Drafting Software Patents to Survive Section 101 and AIA Challenges Anticipating and Minimizing the Risk of 101, 103 Rejections, Recent Court Guidance Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 1. THURSDAY, APRIL 16, 2020 Presenting a live 90-minute webinar with interactive Q&A Michael L. Kiklis, Member, Bass Berry & Sims, Washington, D.C. Stephen G. Kunin, Partner, Maier & Maier, Alexandria, Va.
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Drafting Software Patents to Survive Section 101
and AIA ChallengesAnticipating and Minimizing the Risk of 101, 103 Rejections, Recent Court Guidance
▪ Patents have a presumption of validity in § 101 challenges
(Cellspin)
11
Supreme Court Cases
12
▪ The patent claimed “converting binary-coded decimal
(BCD) numerals to pure binary numerals.”
• “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 formula … would be
to patent an idea and “would wholly pre-empt the
mathematical formula.”
▪ “Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and
technological work.”
13
GOTTSCHALK V. BENSON (S. CT. 1972)
▪ ‘(w)hile a scientific truth, or the mathematical expression
of it, is not patentable invention, a novel and useful
structure created with the aid of knowledge of scientific
truth may be.’ That statement followed the longstanding
rule that ‘(a)n idea of itself is not patentable.’
▪ “If these programs are to be patentable…action by the
Congress is needed.”
14
GOTTSCHALK V. BENSON (S. CT. 1972)(cont’d)
▪ “[The application] describes a method of updating alarm
limits.”
▪ “[T]he method consists of three steps: an initial step
which merely measures the present value of the process
variable (e.g., the temperature); an intermediate step
which uses an algorithm to calculate an updated alarm-
limit value; and a final step in which the actual alarm limit
is adjusted to the updated value. The only difference
between the conventional methods of changing alarm
limits and that described in respondent’s application
rests in the second step—the mathematical algorithm or
formula.”
15
PARKER V. FLOOK (S. CT. 1978)
▪ 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.”
16
PARKER V. FLOOK (S. CT. 1978)(cont’d)
▪ “Process for molding raw, uncured synthetic rubber into cured precision products.”
• “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.”
▪ Consider claim as a whole, inappropriate to dissect: • “[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.”
17
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.”
• Not the sole test for determining “a patent eligible ‘process,’” but is "a useful
and important clue, an investigative tool.”
▪ Abstract Idea Analysis:• “The concept of hedging . . . is an unpatentable abstract idea . . . . Allowing
[Bilski] to patent risk hedging would pre-empt use of this approach in all fields,
and would effectively grant a monopoly over an abstract idea.”
• “[L]imiting an abstract idea to one field of use or adding token post-solution
components” does not make claims eligible.
▪ “And nothing in today’s opinion should be read as
endorsing interpretations of §101 that the [Fed. Cir.] has
used in the past.”
18
BILSKI V. KAPPOS (S. CT. 2010)
▪ Claims to calibrating drug dosage
▪ “[T]o 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 “that claim processes that too broadly preempt the use of the natural law”
▪ Dissecting the claim elements, the Court said:
• “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”
19
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 supersede judicial exception for natural
laws
▪ Section 101’s role:
• Court rejected Government’s argument that §§102, 103, and 112 can
perform this “screening function” and “virtually any step beyond a …
law of nature itself should … satisfy § 101”
20
MAYO COLLABORATIVE SERVICES V.
PROMETHEUS LABS, INC. (cont’d)
ALICE V. CLS
(S. CT. 2014)
▪ Claims to computer-implemented process for mitigating settlement risk
▪ Courts “must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more.”
21
ALICE V. CLS
(cont’d)
▪ Under the Mayo test:• Step one: Court determined the claims were drawn to the “abstract
idea” that is a “fundamental economic practice”
• Considered Bilski:
❑ “Like the risk hedging in Bilski… intermediated settlement is a
fundamental economic practice” and 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.”
22
ALICE V. CLS
(cont’d)
▪ Under the Mayo test (cont'd):• Step two:
❑ Courts to “consider the elements of each claim both individually
and as an ordered combination to determine whether the
additional elements “transform the . . . claim into a patent-eligible
application”,
❑ This is a “search for an inventive concept”, i.e., the combined
elements amount to “significantly more than a patent upon the
ineligible concept itself” and were not “purely conventional.”
❑ “[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.”
❑ “These cases demonstrate that the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.”
23
ALICE V. CLS
(cont’d)
▪ Under the Mayo test (cont'd):• Step two (cont’d):
❑ Safe Harbors! The claims did not
(1) “improve the functioning of the computer itself” or
(2) “effect an improvement in any other technology or
technical field.
• System and media claims
❑ “Because petitioner’s system and media claims add nothing of
substance to the underlying abstract idea, we hold that they too
are patent ineligible under § 101.”
❑ The method claims recite the abstract idea implemented on a
generic computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
24
Federal Circuit Cases
Finding Patents Eligible
25
DDR HOLDINGS, LLC V. HOTELS.COM, L.P.
(FED. CIR. DEC. 5, 2014)
▪ Outcome: claims valid under Alice step two.
▪ Procedure: district court denied motion for JMOL of invalidity under § 101
▪ Step one:• “[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.”
• Assumed claims recited an abstract idea
▪ 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.”
26
ENFISH, LLC V. MICROSOFT CORP.
(FED. CIR. MAY 12, 2016)
▪ Outcome: claims found eligible under Alice step one.
▪ Procedure: district court granted summary judgment, finding the claims patent eligible
▪ Step one:• “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.”
27
ENFISH, LLC V. MICROSOFT CORP.
(cont’d)
▪ Step one of the Alice test:• “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.”
28
BASCOM GLOBAL INTERNET SERVS. V.
AT&T MOBILITY LLC
(FED. CIR. JUNE 27, 2016)▪ Outcome: claims eligible under Alice step two
▪ Procedure: district court dismissed under 12(b)(6)
▪ Step one:• “[T]he claims of the ’606 patent are directed to the abstract idea of
filtering content. . . .”
▪ Step two:• “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).”
29
MCRO, INC. V. BANDAI NAMCO GAMES AMERICA
(FED. CIR. SEPTEMBER 13, 2016)
▪ Outcome: claims valid under Alice step one
▪ Procedure: district court granted judgment on the pleadings, finding the claims ineligible under § 101.
▪ Step one:• “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.”
30
MCRO, INC. V. BANDAI NAMCO GAMES AMERICA
(cont’d)
▪ Step one, cont’d:• “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.”
31
AMDOCS V. OPENET TELECOM
(FED. CIR. NOVEMBER 1, 2016)
▪ Outcome: four patents eligible under Alice step two.
▪ Procedure: district court granted summary judgment that the claims were invalid under § 101.
▪ Step one:• “For argument’s sake we accept the district court’s view of the
disqualifying abstract ideas”
▪ Step two:• “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.”
32
THALES VISIONIX V. UNITED STATES
(FED. CIR. March 8, 2017)
▪ Outcome: claims satisfied Alice step one.
▪ Procedure: CFC granted judgment on the pleadings, finding claims ineligible under § 101.
▪ Step one:• “[T]he '159 patent claims are nearly indistinguishable from those
of Diehr.”
• “[T]he claims are directed to systems and methods that use inertial
sensors in a non-conventional manner to reduce errors in measuring
the relative position and orientation of a moving object on a moving
reference frame.”
• “That a mathematical equation is required…does not doom the claims
to abstraction.”
33
VISUAL MEMORY LLC V. NVIDIA CORP.
