Software Patenting after Alice – 2016 Update - USCIPIuscipi.org/Events/2016 IP...

Software Patenting after Alice – 2016 Update

Rong Xie, M.Sc., LL.M. August 5, 2016

© 2016 Law Offices of Albert Wai-Kit Chan, PLLC8/5/2016 1/30

DISCLAIMER: The information presented here is not and should not be considered to be legal advice. The information here is not intended to create a lawyer-client relationship. When confronted with legal issues it is always the best practice to find someone who has the particular expertise necessary to provide meaningful advice. Information from this presentation should not be relied upon or used as a substitute for consultation with professional advisors.

8/5/2016© 2016 Law Offices of Albert Wai-Kit Chan, PLLC 2/30

Percent of all Actions with § 101 Rejections

Source: http://www.bilskiblog.com/blog/


BackgroundCase Law1. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 182 L. Ed. 2d

321 (U.S. 2012) 2. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (U.S. 2014)

USPTO Guidelines1. 2014-06-25 - Preliminary Examination Instructions in view of Alice2. 2014-12-07 - Interim Guidelines3. 2015-01 - Abstract Ideas Examples4. 2015-07 – Subject Matter Eligibility Update5. 2016-05 – Subject Matter Eligibility Update


Post-Alice vs. CLS Bank – How to make software invention patent eligible?

Step 1: Is the claim directed to a process, machine, manufacture, or composition of matter?

Step 2: Whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception.


Step 2: Two-Part AnalysisStep 2A: Is the claim directed to a law of nature, a natural phenomenon, or

an abstract idea? If no, the claim is eligible and examination should continue for

patentability If yes, proceed to Step 2B to analyze whether the claim as a whole amounts

to significantly more than the exception.

Step 2B: Determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception.

Consider the additional elements claimed with the exception, both individually AND as an ordered combination, to ensure that the claim describes a product or process that applies the exception in a meaningful way.


Examples of “Abstract Ideas” under Step 2A

Including, without limitation1. Fundamental economic practices2. Certain methods of organizing human activities 3. An idea ‘of itself’ 4. Mathematical relationships/formulas


Fundamental economic practices

Creating a contractual relationship (buySAFE) Hedging pricing risk (Bilski) Mitigating settlement risk (Alice Corp.)


Certain methods of organizing human activities Creating a contractual relationship (buySAFE) Hedging (Bilski) Mitigating settlement risk (Alice Corp.) Processing loan information (Dealertrack) Managing an insurance policy (Bancorp) Managing a game of bingo (Planet Bingo) Generating rule‐based tasks for processing an insurance claim

(Accenture) Tax‐free investing (Fort Properties)


An idea of itself Comparing information regarding a sample or test subject to a control or target

data (Myriad) Collecting and comparing known information (Classen) Comparing data to determine a risk level (Perkin-Elmer) Diagnosing an abnormal condition by performing clinical tests and thinking

about the results (In re Grams) Obtaining and comparing intangible data (Cybersource) Comparing new and stored information and using rules to identify options

(SmartGene) Using categories to organize, store and transmit information (Cyberfone) Organizing information through mathematical correlations (Digitech) Displaying an advertisement in exchange for access to copyrighted media

(Ultramercial)


Mathematical relationships/formulas An algorithm for converting binary coded decimal (BCD) to pure binary (Benson) A formula for computing an alarm limit (Flook) A formula describing certain electromagnetic standing wave phenomena (Mackay

Radio) The Arrhenius equation (Diehr) A mathematical formula for hedging (Bilski) Managing a stable value protected life insurance policy by performing calculations

and manipulating the results (Bancorp) Reducing the amount of calculations in known and established computations

(FuzzySharp) An algorithm for determining the optimal number of visits by a business

representative to a client (In re Maucorps)


Examples to overcome Step 2B1. 对另一种技术或技术领域做出改进;2. 对计算机本身的运行做出改进;3. 使用一台特定的机器实施原本不具备专利申请资格的客体;4. 实现某一特定物品向不同状态或事物的转变;5. 添加在该领域非为人熟知，例行及常规的限定因素，或添加非常规的

步骤，其将权利要求的实施局限于某种特定且有用的应用;6. 其他有意义的限定因素，该因素超越不具备专利资格客体与特定的技

术环境之间的一般联系。


Percentage of All Actions with 101 Rejection

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Software and Business Methods at CourtAs of June 8, 2016

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Case Laws for Discussion Enfish, LLC v. Microsoft Corp., 118 U.S.P.Q.2D (BNA) 1684 (Fed.

Cir. 2016)

DDR Holdings, LLC v. Hotels.com et al., 113 USPQ2d 1097 (Fed. Cir. 2014)


Enfish, LLC v. Microsoft Corp.A data storage and retrieval system for a computer memory, comprising:

means for configuring said memory according to a logical table, said logical table including:

a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;

a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and

means for indexing data stored in said table.


