Alice Issues Archives - PatentAssociate.com

Saving patent eligibility

January 7, 2019January 7, 2019

The 2019 USPTO revised patent subject matter eligibility guidance attempts to bring some coherence and consistency to “Alice” patent eligibility issues.

USPTO director Andrei Iancu recently promised that the USPTO would try to clean up the “Alice” patent eligibility mess. On January 7, 2019, the USPTO issued the “2019 Revised Patent Subject Matter Eligibility Guidance.” At first glance, this appears to be a promising approach. Hopefully, this 2019 guidance will greatly reduce the number of semi-random 35 USC 101 rejections. Some excerpts are shown below.

Properly applying the Alice/Mayo test in a consistent manner has proven to be difficult, and has caused uncertainty in this area of the law.

Since the Alice case, courts have been “compare[ing] claims at issue to those claims already found to be directed to an abstract idea in previous cases…While that approach was effective soon after Alice was decided, it has since become impractical. The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or non-abstract in the context of specific cases, and that number is continuously growing. In addition, similar subject matter has been described both as abstract and not abstract in different cases…The USPTO, therefore, aims to clarify the analysis…

Under the procedure, if a claim recites a judicial exception (a law of nature, a natural phenomenon, or an abstract idea as grouped in Section I, above), it must then be analyzed to determine whether the recited judicial exception is integrated into a practical application of that exception. A claim is not “directed to” a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception…

If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis…

Examiners evaluate integration into a practical application by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application… in revised Step 2A examiners should ensure that they give weight to all additional elements, whether or not they are conventional, when evaluating whether a judicial exception has been integrated into a practical application.

It is critical that examiners consider the claim as a whole when evaluating whether the judicial exception is meaningfully limited by integration into a practical application of the exception.

If the claim as a whole integrates the recited tentative abstract idea into a practical application, the claim is not directed to a judicial exception (Step 2A: NO) and is eligible (thus concluding the eligibility analysis).

Almost all patent applications are filed for practical applications. This 2019 guidance makes nearly all practical applications patent eligible. It also somewhat reframes eligibility more in terms of the original (and in my opinion much better) “preemption” considerations. Hopefully, this will encourage examiners to stop rejecting otherwise good applications on dubious and subjective “not patent eligible” grounds.

Thales patent eligibility ruling

December 25, 2019April 24, 2017

Thales Visionix head mounted display — Not the Thales Head Mounted Display!

A recent Federal Circuit case, Thales Visionix Inc. v United States, continues the process of restoring sanity to the ongoing “Alice” patent eligibility mess.

As previously discussed, since the Supreme Court’s 2014 “Alice” decision, patent law has been burdened with an unworkable “is it abstract?” test for patent eligibility. This test is similar to a medieval test to determine witches: Step 1: “determine if the test subject is ~~a witch~~ abstract”; Step 2: “if so, does the witch float? is there something more?”

The Federal Circuit, charged with cleaning up patent law, sometimes chips away at this nonsense, and sometimes adds to the nonsense. In two earlier cases (Enfish and Rapid Litigation), the Federal Circuit established at least a few reasonable step 1 rules (such as read the entire claim), and now we have another.

Thales Visionix had a patent on a motion-tracking Head Mounted Display (HMD). This patent claimed a HMD arrangement of inertial sensors and signal processing elements, used in the F-35 fighter jet. Any enemy pilot blown up by this HMD system might not consider this to be “abstract”, but a lower US court was not so easily impressed. They used their own “Alice: it’s abstract” weapon to shot down the HMD patent.

In the absence of rules (the Supreme Court thoughtfully declined to provide any), lower courts have often used a type of “guilt by association” logic, where if a given patent claim has some elements in common with another claim previously ruled to be abstract, then that claim is also abstract. The lower court argued that the Thales patent claims were abstract because the claims allegedly “used mathematical equations (previously determined to be abstract) for determining the relative position of a moving object to a moving reference frame”.

However. the Federal Circuit disagreed. They determined that just because a claim contains a patent-ineligible (abstract) concept (e.g. mathematical equations) does not mean that the entire claim is (step 1) “abstract.” Rather, the question is if the patent-ineligible concept (math, natural law) is being used to improve some other technique. If so, then the claim as a whole is not abstract. This is similar to their earlier, more biotech-focused, ruling in the Rapid Litigation case.