(FED. CIR. August 15, 2017)
▪ Outcome: claims eligible under Alice step one.
▪ Procedure: district court dismissed under 12(b)(6)
▪ Step one:• “[T]he key question is whether the focus of the claims is on the specific
asserted improvement in computer capabilities…or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.”
• The claims “are directed to a technological improvement: an enhanced
computer memory system” for “[c]onfiguring the memory system based on
the type of processor connected to the memory system.”
• “The claims…do not simply require a ‘programmable operational
characteristic’” but require “a memory system with a main memory and a
cache memory, where the memory system is configured by a computer to
store a type of data in the cache memory based on the type of processor
connected to the memory system.”
34
FINJAN, INC. V. BLUE COAT SYS. INC.
(FED. CIR. January 10, 2018)
▪ Outcome: claims passed Alice step one.
▪ Procedure: district court granted JMOL
▪ Step one:• “In cases involving software innovations, this inquiry often turns on
whether the claims focus on ‘the specific asserted improvement in
computer capabilities … or, instead, on a process that qualifies as an
‘abstract idea’ for which computers are invoked merely as a tool.”
• “The question, then, is whether this behavior-based virus scan …
constitutes an improvement to computer functionality. We think it
does.”
• The Fed Cir stated that behavior-based virus scanning was an
improvement over prior art code-based approaches and enabled “a
computer security system to do things it could not do before.”
35
CORE WIRELESS LICENSING V. LG ELECTRONICS
(FED. CIR. January 25, 2018)
▪ Outcome: claims passed step one of the Alice test
▪ Procedure: district court denied summary judgment
▪ Step one:• “[T]hese claims recite a specific improvement over prior systems,
resulting in an improved user interface for electronic devices.”
• “The specification confirms that these claims disclose an improved
user interface for electronic devices, particularly those with small
screen.”
• Specific claimed improvements to functionality of computer: “an
application summary that can be reached directly from the menu,” “the
application summary window list a limited set of data, ‘each of the data
… selectable to launch the respective application…,” and “the
summary window ‘ is displayed while the one or more applications are
in an unlaunched state.’”
36
BERKHEIMER V. HP INC.
(FED. CIR. February 8, 2018)
▪ Outcome: the proceeding was remanded for further fact-finding regarding what was routine, conventional, or well-understood.
▪ Procedure: district court granted summary judgment, finding the claims invalid under § 101.
▪ Step one:
• “We hold that claims 1-3 and 9 are directed to the abstract idea of
parsing and comparing data….”
▪ Step two: • “[W]hether a claim recites patent eligible subject matter is a question
of law which may contain underlying facts.”
• “[W]hether a claim element or combination of elements is well-
understood, routine and conventional … is a question of fact. Any fact,
such as this one, that is pertinent to the invalidity conclusion must be
proven by clear and convincing evidence.”
37
BERKHEIMER V. HP INC.
(cont’d)
▪ Step two (cont’d): • “The mere fact that something is disclosed in a piece of prior art, for
example, does not mean it was well-understood, routine, and
conventional.”
• The patent specification disclosed that the claims “recite a specific
method of archiving” that “improve computer functionality.”
• “The improvements in the specification, to the extent they are captured
in the claims, create a factual dispute regarding whether the invention
describes well-understood, routine and conventional activities….”
38
AATRIX SOFTWARE, INC. V. GREEN SHADES
SOFTWARE, INC.
(FED. CIR. February 14, 2018)▪ Outcome: district court decision vacated, denial of
Aatrix's motion to amend complaint was abuse of discretion
▪ Procedure: Rule 12(b)(6) dismissal for ineligibility
▪ Step one/Step two:• “[T]he district court erred to the extent it held that claim 1…is ineligible
… because it … denied leave to amend without claim construction and
in the face of factual allegations.”
• “[P]atent eligibility can be determined at the Rule 12(b)(6) stage … only
when there are no factual allegations, taken as true, prevent resolving
the eligibility question as a matter of law.”
39
AATRIX SOFTWARE, INC. V. GREEN SHADES
SOFTWARE, INC. (cont’d)
▪ Step one/Step two (cont’d):• “The proposed second amended complaint contains allegations
that,…at a minimum raise factual disputes underlying the § 101
analysis…sufficient to survive an Alice/Mayo analysis at the Rule
12(b)(6) stage.”
• The proposed amended complaint alleged the invention “allowed data to
be imported from an end user application without needing to know
proprietary database schemas and without having to custom program
the form files to work with each outside application,” that avoided “the
need for hand typing in the values” and “the risk of transcription error,”
while also improving the efficiency of the computer’s processing of tax
forms.
40
DATA ENGINE TECH. LLC v. GOOGLE
(FED. CIR. Oct. 9, 2018)
▪ Outcome: certain claims passed Alice test.
▪ Procedure: district court granted judgment on the pleadings.
▪ Step one (’259 patent and ’551 patent):• The ’259 patent’s claim 12 method of navigating through three-dimensional electronic
spreadsheets provided a “specific solution to then-existing technological problems in
computers and prior art electronic spreadsheets” by providing a “highly intuitive, user-
friendly interface with familiar notebook tabs for navigating” the spreadsheet
environment.
❑ Therefore, “the claim recites a specific structure (i.e., notebook tabs) within a
particular spreadsheet display that performs a specific function (i.e., navigating
within a three-dimensional spreadsheet).”
❑ “[W]hen read as a whole, in light of the specification, claim 12 is directed to more
than a generic or abstract idea as it claims a particular manner of navigating three-
dimensional spreadsheets, implementing an improvement in electronic
spreadsheet functionality.”
41
DATA ENGINE TECH. LLC v. GOOGLE
(cont’d)
▪ Step one (’259 patent and ’551 patent) (cont'd):• However, “DET concedes that, unlike claim 12 of the ’259 patent, claim
1 of the ’551 patent is ‘directed at something a bit more general’”…that
“generically recites ‘associating each of the cell matrices with a user-
settable page identifier’ and does not recite the specific implementation
of a notebook tab interface” and “covers any means for identifying
electronic spreadsheet pages.”
▪ Step two (’551 patent):• Claim 1 does not satisfy step two because it “merely recites partitioning
cells to be presented as a spreadsheet, referencing in one cell of a page
a formula referencing a second page, and saving the pages such that
they appear as being stored as one file. These limitations merely recite
the method of implementing the abstract idea itself….”
42
DATA ENGINE TECH. LLC v. GOOGLE
(cont’d)
▪ Step one (’146 patent):• “At their core, these claims recite tracking changes in a spreadsheet
by: (1) creating a base version of a spreadsheet, (2) creating a new
version of the spreadsheet, and (3) determining which cells of data have
changed by comparing the new and base versions. The concept of
manually tracking modifications across multiple sheets is an abstract
idea.”
• “Regardless of the field of the technology, the claims at issue here are
sufficiently similar to those in Content Extraction for us to conclude
that the claims of the ’146 patent are also abstract.”
▪ Step two (’146 patent):• The claims recite the generic steps of creating a base version of a
spreadsheet, creating a new version of the spreadsheet, and
determining changes made to the original version.
43
ANCORA TECH., INC. v. HTC AMERICA, INC.
(FED. CIR. Nov. 16, 2018)
▪ Outcome: Claims satisfy Alice step one.
▪ Procedure: district court granted motion to dismiss under § 101.
▪ Step one:• “Improving security—here, against a computer’s unauthorized use of a
program—can be a non-abstract computer-functionality improvement if
done by a specific technique that departs from earlier approaches to
solve a specific computer problem.”
44
ANCORA TECH., INC. v. HTC AMERICA, INC.
