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Internet of Things (IoT)Best Practices For Protecting IP and Prosecuting IoT Applications Before the U.S. Patent and Trademark Office

Finland Patent OfficeApril 10, 2018

Carter, DeLuca, Farrell & Schmidt, LLPwww.cdfslaw.com

Overview 概要

• IoT Background– What is IoT?

• Classification of IoT Technology

• Best Practices– Drafting IoT-related Patent Claims

– Drafting and Prosecuting IoT-related Patent Applications

– Protecting IoT-related Software via Copyright

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IoT Background

What is IoT?• The Internet of Things (IoT) is defined by a devices connectivity to the

internet and to other devices, as well as the data it collects. IoT refers tothe growing network of connected objects that collect and exchangedata using embedded sensors.

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• Typically consisting of a physicaldevice with embedded electronics,software, sensors, actuators, andconnectivity which allows theseobjects to exchange data

• IoT allows objects to be sensed orcontrolled remotely across existingnetwork infrastructure

• It is estimated that there will be30 billion IoT objects by 2020


IoT Background

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• Amazon Echo

• Allows remote control of lights, viewing of securitycameras, listening to music, answering questions

• Driverless cars

• Reducing traffic, increased safety, reducedemissions

• Smart Fridge

• Utilizes sensors and cameras that allows the userto check spoilage from their phone

• Wearables

• Fitbit, Apple watch

• Bluetooth Connected Toothbrush

• Records brushing activity as data that you canchart on your own and share with dentalprofessionals.

IoT Examples


IoT Background

Technology Advances at a Rapid Pace• Advances in technology and reduction in costs has allowed

researches to explore remotely controlling from a handful, tohundreds, of devices using data networks.

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• Due to the relative infancy of IoTtechnologies, it is often difficult toidentify how to best classify IoTinnovations, draft claims coveringIoT innovations, and prosecuteapplications relating to IoTinnovations.


IoT Background• Patent filings directed towards the IoT have grown exponentially over

the past several years.

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0

1000

2000

3000

4000

5000

6000

2007

2008

2009

2010

2011

2012

2013

2014

2015

2016

Num

ber o

f Pub

licat

ions

Publication Year

Published Applications per Year

Published Applicationsper Year

4266

3809

2509

1409

730

7669

5127 5

2 2 1 1

Country of Filing

China

U.S.

PCT

Republic of Korea

EPO

UK

Japan

Germany

Canada

Spain

Russian Federation

• China and the U.S. are overwhelmingly the preferred venue for IoT Applications


Classification of IoT Technology

• Because of the myriad devices that can be utilized by IoT technologies, it is often difficult to identify a classification under which the IoT technology falls.

• Of the 12,957 Applications filed that are directed to the IoT, 29% were classified under class H04L.

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29%

23%19%

7%

5%

4%4%

3% 3% 2%

IPC Percentages

H04L

H04W

G06F

G06Q

G05B

G06K

H04B

H04N

G08B

H04M



Classification Descriptions

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IPC Description

H04L Transmission of Digital Information

H04W Wireless Communication Networks

G06F Electric Digital Data Processing

G06Q Data Processing Systems or Methods, Specifically Adapted for Administrative, Commercial, Financial, Managerial, Supervisory or Forecasting Purposes; Systems of Methods Specially Adapted for Administrative, Commercial, Financial, Managerial, Supervisory or Forecasting Purposes, Not Otherwise Provided For



Classification Descriptions

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IPC Description

G05B Control or Regulating Systems in General; Functional Elements of Such Systems; Monitoring or Testing Arrangements for Such Systems or Elements

G06K Recognition of Data; Presentation of Data; Record Carriers; Handling Record Carriers

H04B Transmission

H04N Pictoral Communication

G08B Signalling or Calling Systems; Order Telegraphs; Alarm Systems

H04M Telephonic Communication



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• Takeaway from IPC data is that IoT Applications are classified generally in electrical communications classes or classes related to the transmission of data

http://www.google.com/url?sa=i&rct=j&q=&esrc=s&source=images&cd=&cad=rja&uact=8&ved=0ahUKEwij5viD6vjPAhWBaD4KHQMgA8cQjRwIBw&url=http://arduinoarts.com/internet-of-things/&psig=AFQjCNFDUs1PqhdbWwxVMHDvKBY9BlZpwg&ust=1477583543976947



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• Levels of IoT:

– At the highest level it is:• Devices that are equipped with sensors and communicate via a network• Processing of sensor data

– At the lowest level it is:• Sensor hardware• Network hardware, topology, and communication protocols


Drafting IoT-related Patent Claims

• IoT claims are similar in structure to software or business method (BM) claims.