So as a medieval logic analogy, just because a woman has a cat does not automatically mean that the woman is a witch, if the cat is unusually good at catching mice. If improved mouse catching can be shown, the step 1 conclusion is that the woman is not a witch. There is no need to go on and subject the poor woman to a step 2 “witch float” test. This is good because there is a high casualty rate at step 2.

Sending Alice to Planet Blue

December 27, 2019September 13, 2016

Planet Blue -- Neptune perhaps? — Planet Blue — Neptune perhaps?

Forget “patent invalid because abstract”, the Planet Blue decision finds the real issue is preemption, and non-preemptive software claims are not abstract.

As previously discussed, in recent years the Supreme Court (SCOTUS) issued a series of confused rulings such as the “Alice” and “Mayo” decisions. SCOTUS ruled that “abstract” inventions were not patentable, but didn’t define “abstract”, thus making the issue very subjective and bringing much confusion to software and biotech patents.

Fortunately, perhaps realizing that they did more harm than good, SCOTUS has recently started to decline further cases of this type. They are apparently now leaving it to the Federal Circuit (the court right below SCOTUS) to clean things up.

The Federal Circuit has never known what to do with this, and for every step forward there is at least one step backward. Some damage control efforts, include their “Enfish”, “Bascom”, and “Rapid Litigation” decisions. Another case, “Mcro, Inc. v. Bandi Namco Games”, provides a bit more damage control. (Mcro calls itself “Planet Blue”, so we will call this the “Planet Blue” decision.)

The “Planet Blue” patent involved some improved methods of lip synchronization for animated cartoons, and their claims covered some novel but general rules to do this. A lower court had originally invalidated these as being abstract, but the Federal Circuit reversed and said that the claims were OK.

As per their earlier Enfish decision, the Federal Circuit did not simply assume that software is “abstract” (under Alice step 1). Instead, they asked the broader question, why is “abstract” a problem anyway? As they interpreted it, “The concern underlying the exceptions to § 101 is not tangibility, but preemption.” [Emphasis added]

Some history about patents and “preemption”: Back in1853 Samuel Morse, inventor of the telegraph, tried to get a claim for the use of electromagnetism for any method of printing characters or signs. However, this particular claim omitted any other details. The 1853 SCOTUS said “no”, because claims where “it matters not by what process or machinery the result is accomplished” (e.g. are preemptive) are not going to be allowed.

In Planet Blue, the Federal Circuit (possibly giving up on the more recent rulings as being hopelessly confused), has essentially gone back to the 1853 Morse case for some coherent guidance. The Federal Circuit ruled that with regards to the Planet Blue claims, “The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice… Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.” In other words, this passes Alice “step 1”, and you get a free “get out of abstract patent eligibility rejections” card.

The advantage of this ruling is that “preemption” is a more objective issue, and by changing the analysis from “abstract” to “preemption”, it would be possible to remove a lot of randomness from the patent process. If sustained (and this is a big “if”), it would be good news for software patents, biotech patents, and indeed all types of patents.

Rapid Litigation: Biotech patent win

December 27, 2019July 6, 2016

In Rapid Litigation v Cellzdirect, the Federal Circuit further clarified a biotech patent eligibility mess caused by SCOTUS’s Alice and Mayo decisions.

In 2012 and 2014, the Supreme Court (SCOTUS), which wanted to invalidate a few pesky financial and medical diagnostics patents, decided to use legal “nuclear weapons” rather than legal “fly swatters“. The SCOTUS legal nuclear weapons were the now-infamous two-step “abstract material” patent eligibility test. Step 1 of this test is summarized below:

Step 1) Determine if the patent is directed to “abstract” subject material. If not then congratulations, the patent passes this test and is patent-eligible.

SCOTUS refused to define “abstract material”. This allowed the USPTO and the lower courts to run amok and start randomly invalidating patents, including biotech patents. This, in turn, started to damage US biotech and software startups, which need patents to get funding, as well as for protection from larger competitors.

