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Network Gaming Patent Claims Not Invalid Under 35 U.S.C. § 101

The court denied defendant’s motion to dismiss on the ground that plaintiff’s network gaming patents encompassed unpatentable subject matter because the asserted claims were not directed toward an abstract idea. “Prior communication techniques interconnected all participants using point-to-point connections, and thus, did not ‘scale well’ as the number of participants grew. The Broadcast Claims are directed to an innovative network structure for the distribution of data as the number of participants in a computer network is scaled. . . . A non-complete, m-regular network is a network where each node is connected to the same number of other nodes, or ‘m’ number of other nodes, and where each node is not connected to all other nodes. . . . Defendants argue that the Broadcast Claims are analogous to situations such as the schoolyard game of ‘telephone’. . . . Defendants’ analogies do not present the same communication scaling issues as those that arise in computer networks. Defendants gloss over the claim requirement of a non-complete, m-regular network that is implemented on an application level. The claims require a specific and apparently innovative structure of message-forwarding, which none of Defendants’ analogies are known to employ.”

Acceleration Bay LLC v. Activision Blizzard, Inc., 1-16-cv-00453 (DED August 29, 2017, Order) (Andrews, USDJ)

This post was prepared by Mark Stignani, Esq., of Schwegman, Lundberg & Woessner, P.A.

In this case, Ex parte MARK L. MORSCH, MICHAEL A. LANDIS, and BLAIR C. JENNINGS, Appeal 2016-0031711, the PTAB determined that a software innovation for “visualizing documentation and medical coding of a medical procedure” was statutory subject matter under Section 101, finding that “the Examiner has not shown adequately that the invocation of a natural language processing computer program to use a selected image area to create text, that is then used to determine a spatial path within the body of a patient, does not represent “significantly more” than the abstract idea the Examiner determined the claim is directed to.”  In some sense the invention is directed to what may be deemed artificial intelligence, so it is an encouraging line of thinking by the USPTO, as it would be easy under Alice to label these types of inventions as nothing more than abstract ideas processed using a generic computing system.  Here, it seems the PTAB hung their hat on the natural language processing as being a “specific” type of computing device, vs. a “generic” one.  So, the implication seems to be that any claim to a natural language processing invention would likely be statutory, if considered by this panel.

Here is the claim, and an excerpt from the opinion.

2. A computer implemented method comprising:

providing an anatomical diagram associated with a medical procedure, wherein the anatomical diagram includes a plurality of user selectable areas;

receiving a user selection indicative of two or more user selectable areas of the plurality of user selectable areas on the anatomical diagram at a computer processor;

if the two or more user selectable areas include a first user selectable area: using a natural language processing computer program to generate a first free text description of the received user selection;

if the two or more user selectable areas do not include the first user selectable area: using the natural language processing computer program to generate a second free text description of the received user selection;

using the first or second free text description to generate a procedural route for the medical procedure using the computer processor, the procedural route representing an anatomical path within a body of a patient; and

displaying on an electronic display the procedural route representing the anatomical path within the body of the patient on the anatomical diagram.

From the opinion:

Setting aside the use of computerized tools, we agree with the Examiner that the method is directed to an abstract idea, which the Examiner articulates as “a method of processing a user’s selection on an anatomical image,” which is a “method of organizing human activities.” Final Act. 3.

A physician commonly views an x-ray, or other medical image of anatomy, and plots a course for an invasive procedure, such as the introduction of a catheter to the vascular system of a person, using the imagery and mental thought, guided by extensive education and experience, to select the path to be used for the procedure. To the extent that the path guides the medical procedure, it is a method to organize human activities related to the procedure.

We disagree with the Examiner’s conclusion on the second step of the Alice analysis, however, which requires that we assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S.Ct. 2347, 2355 (2014). This is a search for an “inventive concept”—an element or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id.  Independent claim 2 recites “using a natural language processing computer program to generate a first free text description of the received user selection.” The Examiner finds the method is “deployed on generic hardware” (Final Act. 3) and “the computer appears to perform only generic functionality that is well known in the art, e.g. processing data” (Answer 6).