• Therefore, issues that are applicable to software and BM claims are similarly applicable to IoT claims; most notably:

– patent-eligibility of claimed subject matter (e.g., under 35 U.S.C. §101 and applicable case law), and

– functional claiming issues (e.g., claim interpretation under 35 U.S.C. § 112(f))

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Drafting IoT-related Patent Claims (cont’d)

• The Alice/Mayo test is a main hurdle IoT claims must overcome in order to be considered to be directed to patent-eligible subject matter under 35 U.S.C. § 101.

• Two Step test:– Is the Claim directed to a judicial exception?– If it does, are the elements of the claim, considered both individually

and as an ordered combination, sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself?

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• Rare to find no abstract idea

• USPTO March 2018 Eligibility Quick Reference Sheet (CAFC cases)

• Identifying Abstract Idea– Fundamental Economic Practices - 12– Methods of Organizing Human Activity – 40– An Idea “Of Itself” – 33– Mathematics/Formulas – 11

• Number of cases finding no abstract idea – 8– Must not be directed to any of the broad categories above

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• Factors supporting inventiveness– Unconventional approach– Technical solution to a technical problem– Transformation– Useful and tangible result or application– Improves another field

• Factors unhelpful to inventiveness– Computer merely implements existing mental activity or business process– Technological elements are generic components– Nothing more beyond applying abstract idea to a particular context– Insignificant post-solution activity– Essentially preempting all practical applications of the abstract idea

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• Recent Court of Appeals for the Federal Circuit (CAFC) decisions have provided valuable guidance on how to draft software and BM claims that are directed to patent-eligible subject matter.

• Core Wireless Licensing V. LG Electronics, Inc– http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-

2684.Opinion.1-23-2018.1.PDF

• Enfish LLC v. Microsoft Corp.– http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-

1244.Opinion.5-10-2016.1.PDF

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http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2684.Opinion.1-23-2018.1.PDF




• McRO, Inc. v. Bandai Namco Games America Inc.– http://www.cafc.uscourts.gov/sites/default/files/s15-1080.Opinion.9-9-

2016.2.pdf

• Bascom Global Internet v. AT&T Mobility LLC– http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-

1763.Opinion.6-23-2016.1.PDF

• Amdocs (Israel) Limited v. Openet Telecom, Inc.– http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-

1180.Opinion.10-28-2016.1.PDF

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http://www.cafc.uscourts.gov/sites/default/files/s15-1080.Opinion.9-9-2016.2.pdf/





• Newer cases in the March 2018:Eligibility Quick Reference Sheet:– https://www.uspto.gov/sites/default/files/documents/ieg-qrs.pdf

• Exergen v. Kaz– http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2315.Opinion.3-6-

2018.1.PDF

• Finjan v. Blue Coat Sys.– http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2520.Opinion.1-8-

2018.1.PDF

• Additional guidance on patent-eligibility of subject matter is provided on the USPTO website.– See Examination Guidance and Training Materials portion of the

website– https://www.uspto.gov/patent/laws-and-regulations/examination-

policy/examination-guidance-and-training-materials19

https://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials



Best Practices• Draft claims that only require one actor

– More difficult to prove infringement if multiple actors are required• Draft claims that are analogous to those that have been

considered patent-eligible in the case law and USPTO guidance

• Avoid language that invokes 35 U.S.C. §112(f)– Means plus function language such as “device for . . . ,” “unit for . . .

,” “module for . . . ,” “component for . . . ,” “mechanism for . . . ,” etc. • Draft claims to include structure

– Include sensors, devices, or other tangible structure that are used to enable the elements directed towards software or BMs.

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Drafting and Prosecuting IoT-related Patent Applications

Best Practices – 35 U.S.C. §112(f)• To the extent that IoT claims can be distinguishable from the

prior art in terms of structure, it is advisable to do so.– However, many IoT claims will be directed to how the software operates, the

aspects of which will likely be functionally claimed, and therefore it is likely that at least some IoT claims will invoke §112(f).

