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Recent Developments in Patent Law: Cases

April 23, 2019

Blog Post Submitted by Anthony P. DeRosa

The Supreme Court and Federal Circuit continue to be active in the early stages of 2019 with respect to patents. This post takes a brief look at two recently decided cases regarding on-sale bar and patent term adjustment, respectively.

Helsinn Healthcare v. Teva Pharmaceuticals (decided on January 22, 2019)

This case required the Supreme Court to decide whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention “on sale” within the meaning of 35 U.S.C. § 102(a)(1).

While developing a treatment for chemotherapy-induced nausea and vomiting, Helsinn entered into two agreements with another company granting that company the right to distribute, promote, market, and sell a 0.25 mg dose of the anti-nausea drug in the United States. The agreements required the company to keep any proprietary information received under the agreements confidential.  The agreements were announced in a joint press release, but the 0.25 mg dose was not publicly disclosed.  Nearly two years later, Helsinn filed a provisional patent application covering the 0.25 mg dose of the drug.  Helsinn eventually was issued U.S. Patent No. 8,598,219 (the ‘219 patent) covering the same.

After issuance of the ‘219 patent, Teva sought approval from the FDA to market a generic product containing the 0.25 mg dosage. In defense of an infringement suit brought by Helsinn, Teva asserted that the ‘219 patent was invalid because the 0.25 dose was “on sale” more than one year before Helsinn filed the provisional patent application.

Under the America Invents Act (AIA), a person is precluded from obtaining a patent on an invention that was “…in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”  35 U.S.C. § 102(a)(1).  The AIA retained the on-sale bar of prior patent statutes and added the catchall phrase “or otherwise available to the public.” Id.

The District Court held that the “on sale” provision did not apply because the companies’ public disclosure of the agreements did not disclose the 0.25 mg dose. However, the Federal Circuit reversed this decision concluding that “if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of the sale” to fall within the AIA’s on-sale bar.  855 F.3d 1356, 1360 (2017).

In deciding the case, the Supreme Court noted that every patent statute since 1836 has included an on-sale bar and the AIA’s addition of the catchall phrase did not alter the meaning of the on-sale bar. The Court further noted that the Federal Circuit has long held that “secret sales” can invalidate a patent, and that the phrase “on sale” had acquired a well-settled meaning when the AIA was enacted.  Therefore, in light of the settled pre-AIA precedent on the meaning of “on sale,” the Court presumed that when Congress reenacted the same language in the AIA, it adopted the earlier judicial construction of that phrase.   Accordingly, the Court held that a commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under the AIA.

The decision can be found here.

Supernus Pharm. v. Andrei Iancu (decided on January 23, 2019)

In this case, the Federal Circuit, in reversing a ruling by the District Court for the Eastern District of Virginia, held that when making a patent term adjustment (PTA) calculation, the USPTO cannot count as applicant delay any period of time during which there was no possible action that the applicant could take to reasonably conclude prosecution.

The USPTO issued U.S. Patent No. 8,747,897 (the ‘897 patent) on July 10, 2014 to Supernus, reflecting a PTA of 1,260 days. In calculating the PTA, the USPTO attributed 2,321 days to USPTO delay (Type A and B delays) which was reduced by 175 days for overlap of Type A and B delays and 886 days for applicant delays.  Relevant in this case, of the 886 days attributed to applicant delay, 646 days were assessed for the time between the filing of a Request for Continued Examination (RCE) on February 22, 2011 and the submission of a supplemental Information Disclosure Statement (IDS) on November 29, 2012.

On August 21, 2012, 546 days after Supernus filed the RCE, Supernus was notified by the European Patent Office (EPO) that a Notice of Opposition was filed against a corresponding European patent, which triggered the submission of the supplemental IDS. Supernus argued it was entitled to at least 546 of the 646 days because there was nothing they could have done to conclude prosecution between the period of filing the RCE and when they were notified about the European opposition.

In 1999, Congress passed the PTA statute in an effort to discourage delay in the patent application process. The PTA statute, 35 U.S.C. § 154(b)(2)(C)(i), provides in pertinent part:

“The period of adjustment of the term of a patent under paragraph (1) shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application”

The Federal Circuit held that, on the basis of the plain language of the PTA statute, the USPTO may not count as applicant delay a period of time during which there was no action that the applicant could take to conclude prosecution of the patent because doing so would exceed the time during which the applicant failed to engage in reasonable efforts.

