadings

9/3/2014 D. Del. Genetic Techs. Ltd. v. Lab. Corp. of Am. Holdings Claims invalid under § 101 Motion to Dismiss

(Magistrate Judge

Opinion only)

9/3/2014 D. Del. Tuxis Techs., LLC v. Amazon.com, Inc. Claims invalid under § 101 Motion to Dismiss

9/3/2014 D. Del. Walker Digital, LLC v. Google, Inc. Claims invalid under § 101 Summary Judgment

9/4/2014 C.D. Cal. Eclipse IP LLC v. McKinley Equip. Corp. Claims invalid under § 101 Motion to Dismiss

9/5/2014 E.D. Mich. Autoform Eng'g GMBH v. Eng’g Tech. Assocs. Denied Summary Judgment

9/11/2014 M.D. Fla. Every Penny Counts, Inc. v. Wells Fargo Bank, N.A. Claims invalid under § 101 Summary Judgment

9/18/2014 D. Del. Helios Software, LLC v. Spectorsoft Corp. Claims valid under § 101 Summary Judgment

9/19/2014 N.D. Cal. Open Text S.A. v. Alfresco Software Ltd. Claims invalid under § 101 Motion to Dismiss




9/22/2014 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 Judgment on the

Pleadings

9/29/2014 C.D. Cal. CMG Fin. Servs. v. Pac. Trust Bank, F.S.B. Claims invalid under § 101 Summary Judgment

9/29/2014 N.D. Ill. Card Verification Solutions, LLC v. Citigroup Inc. Denied Motion to Dismiss

9/30/2014 N.D. Cal. Cogent Med., Inc. v. Elsevier Inc. Claims invalid under § 101 Motion to Dismiss

11/3/2014 C.D. Cal. Enfish, LLC v. Microsoft Corp. Claims invalid under § 101 Summary Judgment

11/3/2014 C.D. Cal. Cal. Inst. of Tech. v. Hughes Communs., Inc. Claims invalid under § 101 Summary Judgment

11/12/2014 C.D. Cal. Ameranth, Inc. v. Genesis Gaming Solutions, Inc. Denied Summary Judgment

12/15/2014 D. Del. Joao Bock Transaction Sys., LLC v. Jack Henry &

Assocs.


12/16/2014 N.D. Cal. OpenTV, Inc. v. Netflix Inc. Some claims invalid under

§ 101 (2 patents) and

denied as to other claims (1

patent)

Summary Judgment

12/17/2014 D. Del. IpLearn v. K12 Inc. Claims invalid under § 101 Summary Judgment

12/18/2014 D. Del. Cloud Satchel, LLC v. Amazon.com, Inc. Claims invalid under § 101 Summary Judgment




12/18/2014 D. Del. Intellectual Ventures I LLC v. Mfrs. & Traders Trust Co. Some claims invalid under

§ 101 (3 patents) and

denied as to other claims (1

patent)

Motion to Dismiss

12/23/2014 D. Utah KomBea Corp. v. Noguar L.C. Claims invalid under § 101 Summary Judgment

12/23/2014 C.D. Cal. MyMedicalRecords, Inc. v. Walgreen Co. Claims invalid under § 101 Judgment on the

Pleadings

12/23/2014 C.D. Cal. Morsa v. Facebook, Inc. Claims invalid under § 101 Judgment on the

Pleadings

12/23/2014 S.D. Tex. Fairfield Indus. v. Wireless Seismic, Inc. Denied Motion to Dismiss

12/30/2014 W.D. Tex. Morales v. Square, Inc. Claim invalid under § 101 Motion to Dismiss

1/2/2015 N.D. Cal. Bascom Research, LLC v. LinkedIn, Inc. Claims invalid under § 101 Summary Judgment

1/12/2015 C.D. Cal. Mortg. Grader, Inc. v. Costco Wholesale Corp. Claims invalid under § 101 Summary Judgment

1/15/2015 D.N.H. E. Coast Sheet Metal Fabricating Corp. v. Autodesk, Inc. Claims invalid under § 101 Summary Judgment

1/20/2015 N.D. Cal. Open Text S.A. v. Box, Inc. Claims invalid under § 101 Judgment on the

Pleadings

1/20/2015 N.D. Cal. Synopsys, Inc. v. Mentor Graphics Corp. Claims invalid under § 101 Summary Judgment

1/21/2015 E.D. Va. CertusView Techs., LLC v. S&N Locating Servs. Claims invalid under § 101 Judgment on the

Pleadings




1/27/2015 D. Del. Money Suite Co. v. 21st Century Ins. & Fin. Servs. Claim invalid under § 101 Motion to Dismiss

1/29/2015 N.D. Ill. Vehicle Intelligence & Safety LLC v. Mercedes-Benz

USA, LLC


Pleadings

2/6/2015 E.D. Va. In re TLI Communs. LLC Patent Litig. Claims invalid under § 101 Motion to Dismiss

2/9/2015 M.D. Fla. Stoneeagle Servs. v. Pay-Plus Solutions Denied Judgment on the

Pleadings

2/10/2015 M.D. Fla. Enpat, Inc. v. Tenrox Inc. Claims invalid under § 101 Summary Judgment

2/11/2015 C.D. Cal. Essociate, Inc. v. 4355768 Canada Inc. and Essociate,

Inc. v. Clickbooth.com


Pleadings

2/13/2015 E.D. Tex. Smartflash LLC v. Apple, Inc. Denied Summary Judgment

2/18/2015 W.D.

Wis.

Ameritox, Ltd. v. Millennium Health, LLC Some claims invalid under

§ 101 (1 patent) and denied

as to other claims (1 patent)

Summary Judgment

2/24/2015 N.D. Ill. Trading Techs. Int'l v. CQG, Inc. Denied J.M.O.L.

2/24/2015 D. Del. Intellectual Ventures I, LLC v. Motorola Mobility LLC Some claims invalid under

§ 101 (1 patent) and denied

as to other claims (1 patent)

Summary Judgment

3/3/2015 E.D. Tex. Clear with Computers, LLC v. Altec Indus. Claims invalid under § 101 Motion to Dismiss




3/10/2015 N.D. Cal. Hewlett Packard Co. v. ServiceNow, Inc. Claims invalid under § 101 Summary Judgment

3/11/2015 D. Del. Tenon & Groove, LLC v. Plusgrade S.E.C. Claims invalid under § 101 Summary Judgment

3/13/2015 N.D. Ill. Celsis in Vitro, Inc. v. CellzDirect, Inc. Claims invalid under § 101 Summary Judgment

3/17/2015 C.D. Cal. Modern Telecom Sys. LLC v. Juno Online Servs. Denied Judgment on the

Pleadings

3/18/2015 D. Del. Priceplay.com v. AOL Adver., Inc. Claims invalid under § 101 Motion to Dismiss

3/25/2015 D. Del. Tuxis Techs., LLC v. Amazon.com, Inc. Claims invalid under § 101 Motion to Dismiss

3/17/2015 S.D. Cal Advanced Auctions LLC v. Ebay Inc. Claims invalid under § 101 Judgment on the

Pleadings

3/29/2015 E.D. Tex. Certified Measurement, LLC v. Centerpint Energy

Houston

Denied Motion to Dismiss

3/30/2015 E.D. Va. Carfax, Inc. v. Red Mt. Techs. Claims invalid under § 101 Motion to Dismiss