• In light of potential for claims to invoke §112(f), Applicants should ensure that their applications and claims are drafted in a manner such that the claims are likely to:– (1) survive (i.e., not be invalidated under) an eventual interpretation under

§112(f); and– (2) have a sufficiently broad scope (i.e., a scope that is not unduly narrowed

because of the §112(f) interpretation)

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Drafting and Prosecuting IoT-related Patent Applications (cont’d)

Best Practices – 35 U.S.C. §112(f) (cont’d)• Ensuring that the application includes adequate written description of

structure corresponding to the claimed functions will be helpful in addressing both of the above issues

• In other words, care must be taken to ensure that other requirements of 35 U.S.C. §112 are satisfied, particularly:– § 112(a): Written description/enablement requirements; and– § 112(b): Definiteness.

• §112(a) – Link Material to Function– Structure disclosed in the specification is corresponding structure only if the

specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link structure to function is the quid pro quo for employing §112(f) (See MPEP §2181).

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35 USC § 112(f)

A 3-prong analysis is used for determining whether 35 U.S.C. § 112(f) applies to a claim: (A) the claim limitation uses the term “means” or “step” or a

term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;

(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and

(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.

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Best Practices – 35 U.S.C. §112(f) (cont’d)• Example claim language that may be interpreted under 112(f) :

– “a communication unit”– “a means for wirelessly communicating”

• Language that should avoid interpretation under112(f):– “a wireless communicator”

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Best Practices – 35 U.S.C. §112(f) (cont’d)• §112(b) – Definiteness

– If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by the language. If an applicant fails to set forth an adequate disclosure, the application has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of §112. (See MPEP §2181).

• Satisfying §112(b) when §112(f) is invoked– The proper test for meeting the definiteness requirement is that the

corresponding structure (or material or acts) of a means (or step)-plus function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function. (See MPEP §2181).

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• IoT Applications should be drafted in a manner similar to other software/BM applications

• Therefore, include as much structure as possible in the application to support the software/BM portion of the application– Describe hardware that enables the use of the software such as

sensors, processors, electrical/communication wires, display screens, etc.

• Be overly inclusive; include as much detail as possible in the application to draw from while prosecuting the claims

• Use USPTO guidance and case law to frame arguments for the Examiner during prosecution– Pay particular attention to any clues the Examiner may give with

respect to how to place the claims in condition for allowance26



Protecting IoT-related Software via Copyright

• In view of the volatile legal landscape for software-related patents (such as IoT patents), notably in relation to 35 U.S.C. §101, many applicants have begun to look to copyright as a means to protect software-related claims

• Although copyright protection has its drawbacks…– Not as broad as patent protection– Often more difficult to prove infringement

• It also has advantages…– Inexpensive to obtain relative to the cost of obtaining a patent– No showing of innovation required– Some level of secrecy provided – Treaties and international conventions provide global protection

• IoT innovators should thus consider pursuing copyright registration to provide some measure of protection for their IoT-related software

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ROBERT P. MICHAL, Esq., a partner with the New York IntellectualProperty law firm of Carter, DeLuca, Farrell & Schmidt, LLP, concentrateshis patent practice on advising companies on ways to strategically buildand manage their global patent portfolios which includes patentapplication preparation and prosecution, as well as counseling on patentvalidity, infringement and patentability. He focuses on business methodsand software, consumer products, medical devices, materials, machines,digital imaging and display technologies, electro-chemical devices andelectrical engineering, especially chip design and manufacture, graphicsand cellular technologies. He also maintains an active trademark practiceand lectures extensively at U.S. Embassies and Consulates andprofessional organizations, influential trade associations and barassociations around the world

Robert Michal

www.cdfslaw.com+1 (631) 501-5700

[email protected] of Things

Questions?

http://www.cdfslaw.com/

445 Broad Hollow Road, Suite 420Melville, New York 11747

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THANK YOU!Kiitos!

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Appendix A

– This appendix covers the various CAFC cases discussed earlier in the presentation under the section discussing 35 USC section 101.

