Patent Docs: Patentable Subject Matter

Patentable Subject Matter

May 03, 2021

Supreme Court Requests View of Solicitor General in American Axle v. Neapco

By Kevin E. Noonan and Michael Borella --

Today, the Supreme Court requested the views of the Solicitor General in its consideration of American Axle's certiorari petition, which asks the Court to reverse the Federal Circuit's decision in American Axle & Mfg. v. Neapco Holdings LLC. That decision is noteworthy on several grounds. It is an application of the Federal Circuit's fractured jurisprudence on subject matter eligibility under 35 U.S.C. § 101 to a traditionally patent-eligible subject matter -- a method of producing shaft assemblies in a driveline system for trucks having reduced vibration during use. The case was the occasion for the full Court to illustrate the deep divisions among the Judges, with half of them voting to rehear the case en banc and the other half refusing to do so. Moreover, the decision not to grant rehearing en banc was accompanied by several opinions from various combinations of the Judges concurring or dissenting from the decision. And those opinions (as well as Judge Moore's dissent from the panel opinion) contained sharp rhetoric regarding not only the panel decision but the pattern and scope of the Court's attempts to consistently and coherently explicate the broad principles enunciated by the Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories and Alice Corp. v. CLS Bank International (which, to be fair, may itself have been a Herculean task).

It is foolhardy to speculate on why the Court asked these views, except noting that a sufficient number of the Justices felt it would be beneficial to their deliberations (regarding whether to grant certiorari) to hear what the Government has to say, in view of the Executive's role in granting patents. However, it is evidence that there are several consequences of this decision that should be borne in mind.

The most immediate consequence is that it gives the Biden administration a chance to provide the Court (and the rest of us) with insights into how the administration views patent law in general and eligibility in particular. This is an aspect that may very well be clearer depending on the administration's choice for U.S. Patent and Trademark Office Director, and how that individual responds to questions during confirmation hearing on these topics.

The time it takes to receive the SG's views (which can be a few to several months) will delay the Court's decision whether to grant certiorari until the October Term. This may result in the certiorari decision (and if granted the Court's decision on the merits) being decided by a differently constituted Court, should for example Justice Breyer decide (as has been suggested) to retire. A Justice Breyer retirement could be significant on this issue because he wrote the Mayo opinion (and before that a dissenting opinion on dismissal of certiorari in LabCorp v. Metabolite) and thus bears some responsibility for shaping the precedent the Federal Circuit (and district courts as well as the Office) have had such difficulty in consistently applying.

With regard to the certiorari decision itself, regardless of how the SG comes down on the question, if the Court does not grant it could indicate a continued unwillingness to address patent eligibility. If the Court does hear arguments on the merits, of course, at a minimum the Justices could provide clarity regarding the "super-enablement" requirement that at least one Federal Circuit judge believes the panel majority has injected into the eligibility question, and more broadly the Court could provide more clarity on the eligibility issue in reassessing (or at least restating more clearly) the metes and bounds of what is patent-eligible subject matter.

On the other hand, it is possible (although hopefully unlikely) that the Court could further muddy the issue, making eligibility even less predictable, more confusing, and less clear. While in the short term this would be unfortunate, it may raise the possibility that Congress would be able to enact meaningful reform of Section 101 -- something that certain legislators have been threatening for the last two years.

As has been the case for the past decade, a period during which the Court has denied certiorari on this issue more than fifty times, all we can do it wait.

Posted at 11:59 PM in Patentable Subject Matter, Supreme Court | Permalink | Comments (4)

April 20, 2021

Could Alice Be Used to Invalidate Diehr? Of Course It Could

By Michael Borella --

The Supreme Court's Alice Corp. v. CLS Bank Int'l case has been criticized for setting forth a patent eligibility analysis that is unworkably subjective. As a consequence, the validity of particular types of inventions, especially those in the software and business method space, can be uncertain until undergoing judicial review.

In a nutshell, Alice sets forth a two-part test to determine whether claims are directed to patent-eligible subject matter under 35 U.S.C. § 101. One must first decide whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle. While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

Having said that, the test in practice usually amounts to eyeballing the claim and determining whether some of its elements recite or involve a judicial exclusion. If so, the remaining elements are considered to determine whether they, individually or in combination, amount to significantly more. In other words, § 101 includes a poor-man's form of prior art analysis. Also, vague, non-specific or result-oriented elements have little or no weight in the "significantly more" inquiry. So, § 101 also incorporates a form of enablement.

Thus, the confusion. But don't take my word for it.

Judge Wu of the U.S. District Court for the Central District of California panned Alice for setting forth an "I know it when I see it" test. Judge Pfaelzer, a colleague of Judge Wu, wrote that the Supreme Court's patent eligibility cases "often confuse more than they clarify [and] appear to contradict each other on important issues." Judge Plager of the Federal Circuit wrote that the post-Alice § 101 inquiry "renders it near impossible to know with any certainty whether the invention is or is not patent eligible." Other Federal Circuit judges have expressed similar concern. Judge Newman recently stated that "[t]he court's rulings on patent eligibility have become so diverse and unpredictable as to have a serious effect on the innovation incentive in all fields of technology." Judge Moore is concerned that the § 101 analysis has become "enablement on steroids." Former Chief Judge of the Federal Circuit Paul Michel stated that Alice "create[d] a standard that is too vague, too subjective, too unpredictable and impossible to administer in a coherent consistent way in the patent office or in the district courts or even in the federal circuit."

I have previously written about how Alice can be stretched to find virtually any invention ineligible. These tongue-in-cheek pieces explain how Edison's light bulb, Bell's telephone, and public-key cryptography -- all considered to be groundbreaking inventions -- could be interpreted to fail the Alice test. Recently, my colleagues and I submitted an amicus brief to the Supreme Court in the American Axle v. Neapco case, making similar arguments.

But today, let's discuss something a little different. In 1981, the Supreme Court considered the patent-eligibility of a claim that had been rejected by the USPTO. The invention involved a computer-controlled process for curing rubber. The case was Diamond v. Diehr, and was for 30 years the gold standard on § 101 interpretation. The claim was found to be eligible and the Court set forth a few simple principles to guide the § 101 inquiry (claims must be considered as a whole and novelty of elements has no bearing on patent-eligibility). In 2014, the Alice Court did not overrule Diehr -- and in fact went to lengths trying to justify how it's holding was consistent with the aforementioned principles. But the justices left the rest of us scratching our collective heads, because Alice sure does seem to contradict Diehr in rather impactful ways.

So this begs the question: if one were to apply the Alice test to the claim of Diehr, could an argument be made that this claim is actually ineligible? Given the malleability of Alice, the outcome is most certainly "yes". Let's see how.

Claim 1 of Diehr is shown below, enumerated for reference.

A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
    (a)    providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,
    (b)    initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,
    (c)    constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,
    (d)    constantly providing the computer with the temperature (Z),
    (e)    repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is ln(v)=CZ+x where v is the total required cure time,
    (f)    repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and
    (g)    opening the press automatically when a said comparison indicates equivalence.

Under Alice, there would be little dispute that elements (a), (e), and (f) are mathematical in nature. Indeed, the Diehr Court essentially admitted as much.[1] Thus, the Diehr claim would be considered to be directed to an abstract idea under part one of Alice.

When applying part two of Alice, it is important to be cognizant of how the Federal Circuit has interpreted this portion of the test. Notably, elements that involve mere gathering of data are also considered to be abstract (see Electric Power Group, LLC v. Alstom S.A. and CyberSource Corp. v. Retail Decisions, Inc.). Thus, element (d) would actually be part of the abstract idea and would not qualify as an additional element.

This leaves elements (b), (c), and (g) as candidate additional elements. But as noted above, well-understood, routine, and conventional steps do not count in the "significantly more" calculus. Further, elements describing steps at a high level, lacking in detail, or in a results-oriented fashion without reciting particular means for achieving those results, also do not contribute "significantly more" under American Axle and many other Federal Circuit holdings.

Viewing these candidate elements individually, element (b) recites initiating a timer, element (c) recites measuring a temperature, and element (g) recites opening a press. All of these claimed steps would have been well-understood, routine, or conventional at the time of invention. For example, interval timers have been well-known in the art of computing for decades, temperature measurements have been common for hundreds of years, and opening a mold has been a conventional step in curing rubber since the advent of molds. Therefore, considered individually, elements (b), (c), and (g) do not provide "significantly more".

But what about their combination? This is where the Diehr court found eligibility in the claim, writing that "a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made." Alice, however, de-emphasized the role of such combinations of elements.

Writing for the Alice court, Justice Thomas stated, "[c]onsidered as an ordered combination, the computer components of petitioner's method add nothing . . . that is not already present when the steps are considered separately." He further explained, "[v]iewed as a whole, petitioner's method claims simply recite the [abstract idea] as performed by a generic computer." These conclusory statements have been relied on heavily by the courts and the USPTO to essentially eviscerate the language of Diehr.

To that point, one could argue that the claim of Diehr, when considered as an ordered combination, simply recites an abstract process performed by a generic computer, and that a series of abstract and conventional steps recited at a high level do not provide patent eligibility. Alternatively, one could argue that elements (b), (c), and (g) are so vague that all elements of the Diehr claim are abstract. And then, following the Federal Circuit's reasoning in Recognicorp, LLC v. Nintendo Co.,[2] find that adding more abstract elements to an abstract idea does not lift a claim over the § 101 hurdle.

So, yes, Alice could be used to invalidate Diehr. Such a notion should give one pause.

