Statutory Subject Matter: Legal Analyses

Judge Plager, in dissent, criticizes Alice (posted 07/23/18)

In Interval Licensing LLC v. AOL, Apple, Google, Yahoo!, Judge Plager criticizes the Supreme Court's caselaw on abstractness, a judicially-created exception to the broad scope of §101 permissive language as to what types of inventions are patentable. This criticism came in the form of a dissent from our court's continued application of this incoherent body of doctrine.“ Pleger lists all the reasons Alice-Mayo “abstractness” test is a failure and all the organizations and prominent individuals critical of it.

Notable quotes from the dissent-in-part:

  • Today we are called upon to decide the fate of some inventor's efforts, whether for good or ill, on the basis of criteria that provide no insight into whether the invention is good or ill. Given the current state of the law regarding what inventions are patent eligible, and in light of our governing precedents, I concur in the carefully reasoned opinion by my colleagues in the majority, even though the state of the law is such as to give little confidence that the outcome is necessarily correct. The law, as I shall explain, renders it near impossible to know with any certainty whether the invention is or is not patent eligible. Accordingly, I also respectfully dissent from our court's continued application of this incoherent body of doctrine.
  • [A] search for a definition of “abstract ideas” in the cases on § 101 from the Supreme Court, as well as from this court, reveals that there is no single, succinct, usable definition anywhere available. [. . .] As a fundamental policy, a legal term such as “abstract ideas,” if the exclusionary standards of § 101 are to function as a valid rule of law, must provide concise guidance for the future.
  • There is almost universal criticism among commentators and academicians that the “abstract idea” idea has created havoc in the patent law.
  • The emperor clearly has no clothes; we need not wait for our children to tell us this.

Fed. Cir. says Alice's "improvement" must appear within claims (posted 07/09/18)

1. A method of archiving an item in a computer processing system comprising:

presenting the item to a parser;

parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;

evaluating the object structures in accordance with object structures previously stored in an archive;

presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.

A quick note here on Berkheimer v. HP Inc. 1), which appears to be affecting examination of §101 susceptible patents. Specifically, from this author's personal experience, examiners are increasingly insisting, based on Berkheimer, that the claims include language directed specifically to the purported “improvement” the software invention brings to the computer's functionality.

At issue in Berkheimer was whether [t]he improvements in the specification, to the extent they are captured in the claims, create a factual dispute regarding whether the invention describes a well-understood, routine, and conventional activities.” The court concluded that it “must analyze the asserted claims and determine whether they capture these improvements” (citations omitted).

Although the parties disputed whether the improvements were captured in the claims, the court did not articulate how to resolve this question. With respect to claim 1, the court concluded that “Claim 1 recites a method of archiving including parsing data, analyzing and comparing the data to previously stored data, and presenting the data for reconciliation when there is a variance. It does not include limitations which incorporate eliminating redundancy of stored object structures or effecting a one-to-many change of linked documents within an archive [i.e., the alleged improvements].” So the issue remains: does Berkheimer require explicitly stating in the claim what the improvement is (as some Examiners seem to believe) or simply some features of the invention that enable or bring about the improvement?

Federal Circuit § 101 confusion (posted 06/13/18)

Orrick posted an interesting commentary (cached) on a recent Federal Circuit denial for En Banc review in both Aatrix Software Inc. v. Green Shades Software, Inc. and Berkheimer v. HP Inc. The denial is important because it includes both concurring and dissenting opinions that go to the heart of the Alice framework for evaluating subject matter as being non-statutory under §101.

Summarizing points raised in the Orrick article:

  • Judge Lourie, joined by Judge Newman, called for a Congressional fix to Alice, suggesting that step 2 of the Alice analysis is not needed, and that the problem is that the inquiry into whether the subject matter is “well-understood, routine, or conventional” delves into questions already handled by §§ 102, 103.
  • Judge Rayna dissented from the court's denial because the Federal Circuit wrongly treated the § 101 analysis as one of fact and not of law, futher stating that the analysis can be conducted without referring to extrinsic evidence (outside the four corners of the patent).

USPTO issues new memo on §101 rejections (posted 04/30/18)

On April 19, the Patent Office issued a new memo providing guidance to Examiners making Alice rejections. In summary:

  • The decision in Berkheimer v. HP Inc. 2), while focused on Summary Judgment, “informs the inquiry into whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity.”
  • Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. 3)
  • MPEP §2106.05(d)(I) provides that an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry.
  • The analysis as to whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. § 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification.</hi>
    • Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.
  • The Memorandum includes revisions to examining procedures set forth in § MPEP § 2106.07(a) and (b).

Patent invalidations after Alice (01/13/15)

The Bilskiblog by Fendwick & West is reporting on invalidations citing Alice by the Federal Circuit and district courts:

Federal Circuit
Patents Claims
Not invalid 1 1 27
Invalid 6 12 344

District Circuit
Patents Claims
Not invalid 11 20 535
Invalid 29 56 1488

At the Patent Office's Technology Center 3600, which covers finance, banking, health care, insurance, incentive programs and couponing, pricing, and business administration, “the allowance and issuance rate . . . has dramatically plummeted from about 47% pre-Alice to about 3.6% post-Alice.”

Writing Bilskiblog, author Robert R. Sachs further found:

“While business method patents (23) constituted the majority of the patents that were invalidated, the types of technologies ranged widely, including 3D computer animation (2), digital image management (7), document management (10), and medical records (2), database architecture (2), and networking (4). This suggests that the courts are aggressively expanding the zone of “abstract ideas” from the fundamental “building blocks” of “human ingenuity” that the Supreme Court has focused on in Alice, to just about any technological field.”

Sachs criticized the courts, led by the Federal Circuit, for ignoring or merely giving lip service preemption analysis, and relying on doctrines, such as the “mental steps” doctrine, which the Supreme Court never specifically endorsed.

  • Read the entire post
1) , 2)
881 F.3d 1360 (Fed. Cir. 2018)
Id. at 1369.

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