The Federal Circuit, one step below SCOTUS, and charged with cleaning-up patent law, waited several years for SCOTUS to correct itself, to no avail. The Federal Circuit is itself confused about these issues, and their rulings largely depend on which judges hear a particular case. However, in mid-2016, they issued a series of patent eligibility decisions, first Enfish, then Bascom, now Rapid Litigation (Celsis) v Cellzdirect that suggest that at least some of the judges want to do some damage control.

“Abstract” is just as undefined for biotech as it is for software, but for biotech, it seems have more of a “natural law-ish” flavor. Arguably a technologically illiterate approach since everything involves natural laws, but alas SCOTUS has no STEM majors.

Fortunately, a few Federal Circuit judges are STEM majors, and they have the power to do at least some damage control by providing official interpretations/clarifications of SCOTUS decisions. Here they clarified that in step 1, “directed to” is not the same thing as “involving”.

The patent in this case, 7,604,929, was about an improved method of freeze storing liver cells (cryopreservation of hepatocytes). Before the patent, everyone in the field believed that freezing damages living cells, and that multiple freeze-thaw cycles should be avoided. The inventors discovered that some hepatocytes were resistant to this problem, and used this discovery to invent an improved hepatocyte cryopreservation method. This method first freeze-thawed the cells, then used a density gradient to select for the freezing resistant cells, and then refroze these resistant cells again, producing very freeze resistant hepatocytes.

An earlier court had ruled this patent invalid by arguing that discovering that some hepatocytes could survive multiple freeze-thaw cycles involved a “law of nature”. However, the Federal Circuit pointed out that “involved” isn’t enough grounds to invalidate a patent, because the ‘929 methods also claimed other steps, such as using density gradients. So “directed to” is more than just “involves“.

This Federal Circuit decision makes it harder to invalidate a biotech patent, at least in the most common cases where the claims also have other steps in addition to the “natural law” steps. The fact that the ‘929 claims were relatively simple helps to further clarify the legal issues.

Bascom: another Alice software win

December 27, 2019June 30, 2016

The Bascom court decision helps software patents by suggesting that step 2 of the Alice test should follow established obviousness rules.

US software patents got another win from the Federal Circuit Court this week. This court, which has a Congressional mandate to clarify patent law (actual results may vary), made an important clarification to the Alice (software patent killer) “abstract subject matter” test in the Bascom v AT&T case (Bascom).

As you may recall from our last “Enfish” episode, the Supreme Court (SCOTUS) “Alice” decision created a judge-ordered ~~incoherent~~ two-step test that any given patent must pass in order to be patent-eligible under 35 USC 101 rules. To simplify:

Step 1) Determine if the patent is directed to “abstract” subject material. If not then congratulations, the patent passes this test.

Step 2) But if the patent is found to be “abstract” in step 1, then determine if the patent contains “something extra” beyond just “abstract” subject material. If there is nothing extra, then reject the patent as being “abstract”.

The Federal Circuit is one step down from SCOTUS. The Federal Circuit doesn’t have enough clout to overrule SCOTUS, but does have enough clout to overrule the USPTO and the lower courts. More importantly, the Federal Circuit has both the clout and mandate to “clarify” SCOTUS decisions. Sometimes they do so, sometimes they make it worse. But I think they got it right in this case.

The USPTO and the lower courts were often ignoring Alice step 1 and just assuming that a patent had “abstract” subject matter. The previous Federal Circuit “Enfish” decision pointed out that this was improper. By contrast, the newer Federal Circut “Bascom” case is now clarifying that another common practice, just asserting that the patent fails Alice step 2 because it lacks an undefined “something extra”, isn’t right either.

More specifically, in Bascom, the Federal Circuit pointed out that based on earlier SCOTUS decisions (e.g. Mayo v. Prometheus, which SCOTUS used for “Alice”), Alice step 2 tests if the claim is “well-understood, routine or conventional”. According to the Federal Circuit’s interpretation, SCOTUS was probably thinking about something similar to an obviousness test. The Federal Circuit also pointed out that there are well-established rules for establishing obviousness, which the USPTO and the lower courts were (also) ignoring.

Specifically, the Bascom case was an appeal of a lower court decision that had earlier found the Bascom patent claims to be “abstract” and therefore invalid. The lower court’s arguments (in simplified form) were that the Bascom patent claim language words described conventional computer pieces, and therefore the Bascom claims failed Alice step 2 due to lack of “something more”.