Hopefully, the Court will eventually take up another § 101 case and begin its opinion with, "Ok, fine, what we really meant was . . . ." Or Congress will step in to revert § 101 back to the language of the statute or at least that of Diehr. Until then, we will have uncertainty in the form of Schrodinger's Patents -- granted patents that are considered to be both valid and invalid until observed by a court.

[1] "[I]n several steps of the process a mathematical equation and a programmed digital computer are used."

[2] Reasoning that is questionable at best. But similar reasoning can be found in other Federal Circuit cases and boatloads of USPTO Office actions.

Posted at 11:59 PM in Patentable Subject Matter | Permalink | Comments (7)

March 28, 2021

In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)

By Kevin E. Noonan --

Exactly two weeks after affirming a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejecting claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101, in ex parte examination of claims to methods and related computing systems for genetic haplotyping in In re Board of Trustees of the Leland Stanford Junior University, the Federal Circuit again affirmed the PTAB's rejection of claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101, in ex parte examination of claims expressly directed to computerized methods for genetic haplotyping in In re Board of Trustees of the Leland Stanford Junior University, raising sure citation confusion in the future.

The claimed method is recited in representative claim 1:

1. A computerized method for inferring haplotype phase in a collection of unrelated individuals, comprising:
    receiving genotype data describing human genotypes for a plurality of individuals and storing the genotype data on a memory of a computer system;
    imputing an initial haplotype phase for each individual in the plurality of individuals based on a statistical model and storing the initial haplotype phase for each individual in the plurality of individuals on a computer system comprising a processor a memory [sic];
    building a data structure describing a Hidden Markov Model, where the data structure contains:
        a set of imputed haplotype phases comprising the imputed initial haplotype phases for each individual in the plurality of individuals;
        a set of parameters comprising local recombination rates and mutation rates;
    wherein any change to the set of imputed haplotype phases contained within the data structure automatically results in re-computation of the set of parameters comprising local recombination rates and mutation rates contained within the data structure;
    repeatedly randomly modifying at least one of the imputed initial haplotype phases in the set of imputed haplotype phases to automatically re-compute a new set of parameters comprising local recombination rates and mutation rates that are stored within the data structure;
    automatically replacing an imputed haplotype phase for an individual with a randomly modified haplotype phase within the data structure, when the new set of parameters indicate that the randomly modified haplotype phase is more likely than an existing imputed haplotype phase;
    extracting at least one final predicted haplotype phase from the data structure as a phased haplotype for an individual; and
    storing the at least one final predicted haplotype phase for the individual on a memory of a computer system.

As explained in the opinion, the claims are directed to "computerized statistical methods for determining haplotype phase, which is 'a process for determining the parent from whom alleles—i.e., versions of a gene—are inherited.'" The opinion further characterizes the invention as:

The written description of the '982 application explains that accurately estimating haplotype phase based on genotype data obtained through sequencing an individual's genome "plays pivotal roles in population and medical genetic studies." . . . The '982 application is directed to methods for inferring haplotype phase in a collection of unrelated individuals. . . . According to the written description, although high-throughput DNA sequencing methods provide genotype data for individuals, those methods do not provide haplotype information. . . . Though difficult, it is possible to infer haplotype phase, even without information about relatives, using statistics based algorithms. . . . Prior art methods for performing this analysis include PHASE, fastPHASE, and Beagle. . . . These methods involve using, among other things, a hidden Markov model ("HMM"), which is a statistical tool used in various applications to make probabilistic determinations of latent variables.

The opinion then describes embodiments of the claimed methods in further detail but the relevant characterization of these methods are that they involve "abstract mathematical algorithms and mental processes," the basis relied upon by the Examiner and affirmed by the PTAB. According to the Federal Circuit's opinion, the Examiner and the Board applied the two-step test set forth by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014), in making this determination. With regard to step 1 of the test, the Examiner and Board determined that all steps recited in claim 1 were "directed to . . . abstract ideas in the form of mathematical concepts, i.e., mathematical relationship, formulas, equations, and calculations" and specifically "an initial step of receiving genotype data, followed by the mathematical operations of building a data structure describing an HMM and randomly modifying at least one imputed haplotype to automatically recompute the HMM's parameters." Indeed, the Board concluded that claim 1 recited two abstract mental processes, viz., a step of "imputing an initial haplotype phase for each individual in the plurality of individuals based on a statistical model"; this step does not require computer implementation. The second abstract mental process, on the other hand, does require a computer, "automatically replacing an imputed haplotype phase with a randomly modified haplotype phase when the latter is more likely correct than the former." The remaining elements in the claim merely recite "generic steps of receiving and storing genotype data in a computer memory, extracting the predicted haplotype phase from the data structure, and storing it in a computer memory." The Board rejected Stanford's contention that these steps enhanced computer functionality and thus rendered the claim patent-eligible, in analogy to Enfish, LLC v. Microsoft Corp., based on lack of specific disclosure in the specification to support improved computer functionality. For similar reasons, the Board rejected Stanford's reliance on McRO, Inc. v. Bandai Namco Games America Inc. to satisfy the first prong of the Alice test.

Turning to step two of the Alice analysis, the Board concluded that the claims did not satisfy these requirements either, because the recited steps of receiving, storing, and extracting data were "well-known, routine, and conventional." Likewise, the Board was not convinced that the specific steps as recited in the claim satisfied this prong, because "although the abstract computational steps 'might be a highly significant discovery in the field of haplotype prediction,' that alone is insufficient to establish patent eligibility." Completing the patent ineligibility trifecta, the Board relied on Ariosa v. Sequenom for the principle that "the absence of complete preemption does not demonstrate patent eligibility." This appeal followed.

The Federal Circuit affirmed in an opinion by Judge Reyna joined by Chief Judge Prost and Judge Lourie (the same panel that rendered the earlier decisions; indeed, the appeals were heard jointly). As in the earlier opinion, the panel here recited the Court's familiar litany of purported obeisance to the Supreme Court's subject matter eligibility jurisprudence. Here, the basis of the opinion was evident on the face of the claims: as the opinion states, "the claims are directed to the use of mathematical calculations and statistical modeling" and "[c]ourts have long held that mathematical algorithms for performing calculations, without more, are patent ineligible under § 101," citing Parker v. Flook, 437 U.S. 584, 595 (1978); Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); and (for good measure and to blunt the Court's frank obeisance) In re Schrader, 22 F.3d 290, 294 (Fed. Cir. 1994). After reciting elements of claim 1, the panel opined that "[t]hese generic steps of implementing and processing calculations with a regular computer do not change the character of claim 1 from an abstract idea into a practical application." According to the panel, the only application of these algorithms in claim 1 was storage of the haplotype phase. Neither did the panel find that the claims recited any improvement in performance of a generic computer (although being aided in this regard by Stanford's failure to raise this argument before the Board). The opinion nicely illustrates the difference between claims to methods wherein the outcome of the method is improved (which is not otherwise patent-eligible) and claims to methods that improve performance of a general purpose computer per se (which can be patent eligible), citing McRO, Enfish, Finjan, Inc. v. Blue Coat Sys., Inc., and CardioNet, LLC v. InfoBionic, Inc. The distinction with the former is that there "the improvement in computational accuracy alleged here does not qualify as an improvement to a technological process; rather, it is merely an enhancement to the abstract mathematical calculation of haplotype phase itself," citing Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC and Synopsys, Inc. v. Mentor Graphics Corp.

With regard to step 2 of the Alice test (which the panel asserts "is like a lifeline: it can rescue and save a claim that has been deemed, at step one, directed to non-statutory subject matter"), the Court concluded that the claims are not saved in this instance. The reasons:

• "We find no inventive concept that would warrant treating the use of the claimed algorithms and mathematical calculations as patent eligible subject matter.

• Further, the recited steps of receiving, extracting, and storing data amount to well known, routine, and conventional steps taken when executing a mathematical algorithm on a regular computer.

• Using a conventional computer to receive, extract, and store information does not transform an abstract idea into patent eligible subject matter."

And as has frequently been the case, applicant's assertions in the specification, intended to provide a broad scope to the claims, provide their Achille's heal, wherein the panel asserted that "[t]he written description further illustrates that the mathematical steps performed and the data received are conventional and well understood in the prior art." The Federal Circuit also states that "it is hard to imagine a patent claim that recites hardware limitations in more generic terms than the terms employed by claim 1."

Finally, the panel rejected Stanford's argument that the claims recite an ordered combination of steps sufficient to impart patent eligibility. On the contrary, in the panel's view ("We are not persuaded"),

The Board correctly determined that claim 1 simply appends the abstract calculations to the well-understood, routine, and conventional steps of receiving and storing data in a computer memory and extracting a predicted haplotype. The application of those elements results in the mathematical analysis itself, and therefore the claimed method subsists in "the basic tools of scientific and technological work. . . . Such basic tools are not patent eligible.

And applying the judicial coup de gras, regarding Stanford's argument that this ordered combination is novel, the panel asserts "[n]or is novelty the touchstone of patent eligibility. That a specific or different combination of mathematical steps yields more accurate haplotype predictions than previously achievable under the prior art is not enough to transform the abstract idea in claim 1 into a patent eligible application," citing SAP Am., Inc. v. InvestPic, LLC.

As with this panel's first opinion on this technology, nothing about this decision is surprising. U.S. patent law has come to a pretty pass when seemingly the only hope is that the Supreme Court will grant certiorari in American Axle & Mfg. v. Neapco Holdings to perhaps straighten out the illogical morass that is subject matter eligibility at the Federal Circuit. But it is where we are.

