demonstrating patent eligibility post- alice corp....
TRANSCRIPT
Demonstrating Patent Eligibility
Post- Alice Corp. Decision Navigating the Nuances and Leveraging Guidance From Federal Circuit and PTAB Opinions
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MONDAY, DECEMBER 8, 2014
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Michael L. Kiklis, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.
Stephen G. Kunin, Partner, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.
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PRESENTATION December 8, 2014
Steve Kunin
Michael L. Kiklis
[email protected] Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
THE SUPREME COURT’S HISTORICAL
TREATMENT OF PATENT LAW
6 From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
THE SUPREME COURT’S HISTORICAL
TREATMENT OF PATENT LAW
7 From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
Patentable Subject Matter
PATENTABLE SUBJECT MATTER
9 From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
PATENTABLE SUBJECT MATTER
10 From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
PATENTABLE SUBJECT MATTER
35 U.S.C. § 101:
• Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. § 100(b):
• The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
Judicially created exceptions:
• “laws of nature, natural phenomena, and abstract ideas.” Diehr (S. Ct. 1981)
11 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
PATENTABLE SUBJECT MATTER
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.”
12 From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
PATENTABLE SUBJECT MATTER
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.”
13 From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
PATENTABLE SUBJECT MATTER
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.”
14 From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
PATENTABLE SUBJECT MATTER
Recently active area of law
• Alice v. CLS
• Association for Molecular Pathology v. Myriad
• Mayo Collaborative Services v. Prometheus Labs. Inc.
• Bilski v. Kappos
Lessons from Myriad and Mayo
• Proactive Court
• Little deference to the U.S. Government’s position or USPTO’s
practice
• Demonstrates a trend that § 101 should be construed narrowly
From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved. 15
PATENTABLE SUBJECT MATTER
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)
16 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
GOTTSCHALK V. BENSON (S. CT. 1972)
Binary Coded Decimals (BCD) to pure binary conversion
process
Abstract:
• “Here the ‘process’ claim is so abstract and sweeping as to
cover both known and unknown uses of the BCD to pure
binary conversion.”
The practical effect of patenting the claimed BCD to binary
conversion system would be to patent an idea
Congress should decide whether computer programs are
patentable
17 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
PARKER V. FLOOK (S. CT. 1978)
Method of updating alarm limits
The only difference between conventional methods and that
described in the patent application was the inclusion of a
mathematical formula
Point-of-novelty test:
• “Respondent’s process is unpatentable under § 101, not
because it contains a mathematical algorithm as one
component, but because once that algorithm is assumed to
be within the prior art, the application, considered as a
whole, contains no patentable invention.”
18 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
DIAMOND V. DIEHR (S. CT. 1981)
Process for molding rubber • “We view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula. We recognize, of course, that when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract.”
Review claim as a whole, no dissection: • “[W]hen a claim containing a mathematical formula implements or applies that
formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.”
Reject point-of-novelty test: • “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of
no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”
19 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
BILSKI V. KAPPOS (S. CT. 2010)
The Machine-or-Transformation Test: • “a claimed process is patent eligible if: (1) it is tied to a particular machine or
apparatus, or (2) it transforms a particular article into a different state or thing.”
M-O-T is not the sole test for determining patent eligibility, instead it is
"a useful and important clue, an investigative tool.”
Abstract Idea Analysis:
• Preemption: “The concept of hedging . . . is an unpatentable abstract idea . . . .
Allowing [Bilski] to patent risk hedging would preempt use of this approach in all
fields, and would effectively grant a monopoly over an abstract idea.”
• Limiting an abstract idea to one field of use or adding token post-solution components
is not enough
Back to the Wild West: • “And nothing in today’s opinion should be read as endorsing interpretations of §101
that the [Fed. Cir.] has used in the past.”
20 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
MAYO COLLABORATIVE SERVICES V. PROMETHEUS LABS, INC. (S. CT. 2012)
Appeal following post-Bilski GVR
Claims directed to a drug administration process
“to transform an unpatentable law of nature into a patent-eligible application of such law, one must do more than simply state the law of nature while adding the words ‘apply it.’”
Patents should not be upheld where the claim too broadly preempts the use of the natural law
Court dissected the claim elements: • “To put the matter more succinctly, the claims inform a
relevant audience about certain laws of nature; any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community”
21 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
MAYO COLLABORATIVE SERVICES V. PROMETHEUS LABS, INC. (CONT’D)
“Other cases offer further support for the view that simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.”