In Bascom, the Federal Circuit Court, after “clarifying” Alice by pointing out that SCOTUS’s Alice step 2 resembled an obviousness test, then pointed out that the lower court had failed to follow established rules to determine obviousness (35 USC 103 rules). These 35 USC 103 rules require that the combination of the pieces and the motive for combining the pieces also be considered. Here conventional pieces, arranged in a non-conventional way, are often not obvious.

The Federal Circuit then looked at the Bascom claims, determined that they were not obvious, and (again somewhat simplifying) therefore had “something more” that satisfied step 2 of the Alice test. They then overruled the lower court and found the Bascom patent to be “not abstract” and therefore valid under 35 USC 101.

If there were more cases like the Bascom decision, it might almost introduce some sanity to the Alice test. Sadly, for every coherent Federal Circuit ruling, there is another incoherent ruling. Stay tuned…

Enfish for Alice: a software win

December 27, 2019June 12, 2016

The Enfish court decision improved the outlook for US software patents.

Some good news for software patents. The negative impact of the 2014 SCOTUS (Supreme Court of the US) “Alice” decision (invalidating some business method and financial software patents) was somewhat mitigated by the 2016 “Enfish” court decision.

What is “abstract?” “You keep using that word, I do not think it means what you think it means.” Inigo Montoya, “The Princess Bride”.

In “Alice”, SCOTUS did not make business-method and financial software patents patent ineligible. Instead, they determined that “abstract” subject matter is patent ineligible. Unfortunately, SCOTUS refused to define the meaning of “abstract”, and then further confused things by using circular logic. The present two-step, circular-logic, SCOTUS mandated test for patent eligibility is:

Step 1) Determine if the patent is directed to “abstract” subject material. If not then congratulations, the patent passes this test.

Step 2) But if the patent is found to be “abstract” in step 1, then determine if the patent contains “something extra” beyond just “abstract” subject material. If there is nothing extra, then reject the patent as being “abstract”.

No one really knows what “abstract” means. Unfortunately, since late 2014, and even now despite the latest guidelines, USPTO patent examiners often assume that patents for software running on standard (generic) computers must be abstract under step 1. Many USPTO examiners (and judges) totally skip step 1 of the two-step Alice test. They just assume that a given software patent is abstract, and start their Alice test at step 2 “something more”. This makes it much easier to reject the patent.

What is “something more?” It is also undefined, but financial and business software generally seems to be somehow lacking. It is sort of like “obviousness” but is apparently not. It takes a medieval theologian, the Pope, the oracle at Delphi, or at least 5 out of 9 SCOTUS judges to determine this.

We could substitute “evil spirits” for “abstract”, and “charisma” for “something more”. We could almost as validly say that lately, many USPTO examiners and judges have been rejecting most business and financial method patents because 1) assumption of evil spirits and 2) a further lack of charisma. It is easier to understand if you don’t expect logic.

In 1982, Congress established the Federal Circuit Court to bring more logic and consistency to patent law. Their record with regards to what is “abstract” is very mixed. However, in the May 12, 2016 “Enfish v Microsoft” (Enfish) decision, at least some Federal Circuit judges tried to clarify things. The Enfish court ruled that examiners and judges can’t just arbitrarily skip step 1 of the two-step Alice test. Specifically, the Enfish court ruled that it is improper to assume that software running on standard computers is “step 1” abstract.

The Enfish court pointed out that in Alice, SCOTUS didn’t rule that software is automatically abstract. Further in Alice, SCOTUS also warned against running amok since every patent is somewhat abstract. So don’t make software automatically fail the two-step Alice test at step 1. The Federal Circuit further determined that software running on standard computers that improve an existing technology (such as a database) is not abstract at step 1.

This is another important point: “abstract” is an undefined legal term, and you and I lack the authority to officially define it. But the Federal Circuit does have some legal authority to define “abstract”. The USPTO and other judges have to follow their various updated definitions. It would be nicer, however, if the Federal Circuit was internally consistent with itself. The various judges just can’t agree. The underlying problem is that the basic SCOTUS rulings don’t make sense. GIGO.

But Enfish, at least, did provide some good news for US software patent law.