The Specification, however, refers to “natural language processing (NLP) engine 120,” and that “the NLP engine 120 can be substantially as
described in US Patent 6,915,254 entitled ‘Automatically Assigning Medical Codes Using Natural Language Processing’ [hereinafter “the ’254 patent”], the entire contents of which are incorporated by reference.” Spec. 126. Portions of the ’254 patent describe that a “natural language processor” is used “to code diagnoses, procedures, and evaluation and management (EM) level” from physician notes. ’254 patent, 3:34—37. The Specification further describes the following: The NLP engine 120 assigns medical codes from a narrative text document (medical documentations or patient record) associated with a surgical procedure. The NLP engine 120 is designed to recognize, extract, and codify surgical
procedures (e.g., catheterization procedures, including the specific catheter route) by accessing the database of vascular anatomy data 142.

Given the above disclosures, the Examiner has not shown adequately, either through evidence or analysis, that the reliance on natural language processing capability, to generate text from a selection of an area in an image, as claimed, involves a general purpose computer performing well known generic functionality, rather than being a “particular machine” that is the result of implementing specific, non-generic computer functions. See Bilski v. Kappos, 561 U.S. 593, 601 (2010).

In addition, although a physician may view medical imagery and determine a “procedural route representing the anatomical path within the
body of the patient,” as claimed, the Examiner does not establish sufficiently that this method of organizing the human activity of the procedure involves first converting a selected area of anatomy image to text, and then converting text to a path, as claimed. For these reasons, the Examiner has not shown adequately that the invocation of a natural language processing computer program to use a selected image area to create text, that is then used to determine a spatial path within the body of a patient, does not represent “significantly more” than the abstract idea the Examiner
determined the claim is directed to.

Twenty years ago this September, Amazon filed for a patent on its new “1-click” on-line ordering idea.  Now, its about to expire.  See http://www.patentbuddy.com/Patent/US-5960411-A?ft=true.

For those of you that were not around when it issued, or the several years following, there was quite a lot of complaining about how unfair it was for Amazon to get this patent, and how it represented how bad patents are for software.  Jeff Bezos himself even, for a time, was promoting a shorter term for software patents, in response in part to the criticism he received for the 1-click patent.  Of course, now all the doomsday predictions look silly, with the e-commerce revolution having quite handily survived Amazon’s 1-click patent.  Twenty years go by awful fast, we find out, as it seems like yesterday that the 1-click patent was issued.

One thing that has always fascinated me is that people can get incredibly upset, if a novel invention, that has been absent from civilization for thousands of years, is kept proprietary to an inventor for a mere additional twenty years, before it can be freely exploited by all.  Did it really hurt competitors of Amazon to have to wait twenty years to offer 1-click ordering?  If it did, we should see all of Amazon’s competitors make some big e-commerce gains in the next few years, as they deploy 1-click ordering to their heart’s content.  But I suspect that won’t be the case.

In VISUAL MEMORY LLC v. NVIDIA CORPORATION, dated August 15, 2017, the Federal Circuit found an improved memory system to be patent eligible under 35 U.S.C. Sec. 101, despite the fact that the improvement resides at least in part in the form of programmable features.  More particularly, the patent in question, U.S. Patent No. 5,953,740, owned by Visual Memory, LLC, provides a memory system with programmable operational characteristics that can be tailored for use with multiple different processors without a reduction in performance. It discloses a main memory 12 and three separate caches: internal cache 16, pre-fetch cache 18, and write buffer cache 20. Id. at col. 3 ll. 34–53. A schematic of the ’740 patent’s memory system is shown in Figure 1.  The three caches possess programmable operational characteristics that are programmable based on the type of processor connected to the memory system. The ’740 patent’s main memory constitutes an advance over the prior art fast page mode memory because it is divided into pages containing either code or non-code data, and “the system provides a bias towards code pages or non-code pages depending upon the type of processor connected to the system.” Id. at col. 4 ll. 55–58. For one processor type, the register will hold the address of the most recently accessed code page; for another processor type, the register will hold the address of the most recently accessed non-code page. The specification discloses that combining the selective open page bias with the fast page mode offers faster access to main memory and increases system performance. Id. at col. 5 ll. 6–8. Taken together, the “multiple mode operation” of the ’740 patent confers a substantial advantage by “allow[ing] different types of processors to be installed with the [same] subject memory system without significantly compromising their individual performance.” Id. at col. 5 ll. 25–29.

The ’740 patent’s claims reflect these technological improvements. For example, claim 1 recites:

1. A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising:

a main memory connected to said bus; and

a cache connected to said bus;

wherein a programmable operational characteristic of said system determines a type of data stored by said cache.

