Go to: Part 1, Part 2, Part 3, Part 4, Part 5

(This series of posts is based on an upcoming paper for the AIPLA Spring 2016 meeting.)

Part V. THE FICTIONAL MENTAL STEPS DOCTRINE DOES NOT APPLY TO PROGRAMMED GENERAL PURPOSE COMPUTERS

The fictional form of the mental steps doctrine is inapplicable to digital computers and computer-implemented inventions for several reasons.

First, prior to the widespread usage of the general purpose computer, many inventions were created, and many patents granted, for mechanical and electrical machines that performed mathematical calculations. For example, between 1900 and 1960, there were over 2,300 patents issued that related to mechanical computing devices. That such devices were patent-eligible subject matter seemed beyond dispute, and there are no federal cases in which claims to such devices or their methods of operation were held to be unpatentable subject matter. Calculating machines also perform simple arithmetic that a human could easily do by “head and hand”, but that does not disqualify them as patentable subject matter. This is because the mathematical operations had been mechanized into physical elements: the “locus of the operation” was in the mechanical or electrical elements of the machine.


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Go to: Part 1, Part 2, Part 3, Part 4, Part 5

(This series of posts is based on an upcoming paper for the AIPLA Spring 2016 meeting.)

Part IV. THE CONTINUED APPLICATION OF MENTAL STEPS TO SOFTWARE INVENTIONS

Unfortunately, the Supreme Court’s misstatement of the relationship between computers and minds continues to this day to be cited as authority and a statement of fact about how computers operate. The Court’s conversion of the mental steps doctrine from its factual form to its fictional form in essence turned the performance of mental steps from being a necessary condition for ineligibility to a sufficient condition. And since the Alice decision refused to offer a definition or even a methodology for identifying abstract ideas, the fictional form of mental steps has been taken up as a model tool. As a result, it has substantively impacted both the case law and the outcome of many patent cases.


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In my June post, The One Year Anniversary: The Aftermath of #AliceStorm, I surveyed the frequency of Section 101 rejections at the USPTO. My analysis was based on approximately 300,000 office action and notices of allowance received from Patent Advisor.

As a reminder, the Section 101 rejection rates from the June post at the level of the USPTO Technology Center (TC) are shown below.  The numbers here are the percentage of all events in the cohort (TC and time period) that had a Section 101 rejection.  An event is either an allowance or a rejection; other events such as restriction requirements, advisory actions, and so forth are not counted.   image from http://s3.amazonaws.com/hires.aviary.com/k/mr6i2hifk4wxt1dp/15101901/2dba4170-2965-456c-87a9-acc1b1f56239.png
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On September 4, a Massachusetts district court issued an interesting ruling that calls into question many of the recent preliminary stage Alice-based invalidations we’ve seen over the past year.  The decision, the latest round in ongoing litigation between DataTern and numerous defendants, is notable for the following reasons:

  • It expressly recognizes that the

Part II:  See Part I #AliceStorm: July is Hot, Hot, Hot…and Versata is Not, Not, Not

What Is a “technological invention”?

The other part of the CBM definition at issue in Versata is the exclusion of a technological invention from the scope of CBM review. Correctly, the Court noted that the USPTO’s circular definition of technological invention as “essentially one having a “technological” feature that solves a “technical” problem using a “technical” solution,” “does not offer much help.”  But instead of defining what was technological, the Court looked to what PTAB said was not technological, that is “certain characteristics which, if present, did not help support a finding” that an invention was technological.  Here are PTAB’s exclusionary factors:

1) mere “recitation of known technologies”; 2) “reciting the use of known prior art technology”; and 3) “combining prior art structures to achieve the normal, expected, or predictable result of that combination.”

As a general rule you do not define a word by what it is not: the definition of mammal is not creatures that do not have scales, cold blood, and lay eggs.  Similarly, the use of exclusions does not effectively differentiate between technological inventions and non-technological inventions.
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NOTE (July 14, 2015): When I wrote this piece on Sunday, there were only 7 decisions announced through July 10. When I came to work on Monday, there were three more, so I revised and published yesterday with the count at ten.  Now today, two more decision from July 10!