For comparison, the representative claim recited in the first opinion reads as follows:

1. A method for resolving haplotype phase, comprising:
    receiving allele data describing allele information regarding genotypes for a family comprising at least a mother, a father, and at least two children of the mother and the father, where the genotypes for the family contain single nucleotide variants and storing the allele data on a computer system comprising a processor and a memory;
    receiving pedigree data for the family describing information regarding a pedigree for the family and storing the pedigree data on a computer system comprising a processor and a memory;
    determining an inheritance state for the allele information described in the allele data based on identity between single nucleotide variants contained in the genotypes for the family using a Hidden Markov Model having hidden states implemented on a computer system comprising a processor and a memory,
        wherein the hidden states comprise inheritance states, a compression fixed error state, and a[ Mendelian inheritance error]-rich fixed error state,
        wherein the inheritance states are maternal identical, paternal identical, identical, and non-identical;
    receiving transition probability data describing transition probabilities for inheritance states and storing the transition probability data on a computer system comprising a processor and a memory;
    receiving population linkage disequilibrium data and storing the population disequilibrium data on a computer system comprising a processor and a memory;
    determining a haplotype phase for at least one member of the family based on the pedigree data for the family, the inheritance state for the information described in the allele data, the transition probability data, and the population linkage disequilibrium data using a computer system comprising a processor and a memory;
    storing the haplotype phase for at least one member of the family using a computer system comprising a processor and a memory; and
    providing the stored haplotype phase for at least one member of the family in response to a request using a computer system comprising a processor and a memory.

In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)
Panel: Chief Judge Prost and Circuit Judges Lourie and Reyna
Opinion by Circuit Judge Reyna

Posted at 11:24 PM in Federal Circuit, Patentable Subject Matter | Permalink | Comments (0)

March 24, 2021

Senators Tillis and Cotton Propose Sequenced Examination Approach

By Donald Zuhn --

On Monday, Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) sent a letter to Drew Hirshfeld, the Commissioner for Patents at the U.S. Patent and Trademark Office, to propose that the USPTO conduct a pilot program on a sequenced approach to patent examination. In their letter, Sen. Tillis (at right), the Ranking Member of the Senate Subcommittee on Intellectual Property, and Sen. Cotton (at left), a member of the Subcommittee on Intellectual Property, suggest that a sequenced approach to patent examination, in which applications are first examined for compliance with 35 U.S.C. §§ 102, 103, and 112, and then for compliance with 35 U.S.C. § 101, could "avoid unnecessary and inefficient rejections on grounds of patent eligibility."

The Senators express their concern that "by conducting an eligibility analysis as per current practice, patent examiners may be issuing Section 101 rejections without the benefit of addressing prior art, clarity and enablement issues that may well inform the examiner that the claim is eligible under Section 101." While stating that examination under §§ 102, 103, and 112 is based on "well-developed and objective criteria under the law," the Senators assert that "current patent eligibility jurisprudence lacks the clarity, consistency, and objectiveness the other grounds of patentability possess." They argue that:

By conducting an inherently vague and subjective analysis of eligibility early in the examination process, examiners may be spending inordinate time on Section 101 at a time when it is difficult or impossible to conduct a meaningful examination under Section 101, at the expense of the more rigorous analysis and precise and thoughtful work that can be conducted at the outset of examination under Sections 102, 103, and 112.

In view of discussions they have had with USPTO officials, the Senators note that by using a sequenced examination approach, Applicants "rarely receive[] a rejection on grounds of patent eligibility," because "by bringing claims into compliance with Sections 102, 103, and 112, examiners inevitably brought the claims into compliance with Section 101 as well."

The Senators provide three reasons why a sequenced approach to examination may improve the examination process. First, they argue that a sequenced approach would "focus[] initial examination on the objective areas of patentability as opposed to the abstract, vague, and subjective questions of eligibility, leaving eligibility examination to a point in the process where it can be conducted much more effectively." Second, a sequenced approach would "improve[] efficiency by avoiding the waste of valuable examination and applicant time on vague questions of patent eligibility as a threshold matter." And finally, the Senators argue that a sequenced approach would "lead[] to stronger, more reliable, and higher quality patents by focusing first on the more rigorous and easy to identify standards of patentability."

The Senators conclude their letter by requesting that the Commissioner initiate a pilot program to determine whether a sequenced approach would be more effective and produce higher quality patents than the traditional compact examination approach. They also ask the Commissioner to let them know by April 20, 2021 whether such a program will be implemented, and if the USPTO elects not to implement such a program, "provide us with a detailed explanation of why you will not conduct the requested pilot program."

Posted at 04:56 PM in Patent Office Rules & Procedures, Patentable Subject Matter | Permalink | Comments (9)

March 15, 2021

On the Patent Eligibility of Information Processing

By Michael Borella --

A computer does just three things: receives information in the form of bits, transforms this information, and provides output based on the information as transformed. The receiving may take place by way of various types of input modalities, such as keyboards, touchscreens, mice, audio microphones, video cameras, network interfaces, sensors, and so on. The transforming may involve a literally infinite number of possibilities in the form of algorithms. The output may also take on various modalities, including images displayed on a screen, audio, storage to volatile or non-volatile memory, and transmission by way of network interfaces, just to name a few.

Given the fundamental nature of information processing in computing technology, it would be natural to assume that such endeavors would be protected by patent law -- after all, the stated constitutional goal of such law is to "promote the progress of science and useful arts." But due to how the Federal Circuit has interpreted recent Supreme Court decisions, a ground-breaking information processing invention can be unpatentable even if it is novel and non-obvious. More than a philosophical or legal concern, the Federal Circuit's narrow (and many would agree, inconsistent) view on what subject matter can be patented causes business and economic uncertainty across the many industries in which computers have become ubiquitous.

Differentiating between which types of information processing are eligible and which are not is fraught with danger, and even the most experienced patent attorneys (not to mention judges) can find this area of the law perplexing. As a consequence, many entities are struggling to obtain patents on inventions that involve information processing.

This article dips into these waters by exploring the origins of this current bias against information processing, and attempts to stake out a few areas in which claims to information processing may find more or less success. Such an understanding, in turn, provides practical considerations for patenting decisions as well as prosecution and litigation strategies. Nonetheless, more clarity is ultimately needed from the courts.

At the outset, it is undisputed that information itself is not patentable. Information per se, in bits, writing, or some other form, is not a process, machine, article of manufacture, or composition of matter, the four statutory categories set forth in 35 U.S.C. § 101. See Digitech Image Techs. v. Electronics for Imaging (Fed. Cir 2014). Further, attempts to make the mere storage of data on a tangible medium statutory will fail due to printed matter doctrine. See C R Bard Inc. v. AngioDynamics, Inc. (Fed. Cir. 2020). Thus, trying to obtain a patent on a CDROM containing a performance of Beethoven's 5th Symphony will come to naught no matter how you claim the representation of the information encoding the performance.

Information processing is different. It involves steps taken by a computer (or other devices or maybe even humans) to obtain, transform, and provide information. Information processing inventions are not directed to static information -- they are drawn to using and changing information.

Nonetheless, ever since Alice Corp. v. CLS Bank Int'l, it has become increasingly difficult to patent information processing claims, no matter how innovative or useful. In that case, the Supreme Court brought the ill-defined notion of abstract ideas to the fore, which has been used extensively by the Federal Circuit, district courts, and the USPTO to find information processing claims ineligible, even if those claims are otherwise statutory.

A case that typifies the current difficulties information processing inventions can face is Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016). The claims therein recited, albeit in a rather broad fashion, (i) gathering streams of data related to sensor measurements of a power grid, (ii) from this data, determining events occurring in the power grid, and (iii) displaying visualizations of the events. Here, the events could be faults in the power grid that could cause the power grid to fail. Despite this sort of invention seemingly being of the "science and useful arts", the Federal Circuit knocked down the claims under § 101. The Court wrote "[t]he focus of the asserted claims . . . is on collecting information, analyzing it, and displaying certain results of the collection and analysis." This, according to the Court, directly leads to the conclusion that the claims are focused on an abstract idea.

The justification for this conclusion was broken down to mirror the three functional parts of the claim. Regarding the gathering steps, the Court cited to precedent in Digitech, as well as the pre-Alice case CyberSource Corp. v. Retail Decisions, Inc. (Fed. Cir. 2011), for the notion that gathering information is an abstract idea. Particularly, this gathering was deemed to be an abstract mental process even when carried out by computer. CyberSource cites to a line of cases reaching back to Gottschalk v. Benson for the notion that gathering data for mathematical calculations has little -- if any -- patentable weight under § 101. Regarding the data analysis steps, the Court once again viewed these as abstract mental processes, and cited to support for such a conclusion going back to Benson. Finally, regarding the displaying steps, the Court cited to Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2014), where displaying an advertisement was considered to be an abstract idea. The Court wrote: "we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more . . . is abstract as an ancillary part of such collection and analysis." What you are hearing is an echo of the so-called post-solution activity from Parker v. Flook.

The Court also took issue with the claims' lack of specificity, noting that "rather than claiming some specific way of enabling a computer to monitor data from multiple sources across an electric power grid, [the claims] purport to monopolize every potential solution to the problem—any way of effectively monitoring multiple sources on a power grid." In other words, the claims recited an outcome rather than specific steps to achieve that outcome.

So the issue seems to be not only the information processing nature of the claims, but also that the processing allegedly could be carried out mentally, included mathematical calculations, and lacked specificity. We also know from related cases that the type of information can matter. For example, processing of financial, business, or social information can be viewed as abstract. See, e.g., Intellectual Ventures I LLC v. Capital One Bank (Fed. Cir. 2015); Versata Dev. Group, Inc. v. SAP Am., Inc. (Fed. Cir. 2015); Voter Verified, Inc. v. Election Systems & Software, LLC (Fed. Cir. 2018).