The district court had concluded that the claims were directed to the “abstract idea of categorical data storage,” which humans have practiced for many years. Visual Memory LLC v. NVIDIA Corp., No. 15-789, 2016 WL 3041847, at *4 (D. Del. May 27, 2016). The court’s step-two analysis found no inventive concept because the claimed computer components—a main memory, cache, bus, and processor—were generic and conventional. The ’740 patent’s programmable operational characteristics did not provide the inventive concept, according to the court, because they represent generic concepts that determine the type of data to be stored by the cache, and the patent fails to explain the mechanism for accomplishing the result. Id. at *7.

Two recent cases informed the Federal Circuit’s evaluation of whether the claims are “directed to” an abstract idea. The court noted that, In Enfish, it had held “claims reciting a self-referential table for a computer database were patent-eligible under Alice step one, because the claims were directed to an improvement in the computer’s functionality.” Id. at 1336. They explained that “the plain focus of the claims in Enfish was on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Id.

Similarly, the court noted that in Thales, it had determined that claims reciting a unique configuration of inertial sensors and the use of a mathematical equation for calculating the location and orientation of an object relative to a moving platform were patent-eligible under Alice step one. Inertial sensors in prior art systems measured motion relative to the earth and were prone to computational errors. Thales, 850 F.3d at 1345. The patented system achieved greater accuracy than these prior art systems by measuring inertial changes of the tracked object relative to the moving platform’s reference frame. Id.

With these guideposts in mind, and cognizant of the difficulty inherent in delineating the contours of an abstract idea, the Federal Circuit found that the ’740 patent claims demonstrates that they are directed to an improved computer memory system, not to the abstract idea of categorical data storage. For example, the court pointed out that “[c]laim 1 requires a memory system “having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor,” and “determin[ing] a type of data stored by said cache.” ’740 patent col. 6 ll. 29–38.

The specification explains that multiple benefits flow from the ’740 patent’s improved memory system. As an initial matter, the specification discloses that a memory system with programmable operational characteristics defined by the processor connected to the memory system permits “different types of processors to be installed with the subject memory system without significantly compromising their individual performance.”

The court further said “[a]s with Enfish’s self-referential table and the motion tracking system in Thales, the claims here are directed to a technological improvement: an enhanced computer memory system,” despite that the concept of categorical data storage underlies the ’740 patent’s claims in that claim 1 requires a programmable operational characteristic that “determines a type of data stored by said cache,” because  “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 71; see also Alice, 134 S. Ct. at 2354 (“[A]n invention is not rendered ineligible for patent simply because it involves an abstract concept.” (emphasis added)). Nor is the ’740 patent’s use of conventional computer components, by itself, fatal to patent eligibility where the claims “are directed to an improvement in the functioning of a computer.” Enfish, 822 F.3d at 1338. Because we conclude that the claims of the ’740 patent are not directed to an abstract idea, we need not proceed to step two of the Alice test.

One of the great oddities of the U.S. patent system is the relative ease with which the rules allow a duly examined patent to be cancelled by the PTAB.   These guys were pretty disillusioned by the process, even if the result was just (I’m not judging that).   I am hoping that in the future a better job can be done in examining a patent in the first place so that there isn’t arguably a “double standard” for patentability – the everyday examination standard used to examine patents prior to issuance, and the PTAB standard.  It would be far better to not issue a patent in the first place, then to issue it and then have a change of heart later, after millions of dollars have been invested in the assumption the patent is valid, at least in the eyes of the USPTO.

https://www.msn.com/en-gb/video/other/why-americas-inventors-are-burning-patents/vi-AApTFwa

Nice article by Manny Schecter, Chief IP Counsel for IBM Corporation, concerning the need for much better IP education in the U.S.

Intellectual Property Education Lags the U.S. Economy

This is an insightful take by Orin Herskowitz of Columbia University on the importance of Government policy in encouraging innovation in the US.  The piece touches both on technology worker immigration policies, and the importance of a strong patent system.

http://www.crainsnewyork.com/article/20170727/OPINION/170729932/orin-herskowitz-says-trump-threatens-nyc-tech-firms-like-sapience

Orin Herskowitz is Columbia University’s senior vice president of intellectual property and technology transfer, and executive director of Columbia Technology Ventures.