Patents

Posts on patents

When filing a patent application with the United States Patent and Trademark Office (USPTO), certain applicants have the option to designate “small entity status” or “micro entity status.” Claiming either small or micro entity status has some benefits, but can also have drawbacks. When faced with that decision, what should the company do? (more…)

The United States Supreme Court’s May decision in TC Heartland LLC v. Kraft Foods Group Brands LLC was widely seen as a limitation on the jurisdictions in which a patent owner can file infringement claims. That decision set off a minor scramble among patent owners to find suitable and accessible alternative forums. More recently, a district court decision has swung the pendulum in the other direction and could potentially preserve the ability of patent owners to choose their own venue, including one so-called “rocket docket” in the Eastern District of Texas. (more…)

Last month, the Federal Circuit issued a decision confirming that a “private” sale of an invention, more than one year before the effective filing date of a patent application for that invention, invalidates the resultant patent. The case, captioned Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., addressed the “on-sale bar” in 35 U.S.C. § 102 and verified that the America Invents Act (AIA) did not change the pre-AIA statutory meaning of “on sale.” (more…)

The process of creating “link relationships” between documents and personal profiles used by Facebook®, LinkedIn®, and other social media platforms came under fire in October 2012 via a patent infringement suit filed by technology company Bascom Research, LLC.  Facebook®, LinkedIn®, and three other network software companies were named as defendants in that suit.  More than two years later, and in the wake of the seismic ruling issued by the U.S. Supreme Court in Alice Corp. v. CLS Bank Int’l, Bascom’s challenge came to an unsuccessful end when the U.S. District Court for the Northern District of California determined that Bascom’s patents for the linking technology were invalid as being drawn to abstract ideas. (more…)

At its heart the Internet is an information distribution network and the ease with which all manner of information can be shared instantly has led to numerous innovative methods of doing, well, most anything. A hallmark of patents on such methods is that the various steps are carried out by multiple actors as information is passed around the Internet. Often the actors between which the steps of the patented method are divided have only the most tenuous connection with one another. In a case that is reshaping our understanding of what it means to infringe a method patent in the digital age, the Supreme Court reversed the Federal Circuit’s ruling on such divided infringement in Limelight Networks v. Akamai Tech. (more…)

Mathmatical algorithms are unpatentable. Software is a collection of algorithms expressed in machine code. Under current law, only software that involves a specific machine or physical result. The U.S. Supreme Court accepted cert in a case,  Alice Corporation Pty. Ltd. v. CLS Bank International (docket 13-298), involving financial software to mitigate risk in settlement transactions. The trial court decided the software is unpatentable because it merely uses “the abstract idea of employing an intermediary to facilitate simultaneous exchange of obligations”. the U.S. Court of Appeals for the Federal Circuit split on the decision, teeing it up for the Supreme Court.

Timothy Lee of the Washington Post points out that if the Supreme Court broadly invalidates the software patents, it would allieviate the nuisance suits by ‘non-producing entities’ or ‘trolls’, since most involve software. Would it discourage Congress from its present mission to identify a legislative solution to the troll problem? (more…)

Will Prior Art Block My Patent Application?  Prior Art 101 for §§102 and 103

If you read IP blogs with any regularity you no doubt know that patent reform has come courtesy of the America Invents Act (“AIA”), although the “old” patent law hasn’t really left us and won’t for quite some time.  The most blogged about change brought on by the AIA has undoubtedly been the change from the previous “first-to-invent” system to the current “first inventor to file” system. The AIA accomplished this switch by revising the language of 35 USC §§102 and 103 to redefine what constitutes prior art that can serve as a basis on which to reject an application to patent an invention. Section 102 does the heavy lifting in this regard and the changes to its language are significant. Exactly how significant though is difficult to say in some regards because new statutes come with something of a clean slate in as much as there is no judicial history of interpretation to serve as a lens through which to interpret the language. The “old” §102 has a long history of interpretation by the courts and BPAI and just how clean the slate is on which it was written is itself not clear since there is much similarity between the current and former language. But similarity in form or structure does not necessarily require the same outcome and we lawyers, being what we are, will certainly argue for interpretations beneficial to our clients in the absence of binding precedent from the bench. This post, or more likely a series of posts, will compare the definitions of prior art under the AIA and under the older, first-to-invent regime. (more…)

Is Software Patentable?

We may soon have an answer to that question. By “soon” I mean probably sometime in the next two years. By “answer” I mean we will have the en banc opinion of the Federal Circuit in the case of CLS Bank v. Alice Corp.  Yesterday, the Federal Circuit granted CLS Bank’s petition for rehearing and vacated the panel decision issued by the court in July.  Briefing by the parties and likely by a host of interested third parties will begin immediately but oral arguments will not be scheduled until 2013. Perhaps anticipating the private sector’s broad interest in the issues to be considered, the court waived the usual requirement for third parties to obtain leave of the court before filing an amicus brief and specifically invited the United States Patent and Trademark Office to state its views. In addition to the issues considered by the panel, the full court determined to consider:

a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea? and

b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

At the district court level, Alice Corp. asserted four patents that cover a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate “settlement risk.” The district court granted summary judgment of invalidity based on a finding that the patents claimed ineligible subject matter and Alice appealed.

Reversing the lower court, the Federal Circuit panel majority held that a claim must not be deemed to be directed to patent ineligible subject matter under § 101 if, in view of all of the claim recitations, it is not manifestly evident that the claim is directed to an abstract idea. Alternately stated, Judge Linn wrote that “unless the single most reasonable understanding of the claim is that it is directed to nothing more than a fundamental truth or disembodied concept with no limitations in the claim attaching that idea to a specific application,it is inappropriate to hold that the claim is directed to a patent ineligible “abstract idea” under 35 U.S.C. § 101.”

The majority then applied what was quickly dubbed the “nothing-more-than” standard and, after criticizing the district court for looking “past the details of the claims” to characterize them fundamental concept that are patent ineligible, looked closely at the claims themselves. In doing so, the majority concluded that Alice’s patent claims “appear to cover the practical application of a business concept in a specific way” which requires computer implemented steps that “play a significant part in the performance of the invention.” This, in the eyes of the majority, is enough to clear the apparently low bar set by § 101.  Judge Prost wrote a strong dissent arguing that the majority had improperly ignored Supreme Court precedent providing that limiting the use of a claimed formula to a particular technological environment or adding purely conventional or obvious pre-solution activity was insufficient to render an abstract idea patentable. We will have to wait and see if the full Federal Circuit gives Supreme Court precedent more weight.

The Federal Circuit’s recently issued decision in the cases of Akamai Technologies, Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corp. received less attention than its importance might have warranted, perhaps because Apple’s win over Samsung in the patent litigation between the Smartphone giants occurred at about the same time and soaked up all of the media’s appetite for patent news, or perhaps because the implications of the decision are not apparent from a casual perusal of the decision. The decision has significant implications for many industries and particularly those in the business of developing and implementing multiparty data and communications systems and software and those based on related business methods. Here’s why. (more…)