Is prior art relevant to determining patent-eligibility under 35 U.S.C. § 101, or isn’t it? In finding, on a motion for summary judgment, that claims drawn to “presenting information on a space-constrained display of a portable device” were patent-eligible, Judge Sparks of the Western District of Texas invited this question. In Versata Software, Inc. v. Zoho Corp., No. A-13-CA-00371-SS (W.D. Texas Oct. 26, 2015), the court stated that arguments that a patent “implements an idea using only conventional and well-known technologies” were “best submitted to the Court in conjunction with the well-established body of law addressing the novelty and non-obviousness of patents.” U.S. Patent Number 7,092,740 recites claims based on the “discovery” that “a high-density information presentation may be provided on a space-constrained display device by associating individual display indications with user-definable states.” According to the court, some claims “cover displays combining graphical and textual representations while other claims cover displaying the data in two-dimensional arrays.” The court stated the now-familiar test for Section 101 patent-eligibility under Alice Corp. v. CLS Bank Int’l.: (1) are the claims directed to a patent-ineligible concept such as an abstract idea and, (2) if so, do “additional elements of each claim represent an “inventive… Read More »How Does Patent-Eligibility Relate to Novelty and Non-obviousness?
Forget about whether you are a software patent lover or hater. To me, the worst thing about the current mess in the law of patent-eligibility under 35 U.S.C. § 101 is that practitioners are left unable to counsel our clients with regard to the likelihood of patent-eligibility of a vast swath of software patent claims, whether in pending patent applications, issued patents, or contemplated filings. Because I am coming to the view that the only way to understand how Mayo and Alice will be applied is by considering examples, I recommend this recent post on the PatentlyO blog, covering three recent PTAB decisions holding claims of three patent applications patent-ineligible under 35 U.S.C. § 101. Two of these three cases involved claims directed to computer-implemented inventions. Yet I suspect that those of us who have read a lot of Alice cases will not be surprised at these results. Akin to Justice Potter Stewart (in a different era and in a different context), in many cases we know patent-ineligibility when we see it. The Mayo/Alice test may seem simple and straightforward: is there an abstract idea or law of nature without “significantly more”? Yet when faced with seemingly similar patent claims,… Read More »Patent-Eligibility Under Alice Is Best Understood by Example
A recent decision under 35 U.S.C. § 101 by Judge Robinson of the District of Delaware is notable for two things: (1) the invalidation of patent claims drawn to a technological environment, and (2) the frank acknowledgment of the frustrating murkiness of patent-eligibility law in the wake of Alice Corp. v. CLS Bank. Parus Holdings, Inc. v. Sallie Mae Bank, Civ. Nos. 14-1427-SLR, 14-1428-SLR, and 14-1429-SLR (Oct. 8, 2015). The opinion, or at least the below excerpts, is worth reading as we all grapple with the problem that “to recognize and articulate the requisite degree of specificity . . . that transforms an abstract idea into patent-eligible subject matter is a challenging task.” Claims of the patents-in-suit, U.S. Patent Nos. 8,098,600; 8,843,120; 8,838,074; and 8,843,141, a chain of continuations based on a common specification, were drawn to “a unified messaging service which will be accessible from any standard communication device (telephone, computer or [I]nternet), and will give the user intuitive voice command of personal, professional and public information.” The defendants characterized the representative claim is focusing “on the automated tasks of (1) receiving messages via a phone or Internet connection and then transmitting those messages to a subscriber by phone… Read More »Technological Environment Will Not Save Patent-Eligibility Under Alice
A recent decision by the Patent Trial and Appeal Board (PTAB) has sustained an Examiner’s rejection under 35 U.S.C. § 101 with the sole explanation that the rejected claim was “drawn to software per se.” In re Piepienbrink et al., Appeal 2013-000045, Application 11/963,923 (Sept. 15, 2015). The independent claims at issue were “directed to communications networks and a unified storefront.” Here is the extent of the PTAB’s analysis: The Examiner has rejected claims 1–12 under 35 U.S.C. § 101 as being directed to software per se (Ans. 5). In contrast, the Appellants have argued that this rejection is improper (Appeal Br. 10, Reply Br. 2). We agree with the Examiner. Here, the elements of claim 1 for example, are drawn to an “asset database,” “search engine,” “recommendation engine,” and “advertisement module.” Here, the cited database, engines, and modules in the claim can be drawn to software per se. The rejection of claim 1–12 is sustained. I have seen examiners reject claims based on the allegation that they were drawn to “software per se.” I have never known what this meant, and I have never gotten so far with such a rejection as to appeal it. Certainly, no court has… Read More »Is “Software Per Se” Not Patent-Eligible?