But information processing inventions are not doomed to fall under the § 101 inquiry. Notably, the claims of McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016), involved obtaining rules and phoneme timing, generating morph weights based on the rules and phoneme timing, and then producing lip synchronization and facial expressions in animated characters from the morph weights. Like Electric Power Group, these claims involve gathering, transforming, and displaying information. Nonetheless, the Federal Circuit found the claims to not be abstract.

Why the different outcome? Several reasons, including the claims being more specific and not directed to a mental, financial, or business process. The Court looked to the specification for the understanding that a goal of this invention was to eliminate the subjectivity associated with human-rendered animations. Thus, the invention was more closely tied to a computer than that of Electric Power Group.

The dichotomy of these two cases represents how patent eligibility can be twisted like the proverbial nose of wax. In Electric Power Group, the Court viewed the claims in a deconstructionist manner -- looking at the invention as a series of discrete pieces and finding each of them abstract. In McRO, the focus was on what the claim as a whole provided -- the problem that it solved. The reasoning of Electric Power Group certainly could have been used to justify the opposite outcome in McRO. But the latter's claims were just different enough to be found eligible.

Sometimes information processing inventions can be made patent-eligible by having their output control another device or physical process. The classic case of this is Diamond v. Diehr, the claims of which, at their core, involve a computer receiving temperature readings, the computer performing calculations based on these readings, and the computer causing a rubber press to change state when the calculations take on a certain value. But not all technologies lend themselves to being claimed similarly to Diehr.

Indeed, there are many computerized inventions that are similar to McRO, in that they solve a specific problem in a specific manner without affecting another device -- i.e., the processing is all "in the box". And yet, they are still vulnerable to subject matter eligibility challenges in the USPTO and the courts. As one example, a virus scanning application may involve no more than gathering data (network traffic and/or files), analyzing that data (determining if it matches a virus signature), and providing output (an indication of a detected virus or the lack thereof). As another example, a machine learning application may involve no more than gathering data (training sets), analyzing that data (training the model), and providing output (the trained model). As a further example, a computer-aided design application may involve no more than gathering data (parameters of the design), analyzing that data (formulating the design), and providing output (the final design).

In each of these cases, it may not be viable to claim the invention in a way that is directly analogous to Diehr, because doing so would lead to a problem with divided infringement. For instance, the entity that makes the computer-aided design application is unlikely to also use the designs to create physical products.

For at least these reasons, there is a need for the Federal Circuit to elucidate and define what factors are more or less likely to make an information processing inventions patent-eligible.[1] The current take on § 101 puts too much flexibility in the hands of judges and examiners; particularly, at what level they consider the claims, how much emphasis they put on the specification, and the role that prior art plays. Patentees, especially small- and medium-sized companies with limited budgets, need to make smart decisions with respect to their investments in patents. Without clarity, the risks and rewards associated with such investments will remain difficult to quantify.

[1] One approach that we have outlined before is to, when possible, draft claims that are specific, solve a technical problem in a technical fashion, and recite features not in the prior art.

Posted at 10:24 PM in Patentable Subject Matter | Permalink | Comments (1)

March 14, 2021

In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)

By Kevin E. Noonan --

The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejecting claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101, in ex parte examination of claims to methods and related computing systems for genetic haplotyping in In re Board of Trustees of the Leland Stanford Junior University.

The claimed method is recited in representative claim 1:

1. A method for resolving haplotype phase, comprising:
    receiving allele data describing allele information regarding genotypes for a family comprising at least a mother, a father, and at least two children of the mother and the father, where the genotypes for the family contain single nucleotide variants and storing the allele data on a computer system comprising a processor and a memory;
    receiving pedigree data for the family describing information regarding a pedigree for the family and storing the pedigree data on a computer system comprising a processor and a memory;
    determining an inheritance state for the allele information described in the allele data based on identity between single nucleotide variants contained in the genotypes for the family using a Hidden Markov Model having hidden states implemented on a computer system comprising a processor and a memory,
        wherein the hidden states comprise inheritance states, a compression fixed error state, and a[ Mendelian inheritance error]- rich fixed error state,
        wherein the inheritance states are maternal identical, paternal identical, identical, and non-identical;
    receiving transition probability data describing transition probabilities for inheritance states and storing the transition probability data on a computer system comprising a processor and a memory;
    receiving population linkage disequilibrium data and storing the population disequilibrium data on a computer system comprising a processor and a memory;
    determining a haplotype phase for at least one member of the family based on the pedigree data for the family, the inheritance state for the information described in the allele data, the transition probability data, and the population linkage disequilibrium data using a computer system comprising a processor and a memory;
    storing the haplotype phase for at least one member of the family using a computer system comprising a processor and a memory; and
    providing the stored haplotype phase for at least one member of the family in response to a request using a computer system comprising a processor and a memory.

As explained in the opinion, the claimed method involves determining haplotype phase, i.e., "a process for determining the parent from whom alleles—i.e., versions of a gene—are inherited." The specification describes using genotype data and pedigree data and applying a known prior art method as disclosed in Roach et al., Analysis of Genetic Inheritance in a Family Quartet by Whole Genome Sequencing, 328 SCIENCE 636 (2010). This method uses a statistical tool termed a hidden Markov model for these predictions. The specification discloses that prior art methods were inadequate and that the disclosed methods cure such shortcomings, increasing the number of possible prediction to 97.9% by "factoring additional data into the analysis." These additional data include linkage disequilibrium data (a measure of reduction of expected crossing over frequency events during meiosis produced, inter alia, by marker genes being adjacent to one another on a chromosome) obtained from an art-available database of single nucleotide polymorphisms, as well as "transition probability date," wherein "transition probabilities are set depending on 'the expected number of state transitions and the total number of allele assortments in the pedigree.'"

The Examiner, affirmed by the PTAB, rejected the claims based on their being directed to "abstract mathematical algorithms and mental processes." According to the Federal Circuit's opinion, the Examiner and the Board applied the two-step test set forth by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014), in making this determination. With regard to step 1 of the test, the Examiner and Board determined that all steps recited in claim 1 were "directed to" either "mental steps of receiving, storing, or providing information[ or ]mathematical concepts"; the rationale is that the steps recited receiving or analyzing information, "which humans could process in their minds," or mathematical algorithms. (It would be doctrinally beneficial for both the USPTO and the Federal Circuit to abandon the charade that the types of processes recited in claims related to computer implementation could be performed in the human mind; surely there must be a better rationale for the question-begging conclusion than this!) Further, the Board also held that these mathematical algorithms, steps, and processes were not "integrated into a practical application" (which might be a surprise to patentees and patients who benefit from the application of the claimed methods). The distinction drawn by the Board was that the method does not improve computer technology, citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), but rather provides an improved mathematical analysis (which results in a seemingly unappreciated practical application in genetic analysis).

Completing its Alice analysis, the Board concluded that the claims did not satisfy the requirements of step 2 either, insofar as they did not "include additional limitations that, when taken individually or as a whole, provide an inventive concept that transforms the abstract idea into patent eligible subject matter" (an analysis that illustrates one again the wisdom Congress demonstrated generations ago in substituting obviousness for "inventive concept"). The recited steps "did not go beyond the well-known, routine, and conventional" according to the Board. And in the philosophical coup de grace stemming from dicta in Justice Thomas's opinion in AMP v Myriad Genetics, the Board stated that the claimed invention was patent-ineligible "although the claims may provide a valuable contribution to science."

Certain other claims, which recited as an affirmative step "providing the drug for treatment" did not transform the genetic analysis claims to patent-eligible ones for failing to satisfy the "five specificities" recited by Judge Lourie in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Ltd., 887 F.3d 1117 (Fed. Cir. 2018), because "they are not directed to a specific method of treatment, do not identify specific patients, do not recite a specific compound, do not prescribe particular doses, and do not identify the resulting outcome."

The Federal Circuit affirmed (not surprisingly, under the circumstances) in an opinion by Judge Reyna joined by Chief Judge Prost and Judge Lourie. The opinion recited the Court's familiar litany of purported obeisance to the Supreme Court's subject matter eligibility jurisprudence, down to Gottschalk v. Benson, 409 U.S. 63 (1972), and Parker v. Flook, 437 U.S. 584 (1978), with regard to claims relying on mathematical algorithms. After parsing claim 1 according to the context of its analytical steps, the Federal Circuit held that the Board was correct in finding this claim patent-ineligible because "Claim 1 recites no concrete application for the haplotype phase beyond storing it and providing it upon request." The Court's response to Stanford's argument that "the specific application of the steps is novel and enables scientists to ascertain more haplotype information than was previously possible" was that "we are not persuaded" even if they were to accept Stanford's argument, nor was this panel convinced even if the invention provides the claimed advance in genetic analysis that the process is "an improved technological process" (which raises the question of the wisdom of denying patent eligibility to an invention that provides an improvement in genetic analysis that does not require a concommittant improvement in the technological process).

Having found no legal (not logical) fault in the Board's determinations regarding step 1 of the Alice test, the Court turned to step 2, finding no error in the Board's determination regarding this step, because "Claim 1 recites no steps that practically apply the claimed mathematical algorithm; instead, claim 1 ends at storing the haplotype phase and 'providing' it 'in response to a request.'" This rhetorical formulation evokes Justice Breyer's objection to the claims Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012), which curiously was not cited in the opinion. This is perhaps because the clear distinction with the case before the Court is that everything except the correlation recited in the Mayo case was known in the prior art. And the failure to recite "a specialized computer or a computer with a specialized memory or processor" in claim 1 here was enough to confirm patent ineligibility, analogous to the use of known detection methods that the Court used to sustain invalidation of claims directed to detecting cell-free fetal DNA in maternal blood in Ariosa v. Sequenom. The opinion states:

The written description makes clear that the mathematical steps performed, and the types of data received, as claimed, are conventional and well understood in the prior art. . . . Thus, taken individually, the limitations of claim 1 fail to transform the claims into a patent eligible application [emphasis added].