Point-of-novelty test? • “We recognize that, in evaluating the significance of additional steps,
the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry might sometimes overlap. But that need not always be so.”
The M-O-T test does not trump the law of nature exclusion
The proper role of §101: • The Court rejected the Government’s argument that virtually any step
beyond the law of nature should render the claim patent-eligible under §101, because §§102, 103, and 112 are sufficient to perform the screening function
22 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
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?
23 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
CLS BANK V. ALICE CORP. (FED. CIR. 2013, EN BANC) (CONT’D)
Fed. Cir. issued one-paragraph per curiam opinion
• Majority found method and computer-readable
medium claims patent ineligible
• Even split on the patent eligibility of system
claims
• Result: patent-ineligibility affirmance of lower
court’s decision
• No rationale was provided
24 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
CLS BANK V. ALICE CORP. (FED. CIR. 2013, EN BANC) (CONT’D)
Five non-precedential opinions were issued that provide insight into thinking of majority of Judges
Agreement between Judges (Lourie and Rader opinions):
• Mayo decision does not resurrect the point-of-novelty test
• Broad claims do not necessarily fail the §101 inquiry
• District Court §101 challenges must overcome clear-and-convincing evidentiary standard
• Proper §101 inquiry under Mayo involves determination of whether claim includes meaningful limitations beyond an abstract idea instead of novelty assessment
No agreement on what makes a limitation meaningful
25 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
ALICE V. CLS
(S. CT. 2014)
Issue: • Patentable subject matter for computer-
related inventions under 35 U.S.C. § 101.
Decided: June 19. Unanimous decision.
Invention: Mitigating settlement risk
High level points: • Court dissected claims and considered them
as an ordered whole
• System and C-R medium claims fell with method claims
• Point-of-novelty test?
26 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
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.
27 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
ALICE V. CLS
(CONT’D)
Used Mayo framework:
1. Determine whether claims are directed to a law of nature, natural phenomena, or abstract idea;
2. If so, then ask “What else is there in the claims before us?” Consider elements of claim individually and as an
ordered combination to determine if the additional elements “transform the . . . claim into patent-eligible” subject matter.
This is a “search for an ‘inventive concept’ . . . An element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon” the abstract idea.
28
Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
ALICE V. CLS
(CONT’D)
Step one: • The Court refers to two books and states:
The claims are drawn to the “abstract idea” of intermediated settlement, which is a fundamental concept
It “is a building block of the modern economy”
• Compared to Bilski: Like Bilski’s hedging, intermediated settlement is an
abstract idea.
“In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here.”
• No clear guidance
29 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
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?
30 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
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.”
31 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
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?
32 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
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.”
33 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
ALICE V. CLS - CONCLUSIONS
Clarity?
Will the Fed. Cir. resist the point-of-novelty test and continue with its “meaningful limitations” test?
Will the PTO do the same?
34 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
BUYSAFE, INC. V. GOOGLE, INC.
(FED. CIR. SEPT. 3, 2014)
Holding:
• Claims invalid under § 101
Rationale:
• Abstract Idea?
“The claims are squarely about creating a contractual
relationship—a ‘transaction performance guaranty’—that
is beyond question of ancient lineage.”
“The claims thus are directed to an abstract idea.”
• Inventive Concept?
“The claims' invocation of computers adds no inventive
concept.”
35 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
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.”
• Inventive Concept?
“[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.”’”
36 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
I/P ENGINE, INC. V. AOL INC.
(FED. CIR. AUG. 15, 2014)
Holding: • Claims invalid under § 101
Rationale: • Abstract Idea?
“The asserted claims simply describe the well-known and widely-applied concept that it is often helpful to have both content-based and collaborative information about a specific area of interest.”
• 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.’”
37 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
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.
