Here are the updated numbers for #Alicestorm in the first quarter of 2016.   First, the overall trend of decisions:Monthy March 2016 is the first month since Alice was decided that the number of decisions upholding patents (15) exceed the number of invalidating decisions (12).  However, this is not a sea change.  Rather, it’s an artifact of the data: on March 22, 2016, Judge Robinson (D. Del.) released four decisions denying motions to dismiss that had been pending for many months.  The clustering of these four decisions spiked the numbers.  More important is that underlying trend of invalidating decisions continues upwards. The #Alicestorm counts are as follows: Table 1 Summary The indices are more or less steady, though dipping slightly due mainly to the four Robinson decisions.  The total number of invalidating decisions climbed from 150 in January to 177. Invalidated patents increased from 285 to 325 (17.5%) while the number of invalidated claims rose from 7,548 to 9,246 (22.5%).  The ever popular motion to dismiss rate edged up from 71.7% to 72.3%. The Federal Circuit continues to invalidate on a regular basis (up from 22 decisions).  Most of these are per curiam decisions. Of particular note is the decision in In re Smith, where the court upheld the rejection of a claim directed to a method of blackjack gaming.  The court agreed with the examiner that wagering on cards games is “a method of exchanging and resolving financial obligations.”  The USPTO has been waiting for this decision, as there are many gaming patent applications pending, facing precisely this kind of rejection; if you are prosecuting one of these applications, expect the rejection to be maintained on appeal.  This development is unfortunate, since gaming patents are well within the scope of the traditional fields of patenting, going back at least to the patent on the game of Monopoly. Here is the distribution of patents both held valid and invalid with respect to U.S. patent classifications. Classes Turning to the motions: Tablbe 2 Motion Here are the stats for all judges who have issued three or more Section 101 decisions: Table 4 Judges Here is a comparison of how the Delaware courts compare to the E.D. Texas: Table 5 Del and Tex It’s difficult to say whether we’ve reached a steady state as to the boundaries of patent eligibility.  The high rates of ineligibility decisions is likely to incent patent defendants to continue to argue against more traditional types of software. At some point, the courts will likely say enough is enough, and start to hold the line.  We have yet to see evidence that this is happening, but as this is April, hope springs eternal.

  • Thanks for the link to In Re Smith. On the one hand, I would have to agree, simple rules for a card game sounds like a patent ineligible abstract idea. On the other hand “simple rules” reads on all software-based inventions. The courts may say when “enough is enough”, but I don’t see how they can do that with any sort of intellectual honesty unless they either embrace the statutory eligibility of all rule based inventions or reject them all.
    In the case of Smith, they are trying to draw the eligibility line based on the apparent physicality of the invention. The court said they could envisage “claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.” This is apparent physicality. All decks of cards are physically the same. What makes a deck of cards new or original is the images on the cards. What makes the images new is the meaning associated with the images as determined by the rules of the game. Claiming a new card game, therefore, is now an exercise in claiming a new and original deck of cards where the rules are expressed as the meanings assigned to the cards in the course of the game. A new Smith claim might read:
    1.A new and original deck of cards, said cards comprising:
    a)4 cards, each comprising a physical image that is assigned a value of 0 at the beginning of a game; and
    b) 9 cards, each comprising a physical image that is assigned a unique value in the range of 1 to 9 at said beginning of said game;
    wherein a randomly selected pair of said cards is reassigned a value of Natural 0 based on said physical images when…..[insert rest of rules of game].
    So now we have the very situation that the Alice Court was trying to avoid. Patent eligibility is based primarily on the practitioners’ skill in claiming rule based inventions as apparently physical inventions, not the fundamental utility of the invention itself.