A court granted a motion to dismiss under FRCP 12(b)(6) where claim construction was not needed to determine that claims of three patents were invalid under 35 U.S.C. § 101 based on the two-part Alice / Mayo patent-eligibility test. Intellectual Ventures I LLC v. Erie Indemnity Company, Nos. 1: 14-cv-00220, 2:14-cv-01130 and 2:14-cv-01131 (W.D. Penn. Sept. 25, 2015). What follows is a very brief summary of a lengthy opinion that addressed a standing issue before providing a lengthy excursus on Section 101 law before and after Alice Corp. v. CLS Bank, and finally addressing the patent-eligibility of three patents in turn. U.S. Patent No. 6,519,581 was entitled “Collection of Information Regarding a Device or a User of a Device Across a Communication Link.” Its claims amounted to “a method for performing the abstract idea of gathering, storing, and acting on data based on predetermined rules,” and “using mathematical formulas and code sequences do not transform it into patent-eligible subject matter.” U.S. Patent No. 6,510,434 was entitled “System and Method for Retrieving Information From a Database Using an Index of XML Tags and Metafiles.” Its claims were “directed to creating an index and using it to search for and retrieve data,… Read More »Data Management Claims Held Patent-Ineligible
The Federal Circuit’s most recent pronouncement on functional software patent claims can only reinforce drafters’ concerns about claim language being construed as a means-plus-function recitation. In Media Rights Technologies, Inc. v. Capital One Financial Corp., No. 2014-1218 (Fed. Cir. Sept. 4, 2015), the court held that, under 35 U.S.C. § 112, ¶ 6, the term “compliance mechanism” was a means-plus function claim term. All claims of U.S. Patent No. 7,316,033 were held invalid because the court found that the patent specification failed to disclose sufficient structure for this claim term. The ’033 Patent “is generally directed to . . . the prevention of unauthorized recording of electronic media.” Claim 1, considered as representative, recited a “compliance mechanism,” as in, for example, “[a]ctivating a compliance mechanism in response to receiving media content by a client system . . . .” The District Court had determined that the recitation of the “compliance mechanism,” as well as recitation of a “custom media device,” made the claims “invalid for indefiniteness.” While the parties agreed that the claim language included recitations of functions for the “compliance mechanism,” they disputed whether the claims recited sufficient structure for performing the recited functions. Further, the patent owner did… Read More »Another Federal Circuit Lesson on Functional Software Claims
Two recent decisions by the Patent Trial and Appeal Board (PTAB), reported in detail on the “Patent Docs” blog, demonstrate the vagaries and unpredictability now intrinsic to preparing and prosecuting applications for software inventions. In the wake of Alice Corporation Pty. Ltd. v. CLS Bank International, it has been somewhat of a truism that claims directed solely to processing data in a computer will not survive a patent-eligibility challenge at the USPTO (or, for that matter in U.S. District Court). The claims of the two patent applications at issue in these recent PTAB decisions certainly fall into the category of “data-processing” claims. I must confess that, had I been asked to read these claims and then predict the outcome of the PTAB’s patent-eligibility determination, I would have predicted that rejections under 35 U.S.C. § 101 would have been sustained in both instances. Nonetheless, the PTAB reversed examiners’ Section 101 rejections. The linked-to blog post, which is well worth a thorough read, discusses some possible reasons for, and commonalities in, the PTAB’s decisions. These points are well-taken. But I think the larger point is from the school of Legal Realism. Different arbiters (USPTO examiners, PTAB judges, federal court judges) may render… Read More »The Difficulty of Predicting Section 101 Patent-Eligibility