THE CURRENT STATE OF 35 U.S.C. 101 IN VIEW OF ALICEweb1.amchouston.com/.../2016/ACC_IP_CLE_-_Alice_10… · · 2016-12-15THE CURRENT STATE OF 35 U.S.C. 101 IN VIEW OF ALICE

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THE CURRENT STATE OF 35 U.S.C. 101 IN VIEW OF ALICE

Post-Alice Case Law

Presented by Brian TompkinsDecember 14, 2016

2bracewelllaw.com | Texas New York Washington, D.C. Connecticut Seattle Dubai London

Alice Corp. v. CLS Bank Int’l (June 2014)

• Two step test for patent-eligible subject matter• 1) Are the claims directed to an abstract idea?• 2) If yes, do the claims include “significantly more” to transform

the abstract idea into patent-eligible subject matter?



• Does not mention the term “software”• Did not categorically exclude software from

patentability: “At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law.”



• “There is no dispute that a computer is a tangible system (in § 101 terms, a ‘machine’), or that many computer-implemented claims are formally addressed to patent-eligible subject matter.”

• “Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.”


Post-Alice decisions

• Federal Circuit cases that attempt to interpret Alice and § 101

• Large number of appeals from early dismissals in District Court• 12(b)6 - Motion to dismiss• 12(c) – Judgment on the pleadings• Summary judgment motions

• Very panel dependent


Post-Alice Helpful cases (Federal Circuit found patent-eligible subject matter)• DDR Holdings, LLC v. Hotels.com, L.P. (Dec. 2014)• Enfish LLC v. Microsoft Corp. (May 2016)• BASCOM Global Internet Services, Inc. v. AT&T Mobility

LLC (June 2016)• McRO, Inc. v. Bandai Namco Games America Inc. (Sept.

2016)• Amdocs LTD. v. Openet Telecom, Inc. (Nov. 1, 2016)• Rapid Litigation Mgmt LTD. v. CellzDirect, Inc. (July 5,

2016)


Post-Alice Bad cases (No patent-eligible subject matter)• Everything Else!• >20 cases


Keep in mind...

• The USPTO has their own interpretations of cases• Guidelines• Memorandums

• https://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0

• Interpretations also vary among Art Units and Examiners

https://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0


DDR Holdings (Dec. 2014)

• Claims directed to generating a composite web page that combines certain visual elements of a “host” website with content of a third-party merchant

• Claims that are “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” are patent-eligible subject matter


DDR Holdings

• The claims “do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.”

• However: “Not all claims purporting to address Internet-centric challenges are eligible for patent”


Enfish (May 2016)

• Claims directed to self-referential table for relational database

• Claims not directed to an abstract idea and are patent-eligible subject matter because they are directed to a “specific improvement in the way computers operate”


Enfish

• “We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract”

• “Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis.”


Enfish

• Conclusion is “bolstered by the specification’s teachings that the claimed invention achieves other benefits over conventional databases”

• “Increased flexibility, faster search times, and smaller memory requirements”


BASCOM (June 2016)

• Claims directed to system for filtering Internet content located on a remote ISP server

• Court deferred step one finding (“abstract idea”) and moved to step two (“significantly more”)

• Claims found patent-eligible because of “non-conventional and non-generic arrangement of known, conventional pieces”


BASCOM

• “We agree with the district court that the limitations of the claims, taken individually, recite generic computer network and Internet components, none of which is inventive by itself.”

• “As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”


McRO (Sept. 2016)

• Claims directed to determining when to set keyframes for facial animation using rules that determine morph weight outputs

• Claims not directed to abstract idea because they avoided preemption and were more than mere automation of existing human activity


McRO

• “While the result may not be tangible, there is nothing that requires a method ‘be tied to a machine or transform an article’ to be patentable.”


McRO

• “By incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques.”

• “The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.”


McRO

• “When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques.”


Amdocs (Nov. 2016)

• Broadest software claim upheld by the Federal Circuit under the Alice test

• Invention directed to merging network accounting data in a network-based filtering and aggregating platform

• Components of system of the invention are arranged in a distributed architecture


Amdocs (Nov. 2016)

• “Computer program product” claim that includes just three elements1. “computer code for… a first network accounting record” 2. “computer code for correlating the first network accounting

record with accounting information …”3. “computer code for using the accounting information with

which the first network accounting record is correlated to enhance the first network accounting record.”