(cont’d)
▪ Step one (cont'd):• “The claimed method here specifically identifies how that functionality
improvement is effectuated in an assertedly unexpected way: a structure
containing a license record is stored in a particular, modifiable, non-
volatile portion of the computer’s BIOS, and the structure in that
memory location is used for verification by interacting with the distinct
computer memory that contains the program to be verified. In this way,
the claim addresses a technological problem with computers:
vulnerability of license-authorization software to hacking”, which it
“does so by relying on specific and unique characteristics of certain
aspects of the BIOS that the patent asserts.”
45
Electric Power Group Line
of Cases
46
ELECTRIC POWER GROUP, LLC V. ALSTOM S.A.
(Fed. Cir., Aug. 1, 2016)
▪ Outcome: claims invalid
▪ Procedure: district court granted summary judgment
▪ Step one:• “The focus of the asserted claims, as illustrated by claim 12 quoted
above, 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.”
47
ELECTRIC POWER GROUP, LLC V. ALSTOM S.A.
(cont’d)
▪ Step one (cont’d):• “Accordingly, we have treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.”
• “In a similar vein, we have treated analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more,
as essentially mental processes within the abstract-idea category.”
• “And we have recognized that merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary
part of such collection and analysis.”
48
ELECTRIC POWER GROUP, LLC V. ALSTOM S.A.
(cont’d)
▪ Step one (cont’d):• “Here, the claims are clearly focused on the combination of those
abstract-idea processes. The advance they purport to make is a process
of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive
technology for performing those functions. They are therefore directed to
an abstract idea.”
▪ Step two:• “More particularly, a large portion of the lengthy claims is devoted to
enumerating types of information and information sources available
within the power-grid environment. But merely selecting information, by
content or source, for collection, analysis, and display does nothing
significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.”
49
ELECTRIC POWER GROUP, LLC V. ALSTOM S.A.
(cont’d)
▪ Step two (cont’d):• “[T]he claims’ invocation of computers, networks, and displays does not
transform the claimed subject matter into patent-eligible applications.
The claims at issue do not require any nonconventional computer,
network, or display components, or even a ‘non-conventional and non-
generic arrangement of known, conventional pieces,’ but merely call for
performance of the claimed information collection, analysis, and display
functions ‘on a set of generic computer components’ and display
devices.”
50
CASES FOLLOWING ELECTRIC POWER GROUP
▪ TDE Petroleum Data Solutions Inc. v. AKM Enterprise Inc.• As we recently reiterated in Electric Power Group, LLC v. Alstom
– Examples illustrating application of legal principles
– Indices to assist in locating most pertinent examples and case law precedent
– Training
167
USPTO guidance as of March 2020
• Four main documents:
1. The MPEP sets forth overall analysis for evaluating subject matter eligibility;
2. The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”) revises guidance in MPEP to define abstract ideas and change how examiners evaluate the first part of the Supreme Court’s Alice/Mayo test (called Step 2A in the MPEP);
3. The October 2019 Update: Subject Matter Eligibility (“Update”) clarifies portions of the 2019 PEG and its interaction with the MPEP; and
4. The Berkheimer Memorandum revises guidance in MPEP by clarifying how to evaluate the second part of the Supreme Court’s Alice/Mayo test (called Step 2B in the MPEP).
168
MPEP sets forth overall eligibility analysis
• Explains the two criteria for subject matter eligibility:
– the claimed invention must be to a statutory category (Step 1); and
– the claimed invention must qualify as patent-eligible subject matter (Steps 2A and 2B, aka the Alice/Mayo test).
• Includes flowchart at right, which illustrates the overall analysis.
– Use of generic computer components are ignored unless the claim cannot practically be performed in the mind
maierandmaier.com 175
Update clarifies Prong One for
abstract ideas
• Provides additional clarifications on identifying abstract ideas and the relationship between the groupings and judicial decisions.
– For example, the Update explains that an examiner should determine that a claim recites a “mathematical calculation” when the broadest reasonable interpretation of a claim limitation encompasses a mathematical operation or an act of calculating using mathematical methods to determine a variable or number.
• performing a resampled statistical analysis to generate a resampled distribution -SAP America Inc. v. Investpic, LLC
• converting geospatial coordinates into natural numbers – Burnett v. Panasonic Corp.
• calculating a number representing an alarm limit value using the mathematical formula ‘‘B1=B0 (1.0–F) + PVL(F)” – Parker v. Flook
176
Miscellaneous Abstract Ideas
• Analyzed for integration into a practical application
• Analyzed at Step 2B for the presence of an inventive concept
• Brought to TC Director for approval for rejection if claim is directed solely to miscellaneous abstract idea.
maierandmaier.com 177
Step 1 Analysis for Statutory Categories of Invention
• Claim must fall into a statutory category of invention to be eligible
• If the claim does not such as signal claims in In re Nuijten, the claim is not subject matter eligible
maierandmaier.com 178
Step 2A Analysis
• Evaluate whether there are additional elements in the claim beyond the judicial exception
• Evaluate whether the elements individually are in combination integrate the claim into a practical application
• Examples of practical applications– Enfish: Improvement in the functioning of a computer in self referential data table
– Diehr: Improvement in other technology or technical field (rubber curing process using numerical controller)
– Vanda Pharma: Treatment of a disease or medical condition
– Thales Visionox: Tied to a particular machine or manufacture using sensors to more efficiently track object on moving platform
– Transformation of article to different state or thing
– Data Engine v. Google: Meaningful tie to a particular technology of 3d machines
maierandmaier.com 179
Practical Applications
• Core Wireless: GUI for mobile devices that displays commonly accessed data on main menu
• DDR Holdings: matching website look and feel
• Finjan: virus scan that generates security profile identifying both hostile operations
• McRo: rules for lip sync and facial expression animation
• Trading Tech: GUI that prevents order entry at changed price
• Visual Memory: enhanced computer memory system
• Ancora: computer security
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Step 2A Analysis
• Examples of no integration into practical application
– Apply it (use of generic computer elements)
– Insignificant post-solution activity
– General link to a particular technological environment or use
• Must treat claim as a whole
• New combination of old elements as in BASCOM can provide the practical application
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Step 2B
• Evaluate whether the claim includes inventive concept that is significantly more than excluded subject matter
• Examples include:
– Abele: tomographic scanning
– Amdocs: field enhancement in distributed network
– BASCOM: filtering Internet content
• Berkheimer analysis is now in Step 2B as to routine, conventional old elements
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Update clarifies how to evaluate
“improvements”
• The specification must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as pertaining to an improvement in technology.
– For example, the specification could identify a technical problem and explain how the specification provides a technical solution.
• After the examiner has consulted the specification and determined the disclosed invention pertains to an improvement in technology, the claim must be evaluated to ensure the claim itself reflects the improvement in technology.
– An important consideration is whether the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.
183
Prima facie case
• Update clarifies that a prima facie case of ineligibility requires clear articulation of the reason(s) why the claimed invention is not eligible:
– Identify the judicial exception, and explain why it is an exception;
– Identify additional elements (if any), and explain why they do not integrate the judicial exception into a practical application of the exception; and
– Explain why the additional elements (if any), do not amount to significantly more than the exception.