38 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
DISTRICT COURT CASES
District Case Name Outcome Procedural
Context
S.D.N.Y. DietGoal Innovations LLC v. Bravo Media LLC (Div. of NBC
Universal Media, LLC)
Claims invalid under § 101 Summary Judgment
D. Del. Helios Software, LLC v. Spectorsoft Corp. Claims valid under § 101 Summary Judgment
D. Del. Genetic Techs. Ltd. v. Lab. Corp. of Am. Holdings Claims invalid under § 101 Motion to Dismiss
(Magistrate Judge
Opinion only)
D. Del. Tuxis Techs., LLC v. Amazon.com, Inc. Claims invalid under § 101 Motion to Dismiss
D. Del. Walker Digital, LLC v. Google, Inc. Claims invalid under § 101 Summary Judgment
D.N.J. Data Distrib. Techs., LLC v. Brer Affiliates, Inc. Denied Motion to Dismiss
D. Del. Comcast IP Holdings I, LLC v. Sprint Communs. Co. L.P. Claims invalid under § 101 Summary Judgment
E.D. Tex. Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc. Claims invalid under § 101 Motion to Dismiss
39 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
DISTRICT COURT CASES
District Case Name Outcome Procedural
Context
E.D. Mich. Autoform Eng'g GMBH v. Eng’g Tech. Assocs. Denied Summary Judgment
N.D. Ill. Card Verification Solutions, LLC v. Citigroup Inc. Denied Motion to Dismiss
N.D. Cal. Cogent Med., Inc. v. Elsevier Inc. Claims invalid under § 101 Motion to Dismiss
C.D. Cal. McRO, Inc. v. Namco Bandai Games Am., Inc. (consolidated
case combining 20 cases) and McRo, Inc. v. Valve Corp.
(consolidated case combining 3 cases)
Claims invalid under § 101 Motion to Dismiss
N.D. Cal. Open Text S.A. v. Alfresco Software Ltd. Claims invalid under § 101 Motion to Dismiss
C.D. Cal. Eclipse IP LLC v. McKinley Equip. Corp. Claims invalid under § 101 Motion to Dismiss
C.D. Cal. CMG Fin. Servs. v. Pac. Trust Bank, F.S.B. Claims invalid under § 101 Summary Judgment
M.D. Fla. Every Penny Counts, Inc. v. Wells Fargo Bank, N.A. Claims invalid under § 101 Summary Judgment
40 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
MAKING A § 101 CASE AT THE PTAB PTAB CASES
PTAB Approach – SAP America, Inc. v. Versata
Development Group, Inc. (CBM2012-00001)
• Claim 17 – a method of determining a price
• Claim 27 – a computer-implemented method of determining a
price
• Claims 26 and 28 – computer-readable storage media claims
implementing the methods of Claims 17 and 27
• Claim 29 – “apparatus” for determining a price including
computer program instructions capable of performing the same
method steps recited in Claim 27
• PTAB analyzed all claims together
41 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
MAKING A § 101 CASE AT THE PTAB PTAB CASES
PTAB Approach – SAP America, Inc. v. Versata
Development Group, Inc. (CBM2012-00001)
• “The key question is, therefore, whether the claims do
significantly more than simply describe the law of nature or
abstract idea.”
• The abstract idea: “determining a price using organizational and
product group hierarchies, which are akin to management
organizational charts.”
• Having found an abstract idea, “we must further analyze
Versata’s claims to determine whether they incorporate
sufficient meaningful limitations. . . .”
42 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
MAKING A § 101 CASE AT THE PTAB PTAB CASES
PTAB Approach – SAP America, Inc. v. Versata
Development Group, Inc. (CBM2012-00001)
• Mental steps test: “while the challenged claims are drafted to
include computer hardware limitations, the underlying process . .
. could also be performed via pen and paper.”
• General purpose computer: “The claimed invention . . . requires
only routine computer hardware and programming.”
• Additional meaningful limitations: “the additionally claimed steps
. . . are well-known, routine, and conventional steps.”
43 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
MAKING A § 101 CASE AT THE PTAB PTAB CASES
PTAB Approach – CRS Adv. Tech., Inc. v. Frontline
Tech. Inc. (CBM2012-00005) • Holding – All challenged claims (method and system) are
unpatentable under § 101
• “[T]he terms ‘one or more computers,’ ‘website,’ and
‘communication link’ at issue in this case do not impose
meaningful limits on the challenged claims’ scope.”
• Compared technology limitations to those of: SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013)
Dealertrack, Inc. v. Huber, 674 F.3d 1315, (Fed. Cir. 2012)
Bancorp Servs. v. Sun Life Assurance Co., 687 F.3d 1266 (Fed. Cir. 2012)
Accenture Global v. Guidewire Software, 728 F.3d 1336 (Fed. Cir. 2013)
• Note: PTAB did not discuss/use CLS Bank decision
44 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
MAKING A § 101 CASE AT THE PTAB PTAB CASES
PTAB Approach – Interthinx, Inc. v. CoreLogic
Solutions, LLC (CBM2012-00007) • Found all claims (method claims) unpatentable:
Patent Owner: Under M-O-T, “the computer plays a necessary and vital role to
the development and storage of the predictive and error models.” o PTAB: “Although the preamble recites a computer implemented process, none of
the claim elements, with the possible exception of the ‘storing’ limitations,
specifically recites a relationship to the computer.”
