OP-IP

Friday, July 11, 2014

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"....

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...

database management
user interface
optimization of computer searching
updating user profiles
data compression,
biometric identification, and
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:

Send email feedback- sweyer@stites.com

Thursday, July 3, 2014

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:

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:

Send email feedback- sweyer@stites.com

Monday, June 30, 2014

Supreme Court says, "'No, You CANNOT Hear Me Now!' Let Alone Search my Cellphone Unless you get a Warrant" in RILEY v. CALIFORNIA

An unanimous U.S. Supreme Court determined that police officers must get a warrant to search a suspect's cellphone, absent an exigent circumstance. The Court, taking Riley v. Cal and U.S. v. Wurie together, found that officers searches of suspects' respective cellphones, without a warrant violated the suspects' Fourth Amendment Constitutional rights against "unreasonable searches and seizures."

I know what most regulars to OP-IP are thinking; what does this have to do with intellectual property law and technology and more importantly, what this guy know about criminal law and/or constitutional law? Although I may not be a criminal defense attorney or prosecutor, and I did not even stay at a Holiday Inn Express last night, I did take Criminal Procedure with Susan W. Brenner and Constitution Law with the legendary Allen Sultan (the virtual Forrest Gump of law professors) at the University of Dayton School of Law. And, I interned at the City of Dayton Prosecutor's Office the summer after my first year of law school. Clearly, I am eminently qualified to speak on this topic. More importantly, based on my association with the International Technology Law Association (ITechLaw), I was asked by the National Newspaper Publishers Association (NNPA) (also known as the Black Press of America) to opine on these Supreme Court decisions for one of its upcoming articles. Accordingly, since I was already familiar with these cases, I decided to write about them here.

So, why did the U.S. Supreme Court determine that officers must first secure a search warrant before looking through a suspect's cellphone? The Court first acknowledged that the Fourth Amendment gives us the right against unreasonable searches and seizures and emphasized that the "ultimate touchstone" of the Fourth Amendment is "reasonableness" of the search. Then, the Court looked to what was being searched, namely modern cellphones, including smart phones, such as an Apple iPhone 5S (shown above). The Court found that the pervasiveness of cellphone use, their immense computing power and voluminous amounts of data (including personal information) that is stored in their 16 gig up to 64 gig all weigh against the reasonableness in allowing searches without a warrant. Further, the Court recognized that many smart phones are linked to cloud storage services meaning that a search may include even more information. Taken as a whole, the Court found the warrantless search to be unreasonable.

The Court dismissed the government's position for why it should not need to seek a warrant first, namely that evidence on the smart phone could be permanently lost if the smart phone's data could be remotely wiped or the locked-down. The Court address these concerns by saying that a smart phone could be preserved from remote wiping by turning the phone off or using technology to block remote wiping and lock-down wireless signals.

Finally, the Court said that if there is a real concern that evidence might be lost, a warrantless search would be permitted under one of the exigent circumstance exceptions.

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Thursday, June 26, 2014

Supreme Court finds Aereo's Emerging Online Streaming Technology Hits Copyright Infringement Bullseye

The U.S. Supreme Court ruled that Aereo infringes over-the-air broadcasters' copyrights through Aereo's unauthorized rebroadcast of the broadcasters' content, rejecting Aereo's argument that its ingenious technology is in full compliance with the U.S. Copyright laws (ABC et al. v. Aereo). Aereo's technology includes individual, dime-size antennae, one for each subscriber to its service, from which Aereo streams over-the-air broadcast television programs to its subscribers. The U.S. Supreme Court determined that Aereo's streaming content (i.e. transmission) is a "public performance" in violation of the broadcasters' exclusive rights.

Aereo had contented that (1) it does not control what programs are transmitted so "Aereo", itself does not "perform" anything. Further, Aereo had contented that its transmission was not a "public performance" since a single individual receives a single transmission of content, and thus, each transmission is "private" and not public. Aereo had analogized its service to a modern version of an old school rabbit ears antenna connected to a television, but instead of rabbit ears, it uses a single dime size antenna and instead of
copper wires, it uses the Internet.

The broadcasters contend that Aereo's service is no different than cable service providers and therefore, should be governed by the same rules that applies to them, namely, Aereo must pay licensing fees to re-broadcast the content or be subject to copyright infringement.

