Claims of Uniloc Patents Covering a Software Distribution System Found Patent Eligible by Federal Circuit

May 24th, 2019

This post contributed by Eric Bachinski of Schwegman, Lundberg & Woessner, P.A.

Today the Federal Circuit issued an opinion addressing patent eligibility of the claimed subject matter of four Uniloc patents.[1] The Federal Circuit found two of the four representative claims to be patent eligible under the Alice two-step patent eligibility test. The Court distinguished the claims patent eligibility based in-part on whether the claims merely described functional subject matter or whether the claims recited particular improvements over then-existing computer and network functionality.

The first claims addressed by the Court were found to be directed to centralized software distribution. The district court found the claims to be ineligible because the specification described use of the claimed subject matter in the context of an existing software distribution system and considered the claims to be directed to conventional computer functionality. The Federal Circuit found this to be an incorrect analysis of the claims because, while the claims could be used as part of a conventional system, the claims recited an improved software distribution system using file packets in a specific way to accomplish centralized software distribution in an unconventional matter. Thus, the Court found the claimed subject matter reciting a particular improvement to computer functionality not to be directed to an abstract idea under Alice step one. The Court cited to Finjan and McRO to support the conclusion that claims reciting a particular improvement to prior art renders the claims patent eligible.

The second claims addressed by the Court were found to be directed to acquiring a set of user preferences and a set of administrator preferences when launching an on-demand application installation. The Federal Circuit again found that the claims went beyond claiming functionality using conventional computing components and rather recited a using the conventional components in unconventional ways to achieve a particular improvement to computer functionality. The Court cited to Enfish to support the conclusion that such an improvement renders the claims patent eligible. The Court went on to state that even if the claims would have been found to be abstract under Alice step one, the claims still would have been eligible under Alice step two, citing Bascom, as a particular way of using conventional components to achieve an unconventional result.

The third and fourth claims were found to be directed, respectively, to using a desktop interface to access and application server and a license management server that manages client access to an application. Both of these claims were found to be directed to an abstract idea. In the former, the Court found the claims to recite functional use of conventional components. Uniloc argued that the display regions of the interface were unconventional. However, the Court found, citing Intellectual Ventures I LLC v. Capital One Bank, the display regions to be icons that provided conventional functionality and rendered the claims abstract. In the latter, the Court found, citing Elec. Pwr. Grp., that the claims did not go beyond data collection, analysis, and display. There was nothing in the claims that went beyond conventional license management because the Court found the policy, authorization, and notification to operate in a conventional way.

[1] Uniloc USA, Inc, v, ADP, LLC, App. No. 18-1132 (Fed. Cir. May, 24, 2019) (Non-Precedential), http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1132.Opinion.5-24-2019.pdf

According to Anticipat, the PTAB has Set Another Record for Reversing Abstract Idea Rejections

May 14th, 2019

According to the Anticipat Blog, in March of this year the PTAB broke another record for total abstract idea rejections reversed. In March 2019, the PTAB wholly reversed 77 decisions, exceeding the previous record-holding month by 15.

See Anticipat blog posting:

The PTAB sets Another Record for Reversing Abstract Idea Rejections

The PTAB continues to reverse examiner 101 rejections

December 4th, 2018

The PTAB Reversed an Examiner’s 101 Rejection of Claims for a Method of Characterizing Atherosclerotic Plaque:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001873-11-06-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Thompson Reuters Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002108-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Verizon Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001069-10-30-2018-1

 

The PTAB Reversed an examiner’s 101 Rejection of Claims Owned by Nokia:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002730-11-06-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims for a Link Registry Owned by VMWare:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017009092-11-15-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of IBM Claims for a Method for Policy Based Energy Management: https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017005502-11-14-2018-1

 

 

More PTAB 101 Reversals – stems cells & inventory management & options trading

December 3rd, 2018

The PTAB Reversed an examiner’s 101 Rejection of Claims for a Method of growing stem cells in a patent application owned by CellResearch:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002349-11-13-2018-1

 