PTA reduction must be the same number of days as the period of the applicant’s failure to engage in reasonable efforts to conclude prosecution. PTA cannot be reduced by a period of time during which there is no identifiable effort in which the applicant could have engaged to conclude prosecution because such time would not be “equal to” and would instead exceed the time during which an applicant failed to engage in reasonable efforts.

In view of the foregoing, the Court found that there was no action that Supernus could have taken to advance prosecution of the patent during the 546-day period between the RCE and when Supernus received the notice of the opposition from the EPO. Particularly, because the EPO notice of opposition did not exist yet.  Accordingly, the Court held that the assessment of an additional 546 days of applicant delay is contrary to the plain meaning of the statute because the 646-day total reduction is not equal to a period of time during which Supernus failed to engage in reasonable efforts to conclude prosecution of the ‘897 patent.

The decision can be found here.

USPTO Rings in 2019 with New Guidance for Computer-Implemented Inventions – Part II

March 13, 2019

Blog Post Submitted by Adam J. College

As we discussed last time, subject matter eligibility was not the only patentability requirement for which the United States Patent and Trademark Office (USPTO) issued new guidance on January 7, 2019, although the initial press coverage might have made it seem that way. The second examination guidance document, “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112”[1] has received significantly less coverage or attention than the Subject Matter Guidance, but may in fact portend a coming wave of rejections under 35 U.S.C. 112 for computer-implemented inventions.

The Functional Claiming Guidance opens with an observation that the Federal Circuit has recognized problems with broad functional claiming without adequate structural support in the specification, which has resulted in a “proliferation of functional claiming untethered to [112(f)] and free of the strictures set forth in the statute.”[2] Other pessimistic quotes from Federal Circuit opinions and concurrences as to the state of functional claiming follow, both with respect to functional claiming in a 112(f) context and in a 101 context.[3] Perhaps the most ominous citation is to Judge Meyer’s concurrence in Intellectual Ventures I LLC v. Symantec Corp.,[4] which begins its discussion on software patents with an admonition that “most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents,”[5] and goes downhill from there.

With the mood set, the Functional Claiming Guidance focuses first on claim interpretation under 35 U.S.C 112(f) and compliance with the definiteness requirement of 35 U.S.C. 112(b). Recognizing that there is a presumption that 35 U.S.C. 112(f) does not apply to a claim limitation that does not use the term “means,” the Functional Claiming Guidance also notes that the presumption is overcome (i.e. 35 U.S.C. 112(f) does apply) when “the claim term fails to recite sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function.”[6] Moreover, other terms in addition to the most common “means,” can also act as a “generic placeholder” if the term is not recognized by one of ordinary skill in the art as being sufficiently definite structure for performing the claimed limitation; a non-exhaustive list of such terms includes “module,” “unit,” or “element.”[7]

To determine whether a word, term, or phrase coupled with a function denotes structure, the Functional Claiming Guidance instructs examiners to check whether (1) the specification provides a description sufficient to inform one of ordinary skill in the art that a term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and (3) the prior art provides evidence that the term has an art recognized structure to perform the claimed function.[8] If a limitation does invoke 35 U.S.C. 112(f), then the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).[9] Such an algorithm may be expressed in “any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.”[10] However, an Applicant cannot argue that one of ordinary skill in the art is capable of writing software to provide a missing algorithm. Nor can a partial algorithm, or algorithms of only some functions suffice – the entirety of the claimed functionality must be described algorithmically in the specification or figures.[11] Furthermore, when a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under 35 U.S.C. 112(a).[12]

The Functional Claiming Guidance also addresses separately the requirements of 35 U.S.C. 112(a) for computer-implemented functional claims, even for claims that do not invoke 35 U.S.C. 112(f).[13] For instance, in order to satisfy the written description requirement, the specification must provide a sufficient description of an invention, not an indication of a result that one might achieve. For the written description requirement, “the determination of the sufficiency of the disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software.”[14] Examiners are instructed to determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing, and if not, make a rejection under 35 U.S.C. 112(a) for lack of written description.[15] Finally, with respect to the enablement requirement under 35 U.S.C. 112(a), the Functional Claiming Guidance reminds examiners that, although not everything necessary to practice the invention need be disclosed, a claim is sufficiently enabled only if no undue experimentation is needed across the entire scope of the claims, and explicitly notes that an applicant cannot rely on the knowledge of one skilled in the art to supply missing information required to enable the novel aspect of the claimed invention, since that information is, by definition, not known in the art.[16]