Patent Owner: “[T]he claims pass the Federal Circuit’s ‘mental process test’
because they … cannot be performed entirely manually or in the human mind.” o PTAB: “However, the claims …do not tie necessarily these steps to a computer
or a particular application.”
Patent Owner: “[T]he claims satisfy the “abstract idea” test for patentable subject
matter because, rather than being tied preemptively to a field of use, they are
narrowly tied to a specific application” o PTAB: “A claim is not patent eligible if, instead of claiming an application of an
abstract idea, the claim instead is drawn to the abstract idea itself.”
45 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
MAKING A § 101 CASE AT THE PTAB PTAB CASES
PTAB Approach – U.S. Bancorp v. Retirement Capital
Access Management Co. (CBM2013-00014) • Found all claims (method and system) unpatentable
• First case after CLS
• Abstract idea – (not disputed) advancing funds based on future retirement
payments, which is “an economic practice long prevalent”
• Preamble reciting “computerized method” ignored (relying upon Digitech)
• Used mental steps test
• Method required only a generic computer
• Noted that “preemption is only one test” to use
• System claims requiring only “use of a computer in a generalized fashion”
does not meaningfully limit the claims
46 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
MAKING A § 101 CASE AT THE PTAB PTAB CASES
PTAB Approach – SAP America Inc. v. Lakshmi
Arunachalam. (CBM2013-00013) • Found claims at issue unpatentable
• Abstract idea – “claim 1 recites an abstract method, i.e., performing a real-
time Web transaction by displaying and providing at least one application a
user selects to access checking and savings accounts, and transferring
funds (i.e., debiting or crediting) in response to user signals from an input
device.”
• “The remaining limitations in claim 1 do not contribute any patent–eligible
subject matter. The service network atop the Web … is an abstract concept
under which customers and service providers communicate over a network
so that the service provider can service the customer…. This does not
impose a meaningful limitation on the scope of the claim.”
47 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
MAKING A § 101 CASE AT THE PTAB PTAB CASES
PTAB Approach – Salesforce.com, Inc. v.
Virtualagility, Inc. (CBM2013-00024) • Found claims at issue unpatentable
• Abstract idea – “we find that the challenged claims are directed to an
abstract idea, the creation and use of models to aid in processing
management information by organizing and making the information readily
accessible by the collaborators of the project”
• “The model, as described by the specification, is a disembodied concept
that is not tied to a specific algorithm or specialized computer.”
• “[T]he claims do not recite a specialized algorithm that could move the
claims from the abstract to the concrete.”
• “[W]ith respect to the processor, we note that at least operations (ii) through
(vi) actually are carried out by the user, albeit, via the processor.”
• “[S]imply executing an abstract concept on a computer does not render a
computer ‘specialized,’ nor does it transform a patent-ineligible claim into a
patent-eligible one.”
48 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
ALICE V. CLS – LITIGATION TIPS
Defendants: • SJ motion for 101, or renewed motion
• Argue the law of 101 has dramatically changed such that business methods are no longer effectively patent-eligible and neither are software inventions using nothing but generic computer hardware
Plaintiffs: • Argue that the law did not change – the Supreme
Court supported the Fed Cir’s meaningful limitations test
• Rely on the clear-and-convincing standard
• Rely on factual underpinnings via Ultramercial
49 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
ALICE V. CLS – PTAB TIPS
Build a sufficient factual record to support your argument
Build a sufficient legal record to support the changing landscape
• Machine-or-transformation test
• Generic computer hardware/special computer test
• Abstract idea analysis
• Mental steps test
• Point-of-novelty test
• Case-specific factual comparisons
Know the Supreme Court section 101 cases
Frame the issue
Tips for Petitioner
Tips for Patent Owner
50 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
JUNE 25, 2014 PRELIMINARY
EXAMINATION INSTRUCTIONS
51
Methodology following the Supreme Court
decision in Alice Corp.