3/31/2015 D. Minn. Genetic Veterinary Scis., Inc. v. Canine EIC Genetics,

LLC


4/6/2015 N.D. Cal. OpenTV, Inc. v. Apple, Inc. Claims invalid under § 101 Motion to Dismiss

4/14/2015 N.D. Cal. Shortridge v. Found. Constr. Payroll Serv., LLC Claims invalid under § 101 Judgment on the

Pleadings




4/15/2015 D. Del. Messaging Gateway Solutions, LLC v. Amdocs, Inc. Claims valid under § 101 Judgment on the

Pleadings

4/20/2015 N.D. Cal. Mobile-Plan-IT LLC v. Facebook Inc. Denied Judgment on the

Pleadings

4/20/2015 D.N.J. Wireless Media Innovations, LLC v. Maher Terminals,

LLC

Claims invalid under § 101 Motion to Dismiss

4/22/2015 D. Del. Intellectual Ventures I LLC v. Symantec Corp. Claims invalid under § 101 Summary Judgment

4/24/2015 D. Wisc. Ameritox, Ltd. v. Millennium Health, LLC Claims invalid under § 101 Summary Judgment

4/28/2015 S.D.N.Y. Intellectual Ventures II LLC v. JP Morgan Chase & Co. Claims invalid under § 101 Summary Judgment

4/28/2015 D. Mass. Kenexa Brassring, Inc. v. HireAbility.com, LLC Denied Judgment on the

Pleadings

5/4/2015 N.D. Cal. Good Tech. Corp. v. MobileIron, Inc. Denied Judgment on the

Pleadings

5/7/2015 N.D. Tex. Jericho Sys. Corp. v. Axiomatics, Inc. Claims invalid under § 101 Judgment on the

Pleadings

5/15/2015 N.D. Tex. BASCOM Global Internet Servs., Inc. v. AT&T

Mobility LLC


5/21/2015 C.D. Cal. Elec. Power Grp., LLC v. Alstom, S.A. Claims invalid under § 101 Summary Judgment




5/29/2015 E.D. Tex. Kroy IP Holdings, LLC v. Safeway, Inc. Claims invalid under § 101 Summary Judgment

6/11/2015 N.D. Cal. Potter Voice Techs., LLC v. Apple Inc. Some claims invalid under

§ 101 and denied as to other

claims

Summary Judgment

6/11/2015 N.D. Ill. Market Track, LLC v. Efficient Collaborative Retail

Mktg., LLC


Pleadings

6/24/2015 M.D. Fla. FairWarning IP, LLC v. Iatric Sys. Claims invalid under § 101 Motion to Dismiss

6/29/2015 S.D.N.Y Kickstarter, Inc. v. Fan Funded, LLC Claims invalid under § 101 Summary Judgment

7/1/2015 M.D. Fla. Stoneeagle Servs. v. Pay-Plus Solutions, Inc. Denied Summary Judgment

7/1/2015 D.N.J. Source Search Techs., LLC v. Kayak Software Corp. Claims invalid under § 101 Summary Judgment

7/7/2015 N.D. Ill. Chamberlain Grp., Inc. v. Linear LLC Denied Motion to Dismiss

7/7/2015 W.D. Tex. Affinity Labs of Tex., LLC v. Directv, LLC Claims invalid under § 101 Motion to Dismiss

7/9/2015 D. Ore. Tranxition, Inc. v. Lenovo (United States) Inc. Claims invalid under § 101 Summary Judgment

7/9/2015 W.D.

Wash.

Appistry, Inc. v. Amazon.com, Inc. Claims invalid under § 101 Judgment on the

Pleadings




7/9/2015 D. Del. Pragmatus Telecom, LLC v. Genesys Telecomms.

Labs., Inc.


7/10/2015 N.D. Cal. IPLearn-Focus, LLC v. Microsoft Corp. Claims invalid under § 101 Summary Judgment

7/10/2015 N.D. Ill. Smart Sys. Innovations, LLC v. Chi. Transit Auth. Claims invalid under § 101 Judgment on the

Pleadings

7/14/2015 E.D. Tex. Landmark Tech., LLC v. Assurant, Inc. Claims invalid under § 101 Motion to Dismiss

(Magistrate Judge

Order Only)

7/15/2015 N.D. Cal. Netflix, Inc. v. Rovi Corp. Claims invalid under § 101 Summary Judgment

7/17/2015 E.D. Va. Microstrategy Inc. v. Apttus Corp. Claims invalid under § 101 Motion to Dismiss

7/20/2015 Fed. Cl. Thales Visionix, Inc. v. United States Claims invalid under § 101 Judgment on the

Pleadings

7/23/2015 W.D. Wash. Telebuyer, LLC v. Amazon.com, Inc. Claims invalid under § 101 Summary Judgment

7/23/2015 S.D.N.Y. Adrea, LLC v. Barnes & Noble, Inc. Claims invalid under § 101 Motion for Judgment

7/27/2015 E.D. Cal. Boar's Head Corp. v. DirectApps, Inc. Claims invalid under § 101 Motion to Dismiss

8/3/2015 W.D. Tex. Becton, Dickinson & Co. v. Baxter Int'l, Inc. Claims invalid under § 101 Summary Judgment




8/6/2015 E.D. Tex. ContentGuard Holdings, Inc. v. Amazon.com, Inc. Denied Summary Judgment

8/10/2015 M.D. Fla. Joao Bock Transaction Sys., LLC v. Fid. Nat'l Info.

Servs.


8/10/2015 D. Del. Personalized Media Communs., LLC v. Amazon.com,

Inc.


Pleadings

8/10/2015 D. Del. TriPlay, Inc. v. WhatsApp Inc. Some claims invalid under


claims

Motion to Dismiss

8/19/2015 E.D. Tex. Uniloc USA, Inc. v. E-Mds, Inc. Some claims invalid under


claims

Motion to Dismiss

8/19/2015 E.D.N.Y. Paone v. Broadcom Corp. Denied Motion to Dismiss

8/21/2015 D. Del. Inventor Holdings, LLC v. Bed Bath & Beyond Inc. Claims invalid under § 101 Judgment on the

Pleadings

8/21/2015 D. Del. Everglades Game Techs., LLC v. Supercell, Inc. Claims invalid under § 101 Motion to Dismiss

8/26/2015 D.D.C. Encyclopedia Britannica, Inc. v. Dickstein Shapiro

LLP


Pleadings




8/28/2015 D. Mass. Exergen Corp. v. Brooklands Inc. Claims invalid under § 101 Summary Judgment

8/31/2015 N.D. Cal. Klaustech, Inc. v. Admob, Inc. Denied Judgment on the

Pleadings

9/2/2015 D. Md. Intellectual Ventures I LLC v. Capital One Fin. Corp. Claims invalid under § 101 Summary Judgment

9/2/2015 D. Del. Novo Transforma Techs., LLC v. Sprint Spectrum L.P. Claims invalid under § 101 Judgment on the

Pleadings

9/4/2015 D. Mass. DataTern, Inc. v. MicroStrategy, Inc. Denied Summary Judgment

9/8/2015 N.D. Cal. Spike v. Google Inc. Claims invalid under § 101 Judgment on the

Pleadings

9/8/2015 D. Del. Gammino v. AT&T Co. Claims invalid under § 101 Judgment on the

Pleadings

9/8/2015 D. Del. Cronos Techs., LLC v. Expedia, Inc. Denied Judgment on the

Pleadings

9/10/2015 D.N.J. WAG Acquisition, LLC v. Multi-Media, LLC Denied Motion to Dismiss

