Aereo's Online Streaming Broadcast TV Caught Between a Rock and a Hard Place

The U.S. Copyright Office has denied Aereo's request to pay compulsory licensing fees to retransmit broadcast television signals over the Internet, as cable provides pay to retransmit over coaxial cable lines.  A denial letter dated July 16, 2014 sent to Aereo explains the U.S. Copyright's position, essentially saying that Aereo is not a cable service provider, and therefore, not eligible for paying the compulsory license (a.k.a. statutory license) to authorize it to retransmit the broadcast television programs. 

This rejection puts Aereo between a rock and a hard place.  In June, the U.S. Supreme Court (ABC et al. v. Aereo) determined that Aereo's streaming broadcast content over the Internet was a violation of the U.S. Copyright laws, in part, based on the Court finding similarities between Aereo's service and that of cable service providers.  The Court reasoned that Congress intended to regulate the "type of service" that Aereo was providing, citing the compulsory licensing provisions of the U.S. Copyright Act, 17 U.S.C. § 111 (§111)  Regrettably for Aereo, the U.S. Copyright Office does not find §111 covers Internet re-transmission. Therefore, Aereo, for now, cannot pay the statutory license fee to become an authorized retransmitter of broadcast television content.

For a more complete discussion on ABC et al. v. Aereo see...

• Supreme Court finds Aereo's Emerging Online Streaming Technology Hits Copyright Infringement Bullseye; and
• Slings and Aereos of Outrageous Fortune: Supreme Court Rules that Aereo Infringes

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

GPS (Guidance for Patent-eligible Subject matter) to Direct the U.S. Patent Office in view of Alice Corp. v. CLS Bank Int'l and the USPTO Preliminary Instructions

The U.S. Patent Office ("USPTO") has issued an APB, via a Fed. Reg. "Request for Comments...", to assist it in its unenviable task of developing new examination guidelines for its Examining Corps to guide them in evaluating patent application claims for patent-eligible subject matter under 35 U.S.C. § 101.   The challenge for the U.S. Patent Office is to establish advice for its Examiners when many commentators believe that the unanimous U.S. Supreme Court opinion in Alice Corp. v. CLS Bank Int’l failed to provide adequate instruction for one to evaluate whether a patent claim is directed to patent eligible subject matter.  See e.g. High court ruling leaves open questions on software patent eligibility (Virginia Lawyers Weekly,  Kimberly Atkins, June 24, 2014); and EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection.  Fulfilling our civic duty, we at OP-IP pick up the gauntlet and provide our own GPS (Guidance for Patent-eligible Subject matter) in view of Alice Corp. and the USPTO's June 25, 2014 Preliminary Instructions (in view of Alice Corp.) to provide direction to Examiners to locate patent eligible subject matter, and in particular, computer-implemented methods and systems.

Very Brief Historical Background...

The Alice Corp. decision extended its two-step process for evaluation patent-eligible subject matter of patent claims directed to laws of nature, natural phenomena and abstract ideas of biotechnology patents to also include computer-implemented methods and systems.   

Step 1: Is the patent claim directed to one of the three patent ineligible concepts of Laws of Nature, Natural Phenomena or an Abstract Idea, (“LNA”)?  If no, then the patent claim does not raise a § 101 issue.  If yes, then step 2.

Step 2: If the claim is directed to a LNA, does the claim put meaningful limitations on the LNA and/or apply the LNA in a way that limits the LNA, e.g. does the patent claim recites a meaningful application of the LNA so that the claim is not merely the LNA performed in a computer environment,  and thereby claims less than the LNA, itself?

GPS to Locate Patent Eligible Subject Matter (e.g. computer-implemented methods/systems)...