Examples of abstract ideas
Safe Harbors
What does not pass muster as adding
significantly more
Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
EXAMINERS FAIL TO FOLLOW THE GUIDELINES
BY MAKING BOILER PLATE SECTION 101
REJECTIONS
Broad characterization of the abstract
idea, natural law or physical phenomenon
Treating software as an abstract idea even
when embodied as executable code in the
claims
Treating claim limitations as old and
conventional without citing prior art to
support the findings
52 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
PTO ADMINISTRATIVE ACTIONS
Withdrawing applications from issue to
reopen prosecution
PTAB remanding of appealed case
PTAB deciding appeals and
recommending further examination for
Section 101 compliance − Ex parte Abraham; ex parte Martin; ex parte
Bomma; ex parte Dean; ex parte Darin;
ex parte Baardse
Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP 53
REJECTIONS UNDER SECTION 101 OF
COMPUTER RELATED APPLICATIONS
54
Claim 1: An automatic analyzer comprising:
a reaction disc configured to hold a plurality of cuvettes, each
of the cuvettes containing a sample and a reagent;
a cleaning mechanism configured to clean the plurality of
cuvettes using a plurality of nozzles;
a setting unit configured to set role in cleaning of a target
cuvette to each of the plurality of nozzles for sequentially cleaning the
target cuvette used in measurement of a plurality of measurement
items, for each of the plurality of measurement items of the sample; and
a controller configured to control the cleaning mechanism to
clean the target cuvette according to the set role in cleaning.
Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
REJECTIONS UNDER SECTION 101 OF
COMPUTER RELATED APPLICATIONS
55
Con’t
Claims 1-3, 5 and 6 are rejected under 35 U.S.C. 101
because the claimed invention is directed to non-
statutory subject matter.
− the instant apparatus claims recite a controller, which
can be construed as software (i.e., a set of
instructions/algorithm capable of being executed by a
computer), which is not statutory subject matter.
Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
RESPONDING TO § 101 REJECTIONS
56 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
EX PARTE PTAB DECISION
Many decided on In re Nuijten rationale
− Ex parte Handekyn; ex parte Raghunath; ex parte Hopkins; ex parte
Crockett; ex parte Desai; ex parte Guo;
New grounds of rejection using Alice test
− Ex parte Blankenship; ex parte Cruz-Hernandez; ex parte Kahl;
ex parte Ould-Brahim; ex parte Jung; ex parte Hyde; ex parte Cote
Very few decisions reversing the examiners’ section 101 rejections
− Ex parte Facett; ex parte Futrell; ex parte Short
57 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
IMPLICATIONS
A major problem could exist for pending applications that lack sufficient disclosure regarding the details of advances to technology provided by an invention.
Need to adopt claim-drafting techniques that target a lower level of abstraction, including incorporating implementation details into claims that illustrate an improvement of the functioning of a computer, technology, or technical field provided by an invention.
58 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
PRACTICAL TIPS FOR DRAFTING
SPECIFICATIONS
Explain the technical implementation in detail
− Stress improvements in functioning of computer
Emphasize technical solution to a technical problem being solved and novel technical effects
Avoid generic computer description
− Emphasize specialized technical features
Use technical terminology to distance invention from pure business method
− E.g., “advertisement” -> “multimedia content file”
59 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
PRACTICAL TIPS FOR DRAFTING
CLAIMS
Draft method and system claims differently – System claims should not merely be written as means plus function claims that mirror the method claims
Draft and prosecute narrow claims first
Focus on specialized technical features of invention
Prosecute system claims first
Avoid claim limitations that read on mental steps
Per In re Alappat, claims should emphasize how the general purpose computer is configured into a specific purpose computer
60 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
COMPARISON OF U.S. AND EUROPEAN SOFTWARE
PATENTABILITY
61 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
35 U.S.C. §101 (Prometheus, Alice) EPC Article 52
Is claim directed to excluded
category?
Do elements, separately or
together, transform the nature
of the claim?
− Cannot be merely a
generic computer or
general application of
abstract idea or law of
nature
52.2: Excluded categories
53.3: Exclusion only applicable
to 52.2 categories “as such”
− Practically, reciting
“computer” or “email” may
be sufficient
CONCLUSION
Take advantage of safe harbors
− Improvements to another technology or technical fields
− Improvements to the functioning of the computer
Emphasis that claimed invention provides technical solutions to
technical problems
Emphasize the novel and non-obvious limitations that are not
conventional and are subject to the MOT test.
Point out why the new combination of old elements achieves a novel
and non-obvious result (i.e., an inventive contribution
62 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP
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
63 Copyright © 2014 Oblon, Spivak, McClelland, Maier & Neustadt, LLP