9/11/2015 S.D. Tex. TDE Petroleum Data Solutions, Inc. v. AKM Enter. Claims invalid under § 101 Motion to Dismiss

9/15/2015 D. Mass. Exergen Corp. v. Thermomedics, Inc. Claims invalid under § 101 Summary Judgment

9/17/2015 S.D. Tex. Canrig Drilling Tech., Ltd. v. Trinidad Drilling L.P. Denied Judgment on the

Pleadings




9/21/2015 E.D. Tex. eDekka LLC v. 3balls.com, Inc. Claims invalid under § 101 Summary Judgment

9/21/2015 E.D. Tex. Telinit Techs., LLC v. Alteva, Inc. Claims invalid under § 101 Judgment on the

Pleadings

9/23/2015 D. Colo. Concaten, Inc. v. AmeriTrak Fleet Solutions, LLC Claims invalid under § 101 Judgment on the

Pleadings

9/23/2015 E.D. Tex. Mobile Telcoms. Techs., LLC v. Leap Wireless Int’l,

Inc.

Denied Judgment on the

Pleadings

9/23/2015 W.D. Tex. Affinity Labs of Tex., LLC v. Amazon.com, Inc. Claims invalid under § 101 Motion to Dismiss

9/25/2015 E.D. Tex. SimpleAir, Inc. v. Google Inc. Denied Summary Judgment

9/25/2015 W.D. Pa. Intellectual Ventures I LLC v. Erie Indem. Co. Claims invalid under § 101 Motion to Dismiss

9/25/2015 W.D. Pa. Esoterix Genetic Labs. LLC v. Qiagen Inc. Claims invalid under § 101 Motion to Dismiss

9/28/2015 D. Col. HealthTrio, LLC v. Aetna, Inc. Claims invalid under § 101 Judgment on the

Pleadings

9/30/2015 D. Del. Execware, LLC v. BJ’s Wholesale Club, Inc. Denied Motion to Dismiss

9/30/2015 D. Del. Inventor Holdings, LLC v. Gameloft, Inc. Claims invalid under § 101 Judgment on the

Pleadings

Motion to Dismiss




10/1/2015 E.D. Tex. Orostream LLC v. ABS-CBN Int’l Claims invalid under § 101 Summary Judgment

10/5/2015 E.D. Tex. ContentGuard Holdings, Inc. v. Amazon.com, Inc. Denied Summary Judgment

10/6/2015 N.D. Cal. Evolutionary Intelligence, LLC v. Sprint Nextel Corp. Claims invalid under § 101 Motion to Dismiss

Judgment on the

Pleadings

10/8/2015 W.D. Tex. A PTY Ltd. v. HomeAway, Inc.; A Pty Ltd. v.

Facebook, Inc.; A Pty Ltd v. Google, Inc.


10/8/2015 D. Del. CyberFone Sys., LLC v. Lexmark Int'l, Inc. Claims invalid under § 101 Judgment on the

Pleadings

10/8/2015 D. Del. Parus Holdings, Inc. v. Sallie Mae Bank Claims invalid under § 101 Motion to Dismiss

10/8/2015 D. Del. YYZ, Inc. v. Hewlett-Packard Co. Claims invalid under § 101 Summary Judgment

10/13/2015 N.D. Ill. Neochloris, Inc. v. Emerson Process Mgmt. LLLP Claims invalid under § 101 Summary Judgment

10/16/2015 C.D. Cal. Kinglite Holdings Inc. v. Micro-Star Int’l Co. Claims invalid under § 101 Judgment on the

Pleadings

10/19/2015 N.D. Cal. Protegrity USA, Inc. v. Netskope, Inc. Claims invalid under § 101 Judgment on the

Pleadings

10/26/2015 W.D. Tex. Versata Software, Inc. v. Zoho Corp. Denied Summary Judgment

11/2/2015 N.D. Tex. Securus Techs., Inc. v. Global Tel*Link Corp. Claims invalid under § 101 Judgment on the

Pleadings




11/5/2015 N.D. Cal. GT Nexus, Inc. v. INTTRA, Inc. Claims invalid under § 101 Judgment on the

Pleadings

11/6/2015 N.D. Ohio DATATRAK Int'l, Inc. v. Medidata Solutions, Inc. Claims invalid under § 101 Judgment on the

Pleadings

11/6/2015 N.D. Ohio MacroPoint, LLC v. FourKites, Inc. Claims invalid under § 101 Motion to Dismiss

11/9/2015 D. Del. Intellectual Ventures I, LLC v. Canon Inc. Denied Summary Judgment

11/13/2015 M.D.N.C. Listingbook, Inc. v. Mkt. Leader, Inc. Claims invalid under § 101 Summary Judgment

11/17/2015 D. Del. Endo Pharms., Inc. v. Actavis Inc. Claims invalid under § 101 Motion to Dismiss

11/18/2015 S.D.N.Y Stanacard v. Rubard, LLC Claims invalid under § 101 Summary Judgment

11/20/2015 N.D. Cal Finjan, Inc. v. Blue Coat Sys. Claims valid under § 101 Judge Determination

under Fed. R. Civ. P. 52

11/24/2015

N.D. Ala. Mimedx Group v. Nutech Med., Inc. Some claims invalid under § 101

and denied as to other claims

Motion to Dismiss

11/25/2015 D. Del. Collarity, Inc. v. Google Inc. Claims invalid under § 101 Summary Judgment

12/2/2015 C.D. Cal. Modern Telecom Sys. LLC v. Lenovo (United

States) Inc.

Some claims invalid under § 101


Summary Judgment

12/7/2015 D. Utah Epic Tech., LLC v. FitNow, Inc. Claims invalid under § 101 Judgment on the

Pleadings




12/14/2015 D. Utah Xlear, Inc. v. STS Health, LLC Denied Motion to Dismiss

12/21/2015 N.D. Ohio Communique Lab., Inc. v. Citrix Sys. Claims valid under § 101 Summary Judgment

1/4/2016 E.D. Tex. Motio, Inc. v. BSP Software LLC Denied Summary Judgment

1/6/2016 E.D. Tex. Genband US LLC v. Metaswitch Networks Corp. Denied Summary Judgment

(Magistrate Opinion

Only)

1/12/2016 D. Del. Motivation Innovations, LLC v. Petsmart, Inc. Claims invalid under § 101 Judgment on the

Pleadings

1/12/2016 D. Del. C.R. Bard, Inc. v. Angiodynamics, Inc. Denied Motion to Dismiss

1/15/2016 M.D. Fla. zIT Consulting GmbH v. BMC Software, Inc. Denied Motion to Dismiss

1/16/16 N.D. Ill. Am. Needle, Inc. v. Zazzle Inc. Claims invalid under § 101 Motion to Dismiss

1/19/2016 N.D. Ill. Am. Needle, Inc. v. CafePress, Inc. Claims invalid under § 101 Motion to Dismiss

1/20/2016 E.D. Tex. Voxathon LLC v. Alpine Elecs. Of Am., Inc. Claims invalid under § 101 Motions to Dismiss

1/25/2016 N.D. Cal. Cave Consulting Grp., Inc. v. Truven Health

Analytics, Inc.