Illustrating that a willingness to apply Alice seems to include a similar willingness to ignore Diamond v. Diehr (1981). To Stanford's argument that the claim recites an ordered combination of elements, it is enough for this panel to conclude that because "[t]he alleged innovation accomplished in claim 1 is in the mathematical analysis itself, namely, in the receipt of data, executing mathematical calculations, and storing the resulting data, [t]he alleged innovation therefore subsists in 'the basic tools of scientific and technological work.'"

And none of the limitations recited in any of the dependent claims in the application, including those directed towards drug treatment, rise (in this panel's view) above the characterization of the claims "do[ing] nothing more than recite the haplotype phase algorithm and instruct, 'apply it,' as the Supreme Court has prohibited," citing Alice instead of Mayo.

Nothing about this decision is surprising; fortunately it is also non-precedential. But that very fact should be enough to illustrate the importance of the Supreme Court granting certiorari in American Axle & Mfg. v. Neapco Holdings to perhaps straighten out the illogical morass that is subject matter eligibility at the Federal Circuit.

In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)
Panel: Chief Judge Prost and Circuit Judges Lourie and Reyna
Opinion by Circuit Judge Reyna

Posted at 11:07 PM in Federal Circuit, Patentable Subject Matter | Permalink | Comments (1)

March 09, 2021

Senators Request USPTO to Provide Information on Subject Matter Eligibility

By Kevin E. Noonan --

Senator Thom Tillis (R-NC) has been busy letter writing lately (see "Sen. Tillis Sends Letter to President Regarding Next USPTO Director"), and spent a good portion of 2019 being busy trying to convince his colleagues in Congress to address the morass over subject matter eligibility that has arisen in the wake of the Supreme Court's Alice Corp. v. CLS Bank International and Mayo Collaborative Services Inc. v. Prometheus Laboratories, Inc. decisions (as well as Association for Molecular Pathology v. Myriad Genetics, Inc.) (see "The Zombie Apocalypse of Patent Eligibility Reform and a Possible Escape Route").

Last week, Senator Tillis' latest literary foray took the form of a letter to the Hon. Drew Hirschfeld, current Commissioner of Patents and Acting Director of the U.S. Patent and Trademark Office. In it, the Senator asks the USPTO to "publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses, and provide us with a detailed summary of your finding, particularly with regard to "how the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments." The letter illustrates and justifies the request by reciting the "lack of consistency and clarity in our nation's patent eligibility laws." These circumstances have "had a dramatic negative impact on investment, research, and innovation," not only discouraged investment in critical emerging technologies, but also led the courts to foreclose protection entirely for certain important inventions in the diagnostics, biopharmaceutical, and life sciences industries." Of course, the letter references the struggle to "contain and treat the worst global pandemic in more than one hundred years" and professes astonishment that current jurisprudence "makes it virtually impossible to obtain many patents in the diagnostic methods and precision medicine sectors." The letter asks for the report to be delivered to Congress no later than March 2022.

Sen. Tillis was joined in this letter by Senator Chris Coons (D-DE), who was his partner in earlier efforts in Congress (see "Senators Tillis and Coons Release Statement on Recent Patent Reform Hearings"), as well as Senators Tom Cotton (R-AR) and Mazie Hirono (D-HI), illustrating bipartisan support for Sen. Tillis' request.

Of course, while appropriate for Congress to ask these questions of the (acting) head of the administrative agency charged with executing the patent laws, the courts (specifically the Federal Circuit) have made it clear that the USPTO's views are not binding on their interpretation of subject matter eligibility standards (see "Cleveland Clinic Foundation v. True Health Diagnostics LLC"). Nevertheless, the bipartisan nature of the letter and the identities of the signatories suggests Congressional recognition of the problem that current jurisprudence has created over subject matter eligibility and continuing efforts in Congress to address them. While legislation is unlikely this year or perhaps even in this Congress, it remains the case that "a small group of thoughtful, committed, citizens can change the world" because "it is the only thing that ever has." With any luck, that sentiment applies even more strongly when those citizens are Senators.

Posted at 11:21 PM in Patentable Subject Matter | Permalink | Comments (0)

February 04, 2021

Chicago Patent Attorneys File Supreme Court Amicus Brief in American Axle

Chicago patent attorneys Kevin E. Noonan, Michael S. Borella, Aaron V. Gin, and Adnan M. "Eddie" Obissi have filed an amicus brief supporting Supreme Court review of the Federal Circuit's decision to invalidate claims of American Axle's U.S. Patent No. 7,774,911 under 35 U.S.C § 101. The Attorneys (who are all Patent Docs authors or contributors) argue that the Federal Circuit's 6-6 split on whether to rehear the case en banc is compelling evidence that the court is severely divided in how it applies the patent-eligibility analysis of Alice Corp. v. CLS Bank Int'l.

In finding American Axle's method of manufacturing vibration-damping driveline shafts to be directed to no more than an unclaimed law of physics, the Federal Circuit has misapplied the Supreme Court's Alice test, and in doing so, has called into question the eligibility of any invention, the Attorneys write. They walk through examples of how the Federal Circuit's application of the test would have rendered iconic historical inventions such as the telephone and light bulb invalid under § 101, whereas proper application of the test would have had the opposite outcome.

The Attorneys urge the Supreme Court to take up this case because the lower courts and the U.S. Patent and Trademark Office desperately need its guidance. The justices are scheduled to confer on February 19, and the certiorari decision should follow shortly after that.

The brief can be found on the Supreme Court's American Axle docket.

Posted at 11:59 PM in Patentable Subject Matter, Supreme Court | Permalink | Comments (4)

February 02, 2021

Personalized Media Communications, LLC v. Apple, Inc. (E.D. Tex. 2021)

Signal Processing Claims for Decrypting Encrypted Information Found Patent Eligible

By James Korenchan --

Last week, the U.S. District Court for the Eastern District of Texas, Marshall Division ruled that Defendant Apple, Inc. (hereinafter "Apple") failed to show that claims related to signal processing are patent ineligible under 35 U.S.C. § 101.

Plaintiff Personalized Media Communications, LLC (hereinafter "PMC") asserted that Apple infringed PMC's U.S. Patent. No. 8,191,091 (the '091 patent). Apple had moved to dismiss all claims of the '091 patent as directed to ineligible subject matter. The Court denied this motion to dismiss, finding that the '091 patent claims to be patent-eligible. Apple then moved for summary judgement that all the claims of the '091 patent are invalid under § 101. (Apple's motion also moved for relief under § 101 with respect to PMC's U.S. Patent Nos. 8,559,635 and 7,752,649, but only the '091 patent was addressed by the Court in the present decision due to it being the only patent set for trial at the time.)

The '091 patent includes four independent claims, including claim 13, which Apple asserted as being representative of all of the claims of the '091 patent. The Court's decision thus addressed only claim 13.

Claim 13 is as follows:

13. A method of decrypting programming at a receiver station, said method comprising the steps of:
    receiving an encrypted digital information transmission including encrypted information;
    detecting in said encrypted digital information transmission the presence of an instruct-to-enable signal;
    passing said instruct-to-enable signal to a processor;
    determining a fashion in which said receiver station locates a first decryption key by processing said instruct-to-enable signal;
    locating said first decryption key based on said step of determining;
    decrypting said encrypted information using said first decryption key; and
    outputting said programming based on said step of decrypting.

The '091 patent generally aims to provide an integrated multimedia system in which a "receiver station" can, among other things, combine various types of programming (e.g., television, radio, computer communications), generate user-specific information related to such programming, identify and block those who pirate programming, and -- in the case of the invention of claim 13 -- identify, and then decrypt, programming and instruction signals that are encrypted.

The Court began its analysis by determining whether claim 13 as a whole is directed to an abstract idea. In its motion for summary judgement and in the previous motion to dismiss, Apple argued that the '091 patent is directed to the abstract idea of "using an instruct-to-enable signal to decrypt (convert from unintelligible to intelligible) information," and asserted that claim 13 claim "focuses on the abstract idea of decrypting encrypted information, rather than the physical system or the specific software that processes and decrypts the information." Apple argued that this alleged abstract idea is akin to the "manipulation of data" and other abstract ideas that the Federal Circuit found to be patent ineligible in the likes of Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), and Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Additionally, Apple argued that all but the decrypting and outputting steps were known in the art before the priority date of the '091 patent.

Apple also noted that the Federal Circuit previously affirmed invalidity of other PMC patents that are "closely related" to the '091 patent under § 101. Lastly, Apple cited to a deposition of a named inventor in an attempt to demonstrate that the concepts of encryption and decryption were well-known before the '091 patent and fail to render the claims eligible.

In response to Apple's motion to dismiss, the Court had concluded that that the claims of the '091 patent are directed to methods of using an instruct-to-enable signal included in digital information to determine a fashion in which a station locates a decryption key that can decrypt encrypted information. The Court had also concluded that claim 13 "describes an improvement to the delivery of 'instruct-to-enable signals' and a technical way to decrypt transmitted information. In support of this improvement, the Court cited to the specification of the '091 patent:

[T]he '091 patent says that transmitting the "instruct-to-enable signal" in the "information transmission" improves the reliability of the signal's delivery. The patent states the improved delivery process increases the number of functions the "instruct-to-enable signal" can control because the signal can "occur at precise times in programming and can synchronize the operation of receiver station apparatus to the timing of programming transmission." Second, the claim requires a "receiver station" that is able to "locate[] a first decryption key" by processing the "instruct-to-enable signal." The specification shows that decrypting "digital programming" "based on" the "control signal" can be a technical solution for causing a receiving device to decrypt a transmission. [Citations omitted.]