Step 1 Guidance: (identifying if a claim is directed to LNA)

• It is incumbent upon the USPTO to define "abstract idea" so that Examiners can faithfully do the analysis of Step 1. Although the Alice Corp. Court did not deem it necessary to define "abstract," based on its conclusion that there was consensus that the claims at issue were directed to an abstract idea (stating “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case”), Examiners need guidance on how to evaluate whether claims that they examine are directed to an abstract idea.  To do this, one must have a useful definition of "abstract" to apply.  Mere examples of claims not patent eligible under § 101, citing U.S. Supreme Court precedent is insufficient and inadequate for guiding Examiners to determine whether a patent claim is directed to an abstract idea under the analysis of Step 1. 
• Alice Corp. did not adopt the Solicitor General's definition of an abstract claim, namely “a claim that is not directed to a concrete innovation in technology, science, or the industrial arts…abstract in the sense that it is not a concrete innovation in the traditional realm of patent law”.    Although Ruth Bader Ginsberg requested the Solicitor General give his definition of an abstract concept during Oral Arguments (page 53, lines 2-13), the Supreme Court has yet to adopt a definition of "abstract idea", "abstract concept" or "abstract claim."
• Alice Corp. did hint that if a claim were directed to innovation in technology or improve a computer's function, the claim may be patent eligible under § 101.  
• One admonition is that a patent claim (including computer-implemented method/system) does not necessarily have to be an improvement of another technology or improve the function of a computer, to be patent eligible under § 101.
• The dictionary definitions of "abstract"....

1. Abstract according to Merriam-Webster...

• disassociated from any specific instance;
• expressing a quality apart from an object {the word poem is concrete, poetry is abstract}; and 
• relating to or involving general ideas or qualities rather than specific people, objects, or actions of art: expressing ideas and emotions by using elements such as colors and lines; and without attempting to create a realistic picture.

      2. Abstract according to Oxford Dictionary...

• existing in thought or as an idea but not having a physical or concrete existence;
•  not based on a particular instance; theoretical; and
•  ...denoting an idea, quality, or state rather than a concrete object: {abstract words like truth or equality};.

• The KEY to determining whether a patent claim is not Abstract is whether the patent claim recites a specific, concrete instance or application.  Specific, concrete applications or specific instances are NOT abstract, per the definition of abstract by Merriam-Webster and Oxford Dictionary (see above).

 Examples of Abstract ideas / Concepts and Examples of NOT Abstract Ideas

• Poetry is abstract, a poem (a concrete example or instance) is NOT abstract (Merriam-Webster).
• Gaming or the idea of playing games is abstract, but performing the concrete, discrete steps of a game, following a set of rules (i.e. a concrete example or embodiment of a specific game) is NOT abstract (as a poem is the non-abstract embodiment of the abstract idea/concept of a poem.  (see e.g. Merriam-Webster).
• Patent claims only reciting fundamental economic principles are abstract in view of Alice Corp. but claims reciting specific instances of a "new" financial transaction may be not abstract.
• Other NOT abstract examples are specific embodiments and concrete, specific instances including working examples which incorporate and form an invention.

Step 2 Guidance: (determining whether a claim, directed to LNA, recites an application of the LNA)

• Examples of applications of an LNA patent eligible under § 101 include computer code or software (operable on a computer) which is directed to improving / enhancing the function of a computer including, but not limited to...

1. database management
2. user interface
3. optimization of computer searching
4. updating user profiles
5. data compression,
6. biometric identification, and
7. encryption.

• Other examples of applications of an LNA patent eligible under § 101 include methods or systems performing steps in a game, following a defined, claimed rule set, producing a determined claimed result, e.g. winners and losers, using the established, claimed rule set. 

 For more background information of the Alice Corp. v. CLS Bank Int’l, please see our other articles:

1. U.S. Patent Examining Corps Sending Computer-implemented Method and System Patent Applications to Apocryphal § 101 Death Panel
2. EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection 
3. US Supreme Court Finds Computer Implemented Method and System Claims Directed to “Fundamental Economic Practice” is a patent-ineligible Abstract Idea
4. Eyewitness Insights on Arguments Heard by the U.S. Supreme Court on the Patentability of Computer Implemented Methods
5. “Déjà vu all over again…

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

U.S. Patent Examining Corps Sending Computer-implemented Method and System Patent Applications to Apocryphal § 101 Death Panel