• Office has provided sample explanations satisfying this burden:
– Advanced Training module slides 78-91 (example 37), slides 132-150 (example 40), and slides 185-198 (example 42)
– Sample rejection for example 37
184
Update Appendix 1: Examples
• Illustrate claims that do not recite a judicial exception (eligible at Step 2A Prong One):
– Example 43 (Treating Kidney Disease)
– Example 44 (Denveric Acid)
– Example 46 (Livestock Management)
• Illustrate claims that are not directed to a recited judicial exception (eligible at Step 2A Prong Two):
– Example 43 (Treating Kidney Disease)
– Example 44 (Denveric Acid)
– Example 45 (Controller for Injection Mold)
– Example 46 (Livestock Management)
• Illustrate significantly more (Step 2B) analysis:
– Example 43 (Treating Kidney Disease)
– Example 44 (Denveric Acid)
– Example 45 (Controller for Injection Mold) *
– Example 46 (Livestock Management)
* Includes claim that is not integrated into a practical application at Prong Two, but is eligible at Step 2B
185
Update Appendix 2: Index of examples
• Index provides an overview of the relevance of Examples 1-46 under the 2019 PEG.
• Index indicates which examples provide a practical application or significantly more analysis, and the considerations that are evaluated in each example.
186
Update Appendix 3: Case law chart
• Chart provides additional information so examiners can look at the patent(s) and claim(s) at issue in the case.
• Chart is updated periodically.
187
Practice Tips
• Specification should be robust explain how the claimed invention is integrated into a practical application
• Claims should include specific limitations (non generic computer elements) as to how the functions or results are accomplished
• Claims should demonstrate– New combination of old elements– New combination of elements that include new elements– Improving operation or performance of computer or computer
elements (programable memory), or through CRM that embodies code means that when execute improves performance
– Improves the user experience by novel rules– Uses technology from one field to improve a different technology
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Practice Tips
• When writing computer program product claims recite elements as computer code plus function rather than as method steps
• Provide specificity to the claims to establish patentability over prior art separate from judicial exceptions
• Avoid pure functional claiming that does not include specifics as to how results are accomplished
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Interplay of USPTO
Guidance and both the
Federal Circuit and PTAB
190
2019 Guidance – Authority and Application
▪ “This guidance does not constitute substantive rulemaking and does not have the force and effect of law. The guidance sets out agency policy with respect to the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. 101 in view of decisions by the Supreme Court and the Federal Circuit.” • “The guidance was developed as a tool for internal USPTO management and does not
create any right or benefit, substantive or procedural, enforceable by any party against the USPTO.”
• “Rejections will continue to be based upon the substantive law, and it is those rejections that are appealable to the Patent Trial and Appeal Board (PTAB) and the courts. All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.”
• “Failure of USPTO personnel to follow the guidance, however, is not, in itself, a proper basis for either an appeal or a petition.”
191
Cleveland Clinic v. True Health (Fed. Cir. Apr. 1, 2019) (nonprecedential)
• “While we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance. And, especially regarding the issue of patent eligibility and the efforts of the courts to determine the distinction between claims directed to natural laws and those directed to patent-eligible applications of those laws, we are mindful of the need for consistent application of our case law.”
• “We have considered Example 29 and the arguments relating to it, but to the extent that Example 29–Claim 1 is analogous to the claims at issue, Ariosa must control. Accordingly, we decline to follow the PTO’s Example 29–Claim 1 and conclude that the district court did not err in its consideration of the PTO’s subject matter eligibility guidance.”
192
Supercell OY v. Gree, Inc.
Case study on amending claims
193
• U.S. Patent 9,669,308 entitled “Non-Transitory Computer Readable Recording Medium, Game
Server, and Control Method” relates to a networked multiplayer battle game wherein the battle
operates either in a first mode or a second mode.
• The specification refers to the first mode as a manual mode and the second mode as an
automatic mode. When a game is played manually, a user must select a series of commands to
fight the battle, which makes operation troublesome. The object of the invention is to make the
user operation in a battle game less troublesome.
• The game computer stores a battle history of past opponents and outcomes. When a player
encounters an enemy, the computer determines whether the enemy is a past opponent. If the
enemy is a past opponent and the player has won against this enemy, the player is offered a
choice to conduct the battle in the first, manual mode or the second, automatic mode. In the
second, automatic mode, the computer plays to at least some extent on behalf of the player,
requiring fewer player operations by the player than in the first, manual, mode, speeding up play
and requiring less detailed graphics. If the player selects the first, manual mode, or the player
has never won against the enemy, the battle is conducted in the first, manual mode.
194
Supercell v. Gree, PRG2018-00039, September 6, 2019
194
1. A non-transitory computer readable recording medium having stored thereon instructions to be
executed on a computer transmitting a battle game to a communication terminal that is connected
to the computer over a network, the instructions causing the computer to perform the steps of:
communicating with the communication terminal over the network;
receiving an input signal from the communication terminal to configure a battle of the battle
game, wherein the input signal comprises at least one user operation of a user of the
communication terminal;
determining an opponent with whom the user is to battle in the battle of the battle game;
when the user has not battled with the determined opponent in the past, automatically
determining a procedure for executing the battle to be a first mode for executing the battle based
on at least one user operation received from the communication terminal;
when the user has battled with the determined opponent in the past, determining, based on
at least one user operation received from the communication terminal, the procedure to be one of
the first mode and a second mode for executing the battle with fewer user operations received from
the communication terminal than in the first mode; and
executing the battle with the determined procedure.
195
Claim 1
195
• PTAB determines claim 1 is NOT patent eligible, and therefore invalid.
• A human could determine the procedure based on whether the opponent was battled before
and/or based on user selection.
• The “determining” clause of each “when” element is arguably something performed on a
computer. But if the claim covers performance by the mind but for the recitation of generic
computer components, it is still in the mental processes category unless the claim cannot
practically be performed in the mind.
• The determining steps are a method of organizing a human activity
• The Federal Circuit, in In re Smith, 815 F.3d 816,818 (Fed. Cir. 2016), concluded that claims
directed to rules for conducting a wagering game are abstract.
• The determining steps of claim 1 recite how to conduct the battle.
198
Step 2A Prong 1 Abstract Idea Analysis
198
• Do the claims as a whole integrate the recited judicial exception into a practical application of the
exception?
• Two step process:
• Identify whether there are any additional elements recited in the claim beyond the judicial
exception; and
• Evaluate those additional elements individually and in combination to determine whether they
integrate the exception into a practical application.
199
Step 2A Prong 2 Practical Application Analysis
199
• Additional elements in claim 1:
A non-transitory computer readable recording medium having stored thereon instructions to be
executed on a computer transmitting a battle game to a communication terminal that is connected
to the computer over a network, the instructions causing the computer to perform the steps of:
communicating with the communication terminal over the network;
receiving an input signal from the communication terminal to configure a battle of the battle
game, wherein the input signal comprises at least one user operation of a user of the
communication terminal;
. . . ; and
executing the battle with the determined procedure.
200
Step 2A Prong 2 Practical Application Analysis
200
• Patent owner tried to argue that the additional elements integrate the recited judicial exception
into a practical application. The specific manner of executing a video game battle results in the
practical application – an improved system for executing the video game battle.
• The specification mentions that the claimed second, automatic mode improves the computer
system by, for example, reducing processing load.
• PTAB disagrees
• Improvement is ancillary to the claimed procedure as recited in the claim: at a high level of
generality without any limitations specific to improvements to computers
• Patent Owner’s expert conceded that second, automatic mode itself does not constitute a
technological improvement
• Patent owner cannot rely on the judicial exception itself as the mechanism for integration of the
judicial exception into a practical application.
• Even when the claimed second mode is considered in conjunction with the recited computer
components, the claim is devoid of details as to how such a “second mode” is implemented.