In theory, the USPTO is not engaging in new rulemaking with these guidance documents – they are merely synthesizing and extracting current case law in a way that is understandable to the largely-non-legal examining corps. However, one way to take these two guidance documents (and presumably the internal training to examiners), and read between the lines sees the USPTO looking to reduce the number of rejections under 35 U.S.C. 101, while also addressing the apparent concern on the Federal Circuit as to software patents and computer-implemented inventions by increasing rejections under 35 U.S.C. 112. By way of analogy, consider how professional and collegiate athletic leagues and conferences ask referees to make certain rules “points of emphasis” for a season to cut down on excessive unwanted conduct.[17] The rule was always in the rulebook, but by encouraging more rigid enforcement of the rule, the league or conference can promote more desired play. Perhaps these two guidance documents reflect the USPTO’s own “points of emphasis” for 2019.

Let’s look at an example of how the two guidance documents may act in operation. Consider a simple claim of “An apparatus comprising a processor, and memory storing computer-readable instructions that, when executed by the processor, cause the processor to a) retrieve information from a remote database over a network connection, and b) store a copy of the information in a local cache within the memory.” This claim likely satisfies the Subject Matter Guidance, in that under Prong One, it does not “recite” an abstract idea within one of the enumerated groupings, and in any event, likely satisfies Prong Two by integrating any abstract idea recited therein within a practical application. Recall that Prong Two does not include an evaluation of whether an additional element is well-understood, routine, or conventional, and the Subject Matter Guidance explicitly reminds examiners that a claim that includes conventional elements may still integrate an exception into a practical application, thereby satisfying the subject matter eligibility requirement of Section 101.[18]

Does this example claim satisfy 35 USC 112, however? The example claim does not include any of the identified “generic placeholders,” but does recite a common setup of a “processor and memory.” To my knowledge, the Federal Circuit has not ruled on whether the processor/memory recitation recites “sufficiently defined” structure. Although it would seem the answer is “yes” under the 3-prong test (i.e., whether (1) the specification provides a description that the term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and (3) the prior art provides evidence that the term has an art recognized structure to perform the claimed function), in that most specifications include at least a pro forma discussion of common processor and memory modalities, I could see a fact-specific scenario in which the terms may be viewed by a Federal Circuit panel as lacking “sufficiently defined” structure, especially when considering the wide breadth of such modalities (e.g., the term “processor” includes microprocessors such as the Intel 4004 and 8008 of yesteryear, modern multi-core processors, and everything in between).

Even if the “processor and memory” is never found by a court to invoke 35 U.S.C. 112(f) (or is affirmatively found to recite sufficiently defined structure), the Functional Claiming Guidance suggests that a new emphasis will be made as to whether the specification discloses the computer and the algorithm(s) that achieve the functions of claims in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. Therefore, it may serve applicants well to include increased explanation and inclusion of algorithms, especially for novel and inventive aspects. For example, if the applicant of the example claim felt that the retrieving operation was inventive, she should recite in detail how the retrieving is performed algorithmically (e.g., “opening a connection to the remote database, preparing an instruction command, transmitting the instruction command over the opened connection. . . .”). She would also be served well by providing details on the local “storing” operation to ensure that the apparatus may be made and/or used without undue experimentation. For example, she may describe that a connection to the local cache may be opened prior to the connection to the remote database, that the information is received in full prior to instantiation of the storing operation, or so on. Of course, inventions of greater complexity will require a more thoughtful analysis as to what needs to be included in the specification, and to what degree of detail, so as to support the claims fully, regardless as to whether 112(f) is invoked.

In January, my colleague John Whetzel, discussed the importance of explaining the “why,” in making sure that claims are underpinned with a solid technical understanding of the invention, the technical environment, and the nexus therebetween. These new guidance documents make clear the importance that the “how” of the invention needs to be distilled into the application, in perhaps even greater detail than previously thought. We welcome any questions you have on these patent guidance documents, and whether they affect your patent strategy.

[1] “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112,” 84 Fed. Reg. 57 (January 7, 2019) (herein, “Functional Claiming Guidance”).

[2] 84 Fed. Reg. 57, at 57 (discussing and quoting Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc).

[3] 84 Fed. Reg. 57, at 57-58.

[4] 838 F.3d 1307, 1327 (Fed. Cir. 2016) (Mayer, J., concurring)

[5] Id.

