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- 2. Disclaimer This presentation is for educational purposes only, and does not provide legal advice, or comment
- 3. Overview Introduction and History Statistics and Current Environment Eligibility Decisions Proposals and USPTO Guidance Conclusions
- 4. 1. Introduction and History
- 5. 35 U.S.C. § 101 Whoever invents or discovers any new and useful process, machine, manufacture, or
- 6. Exceptions to 35 U.S.C. § 101 The U.S. Supreme Court has interpreted statutory categories of patent-eligible
- 7. Exceptions to 35 U.S.C. § 101 Long-standing exceptions "While a scientific truth, or the mathematical expression
- 8. Groundwork Triumvirate Gottschalk v. Benson, 409 U.S. 63 (1972) Method for converting binary-coded decimal (BCD) numerals
- 9. One Test for Subject Matter-Eligibility State Street Bank and Trust Company v. Signature Financial Group, Inc.,
- 10. Another Test for Subject Matter-Eligibility Bilski v. Kappos, 561 U.S. 593 (2010) Risk mitigation / method
- 11. Mayo Mayo Collaborative Srvcs. v. Prometheus Labs, Inc., 132 S. Ct. 1289 (2012) Methods of administering
- 12. Subject Matter-Eligibility Principles "'The Court has recognized, however, that too broad an interpretation of this exclusionary
- 13. Subject Matter-Eligibility Principles "Those cases warn us against interpreting patent statutes in ways that make patent
- 14. Mayo Framework Step 1: Identify the exception Law of nature: relationship between concentration of metabolites in
- 15. Alice Alice v. CLS, 134 S. Ct. 2347 (2014) Computerized scheme for mitigating "settlement risk" of
- 16. Subject Matter-Eligibility Principles '"We have long held that this provision contains an important implicit exception: Laws
- 17. Warning "At the same time, we tread carefully in construing this exclusionary principle lest it swallow
- 18. Alice Framework "Accordingly, in applying the §101 exception, we must distinguish between patents that claim the
- 19. Step A Are the claims directed to a patent-ineligible concept? "In any event, we need not
- 20. Step B Do the claims recite elements sufficient to transform the abstract idea into patent-eligible subject
- 21. Alice: Two-Part Test
- 22. Categories of Abstract Ideas Mathematical algorithms or mental steps (see Gottschalk v. Benson, 409 U.S. 63,
- 23. Categories of Abstract Ideas "[F]undamental economic practice[s] long prevalent [i.e., preexisting] in our system of commerce"
- 24. Questions Remain: Step A What is an "abstract idea"? Digital signal processing, video encoding, etc. RecogniCorp,
- 25. Questions Remain: Step B Does the search for "significantly more" require determination of novelty? "[w]e must
- 26. 2. Statistics and Current Environment
- 27. Uncertainty "The line between a patentable process and an unpatentable principle is not always clear." Tilghman
- 28. Predicted Unpatentability "If all of these claims, including the system claims, are patent-ineligible, this case is
- 29. Patent Eligibility at the Federal Circuit Post-Alice: 71 rulings on patent-eligibility Digitech Planet Bingo † buySAFE
- 30. Patent Eligibility at the Federal Circuit
- 31. Patent Eligibility at the Federal Circuit Only 9 (precedential) decisions (subject matter eligible)
- 32. Patent Eligibility at the PTAB Source: Anticipat Research
- 33. Patent Eligibility at the PTAB Consistent decline of reversals Source: Anticipat Research
- 34. Patent Eligibility at the PTAB Very sharp decline of reversals Source: BilskiBlog
- 35. 3. Eligibility Decisions
- 36. Post-Alice Decisions (Eligible, Software) Step A (abstract idea) Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
- 37. Step 2A: No Abstract Idea (Enfish) Logical model for computer database Model of data for database
- 38. Step 2A: No Abstract Idea (McRO) Automating part of a preexisting 3-D animation to synchronize speech
- 39. Step 2A: No Abstract Idea (Thales) Directed to an inertial tracking system for tracking the motion
