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The Software Squeeze: The Treacherous Path for Software Patent Eligibility

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The Alice decision has led to a heap of opinions invalidating patents for computer-related inventions – each holding that the reviewed claims provide (a) an idea that does not involve technology, and (b) an instruction to “apply it” using a generic computer. These decisions rebuke patentees’ failure to limit their claims with the details of a particular technique, and for overbroadly claiming any solution involving a simple concept.

However, a second line of cases, also citing Alice, have invalidated patents for the opposite reason: the claims recite an abundance of technical detail about a specific technique, yet the courts dismiss these details as either “purely conventional,” and/or “mathematical concepts” that are not eligible for patent protection.

These opposing lines of cases, driving against the body of software patents from opposite directions, require the inventors of computer-related inventions to walk a narrow path between qualitative description (claims rejected for overbreadth) and algorithmic description (claims rejected as mathematical or conventional). This path is being steadily narrowed, as the piles of invalid patents on each side continue to mount – threatening a categorical exclusion of computer-related techniques as patent-eligible inventions. This result is astonishing not only in its own right, but in contrast with the Supreme Court’s explicit and consistent rejection of such an exclusion over the 35 years since Diamond v. Diehr.
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Lighting Ballast and Williamson: Functional Claim Language In Focus

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In the past week, two Federal Circuit decisions – Lighting Ballast v. Philips Electronics, and Williamson v. Citrix – have taken up the issue of the sufficiency of functional claim language, and the scope of claims interpreted according to the “means-plus-function” claim form under 35 USC 112(f).

This topic has been simmering for some time, and academics and reform advocates have been clamoring for the courts to pick up this issue. The Federal Circuit now appears ready to entertain these arguments, and a new front has opened in the “patent reform” wars. This topic bears much discussion, as it is likely to be at least as contentious and important as Alice.
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USPTO Public Forum on Interim Guidance for Subject-Matter Eligibility

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On Wednesday afternoon, I attended the USPTO’s public forum about the latest Interim Guidance on 101 Subject-Matter Eligibility. This session had the distinction of providing a genuine, open dialogue between the patent bar and the USPTO. Practitioners expressed their praise, criticism, and concerns for the guidance without much padding. USPTO representatives spoke with exceptional candor about the background of the latest draft of the guidance, and their constraints and hopes for future drafts.

On the whole, the session was richly informative about the background of the Interim Guidance; the different perspectives of the USPTO and the patent bar; and the issues that future versions of the guidance may address.
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DDR Holdings, Inc. v. Hotels.com: Scoring the CAFC Split

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DDR Holdings, Inc. v. Hotels.com is the first post-Alice Federal Circuit decision that finds particular claims to be non-abstract and patent-eligible. While it was inevitable that such a case would arise eventually, the type of invention that prompted this opinion is surprising: the subject matter is much more business-method-focused than the claims invalidated under 101 in other recent Federal Circuit opinions, such as Digitech Image and I/P Engine.

This opinion demonstrates the persistence of the deep and bitter split among Federal Circuit judges on this fundamental issue of patent law. And while the patent landscape has certainly shifted due to Mayo and Alice, DDR Holdings demonstrates that Alice has only exacerbated, rather than ameliorate, a court split that dates back at least to the 2008 Bilski decision.
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The Power of the Pen: The Role of Examiners’ Discretion in Patent Examination

The Power of the Pen: The Role of Examiners’ Discretion in Patent Examination published on 7 Comments on The Power of the Pen: The Role of Examiners’ Discretion in Patent Examination

Imagine a federal taxation scheme where your taxes are determined by an IRS agent, who is empowered to use “common sense” in setting your taxes at a “fair” rate. Or a Transportation Security Authority where security guards are allowed to admit or exclude passengers from flights based on whether or not they look “suspicious.” Or a Bureau of Motor Vehicles where your driving rights are issued or withheld based on whether or not the officer thinks you’re a “safe” driver.

Government agencies that allocate legal rights are never based on such discretionary mandates, for a large number of plain and obvious reasons. Yet, recent trends in patent law have elevated examiners’ discretion to dominate the formerly rule-based, evidentiary process – such that the outcome is primarily driven by the personal philosophy and temperament of the patent examiner.

Many practitioners have noted the existence of this trend, and some of its effects. The purpose of this article is to explore the sources of such discretion – the particular opportunities in the examination process that are amenable to arbitrary decisions – and that are routinely exploited to compel the outcome toward the examiner’s desired result.
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The Main Event: Alice v. Diehr

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For over 30 years, every major CAFC or SCOTUS decision about 101 patent eligibility – every single one, including Bilski, Mayo, and Alice – has compared the invention under consideration with the classic example of patent-eligible subject matter at the heart of Diamond v. Diehr. Indeed, such frequent citation and approval of Diehr’s rubber-curing invention by these later cases suggest that it is a quintessential example of patent-eligible subject matter.

However, these citations are deeply puzzling, because Diehr’s claimed invention appears to violate all of the Alice Court’s patent-eligibility rationale.
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The Alice Trajectory

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The Alice decision has been heralded as the “end of software patents,” the “end of business method patents,” the “end of patent trolls,” etc.

However, it is difficult to square such characterizations with the actual Alice opinion, which (1) centrally focuses on the absence of specific software in the patent claims; (2) refuses to state that business methods are categorically unpatentable; and (3) makes no reference to the business models of the litigants or the intended uses of the patents.

Rather, the Alice decision has forged a tool that enables the invalidation of patent claims, via dissection into a concept that can be dismissed as “abstract,” and a non-inventive remainder (i.e., implementation) that can be dismissed as “conventional” engineering.

Notably, this dissection technique can be applied irrespective of the field of technology; irrespective of novelty; irrespective of the scope and form of the claim. It can be applied irrespective of whether the patent is “good” or “bad,” and irrespective of how the patentee intends to use the patent. And the expansive manner in which the PTAB and various courts are applying the Alice decision is steadily moving patent law in this direction.
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Sharpening the Patent Process

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Here’s a basic principle of legal systems: Before writing more laws, enforce the laws you’ve got. When a city discovers that its residents are driving recklessly and not following speed limits, the solution is more cops, better radar detectors, and more tickets – not overhauling the local driving laws to be even more strict.

The same principle applies to the patent system. Many of the current problems with the patent system don’t require the haphazard legislative changes sought by “patent reform” advocates – they can be addressed by sharpening the patent process to utilize the laws that we already have more effectively. Like a dull blade, our patent system does not need to be melted down and recast: it just needs to be sharpened.
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Alice Corp. v. CLS Bank: “Basically” vs. “Something More”

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Today’s Supreme Court decision in Alice Corp. v. CLS Bank shows that we’ve basically gone nowhere since the 2010 Bilski decision.
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Disrespecting Software

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This week’s intellectual property news is dominated by the Supreme Court oral argument in Alice Corp. v. CLS Bank, over the patent eligibility under 35 U.S.C. 101 of an invention in the field of financial transactions. The Supreme Court’s decision in this case will (or, at least, might) address several key questions of wide-ranging importance, including the definition of the term “abstract,” in the context of the utility requirement of patent eligibility.

The topic of this post is about the attitudes about software, as a technology, that appeared during the Alice Corp. v. CLS Bank oral argument, and that pervade the field of patent law.
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