The PTAB Reversed an examiner’s 101 Rejection of Claims for inventory management in a patent application owned by Baker Hughes:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017006294-11-13-2018-1

 

The PTAB Reversed an examiner’s 101 Rejection of Claims for a systems for options trading owned by the NYSE:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001617-11-13-2018-1

 

But then there is this:

 

The PTAB Affirmed an examiner’s 101 Rejection of Claims in a TI patent Application for a Method of measuring velocity:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018003062-11-13-2018-1

 

More Section 101 reversals from PTAB

November 27th, 2018

Here are some recent reversals and an affirmance, provided by Janal Kalis of Schwegman, Lundberg & Woessner, PA:

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a BT Patent Application for Controlling a Digital Subscriber Line:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018009213-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Thompson Reuters Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002108-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection in a Verizon Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001069-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Medical Diagnostics Patent Application, Finally, for Detecting BDCA-2 Protein:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017010045-11-02-2018-1

 

But then there is this–the PTAB affirmed an examiner’s 101 rejection of claims for a radiographic imaging device:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018002225-11-01-2018-1

 

Has the USPTO SAWS Program Been Retired:  https://thehill.com/hilltv/rising/418300-inventors-raise-questions-over-retired-government-patent-program

 

Ancora v HTC America: restriction computer operations with license limitation eligible under Section 101

November 17th, 2018

ANCORA TECHNOLOGIES, INC. V. HTC AMERICA, INC., Appeal Number: 18-1404, November 16, 2018

In this case the Federal Circuit found a method of restricting software operations within a license limitation to be patentable advance, and in particular, the invention was found to be “a concrete assignment of specified functions among a computer’s components to improve computer security, and that this claimed improvement in computer functionality is eligible for patenting. As a result, the claims were found statutory under § 101.

U.S. Patent 6,411,941 is entitled “Method of Restricting Software Operation With-in a License Limitation.”  The ’941 patent describes an asserted improvement based on assigning certain functions to particular computer components and having them interact in specified ways. The proposed method “relies on the use of a key and of a record.” Id., col. 1, lines 40–41. A “key,” which is “a unique identification code” for the computer, is embedded in the read-only memory (ROM) of the computer’s Basic Input Output System (BIOS) module: the key “cannot be removed or modified.” Id., col. 1, lines 45–51. A “record” is a “license record” associated with a particular application: “each application program that is to be licensed to run on the specified computer is associated with a license record that consists of author name, program name, and number of licensed users (for net- work).” Id., col. 1, lines 52–57.

The asserted innovation of the patent relates to where the license record is stored in the computer and the inter- action of that memory with other memory to check for permission to run a program that is introduced into the computer. The inventive method uses a modifiable part of the BIOS memory—not other computer memory—to store the information that can be used, when a program is introduced into the computer, to determine whether the program is licensed to run on that computer. BIOS memory is typically used for storing programs that assist in the start-up of a computer, not verification structures comparable to the software-licensing structure embodied by the claimed invention. Using BIOS memory, rather than other memory in the computer, improves computer security, the patent indicates, because successfully hacking BIOS memory (i.e., altering it without rendering the computer inoperable) is much harder than hacking the memory used by the prior art to store license-verification information. Id., col. 3, lines 4–17; see Ancora, 744 F.3d at 733–34 (“Thus, the inventors stated that their method makes use of the existing computer hardware (eliminat- ing the expense and inconvenience of using additional hardware), while storing the verification information in a space that is harder and riskier for a hacker to tamper with than storage areas used by earlier methods.”).

Here is an example claim from the patent:

1. A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:
selecting a program residing in the volatile memory,
using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,
verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS, and
acting on the program according to the verification.

 

 

Still a Challenge Getting a Reversal at the PTAB on 101 Eligibility Rejections

November 12th, 2018

The USPTO just reported 28 new PTAB decisions regarding 101 eligibility. All of the decisions affirmed the examiners’ rejections.