- 40. Step 2A: No Abstract Idea (Visual Memory) Programmable operational characteristics of memory caches tailored for use
- 41. Step 2A: No Abstract Idea (Trading Techs) User interface for electronic trading of stock, bonds, futures,
- 42. Step 2A: No Abstract Idea (Finjan) Virus scanning: providing security by scanning a downloadable and attaching
- 43. Step 2A: No Abstract Idea (Core Wireless) Improved user interface for summarizing and presenting information showing
- 44. Step 2B: Significantly More (DDR) Generating a composite web page of elements from a "host" website
- 45. Step 2B: Significantly More (Bascom) Individually customized filtering tool for Internet browsing at a remote Internet
- 46. Step 2B: Significantly More (Amdocs) Collection, merging, reporting of data from components arrayed in a distributed
- 47. Observations Clear identification of problem faced by prior art (Step 2A, 2B) Clear identification of benefits
- 48. Composition of CAFC Panels Not listed: Prost, Lourie, Clevenger, Schall, Bryson
- 49. 4. Proposals and USPTO Guidance
- 50. Big Mess? Will Congress act to clarify 35 U.S.C. § 101? Will the Federal Circuit clarify
- 51. Intellectual Property Owners (IPO) Proposal §101(a) Eligible Subject Matter Whoever invents or discovers, any useful process,
- 52. American Bar Association (ABA) Proposal §101(a) Eligible Subject Matter Whoever invents or discovers any useful process,
- 53. American Intellectual Property Law Association (AIPLA) Proposal 35 U.S.C. §101—Inventions Patentable §101(a) Eligible Subject Matter Whoever
- 54. USPTO Guidance Numerous Memorandum April 19, 2018 (Berkheimer) April 2, 2018 (Finjan, Core Wireless) November 2,
- 55. District Courts Rule 12(b)(6) (failure to state complaint) and Rule 12(c) (judgement on pleadings) Motions Remain
- 56. 5. Conclusions
- 57. Conclusions Subject-matter eligibility is unsettled No clear rule for determining whether a claim satisfies 35 U.S.C.
- 58. Questions?
- 60. Скачать презентацию
Слайд 2Disclaimer
This presentation is for educational purposes only, and does not provide legal advice,
Disclaimer
This presentation is for educational purposes only, and does not provide legal advice,
The views expressed herein are not necessarily those of Sughrue Mion, PLLC or any of its clients.
Слайд 3Overview
Introduction and History
Statistics and Current Environment
Eligibility Decisions
Proposals and USPTO Guidance
Conclusions
Overview
Introduction and History
Statistics and Current Environment
Eligibility Decisions
Proposals and USPTO Guidance
Conclusions
Слайд 41. Introduction and History
1. Introduction and History
Слайд 535 U.S.C. § 101
Whoever invents or discovers any new and useful process, machine,
35 U.S.C. § 101
Whoever invents or discovers any new and useful process, machine,
July 19, 1952, ch. 950, 66 Stat. 797
"conditions and requirements"
35 U.S.C. §§ 102, 103, and 112
Слайд 6Exceptions to 35 U.S.C. § 101
The U.S. Supreme Court has interpreted statutory categories
Exceptions to 35 U.S.C. § 101
The U.S. Supreme Court has interpreted statutory categories
Laws of nature, natural phenomena, and abstract ideas
Typically cover the basic tools and fundamental building blocks of scientific and technological work, such as scientific principles, naturally occurring phenomena, mental processes, and mathematical algorithms of abstract concepts
Called "Judicial Exceptions": subject matter U.S. courts have found to be outside of, or exceptions to, the four statutory categories of patent-eligible inventions
Reason: monopolizing these tools by granting patent rights may impede innovation, rather than promote innovation ("preemption")
Слайд 7Exceptions to 35 U.S.C. § 101
Long-standing exceptions
"While a scientific truth, or the mathematical
Exceptions to 35 U.S.C. § 101
Long-standing exceptions
"While a scientific truth, or the mathematical
Mackay Co. v. Radio Corp., 306 U.S. 86 (1939)
"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work."
Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
Слайд 8Groundwork Triumvirate
Gottschalk v. Benson, 409 U.S. 63 (1972)
Method for converting binary-coded decimal (BCD)
Groundwork Triumvirate
Gottschalk v. Benson, 409 U.S. 63 (1972)
Method for converting binary-coded decimal (BCD)
Ineligible exception: mathematical expression (algorithm) that would pre-empt use of the BCD concept
Parker v. Flook, 437 U.S. 584 (1978)
Method for computing "alarm limits" in catalytic conversion
Ineligible exception: patent directed to the "alarm limits" themselves
Diamond v. Diehr, 450 U.S. 175 (1981)
Process for molding raw, uncured synthetic rubber into cured precision products; claim recites the Arrhenius equation for reaction time during the cure
Eligible: "an application of a law of nature or mathematical formula to a known structure or process"
Слайд 9One Test for Subject Matter-Eligibility
State Street Bank and Trust Company v. Signature Financial
One Test for Subject Matter-Eligibility
State Street Bank and Trust Company v. Signature Financial
"…the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces 'a useful, concrete and tangible result'…"
Useful: utility
Concrete: repeatable, same result
Tangible: practical application of judicial exception to produce a real-world result
Слайд 10Another Test for Subject Matter-Eligibility
Bilski v. Kappos, 561 U.S. 593 (2010)
Risk mitigation /
Another Test for Subject Matter-Eligibility
Bilski v. Kappos, 561 U.S. 593 (2010)
Risk mitigation /
Machine-or-Transformation Test
Tied to a "particular machine" or apparatus; or
Transforms a particular article into a different state or thing
Not the sole test for patent eligibility under 35 U.S.C. § 101
Useful and important clue to determining patent-eligible subject matter
Слайд 11Mayo
Mayo Collaborative Srvcs. v. Prometheus Labs, Inc., 132 S. Ct. 1289 (2012)
Methods of
Mayo
Mayo Collaborative Srvcs. v. Prometheus Labs, Inc., 132 S. Ct. 1289 (2012)
Methods of
1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.
Слайд 12Subject Matter-Eligibility Principles
"'The Court has recognized, however, that too broad an interpretation of
Subject Matter-Eligibility Principles
"'The Court has recognized, however, that too broad an interpretation of
"to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words 'apply it.'" See, e.g., Benson, supra, at 71–72.
Слайд 13Subject Matter-Eligibility Principles
"Those cases warn us against interpreting patent statutes in ways that
Subject Matter-Eligibility Principles
"Those cases warn us against interpreting patent statutes in ways that
Слайд 14Mayo Framework
Step 1: Identify the exception
Law of nature: relationship between concentration of metabolites
Mayo Framework
Step 1: Identify the exception
Law of nature: relationship between concentration of metabolites
Step 2: "What else is there in the claims before us?"
1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.
Слайд 15Alice
Alice v. CLS, 134 S. Ct. 2347 (2014)
Computerized scheme for mitigating "settlement risk"
Alice
Alice v. CLS, 134 S. Ct. 2347 (2014)
Computerized scheme for mitigating "settlement risk"
33. A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:
(a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;
(b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;
(c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party's shadow credit record or shadow debit record, allowing only these transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order, and
(d) at the end-of-day, the supervisory institution instructing on[e] of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions.
Слайд 16Subject Matter-Eligibility Principles
'"We have long held that this provision contains an important implicit
Subject Matter-Eligibility Principles
'"We have long held that this provision contains an important implicit
"We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611–612 (upholding the patent "would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea"). Laws of nature, natural phenomena, and abstract ideas are " '"the basic tools of scientific and technological work."'" Myriad, supra, at ___ (slip op., at 11). "[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it," thereby thwarting the primary object of the patent laws. Mayo, supra, at ___ (slip op., at 2); see U. S. Const., Art. I, § 8, cl. 8 (Congress "shall have Power . . . To promote the Progress of Science and useful Arts"). We have "repeatedly emphasized this . . . concern that patent law not inhibit further discovery by improperly tying up the future use of " these building blocks of human ingenuity. Mayo, supra, at ___ (slip op., at 16) (citing Morse, supra, at 113)."
Слайд 17Warning
"At the same time, we tread carefully in construing this exclusionary principle lest
Warning
"At the same time, we tread carefully in construing this exclusionary principle lest
Слайд 18Alice Framework
"Accordingly, in applying the §101 exception, we must distinguish between patents that
Alice Framework
"Accordingly, in applying the §101 exception, we must distinguish between patents that
Step A: Are the claims directed to a patent-ineligible concept?; and
Step B: Do the claims recite elements sufficient to transform the abstract idea into patent-eligible subject matter?