Pleadings

1/28/2016 N.D. Cal. Opentv, Inc. v. Apple Inc. Claims invalid under § 101 Motion to Dismiss




2/16/2016 C.D. Cal. Secure Male Solutions LLC v. Universal Wilde, Inc. Claims invalid under § 101 Motion to Dismiss

2/16/2016 D. Del. IBM v. Priceline Group Inc. Denied Motion to Dismiss

2/17/2016 C.D. Cal. Williamson v. Citrix Online, LLC Claims invalid under § 101 Summary Judgment

2/22/2016 S.D.N.Y. TNS Media Research, LLC v. Tivo Research &

Analysis, Inc.


2/23/2016 N.D Ohio Cleveland Clinic Found. V. True Health Diagnostics Claims invalid under § 101 Motion to Dismiss

2/25/2016 N.D. Ill. O2 Media, LLC v. Narrative Sci. Inc. Claims invalid under § 101 Motion to Dismiss

2/29/2016 W.D. Tex. A PTY Ltd. v. eBay, Inc. Claims invalid under § 101 Judgment on the

Pleadings

2/29/2016 W.D. Tex. A Pty Ltd. v. Facebook, Inc. Claims invalid under § 101 Judgment on the

Pleadings

2/29/2016 W.D. Tex. A Pty Ltd. v. Google, Inc. Claims invalid under § 101 Judgment on the

Pleadings

2/29/2016 W.D. Tex. A PTY Ltd. v. Homeaway, Inc. Claims invalid under § 101 Judgment on the

Pleadings

2/29/2016 W.D. Ky. RaceTech,LLC v. Ky. Downs, LLC Claims invalid under § 101 Motions to Dismiss




2/29/2016 D.N.J. Rutgers v. Qiagen N.V. Denied Motion to Dismiss

3/4/2016 S.D. Cal. Clarilogic, Inc. v. Formfree Holdings Corp. Claims invalid under § 101 Summary Judgment

3/7/2016 D.N.J. Synchronoss Techs., Inc. v. Hyperlync Techs.,

Inc.

Denied

Motion to Dismiss

3/8/2016 E.D. Va. Peschke Map Techs. LLC v. Rouse Props. Claims invalid under § 101 Motion to Dismiss

3/8/2016 E.D. Va. Peschke Map Techs. LLC v. Pa. Real Estate Inv.

Trust


3/10/2016 E.D. Tex. Secured Structures, LLC v. Alarm Sec. Grp. Denied Motions to Dismiss

3/17/2016 S.D. Tex. ContourMed Inc. v. Am. Breast Care L.P. Denied Motion to Dismiss

3/17/2016 D. Del. Bristol-Myers Squibb Co. v. Merck & Co. Denied Motion to Dismiss

3/20/2016 E.D. Tex. Core Wireless Licensing S.a.r.l. v. LG Elecs., Inc. Denied Summary Judgment

3/22/2016 D. Del. Network Congestion Solutions, LLC v. United

States Cellular Corp.

Denied Motions to Dismiss

3/22/2016 D. Del. Treehouse Avatar LLC v. Valve Corp. Denied Motions to Dismiss

3/22/2016 D. Del. Improved Search LLC v. AOL Inc. Denied Motion to Dismiss

3/22/2016 D. Del. Intellectual Ventures I, LLC v. Ricoh Americas

Corp.


Pleadings




3/23/2016 N.D. Ill. Joao Control & Monitoring Sys., LLC v. Telular

Corp


Pleadings

3/23/2016 N.D. Ill. SnowCast Solutions LLC v. Endurance Specialty

Holdings, Ltd.


3/24/2016 N.D. Ga. Mobile Telcoms. Techs. v. UPS Claims invalid under § 101 Judgment on the

Pleadings

3/24/2016 E.D. Tex. NexusCard, Inc. v. Kroger Co. Claims invalid under § 101 Motion to Dismiss

3/24/2016 W.D. Tenn. Ronald A. Katz Tech. Licensing, L.P. v. FedEx

Corp.


Pleadings

3/25/2016 D. Nev. Global Cash Access, Inc. v. NRT Tech. Corp. Claims invalid under § 101 Motion to Dismiss

3/25/2016 D. Mass. Exergen Corp. v. Kaz USA, Inc. Denied Motion for Judgment

3/29/2016 D. Colo. Brain Synergy Inst., LLC v. UltraThera Techs.,

Inc.

One claim invalid under § 101


Judgment on the

Pleadings

3/29/2016 E.D. Tex. Wetro Lan LLC v. Phoenix Contact USA Inc. Denied Motion to Dismiss

3/29/2016 D. Del. Bristol-Myers Squibb Co. v. Merck & Co. Denied Motion to Dismiss

3/30/2016 E.D.N.Y. EasyWeb Innovations, LLC v. Twitter, Inc. Claims invalid under § 101 Summary Judgment

3/30/2016 D. Del. IBM v. Priceline Group, Inc. Denied Motion to Dismiss




3/31/2016 E.D. Pa. Skillsurvey, Inc. v. Checkster LLC Claims invalid under § 101 Motion to Dismiss

3/31/2016 D. Del. Kaavo Inc. v. Cognizant Tech. Solutions Corp. Some claims invalid under § 101


Judgment on the

Pleadings and Motion

to Dismiss

4/11/2016 D. Del. SRI Int’l v. Cisco Sys. Denied Summary Judgment

4/14/2016 W.D.N.C. InVue Sec. Prods. V. Mobile tech, Inc. Denied Motion to Dismiss

4/15/2016 M.D. Fla. Peschke Map Techs. LLC v. Miromar Dev. Corp. Claims invalid under § 101 Judgment on the

Pleadings

4/25/2016 N.D. Cal. Avago Techs. Gen. IP (Sing) PTE Ltd. v. Asustek

Computer, Inc.


4/25/2016 E.D. Tex. Gonzalez v. Infostream Grp., Inc. Claims invalid under § 101 Summary Judgment

4/28/2016 D. Del. ART+COM Innovationpool GmbH v. Google Inc. Denied Summary Judgment

5/9/2016 E.D. Tex. Pres. Wellness Techs. LLC v. Allscripts

Healthcare Solutions

Claims invalid under § 101 Motions to Dismiss

5/10/2016 W.D. Pa. eResearch Technology, Inc. v. CRF, Inc. Claims invalid under § 101 Motion to Dismiss

5/12/2016 N.D. Tex. Mobile Telcoms. Techs., LLC v. Blackberry Corp. Some claims invalid under § 101


Summary Judgment

5/13/2016 N.D. Ill. Baxter Int’l, Inc. v. Carefusion Corp. Denied Motion to Dismiss




5/16/2016 E.D. Tex. Rothschild Location Techs. LLC v. Geotab

United States


5/17/2016 D. Del. Device Enhancement LLC v. Amazon.com, Inc. Claims invalid under § 101 Motion to Dismiss

5/23/2016 D. Del. Yodlee, Inc. v. Plaid Techs. Inc. Some claims invalid under § 101


Motion to Dismiss

5/27/2016 D. Del. Visual Memory, LLC v. NVIDIA Corp. Claims invalid under § 101 Motion to Dismiss

6/2/2016 D. Utah White Knuckle Gaming, LLC v. Elec. Arts Inc. Claims invalid under § 101 Motion to Dismiss