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Federal Circuit Precedent – Recent

More recent cases have continued to expand the scope of what is patentable subject matterRecent cases have rebuked the Patent Office

and insisted that the Patent Office present support for their determinations of unpatentable subject matter

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Enfish (CAFC, May 2016)

Patent claimed database software designed as a“self-referential” table that is patent eligible

CAFC held that claims reciting “a specificimprovement to computer functionality” are notdirected to an abstract idea, do not have to beanalyzed under step 2 (i.e., 2B) of Mayo/Alice test

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Enfish – Claim at issue

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.

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Enfish – CAFC Analysis

CAFC Applied Eligibility Test: Step 1: Determine whether the claim is directed to a process,

machine, manufacture, or composition of matter, or newand useful improvement thereof

Step 2A: Determine whether the claim is directed to a judicial

exception, i.e. a law of nature, natural phenomenon, orabstract idea

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“Directed to” Acts as a filter for interpreting the claims Whether a claim as a whole, when interpreted in view of the

specification, is directed to a patent ineligible concept.

Court asked whether the focus of the claims is on the specific assertedimprovement in computer capabilities Court looked to the teachings of the specification Specification claimed invention achieves benefits over conventional

databases, such as increased flexibility, faster search times, and smallermemory requirements.

Improvement is defined by logical structures and processes, rather thanparticular physical features Not simply applying a general-purpose computer to a fundamental economic

process or mathematical equation Directed to a specific implementation of a solution to a problem in the

software arts35


Enfish – CAFC Analysis(cont’d)

Claims must be compared to claims already found to be directedto an abstract idea in a previous court decision Cannot determine that the claim is abstract without comparison

An invention's ability to run on a general purpose computerdoes not automatically doom the claim Improvements in computer related technology, including claims directed

to software, are not necessarily abstract Court emphasizes: Some improvements in computer-related technology

are undoubtedly not abstract

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The court cautioned court and Examiners againstinterpreting a claim at a high level of abstractionuntethered from the language of the claim whendetermining the focus (directed to) of the claimedinvention

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Enfish – Holding

Claims recited an improvement to the functionality of acomputer, and thus the claim is patent-eligible under Step2A of the Mayo/Alice test and need not be evaluatedunder Step 2B

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Enfish – Takeaways Establish the art by which you want the claims to be judged Enfish was judged in the software art and succeeded Other claims have failed when judged against dissimilar art that led to levels of

abstraction that were too high

Emphasize the benefit of the claimed invention Emphasize benefit in the specification Emphasize benefit in the claims Emphasize how the claims are an improvement at every opportunity – especially

elements are generic or steps are performed by a generic computer

Include details sufficient to allow Examiners to look at the claims with a lowerlevel of abstraction – argue that they are viewing that claims with too high alevel of abstraction if they don’t recognize the novel details

There is no question that software claims can be patent eligible

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Bascom (CAFC, June 2016)

Patent claimed a filtering scheme with a specificlocation for the filtering system and allowing users tocustomize filtering for their individual networkaccounts that is patent eligible

Additional elements may be generic componentsindividually, but an inventive concept may be foundin their combination (“Ordered combination oflimitations” can provide the “inventive concept”)

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Bascom – Claim at issueA content filtering system for filtering content retrieved from an Internetcomputer network by individual controlled access network accounts, said filteringsystem comprising:

a local client computer generating network access requests for saidindividual 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 Internetcomputer network, said ISP server associating each said network account to atleast one filtering scheme and at least one set of filtering elements, said ISP serverfurther receiving said network access requests from said client computer andexecuting said associated filtering scheme utilizing said associated set of logicalfiltering elements.

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Bascom – Claim at IssueAn ISP server for filtering content forwarded to controlled access network accountgenerating network access requests at a remote client computer, each networkaccess request including a destination address field, said ISP server comprising:

a master inclusive-list of allowed sites;

a plurality of sets of exclusive-lists of excluded sites, each controlledaccess network account associated with at least one set of said plurality ofexclusive-lists of excluded sites; and

a filtering scheme, said filtering scheme allowing said network accessrequest if said destination address exists on said master inclusive-list but not onsaid at least one associated exclusive-list, whereby said controlled access accountsmay be uniquely associated with one or more sets of excluded sites.