Sufficient to ensure the patent amounts to more than a patent on the idea itself
Supply a "new and useful" application of the idea
Improvement in a technology or technical field
Слайд 19Step A
Are the claims directed to a patent-ineligible concept?
"In any event, we need
Step A
Are the claims directed to a patent-ineligible concept?
"In any event, we need
"I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description ["hard-core pornography"], and perhaps I could never succeed in intelligibly doing so. But I know it when I see it, and the motion picture involved in this case is not that."
Jacobellis v. Ohio, 378 U.S. 184, 197 (1964) (Stewart, J., concurring) (emphasis added)
Слайд 20Step B
Do the claims recite elements sufficient to transform the abstract idea into
Step B
Do the claims recite elements sufficient to transform the abstract idea into
"[w]e must examine the elements of the claim to determine whether it contains an 'inventive concept'"
Search for "additional features"
More than conventional steps (Mayo)
More than a general-purpose computer (Benson)
More than implementation of a principle, concept, or idea on a machine or in a specific technological environment (Flook, Bilski)
Improve existing technology (Diehr)
Implementing an abstract idea on a computer is not enough to transform that idea into patentable subject matter
Claims patent-ineligible because they (i) "do not, for example, purport to improve the functioning of the computer itself," (ii) "[n]or do they effect an improvement in any other technology or technical field." Alice, 134 S. Ct. at 2360.
Слайд 21Alice: Two-Part Test
Alice: Two-Part Test
Слайд 22Categories of Abstract Ideas
Mathematical algorithms or mental steps (see Gottschalk v. Benson, 409
Categories of Abstract Ideas
Mathematical algorithms or mental steps (see Gottschalk v. Benson, 409
An "algorithm" is defined by the Supreme Court as "[a] procedure for solving a given type of mathematical problem" (see Benson, 409 U.S. at 65);
"Mental steps" that "can be performed [solely] in the human mind, or by a human using a pen and paper" (see CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (stating that "[m]ethods which can be performed entirely in the human mind are unpatentable because . . . methods which can be performed entirely in the human mind are the types of method that embody the 'basic tools of scientific and technological work'"); and
Mathematical formulas — a subset of "mathematical algorithm[s]" (see Parker v. Flook, 437 U.S. 584 (1978)).
Слайд 23Categories of Abstract Ideas
"[F]undamental economic practice[s] long prevalent [i.e., preexisting] in our system
Categories of Abstract Ideas
"[F]undamental economic practice[s] long prevalent [i.e., preexisting] in our system
Examples of "fundamental economic practices" include (1) "risk hedging" in Bilski, and (2) "intermediated settlement" in Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347, 2356 (2014);
Business practices or methods of organizing human activity — a subset of Bilski's "abstract idea" created by the Supreme Court in Alice; and
"Covered business method patent" under Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA") § 18(d)(1): patent that "claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions." 37 C.F.R. § 42.301(a).
Слайд 24Questions Remain: Step A
What is an "abstract idea"?
Digital signal processing, video encoding, etc.
RecogniCorp,
Questions Remain: Step A
What is an "abstract idea"?
Digital signal processing, video encoding, etc.
RecogniCorp,
Building block of human ingenuity?
"the basic tools of scientific and technological work" and (2) "part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none" (Benson, 409 U.S. at 67)
Alice provides examples, but no definition
(1) fundamental economic practices ("the concept of intermediated settlement is 'a fundamental economic practice long prevalent in our system of commerce'")
(2) organizing human activity ("hedging is a longstanding commercial practice") (Bilski)
(3) mathematical formulas
When are claims "directed to" an abstract idea?
Слайд 25Questions Remain: Step B
Does the search for "significantly more" require determination of novelty?
"[w]e
Questions Remain: Step B
Does the search for "significantly more" require determination of novelty?
"[w]e
"well-understood, routine, conventional activit[ies]"
Unconventional limitations, which might not be novel or which might be obvious
Avoid mere computer implementations of abstract concepts
Слайд 262. Statistics and Current Environment
2. Statistics and Current Environment
Слайд 27Uncertainty
"The line between a patentable process and an unpatentable principle is not always
Uncertainty
"The line between a patentable process and an unpatentable principle is not always
Tilghman v. Proctor, 102 U.S. 707 (1880)
"The "line between a patentable 'process' and an unpatentable principle [i.e., 'abstract idea'] is not always clear."