6/3/2016 D. Mass. Sophos Inc. v. RPost Holdings Denied

Judgment on the

Pleadings

6/7/2016 C.D. Cal. Apollo Fin., LLC v. Cisco Sys. Claims invalid under § 101 Motion to Dismiss

6/7/2016 D. Ariz. GoDaddy.com, LLC v. RPost Communs. Ltd. Claims invalid under § 101 Summary Judgment

6/7/2016 E.D. Mich. JDS Techs., Inc. v. Exacq Techs. Denied Motion to Dismiss

6/8/2016 N.D. Ill. Nextpoint, Inc. v. Hewlett-Packard Co. Claims invalid under § 101 Motion to Dismiss

6/9/2016 N.D. Cal. Papst Licensing GMBH & Co. v. Xilinx Inc. Claims invalid under § 101 Judgement on the

Pleadings

6/13/2016 D. Mass. Am. Well Corp. v. Teladoc, Inc. Claims invalid under § 101 Motion to Dismiss

6/17/2016 D. Mass. Smart Software, Inc. v. PlanningEdge, LLC Claims invalid under § 101 Motion to Dismiss




6/30/2016 W.D. Pa. Open Parking, LLC v. ParkMe, Inc. Claims invalid under § 101 Motion to Dismiss

7/5/2016 E.D. Va. Asghari-Kamrani v. United Servs. Auto. Ass’n Claims invalid under § 101 Motion to Dismiss

7/14/2016 N.D. Ga. Tridia Corp. v. Sauce Labs, Inc. Claims invalid under § 101 Motion to Dismiss

(Magistrate Opinion

Only)

7/19/2016 W.D. Wash. Appistry, Inc. v. Amazon.com, Inc. Claims invalid under § 101 Motion to Dismiss

7/22/2016 C.D. Cal. Transp. Techs., LLC v. L.A. Cnty. Metro. Transp.

Auth.

Denied

Judgment on the

Pleadings

7/22/2016 E.D. Va. Orbcomm Inc. v. Calamp Corp. Denied Motion to Dismiss

7/25/2016 N.D. Cal. Whitepages, Inc. v. Isaacs Claims invalid under § 101 Judgement on the

Pleadings

7/29/2016 S.D.N.Y. Multimedia Plus, Inc. v. PlayerLync, LLC Claims invalid under § 101 Judgement on the

Pleadings

8/2/2016 S.D. Ohio Zimmers v. Eaton Corp. Claims invalid under § 101 Judgement on the

Pleadings

8/2/2016 D. Del. VideoShare, LLC v. Google, Inc. Claims invalid under § 101 Judgement on the

Pleadings




8/2/2016 D.N.J. Eagle View Techs., Inc. v. Xactware Solutions, Inc. Denied Motion to Dismiss

8/3/2016 S.D.N.Y. Iron Gate Sec., Inc. v. Lowe’s Cos. Denied Motion to Dismiss

8/4/2016 W.D. Pa. Intellectual Ventures I LLC v. Erie Indem. Co. Claims invalid under § 101 Motion to Dismiss

8/9/2016 W.D. Tex. A PTY Ltd. v. Amazon.com, Inc. Denied Motion for Relief from

Final Judgment

8/9/2016 W.D. Tex. A Pty Ltd. v. Facebook, Inc. Denied Motion for Relief from

Final Judgment

8/9/2016 W.D. Tex. A Pty Ltd. v. Google, Inc. Denied Motion for Relief from

Final Judgment

8/9/2016 W.D. Tex. A PTY Ltd. v. Homeaway, Inc. Denied Motion for Relief from

Final Judgment

8/11/2016 D. Nev. POWERbahn, LLC v. Found. Fitness LLC Denied Judgment on the Pleadings

8/11/2016 S.D. Tex. Mantissa Corp. v. Ondot Sys. Denied Motion to Dismiss

8/15/2016 D. Del. Two-Way Media Ltd. v. Comcast Cable Communs.,

LLC

Some claims invalid under

§ 101 and denied as to

other claims

Judgment on the Pleadings

8/25/2016 D. Del. Vanda Pharms., Inc. v. Roxane Labs., Inc. All claims valid Findings and Conclusions

by the Court




8/25/2016 D. Mass. Athena Diagnostics, Inc. v. Mayo Collaborative

Servs., LLC


8/29/2016 D. Nev. CG Tech. Dev., LLC v. Big Fish Games, Inc. Some claims invalid under


other claims

Motion to Dismiss

8/29/2016 S.D. Ohio In re Bill of Lading Transmission & Processing Sys.

Patent Litig.


8/30/2016 D.N.M. Front Row Techs., LLC v. NBA Media Ventures,

LLC

Claims invalid under § 101 Judgment on the Pleadings

8/30/2016 D. Del. Sound View Innovations, LLC v. Facebook, Inc. Claims invalid under § 101 Motion to Dismiss

8/31/2016 D. Mass. Esoterix Genetic Labs. LLC v. Qiagen Inc. Claims invalid under § 101 Judgment on the Pleadings

9/6/2016 D. Del. JSDQ Mesh Techs. LLC v. Fluidmesh Networks,

LLC


9/12/2016 E.D. Mich. Zak v. Facebook, Inc. Denied Summary Judgment

9/12/2016 E.D. Tex. Diamond Grading Techs., Inc. v. Am. Gem Soc’y Denied Judgment on the Pleadings

9/13/2016 E.D. Tex. Personalized Media Communications, LLC v. Apple

Inc.





9/15/2016 D. Del Callwave Communications, LLC v. AT&T Mobility,

LLC

Claims invalid under § 101 Judgment on the Pleadings

9/15/2016 D. Del. Nice Sys. V. Clickfox, Inc. Claims invalid under § 101 Motion to Dismiss

9/16/2016 D. Minn. Proto Labs, Inc. v. ICO Prods., LLC Denied Motion to Dismiss

9/19/2016 N.D. Cal. Tridim Innovations LLC v. Amazon.com, Inc. Claims invalid under § 101 Motion to Dismiss

9/21/2016 E.D. Tex. Personalized Media Communications, LLC v.

Samsung Elecs. Am., Inc.


9/21/2016 E.D. Tex. Perdiemco, LLC v. Industrack LLC Denied Judgment on the Pleadings

9/26/2016 N.D. Tex. Convergent Media Solutions, LLC v. AT&T Denied Motions to Dismiss

9/28/2016 E.D. Tex. Cryptopeak Solutions, LLC v. Lowe’s Home Ctrs. Denied Motion to Dismiss

9/29/2016 D. Del. Data Engine Techs. LLC v. Google Inc. Claims invalid under § 101 Judgment on the Pleadings

9/29/2016 D. Del. MAZ Encryption Techs. LLC v. Blackberry Corp. Denied Judgment on the Pleadings

9/28/2016 E.D. Tex. Cryptopeak Solutions, LLC v. Lowe’s Home Ctrs. Denied Motion to Dismiss

9/29/2016 E.D. Tex. Genband US LLC v. Metaswitch Networks All claims valid Findings and Conclusions

by the Court

9/30/2016 N.D. Cal. KHN Solutions Inc. v. Vertisense Inc. Denied Motion to Dismiss

9/30/2016 D. Del. Kaavo Inc. v. Amazon.com inc. Denied Motion to Dismiss

10/1/2016 W.D. Tex. Versata Software, Inc. v. Zoho Corp. Claims invalid under § 101 Motion for Summary

Judgment




10/13/2016 D. Nev. CG Tech. Dev., LLC v. Zynga, Inc. Some claims invalid under


other claims

Motion to Dismiss

10/18/2016 D. Nev. 2-Way Computing, Inc. v. Grandstream Networks,

Inc.