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Bascom – CAFC Analysis

2A. The claims are directed to an abstract idea . . . or atleast it was a “close call” Abstract idea: “filtering content on the Internet” Move on to step 2B

2B. The claims amount to significantly more “The inventive concept described and claimed in the ‘606

patent is the installation of a filtering tool at a specificlocation, remote from the end-users, with customizablefiltering features specific to each end user.”

The combination and ordering of elements is a novel ideathat amounts to significantly more than the individualelements

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Bascom – Holding

The Bascom claims contain an “inventive concept” in the claims’“ordered combination of limitations,” and this establishes eligibility.

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Bascom – Takeaways The United States does not have the same system as Europe, but

emphasis of an “inventive step” may cause claim to overcome a§ 101 rejection under step 2B Allows patentee to dictate the line between directed to and additional elements If overly generalize, claims may fail step 2A with nothing left to analyze for step 2B

If no individual steps or elements are novel, emphasize their useand association to generate a novel combination Describe elements in relation to other elements Require steps be performed in a specific order If possible, tie orientation or order to the benefit of the improvement

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McRO (CAFC, Sept. 2016)

Patent claimed a method of automatic lipsynchronization and facial expression animationusing computer-implemented rules that is patenteligible

Claims were not directed to an abstract idea Claims were directed to an improvement in

computer-related technology

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McRO – Claim at issueA 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.

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McRO – CAFC Analysis

Federal Circuit Reasoning: Claims are directed to an improvement in computer-related technology Allowing computers to produce "accurate and realistic lip synchronization

and facial expressions in animated characters" that previously could onlybe produced by human animators

Court looks to specification Specification described the invention as improving computer animation

through the use of specific rules, rather than human artists, to set morphweights Human artists did not use the claimed rules, and instead relied on subjective

determinations (process is not one that would be performed with paper and pencil)

Court relied on the specification's explanation of how the claimed rulesenabled the automation of specific animation tasks that previously couldnot be automated

Unlike Alice, the claimed invention "improved [the] existing technologicalprocess", rather than merely use a computer as a tool to perform anexisting process

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McRO – CAFC Analysis

Federal Circuit Advice to Examiners and Courtsalike: "must be careful to avoid oversimplifying the claims“ Specific requirements of the claims should be considered

rather than grouped into a more generalized process Focus on the specific way of solving the problem rather than

the outcome Essentially, under step 2A, the claims should be considered as

a whole without oversimplification

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McRO – CAFC Holding

When looked at as a whole, claim 1 is directed to apatentable, technological improvement over theexisting, manual 3-D animation techniques. Theclaim uses the limited rules in a process specificallydesigned to achieve an improved technologicalresult in conventional industry practice. Alice, 134S. Ct. at 2358 (citing Diehr, 450 U.S. at 177). Claim 1of the ’576 patent, therefore, is not directed to anabstract idea.

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McRO –Takeaways Carefully craft specification to describe a specific problem or

shortcoming that is being overcome or improved Describe an improvement over existing computer methods

Do not merely state an outcome being achieved using acomputer; detail each step

Emphasize the problem or improvement in the claim itself Can’t guarantee the court will look to the specification

Push back on Examiners who generalize Examiners must analogize claims to those found by the court to be

ineligible subject matter Analogy will necessarily require some level of generalization and will

leave the rejection vulnerable

51


Trading Tech. (CAFC, Jan. 2017)

Patents claimed graphical user interface methods fordynamically displaying bid and asked prices in atrading system that is patent eligible

Claims were not directed to an abstract idea Claims were directed to an improvement in

computer-related technology

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Trading Tech. – Claim at issueA method of placing a trade order for a commodity on an electronic exchangehaving an inside market with a highest bid price and a lowest ask price, using agraphical user interface and a user input device, said method comprising:

setting a preset parameter for the trade orderdisplaying market depth of the commodity, through a dynamic display of

a plurality of bids and a plurality of asks in the market for the commodity,including at least a portion of the bid and ask quantities of the commodity, thedynamic display being aligned with a static display of prices correspondingthereto, wherein the static display of prices does not move in response to achange in the inside market;

displaying an order entry region aligned with the static display pricescomprising a plurality of areas for receiving commands from the user inputdevices to send trade orders, each area corresponding to a price of the staticdisplay of prices; and

selecting a particular area in the order entry region through single actionof the user input device with a pointer of the user input device positioned overthe particular area to set a plurality of additional parameters for the trade orderand send the trade order to the electronic exchange.