Flook, 437 U.S. at 589
"I concede that the category of nonpatentable '[p]henomena of nature,' like the categories of 'mental processes' and 'abstract intellectual concepts,' is not easy to define. . . After all, many patentable inventions rest upon its inventor's knowledge of natural phenomena; many 'process' patents seek to make abstract intellectual concepts workably concrete; and all conscious human action involves a mental process."
Lab. Corp. of Am. Holdings v. Metabolite Laboratories, Inc., 548 U.S. 124, 134 (2006) (Breyer, J., dissenting))
"The Court . . . never provides a satisfying account of what constitutes an unpatentable abstract idea."
Bilski, 561 U.S. at 621 (Stevens, J., concurring)
Слайд 28Predicted Unpatentability
"If all of these claims, including the system claims, are patent-ineligible, this
Predicted Unpatentability
"If all of these claims, including the system claims, are patent-ineligible, this
CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1292-313 (Fed. Cir. 2013) (Moore, dissenting)
Слайд 29Patent Eligibility at the Federal Circuit
Post-Alice: 71 rulings on patent-eligibility
Digitech Planet Bingo †
Patent Eligibility at the Federal Circuit
Post-Alice: 71 rulings on patent-eligibility
Digitech Planet Bingo †
Content Extraction Allvoice †
OIP Tech. Sequenom Internet Patents
IV v. Cap. One Bank Versata *
Vehicle Intelligence †
Mortgage Grader In re Smith * Genetic Tech.
In re Brown * †
Enfish
TLI Comms.
BASCOM
Rapid Lit. Mgmt. Shortridge † Lendingtree † Electric Power Group In re Chorna * †
TDE Petroleum †
McRO
Thales Visionix In re Salwan * † Clarilogic † Coffelt †
Mentor Graphics West View Research † RecogniCorp Easyweb †
Credit Acceptance Cleveland Clinic Prism Tech. † Audatex †
Visual Memory
Return Mail
Affinity Labs. v. Amazon Affinity Labs. v. DirecTV IV v. Symantec FairWarning
Synopsys Amdocs Tranxition † Ameranth *
Trading Tech. v. CQG † Evolutionary Intel. † Smartflash †
IV v. Cap. One Financial IV v. Erie Indemnity I
Secured Mail Smart Systems Two-Way Media
IV v. Erie Indemnity II † Inventor Holdings Finjan v. Blue Coat Core Wireless
Move v. Real Estate Alliance †
Berkheimer v. HP Ziuli v. Google LLC * † Aatrix Software
Automated Tracking Sol. †
Exergen Corp. v. Kaz USA †
IV v. Symantec Corp. †
Vanda Pharmaceuticals
SAP America (May 15, 2018)
Bold text indicates decision identifying claims as eligible
Green text indicates decision identifying natural product, natural phenomenon, or law of nature
* Case appealed from USPTO † Non-precedential decision
Source: Chart of subject matter eligibility court decisions (updated May 3, 2018) https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility
(Rule 36 affirmances not shown)
Слайд 30Patent Eligibility at the Federal Circuit
Patent Eligibility at the Federal Circuit
Слайд 31Patent Eligibility at the Federal Circuit
Only 9 (precedential) decisions (subject matter eligible)
Patent Eligibility at the Federal Circuit
Only 9 (precedential) decisions (subject matter eligible)
Слайд 32Patent Eligibility at the PTAB
Source: Anticipat Research
Patent Eligibility at the PTAB
Source: Anticipat Research
Слайд 33Patent Eligibility at the PTAB
Consistent decline of reversals
Source: Anticipat Research
Patent Eligibility at the PTAB
Consistent decline of reversals
Source: Anticipat Research
Слайд 34Patent Eligibility at the PTAB
Very sharp decline of reversals
Source: BilskiBlog
Patent Eligibility at the PTAB
Very sharp decline of reversals
Source: BilskiBlog
Слайд 353. Eligibility Decisions
3. Eligibility Decisions
Слайд 36Post-Alice Decisions (Eligible, Software)
Step A (abstract idea)
Enfish, LLC v. Microsoft Corp., 822 F.3d
Post-Alice Decisions (Eligible, Software)
Step A (abstract idea)
Enfish, LLC v. Microsoft Corp., 822 F.3d
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016)
Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017)
Visual Memory LLC v. Nvidia Corp., No. 2016-2254, 2017 WL 3481288 (Fed. Cir. 2017)
Trading Technologies International, Inc., v. CQG, Inc., No. 2015-1616, 2017 WL 192716 (Fed. Cir. Jan. 2017) (non-precedential)