Here, PMC indicated that it agreed with the Court's previous analysis, and the Court indicated that Apple provided no contrary evidence.

The Court nevertheless proceeded with its § 101 analysis, referring yet again to its previous finding that, even if the claims were directed to an abstract idea, additional elements in the claims would transform them into patent-eligible applications of that idea:

Claim 13 of the '091 Patent is a patent-eligible application at least because of its arrangement of steps. "[A]n inventive concept can be found in the nonconventional and non-generic arrangement of known, conventional pieces." Bascom Glob. Internet Servs. v. AT&T Mobility LLC, Case No. 2015-1763, 2016 WL 3514158, at *6 (Fed. Cir. Jun. 27, 2016). Although some of the pieces in the '091 Patent are perhaps known and conventional—such as encryption and decryption—the '091 Patent arranges them in a way that is sufficient to confer an inventive concept, including "determining a fashion in which [a] receiver station locates a first decryption key by processing [an] instruct-to-enable signal" and "locating said first decryption key based on said step of determining." [Citations omitted.]

The Court thus found that the '091 patent is directed to patent eligible subject matter.

Personalized Media Communications, LLC v. Apple, Inc. (E.D. Tex. 2021)
Report & Recommendation by Magistrate Judge Payne

Posted at 11:20 PM in District Court, Patentable Subject Matter | Permalink | Comments (2)

January 14, 2021

December 29, 2020

Simio, LLC v. FlexSim Software Products, Inc. (Fed. Cir. 2020)

By Michael Borella --

This decision is bad. Not an American Axle level of bad, but still quite far from good.

Simio sued FlexSim in the District of Utah for alleged infringement of its U.S. Patent No. 8,156,468. FlexSim moved for dismissal on the pleadings under 35 U.S.C. § 101, on the grounds that the claims were directed to no more than an abstract idea. The District Court granted the motion, and Simio appealed.

The claimed invention relates to object-oriented simulations by way of graphical user interfaces. In the past, these simulations had required at least some programming. The '468 patent describes its advance as simplifying this process by facilitating the development of simulations in a completely graphical manner, with no programming necessary. Claim 1 of the patent recites:

A computer-based system for developing simulation models on a physical computing device, the system comprising:
    one or more graphical processes;
    one or more base objects created from the one or more graphical processes,
    wherein a new object is created from a base object of the one or more base objects by a user by assigning the one or more graphical processes to the base object of the one or more base objects;
    wherein the new object is implemented in a 3-tier structure comprising:
        an object definition, wherein the object definition includes a behavior,
        one or more object instances related to the object definition, and
        one or more object realizations related to the one or more object instances;
    wherein the behavior of the object definition is shared by the one or more object instances and the one or more object realizations; and
    an executable process to add a new behavior directly to an object instance of the one or more object instances without changing the object definition and the added new behavior is executed only for that one instance of the object.

In Alice Corp. v. CLS Bank Int'l, the Supreme Court set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under § 101. One must first decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle. While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

Recently, the Federal Circuit provided a major clue as to how to think about patent eligibility in practice. In Dropbox Inc. v. Synchronoss Techs. Inc., the Court wrote that "an inventive concept exists when a claim recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art." This suggests that in order for a claim that is otherwise directed to an abstract idea to be successful under § 101, it should have three qualities: specificity, a technical solution that it provides, and some degree of novelty. More particularly, there should be a nexus between these three factors -- specificity, technical character, and novelty should appear in the same claim element or at least be explicitly linked in some fashion in the recitation of the claim.

Starting with part one of Alice, the Federal Circuit focused almost entirely on how the specification describes the invention rather than how it is claimed. The portion of the specification that the Court considered is at a higher level and is less detailed than the actual claim language, and describes how the claimed invention makes it easier for non-programmers to construct object-oriented simulations. The Court summarized the preamble of claim 1 and a few of its broader elements, waving its hands over the rest (the Court was apparently willing to ignore any claim elements that Simio did not rely on in its arguments). Staying at this high level, the Court also noted that the '468 patent "acknowledges, using graphical processes to simplify simulation building has been done since the 1980s and 1990s."

All of this led the Court to conclude that "[s]imply applying the already-widespread practice of using graphics instead of programming to the environment of object-oriented simulations is no more than an abstract idea." The Court justified its analysis by stating that when "the abstract idea tracks the claim language and accurately captures what the patent asserts to be the focus of the claimed advance, characterizing the claim as being directed to an abstract idea is appropriate."

The problem here is that the Court rendered its decision based on what the claimed invention purports to do (as described in the parts of the specification that the Court considered and the preamble), rather than how it gets done (recited in the claim as a whole). This type of superficial reasoning is unfortunately common in § 101 cases, and does violence to the actual language of the claim by relegating it to secondary status.

Simio argued that "claim 1 is not directed to an abstract idea because it presents improvements to computer-implemented simulation, resulting in improvements in the computers' capabilities." Particularly, Simio stated that the claim "improves on the functionality of prior simulation systems through the use of graphical or process modeling flowcharts with no programming code required." The Court, however, did not buy into this point, stating that "this argument does not explain how the computer's functionality is improved beyond the inherent improvement of the experience of a user who cannot (or maybe, would rather not) use programming."

This dichotomy between an improvement to a computer versus an improvement to one's experience when using the computer is a sticky one at best. To be sure, an improvement in user experience is fundamentally rooted in computer technology itself. The Court's distinction is that software for improving a computer (by making the computer faster, better, more efficient) can be the basis of an eligible invention whereas software for improving a use of the computer (by making the user's interaction with the computer faster, better, more efficient) cannot.

But this reasoning does not stand up to logical scrutiny or even the Court's prior case law. One of the main purposes of invention (perhaps the main purpose) is to improve lives through technological advancement. If a device is not eligible for patenting because it merely improves user experience, then there is a long list of classic inventions that would not be patentable (sorry Alex Bell, sorry Tom Edison). But the invention of claim 1 does improve the device -- it makes the computer perform new and useful functions that (at least according to the specification) were not previously performed. The Federal Circuit, however, often takes a reductionist view that differentiates between improvements to the "computer" (the hardware, operating system, and certain utilities) and "other applications" that run thereon (pretty much all the other software aside from the operating system and the aforementioned utilities). The former are much more likely to be eligible than the latter, presumably because improving a "computer" is more technical than improving the usefulness of the computer -- never mind that trying to drawn a line between improvements to the "computer" and the "other applications" is an exercise in futility. Try to square the reasoning in this case with that of Trading Technologies Int'l, Inc. v. CQG, Inc., Data Engine Technologies LLC v. Google LLC, and McRO, Inc. v. Bandai Namco Games America Inc., all of which involved an interface that improved user experience and that the Court deemed eligible.[1] Hint: you can't.

In any event, Simio also argued that the final limitation of claim 1 ("an executable process . . ."), was a sufficiently significant improvement to computer technology. The Court looked to the specification and found that it "dedicates relatively little attention to the functionality reflected in the executable-process limitation." Once again, the specification appears to have primacy over the claims. Notably, the Court wrote, that "disparity—in both quality and quantity—between how the specification treats the abstract idea and how it treats the executable-process limitation suggests that the former remains the claim's focus."

Finding the claim directed to an abstract idea, the Court moved on to part two of Alice. Not helping its own case, Simio argued again for eligibility based on the executable process limitation but ended up admitting that this feature was conventional in object-oriented programming. Simio attempted to render this admission harmless in further arguments. In the words of the Court, "while Simio acknowledges that implementing the executable process's functionality through programming was conventional or known, it contends that doing so with graphics in a simulation provides the inventive concept necessary to confer eligibility." But according to the Court, this purported inventive concept was "just the abstract idea itself, which cannot supply the inventive concept that renders the invention significantly more than that abstract idea at step two."

Simio's further arguments that limitation exhibited some novelty fell on deaf ears.[2] The Court wrote that what it had in front of it was "a claim directed to the idea of using graphics instead of programming to create object-oriented simulations—maybe a new idea, but still an abstract one—and lacking any inventive concept, any meaningful application of this idea, sufficient to save the claim's eligibility." Thus, the Court found the claim invalid under § 101.

Put in terms of the Dropbox factors, the Court found the claim to be non-technical and to lack a requisite degree of specificity. Despite the Court appearing to be willing to grant that the claim may exhibit a modicum of novelty, two factors out of three working against the claim was enough for it to be patent-ineligible.

Again, we have the Federal Circuit playing prior art games under the guise of a § 101 decision. The claim's "conventional" elements counted toward it being found ineligible because conventional elements are, by definition, in the prior art. But arguments that the elements exhibit novelty -- and therefore are not in the prior art -- had no weight at all. In other words, if someone contends that a claim element is in the prior art, the claim can be considered abstract. Rebutting this contention is not possible.

[1] To be fair, the Court addressed McRO, stating that its "claims were eligible at step one because they used a combined order of specific rules to achieve an improved technological result." This still does not sit well with the Court's reasoning in this case because the outcome of McRO was a patent-eligibile invention that improved animated lip-synching -- still an improvement to user experience.

[2] Here, the opinion is confusing, as the Court seems to indicate that Simio admitted the limitation in question is conventional but argued that it is novel. These positions are contradictory.