201
Step 2A Prong 2 Practical Application Analysis
201
• Patent owner argued that like the claims in BASCOM, the recited hardware implements a specific
function that improves the technological field
• PTAB disagrees:
• Patent owner can’t rely of the limitations that are encompassed by the judicial exception for the
inventive concept.
• Analysis under step 2B looks to the additional elements beyond the judicial exception as
providing an inventive concept
• The remaining elements in claim 1 are conventional technology
202
Step 2B Inventive Concept Analysis
202
• Should claim 1 be found unpatentable, the patent owner requested that claim 1 be replaced with
claim 9:
9. A non-transitory computer readable recording medium having stored thereon instructions to be
executed on a computer transmitting a battle game to a communication terminal that is connected
to the computer over a network, the instructions causing the computer to perform the steps of:
communicating with the communication terminal over the network;
receiving an input signal from the communication terminal to configure a battle of the battle
game, wherein the input signal comprises at least one user operation of a user of the
communication terminal;
in response to the user operation, determining an opponent with whom the user is to battle
in the battle of the battle game;
determining whether the user has battled with the determined opponent in the past;
when in response to a determination that the user has not battled with the determined
opponent in the past, automatically determining a procedure for executing the battle to be a first
203
Contingent Motion to Amend
203
mode for executing the battle, the first mode causing the battle to be executed based on at least
one user operation received from the communication terminal;
when in response to a determination that the user has battled with the determined
opponent in the past, determining, based on at least one user operation received from the
communication terminal, the procedure to be one of the first mode and a second mode, execution
of the battle with the second mode:
requiring fewer user operations received from the communication terminal for executing
the battle with fewer user operations received from the communication terminal than in the first
mode;
204
Contingent Motion to Amend – Claim 9 Continued
204
automatically selecting commands of the user during the battle without user input, by (i)
selecting commands having an attack command type to automatically attack enemy characters of
the opponent in order starting with a first one of the enemy characters or (ii) automatically
prioritizing the selection of commands with a long recovery turn, the selection of commands and
attack of enemy characters being conducted without any display of the selection or the attack on
the communication terminal; and
causing the battle to be represented on the communication terminal with a second mode
display screen, the second mode display screen having:
a shorter display time than a first mode display screen; and
a simpler visual rendition than the first mode display screen; and
executing the battle with the determined procedure.
205
Contingent Motion to Amend – Claim 9 Continued
205
• Claim 9 integrates the judicial exception into a practical application
• Patent owner argued that claim 9 reduces the time of conducting the battle and reduces the
processing load on the system because the system (i) has to act on fewer user inputs when
conducting the battle, and (ii) avoids the complex rendering of the manual mode battle screen
when conducting the battle.
• PTAB agrees. Claim 9 explicitly recites BOTH the computer-specific manner in which
reductions in processing load are realized during operation of the second mode, e.g., by
decreasing display time and using simpler visual renditions, as well as the computer-specific
results themselves.
• Shorter display times and simpler visual rendition are not a part of the judicial exception. They
are a part of the operation of the computer system, apart from a mental process or a method
for organizing a human activity. They represent an improvement specific to computer
processing technology.
206
Claim 9 Is Patent Eligible
206
Ex Parte PTAB Appeals of §101 Rejections
Reversal rates continue to climb post issuance of Berkheimer & 2019 PEG
207
In re Thomas (Fed. Cir.)(April 8, 2020)
• Douglass Thomas is a patent attorney and his claimed invention is a “computer-implemented method for notifying users having patents of subsequent publications that reference the patents.” The examiner rejected the claimed invention as ineligible and that decision was upheld by the PTAB (along with finding the claims anticipated/obvious).
• The Federal Circuit has now affirmed the rejections — offering the following 1-paragraph analysis:– “Applying the two-step framework set forth in Alice Corp. v. CLS Bank Int’l,
573 U.S. 208 (2014), the Board found that the claims are directed to the abstract idea of ‘alerting by notification message notice of a new publication indicated as relevant to the notifiee.’ The Board also found that the claims do not contain an inventive concept beyond the abstract idea. We agree with the Board on both points. We therefore adopt the Board’s reasoning in its decision and its decision denying rehearing.”
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Ex Parte PTAB cases
▪ Ex parte Montgomery, No. Appeal 2018-003379 (PTAB Apr. 2, 2020)
(non-precedential)
▪ Case:
• Claims directed to “electronic postage metering systems, and more particularly,
personal computer (PC)-based postage systems” were rejected by the Examiner
under § 101 as an abstract idea.
• “The Examiner consider[ed] this to be an abstract idea, inasmuch as the claimed
concept ‘can be performed mentally (or by a human using a pen and paper) and
[is] similar to concepts identified as abstract ideas by the courts.’”
▪ Outcome - Reversed:
• “Applying the 2019 Revised Guidance, we are persuaded that even if independent
claim 1 recites an abstract idea, as the Examiner determined, the Examiner has
not sufficiently established that the claim fails to either integrate the abstract idea
into a practical application or recite significantly more than an abstract idea.”
209
Ex Parte PTAB cases
▪ Ex parte Montgomery, No. Appeal 2018-003379 (PTAB Apr. 2, 2020)
(non-precedential) (cont’d)
▪ Outcome - Reversed:
• The “additional elements [that] include steps for ‘generating a digital signature,’
‘causing an end-user computer to be enabled to print,’ and ‘using the public key of
the public/private key pair associated with the postage vendor to determine
whether the purported digital signature for the printed postage indicium is valid’”
showed that the idea was integrated into a practical application.
• The Examiner’s analysis also fell short because “other than simply asserting that
the additional elements are generic or conventional, the Examiner's analysis does
not address whether the claimed operations entail an improvement to
cryptographic-based validation of postage indicia” and did not address whether
the claimed functionality offered “an advantage over existing postage verification
systems by inserting ‘at least one unique identifier in the digitally signed portion
of the postage indicium’ that allows the detection of copy fraud and leads to other
security advantages.”
210
Ex Parte PTAB cases
▪ Ex parte Montgomery, No. Appeal 2018-003379 (PTAB Apr. 2, 2020)
(non-precedential) (cont’d)1. A method for facilitating cryptographic-based generation and validation of postage indicia, comprising:
[a] obtaining, at a postage-issuing computer system associated with a postage vendor, a tracking number unique within the United States
Postal Service (USPS), wherein the unique tracking number is allocated to a postage transaction and enables a mail piece associated
with the postage transaction to be tracked within the USPS;
[b] generating, at the postage-issuing computer system, a digital signature based on at least (i) the unique tracking number, (ii) other
information for a unique postage indicium, and (iii) a private key of a public/private key pair associated with the postage vendor such that
digital integrity of both the unique tracking number and the other information for the unique postage indicium is verifiable using (i) the
digital signature and (ii) a public key of the public/private key pair;
[c] generating, at the postage-issuing computer system, data representing the unique postage indicium such that the unique postage
indicium data includes (i) the unique tracking number allocated to the postage transaction, (ii) the other information for the unique
postage indicium, and (iii) the digital signature;
[d] causing, by the postage-issuing computer system, an end-user computer to be enabled to print the unique postage indicium as a first
bar code on a first mail piece and the unique tracking number allocated to the postage transaction as a second bar code on a different
portion of the first mail piece than the first bar code such that the unique tracking number is represented at least twice on the first mail
piece; and
[e] performing, at the postage-issuing computer system, validation of a printed postage indicium carried on a mail piece received at the
USPS, wherein the performance of the validation comprises:
[f] obtaining data representing the printed postage indicium, wherein the printed postage indicium data includes (i) a purported tracking
number, (ii) other information for the printed postage indicium, and (iii) a purported digital signature for the printed postage indicium;
[g] using the public key of the public/private key pair associated with the postage vendor to determine whether the purported digital
signature for the printed postage indicium is valid; and
[h] providing an indication that the printed postage indicium is valid responsive to a determination that the purported digital signature is
valid and that the purported tracking number matches the unique tracking number allocated to the postage transaction.