Finjan, Inc. v. Blue Coat Systems, Inc., No. 2016-2520, 2018 WL 341882 (Fed. Cir. 2018)
Core Wireless Licensing v. LG Elecs., Inc., No. 2016-2684, 2017-1922 (Fed. Cir. 2018)
Step B (significantly more)
DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014)
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)
Amdocs (Israel) Limited, v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)
Слайд 37Step 2A: No Abstract Idea (Enfish)
Logical model for computer database
Model of data for
Step 2A: No Abstract Idea (Enfish)
Logical model for computer database
Model of data for
Includes all data entities in a single table, with column definitions provided by rows in that same table
Prior art relational model: each entity (i.e., each type of thing) that is modeled is provided in a separate table
Technological Improvement / Improved Computer Function
"a specific improvement to the way the computers operate, embodied in the self-referential table," i.e., "an improvement of an existing technology [that] is bolstered by the specification's teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirement"
Enfish, 822 F.3d at 1335
Слайд 38Step 2A: No Abstract Idea (McRO)
Automating part of a preexisting 3-D animation to
Step 2A: No Abstract Idea (McRO)
Automating part of a preexisting 3-D animation to
Claims recite evaluating data concerning the animation images against certain rules to generate data used for lip synchronization
Specification describes problems with the prior art that performed the lip synchronization manually
Technological Improvement / Improved Computer Function
(i) specific limitations regarding a set of rules and, when viewed as a whole, are directed to (ii) a "technological improvement over the existing, manual 3–D animation techniques" that uses "limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice" (McRO, 837 F.3d at 1315)
Слайд 39Step 2A: No Abstract Idea (Thales)
Directed to an inertial tracking system for tracking
Step 2A: No Abstract Idea (Thales)
Directed to an inertial tracking system for tracking
Claims recite inertial sensors directly measure the gravitational field in the platform frame
Specification describes problem that inertial sensors measured motion relative to earth, and the error-correcting sensors on the tracked object measured position relative to the moving platform
Technological Improvement / Improved Computer Function
Thales: "systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame"
Thales, 850 F.3d at 1349
Слайд 40Step 2A: No Abstract Idea (Visual Memory)
Programmable operational characteristics of memory caches tailored
Step 2A: No Abstract Idea (Visual Memory)
Programmable operational characteristics of memory caches tailored
Specification describes the prior art problem: "the need to design a separate memory system for each type of processor, which proved to be costly and inefficient"
Specification describes the improvement: selectively defining functions of caches based on the processor type to "achieve or exceed the performance of a system utilizing a cache many times larger than the cumulative size of the subject caches"
Technological Improvement / Improved Computer Function
"a technological improvement: an enhanced computer memory system"
Visual Memory, No. 2016-2254, 2017 WL 3481288 at *4
Слайд 41Step 2A: No Abstract Idea (Trading Techs)
User interface for electronic trading of stock,
Step 2A: No Abstract Idea (Trading Techs)
User interface for electronic trading of stock,
Specification describes problem: "[W]hen a trader attempts to enter an order at a particular price, but misses the price because the market moved before the order was entered and executed. It also sometimes occurred that trades were executed at different prices than intended, due to rapid market movement."
Specification describes solution: "[B]id and asked prices are displayed dynamically along the static display, and the system pairs orders with the static display of prices and prevents order entry at a changed price."
