Posts Tagged ‘patent law’

Netflix, Inc. v. Rovi Corporation (NDCA 2015): Five TV guide patents dropped by abstract idea ineligibility

Wednesday, July 29th, 2015

How did we go from the claims in Alice being considered abstract, claims that clearly involved a well-known financial concept (e.g, intermediated settlement) merely implemented on a computer, to admittedly novel (and likely non-obvious) concepts inexorably tied to computing systems being considered abstract?

District courts and the CAFC seem to be quickly expanding the reach of the abstract idea to invalidate software implemented inventions. In Netflix v. Rovi (Netflix, Inc. v. Rovi Corporation, Case No. 11-cv-6591, NDCA 2015), the court uses the Alice/Mayo abstract idea test to invalidate as non-patentable subject matter claims directed to an admittedly unknown concept rooted in computer technology, just because the claims could be articulated as being directed to an abstract idea. This court, and many others, seem to have missed the part of Alice where the Supreme Court cautions that all claims at some level involve an abstract idea.

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“Particular Machine” not required: Ex Parte Dietz et al., Appeal 2009-008029, BPAI

Monday, June 27th, 2011

Ex Parte Dietz answers the question, at least as far as this BPAI panel is concerned, as to what structure need be recited in a “software claim” to bring it within the “machine” category of patent eligible subject matter. What is notable perhaps in its absence is any reference to the need to recite any “particular machine,” as opposed to simply just a “server” or the like, in order to bring a claim into the realm of the patent eligibility. Ex Parte Dietz et al In Ex parte Dietz, the following claim 1 was rejected under Section 101 for failure to recite at least one hardware element.

1. In a World Wide Web (Web) communication network with user access via a plurality of data processor controlled interactive receiving display stations for displaying received hypertext Web documents, transmitted from source sites on the Web, including at least one display page containing text, images and a plurality of embedded hyperlinks, each hyperlink being user activatable to access and display a respective linked hypertext Web document from source sites on the web, a system for controlling access activity from activated hyperlinks and their respective Web document source sites comprising:

means for applying said prioritization in the determination of the order in which the web documents linked to activated embedded hyperlinks in said web document are to be accessed.

means at said source sites for prioritizing said plurality of embedded hyperlinks in a Web document; and

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Therasense returns Common Sense to Law of Inequitable Conduct

Thursday, May 26th, 2011

Yesterday, in Therasense, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011) (en banc) (a copy is attached at the end of this post), the Federal Circuit handed down an historic and much needed update to the law of inequitable conduct.  The en banc (6-1-4) decision markedly increased the requirement for proof of inequitable conduct:  “This court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.”  The court rejected the “sliding scale” approach that previously allowed intent to deceive to be inferred from strong materiality.  The new standard makes intent and materiality separate requirements, and forbids a court from inferring intent solely from a strong showing of materiality.   Now, evidence of deceitful intent must be weighed separately from materiality, and proven by clear and convincing evidence.  The clear and convincing standard requires that a finding of deceptive intent must be “single most reasonable inference able to be drawn from the evidence.”

In addition, the court raised the standards for proof of materiality, holding that “as a general matter, the materiality required to establish inequitable conduct is but-for materiality.”  But-for materiality requires that the PTO would not have allowed a claim had it been aware of the undisclosed prior art.

The following passages from majority opinion in Therasense set forth the heart of the decision:

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In re Kelkar — Half Right for the Wrong Reason?

Sunday, November 28th, 2010

In re Kelkar involves a patent application owned by the IBM Corporation that claims methods and computer program articles for processing gene expression profiles to find clusters of similar profiles.  The Board of Patent Appeals and Interferences found the following claim 1 of the application non-statutory as attempting to claim a prohibited abstract idea under Bilski v. Kappos, 561 U.S. ___ (2010):

 1.  A method for determining similarity between portions of gene expression profiles in a computer comprising the steps of:

processing a number of gene expression profiles with a similar sequences algorithm that is a time and intensity invariant correlation function to obtain a data set of gene expression profile pairs and a match fraction for each gene expression profile pair;

listing gene expression profile pairs in clusters by their match fractions;

removing a first gene expression profile from a cluster when another cluster has another gene expression profile with a higher match fraction with the first gene expression profile, unless the another gene expression profile requires a larger number of subsequences to achieve similarity with the first gene expression profile;

repeating the removing step until all gene expression profiles are listed in only one cluster;

providing output of the listing of clusters of gene expression profiles. (emphasis added)