The Supreme Court agreed with the broadcasters and disagreed with Aereo's two contentions. Looking at the intent, purpose and history of the U.S. Copyright Act, and § 111, in particular, (provisions for compulsory licensing of community antenna television (CATV)), the Court found that "an entity that engages in actives like Aereo's performs." The Court also found that the performance was public, by not recognizing a difference between (a) multiple, single transmissions to respective individuals and (b) a single transmission to multiple individuals.

For a more in-depth analysis of the Aereo decision, please see the article entitled, "Slings and Aereos of Outrageous Fortune: Supreme Court Rules that Aereo Infringes by Alexandra MacKay and Mari-Elise Taube, of Stites & Harbison, PLLC, as well as future posts here, at OP-IP.

Send email feedback- sweyer@stites.com

Friday, June 20, 2014

EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection

In an unanimous decision, the U.S. Supreme Court issued its opinion in Alice Corp. v. CLS Bank Int’l., finding that the computer-implemented method and system patent claims at issue were invalid as being directed to patent ineligible subject matter (under 35 U.S.C. § 101). The basis for finding the patent claims invalid was a determination that the claims were directed to an “abstract idea.” Regrettably, the “Supremes” sang their same old tune and failed to define, the term, “abstract idea.” Like a broken record and like so many recent opinions, the Supremes instead relied on the tried and true precedent first articulated by U.S. Supreme Court Justice Potter Stewart when determining when material is obscene, we know an abstract idea when we see it, therefore “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” Interestingly enough, the definition of an “abstract idea” was discussed during oral arguments, but the Court refused to adopt the Solicitor General’s definition of a claim directed to an abstract idea as “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.”

While not exactly a welcomed decision, the outcome in the case was consistent with prior U.S. Supreme Court cases and consistent with my first hand observations and predictions after hearing the oral augments in this case as previously reported in our article entitled, “Eyewitness Insights on Arguments Heard by the U.S. Supreme Court on the Patentability of Computer Implemented Methods.” The specific question before the Supreme Court was whether computer-implemented inventions, including claims to computers/computer systems, software, and processes are eligible for patent consideration. (See. e.g. footnote 2, page 2 of the opinion for a representative method claim and our prior OP-IP blog post, “Déjà vu all over again…” for a representative system claim).

In reaching its decision, the Supreme Court extended its two-step analysis test for determining patent eligibility of patent claims announced in the biotechnology case of Mayo v. Prometheus. Thus, the test for patent eligibility under § 101 for computer implemented methods, including business methods, is the same as the test for patent eligibility of biotechnology claims.

Like the prior U.S. Supreme Court cases of Bilski v. Kappos, Mayo v. Prometheus and Association for Molecular Pathology v. Myriad Genetics, Inc., we now have a fourth example of patent claims which are not patent eligible. Regrettably, in recent years, we have not had a case in which patent claims were held to be valid under §101. Therefore, it remains a challenge for patent practitioners to know what the U.S. Patent Office and the courts, all the way up to the Supreme Court, will find to be patent eligible. While each decision makes it more clear as to what is not patent eligible, we still do not have clear vision on what patent claims are absolutely patent eligible.

In addition, since Court refused to define the term, “abstract idea,” we do not know how to analyze a patent claim to determine whether a patent claim is directed to an “abstract idea.”

For more in-depth legal analysis of the issues in the case and possible ramifications, please see our article entitled, “Supreme Court Finds Computer Implemented Method and System Claims patent-ineligible as directed to the abstract idea of a "Fundamental Economic Practice."

Send email feedback- sweyer@stites.com

Tuesday, June 3, 2014

Ambiguity Squared: U.S. Supreme Court finds test for Determining Patent Claim Invalidity Based on Claim Ambiguity, Ambiguous

Nautilus's uphill climb to avoid patent infringement may have gotten a bit easier yesterday in view of the U.S. Supreme Court's decision in Nautilus, Inc. v. Biosig Instruments, Inc. The U.S. Supreme Court found that the test previously used to validate alleged infringement patent claims of Biosig, based on claim ambiguity, improper. Ironically, the reason that the Supreme Court found the previous test for patent claim invalidity (based on claim ambiguity) improper was that the test, itself, was ambiguous. The new test finds that a patent is invalid for indefiniteness if its claims, fail to inform, with "reasonable certainty", those skilled in the art about the scope of the invention. This opens the door for Nautilus to (again) challenge the validity of the alleged infringed patent claims under this new test. If successful, Nautilus can avoid patent infringement by invaliding the alleged infringed claims based on the patent claims being insufficiently clear (i.e.vague and indefinite under 35 U.S.C. §112, second paragraph).