[6] 84 Fed. Reg. 57, at 58.

[7] Id. at 59.

[8] Id. at 59.

[9] Id. at 59-60.

[10] Id. at 60.

[11] Id. at 60.

[12] 84 Fed. Reg. 57, at 61.

[13] Id. at 62.

[14] Id.

[15] Id.

[16] Id.

[17] Helin, K. “What NBA officials will focus on this season: Off-ball clutching/grabbing, traveling, respect for game.” Yahoo! Sports, Sept. 28, 2018, available at https://sports.yahoo.com/nba-officials-focus-season-off-010057593.html.

[18] See Subject Matter Guidance.

USPTO Rings in 2019 with New Guidance for Computer-Implemented Inventions – Part I: Subject Matter Eligibility

February 28, 2019

Blog Post Submitted by Adam J. College

If the USPTO makes New Year’s resolutions, “release new guidance documents” must have been at the top of its list for 2019. Patent practitioners were treated to not one, but two new examination guidance documents in the Federal Register as they showed up for work on the first Monday of the year. There’s a lot to unpack in both of these documents, so this week, we’ll look at the first guidance document, “2019 Revised Patent Subject Matter Eligibility Guidance[1],” and next week, we’ll dive into the second, “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112.”[2]

The Subject Matter Guidance revises examining procedure with respect to the “Step 2A” of the Alice/Mayo framework;[3] other parts of the Alice/Mayo framework are unaffected by the Subject Matter Guidance.[4] The key question in Step 2A is to determine whether the claims are “directed to’” a judicial exception,[5] and the key new insight in the Subject Matter Guidance is to break down this question into two “prongs.” Prong One asks whether the claim “recites” a judicial exception, and Prong Two asks whether the claim is “integrated into a practical application.”[6] A claim is “directed to” a judicial exception only when both prongs are met: that is, a claim that both recites a judicial exception and fails to integrate the exception into a practical application is “directed to” the judicial exception.

For Prong One, the Subject Matter Guidance “extracts and synthesizes key concepts identified by the courts as abstract ideas,”[7] and provides three “groupings” of abstract ideas: (1) mathematical concepts, such as mathematical relationships, formulas, equations, or calculations; (2) “certain methods of organizing human activity,” which includes economic practices such as hedging, insurance, or risk mitigation, as well as commercial or legal interactions and managing behavior or relationships between people; and (3) mental processes, such as observing, evaluating or making judgments or opinions.[8] Notably, the Subject Matter Guidance explains that “the abstract idea exception includes [these] groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se).”[9] In other words, if a claim does not recite subject matter that falls within these enumerated groupings, then the claim should not be treated as reciting an abstract idea, except in rare circumstances.[10] If a claim does not “recite” an abstract idea, then the claim cannot be “directed to” the abstract idea, and the examiner can end the analysis here.

However, if the claim does recite subject matter that falls within at least one of the enumerated groupings, then Prong Two instructs examiners to evaluate whether the claim as a whole “integrates” the recited judicial exception into a practical application of the exception.[11] A claim that integrates a judicial exception into a practical application “applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”[12] If a claim “integrates” the exception, then the claim is not “directed to” the abstract idea.

The Subject Matter Guidance includes a non-exhaustive list of “considerations” to be used in determining whether an integration exists, such as whether the claim includes an additional element that “reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field,” or an element that “applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition,” or an element that “implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim.”[13] Even an element that “effects a transformation or reduction of a particular article to a different state or thing” may suffice to show integration of the recited exception into a practical application.[14] These “considerations” are also used in Step 2B of the Alice/Mayo framework, and while there is therefore a high degree of overlap between Step 2A Prong Two and Step 2B, there is one major difference. Unlike Step 2B, Step 2A Prong Two does not include an evaluation of whether an additional element is well-understood, routine, or conventional, and the Subject Matter Guidance explicitly reminds examiners that a claim that includes conventional elements may still integrate an exception into a practical application, thereby satisfying the subject matter eligibility requirement of Section 101.”[15]

