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Surviving Alice Gone Wild

| November 26, 2014

Before the Supreme Court’s decision in Alice Corp. v CLS Bank Int’l ^[1], Judge Moore said “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”^[2] This concern is premised on about twenty years of patent practice grounded in the en banc 1994 Federal Circuit decision in In re Alappat which previously established the “special purpose computer” justification for patent eligibility under 35 USC §101 for computer-implemented inventions.^[3] The Alice decision essentially eliminated the “special purpose computer” bright line rule as applied generally to computer-implemented inventions. The new Mayo 2-part §101 test for computer-implemented inventions is, however, fraught with issues from the lack of guidance on how to properly apply it. Some strategic arguments for surviving a §101 attack are presented in this article, as well as a new way to address what is “significantly more.”

Practical Points From The Supreme Court’s Alice Decision

| June 26, 2014

Alice Corp. v. CLS Bank Int’l

June 19, 2014

Summary:

The Supreme Court’s Alice decision does not eliminate software patents as per se ineligible subject matter under 35 USC §101. The Court confirms the application of Mayo’s two step §101 analysis and provides some new considerations for addressing patent eligibility issues for computer-implemented inventions. Unfortunately, the Supreme Court’s admonition that the mere addition of “conventional” computer functionality to an abstract idea does not transform the claim into patent eligible subject matter conflates the §101 analysis with patentability issues under 35 USC §§102 and 103.

Predictably Divided CAFC Panel Finds Computer System Claims Not Patent-Eligible

| September 17, 2013

Accenture Global Services, GMBH v. Guidewire Software, Inc.

September 5, 2013

Panel: Lourie (author), Reyna, Rader (dissent)

Summary:

Not surprisingly, the decision of the latest Federal Circuit case on software patent eligibility can be predicted based on the makeup of the CAFC panel. Judge Lourie, joined by Judge Reyna, issued the majority opinion that the system claims were invalid. The Court followed the analysis for determining patent eligibility from CLS Bank, 717 F.3d 1269 (Fed. Cir. 2013) and affirmed the district court’s finding that the system claims of U.S. Patent No. 7,013,284 (“the ‘284 patent”) were ineligible. Judge Rader dissented.

Specific application of an abstract idea may be patent eligible

| June 26, 2013

Ultramercial, Inc. v. Hulu, LLC.

June 21, 2013

Panel: Rader, Lourie and O’Malley. Opinion by Rader. Concurrence by Lourie

Summary

Ultramercial, Inc. sued Hulu, LLC for infringement of U.S. Patent 7,346,545 (the ‘545 patent) directed to a method of monetizing and distributing copyrighted products over the Internet. The district court dismissed the patent suit by holding that the patent claims an abstract idea; therefore, it is not a process under 35 U.S.C. §101. In an earlier decision, the Federal Circuit reversed the district court’s holding and remanded. The Supreme Court of the United States vacated the earlier decision by the Federal Circuit. The Federal Circuit again holds that the patent does not claim an abstract idea because the claims are not drawn to a mathematical algorithm or a series of purely mental steps because the claims require, among other things, a particular method for collecting revenue from the distribution of media products over the Internet by way of controlled interaction with a consumer over an Internet website. Therefore, the Federal Circuit again reversed the district court’s holding and remanded for further proceeding.

The Alice in Wonderland En Banc Decision by the Federal Circuit in CLS Bank v. Alice

| May 13, 2013

CLS Bank v. Alice Corporation (en banc)

May 10, 2013

After the Federal Circuit issued its en banc decision on May 10, 2013 in CLS Bank v. Alice Corp, the patent owner Alice Corp must be feeling like Alice in Alice in Wonderland, bewildered and frightened by the fantastical situation in which they find themselves:

(1) “bewildered” because an equally divided Federal Circuit affirmed the district court’s holding that Alice’s claimed system to tangible machine components including a first party device, a data storage unit, a second party device, a computer, and a communications controller, programmed with specialized functions consistent with detailed algorithms disclosed in the patent, constitutes a patent ineligible “abstract idea;”

(2) “frightened” because, as Judge Moore puts it, “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents” (Moore Op. at 2); and

(3) “fantastical” because, as Judge Newman puts it, the en banc court was tasked to provide objective standards for 35 USC §101 patent-eligibility, but instead has “propounded at least three incompatible standards, devoid of consensus, serving to add to the unreliability and cost of the [patent] system…[such that] the only assurance is that any successful innovation is likely to be challenged in opportunistic litigation, whose result will depend on the random selection of the panel” (Newman Op. at 1-2).

