Tag Archives: patent

U.S. patent law needs a definition of “abstract idea”

Recent U.S. Patent and Trademark Office actions relating to software patents have confused and frustrated many patent applicants. After the U.S. Supreme Court published its opinion in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the USPTO’s application of the Court decision to software inventions has been anything but consistent. Does the USPTO’s action signal a need for Congressional action or another Supreme Court decision with more concrete guidelines?

In Alice, and as explained by the recent USPTO Preliminary Examination Instructions in view of the Supreme Court Decision in Alice, the determination of subject matter eligibility involves a two part test:  (1) Is the claim directed to an abstract idea?  (2) If so, are there other elements in the claim sufficient to ensure that the claim amounts to significantly more than the abstract idea itself?

However, rather than a rigorous application of any test, in the past few months the USPTO’s patent-eligibility determinations contain little analysis of any specific claim language. Instead, they primarily consist of a boilerplate paragraph stating that the claimed invention is directed to an abstract idea.

To illustrate this problem, the USPTO recently issued a rejection asserting that the following claim was patent-ineligible because it is directed to a “fundamental economic practice:”

8.   A device for predicting a future occurrence of a transportation system incident, the device comprising:
  a processor; and
  a computer readable medium operably connected to the processor, the computer readable medium containing a set of instructions configured to instruct the processor to perform the following:
          collect historic operating information related to the previous operation of a vehicle along a transportation route,
          determine schedule deviation information for the transportation route based upon the historic operating information and observed schedule adherence for the vehicle along the transportation route, the schedule deviation information comprising at least an identification of a driver and a sequence number for a period of time associated with the historic operating information and the observed schedule adherence,
          construct a plurality of models, each of the plurality of models including at least one combination of factors that contribute to schedule deviation,
          rank each of the plurality of models according to at least one information criterion,
          assess an impact of the driver and the sequence number on a highest ranked model to produce a results set, wherein the results set comprises at least a highest ranked model showing at least one combination of factors that most contributes to schedule deviation, and
          present the results set. Continue reading

Is the predicted “death of hundreds of thousands of patents” coming true?

In May 2013, Judge Moore of the U.S. Court of Appeals for the Federal Circuit predicted that the court’s decision in CLS Bank Int’l v. Alice Corporation Pty Ltd. would result in the “death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”

In the year that followed, not much changed.  The U.S. Patent and Trademark Office continued to issue patents in these areas.  And the Federal Circuit issued other decisions affirming that software was still patentable.  While patents covering financial business methods and purely human activity faced difficulty, patents for non-financial software inventions continued to grant at a fast clip.

Then, in June 2014, the U.S. Supreme Court issued an opinion that affirmed the Federal Circuit’s decision. The Court’s decision in Alice Corporation Pty. Ltd. v CLS Bank Int’l said: “there is no dispute that many computer-implemented claims are formally addressed to patent-eligible subject matter,” and subsequent USPTO guidance suggested that “the basic inquiries to determine subject matter eligibility remain the same.” Soon afterward, however, the practical effect of the Court’s decision became quite different.

In the weeks following the Supreme Court decision, I’ve seen that the USPTO is rejecting nearly every application assigned to its business methods examining unit for failure to meet the post-Alice patent eligibility standard. Other patent attorneys have noted this too, and have commented on it with concern.

District Courts and the Patent Trial and Appeal Board have been similarly critical of software patents in recent weeks. Dennis Crouch of Patently-O recently published a comprehensive summary of District Court and PTAB decisions that overturned software patents after the Alice decision.

In addition, in one of its first published opinions that addressed the Alice decision, the Federal Circuit found an invention for a computer-implemented method and system for playing bingo to be a mere abstract idea and thus not patent-eligible. Although the case (Planet Bingo LLC v. VKGS LLC) is non-precedential, it may serve as a harbinger of things to come in future software patent cases.

The USPTO is continuing to issue patents for software-related inventions that are assigned to it’s non-business-method examining units, so it’s clear that at least some software remains eligible for patenting. However, it’s also clear that new and potentially significant challenges are now in place for those who want to obtain or enforce software patents in the future.

If a patent says something is “essential,” then it must be so

To help a patent attorney prepare a patent application, inventors often provide a copy of a manuscript for an upcoming technical journal, research publication or white paper. The manuscript often goes into great detail to explain what features of the invention are essential, critical, or otherwise important to achieve certain results.

Then the patent attorney guts all of that language and produces a document that describes nothing with certainty, and that suggests everything is an option.

Why does this happen?

recent opinion from the U.S. Court of Appeals for the Federal Circuit helps to explain the reasoning behind this.

A basic tenet of patent law is that the scope of the patent is defined by the patent’s claims. The detailed description serves as an instruction manual for how to make and use the invention, while the claims define the boundaries of the patent rights that cover the invention.  In order to infringe the patent, someone has to make, use or sell a product or process that contains all elements of at least one of the claims.

Ordinarily, when evaluating a patent infringement case, a court is not supposed to read words into the claims that aren’t already there. A court can use the detailed description to understand what the claim terms mean.  However, in most cases a court should not add features to a claim (and thus narrow the scope of the claim) if those features aren’t expressly recited in the claim.

The recent Federal Circuit decision, X2Y Attenuators, LLC v. Int’l Trade Commission, highlights an exception to this rule:  if the detailed description describes an element as “essential,” then the court may interpret it as being so — even if the claims don’t include that element.

In the X2Y Attenuators case the patent covered a structure for Electrodereducing electromagnetic interference in electrical circuits. The claims covered a structure with four electrodes.  The claims also described the positioning of certain electrodes in a way that caused certain pairs of the electrodes to be physically shielded from each other. The detailed description also said that a common conductive pathway electrode was “an essential element of all embodiments or connotations of the invention.” Because of this language, the court concluded that one could only infringe the patent if one were to make, use or sell a product with a common conductive pathway electrode, even though the patent claims did not specifically recite that element. In particular, the court noted:

we have held that labeling an embodiment as “essential” may rise to a disavowal.

One of the first questions I typically ask an inventor when talking about a new invention is whether he or she has been through the patent process before. If the answer is “no,” then I try to prepare the inventor for the fact that the patent application’s description may soften some of the inventor’s absolute statements.

It’s important to recognize that what’s “essential” to achieve the best possible practical implementation of an invention may not always be “essential” for the purpose of patentability.  The X2Y Attenuators case helps illustrate what happens when a patent application confuses the difference between the two.