Bringing clarity to the murky waters of patent eligibility is a key priority of the USPTO under Director Andrei Iancu,[16] and the formulation of Prong One and Prong Two in the new Subject Matter Guidance suggests a potential sea change in how 101 rejections are formulated by examiners, and in how applicants respond to issued rejections. One major vote of confidence in the Subject Matter Guidance has come from the Patent Trial and Appeals Board, which rendered two separate decisions in less than two weeks that each reversed 101 rejections using the Subject Matter Guidance, despite not being bound by guidance documents.[17]  In ex parte Fanaru, the PTAB hewed very closely to the groupings discussed in the Subject Matter Guidance, finding that claim recitations of “collecting usage information,” is not a “mathematical concept, an identified method of organizing human activity, or a mental process.”[18] In ex parte Rockwell, the PTAB ruled that the claims for updating vehicle software over-the-air integrated the asserted abstract ideas into specific practical applications of those ideas.[19]

The initial reporting on the Subject Matter Guidance, and on the PTAB’s usage of the Subject Matter Guidance, has been one of cautious optimism, especially for software-based inventions. The identified groupings in Prong One suggest that applications not directed to “math, money, or mental steps,”[20] should more easily survive examination under 101. The list of considerations in Prong Two, as well as the absence of an evaluation into whether an additional element is well-understood, routine, or conventional, also may be potentially favorable to applicants, especially in view of the Subject Matter Guidance’s reminder examiners that a claim that includes conventional elements may still integrate an exception into a practical application and thereby satisfy the subject matter eligibility requirement of Section 101.[21] Of course, a claim that relies only on conventional and well-known elements may have difficulty overcoming art-based rejections under Sections 102 and 103.

Here at Myers Bigel, we also have cautious optimism that the Subject Matter Guidance will bring some consistency to the questions surrounding patent eligibility. That said, it’s too early to tell whether and how much the rejection numbers will change, or even if the USPTO guidance will be approved by higher courts, who may find the identified groupings too rigid, or find the “integrated into a practical application” analysis under Prong Two unsupported by Supreme Court or Federal Circuit decisions.

It’s not all smooth sailing, however. Next week, we’ll look at the Functional Claiming Guidance,[22] which has received significantly less coverage or attention, but may in fact portend a coming wave of rejections under 35 U.S.C. 112 for computer-implemented inventions. Until then, we welcome any questions you have on the Subject Matter Guidance, and whether it affects your patent strategy.

[1] 84 Fed. Reg. 50 (January 7, 2019) (herein, “Subject Matter Guidance”).

[2] 84 Fed. Reg. 57 (January 7, 2019)

[3] See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).

[4] In other words, the Subject Matter Guidance does not modify the Step One requirement that the claims need to recite statutory subject matter (i.e., whether the claim recites a “process, machine, manufacture, or composition of matter”). Step 2B of the Alice/Mayo framework, which looks into whether the claim “directed to” an abstract idea recites “significantly more” than the abstract idea, is also unmodified by the Subject Matter Guidance.

[5] Alice, 573 U.S. at 217 (citing Mayo, 566 U.S. at 77).

[6] 84 Fed. Reg. 50, at 51.

[7] Id., at 52.

[8] Id.

[9] Id.

[10] Id., at 53.

[11] 84 Fed. Reg. 50, at 53.

[12] Id.

[13] Id., at 55.

[14] Id.

[15] 84 Fed. Reg. 50, at 55.

[16] 84 Fed. Reg. 50, at 50.

[17] Patel, A. and Kronenthal, C. “First PTAB Reversals Under New Subject Matter Eligibility Guidance,” IP Watchdog, Feb. 14, 2019, available at https://www.ipwatchdog.com/2019/02/14/first-ptab-reversals-new-subject-matter-eligibility-guidance/id=106312/

[18] Appeal No. 2017-002898, Jan. 22, 2019.

[19] See Ex parte Rockwell, Appeal No. 2018-004973, p. 8 (PTAB Jan. 16, 2019).

[20] Bultman, M. “PTAB Taking Patent Eligibility Revamp to Heart,” Law360, Feb. 15, 2019, available at https://www.law360.com/articles/1130012/ptab-taking-patent-eligibility-revamp-to-heart

[21] 84 Fed. Reg. 50, at 55.

[22] See note 2, supra.

 

Technical Improvements Providing Path to Patent Eligibility

January 1, 2019

Blog Post Submitted by John K. Whetzel

In recent years, software-centric patents have been increasingly at risk for receiving rejections from the US Patent Office under 35 U.S.C. § 101.  These rejections, based primarily on the Supreme Court’s decision in Alice Corporation Pty. Ltd. V. CLS Bank International, et al. (“Alice”), invoke a judicial exception to patent eligibility for applications which are alleged to be directed to “abstract ideas.” This area of law is unsettled and evolving.  Patent practitioners, examiners, and the courts have been struggling with this judicial exception, and many software-related patent applications (and patents) have suffered as a result.  For example, many patent claims related to software inventions are rejected by USPTO examiners as being related to the abstract idea of “gathering, analyzing, and displaying” data.  As USPTO examiners have a large amount of leeway in making such a rejection, with little required in the way of a burden of proof, practitioners can have difficulty overcoming the rejections once raised.