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Trading Tech. – Claim at issueA method for displaying market information relating to and facilitating trading of a commodity beingtraded in an electronic exchange having an inside market with a highest bid price and a lowest ask priceon a graphical user interface, the method comprising:

dynamically displaying a first indicator in one of a plurality of locations in a bid displayregion, each location in the bid display region corresponding to a price level along a common staticprice axis, the first indicator representing quantity associated with at least one order to buy thecommodity at the highest bid price currently available in the market;

dynamically displaying a second indicator in one of a plurality of locations in an ask displayregion, each location in the ask display region corresponding to a price level along the common staticprice axis, the second indicator representing quantity associated with at least one order to sell thecommodity at the lowest ask price currently available in the market;

displaying the bid and ask display regions in relation to fixed price levels positioned alongthe common static price axis such that when the inside market changes, the price levels along thecommon static price axis do not move and at least one of the first and second indicators moves in thebid or ask display regions relative to the common static price axis;

displaying an order entry region comprising a plurality of locations for receiving commandsto send trade orders, each location corresponding to a price level along the common static price axis;and

in response to a selection of a particular location of the order entry region by a single actionof a user input device, setting a plurality of parameters for a trade order relating to the commodity andsending the trade order to the electronic exchange.

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Trading Tech. – CAFC Analysis General Reasoning: “[I]neligible claims generally lack steps or limitations specific to solution of a

problem, or improvement in the functioning of technology.” “[T]he issue of subject matter eligibility is placed in the context of the patent-

based incentive to technologic progress.”

Federal Circuit Approved District Court Rationale: The Claims "require a specific, structured graphical user interface" and

prescribed functionality related to the interface; therefore they are notdirected to abstract ideas

The Claims recite an inventive concept 2A: Claim were directed to improvements in existing technological

processes in recent high-profile cases like DDR (DDR Holdings, LLC v.Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)), Enfish, and McRo

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Trading Tech. – CAFC Holding

For Section 101 purposes, the claimed subject matter is“directed to a specific improvement to the way computersoperate,” [Enfish], for the claimed graphical user interfacemethod imparts a specific functionality to a trading system“directed to a specific implementation of a solution to aproblem in the software arts.”

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Trading Tech. – Takeaways Draft claims to recite steps or limitations specific to solution of a

problem, or improvement If the problem or feature being improved over is not self evident, include

claim language relating the problem or improvement

Establish a technological context Describe the invention in terms of technological progress Do not describe the invention too generally such that an Examiner may

claim the general process could be performed with “pencil and paper”

Graphical User Interfaces (GUIs) can be patent eligible Must include enough specific detail to differentiate from a generic GUI

57


Visual Memory (CAFC, Aug. 2017)

Patents claimed a computer memory system havingprogrammable operational characteristics which aredefined based on the type of processor connected tothe system and separate caches that can beprogrammed to store different types of data basedon those characteristics.

Claims were not directed to an abstract idea

Claims were directed to an improvement incomputer-related technology

58


Visual Memory – Claim at issue

A computer memory system connectable to a processor and having one or moreprogrammable operational characteristics, said characteristics being definedthrough configuration by said computer based on the type of said processor,wherein said system is connectable to said processor by a bus, said systemcomprising:

a main memory connected to said bus; anda cache connected to said bus;

wherein a programmable operational characteristic of said system determines atype of data stored by said cache.

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Visual Memory – CAFC Analysis General Reasoning for Reversing District Court: “[the claims] are directed to an improved computer memory system, not to the

abstract idea of categorical data storage.” None of the claims “recite[s] all types and all forms of categorical data storage.” Rather, the patent explains the “multiple benefits” of the system such as obviating

the “need to design a separate memory system for each type of processor.” “configuring the memory system based on the type of processor connected the

memory system is the improvement in computer technology to which the [‘740]claims are directed. Alice requires no more from the claims or the specification tosupport our conclusion that the claims are not directed to an abstract idea.”

The CAFC determined that the ‘740 claims met the standard for patenteiligibility under step one of Alice, and therefore, the CAFC did notanalyze the ‘740 claims under step two of Alice.