Summary
In the patent suit at issue in this case, Biosig had accused Nautilus of infringing one of its patents. Nautilus responded by asserting that the alleged infringed patent claims were insufficiently clear (e.g. vague and indefinite) and thus the alleged patent claims are invalid. Although Nautilus was successful at the district court level in invalidity the patent claims, on appeal by Biosig, the Federal Circuit reversed the district court and found the patent claims were not indefinite and the claims were sufficiently clear based on a test which includes determining if the claims are "amenable to construction" or "insolubly ambiguous". The U.S. Supreme Court found the Fed. Circuit's test improper.

The U.S. Supreme Court's rationale for finding the test improper was that the test "tolerates some ambiguous
claims but not others." As a result, the Supreme Court determined that the prior test would find some patent claims valid even though there is uncertainty as to the exact meaning of the patent claims. The Supreme Court said that this scenario is inconsistent with the statutory requirement that patent claims be sufficiently definitive to provide the public (including those skilled in the art) "reasonable certainty" of the scope of the invention. If not, the Court reasoned, the public would not have sufficient notice of the scope of a patent, and thus not have sufficient knowledge to avoid patent infringement.

Unlike prior Supreme Court patent cases, the Court announced a new test for determining patent claim definiteness. The new test finds a "patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."

Take Home Lesson
For patent practitioners, the take home lesson from this decision is to draft patent claims and patent specifications with sufficient disclosure to ensure patent claims are definitive and not ambiguous, so that the public, and in particular, those skilled in the art, will have "reasonable certainty" of the scope of the patent claims. In order to satisfy a balance between intentionally having broad patent claims to cover many different embodiments, the use of dependent claims directed to specific embodiments may help ensure that at least some patent claims survive an indefiniteness challenge. Further, including many different embodiments in the patent specification may provide the public with reasonable certainty of the scope of the patent claims.

Finally, announcing a test is a departure from some prior U.S. Supreme Court patent cases, e.g. Bilski v. Kappos. Often the Supreme Court remands patent cases back to the Federal Circuit to develop a test based on its instructions in its opinion. This may signal a change in the Court and may mean that the Court will be more active in establishing its own tests rather than relying on the Federal Circuit to develop tests, later confirmed or found invalid by the Supreme Court. Observers of the Supreme Court, including us here at OP-IP anxiously await the decision in the other U.S. Supreme Court intellectual property cases this term, including patent cases, such as Alice Corp. v. CLS Bank.

Send email feedback- sweyer@stites.com

Friday, April 4, 2014

Disney's "Frozen" in Hot Water Over Alleged Copyright Infringement

Disney has found itself in a bit of an icy situation. Last week Animator Kelly Wilson filed suit against Disney in the Northern District of California for copyright infringement. Wilson alleges that the teaser trailer of Disney's hit film Frozen is substantially similar, if not identical, to her short film The Snowman in plot, themes, dialogue, mood, setting, pace, characters, and sequence of events. But does this "snowman" have a leg to stand on?

To make her point, the Complaint includes the following screencaps:

The Snowman was relased in 2010, and has appeared on the Internet and in animated film festivals where Pixar employees "were present and competing" in the same category. Wilson alleges that Disney had been provided copies of The Snowman prior to the creation of Frozen as part of various job applications with Disney. The Snowman tells the story of a snowman near an icy lake who becomes friends with a group of rabbits trying to eat his carrot nose. Likewise, The Snowman the Frozen trailer depicts a snowman attempting to save his carrot nose before befriending his former foe.

Section 501 of the U.S. Copyright Act provides that anyone who violates any of the exclusive rights of a copyright owner is liable for copyright infringement. For Disney to be found liable for copyright infringement, Wilson must prove that Disney had access to The Snowman. She must also prove that Frozen is substantially similar to the The Snowman.

To us here at OP-IP Law Blog, it seems like you can check "substantially similar" off the list but you be the judge:

The Snowman

Frozen trailer

Wilson seeks a finding of infringement and profits gained from the exploitation of The Snowman in addition to damages and attorneys’ fees. Disney has not yet filed its Answer, so we must wait and see whether this matter will snowball.

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