Technological Improvement / Improved Function
"solves problems of prior graphical user interface devices … in the context of computerized trading [ ] relating to speed, accuracy and usability … improvements in existing graphical user interface devices that have no 'pre-electronic trading analog'"
Trading Techs., No. 2015-1616, 2017 WL 192716 at *2
Слайд 42Step 2A: No Abstract Idea (Finjan)
Virus scanning: providing security by scanning a downloadable
Step 2A: No Abstract Idea (Finjan)
Virus scanning: providing security by scanning a downloadable
Problem: code-matching virus scans limited to recognizing previously identified viruses by comparison to database
Solution: behavior-based scans protect against unknown viruses, and "obfuscated" code (cosmetically modified viruses) to enable more flexible and nuanced virus filtering by comparison between a local security policy and the attached security profile
Technological Improvement / Improved Computer Function
"a new kind of file that enables a computer security system to do things it could not do before … a non-abstract improvement in computer functionality, rather than the abstract idea of computer security"
Finjan, No. 2016-2520, 2018 WL 341882, slip op. at 8
Слайд 43Step 2A: No Abstract Idea (Core Wireless)
Improved user interface for summarizing and presenting
Step 2A: No Abstract Idea (Core Wireless)
Improved user interface for summarizing and presenting
Improved efficiency by bringing together "a limited list of common functions and commonly accessed stored data," accessed from the main menu; enables to see most relevant data or functions "without actually opening the application" and "saves the user from navigating to the required application, opening [ ], and then navigating within that application to enable [ ] data of interest to be seen or a function [ ] to be activated"
Technological Improvement / Improved Computer Function
"an improved user interface for computing devices, not the abstract idea of an index … a particular manner of summarizing and presenting information in electronic devices … a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer … an improvement in the functioning of computers, particularly those with small screens"
Core Wireless, No. 2016-2684, 2017-1922, slip op at 9-10
Слайд 44Step 2B: Significantly More (DDR)
Generating a composite web page of elements from a
Step 2B: Significantly More (DDR)
Generating a composite web page of elements from a
Solves the problem of user being directed away from host webpage when clicking on a link for a merchant's product
Host webpage can retain visitor traffic by displaying product information by correlating host website with commerce object
Technical Solution to a Technical Problem
Claims (i) do not merely recite "the performance of some business practice known from the pre-Internet world" previously disclosed in Bilski and Alice, and instead (ii) provide a technical solution to a technical problem unique to the Internet, i.e., a "solution [] necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks"
DDR, 773 F.3d at 1257
Слайд 45Step 2B: Significantly More (Bascom)
Individually customized filtering tool for Internet browsing at a
Step 2B: Significantly More (Bascom)
Individually customized filtering tool for Internet browsing at a
Applies the filtering mechanism associated with the particular user to the requested website to determine whether the user associated with that request is allowed access to the website
Directed to filtering content on the Internet (Step 2A)
Technical Solution to a Technical Problem
The "claims, when considered as "an ordered combination," "transform the abstract idea of filtering content into a particular, practical application of that idea," i.e., the "installation of a filtering tool at a specific location, remote from end-users, with customizable filtering features specific to each end user"
Bascom, 827 F.3d at 1350
Слайд 46Step 2B: Significantly More (Amdocs)
Collection, merging, reporting of data from components arrayed in
Step 2B: Significantly More (Amdocs)
Collection, merging, reporting of data from components arrayed in
Specification describes billing problem faced by ISPs, and solution of reduced data flows and the possibility of smaller databases
"Importantly, the distributed data gathering, filtering and enhancements performed in the system 100 enables load distribution. Granular data can reside in the peripheries of the system 100, close to the information sources. This helps avoids [(sic)] reduce congestion in network bottlenecks but still allows the data to be accessible from a central location. In previous systems, all the network information flows to one location, making it very difficult to keep up with the massive record flows from the network devices and requiring huge databases."
Technical Solution to a Technical Problem
Amdocs: an "inventive concept" is found because, like DDR and Bascom, Amdocs' claims "entail[] an unconventional solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases)" and "improve the performance of the system itself"
Amdocs, 841 F.3d at 1302
Слайд 47Observations
Clear identification of problem faced by prior art (Step 2A, 2B)
Clear identification of
Observations
Clear identification of problem faced by prior art (Step 2A, 2B)
Clear identification of
Strong identification of technology (Step 2A, 2B)
Practical application of the solution or improvement to produce the benefit, not mere claimed recitation of the idea (Step 2B)
Technical solution to a technical problem (using a combination of conventional elements) (Step 2B)
Слайд 48Composition of CAFC Panels
Not listed: Prost, Lourie, Clevenger, Schall, Bryson
Composition of CAFC Panels
Not listed: Prost, Lourie, Clevenger, Schall, Bryson
Слайд 494. Proposals and USPTO Guidance
4. Proposals and USPTO Guidance
Слайд 50Big Mess?