In the midst of the confusion related to what is an “abstract idea,” the Federal Circuit decision in Enfish, LLC v. Microsoft Corp (Fed. Cir. 2016) (“Enfish”) provided some clarity.  The decision in Enfish detailed that an “improvement to computer functionality” was not an abstract idea.  This decision was based on portions of the Alice decision that noted “that claims ‘purport[ing] to improve the functioning of the computer itself,’ or ‘improv[ing] an existing technological process’ might not succumb to the abstract idea exception.”  Enfish, slip op. at 10.  Since the Enfish decision, a number of decisions at the PTAB have focused on the technical improvement argument, providing a path to patent eligibility for software-based claims.

This path, since articulated in the Manual of Patent Examining Procedure at the USPTO, is based on the assertion that claims that are directed to improvements in computer functionality or “other technology” are not abstract.  Thus, by showing that a claim represents a technical improvement, an applicant may, in some circumstances, overcome a rejection based on patent eligibility.   Such an argument should involve two prongs: 1) showing a teaching in the specification on how the invention improves a technology and (2) establishing a clear nexus between the claim language and the improvement to technology.  Thus, both the claims and the specification should support the asserted technical improvement.

A recent case at the Federal Circuit illustrates a successful use of this “technical improvement” argument.  In Data Engine Technologies LLC v. Google LLC (Fed. Cir. 2018) (“Data Engine”), the court analyzed four patents (U.S. Patent Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146), all of which were found patent-ineligible by a district court.  On appeal, the Federal Circuit overturned some, but not all, of these decisions based on the conclusion that some of the claims represented a technical improvement, and were therefore not directed to an abstract idea.  Comparing the claims which were found eligible to those which were found ineligible provides an illustration of the distinction that can preserve claims based on the “technical improvement” rationale.  The Data Engine patents relate to the use of a virtual “tab” structure integrated into a selection of spreadsheets, meant to mimic the physical tabs that could be attached to a stack of files.  The patents describe both a user interface to display the virtual “tabs” as well as underlying mechanism to move between the spreadsheets using the tabs.

An example of a claim that was found to be patent-eligible is Claim 12 from U.S. Patent No. 5,590,259:

  1. In an electronic spreadsheet system for storing and manipulating information, a computer-implemented method of representing a three-dimensional spreadsheet on a screen display, the method comprising:

displaying on said screen display a first spreadsheet page from a plurality of spreadsheet pages, each of said spreadsheet pages comprising an array of information cells arranged in row and column format, at least some of said information cells storing user-supplied information and formulas operative on said user-supplied information, each of said information cells being uniquely identified by a spreadsheet page identifier, a column identifier, and a row identifier;

while displaying said first spreadsheet page, displaying a row of spreadsheet page identifiers along one side of said first spreadsheet page, each said spreadsheet page identifier being displayed as an image of a notebook tab on said screen display and indicating a single respective spreadsheet page, wherein at least one spreadsheet page identifier of said displayed row of spreadsheet page identifiers comprises at least one user-settable identifying character;

receiving user input for requesting display of a second spreadsheet page in response to selection with an input device of a spreadsheet page identifier for said second spreadsheet page;

in response to said receiving user input step, displaying said second spreadsheet page on said screen display in a manner so as to obscure said first spreadsheet page from display while continuing to display at least a portion of said row of spreadsheet page identifiers; and

receiving user input for entering a formula in a cell on said second spreadsheet page, said formula including a cell reference to a particular cell on another of said spreadsheet pages having a particular spreadsheet page identifier comprising at least one user-supplied identifying character, said cell reference comprising said at least one user-supplied identifying character for said particular spreadsheet page identifier together with said column identifier and said row identifier for said particular cell.