10/18/2016 D. Nev. CG Tech. Dev., LLC v. Bwin.Party (U.S.A.), Inc. Denied Motion to Dismiss

10/18/2016 D. Nev. CG Tech. Dev., LLC v. FanDuel, Inc. Some claims invalid under


other claims

Motion to Dismiss

10/19/2016 E.D. Va. Orbcomm Inc. v. Calamp Corp. Some claims invalid under


other claims

Motion for

Reconsideration of Denial

of Motion to Dismiss

10/31/2016 D. Del. Evolved Wireless, LLC v. Apple Inc. Denied Judgment on the Pleadings

11/15/2016 N.D. Ill. Visual Interactive Phone Concepts, Inc. v. United

States Cellular Corp.

Claims invalid under § 101 Judgment on the pleadings

11/21/2016 N.D. Cal. Huawei Techs. Co. Samsung Elecs. Com Denied Motion to Dismiss

11/29/2016

S.D.N.Y. TNS Media Research LLC v. TIVO Research and

Analytics, Inc.

Vacated earlier invalidity

determination

Court reconsidered

previous § 101 opinion

after previous judge retired


The USPTO’s


35 U.S.C. § 101

112

2014 INTERIM GUIDANCE ON PATENT SUBJECT

MATTER ELIGIBILITY

113

Supplements the June 25, 2014 Preliminary

Instructions

Supersedes the March 4, 2014 Procedures for Subject

Matter Eligibility Analysis of Claims Reciting or

Involving Laws of Nature/Natural Principles, Natural

Phenomena, and/or Natural Products

Supersedes MPEP §§ 2106(II)(A), 2106(II)(B), and

2106.01

Supersedes MPEP § 2105 to the extent that the

section suggests that “mere human intervention”

necessarily results in eligible subject matter


2014 INTERIM GUIDANCE ON PATENT SUBJECT

MATTER ELIGIBILITY


SAFE HARBORS

115

“Significantly More” Considerations

– Improvements to another technology or technical

field

– Adding a specific limitation other than what is well-

understood, routine and conventional in the field, or

adding unconventional steps that confine the claim

to a particular useful application

– Other meaningful limitations beyond generally

linking the use of the judicial exception to a

particular technological environment


JULY 2015 UPDATE ON SUBJECT MATTER

ELIGIBILITY – 80 FR 45429

116

Showing lack of preemption not enough to overcome

101 rejection

Examiners given power similar to “judicial notice”

• Need to provide evidence to establish what is old and well-

known in the claims

New examples help in determining an “abstract idea”

• Useful examples to show what passes muster under the

significantly more test

There is still no clear definition of an “abstract idea”

• PTO provides categories of abstract ideas (i.e., organizing

human activities)

Rise of the “technical effect” test? Copyright © 2016 Oblon, McClelland, Maier & Neustadt, LLP



117

Showing lack of preemption not enough to overcome

101 rejection

– “[W]hile a preemptive claim may be ineligible, the

absence of complete preemption does not

guarantee that a claim is eligible.”

– Need to show that a claim clearly does not preempt

the abstract idea that the claim is eligible for

streamlined analysis

– Participate in the First Action Interview program to

present § 101 related arguments to the examiner

before a § 101 rejection is ever made




118

Examiners given power similar to “judicial notice”

– Examiner does not have to provide evidence of

what is “well-understood, routine, and conventional”

– Applicants will have little recourse to argue with the

examiner regarding what is “generally known in the

art”




119

New examples help in determining an “abstract idea”

– Example 21 compares and contrasts hypothetical

software claims

– Examples 22 and 23 are directed to GUIs and show

the level of detail needed to distinguish patent

eligible claims

– Example 27 provides streamlined eligibility analysis

for a claim directed to remote access and storage of

computer control software




120

Rise of the “technical effect” test?

– Example 21 provides “additional limitations” that transform the

claim from “a generic computer performing generic computer

functions” to “an ordered combination” that addresses an

“Internet-centric challenge”

– Examples 23 and 25 also refer to an “ordered combination”

that renders the claim patent eligible

As a whole, the claims contain language affixing the

method to a particular technology area and cause a

particular technical effect

Showed that the claim “demonstrate[d] an improvement in

the field” or “improve[d] the functioning” of the computer

itself


MAY 2016 SUBJECT MATTER ELIGIBILITY UPDATE–

81 FR 27381

121

Outlines recent USPTO memorandums and guidance

Establishes an open-ended comment period on subject

matter eligibility

– “The USPTO is now seeking public comment on subject

matter eligibility on an on-going basis.”

– “The comment period is open-ended, and comments will be

accepted on an ongoing basis.”

– “The USPTO is particularly interested in public comments

addressing the progress the USPTO is making in the quality of

correspondence regarding subject matter eligibility rejections.”


MAY 4, 2016 MEMORANDUM

122

Subject: Formulating a Subject Matter Eligibility

Rejection and Evaluating the Applicant’s Response to

a Subject Matter Eligibility Rejection

– Formulating a § 101 Rejection

When making a rejection, identify and explain the judicial

exception recited in the claim (Step 2A)

When making a rejection, explain why the additional claim

elements do not result in the claim as a whole amounting

to significantly more than the judicial exception (Step 2B)

Examples should not be relied upon in § 101 rejections



123

Subject: Formulating a Subject Matter Eligibility

Rejection and Evaluating the Applicant’s Response to

a Subject Matter Eligibility Rejection

– Evaluating Applicant’s Response

If the examiner’s abstract idea determination is

challenged: (1) withdraw rejection or (2) provide

comparison to Supreme Court or Federal Circuit case

If the examiner’s determination that something is well-

known is challenged: (1) withdraw rejection or (2) consider

whether rebuttal evidence should be provided



124

Subject: Recent Subject Matter Eligibility Decisions

(Enfish, LLC v. Microsoft Corp. and TLI

Communications LLC v. A.V. Automotive, LLC)

– “[W]hen performing an analysis of whether a claim is directed

to an abstract idea (Step 2A), examiners are to continue to

determine if the claim recites (i.e., sets forth or describes) a

concept that is similar to concepts previously found abstract by

the courts.”

– “The fact that a claim is directed to an improvement in

computer-related technology can demonstrate that the claim

does not recite a concept similar to previously identified

abstract ideas.”


JULY 14, 2016 MEMORANDUM

125

Subject: Recent Subject Matter Eligibility Rulings

(Rapid Litigation Management v. CellzDirect and

Sequenom v. Ariosa)

– “[T]he USPTO’s current subject matter eligibility guidance and

training examples are consistent with the Federal Circuit's

panel decisions in Rapid Litigation Management and

Sequenom.”

– “Life sciences method claims should continue to be treated in

accordance with the USPTO's subject matter eligibility

guidance (most recently updated in May of 2016).”


NOVEMBER 2, 2016 MEMORANDUM

126

Subject: Recent Subject Matter Eligibility Decisions (McRO and

BASCOM)

– “An ‘improvement in computer-related technology’ is not limited to

improvements in the operation of a computer or a computer

network per se, but may also be claimed as a set of ‘rules’

(basically mathematical relationships) that improve computer-

related technology by allowing computer performance of a

function not previously performable by a computer.”