Amdocs (Nov. 2016)

• Court relied on the construction of the claim term “enhance” to find claim eligible under step two of the Alice test.

• “Enhance”— “to apply a number of field enhancements in a distributed fashion”

• Specification described a “critical advancement” over the prior art.


Amdocs (Nov. 2016)

• Claimed invention was unconventional technological solution” – “enhancing data in a distributed fashion” - to a technological problem “massive record flows which previously required massive databases.”


Summary for applying the cases

• DDR Holdings - rooted in computer technology in order to overcome a problem specifically arising in the realm of computers

• Enfish – improvements in the way computers operate


Summary for applying the cases

• BASCOM - non-conventional and non-generic arrangement of known and conventional elements

• McRO - limited to a specific process and no preemption of different structures or different techniques

• Amdocs – claim term with specific meaning that implicates benefits over prior art via unconventional technological solution



PATENTABLE SUBJECT MATTER UNDER 35 U.S.C § 101

Practical Experiences & Prosecution Strategies Post-Alice

Christopher L. Drymalla, Senior CounselDecember 14, 2016


Presentation Roadmap

• Common Rejections• Basis for Rejections• Responding to Rejections• Prosecution Tips


Common Areas for Rejections under Alice

• Data processing• Application of Algorithms

• e.g., computer executed operations for determining reservoir characteristics

• Method / System that performs a series of operations• e.g., receiving sensor data, processing the sensor data & outputting resulting

data


Common Elements of a Processing Claim Rejected Under Alice• Pre-Processing (Part A)

• Data collection• e.g., collecting seismic data using seismic sensors

• Processing (Part B)• Data processing

• e.g., processing the seismic data using algorithm X to determine reservoir characteristics

• Post-Processing (Part C)• Use of the processed data

• e.g., generating a set of reservoir characteristic data• e.g., generating a seismic image• e.g., controlling a well operation based on the reservoir characteristics


Common Examiner Analysis of a Processing Claim

• Step 1 – Dispose of Features Allegedly Not Novel• Dismiss the pre and post processing features as well-known in the art

• Step 2 – Assess the Remaining Features for an Abstract Idea• Assess the processing feature for an abstract idea


Common Format of an Alice Rejection

• Part I – Judicial Exception (Abstract Idea)• “Claim 1 is directed to the abstract idea of gathering, processing and using

seismic data…”

• Part II – Significantly More• “The claim does not include additional elements that are sufficient to

amount to significantly more than the judicial exception because the additional elements are well-understood, routine and conventionalactivities previously known to the industry, specified at a high level of generality, to the judicial exception, add insignificant extrasolution activity to the judicial exception and generally link the use of the judicial exception to a particular technological environment or field of use.”


USPTO Examiner Guidelines for Alice Rejections

• USPTO Examination Guidelines for Subject Matter Eligibility*• USPTO Memos to Patent Examining Corps (Best)

• e.g., May 4, 2016 Memo - “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection”

• e.g., November 2, 2016 Memo – “Recent Subject Matter Eligibility Decisions”

• USPTO Subject Matter Eligibility Examples (Better)• e.g., July 2015 and May 2016 Examples

• USPTO Subject Matter Eligibility Court Decisions (Good)

* available at: <https://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0>


Formulating a Subject Matter Eligibility Rejection (May 4, 2016 Memo )

• Step 1 - Identify the Judicial Exception • When the examiner has determined the claim recites an abstract idea, the

rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim, and explain why it corresponds to a concept that the courts have identified as an abstract idea

• citing to an appropriate court decision that supports the identification of the subject matter recited in the claim language as an abstract idea

• examiners should not go beyond those concepts that are similar to what the courts have identified as abstract idea

Similar requirements are provided for law of nature, natural phenomenon and product of nature


Formulating a Subject Matter Eligibility Rejection (May 4, 2016 Memo ) (cont’d)

• Step 2 - Explain Why Not Significantly More• …identify any additional elements (features/limitations/steps) recited in the

claim beyond the judicial exception and explain why they do not add significantly more to the exception• address the additional elements both individually and as a combination when

determining whether the claim as whole recites eligible subject matter• it is particularly critical to address the combination of additional elements,

because while individually-viewed elements may not appear to add significantly more, those additional elements when viewed in combination may amount to significantly more than the exception by meaningfully limiting the judicial exception


Formulating a Subject Matter Eligibility Rejection (May 4, 2016 Memo ) (cont’d)