60


Visual Memory – CAFC Holding

The use of conventional computer components is not, initself, “fatal to patent eligibility where the claims ‘aredirected to an improvement in the functioning of acomputer’”

61


Visual Memory– Takeaways Similarly to previous cases, it is prudent to draft claims to recite

steps or limitations specific to a solution to a problem, or animprovement thereupon If the problem or feature being improved over is not self evident, include

claim language relating the problem or improvement

Visual Memory affirms that is it beneficial to establish atechnological context Describe the invention in terms of technological progress Do not describe the invention too generally such that an Examiner may

claim the general process could be performed with “pencil and paper”

62


Finjan v. Blue Coat Sys. (CAFC, Jan. 2018)

Patents claimed a “behavior-based” approach to virus scanning; which are distinguished from traditional, “code-matching” virus scans that are limited to recognizing the presence of previously-identified viruses, typically by comparing the code in a downloadable to a database of known suspicious code.


Claims were directed to an improvement in computerfunctionality

63


Finjan v. Blue Coat Sys. – Claim at issue

A method comprising:

receiving by an inspector a Downloadable;

generating by the inspector a first Downloadable security profile that identifies

suspicious code in the received Downloadable; and

linking by the inspector the first Downloadable security profile to the

Downloadable before a web server makes the Downloadable available to web clients.

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Finjan v. Blue Coat Sys. – CAFC Analysis General Reasoning: “[the claims] are directed to a ‘behavior-based’ approach to virus scanning and

not to traditional ‘code-matching’ systems.” The method of claim 1 “employs a new kind of file that enables a computer

security system to do things it could not before.” “The asserted claims were therefore directed to a non-abstract improvement in

computer functionality rather than the abstract idea of computer security writlarge.”

“Here the claims recite more than a mere result. Instead they recite specific steps. . . that accomplish the desired result.”

The CAFC determined that the ‘844 claims met the standard for patenteligibility under step one of Alice, and therefore, the CAFC did notanalyze the ‘844 claims under step two of Alice.

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Finjan v. Blue Coat Sys. – CAFC Holding

“The claims recite more than a mere result. Instead theyrecite specific steps . . . that accomplish the desiredresult.”

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Finjan v. Blue Coat Sys. – Takeaways

Similarly to previous cases, it is prudent to draft claims to recitespecific steps or limitations specific to a solution to a problem, oran improvement thereupon and not merely the results

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Core Wireless v. LG Electronics (CAFC, Jan. 2018)

Patents claimed an improved display interface, particularly for electronic devices with small screens like mobile phones.


Claims were directed to an improvement in the functioning ofcomputers

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Core Wireless v. LG Electronics– Claim at issue

A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an un-launched state.

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Core Wireless v. LG Electronics– CAFC Analysis General Reasoning: The “limitations disclose a specific manner of displaying a limited set of

information to the user, rather than using conventional user interface methods todisplay a generic index on a computer.”

Rather than merely reciting indices, the patents claimed a concrete solution to aproblem specific to computers, which was lack of screen size and resultingnavigational difficulties.

The court analogized these patents to others that offered seemingly abstractsolutions to novel issues created by computers that the Court had previously heldto be patent eligible.

The CAFC determined that the ‘476 and ‘020 claims met the standardfor patent eligibility under step one of Alice, and therefore, the CAFCdid not analyze the ‘844 claims under step two of Alice.

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Core Wireless v. LG Electronics– CAFC Holding

“This language clearly indicates that the claims aredirected to an improvement in the functioning ofcomputers, particularly those with small screens.”

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Exergen v. Kaz (CAFC, Mar. 2018)

Patents claimed a body temperature detector that calculates a person’s core temperature by detecting the temperature of the forehead directly above the superficial temporal artery.

Claims were directed to a natural phenomena

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Exergen v. Kaz – Claim at issue

48. A body temperature detector comprising:a radiation detector; and electronics that measure radiation from at least three readings per

second of the radiation detector as a target skin surface over an artery is viewed, the artery having a relatively constant blood flow, and that process the measured radiation to provide a body temperature approximation, distinct from skin surface temperature, based on detected radiation.

