Tag Archives: software patents

Federal Circuit finds credit reporting patent ineligible; calls it the “height of abstraction”

A recent Federal Circuit decision illustrates the high eligibility hurdles that fintech software patents continue to face in view of the Supreme Court’s 2014 Alice v CLS Bank decision.

In Clarilogic, Inc. v. FormFree Holdings Corp. (Fed. Cir. Mar. 15, 2017), the court addressed the eligibility of U.S. Patent 8,762,243, which was directed to methods for electronic account certification and  credit reporting. The representative claim of the patent was: Continue reading

Federal Circuit finds Internet content filtering patent eligible after Alice

For the second time in two months, the Federal Circuit has issued a decision that describes a situation in which a software invention can be eligible for patenting.

In Bascom Global Internet Services, Inc. v. AT&T Mobility et al., the court vacated and remanded a district court’s decision that found a content filtering system invention to be not patent-eligible.

The patent at issue covered a system by which a remote ISP server filters content that a client computer requests from a website. Claim 1 of the patent is directed to:

1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
  a local client computer generating network access requests for said individual controlled access network accounts;
  at least one filtering scheme;
  a plurality of sets of logical filtering elements; and
  a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

The Federal Circuit passed on considering whether the claims were directed to an abstract idea, but instead focused on the second prong of the Alice v CLS Bank patent-eligibility analysis and found the claims to include an inventive concept. The Federal Circuit noted that “[t]he claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or perform it on a set of generic computer components…nor do the claims preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.”

The court also cautioned against confusing patent-eligibility with obviousness: “The district court’s analysis in this case … looks similar to an obviousness analysis under 35 U.S.C. 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

The decision closely follows the Federal Circuit’s recent decision in Enfish LLC v. Microsoft Corporation, in which the court cautioned against a broad interpretation of Alice v. CLS Bank as holding that all improvements in computer-related technology are inherently abstract.

For a summary of more Federal Circuit, district court, and PTAB decisions that have found software patents to be eligible for patenting since Alice, click here.

Thanks to my colleague Brienne Terril for her help writing this post.

India Patent Office: No patent if invention is merely software

After months of deliberation, India’s Patent Office has issued new guidelines that firmly maintain the country’s practice of not granting patents for software inventions. Issued February 19, 2016, the new Guidelines for Examination of Computer Related Inventions put to rest the country’s recent debate over whether software can be patentable if it has industrial applicability.

India’s patent law does not define or use the term “software,” but it does say that “a mathematical or business method or a computer programme per se or algorithms” are excluded from patentability, as is “a presentation of information.” However, during the past year, the Patent Office began to interpret this exclusion narrowly by stating that software could be patentable if it is applicable to a particular industry.

The new Guidelines reject that notion and direct examiners to apply a three-part test when examining claims for computer-related inventions:

  1. Properly construe the claim and identify the actual contribution;
  2. If the contribution lies only in mathematical method, business method or algorithm, deny the claim;
  3.  If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.

The Guidelines indicate that a claim must use some type of unique hardware, and that claims directed to “computer programmes,” a “set of instructions/ Routines and/or Sub-routines, “computer programme products,” a “Storage Medium having instructions,” a “Database,” or a “Computer Memory with instruction” should not be considered patentable.

The Guidelines include 15 examples of claims that are not patentable in India. Notably, the Guidelines include no examples in which the claims would considered acceptable.

The new Guidelines have been viewed as a win for Indian software company trade associations who lobbied hard to keep software out of the realm of patentability.

 

 

Software patent-eligibility after Alice: where are we now?

Since the June 2014 U.S. Supreme Court decision in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the vast majority of district court decisions, Federal Circuit decisions, and Patent Trial and Appeals Board (PTAB) decisions that considered the issue have overturned software and business method patents under the new patent-eligibility standard of Alice.  In the first quarter of 2015 alone, when considering a motion to dismiss or a motion for judgment on the pleadings on the basis of patent-eligibility under §101, U.S. district courts have granted the motions and ruled the patents to be invalid over 66% of the time.

In November 2014, I published a post that summarized court and PTAB decisions that bucked this trend and found software to be patent-eligible. Since then, a small but growing number of cases refused to overturn patents that involved software, and the USPTO issued an Interim Guidance document describing actual and hypothetical claims that could survive post-Alice scrutiny.

To track the activity since then, I have updated my original post. It’s still available via this link. I intend to keep it updated on a periodic basis, so feel free to bookmark it or simply check back for future updates.

Patent-eligibility after Alice: a summary of decisions that found software inventions eligible for patenting

Since the June 2014 U.S. Supreme Court decision in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the vast majority of district court decisions, Federal Circuit decisions, and Patent Trial and Appeals Board (PTAB) decisions that considered the issue have overturned software and business method patents under the new patent-eligibility standard of Alice.

While many of the early cases explained why the specific claims failed to satisfy patent-eligibility requirements, for the most part the early cases provided little guidance to help the patent community identify what types of claims would be patent-eligible.

On December 16, 2014, the USPTO issued an Interim Guidance document on the topic. The Interim Guidance summarized the cases that upheld patents as of that date. It also included some hypothetical claims that could be considered to be patent-eligible. The Interim Guidance started to break the post-Alice logjam at the USPTO, and it gave applicants and Examiners the ability to move some cases forward. In July 2015, the USPTO issued a Subject Matter Eligibility Update with additional examples and caselaw summaries. The USPTO issued a second Subject Matter Eligibility Update in May 2016.

However, in certain areas — notably USPTO Technology Center 3600 — applicants still have a difficult time overcoming patent-eligibility rejections, even when they submit claims that are closely aligned with the examples of the Interim Guidance. Instead, applicants often find themselves simply trying to place cases in a better position for appeal.

To prepare for this process, patent applicants can find some insight from the growing number of court and PTAB decisions that declined to overturn patent claims.  A summary of those cases, with links to the cases and patents, follows:

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