All of the tables have been updated accordingly.

Perhaps I should just wait until tomorrow?

Part I: #AliceStorm and Versata

July invokes images of hot days, cool nights, and fireworks.  When it comes to #Alicestorm, the fireworks are happening in the courts, with the Federal Circuit lighting up the sky.

Table1

In just the first ten days of July, there have been ten twelve decisions on patent eligibility—more decisions in first ten days of any month since Alice was decided last year the dawn of time.  At this pace, we could see some twenty to thirty decisions this month.   #AliceStorm is accelerating. 


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Patent eligibility is not the only area in which the Federal Circuit’s rulings have impacted software patents.  The Court has also altered course in handing means-plus function claims in several recent cases including Eon v. ATT and Williamson v. Citrix. To learn how these rulings will effect software patents, your company’s IP portfolio and your

In the wake of last year’s Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), dozens of courts have declared scores of patents to be invalid as not satisfying the requirements of §101 of the patent statute. The Federal Circuit recently issued a decision that provides the same result but does not rely on the Alice standard and may have a significant and lasting impact on patents for software-related inventions. Allvoice Devs. US, LLC v. Microsoft Corp., No. 2014-1258, 2015 U.S. App. LEXIS 8476 (Fed. Cir. May 22, 2015). In Allvoice, the Federal Circuit declared a patent’s claims to be invalid because it simply found them not to be directed to one of the four statutory categories of inventions identified in §101.

The Alice case and its progeny have all relied on certain judicially created exceptions to §101, stating that inventions are not of a patentable type if, for instance, they encompass an abstract idea. Various tests evolved over the past few years, culminating in Alice, to determine whether the claims of a patent fall into one of these judicially created exceptions. In Allvoice, the Federal Circuit took a very different approach.


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It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that the primary concern was to avoid preemption of "fundamental building blocks" of human ingenuity.  The Court specifically avoided any suggestion that software or business methods were presumptively invalid.  But those concerns seem to have gone unheeded.  The Court's attempt to sidestep the tricky problem of defining the boundary of an exception to patent eligibility—"we need not labor to delimit the precise contours of the "abstract ideas category in this case""—has turned into the very mechanism that is quickly "swallow[ing] all of patent law.” The federal courts, the Patent Trial and Appeal Board, and the USPTO are using the very lack of a definition to liberally expand the contours of abstract ideas to cover everything from computer animation to database architecture to digital photograph management and even to safety systems for automobiles.

Let's look at the numbers to present an accurate picture of the implications of the Supreme Court’s decision. My analysis is a data-driven attempt to assess the implications of Alice one year out. It is with an understanding of how the Supreme Court’s decision is actually playing out in the theater of innovation that we can better project and position ourselves for what the future holds.

Alice at Court

Table 0 Fed Courts

As of June 19, 2015 there have been 106 Federal Circuit and district court decisions on § 101 grounds, with 76 decisions invalidating the patents at issue in whole or in part.  In terms of patents and claims, 65% of challenged patents have been found invalid, along with 76.2% of the challenged claims. 


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It's been six weeks since my last AliceStorm update, and we've had plenty of action: twelve §101 decisions, and fourteen patents invalidated in just that period. That said, the success rate of motions on the pleadings is dropping, now down to a mere 69.6%. At PTAB, ten new institution decisions, all of which were granted on ineligibility grounds. And PTAB continues with its 100% kill rate, with seven (!) final decisions invalidating patents.

Here's the data.

Total

Total Invalid

% Invalid

+/-

Fed. Cir and 
Dist. Ct. Decisions

90

63

70.0%

-3.9%

Patents

215

131

60.9%

-10.4%

Claims

4,497

3,282

73.0%

-7.3%

Motions on Pleading

46

32

69.6%

-7.6%

PTAB CBM Institution Decisions on 101

51

44

88.5%

1.52%

PTAB CBM Final
Decisions on 101

27

27

100%

 0%


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