Tuesday, December 31, 2013

Top Ten OP-IP Blog Posts of 2013

As 2013 comes to a close, the mainstream media, partially in an effort to reflect on the past year and partially to fill a news void in the period between Christmas and New Year's, compile a year in review.  We are once again inundated with stories of Edward Snowden, the healthcare.gov website roll-out debacle, etc.  Here at OP-IP, we too, look back on the memorable blog posts of 2013.

In the tradition of Casey Casum once again enjoy the Top Ten OP-IP blog posts of 2013:











Happy New Year 2014!


Tuesday, December 17, 2013

Déjà vu all over again: Patentablity of computer implemented software

The U.S. Supreme Court will weigh in (again) on what constitutes patent eligible subject matter (under 35 U.S.C. § 101) when it hears the case of Alice Corp. v. CLS Bank. Like the movie, Groundhog Day, the U.S. Supreme Court will once again decide what "things" are patentable. 

Distilling down the issue in CLS, the Supreme court will decide whether a general purpose computer (think PC, Mac, or server) programmed to conduct financial transactions is eligible for patenting.  Claim 1 (below) is exemplary of the patent claims in suit.

1. A data processing system to enable the exchange
of an obligation between parties, the system
comprising:
            a data storage unit having stored therein information
about a shadow credit record and
shadow debit record for a party, independent
from a credit record and debit record maintained
by an exchange institution; and
            a computer, coupled to said data storage unit, that
is configured to:
(a) receive a transaction;
(b) electronically adjust said shadow credit
record and/or said shadow debit record in order
to effect an exchange obligation arising
from said transaction, allowing only those
transactions that do not result in a value of
said shadow debit record being less than a
value of said shadow credit record; and
(c) generate an instruction to said exchange
institution at the end of a period of time to adjust
said credit record and/or said debit record
in accordance with the adjustment of said
shadow credit record and/or said shadow debit
record, wherein said instruction being an irrevocable time invariant obligation placed on said exchange institution.

But we all (including the Supreme Court) have seen the exercise of determining patent subject matter eligibility before.  For example, Gottschalk v. Benson, 409 U.S. 63 (1972) (decimal to binary number converting programmed computer); Parker v. Flook, 437 U.S. 584 (updating an alarm); Diamond v. Dierh, 450 U.S. 175 (1981) (curing rubber) ; Bilski  v.Kappo, 130 S.Ct. 3218 (2010) (hedge fund business method); Mayo v. Prometheus, 566 U.S. ___ (2012) (correlating drug metabolism); and Association for Molecular Pathology v. Myriad Genetics, 569 U.S. ___ (2013) (isolated DNA).  So what is new here to decide?

The en bank Fed. Cir. (lower court decision that is the subject of the CLS appeal), found the above claim 1 ineligible for patenting (articulated in the plurality opinion as a machine/computer/apparatus that purportedly implements an abstract financial method and subsumes the entire general abstract idea).  This all sounds eerily familiar.  It echoes to the past as if from the ghost of Supreme Court Justice Douglas past (Douglas being the opinion writer in Benson finding that implementing a mathematical principle on a physical machine, e.g. a computer, is not a patentable application of that principle).

If I were to predict the outcome in CLS, based on the most recent S.Ct. patent cases, I would say that the Supremes will (1) find the CLS computer implementing financial transactions (apparatus/data system/"machine") claims are invalid under § 101 as being abstract (per se) as subsuming the general abstract financial transaction "idea", citing Benson, and the other aforementioned S.Ct. decisions above, and (2) find the Fed. Cir. plurality opinion regarding the specific framework and/or standard for analyzing an apparatus claim for § 101 patent subject matter eligibility (i.e. extraction of the general idea of a claim and then determine whether the idea is abstract and subsumes the general idea) is not valid.

Happy Christmas!



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