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Amazon 1-Click Patent Found Statutory In Canada

Monday, October 18th, 2010
The Federal Court in Canada has overruled the Commissioner of Patents to find that Amazon’s 1-click patent is patentable subject matter in Canada, and that Canada’s patent act does not have an exclusion for business method patents.  Here is a copy of the decision:  Canadian 1-click decision.  The claims found to be statutory are repeated below.The decision is an interesting read as it discusses jurisprudence from the US and Europe, including the recent Bilski decision, and rejects the “point of novelty” analysis in favor of viewing the claim as a whole to determine if a claim is statutory.
 
 The Court laid out that there are thus three important elements in the test for statutory subject matter:
i) it must not be a disembodied idea but have a method of practical application;
 ii) it must be a new and inventive method of applying skill and knowledge; and
 iii) it must have a commercially useful result:
Progressive Games, Inc. v. Canada (Commissioner of Patents), 177 F.T.R. 241 (T.D.) at para. 16, aff’d (2000), 9 C.P.R. (4th) 479 (F.C.A.). 

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Director Kappos Posts Documents Summarizing Patent Prosecution Highway Programs and Three Track Examination Proposal

Tuesday, October 5th, 2010

Check out the following two documents for a summary of Patent Prosecution Highway programs and the Three Track Examination proposal.

Three Track Examination

Prosecution Highway Programs

BackWeb Technologies Sues IBM and HP on Software Patents For Background Downloads

Monday, October 4th, 2010

The wagon train of software patent lawsuits rolls on.  As recently reported by Gene Quinn in his IP Watchdog blog (www.ipwatchdog.com), this time it’s IBM and HP that are in the cross-hairs, each being accused by BackWeb Technologies, Inc., of Santa Clara, California (and owned by an Israeli parent company) of infringing three US patents – U.S. 5,913,040, U.S. 6,317,789 and U.S. 6,539,429.  These patents cover systems for transmitting digital information in background mode.   To see an interactive claim chart of these patents claim limitations click here:  BackWeb Claim Chart

The chart shows that almost all of the claims, with a couple of interesting exceptions, require monitoring or determining a line or link utilization rate, and transmitting data based on the rate.  In the chart, the limitations in the left hand column are found in the respective claims (represented by the columns) if there is a blue square in the column.  The “relevance” column can be set equal to 1, 2 or 3.  If set to 3, then the chart assumes the target product has the corresponding limitation.  If set to 1, the limitation is not found, and if set to 2, it is indeterminate or possibly found in the target product.

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The Board Takes Bilski for a Test Drive and Runs Over Some Software Claims

Tuesday, September 28th, 2010

July and August have been busy months for the Board of Patent Appeals and Interferences.  Not including the Ex Parte Proudler and Ex Parte Birger cases I previously reported on, the BPAI has issued at least ten opinions in which software-related claims were rejected under Section 101 in view of Bilski.  These opinions, excerpts of which are provided below, present both understandable and puzzling Section 101 rejections.  A number of the rejections are understandable due to a lack of computer structure or electronic functionality in the claim to tie the software elements to a machine implementation. Of particular note, it appears that machine limitations in method claims are not enough per se to bring the claim into the machine sphere of the machine or transformation test, according to these Board decisions, despite the PTO’s Interim Guidance, which seems to indicate otherwise.

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Is Europe Going Soft on Software Patents?

Sunday, May 30th, 2010

In what some are viewing as surprising developments, both the European Board of Patent Appeals and the German Court handed down decisions favoring patent protection for software in Europe.  In the EPO, the European Patent Office’s Enlarged Board of Appeal this month issued a decision that refused a request by EPO President Alison Brimelow to reconsider the law regarding software patents, on the basis that the law is not divergent enough to warrant reconsideration. The EPO’s acceptance of software patents will therefore continue as it currently stands.   