More PTAB Reversals of Examiner 101 Rejections

November 2nd, 2018

Some more recent 101 reversals:

 

The PTAB Reversed an Examiner’s 101 Rejection of a. Northwestern Univ. Patent Application for a Method of Analyzing Skin with Raman Spectroscopy:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017009873-10-15-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims Involving Nested Hierarchies:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017008997-10-12-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims for Providing Customer Service:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001440-10-09-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of SAP Claims for a Brokered Service Delivery:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017004816-10-11-2018-1

 

The PTAB Reversed a 101 Rejection of a HP Patent Application for Asset Management:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017004952-10-15-2018-1

EPO Provides Patentability Guidance for AI-based Applications

October 22nd, 2018

The European Patent Office (EPO) has provided further guidance for examination in relation to the patentability of inventions involving mathematical methods and computer programs. This updated guidance is of particular relevance to inventions relating to the fast-growing field of Artificial Intelligence (AI).  This guidance was published as part of the EPO’S annual update of the “Guidelines for Examination”.

The new EPO Guidance first defines AI and ML as being “computational models and algorithms for classification, clustering, regression, and dimensionality reduction, [and which may include] neural networks, genetic algorithms, support vector machines, k-means, kernel regression, and discriminant analysis.”  Additionally, the Guidance states that such computation models and algorithms relating to AI and ML are “per se of an abstract mathematical nature,” indicating that the EPO will likely treat such algorithms as unpatentable by default.
Generally, under examination by the EPO, applications involving mathematical methods are excluded from patentability unless they are determined to have technical character.  In assessing whether a mathematical method possesses such technical character, a determination is made whether the invention produces a technical effect that serves a technical purpose.  A generic purpose such as “controlling a technical system” is not sufficient to confer technical character to the mathematical method.  However, the Guidance specifically notes that “artificial intelligence and machine learning find applications in various fields of technology,” and highlights examples of a “neural network in a heart-monitoring apparatus” and “classification of digital images, videos, audio or speech signals based on low-level features” as both possessing technical character.  In contrast, the EPO identified the classification of text documents solely based on their textual content and classification of abstract data records without any indication of a particular technical use as not having technical purpose.  Furthermore, the EPO treats expressions such as “support vector machine”, reasoning engine”, or “neural network” as merely referring to abstract models that are “devoid of technical character.”
Going forward, it appears that AI-ML-related applications filed in the EPO should specifically highlight how a specific field of technology is improved by the AI-ML-related mathematical methods in order to best demonstrate technical character.
My thanks to Greg Rabin from Schwegman, Lundberg & Woessner, P.A., for this post.

PTAB Reverses 101 Rejection for Ranking Based on Web Page Dwell Time

October 12th, 2018

On an appeal from a 101 rejection by an examiner, the PTAB has reversed a 101 rejection to the following claim, from eBay’s U.S. Application No. 12/814,020:

18. A method comprising:

identifying a plurality of listings stored in a listing database as search results;

determining, using a processor, a respective dwell time associated with each of the plurality of listings, the dwell time based on an elapsed amount of time one or more users view a page describing the listing, and the dwell time associated with a likelihood of a transaction occurring with respect to the listing; and

ranking the listings composing the identified plurality of listings based at least in part on the respective dwell time associated with each of the plurality of listings.

The PTAB reasoned:

“We determine claim 1 is directed not only to the “business idea” of organizing (ranking) search results, but claim 1 also is directed to the use of dwell time, which is an Internet-centric challenge. See, e.g., Spec. 1–4, 12-16. Claim 1 is analogous to the claim at issue in DDR Holdings in that, in both cases, a key aspect of the claim focuses on “a challenge particular to the Internet.” DDR Holdings, 773 F.3d at 1257.”

I agree with the PTAB that this claim involves a idea related to the operation of a computer system, not an idea where novelty is based on a new piece of information or a new type of information that is abstract in nature, and therefore should fall inside 101.

The brief for this appeal was written by Schwegman, Lundberg & Woessner, PA, and in particular, by Jeff Ranck.

 

 

eBay is attempting to patent a list of listings ranked by “dwell time” — the “elapsed amount of time one or more users view a page describing the listing.”