Fractured CAFC panel again affirms patent eligibility of isolated DNA, and applies Mayo

| August 21, 2012

Association for Molecular Pathology et al. v. U.S.P.T.O. et al.

August 16, 2012

Panel: Lourie, Bryson and Moore. Majority opinion by Lourie, concurrence by Moore, dissent by Bryson.

Less than a month after hearing oral arguments, the CAFC panel of Judges Lourie, Bryson and Moore last week issued an updated decision in the controversial AMP v. USPTO (Myriad genetics) case. The CAFC reached the same conclusion as they did last year: (1) the Plaintiffs do have standing, (2) the isolated DNA and cDNA claims are patent eligible, (3) the “analyzing” and “comparing” method claims are not patent eligible and (4) the screening method claim is patent eligible.

As with the decision last year, the panel reached a unanimous conclusion with respect to the issues of standing, subject matter eligibility of the cDNA claims, and subject matter eligibility of the method claims. However, the panel reached different conclusions with respect to the composition claims which recite isolated DNA. Since the opinions of the Court are very similar to the opinions issued in 2011, this article will focus on the Judges’ views with respect to the impact of Mayo v. Prometheus (English summary; Japanese summary) on the claims in question, and particularly with respect to the isolated DNA claims.

CAFC reiterates patent eligibility of isolated DNA in the Myriad case

| August 16, 2012

Less than a month after hearing oral arguments, the CAFC panel has issued a decision in the controversial AMP v. USPTO (Myriad genetics case). The CAFC reached the same conclusion as they did last year: (1) the Plaintiffs do have standing, (2) the isolated DNA and cDNA claims are patent eligible, (3) the “analyzing” and “comparing” method claims are not patent eligible and (4) the screening method claim is patent eligible.

We will provide further analysis of the decision in the coming days, including the panel’s reasoning why the Mayo holding is limited to method claims, and does not affect composition claims. Readers should be aware that this is likely not the last word on this case…An en banc rehearing and/or another petition to the Supreme Court are very likely.

The full opinion can be read here:

http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1406.pdf

Category: Patent Eligible Subject Matter
Tags: §101 > biotech > Myriad > patent eligible subject matter

Summary of Oral Arguments in AMP v. USPTO remand

| July 20, 2012

July 20, 2012

In the immortal words of baseball great Yogi Berra, “It’s déjà vu all over again”. A little more than a year after they previously heard AMP v. USPTO, the CAFC panel of Judges Lourie, Bryson and Moore have once again taken up the question of whether isolated DNA and related methods are patent eligible subject matter under 35 U.S.C. §101.

CLS Bank v. Alice Corporation: An attempt in formulating the abstractness of the “abstract ideas” test to patent eligibility

| July 18, 2012

CLS Bank v. Alice Corporation

July 9, 2012

Panel: Linn, Prost and O’Malley. Opinion by Linn. Dissent by Prost.

Summary

The district court for the District of Columbia held that claims to computer systems, computer readable medium and claims to methods of using a computer of the asserted patents were all invalid as “abstract ideas.” In so holding, the district court ignored the limitations recited in the claims and boiled the invention down to a mere abstract concept “of employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk.” On appeal, the Federal Circuit reversed the district court’s judgment of invalidity under 35 U.S.C. § 101. The Federal Circuit, after considering each asserted claim “as a whole”, found that it was not “manifestly evident” that the claims of the asserted patent were drawn to “abstract ideas.” Therefore, the Federal Circuit held that claims must not be deemed inadequate under 35 U.S.C. § 101.

USPTO issues Interim Procedure for §101 examination after Prometheus v. Mayo

| July 3, 2012

Since the Supreme Court issued their decision in Mayo v. Prometheus (English discussion here; Japanese discussion here), rejections of claims based on failure to comply patent-eligible subject matter requirements of §101 seem to be on the rise. Until now, Examiners had been given only very little guidance (see here), resulting in Mayo being cited inconsistently. However, today, the USPTO has provided Examiners with additional guidance about how to handle this issue. Please click below for more information:

2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature

Memo Cover Letter

These guidelines should improve consistency of the manner in which Mayo and related cases are relied upon by the Examining Corps, as well as provide practitioners with a basic framework for responding to such rejections.

Keep in mind that as the CAFC (and perhaps the Supreme Court, eventually) continues to address this issue in other pending cases such as Myriad and Ultramercial, these guidelines may be revised by the USPTO.

Category: Patent Eligible Subject Matter, Uncategorized
Tags: §101 > bilski > law of nature > Mayo > Myriad > patent eligible subject matter

CAFC Alert

Lessons on Claim & Specification Drafting, Litigation Strategies and more