211
Ex Parte PTAB cases
▪ Ex parte Samuelsson, No. Appeal 2019-001626 (PTAB Apr. 2, 2020)
(non-precedential)
▪ Case:
• Claims directed to encoding and decoding video sequences were rejected by the
Examiner under § 101 as an abstract idea.
▪ Outcome – Affirmed-in-part:
• The claims “recite various mental processes, such as observations, evaluations,
judgments, and opinions, that could practically be performed in the human mind
or by a human with a pen and paper.”
• The steps of “identifying the current picture as a leading picture and detecting an
error based on the picture's ‘NAL unit type information’ and certain characteristics
of the picture preceding the current picture in the video sequence…simply recite a
process of examining decoded pictures in a video sequence…and making an error
determination, which is a process that can be performed within the human mind
(e.g., detecting errors while rearranging a given set of numbered items in a
sequence) or with a pen and paper.”
212
Ex Parte PTAB cases
▪ Ex parte Samuelsson, No. Appeal 2019-001626 (PTAB Apr. 2, 2020)
(non-precedential) (cont’d)
▪ Outcome – Affirmed-in-part:
• The applicant/appellant argued that the Examiner did not properly support the
step 2B assertions, but the Board held that the appellant “fails to identify any
claim element that needs any additional support--beyond that already provided in
the record--to show that it is not a generic computer function” because the
specification “sufficiently demonstrates the well-understood, routine,
conventional nature of each of the additional claim elements.”
• Claims 29 and 32, however, were “specifically directed to performing concealment
in response to detecting an error in the video sequence.”
• The specification “explains how the claimed use of error concealment results in
an improvement,” which integrated the recited abstract idea into a practical
application.
213
Ex Parte PTAB cases
▪ Ex parte Samuelsson, No. Appeal 2019-001626 (PTAB Apr. 2, 2020)
(non-precedential) (cont’d)
15. A method of decoding a coded video sequence comprising Network Abstraction Layer
(NAL) units, the method comprising:
decoding a current picture comprised in the coded video sequence;
identifying the current picture as a leading picture of exactly one Clean Random Access
(CRA) picture included in the coded video sequence; and
detecting an error as a result of determining that:
i) a NAL unit type information of the current picture is not set to a specific NAL unit type
that is reserved for leading pictures of exactly one CRA picture,
ii) the current picture does not directly follow in decoding order the exactly one CRA
picture, and
iii) the current picture does not directly follow in decoding order a picture which is
identified as a leading picture of the exactly one CRA picture.
214
Ex Parte PTAB cases
▪ Ex parte Feng, No. Appeal 2018-007017 (PTAB March 24, 2020) (non-
precedential)
▪ Case:
• Claims directed to “exploration for hydrocarbons involving electrical
investigations of a borehole penetrating an earth formation” were rejected by the
Examiner under § 101 as an abstract idea.
▪ Outcome - Reversed:
• The Board concluded the claims recited a mathematical concept of “estimating
the at least one parameter of interest using the electromagnetic transient
information…” and the specification explained that estimation could be performed
by applying an equation.
• However, the mathematical equation was integrated into a technological
improvement such that “the estimation using an approximation as two thin
conductive sheets improves upon existing technology.”
• Because the claims integrated the abstract idea into a practical application, they
were not “‘directed to’ an abstract idea.”
215
Ex Parte PTAB cases
▪ Ex parte Feng, No. Appeal 2018-007017 (PTAB March 24, 2020) (non-
precedential) (cont’d)
1. A method of estimating at least one parameter of interest of an earth formation using an
electromagnetic (EM) tool, comprising:
conducting drilling operations to convey the EM tool in a borehole penetrating the earth
formation;
producing an electric current in the formation using a transmitter on the tool;
measuring an electromagnetic transient response to the current using a receiver on the
tool in the borehole to obtain electromagnetic information; and
estimating the at least one parameter of interest using the electromagnetic transient
information obtained using the receiver and a model of transient electromagnetic
responses in the earth formation dependent on a depth of the receiver when the
electromagnetic transient information was obtained, wherein the model approximates the
earth formation as two thin conductive sheets below the earth surface comprising an
upper sheet representing an upper portion of the earth formation above the tool and a
lower sheet representing a lower portion of the earth formation below the tool; and
controlling operations in the earth formation using the at least one parameter.
216
Ex Parte PTAB cases
▪ Ex parte Fautz, No. Appeal 2019-000106 (PTAB May 15, 2019)
(informative)
▪ Case:
• The Examiner rejected the claims under § 101 as an abstract idea that is similar to
“abstract ideas relating to mathematical formulas and ‘collecting information,
analyzing it, and displaying certain results of the collection and analysis.’”
• The claimed invention relates to magnetic resonance (MR) tomography. The
devices use reception coils to receive signals generated while scanning a subject
and optimizes the signal-to-noise ratio (SNR) from the reception coils.
▪ Outcome - Reversed:
• The Board agreed that the claims recite an abstract idea: a mathematical concept
because the claims recite three mathematical formulas.
• The Board, however, concluded that the “MR tomography device in the claimed
solution is neither a token addition nor an abstract concept” so the claims solved
a technical problem and was directed to a practical application.
• The claimed invention thus “uses the recited mathematical equations to improve
the imaging system.”
217
Ex Parte PTAB cases
▪ Ex parte Kimizuka, No. Appeal 2018-001081 (PTAB May 15, 2019)
(informative)
▪ Case:
• The Examiner rejected all the claims under § 101 as an abstract idea directed to
golf-club fitting method, which was considered a mental process.
▪ Outcome - Affirmed:
• The Board agreed that the method claimed mental process, i.e., “an evaluation
or judgment that can practically be performed in the mind or with the assistance
of pen and paper.”
• “Claim 7 recites, in part, that the dynamic-loft determination requires ‘the
measured head speed, the measured dynamic loft, and the measured blow
angle, the suitable dynamic loft being defined as a dynamic loft achieving a
predetermined hit ball result’ and “‘the hit ball result database is used for
determining the suitable dynamic loft.’”
• “Claim 7 recites an evaluation that, when considered in the context of the claim
as a whole, can practically be performed in the mind.”
218
Ex Parte PTAB cases
▪ Ex parte Kimizuka (cont’d)
▪ Outcome (cont’d):
• “Essentially, the disclosed invention helps the user select a club that fits the
player's needs…To solve this non-technical problem, claim 7 uses the collected
data to recommend a golf club that has a desirable loft angle. Claim 7 does not,
for example, improve how the measurements are taken or improve how the golf
club is manufactured. In this way, claim 7 is unlike the technology-based
integrations” of other claims found eligible.
• “Considering the processor in combination with the other recited limitations, the
processor is merely a token addition. To be sure, the recited processor may
perform the calculations faster than a human could mentally. Yet using a
computer to achieve a solution more quickly may not be sufficient to show an
improvement to computer technology.”
• “Appellants do not identify any inventive concept in the recited combination of
steps here or any specific arrangement of computing components. Indeed, the
claim's focus is club fitting, not a specific configuration of the processor and
database.”
