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.

Continue Reading The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 4)

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 Continue Reading Update on Section 101 Rejections at the USPTO

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 presumption of validity applies to subject matter eligibility, saying that notwithstanding some suggestions in the Federal Circuit to the contrary (see Judge Mayer in Ultramercial III, 772 F.3d at 720-721), the Supreme Court’s unanimous statement in Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238 (2011) was, without qualification, that 35 U.S.C. § 282 requires an invalidity defense to be proved by clear and convincing evidence.  The DataTern court refused to read the Supreme Court’s silence on the issue in its more recent § 101 decisions as creating any sort of exception to that rule.
  • The patent at issue (6,101,502) is remarkable in how little hardware it describes in the specification, and the claims are directed, for example, to, “A method of interfacing an object oriented software application with a relational database, comprising the steps of selecting an object model; generating a map …; employing the map …; and utilizing a runtime engine … to access data from the relational database.”  Thus, these are pretty software-centric claims, which have had a dismal track record in recent § 101 challenges.
  • After summarizing the post-Alice case law, the court found that “the ‘502 patent is directed at solving a problem that specifically arises in the realm of computing” so computer limitations in the claims are neither just post-solution limitations nor mere specific applications of an abstract idea.

Based on such reasoning, the court denied the motion for summary judgment of invalidity.  If this decision is appealed, it will be interesting to see the Federal Circuit’s reactions to the presumption of validity issue, the minimal recitation of hardware, and the “realm of computing” analysis.  Given the paucity of other cases upholding such software-related claims, we should expect to see this decision cited in numerous other pending cases in the coming months.

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. Continue Reading Versata: What’s “Technological” and the Federal Circuit’s New Rule Against Improvements

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. 

Continue Reading #AliceStorm: July is Smoking Hot, Hot, Hot…and Versata is Not, Not, Not

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 overall business, please join me next week in a webinar hosted by the Intellectual Property Owners Association on Algorithms and Software Patents: USPTO and Litigation Perspectives, on Tuesday, July 14, at 2:00pm ET.   Carolyn Kosowski of the USPTO’s Patent Legal Administration at the USPTO will present the Office’s current framework for examining means-plus function claims, after which I and Douglas Luftman, Vice President of Innovation Services and Chief IP Counsel for NetApp, will offer the perspective of patent prosecutors and in house counsel.

 

Click here to register.

 

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.

Continue Reading Federal Circuit Creates New (non-Alice) Hurdle for Software Patents

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. 

Continue Reading The One Year Anniversary: The Aftermath of #AliceStorm

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%

Continue Reading Tracking #AliceStorm: Spring Showers Continue to Rain Patent Destruction

Today Fenwick & West launched a new website on which users can easily browse the Post-Alice decisions of the PTAB, the Federal Circuit, and the district courts to see how the law on patent eligibility is evolving. The purpose of this site is to allow those who want to learn more about the subject to easily browse cases and locate decisions that may be of interest to them, as well as to compare decisions involving different types of inventions and coming from different tribunals. We welcome comments from users on how we can grow this site to be of greatest use to the community.  

This is the second such website Fenwick has produced, the first being devoted to decoding PTAB decisions. Patent law continues to change week-by-week, and we want to make it as easy as possible for people impacted by those changes to best understand them. 

Check back on these sites frequently, as our team updates the contents regularly.