In Germany, in a decision handed down on April 20 (number X ZR 27/07), an appeal court upheld a Microsoft patent on a FAT invention allowing for long name files while preserving backward compatibility with a file system that supported only short file names.  This decision overturned a lower court ruling finding the patent – EP 0618550 (based on US 5,758,352) — invalid.  

My thanks to Dr. John Collins at Marks & Clerk for his help with this posting.

Abstract Ideas Stored as Physical Data: Real or Abstract?

Saturday, May 29th, 2010

Well, since the Supreme Court is making us all wait for its verdict on Bilski, I thought I would explore (but far from resolve) a notion that has always fascinated and puzzled me – the concept of abstract ideas represented by real data. In order to get oriented in reality for this discussion, and avoid being completely lost in metaphysical analysis, let me posit two different types of inventions involving data – one where the data represents a real entity, and one where the data represents an abstract entity.

The first invention is a method of processing an x-ray image by obtaining an x-ray image, converting the image to a machine usable digital representation, and then processing the digital representation to remove noise in the image.  This is generally the subject matter of the invention found patentable on appeal in In re Abele and Marshall (CCPA) 1982, 684 F.2d 902, 214 USPQ 682.  In this first posited example, one can argue the following are true:

 1) the x-ray is real (after all you can kill people with them);

2) the machine usable digital data therefore represents a real entity;

3) the machine usable data takes the form of real signals or physical quantities in that it can be stored (as a charge, magnetic orientation, physical material, etc..), moved, processed and even detected with a scientific instrument.

4) the “data,” as disembodied from its physical representation, has an abstract character, in that it only represents a real entity and only has meaning when a human mind correlates the data to the physical entity it represents.

Now, let’s posit another example.  In this example the invention is a process for storing and searching machine usable data representing pure ideas, like the idea of “justice.”  In this example, one can argue the following are true:

1) the ideas are not physically real – they are abstract;

2) the machine usable digital data represents an abstract entity – i.e., the notion of “justice”;

3) the machine usable data takes the form of real signals or physical quantities in that it can be stored, moved, processed and even detected with a scientific instrument;

4) the “data,” as disembodied from its physical representation, has an abstract character as well, in that it only represents the abstract entity and only has meaning when a human mind correlates the data to the abstract entity it represents.

If we agree on the above observations, then the following is also true:

1) machine usable digital data representing either real or abstract entities is real and not abstract.  This data simply has to be real in order to be manipulated by a computing system.

2) real data can represent either real or abstract entities.

3) real data can be created, stored, moved and processed by a computer.

4) an invention that processes real data is real and not abstract.

5) an invention that processes real data is not performing “mental steps” as the human brain cannot store or process real data.

Another level of this same inquiry is whether a limitation that specifies the type of type of data is entitled to be recognized for the purpose of distinguishing a claim from the prior art.  As established by In re Abele, if the data represents a real entity (or at least is explicitly obtained from measuring or sensing a real entity) then the limitation is given weight as if the real data was a proxy for a corresponding real (physical) entity.  On the other hand, if the machine usable data represents an abstract entity, and the data is considered a proxy for the abstract entity, then this element of the claim could be considered abstract and therefore not entitled to be recognized as part of the claimed combination for the purpose of distinguishing the claim.  Of course we know that most of the time these limitations are given credit, as thousands or perhaps even tens of thousands of patents now in force claim inventions with these types of limitations. 

So, what are some of the types of abstract entities represented by real data?  Here are a few:

  • language —  language has meaning only in the minds of man, and not according to any law of nature
  • currency systems  — a currency system is an abstraction straight out of the mind of man, rooted in a common agreement to keep financial score using the same medium of exchange
  • man-made laws – laws that exist only by decree of politicians or legislative bodies do not exist in nature
  • contract rights – rights that represent an agreement between parties are also abstract in the sense they do not exist in nature

Let me close this posting with the following question, and possibly the question that  the Supreme Court struggled with in Bilski:  If I represent these abstractions with real data, are these abstractions now real for the purpose of patent protection?  I will do my best to provide some insight to this question in one of my upcoming postings.  No doubt the Supreme Court will soon give us some of their insight on this question as well.