Will Congress act to clarify 35 U.S.C. § 101?
Will the Federal Circuit
Big Mess?
Will Congress act to clarify 35 U.S.C. § 101?
Will the Federal Circuit
No en banc decisions pending
Will the Supreme Court clarify 35 U.S.C. § 101?
Is Alice clear?
Is Alice merely being misapplied by the Federal Circuit?
USPTO § 101 Guidelines
Can patentees rely upon the USPTO?
District Court
Rule 12(b)(6) and Rule 12(c) motions continue
Jurisdiction dependent
Delaware, Texas, and Virginia
Слайд 51Intellectual Property Owners (IPO) Proposal
§101(a) Eligible Subject Matter
Whoever invents or discovers, any useful
Intellectual Property Owners (IPO) Proposal
§101(a) Eligible Subject Matter
Whoever invents or discovers, any useful
§101(b) Sole Exception to Subject Matter Eligibility
A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.
§101(c) Sole Eligibility Standard
The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention's inventive concept.
Слайд 52American Bar Association (ABA) Proposal
§101(a) Eligible Subject Matter
Whoever invents or discovers any useful
American Bar Association (ABA) Proposal
§101(a) Eligible Subject Matter
Whoever invents or discovers any useful
§101(b) Exception
A claim for a useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may be denied eligibility under this section 101 on the ground that the scope of the exclusive rights under such a claim would preempt the use by others of all practical applications of a law of nature, natural phenomenon, or abstract idea. Patent eligibility under this section shall not be negated when a practical application of a law of nature, natural phenomenon, or abstract idea is the subject matter of the claims upon consideration of those claims as a whole, whereby each and every limitation of the claims shall be fully considered and none ignored. Eligibility under this section 101 shall not be negated based on considerations of patentability as defined in Sections 102, 103 and 112, including whether the claims in whole or in part define an inventive concept.
Слайд 53American Intellectual Property Law Association (AIPLA) Proposal
35 U.S.C. §101—Inventions Patentable
§101(a) Eligible Subject Matter
Whoever
American Intellectual Property Law Association (AIPLA) Proposal
35 U.S.C. §101—Inventions Patentable
§101(a) Eligible Subject Matter
Whoever
§101(b) Sole Exceptions to Subject Matter Eligibility
A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.
§101(c) Sole Eligibility Standard
The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.
Слайд 54USPTO Guidance
Numerous Memorandum
April 19, 2018 (Berkheimer)
April 2, 2018 (Finjan, Core Wireless)
November 2, 2016
USPTO Guidance
Numerous Memorandum
April 19, 2018 (Berkheimer)
April 2, 2018 (Finjan, Core Wireless)
November 2, 2016
July 14, 2016 (Rapid Litigation, Sequenom)
May 19, 2016 (Enfish, TLI)
December 16, 2014
June 25, 2014 (Alice)
Initially unclear due to insufficient guidance from Mayo and Alice
Inconsistently application throughout USPTO
Courts not bound by USPTO Guidance
USPTO employs different claim construction standard
Слайд 55District Courts
Rule 12(b)(6) (failure to state complaint) and Rule 12(c) (judgement on pleadings)
District Courts
Rule 12(b)(6) (failure to state complaint) and Rule 12(c) (judgement on pleadings)
Remain popular
Claim construction may not be required
Texas (TX) denies most
Delaware (DE) does not grant
Virginia (ED VA) grants many motions
Venue dependent
More cases being filed in Delaware than Texas (TC Heartland)
Слайд 565. Conclusions
5. Conclusions
Слайд 57Conclusions
Subject-matter eligibility is unsettled
No clear rule for determining whether a claim satisfies 35
Conclusions
Subject-matter eligibility is unsettled
No clear rule for determining whether a claim satisfies 35
"However, a search for a single test or definition in the decided cases concerning § 101 from this court, and indeed from the Supreme Court, reveals that at present there is no such single, succinct, usable definition or test."
Amdocs (Israel) Limited, v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)
No potential solution to uncertainty
Federal Circuit, District Courts, Supreme Court, Congress
USPTO most willing to address 35 U.S.C. § 101
Current landscape does not favor patentees
Uncertainty and unpredictability
Слайд 58Questions?
Questions?