• Step 2 - Explain Why Not Significantly More (cont’d)• lack of novelty (i.e., finding the element in the prior art) does not necessarily

show that an element is well-understood, routine, conventional activity previously engaged in by those in the relevant field

• …storing data to a process that only recites computing the area of a space (a mathematical relationship) does not add a meaningful limitation to the process of computing the area


Recent Subject Matter Eligibility Decisions(November 2, 2016 memo)

• Notable Points from McRO • Examiners should consider the claim as a whole...and should not

overgeneralize the claim or simplify it into its "gist" or core principles, when identifying a concept as a judicial exception

• An "improvement in computer-related technology" is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of "rules" (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer


Recent Subject Matter Eligibility Decisions(November 2, 2016 memo) (cont’d)

• Notable Points from McRO (cont’d)• An indication that a claim is directed to an improvement in computer-

related technology may include…• 1) a teaching in the specification about how the claimed invention improves a

computer or other technology…• (2) a particular solution to a problem or a particular way to achieve a desired

outcome defined by the claimed invention, as opposed to merely claiming the idea of a solution or outcome


Recent Subject Matter Eligibility Decisions(November 2, 2016 memo) (cont’d)

• Notable Points from BASCOM • Examiners should consider the additional elements in combination, as well

as individually, when determining whether a claim as a whole amounts to significantly more, as this may be found in the nonconventional and non-generic arrangement of known, conventional elements

• Preemption• Lack of Preemption is not dispositive


Responding to an Alice Rejection

• Address both parts of the rejection• The Judicial Exception (Abstract Idea)

• Is the alleged abstract idea is a concept identified by the courts as an abstract idea? If not, challenge the allegation!

• This is tough to win now, but may become easier over time

• Significantly More• Analogize the claim to the USPTO Subject Mater Eligibility Examples• Emphasize the significance of the claim as a whole• Identify the field of the invention & identify how the claimed embodiment

improves the field of the invention


Responding to an Alice Rejection (cont’d)

• Identifying the Field of the Invention

• Just because the process is executed on a computer does not mean the field of the invention is necessarily rooted in computer technology

• Identify a field that the claim improves



• Identifying Improvements to the Field of the Invention

• Time and Cost

• Highlight what functions the claim enables the computer to do



• Emphasize Pre/Post Solution Activity

• Pre/Post Solution features confine the claims to a particular technology

• Pre-Solution features that provide the needed data

• Post-Solution features that make use of the data generated using the processing


Example Claim 11. A method comprising:

conducting, using a plurality of seismic sensors arranged in an array, a seismic operation to generate seismic data;

processing the seismic data using Algorithm X, to generate enhanced seismic data; and

generating, using the enhanced seismic data, a high-resolution seismic image.


Example Claim 21. A method comprising:

conducting in-situ logging of a well to generate in-situ well log data; andprocessing the in-situ well log data using Algorithm X, to generate Y-type

reservoir characteristic data.*

*previously obtained using dead-oil


Divided Infringement

• Akamai v. Limelight (Fed. Cir. 2015)

• direct infringement liability of a method claim under 35 U.S.C. §271(a) exists when all of the steps of the claim are performed by or attributed to a single entity (i.e., single entity rule)

• The actions of one party are attributed to another party under a theory of vicarious liability so as to impose direct infringement liability in at least three different situations, namely, principal-agent relationships, contractual arrangements, and joint ventures


Tips for Prosecution - Examiner Interviews

• Engage the Examiner• ask the Examiner how the art unit is handling 101 rejections

• Make the Examiner your Advocate!• teach the Examiner how to apply 35 USC § 101• explain the technological field of the invention• explain the improvements to the technological field • emphasize reviewing the claim as a whole• force the Examiner to agree that this is something worth protecting!


• Explain the problem

• Explain the advantages of the invention

• Fully describe pre/post solution elements

Tips for Prosecution – Drafting Applications


Takeaways

• Draft applications with Alice in mind • Engage the Examiner• Emphasize the claim as a whole• Properly define the field of the invention• There is in NO silver bullet!!!


QUESTIONS?

Documents

THE CURRENT STATE OF 35 U.S.C. 101 IN VIEW OF ALICEweb1.amchouston.com/.../2016/ACC_IP_CLE_-_Alice_10… · · 2016-12-15THE CURRENT STATE OF 35 U.S.C. 101 IN VIEW OF ALICE