Many U.S. Examiners (e.g. Examiners in Art Unit 3600) feel obligated to now reject computer-implemented methods and systems as failing to meet the 35 U.S.C. § 101 (patent eligibility subject matter requirement) in view of the U.S. Supreme Court decision in Alice Corp. v. CLS Bank Int’l.  For example, U.S. Patent Office Art Unit 3600 has assembled a panel of examiners to review pending computer-implemented method and system patent applications to determine whether their patent claims raise patent ineligibility issues under § 101 in view of  Alice Corp.  Citing the "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS Bank" (hereinafter "Preliminary Instructions") issued June 25, 2014, many Examiners are now asserting that claims which previously would have met the subject matter patent eligibility requirements under § 101, now fail Alice Corp's two-step test for patent eligibility.  The Examiners' rational is that computer-implemented method claims are directed to an "abstract idea" (e.g. "organizing human activities") and the computer-implemented "abstract idea" does not improving another technology or improving the function of the computer itself.  

The two step test articulated in Alice Corp is:

Step 1: Is the patent claim directed to one of the three patent ineligible concepts of Laws of Nature, Natural Phenomena or an Abstract Idea, (“LNA”)?  If no, then the patent claim does not raise a § 101 issue.  If yes, then step 2.

Step 2: If the claim is directed to a LNA, does the claim put meaningful limitations on the LNA and/or apply the LNA in a way that limits the LNA, e.g. does the patent claim recites a meaningful application of the LNA so that the claim is not merely the LNA performed in a computer environment,  and thereby claims less than the LNA, itself?

Under Step 1, the Preliminary Instructions, provides a non-exhaustive list of "abstract ideas" including fundamental economic practices, certain methods of organizing human activities, an idea of itself, and mathematical relationships/formulas.

Under Step 2, the "Preliminary Instructions" provides a non-exhaustive, non-exclusive, non-limiting list of examples of how a computer-implemented "abstract idea" can be patent eligible including improving another technology, improving the function of the computer itself, and putting a meaningful limitation on the abstract idea to a particular technical environment.

Based on multiple personal examples, some Examiners feel that they must reject patent claims based on the "Preliminary Instructions" forcing them to find that the subject "method" (implemented via a computer) is an organizing human activity, thus satisfying Step 1, and then move on to Step 2.  Under Step 2, the Examiners then assert that the "Preliminary Instructions" require the "abstract claims" to be computer-implemented to improve another technology or the function of the computer itself in order to find the claim patent eligible under § 101.

The apparent trend of the Examiners to reject computer-implemented claims as failing to meet the requirements of § 101 in view of Alice Corp. v. CLS Bank Int’l is not surprising.  Post-Bilski (machine or transformation criteria is one test for patent eligibility) but Pre-Alice Corp, many Examiners required some recitation of a physical computer or processor in many software and business method claims in order to find the method claims were patent eligible under §101.  Essentially, Examiners would assume that a software method claim would fail Step 1, i.e. the method was abstract, a law of nature or natural phenomena.  But, if the Examiners determined that the software method claim was sufficiently computer-implemented, the Examiners would allow the claim under § 101.  In this way, Examiners never had to deal with determining whether the underlining software method was an "abstract idea".  

Under Bilski and the US Patent Office prior examination guidelines, computer implementation of a method and a computer system performing the method, in most cases, were considered patent eligible under § 101.  Alice Corp. has changed this calculus.  Under Alice Corp, mere computer implementation of a method (e.g. software) deemed "abstract"/"an abstract idea" is not sufficient to satisfy §101.  Unfortunately, Alice Corps', 'I know an abstract idea when I see it' analysis of a patent claim and failure to define an "abstract idea" does not provide the Examining corps much advice on a proper test to use to determine when a method is directed to an abstract idea.  

            For more background information of the Alice Corp. v. CLS Bank Int’l, please see our other articles/posts:

1. EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection
2. “Supreme Court Finds Computer Implemented Method and System Claims patent-ineligible as directed to the abstract idea of a "Fundamental Economic Practice."
3.  “Eyewitness Insights on Arguments Heard by the U.S. Supreme Court on the Patentability of Computer Implemented Methods.”
4. OP-IP blog post, “Déjà vu all over again…

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com