Alice has been busy the last two months, continuing to haunt the federal courts and the Knox and Randolph buildings at the USPTO. Here are the latest #AliceStorm numbers through the end of October 2015: Table 1 Alice Summary There have been 34 district court decisions in the past two months, but the percentage of invalidity decision is holding constant at 70.5%.   The number of patent claims invalidated is now over 11,000, but also holding steady at around 71%. There have been no new Federal Circuit Section 101 decisions, but we’re going to see a flurry of activity in the next couple of months, as the court has recently heard oral argument in a number of patent eligibility cases, and more are on calendar for November. Motions on the pleadings have soared, with 23 in the past two months alone, and the success rate is up a tick from 70.1% to 71.4%. PTAB is a bit mixed: the CBM institution rate is down from 86.2% 83.7%, but the final decision rate is still 100%, with 6 decisions in the past two months invalidating the patents in suit. Turning to the motion analysis, the motions on the pleadings are the second scariest thing to a patent holder after the specter of attorney fees under Octane Fitness: Table 2 Motion Summary The Delaware district court continues as the graveyard of business methods and software patents, with 31 eligibility decisions, up from 19 just two months ago, and their invalidity rate is up from 86.4% to 90.3%. Jumping into second place is the Eastern District of Texas, with 23 decisions total (up from 16). Contrary to the rest of the rest of the bench, their invalidity rate is 34.8%.  The Northern District of California edged up from 75% to 78.9% invalidity, and C.D. Cal is up almost 2%.

   Table 3 Court Summary

 And finally, here is the run down on the all district court judges with two or more Section 101 decisions. Table 3 Judge Summary

With today’s blog, I’m introducing some entirely new types of data, looking at the characteristics of the patents that have been subject to Section 101 motions.

As expected, business method patents are the most heavily litigated and invalidated (click to see full size):

Table 4 Tech Type

The distribution of patents in terms of earlier priority dates shows a very large fraction of the invalidated patents were first filed in 2000:

Table 5 Priority Years

Now compare that to the distribution of patent classes with respect to priority year as well:  Table 6 Tech by Priority

Here too we see a very large number of the business method patents filed in 2000.  I’ve coded all of the software related technologies as blue to group them visually.

Why the cluster around 2000?  State Street Bank, which held that there was no rule against business method patents, was decided in mid-1998.  As those of us who were practicing them remember, it took about two years before the impact of the decision was widespread.  This was also the time of the Dotcom bubble when it seemed that just about everyone was starting up a business on Internet.  Those two factors resulted in a surge of patent filings.

Of all the patents that have been thus challenged under Alice, only two have post-Bilski priority dates:

  • 8447263, Emergency call analysis system, filed in 2011, and litigated in Boar’s Head Corp. v. DirectApps, Inc., 2015 U.S. Dist. LEXIS 98502 (E.D. Cal., 7/28/2015).  The court granted DirectApps motion to dismiss, finding the patent invalid.
  • 8938510, On-demand mailbox synchronization and migration system, filed in 2010, and litigated in BitTitan, Inc. v. SkyKick, Inc., 2015 U.S. Dist. LEXIS 114082 (W.D. Wash, 8/27/2015). BitTran’s motion for preliminary injunction was denied in part because of SkyKick successfully argued that BitTrans was not likely to succeed on the merits due to Alice problems.
  • 8,604,943; 9,070,295; 9,082,097; 9,082,098 and 9,087,313, all of which claim priority to March, 2012, and were invalidated just last week in MacroPoint LLC v. FourKites Inc., Case. No. 1:15-cv-01002 (N.D. Ohio, Nov. 5, 2015).  The court invalided all 94 claims in these patents, as being directed to the abstract idea of “tracking freight.” While the last four patents were issued in June and July, 2015, none of them overcome an Alice rejection, and the court noted that “Nothing in the Reasons for Allowance dictate a finding that these concepts are inventive on the issue of patent-eligible subject matter.”

Over time we’ll see more post-Bilski patents being litigated, and then eventually a true test: a business method patent granted after Alice that overcame an Alice rejection.  By my count, there are about 80 such patents thus far, and about another 90 that have been allowed.   It will not be too long then before one of these patents is challenged under Section 101.

In my next column, I’ll review some very disturbing decisions by coming out of the Delaware district courts.

  • After the software patents, now protocol patents are also under threat by Alice.
    In a lawsuit of 7 patents, Apple passed a motion asserting 2 of Ericsson’s patents as invalid based on 35. U.S.C.§ 101. In the light of Alice ruling, Apple stated that PROTOCOL patents are similar to software patents (abstract concept) and hence, are not valid.
    Full report – http://www.greyb.com/alice-based-rejection-now-on-protocol-patents/

  • We are looking at allowances of post Alice rejections as well. It’s very revealing to look at the amendments that led to the allowances. Very helpful for productive discussions with examiners.

  • “By my count, there are about 80 such patents thus far, and about another 90 that have been allowed. ”
    How are you finding the Post Alice allowances that haven’t issued yet?

  • Mike, I use Patent Advisor http://www.patentadvisor.com/. They have a searchable database derived from PAIR. You search by art unit or examiner, and identify the pending applications. Then you review by status, and look for the allowed applications.

  • Mike, I use Patent Advisor http://www.patentadvisor.com/. They have a searchable database derived from PAIR. You search by art unit or examiner, and identify the pending applications. Then you review by status, and look for the allowed applications.