49. The body temperature detector of claim 48 wherein the artery is a temporal artery.

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Exergen v. Kaz – CAFC Analysis General Reasoning: “[T]he step two dispute in this case turns entirely on whether the combination of

elements was well-understood, routine, and conventional at the time ofinvention.”

The district court reasoned that “while the asserted claims are based in naturalphenomena,” the claims recite additional steps which, like the claims in Diamondv. Diehr, 450 U.S. 175 (1981), “transformed the underlying natural laws intoinventive methods and useful devices that noninvasively and accurately detecthuman body temperature.”

“The district court’s conclusion that these claim elements were not well-understood, routine, and conventional is a question of fact to which we must giveclear error deference.”

“while the §101 inquiry is ultimately a legal question, sometimes the inquiry maycontain underlying factual issues.”

“Something is not well-understood, routine, and conventional merely because it isdisclosed in a prior art reference. There are many obscure references thatnonetheless qualify as prior art.”

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Exergen v. Kaz – CAFC Holding

“Even if the concept of such measurement is directed to a natural phenomenon and isabstract at step one, the measurement method here was not conventional, routine, andwell-understood. Following years and millions of dollars of testing and development, theinventor determined for the first time the coefficient representing the relationshipbetween temporal-arterial temperature and core body temperature and incorporated thatdiscovery into an unconventional method of temperature measurement. As a result, themethod is patent eligible, similar to the method of curing rubber held eligible in Diehr. Inother words, at the second step of Mayo/Alice, the patent incorporated an inventiveconcept. The same is true here.”

“The inventor ‘transformed the process into an inventive application of the formula.’”

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Federal Circuit Precedent: Overall Practical Considerations

Include as much detail in the specification describing a computer-basedproblem or an existing computer based system which is being improved upon

Develop a theme that suggests the invention would not have been obvious The Court has difficulty separating issues of obviousness and patent eligibility of subject matter If the Court sees claims which it believes are novel and nonobvious, it will be more likely to find a way for

the claims to describe patent eligible subject matter

Tie the theme and problem to the independent claims Independent claims should remain broad However, language that does not restrict the claims may be used to remind the Examiner why the

invention is important and not merely the performance of a known process using existing elements

Add detail to dependent claims More specific details can shift unpatentable subject matter into patent eligible subject matter Subject matter from dependent claims can be incorporated into independent claims Allows patentee to start broad and then narrow independent claims as needed for allowance

Don’t give up! Computer-related claims (including GUIs) are absolutely patent eligible if the claims and application are

properly drafted Recent cases should make it easier to acquire computer-related claims Examiners may not be up on their case law, but they often can be convinced of patent eligibility

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Advice and Application

General Advice Establish a pace for incremental patenting process

Inventions may include a number of features, so of which may be novel or patentable – claimingthem separate be provide more protection for the invention

However, if each application describes

Don’t fear the 101 rejection 101 rejections are not rare They are not a death sentence for a claim Claims should be written broadly to start – applicants should not give up claim scope out of fear of a

101 rejection

Don’t underestimate 101 rejections 101 rejections can be complex The may require complex legal and/or technological arguments 101 rejections shouldn’t be thought of as an afterthought – each step in the patenting process

should be taken with consideration of 101 rejections

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References

Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013) BASCOM Global Internet Servs. v. AT&T Mobility LLC., 827 F.3d 1341 (Fed. Cir. 2016) Bilski v. Kappos, 561 U.S. 593 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) Diamond v. Diehr, 450 U.S. 175 (1981) Digitech Image Techs., LLC v Electronics for Imaging, Inc., 758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed.

Cir. 2014) Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) Gottschalk v. Benson, 409 U.S. 63 (1972) Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016) Parker v. Flook, 437 U.S. 584 (1978) Planet Bingo, LLC v VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014) TLI Communcations LLC v. AV Autotomotive, L.L.C., 2016 U.S. App. LEXIS 8970 (May 17, 2016) Trading Technologies Int’l., Inc. v. CQG, Inc., 2016-1616 (Fed. Cir. Jan 18, 2017) Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, — F. App’x —, 2015 WL 9461707 (Fed.

Cir. 2015), cert. denied (May 31, 2016) Visual Memory LLC v. NVIDIA Corp., No. 2016-2254, 2017 U.S. App. LEXIS 15187 (Fed. Cir. Aug. 15,

2017)

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