– USPTO acknowledged that the Federal Circuit emphasized the

patent’s specification, particularly that the Court relied on “the

specification’s explanation of how the claimed rules enabled the

automation of specific animation tasks that previously could not

be automated when determining that the claims were directed to

improvements in computer animation instead of an abstract idea.”


NOVEMBER 2, 2016 MEMORANDUM (CONT’D)

127

Subject: Recent Subject Matter Eligibility Decisions (McRO

and BASCOM)

– “[T]he claims at issue described a specific way (use of

particular rules to set morph weights and transitions through

phonemes) to solve the problem of producing accurate and

realistic lip synchronization and facial expression in animated

characters, rather than merely claiming the idea of a solution

or outcome.”

– “If an examiner still determines that the claim is directed to a

judicial exception, the examiner should then reconsider in Step

2B of the eligibility analysis whether the additional elements in

combination (as well as individually) are more than the non-

conventional and non-generic arrangement of known,

conventional elements.”


NOVEMBER 2, 2016 MEMORANDUM (CONT’D]

128

USPTO has taken the position that using a computer to

perform a task that produces an otherwise-

unobtainable result can be eligible if the steps to

perform the task are well-specified.

Non-precedential decisions

– “[E]xaminers should avoid relying upon or citing non-

precedential decisions (e.g., SmartGene, Cyberfone) unless

the facts of the application under examination uniquely match

the facts at issue in the non-precedential decision.”


STATE OF AFFAIRS (CONT’D]


“The invalidity rate of 68% is also the first time since Alice

that the rate has dropped below 70%. Similarly, the success

rate on motions on the pleadings at 64.9% has dropped

below 67% for the first time as well.”



Source: www.bilskiblog.com

PRACTICE TIPS

134

Overcoming a § 101 Rejection at the USPTO

– Use https://efoia.uspto.gov/Foia/PTABReadingRoon.jps to

find decisions reversing examiner § 101 rejections

– Demonstrate that the claims are directed to improvements

in computer related technology

– Demonstrate that the examiner failed to provide evidence

supporting the § 101 rejection

Ex parte Lai, Appeal No. 2014-000567 (PTAB Jan. 7, 2016)


PRACTICE TIPS

135


– Use means-plus-function claims

Ex parte Hyde, Appeal No. 2012-009430 (PTAB April 29, 2015)

– Demonstrate that the claimed method could not be

performed by a human

Ex parte Balestrieri, Appeal No. 2013-007305 (PTAB Oct. 23, 2015)

– Demonstrate that the algorithm's inputs are physical

objects

Ex parte Scott, Appeal No. 2012-009834 (PTAB March 12, 2015)

Ex parte Wegman, Appeal No. 2013-008168 (PTAB Sept. 22, 2015)


PRACTICE TIPS

136


– Provide specificity to the claims

Include claim limitations that establish a basis of

patentability that is separate from the abstract idea

Describe the key inventive steps/elements with specificity

Use the specification and prosecution history to

demonstrate how the claimed invention improves upon the

prior art


PRACTICE TIPS FROM MCRO

137

1. Rely on the underlying mathematical nature of the rules

to demonstrate non-preemption. It is the incorporation

of the claimed rules, not use of the computer that

“improved the existing technological

process.” Preemption should be based on the objective

perspective of the POSITA not a lay court or patent

examiner.

2. The improvement need not be in the functioning of the

computer. Improvements in computer tools that make

them easier to use or that save user’s effort or time or

otherwise improve their performance, are all sufficient

“improvements” under Mayo.


PRACTICE TIPS FROM MCRO (CONT’D)

138

3. The invention improved the result as experienced by

the user. It improved the design framework in the tools

used to create the product.

4. McRo pushes back on the mental steps doctrine. The

rules applied in the algorithm were different from what

animators did manually.

5. Eligibility does not require tangibility. MOT is but a clue

to patent eligibility, but is not the only test per Bilski.


PRACTICE TIPS FROM MCRO (CONT’D)

139

6. Focus on the claims as a whole with the limitations

working and don’t dissect the limitations into

conventional steps.

7. Distinguish SmartGene v. Advanced Biological Labs by

claiming the rules that were not used by conventional

users.


PRACTICE TIPS FROM AMDOCS

140

1. Ensure claims represent an unconventional technical

solution narrowly tailored to address a technological

problem.

2. Include a complete description of the technical problem

and solution in the specification especially if 101 may

be of concern.

3. Providing additional structural elements (even if

generic) may help in an eligibility determination if the

arrangement of the elements represents a unique

approach that is beneficial over the art.

4. Reciting “computer code for” doing something specific

may help support eligibility.


PRACTICE TIPS FROM AMDOCS (CONT’D)

141

5. When writing computer program product claims, recite

the elements in the body of the claim as computer

code-plus-function limitations (In re Beauregard, 53

F.3d 1583 (Fed. Cir. 1995) rather than recite the

elements in the body of the claim as method steps

(CyberSource v. Retail Decisions, 654 F.3d 1366 (Fed.

Cir. 2011). By doing so, it requires the decision-maker

to interpret the claim limitations by reading in the

corresponding structure and function from the

specification when determining subject matter eligibility.


EX PARTE FENG HAIYAN

142

Representative Claim: 1. A method for generating a real time billing information in a packet switching based

network, wherein a call is set up between a user of said packet switching based

network and a user of a circuit switching based network, and wherein a billing

server is informed of at least a billing rate and an interval of billing, the method

comprising the steps of:

generating, via a network element, a first message with a first token that indicates

the billing rate upon receipt of a first charge message that contains said billing rate

from said circuit switching based network and based on said first charge message,

wherein the billing server is informed of said billing rate;

once said call has been set up, generating, via the network element, a second

message with a second token that indicates the interval of billing upon receipt of a

subsequent charge message that contains said interval of billing and based on said

subsequent charge message, wherein the billing server is informed of said interval

of billing; and

generating continuously, via said billing server, the real time billing information after

receipt of the billing rate and the interval of billing.


EX PARTE FENG HAIYAN (CONT’D)

143

The PTAB reversed the Examiner’s § 101 rejection

The PTAB found that: - “[C]laim 1 is directed to a specific improvement in the way billing information is

generated in a packet switching based network - an improvement designed to address a

shortcoming in conventional practice and achieve an improved technological result. …

[S]imilar to the situation in McRO, it is the generation and use of the claimed token-

based messages, and not the use of generic network components, which improves the

existing technological process by allowing the generation of real time billing information.”

- “[C]laim 1 also does not broadly preempt all processes for achieving real time

billing of a call in a packet switching based network. … [Rather] Claim 1 is limited to a

specific signaling process, i.e., a discrete implementation, for communicating billing

information between a packet switching based network and a circuit switching based

network.”

- “We find that claim 1, when considered as a whole, is directed to a method for

improving an existing technological process, i.e., a process designed to solve the prior

art problem of providing real time billing in a packet switching based network, and not to

an abstract idea.”


EX PARTE CRAIG S. ETCHEGOYEN

144

Representative Claim: 1. A method for assessing the health of a person, the method comprising:

binding one or more medical measurement devices to one or more user devices

that are under control and operation of the person;

receiving health attribute data from the medical measurement devices through a

computer network, wherein the health attribute data represents one or more health

attributes of the person measured by the medical measurement devices;

receiving log data from one or more selected ones of the user devices, wherein the

log data represents events (i) that occurred in the selected user devices and (ii)

that are associated with the usage of the medical measurement devices;

comparing the health attribute data and the log data to determine that the medical

measurement devices measured the health attributes of the person concurrently

with the person's use of the selected user devices; and

using the health attribute data to assess a health state of the person.