Key to understanding the court’s finding of patent eligibility for this claim is the court’s identification of a “technical improvement.”  Here, the court discusses that prior art computer spreadsheets were not user-friendly and navigation through such spreadsheets was difficult.  The court recognized that the tab structure provided a more intuitive way to move through complex spreadsheets “by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment.”  Data Engine, slip op. at 13.  Because the specification described the technical advantage of the configuration, and the claims themselves provided recitations related to the elements that provided the improvement (e.g., displaying page identifiers and switching between spreadsheets based on input to the page identifiers), the claim was held to be patent-eligible.

In contrast, an example claim from a similar Data Engine patent (Claim 1 of U.S. Patent No. 6,282,551) found to be patent-ineligible recites:

  1. In an electronic spreadsheet for processing alphanumeric information, said said [sic] electronic spreadsheet comprising a three-dimensional spreadsheet operative in a digital computer and including a plurality of cells for entering data and formulas, a method for organizing the three-dimensional spreadsheet comprising:

partitioning said plurality of cells into a plurality of two-dimensional cell matrices so that each of the two-dimensional cell matrices can be presented to a user as a spreadsheet page;

associating each of the cell matrices with a user-settable page identifier which serves as a unique identifier for said each cell matrix;

creating in a first cell of a first page at least one formula referencing a second cell of a second page said formula including the user-settable page identifier for the second page; and

storing said first and second pages of the plurality of cell matrices such that they appear to the user as being stored within a single file.

Here, the claim recites the same “page identifier” recited in the previous claim discussed above, but was nonetheless found patent-ineligible.  The Federal Circuit takes issue with the fact that the claim “generically recites ‘associating each of the cell matrices with a user-settable page identifier’ and does not recite the specific implementation of a notebook tab interface.” Data Engine, slip op. at 21.  The Federal Circuit found that the claim “is therefore not limited to the specific technical solution and improvement in electronic spreadsheet functionality that rendered [the previously discussed claim] patent eligible.” Data Engine, slip op. at 22.  Stated another way, although this second claim describes an overall structure that might support a tabbed interface, the claim itself doesn’t actually recite the ability to switch between spreadsheets using the tabs, which was the technical improvement in user navigation.  Thus, though both claims discuss the same “general” subject matter, only the claims which include recitations targeted at the specific technical improvement (e.g., user navigation) are found to be patent eligible.

While this notion of a “technical improvement” providing a path to patent eligibility for software patents is a welcome positive result for applicants, it nonetheless places a complex challenge on the patent application.  The application should expressly identify the technical improvement achieved by the invention in a way that can be clearly differentiated over art that may be cited in prosecution.  In addition, care needs to be taken such that the claims of the application provide an appropriate nexus between the claims and the technical improvement of the specification.  A missing (or inadequate) description in the specification of the technical improvement may create difficulties for the applicant during prosecution.  Drafting the patent specification and claims requires a clear strategy that is reinforced by a solid technical understanding of both the invention itself, as well as the technical environment in which the invention operates.  The application should not only explain the “how” of the invention, but also the “why.” If you have any questions on how these challenges might affect your patenting strategy, please do not hesitate to contact us.

 

10 Million U.S. Patents!

July 15, 2018

Blog Post Submitted by Anthony P. DeRosa

On June 19, 2018 the United States Patent and Trademark Office (USPTO) issued U.S. Patent No. 10,000,000 symbolizing the breath and strength of American invention and showing that patents are still an important tool in protecting innovation.

Patent No. 10,000,000 for “Coherent Ladar Using Intra-Pixel Quadrature Detection” was invented by Joseph Marron and issued to Raytheon Co.  The invention has applications in fields such as autonomous vehicles, medical imaging devices, military defense systems, and space and undersea exploration.  In addition to becoming the first eight digit patent, it is also the first patent to receive the new patent cover design which was revealed by the USPTO back in March.

President Donald Trump signed the patent at a White House ceremony, making him the first president to sign a patent since Gerald Ford did it to mark the U.S. bicentennial in 1976. The first patent was signed by George Washington 228 years ago on July 31, 1790.  That patent was issued to Samuel Hopkins for a process of making pot ash (an ingredient used in fertilizer).  However, this was not Patent No. 1.  In fact, about 10,000 patents were issued before numbers were first assigned with the institution of the Patent Act of 1836 written by Sen. John Ruggles.  U.S. Patent No. 1 was issued on July 11, 1836 to the same John Ruggles.  After that it took 155 years (1836 to 1991) for the United States to issue its first 5 million patents, but it took only 27 years to issue the next 5 million!

For more information, the USPTO has an interactive timeline highlighting important moments and facts, which can be found here: https://10millionpatents.uspto.gov.