Simio, LLC v. FlexSim Software Products, Inc. (Fed. Cir. 2020)
Panel: Chief Judge Prost and Circuit Judges Clevenger and Stoll
Opinion by Chief Judge Prost

Posted at 11:39 PM in Federal Circuit, Patentable Subject Matter | Permalink | Comments (3)

December 22, 2020

Adaptive Streaming Inc. v. Netflix, Inc. (Fed. Cir. 2020)

By Michael Borella --

Adaptive Streaming, the owner of U.S. Patent No. 7,047,305, sued Netflix in the Central District of California for alleged infringement. Netflix moved to dismiss the case on the pleadings under Rule 12(b)(6), asserting that the claims did not meet the subject matter eligibility requirements of 35 U.S.C. § 101. The District Court agreed, and Adaptive appealed.

Representative claim 39 of the '305 patent recites:

A system to broadcast to at least one client device, the system comprising:
    a processor; and
    a broadcasting server coupled to the processor, the broadcasting server including:
    an image retrieval portion to retrieve at least one incoming video signal having a first format;
    a data structure usable to determine parameters for second compression formats for the at least one incoming video signal; and
    at least one transcoding module coupled to the image retrieval portion and which has access to the data structure, the transcoding module being capable to transcode the at least one incoming video signal from the first format into multiple compressed output video signals having respective second compression formats based at least in part on the parameters;
    wherein at least one of the second compression formats is more suitable for the at least one client device than the first format; and
    wherein the multiple compressed output video signals having the at least one second compression format more suitable for the at least one client device can be provided by the broadcasting server, wherein any one of the multiple compressed output video signals can be selected to be presented at the at least one client device.

According to the specification, the claimed invention "provides a technique including a system for capturing audio and video information from a first source and displaying such video and audio information at a second source, where the format of the first source and the format of the second source are different from each other."

Recently, the Federal Circuit provided a major clue as to how to think about patent eligibility in practice. In Dropbox Inc. v. Synchronoss Techs. Inc., the Court wrote that "an inventive concept exists when a claim recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art." This suggests that in order for a claim that is otherwise directed to an abstract idea to be successful under § 101, it should have three qualities: specificity, a technical solution that it provides, and some degree of novelty. More particularly, there should be a nexus between these three factors -- specificity, technical character, and novelty should appear in the same claim element or at least be explicitly linked in some fashion in the recitation of the claim.

Applying the first part of Alice, the District Court found the claims directed to the abstract idea of "collecting information and transcoding it into multiple formats." The Federal Circuit found no error in this assessment, and noted that the claims and specification "make clear that the focus of the claimed advance is the abstract idea of format conversion" and not "any specific advance in coding or other techniques for implementing that idea; no such specific technique is required." Further, the specification included, through incorporation by reference, what amounted to an admission that such translation of content was a known communication practice. Moreover, the Court cited a number of recent cases in which it found other claims encompassing basic communication practices to be abstract. Based on these observations, the Court concluded that the claims were directed to an abstract idea.

Turning to part two of Alice, the Court noted that the claims recite only generic computer hardware. The Court put particular weight on there being "no identification in the claims or written description of specific, unconventional encoding, decoding, compression, or broadcasting techniques."

Put in the context of the Dropbox factors, the Court determined that the claims lacked specificity and novelty to an extent that rendered them no more than abstract, regardless of whether they provided a technical solution.

Adaptive argued that the USPTO's finding the claims to be novel and non-obvious cut against the Court's position. The Court disagreed, observing that "satisfying the requirements of novelty and non-obviousness does not imply eligibility under § 101, including under the second step of the Alice inquiry, because what may be novel and non-obvious may still be abstract."

But this statement reflects the intellectual dishonesty that underlies the current interpretation of Alice -- claim elements that are deemed "conventional" -- i.e., in the prior art -- count against the patentee in the § 101 inquiry. But arguments that the claimed invention exhibits an overall novelty are given no weight in that analysis. Until the exact nature of the prior art consideration under § 101 is clarified, this is an area that will continue lack consistency and render patent-eligibility procedurally unclear.

In any event, this apparent hypocrisy did not bother the Federal Circuit, as it affirmed the District Court's invalidity ruling.

Posted at 09:35 PM in Federal Circuit, Patentable Subject Matter | Permalink | Comments (3)

December 16, 2020

An Analytic Approach to Patent Eligibility

By Kevin E. Noonan --

The transcendental conundrum in patent law in these times is how to overcome the misinterpretation of the Supreme Court's decisions on patent eligibility law by district courts and the Federal Circuit. That these courts cannot overcome the precedential tangle they have created is firmly established by the Court's own decisions; Judge Moore in Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC stated the obvious when she said in her dissent:

My colleagues' refusal deflates the Amici's hopeful suggestion that our precedent leaves the eligibility of a diagnostic claim in front of the Federal Circuit "uncertain." It is no longer uncertain. Since Mayo, every diagnostic claim to come before this court has been held ineligible. While we believe that such claims should be eligible for patent protection, the majority of this court has definitively concluded that the Supreme Court prevents us from so holding. No need to waste resources with additional en banc requests.

And in response, the Supreme Court has eschewed any and every opportunity to revisit their twisted precedent denying certiorari in over 50 cases (see "U.S. Supreme Court on Eligibility: Nothing to See Here, Move Along").

Part of the problem is that it has been maddeningly difficult to define not what patent eligibility is (you cannot go wrong with "anything under the sun made by man") but rather what it is not. In the high technology class of inventions, this has come down to deciding without defining what an abstract idea is and when its abstractness prevents patent eligibility; see, e.g., "Stupid §101 Tricks"). (The other, related type of ineligible subject matter are business method patents, the exclusion of which is almost categorical (see "Bilski v. Kappos, Alice Corp. Pty. Ltd. v. CLS Bank Int'l"; "CyberSource Corp. v. Retail Decisions, Inc."); this has the benefit is requiring little interpretation and hence maximal certainty regarding what is ineligible.)

But the ineligibility of the latest iGadget, while sometimes tragic, is not as existentially problematic as the havoc that these precedents have wreaked on life sciences patenting. For both diagnostic methods and to a slightly lesser extent natural products, the philosophically lost proscriptions by the Court, bolstered by plain illogic in district court (see "Ariosa Diagnostics, Inc. v. Sequenom, Inc.") and Federal Circuit (see "Federal Circuit Denies Rehearing en banc in Ariosa v. Sequenom") decisions, has rendered pursuit of patent protection for these inventions to be relegated to the ranks of the foolhardy. The effect on investment and hence progress and innovation has been as expected; perhaps the only silver lining from the SARS-Cov-2 epidemic has been that in the frantic and desperate struggle for both diagnostics and vaccines the usual market forces have been collapsed by government investment (which is not usually a recipe for economic success).

But if policymakers cannot find a path to resolve the political differences that have prevented a legislative solution to the patent eligibility issue (see "The Zombie Apocalypse of Patent Eligibility Reform and a Possible Escape Route"), perhaps it is because the various stakeholders have not been able to arrive at a consensus over what should and should not be eligible (besides interest groups like the ACLU shouting "hands off my DNA"; see "ACLU (Predictably) Opposes Patent Subject Matter Eligibility Proposal"). This situation suggests it might be better to start with examples of what should be patent eligible (or at least something that would focus the basis for opposition to eligibility) and walk backwards to the point where various stakeholder groups could raise objections that might define the metes and bounds of why certain inventions have or should be deemed unprotectable under patent law.

For diagnostic methods, it might be best to start with that most tangible of subject matter classes, a machine (see "American Axle v. Neapco Holdings" and "Ex parte Itagaki and Nishihara" perhaps to the contrary). In this example, the claimed invention would be a machine configured to perform a diagnostic assay on a biological sample, wherein the machine provides a diagnosis based on detecting the presence of a naturally occurring biomarker in the sample. The specifications on the machine can be limited so that each embodiment of the machine is calibrated to perform only specific diagnostic assays on specific samples to detect specific biomarkers that are specific for only a specific disease or class of diseases. As so limited, should this machine be patent-eligible? Why or why not? And in making these determinations of course the patent eligibility of other diagnostic machines, from the MRI to the EKG to the stethoscope should guide the eligibility decision.

If this machine passes the eligibility test, the next-level question could be whether the processes used by the machine (e.g., the chemistry) is patent-eligible, and does eligibility depend on whether these assays are novel? What is the significance of whether they are adapted to detecting the biological phenomenon informative for the diagnosis? And what if they are specifically adapted (along with all the specificities considered above regarding patent eligibility for the machine) to use with the machine?

Another consideration is whether these processes need to be performed by the machine or whether they could be performed outside the machine itself? Would eligibility of the diagnostic assay depend on claim infringement requiring use of the machine, i.e., producing the "inputs" from the biological sample cannot be interpreted unless evaluated by the machine?

And does the complexity of the biomarker inputs make a difference, i.e., should it matter if the machine evaluates the input information using a computer, for example? Does it matter if the inputs are so complex they can only be understood using a computer?

The answers to these questions can then be used to evaluate the distinction(s) between these features/characteristics of these different embodiments of the invention that vitiate patent-eligibility. In other words, where do we draw the line?

For natural products, the issue may be less complex, based on the distinction drawn by the Court in Myriad that "mere" isolation of genomic DNA rendered that DNA ineligible for patenting, and that conversion of naturally occurring messenger RNA (mRNA) to complementary DNA (cDNA) involved sufficient human intervention to render cDNA patent-eligible. But as a general rule, this distinction with other natural products is not satisfactory for at least two reasons. First, it flies in the face of established practice that "mere" isolation could pass the patent eligibility test. And second, because natural products in their natural state are not usually useful, their utility arising from isolation (and purification, and concentration) and use in applications for which they are not used in nature (the canonical example being the anticancer drug taxol which, while intrinsically having anticancer properties does not exhibit this capability naturally because trees don't get cancer).