219
Ex Parte PTAB cases
▪ Ex parte Savescu, No. Appeal 2018-003174 (PTAB Apr. 1, 2019)
(informative)
▪ Case:
• The Examiner rejected the claims under § 101 as an abstract idea directed to a
method of creating a life-cycle workflow for a project.
▪ Outcome - Affirmed:
• The Board determined that the limitations encompass steps for creating a
workflow that organizes how people perform project tasks and those limitations
“recite steps that a person would perform when working on a project.”
• Thus, claim 1 “recites a concept related to managing relationships or transactions
between people” and is a method of organizing human activity.
• “Considering the claim as a whole, these additional limitations merely add generic
computer activity to deliver web pages and store data, which is insufficient to
integrate the judicial exception into a practical application.”
• “Referring to the computer executing the method, the Specification states that the
‘devices are well known in the art and need not be discussed at length here.”
220
Ex Parte PTAB cases
▪ Ex parte Savescu (cont’d)
▪ Outcome (cont’d):
• “Indeed, the Specification merely states that ‘the server 108 is a computing
device, such as a server computer’” that “‘can include input/output devices, a
central processing unit (‘CPU’), a data storage device, and a network device.’”
• “By identifying these paragraphs, the Examiner has adequately supported the
finding that the recited server is well-understood, routine, and conventional.”
221
Ex Parte PTAB cases
▪ Ex parte Olson, No. Appeal 2017-006489 (PTAB Mar. 25, 2019)
(informative)
▪ Case:
• The Examiner rejected all the claims under § 101, arguing they were directed to an
abstract idea.
• The claims were directed to a method and system for locally deformable
registration of a catheter navigation system to an external model or external image
data.
• The Examiner concluded that the “claims essentially cover[] a general algorithm to
be executed on a general purpose computer that is cited with [a] generic catheter
navigation system and generic catheter/tool that are well-known, conventional
systems/devices in the field of medical imaging.’”
▪ Outcome - Reversed:
• The Board determined the claims contained the mathematical concept of using a
mathematical formula for an error function and the “mathematical calculation using
a thin plate splines algorithm to generate the mapping function by summing a fixed
number of weighted basis functions.”
222
Ex Parte PTAB cases
▪ Ex parte Olson (cont’d)
▪ Outcome (cont’d):
• The Board nevertheless concluded the additional limitations practically applied
the judicial exception because those limitations recited:
❑ (1) placing a tool on a surface location Xi of the heart
❑ (2) measuring position information for [] Xi relative to a coordinate frame X
❑ (3) identifying a corresponding location Yi on the three-dimensional image
❑ (4) associating the position information for [] Xi as measured by the catheter navigation
system relative to [] X with position information for [] Yi on the three-dimensional image
relative to [] Y as a fiducial pair (Xi, Yi)
• “In particular, these limitations apply the recited mathematical calculations to
improve registration of a catheter navigation system to a three-dimensional image
of a heart by accounting for non-linearities and inhomogeneities in the catheter
navigation system and reduce errors in the localization field.”
• The Board concluded the mathematical concepts were used to improve particular
technology.
223
Ex Parte Allen-Rouman (Appeal 2017-008088)(April 1, 2019)
23. A method for performing an electronic funds transfer transaction, the method comprising:receiving by the processor, from a user, a selection of an icon that indicates a payment option from a plurality of payment options via a store-based input console associated with a vendor, wherein
the store-based input console presents the icon associated with the payment option; in response to the selection of the icon, the processor presents, via the store-based input console, a graphical interface comprising multiple input fields to be completed by the user;receiving by the processor, from the user, validation information input to the store-based input console via the multiple input fields of the graphical interface, wherein: the validation information comprising a password;and account information of the user is not exposed to a vendor system associated with the vendor;
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Continued
• validating, by a server of the funds transfer system over a network, the validation information that comprises the password with the account information of the user stored by the funds transfer system by checking validation information, including the password, against a database of the funds transfer system to determine the validation information is correct; and
• in response to validating the validation information that comprises the password with the account information specific to the user stored by the funds transfer system, transmitting over the network, by the server of the funds transfer system, a digital I OWE YOU to the vendor; after a period of time, receiving over the network, by the server of the funds transfer system, the digital I OWE YOU;
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confirming, by the server of the funds transfer system,
authenticity of the digital I OWE YOU; and
after confirmation of the authenticity of the digital I
OWE YOU, conducting a funds transfer to the vendor over the network.
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Analysis
• Claim 23 recites series of steps performed "by a server of the funds transfer system over a network," which includes "conducting a funds transfer ... over the network." By reciting limitations directed to electronic funds transfer transactions, claim 23 is directed, at least in part, to the idea of electronic funds transfer transactions. Electronic funds transfers are a fundamental economic practice, which is one of certain methods of organizing human activity. See, e.g., Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378-79 (Fed. Cir. 2017) (holding that concept of "local processing of payments for remotely purchased goods" is a "fundamental economic practice, which Alice made clear is, without more, outside the patent system.").
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Continued
• Claim 23 is more akin to the claims at issue in Trading Technologies Int 'l, Inc. v. CQG, INC, where the Federal Circuit determined claims that recited electronic trading of commodities were patent-eligible because they were directed to improvements in existing GUis that had no pre-electronic trading analog. See 675 F. App'x at 1003---05 (citing, inter alia, DDR Holdings, McRO, and Enfish); see also Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1359---60, 1362---63 (Fed. Cir. 2018) (determining at Alice/Mayo step one "[t]he asserted claims in this case are directed to an improved user interface for computing devices, not to the abstract idea."); see also Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018) (holding the claims at issue were "directed to a non-abstract improvement in computer functionality, rather than the abstract idea. claim 23 focuses on (and is directed to) a specific means to improve technology for electronic payment systems, i.e., it is not directed to a result or effect that itself is the abstract idea while merely invoking generic technological limitations. Enfish, 822 F.3d at 1335-36 (Fed. Cir. 2016).
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Ex Parte Simcock (Appeal No. 2018-003421)(April 1, 2019)
• 1. A method for designing an Integrated Computational Element ("ICE"), comprising:
defining a preliminary ICE design;defining a first chemical system having one or more components;defining a second chemical system having one or more components; determining a first performance factor of the preliminary ICE design which corresponds to the first chemical system;determining a second performance factor of the preliminary ICE design which corresponds to the second chemical system;summing the first and second performance factors to produce a total performance factor; and determining a final ICE design based upon the total performance factor.
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Continued
• 17. An Integrated Computational Element ("ICE") which approximates a regression vector of a plurality of chemical systems.
• 19. An optical computing device, comprising:an electromagnetic radiation source which produceselectromagnetic radiation that optically interacts with a fluid sampleto produce sample-interacted light;at least one Integrated Computational Element ("ICE") thatapproximates a regression vector of a plurality of chemical systems,the at least one ICE being positioned to optically interact with thesample-interacted light to produce optically-interacted light thatcorresponds to at least one characteristic within the fluid sample; andan optical transducer positioned to receive the optically interactedlight and thereby generate a signal corresponding to the atleast one characteristic of the fluid sample.
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Analysis
• New ground of rejection made by the panel.
• Claims 1-15 and 26 do not integrate judicial exception into practical
application. Claims do not recite, and the Specification does not
describe, improvement to functioning of computer, or to any other
technology or technical field. Nor are additional elements directed to a
particular machine or transformation. The claims do not require any step of
actually fabricating the ICE as, for example, shown in Figure 1, based on
final ICE design. Although some of dependent claims recite differences between chemical
systems as presented in spectral data sets, these differences merely exist
in the information upon which mental process is applied. As such, these
differences in information are part of the abstract idea and are not limitations
beyond the judicial exception.