Relational Database

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Self-Referential Table


Enfish, LLC v. Microsoft Corp.Claims Step 2A

A data storage and retrieval system for a computer memory, comprising: means for configuring said memory according to a logical table, said logical table including:

a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;

a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and

means for indexing data stored in said table.

“In this case, however, the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. […] Here, the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database. […] The specification also teaches that the self-referential table functions differently than conventional database structures.”

The court noted that the invention improves upon prior art information search and retrieval systems by employing a flexible, self-referential table to store data.

8/5/2016 19/30

Enfish, LLC v. Microsoft Corp.Holdings: invention's ability to run on a general-purpose computer does not dooms the

claims the improvement is not defined by reference to "physical" components does not

doom the claims“Much of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.”

This is not a pre-or-post-solution general-purpose computer components are added to a fundamental economic practice or mathematical equation. The claims are directed to a specific implementation of a solution to a problem in the software arts.


DDR Holdings, LLC v. Hotels.com et al.A system useful in an outsource provider serving web pages offering commercial opportunities, the system

comprising: (a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually

perceptible elements, which visually perceptible elements correspond to the plurality of first web pages; (i) wherein each of the first web pages belongs to one of a plurality of web page owners; (ii) wherein each of the first web pages displays at least one active link associated with a commerce

object associated with a buying opportunity of a selected one of a plurality of merchants; and (iii) wherein the selected merchant, the outsource provider, and the owner of the first web page

displaying the associated link are each third parties with respect to one other; (b) a computer server at the outsource provider, which computer server is coupled to the computer store

and programmed to: (i) receive from the web browser of a computer user a signal indicating activation of one of the links

displayed by one of the first web pages; (ii) automatically identify as the source page the one of the first web pages on which the link has been

activated; (iii) in response to identification of the source page, automatically retrieve the stored data

corresponding to the source page; and (iv) using the data retrieved, automatically generate and transmit to the web browser a second web

page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page. 8/5/2016 21/30

DDR Holdings, LLC v. Hotels.com et al.Claims Step 2A

A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:a)a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages wherein[…];b)a computer server at the outsource provider […] programmed to […] using the data retrieved, automatically generate and transmit to the web browser a second web page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page;

“The claim addresses a business challenge (retaining website visitors) that is particular to the Internet. […] it does not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”


DDR Holdings, LLC v. Hotels.com et al.Claims Step 2B

A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:a)a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages wherein[…];b)a computer server at the outsource provider […] programmed to […] using the data retrieved, automatically generate and transmit to the web browser a second web page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page;

The claims here specify how interactions with the Internet are manipulated to yield a result that is not routine or conventional, contrary to events ordinarily triggered by the click of a hyperlink.


Observations – 2AComputer-rooted technologies/improvements are not abstract ideas: Isolating and Removing Malicious Code from Electronic Messages

(internet-centric challenge/computer-related technology) E-Commerce Outsourcing System/Generating a Composite Web Page

(internet-centric challenge) Constructing a “self-referential” database (computer-related technology) GUI for relocating obscured textual information (computer-related

technology)

Claims directed to such improvements should be patent eligible under Step 2A.


Observations – 2BImprovement to another technology or technical field Half-toning gray scale image, digital image processing (RCT) Calculating absolute position for GPS (SiRF) Controlling synthetic rubber curing process by computer (Diehr)

Improvements to the functioning of the computer itself Half-toning gray scale image, digital Image processing (RCT) GUI for relocating obscured textual information (SiRF)

Applying the judicial exception with, or by use of, a particular machine Robotic Arm Assembly Internal combustion engine with a computerized control system


Observations – 2B (Continued)Effecting a transformation or reduction of a particular article to a different state or thing Half-toning gray scale image, digital image processing (RCT) Controlling synthetic rubber curing process by computer (Diehr)

Other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment Half-toning gray scale image, digital image processing (RCT) Calculating absolute position for GPS (SiRF) Controlling synthetic rubber curing process by computer (Diehr)


Percent of all Actions with § 101 Rejections in other Tech Centers

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So our conclusions are … When drafting claims1. Machine-or-transformation test is still useful tool. A machine (robotic arm/internal

combustion engine) with computer components (e.g., a control system) - eligible under streamline analysis.

2. Emphasize the improvement is rooted in computer technology (Step 2A).3. Emphasize improvement to another technology or field (Step 2B).4. Limit the application of the method to particular technological environment and

emphasize transformation of the result (Step 2B).5. Recite at least one inventive clause that provides a technical solution to a

technical problem and the result of combining prior art structures/steps is not normal, expected, or predictable (Step 2B, hopefully).



Questions?



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THANK YOU!!!

DISCLAIMER: The information presented here is not and should not be considered to be legal advice. The information here is not intended to create a lawyer-client relationship. When confronted with legal issues it is always the best practice to find someone who has the particular expertise necessary to provide meaningful advice. Information from this presentation should not be reliedupon or used as a substitute for consultation with professional advisors.


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