The issue may be as simple as recognizing (as District Court Judge Sweet did in his opinion invalidating Myriad's claims) that DNA is sui generis, the "physical embodiment of genetic information." "Mere" isolation of DNA was (perhaps) less relevant because the function of the DNA was unchanged by its isolation; before this statement enrages biotechnologists it should be recalled that all the ways that isolated DNA has been used remain patent-eligible (incorporated into vectors, introduced into heterologous cells, producing valuable biological molecules, etc.). For almost every other natural product, however, its utility is not found in nature, so perhaps that transformation, produced by human intellect, should be enough to render most important "natural" products, converted most unnaturally, to be patent eligible. After all, a claim to "Penicillin" per se has never been patent-eligible because it reads on penicillin as it exists in nature, and a claim to "a pharmaceutical composition comprising penicillin [at a useful dose and formulated for pharmaceutical use]" has always been (and still is) patent eligible. What is uncertain today is whether a claim to "an isolated/purified preparation of penicillin [having a specific utility, claimed or disclosed in the specification]" is patent eligible, and the outcome of this thought experiment on this subject matter is to determine why or why not?

It may only be by "walking backwards" from exemplars of these different technologies that must be patent-eligible to the point where that eligibility can be called into question that some insight may be gained as to why some subject matter (or embodiments thereof) are patent-eligible sheep and others patent-ineligible goats. Almost a decade of letting courts try to come to these distinctions in their case law has failed to arrive at any clarity, Blackstone be damned; maybe it's enough to make the case for a more analytical approach to recognize that the result can't be any worse.

Posted at 11:33 PM in Patentable Subject Matter | Permalink | Comments (16)

December 03, 2020

Gree, Inc. v. Supercell Oy (Fed. Cir. 2020)

By Michael Borella --

One would think that inventions relating to computer game software would easily meet the requirements for patent eligibility, as these inventions fundamentally involve technological processes and require computer implementation. But that is not always the case. Under current interpretations of the eligibility standard, not only does the language of the actual claims matter, so does the context of the invention.

Gree was issued U.S. Patent No. 9,597,594, and it was timely challenged in a Post Grant Review (PGR) by Supercell. The challenger is a mobile game development company, responsible for the widely-popular Clash of Clans and related apps. The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) ultimately found the majority of the claims under review to be ineligible for patenting under 35 U.S.C. § 101. Gree appealed.

Claim 1 of the '594 patent, which is representative, recites:

A method for controlling a computer that is provided with a storage unit configured to store game contents arranged within a game space, first positions of the game contents within the game space, and a template defining second positions of one or more of the game contents, and that progresses a game by arranging the game contents within the game space based on a command by a player, the method comprising:
when the template is applied to a predetermined area within the game space based on the command by the player, moving, by the computer, the game contents arranged at the first positions within the game space to the second positions of the game contents defined by the template within the predetermined area.

The invention described as being applicable to how a user controls city-building games, "in which a player builds a city within a virtual space (hereinafter referred to as 'game space') provided in the game program in a computer." These virtual cities include "arrangements of game contents, i.e., items such as protective walls, buildings, . . . soldiers, weapons, etc."

The problem being solved is related to managing game contents in large cities. According to the specification, "it is very complicated for a player to change positions, types, levels, etc., of individual items in the cities." As a consequence, users who play the game for some time find it increasingly necessary to micromanage these resources.

The claimed invention overcomes these drawbacks by "creating a template defining positions of one or more game contents and subsequently applying the template to a predetermined area within the game space." Doing so causes the computer to "move[] the game contents arranged within the game space to the positions of the game contents defined by the template." Particularly, when "the numbers of game contents of each type defined by the template match the numbers of game contents of each type in the game space to which the template is to be applied[, this causes] all game contents arranged within the game space [to be] moved to positions of game contents as defined by the template." Put another way, a single pre-defined operation can be used to replace a potentially large number of user interface interactions.

Other claimed embodiments include handling mismatches between "the numbers of game contents of each type defined by the template and the numbers of game contents of each type in the game space to which the template is to be applied." When the number of game contents is larger, "those with the smallest moving distance (e.g., Manhattan distance) to positions defined by the template may be moved to the positions of game contents as defined by the template." Conversely, when the number of game contents is smaller, "all game contents . . . may be moved to positions of game contents defined by the template, to which the moving distance is the smallest, with positions on which no game contents are arranged among the positions of game contents defined by the template."

Recently, the Federal Circuit provided a major clue as to how to think about patent eligibility in practice. In Dropbox Inc. v. Synchronoss Techs. Inc. the Court wrote that "an inventive concept exists when a claim recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art." This suggests that in order for a claim that is otherwise directed to an abstract idea to be successful under § 101, it should have three qualities: specificity, a technical solution that it provides, and some degree of novelty. More particularly, there should be a nexus between these three factors -- specificity, technical character, and novelty should appear in the same claim element or at least be explicitly linked in some fashion in the recitation of the claim.

The outcome of the PGR trial was that claims 1, 8, and 10-20 of the '594 patent were found to fail the eligibility test. On review, the Federal Circuit agreed with the PTAB that, under part one of Alice, all claims are "directed to the abstract idea of creating and applying a template of positions of one or more game contents." The Court further agreed with the PTAB that "certain claims of the '594 patent are broad enough to cover simply implementing the long-standing and conventional game of correspondence chess using chess templates on a computer."[1]

Gree attempted to argue that the claims involved an improved graphical user interface. But the Court rapidly dismissed this effort because only one of the claims specifically recited such features and did so at a high level.

Finding the claims directed to an abstract idea, the Court turned to part two of Alice. There, it found that almost all of the claims -- claim 1 included -- lacked an inventive concept. In particular, the computer hardware limitations "merely invoke generic computer components performing their standard functions to limit the use of the abstract idea itself to the technological environment of a game space on a computer." Further, the Court indicated that "claims 1, 8, and 10–20 are so broad that they encompass automation of . . . well-understood, routine, conventional activity."

In contrast, the Court found that claims 5-7, directed to the mismatched template scenarios, did include significantly more than the abstract idea itself. These claims recite:

5. The method according to claim 1, wherein when the number of game contents arranged within the game space is smaller than the number of game contents for which the second positions are defined by the template, the computer moves the game contents arranged at the first positions within the game space to the second positions of the game contents defined by the template to which the moving distance is the smallest.

6. The method according to claim 5, wherein out of the second positions of the game contents defined by the template, the computer displays positions on which no game contents are arranged and the game contents, in a discernible condition.

7. The method according to claim 1, wherein when the number of game contents arranged within the game space is larger than the number of game contents for which the second position[s] are defined by the template, the computer moves the game contents arranged at the first positions within the game space for which the moving distance to the second positions of the game contents defined by the template is the smallest, to the positions.

Unlike the other claims, claims 5-7 recite "specific steps for applying templates in mismatched template scenarios, these claims require something more than automating correspondence chess." Further, "Supercell has not shown that conventional correspondence chess template application included any technique—let alone the specifically claimed technique—for applying a template in the claimed mismatched template scenarios."

In summary, the Court concluded that claims 1-4, and 8-20 were ineligible and that claims 5-7 were eligible. Putting this into the Dropbox framework described above, the ineligible claims were non-specific and overlapped with known features from the prior art. In contrast, the eligible claims were drawn toward specific features that were not known to be in the prior art. The Court never explicitly addressed whether the claims had sufficient technical character, but seeing as it found some claims eligible, it appears that was the case.

But before finishing its opinion, the Court made an interesting criticism of PTAB's § 101 analysis that may be helpful for practitioners. The Court observed that:

The Board also determined that under the Alice framework, Petitioner only needed to account for each claim limitation under either a formulation of the concept a claim is 'directed to' or under Alice step two. To the extent that the Board meant that a proper § 101 analysis may consider some claim limitations only at Alice step one and others only at Alice step two, we do not agree with its reading of Supreme Court precedent. Instead, both steps of the Alice inquiry require that the claims be considered in their entirety.

Thus, the propensity for the PTAB and USPTO Examiners -- and frankly other Federal Circuit panels -- to analyze claim elements under the auspices of either Alice part one only or part two only, is incorrect.

[1] As described in the opinion, in correspondence chess, "a first player fills out a post card with information that represents the current state of the board and makes an indication on the post card of the first player's intended move and mails the post card to a second player who, having already set up a chess board, moves a piece on the board in accordance with the instruction on the post card." The template in correspondence chess would be the move as indicated on the post card.

Gree, Inc. v. Supercell Oy (Fed. Cir. 2020)
Panel: Circuit Judges Lourie, Hughes, and Stoll
Opinion by Circuit Judge Stoll

Posted at 09:28 PM in Federal Circuit, Patentable Subject Matter | Permalink | Comments (12)

Sun	Mon	Tue	Wed	Thu	Fri	Sat
						1
2	3	4	5	6	7	8
9	10	11	12	13	14	15
16	17	18	19	20	21	22
23	24	25	26	27	28	29
30	31

Authors

Contributors

About the Authors

E-mail Newsletter

Contact the Docs

Foreign Correspondents

Docs on Twitter

Recent Posts

Disclaimer

Patentable Subject Matter

May 03, 2021

April 20, 2021

March 28, 2021

March 24, 2021

March 15, 2021

March 14, 2021

March 09, 2021

February 04, 2021

February 02, 2021

January 14, 2021

December 29, 2020

December 22, 2020

December 16, 2020

December 03, 2020

May 2021

Google Search

Patent Resources

Patent Search

Patent Blogs & Sites

Biotech & Pharma Blogs & Sites