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Ex Parte Linden (Appeal 2018-003323)(April 1, 2019)
• 11. A computer-implemented method for transcribingspeech comprising:receiving an input audio from a user;normalizing the input audio to make a total power of theinput audio consistent with a set of training samples used to train a trained neural network model;generating a jitter set of audio files from the normalizedinput audio by translating the normalized input audio by one ormore time values;for each audio file from the jitter set of audio files, whichincludes the normalized input audio:
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generating a set of spectrogram frames for each audio file;inputting the audio file along with a context ofspectrogram frames into a trained neural network;obtaining predicted character probabilities outputs fromthe trained neural network; anddecoding a transcription of the input audio using thepredicted character probabilities outputs from the trained neural network constrained by a language model that interprets a string of characters from the predicted character probabilities outputsas a word or words.
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Analysis
The claims are not directed to an abstract idea because alleged judicial exception is integrated into practical application.“[T]he claims of the current application include specific features that were specifically designed to achieve an improved technological result" and "provide improvements to that technical field." App. Br. 16. For example, the Specification describes that using DeepSpeechlearning, i.e. a trained neural network, along with a language model "achieves higher performance than traditional methods on hard speech recognition tasks while also being much simpler." Spec. ¶ 29.
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Continued
• The Examiner concludes claims do not include "any additional elements that amounts to significantly more than a judicial exception" but fails to provide sufficient factual support. See, e.g., Final Act. 4, 7; see also Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
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Ex Parte Smith (Appeal No. 2018-000064)(Informative)(Feb. 1, 2019)
• 1. A method of trading derivatives in a hybrid exchangesystem comprising:collecting orders, via a communication network and orderrouting system, for derivatives and placing them in an electronicbook database;identifying at an electronic trade engine a new quote froma first in-crowd market participant, wherein one of a bid or anoffer price in the new quote matches a respective price in an orderin the electronic book database from a public customer;removing at least a portion of the order in the electronicbook database, delaying automatic execution of the new quoteand the order, and starting a timer;
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Continued
• reporting, via the communication network and an
electronic reporting system, a market quote indicative of
execution of the at least a portion of the order while delaying
automatic execution;
receiving at the electronic trade engine a second quote
from a second in-crowd market participant after receiving the
new quote from the first in-crowd market participant and before
an expiration of the timer, wherein the second quote matches the
respective price of the public customer order in the electronic
book database; and
allocating the order between the first and second in-crowd
market participants at the electronic trade engine, wherein the
order is not executed until expiration of the timer.
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Analysis
Claim 1 recites additional limitations which focus onaddressing problems arising in the context of a hybrid derivatives trading system in which trades are made both electronically and on a trading floor (i.e., "in the pits"). These limitations include: (1) "delaying automatic execution of the new quote and the order, and starting a timer," (2) while"delaying automatic execution" of the order, and "before expiration of the timer," receiving a second matching quote "wherein the second quote matches the respective price of the public customer order," and
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Analysis
• (3) "allocating the order between the first and second in-crowd market participants at the electronic trade engine, wherein the order is not executed until expiration of the timer."
• We conclude that these limitations integrate the recited judicial exception of derivative trading into a practical application. In particular, these additional elements limit the conventional practice of automatically executing matching market orders by reciting a specific timing mechanism in which the execution of a matching order is delayed for a specific period of time. This delay allows for other matching orders to be received from thein-market participants so that the order can be allocated between the first and second and executed upon expiration of the delay period.
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Continued
• Thus, like the claim and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Appellants' claims "overcome a problem specifically arising in the realm of computer networks." Id. at 1257.
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Ex Parte Rockwell (Appeal No. 2018-004973)(Jan. 16, 2019)
• 1. A system comprising:a processor of a vehicle configured to communicate with an update server hosting software updates; and a software update management module connected to theprocessor and vehicle modules over a vehicle bus andconfigured to determine that a software update is an optionalsoftware update based on a data indicator associated withthe software update, wherein the software update isconfigured to at least one of add an additional feature to avehicle module or adjust a configuration of an existingfeature of a vehicle module,provide, in a head unit display of the vehicle, anindication of an optional status of the software updateand a request for consent from a user to install theoptional software update,
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invoke a software update mode responsive to receipt of a message indicating user consent to install the software update, send an update command over the vehicle bus to invoke the software update mode for the vehicle module identified by the software update, apply the software update to the vehicle module by installing the update to a memory of the vehicle module, and display an indication as an icon within a gauge cluster of the vehicle responsive to lack of receipt of the user consent.
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Analysis
• The Examiner has not determined that the claims recite an abstract idea that falls within one of the enumerated grouping of abstract ideas in the Revised Guidance.
• Claim 1 is directed to a practical application of updating software specifically for a vehicle module, in which user consent is required and in which lack of receipt of user consent is communicated to a user via an icon within the gauge cluster of a vehicle. Claim 1 also is directed to providing in a head unit display of the vehicle an indication of an optional status of the software update and a request for consent to install the optional update and upon receipt of user consent sends an update command over the vehicle bus and installs the update to a memory of the vehicle module.
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Practice Tips for Drafting and Prosecuting
Applications to Withstand AIA Challenges
244
Practice Tips for Drafting and Prosecuting Applications to Withstand AIA Challenges
1. Prepare robust specification that that provides clear basis for broadest reasonable interpretation of the claims as well as 112 support for the claims.
2. Consider drafting definitions for terms to address concerns about known prior art.
3. Determine the necessity of each term in the claims.4. Include a statement of the inventive concept as well as how
the claimed invention provides a technical solution to a technical problem, improved the way a computer functions, employs new rules that improve the user experience that were not old and well-know, in the art, demonstrate a new arrangement of old elements, apply improvements from one field of technology to another and employ non-generic computer elements.
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Practice Tips to Withstand AIA Challenges (cont’d)
5. Present a range of claims from the broadest entitled to cover competitor’s technology the narrowest willing to accept to avoid
the prior art.6. Focus claims on literal infringement.7. Use specification to describe how claims will be infringed.8. Present focused claims to all aspects of the inventions described in the specification that may include system, subsystem, components, methods of making, methods of use, species, means plus function and CRM claims written in means plus function format or that reconfigure computer memory.9. Examiner restriction requirements help reduce patent owner
estoppel when filing divisional applications.
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Practice Tips to Withstand AIA Challenges (cont’d)
10. Define claim terms clearly and judiciously and use them consistently.
11. Create a prosecution history that supports the claim construction you want from the intrinsic record.12. Submit ample prior art in IDS for patent examiner consideration to reduce reasonable likelihood of petitioner success from using prior art applied in commonly-owned domestic and foreign application prosecution. This helps in both avoiding institutions and enhances petitioner estoppel opportunities especially based on follow-on challenges13. Use more patent owner friendly opportunities to offer substitute claims during AIA trials if issued patent fails to claims of intermediate or narrow scope. In re Aqua Products.
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Practice Tips to Withstand AIA Challenges (cont’d)
14. Consider filing thorough expert declarations under 37 CFR 1.132 to overcome section 103 & 112 rejections commensurate with claim scope in addition to presenting attorney argument. See Omron Oilfield & Marine, Inc. v. MD/Totco, IPR2013-00265, Paper 11 (PTAB Oct. 21, 2013)
15. Build up specification and file history.
16. Keep continuing applications pending, but beware of patent owner estoppel. 37 CFR 42.73(d)(3).
17. Use In re Tanaka reissue to add dependent claims to prepare patent for IPR attack.