EX PARTE CRAIG S. ETCHEGOYEN (CONT’D)

145


The PTAB found that: - “[T]he Examiner fails to consider all the elements of the claim both individually and

as an ordered combination … claim 1 recites five process steps, but the Examiner

does not explain why any of these steps individually and when viewed together fail

to transform the abstract idea into a patent-eligible invention. Merely stating that the

claimed ‘devices appear to be directed towards generic computer structure that

serves to perform generic computer functions that are well-understood, routine, and

conventional activities previously known to the pertinent industry’ … is not sufficient

to perform the second part of the Alice test.”

- “[W]e agree with Appellant that the omission of the requisite explanation with

respect to the second step of the Alice test amounts to a failure to articulate a

prima facie case of unpatentability of claims 1-9 as being directed to patent-

ineligible subject matter.”


EX PARTE STEPHEN G. BORER

146

Representative Claim: 1. A method for playing a racing game, the method comprising the steps of:

a) establishing a gaming apparatus having a plurality of physical and

cooperating game components, the gaming apparatus including …

b) determining a lane choice for each of the players …

c) subsequent to the step b), placing the game pieces of the players in the

discrete spaces of the lanes …

d) subsequent to the step c), each of the players generating in tum at

least two of the lane numbers …

e) advancing the game pieces around the lanes of the race track …

f) permitting the players to repeat steps d) and e) until at least one of the

game pieces completes a predetermined number of laps around the race

track and crosses the finish line.


EX PARTE STEPHEN G. BORER (CONT’D)

147


The PTAB found that: - “[W]e do not agree with the Examiner that the claimed racing game is directed to

an abstract idea.”

- “To the extent that the Examiner states that the abstract idea is a ‘new set of

rules,’ the Examiner does not articulate what the abstract idea is, nor does the

Examiner take into account the combination of the set of rules with the game

surface and pieces. Although the claim's reliance on a recited random number

generator is a mathematical element or tool, we do not agree that the claim as a

whole is reducible to an abstract idea.”

- “[A]lthough the independent claim is broad in scope, it does not preempt all racing

games.”

- Because we resolve this issue after consideration of the first step of the Alice test,

we need not reach the second step of the Alice test, e.g., as to whether there are

further claim limitations that contain an ‘inventive concept’ sufficient to ‘transform’

an abstract idea into a patent-eligible application.”


EX PARTE MIMI KINGSLEY

148

Representative Claim: 12. A method of playing a board game, the game board comprising M rows and N

columns, the method comprising:

placing a Comer Tile at each of four comers of the game board;

placing a Frame Tile, the Frame Tile having an indicia of a numeral, on a first end of

each of the second through M-1 rows;

placing a Frame Tile on a second end of each of the second through M-1 rows,

wherein the indicia of a numeral on the Frame Tile for each second end of each row

matches the indicia of a numeral on each of the respective Frame Tiles on the first

end of each of the second through M-1 rows;

placing a Frame Tile, the Frame Tile having an indicia of a numeral, on a first end of

each of the second through N-1 columns;

placing a Frame Tile on a second end of each of the second through sixth rows,

wherein the indicia of a numeral on the Frame Tile for each second end of each row

matches the indicia of a numeral on each of the respective Frame Tiles on the first

end of each of the second through N-1 columns;

…


EX PARTE MIMI KINGSLEY (CONT’D)

149


The PTAB found that: - “[T]he Examiner does not establish that the claimed board game is

directed to an abstract idea. To the extent that the Examiner states that

the abstract idea is ‘abstract rules’ …, the Examiner fails to demonstrate

sufficiently that the combination of the claimed rules with the claimed

game board and claimed tiles is abstract.”

- Because we resolve this issue after consideration of the first step of the

Alice test, we need not reach the second step of the Alice test, e.g., as to

whether there are further claim limitations that contain an ‘inventive

concept’ sufficient to ‘transform’ an abstract idea into a patent-eligible

application.”


EX PARTE NEVILLE CARVALHO ET AL.

150

Representative Claim:

14. A method comprising:

aligning words to a desired word boundary, wherein each of

the words has a plurality of bits;

receiving from a word aligner, by a bit slipper, information

regarding the aligning; and

slipping bits of the words, wherein total delay due to the

aligning and the slipping is constant for all phases of a recovered

clock signal,

wherein the aligning and the slipping are performed by a

transceiver system.


EX PARTE NEVILLE CARVALHO ET AL. (CONT’D)

151


The PTAB found that:

- “[W]e determine that claims 14 and 16, like the claims in

Enfish, are directed to an improvement in the functioning of a

computer (i.e., eliminating word aligner latency delay uncertainty)

and not to the addition of general-purpose computer components

to a fundamental economic practice or mathematical equation.”


EX PARTE SYUNSUKE GOKYU ET AL.

152

Representative Claim: 1. A method for tread selection to select a tread to attach to a tread side of a tire casing in a

tire, comprising:

a) measuring at least one characteristic value indicating at least a tire pressure with a tire

condition measurement unit, the tire condition measurement unit having at least a TPMS

for measuring the tire pressure, and transmitting the at least one characteristic value to a

casing life prediction unit via radio wave;

b) receiving the at least one characteristic value, estimating internal pressure application

time equivalent to the amount of time internal pressure is applied based on the at least

one characteristic value measured in step a); and predicting a remaining life of the tire

casing based on the internal pressure application time using the casing life prediction;

c) selecting, by a tread selection unit, at least one recommended tread in accordance

with the remaining life of the tire casing predicted in step b) from among a plurality of

treads attachable to the tire casing, using wear life information calculated in advance for

each of the treads and stored in database; and

d) transforming a display screen of a terminal to display the at least one recommended

tread selected in step c).


EX PARTE SYUNSUKE GOKYU ET AL. (CONT’D)

153


The PTAB found that: - “We disagree with the Examiner and find instead that the claims specify a

process which is specifically designed to achieve an improved technological result

in conventional industry practice.”

- “We find that claim 1 limits the scope of the claims to the use of specific

devices, namely, a TPMS, radio wave transmission, a casing life prediction unit, a

tread selection unit, and a display screen. As such, we find that claim 1 prevents

preemption of all relationships between tire pressure and retread selection because

the claims are narrowly tailored to require, i.e., the use of a TPMS and a tire

condition measuring unit and the sending of the TPMS data to a tire condition

measuring unit using radio wave transmission.”

- “We find that the specific components required by the claimed process and

the claimed specified manner in which the data is required to be transmitted would

prevent preemption of all relationships between a recommended tread and

ascertaining remaining life of a tire.”


SUMMARY: SHOWINGS OF INVENTIVE CONCEPT

SIGNIFICANTLY MORE THAN EXCLUDED SUBJECT

MATTER

154

Application of technical principles from one technology

to another: CLS Bank safe harbor

Improve operation of computer: Enfish

Technical solution to technical problem: DDR Holdings

Novel & Nonobvious Ordered Arrangement of Claims

Elements: BASCOM

Application of specific novel rules to improve the user

experience with no preemption of manual process nor

mental steps


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


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