A blog relating to Internet legal issues by Professor John Swinson, University of Queensland
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U.S. Patent Decision - The Alice Case
"Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101."
There were a number of judgments. The footnote to one judgment states:
"No portion of any opinion issued today other than our Per Curiam Judgment garners a majority. The court is evenly split on the patent eligibility of the system claims. Although a majority of the judges on the court agree that the method claims do not recite patent eligible subject matter, no majority of those judges agrees as to the legal rationale for that conclusion. Accordingly, though much is published today discussing the proper approach to the patent eligibility inquiry, nothing said today beyond our judgment has the weight of precedent."
Australian Federal Court Limits Patentability
The court denied patentability, stating:
"The implementation of the method of the claimed invention by means of a computer, at the level articulated in claim 1, is no more than the modern equivalent of writing down the index on pieces of paper. On the face of the Specification, there is no patentable invention in the fact that the claimed method is implemented by means of a computer. The Specification asserts a patentable invention, not in the use of the computer, but in the particular series of steps that give rise to the generation of the index. Those steps could readily have been carried out manually. The aspect of computer implementation is nothing more than the use of a computer for a purpose for which it is suitable. That does not confer patentability.
The enquiry into what constitutes a patentable invention is still evolving. It is not to be tied to particular notions of what was understood to be a manufacture at any particular point in time. However, while new developments in technology might be seen to widen the notion of what is patentable, the modern availability of computers as a standard means of implementing arithmetic or computational processes, which could have been implemented manually in the past, does not carry with it any broadening of the concept of a patentable invention."
See Research Affiliates LLC v Commissioner of Patents [2013] FCA 71
CLS Bank v Alice case to be heard en banc
The district court had held that the invention, which related to methods and systems for exchanging financial obligations between parties, was an abstract idea—ineligible for patent protection under 35 U.S.C. § 101. A Federal Circuit panel disagreed, holding that the claimed invention complies with § 101 of the patent code. En banc, the Federal Circuit will address two issues:
Software and Internet Patents
The U.S. Federal Circuit on October 9, 2012 granted en banc review of a case in which a Federal Circuit panel held that a claim must not be deemed inadequate under 35 U.S.C. §101 if, after taking all of the claim recitations into consideration, it is not “manifestly evident” that a claim is directed to a patent ineligible abstract idea. CLS Bank International v. Alice Corp., Fed. Cir., No. 11-1301, 10/9/2012. Alice Corp is an Australian company, suing for patent infringement in the United States.
The en banc court vacated the panel decision and requested briefing on the following questions:
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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?
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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?
To read the Court’s order for en banc review, click here; to read a summary of the panel decision and obtain a copy of Judge Linn’s opinion, click here.
Apple beats Samsung in Court - First Reactions
Computer Patent - Patentable Subject Matter
The asserted patents are directed to systems and methods for administering and tracking the value of life insurance policies in separate accounts. The Federal Circuit affirmed a district court summary judgment that the patents are ineligible for patent protection because the claimed computer components are no more than objects that facilitate the operation of claimed methods directed to an abstract idea. It held that a machine, system, medium, or the like may in some cases be equivalent to an abstract mental process for purposes of patent ineligibility.
To read the Court's opinion in this case, click here.
Google's Top Lawyer: Some Apple Inventions are Commercially Essential, Should Be Made Into Standards
Google General Counsel Kent Walker disagrees, and this month wrote a letter to the US Senate Judiciary Committee arguing that commercial inventions that impact "consumer welfare" should be just as important as technical patents.
See Here
Apple v. Samsung
U.S. Federal Circuit Responds to Supreme Court on Patent Eligibility
According to the Court, if, after taking all of the claim recitations into consideration, it is not “manifestly evident” that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under Section 101.
Judge Prost dissented, writing that the majority failed to follow the Supreme Court’s Prometheus ruling by not inquiring whether the claims include an “inventive concept” and by devising its own patentable subject matter test.
The “abstract ideas” test for patent eligibility has become a serious problem because of its “abstractness,” Judge Linn observed. He noted that several Supreme Court decisions have discussed the concept of “preemption” to elucidate the “abstract idea” exception to patent eligibility.
However, he added that Diamond v. Diehr, 450 U.S. 188 (1981), addressed claims containing a mathematical equation, and held that they only foreclosed the general use of the equation in conjunction with all of the other steps in the claimed process. Thus, the essential concern, according to the Court, is not preemption per se, but the extent to which preemption results in the foreclosure of innovation.
However, Judge Linn wrote that a machine limitation can render a method patent eligible where the machine imposes a meaningful limit on the scope of the claim and where it plays a significant part in permitting the claimed method to be performed, citing SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010). A machine is insufficient, he added, if it functions solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. A claim that is drawn to a specific way of doing something with a computer is likely to be patent eligible, Judge Linn explained, whereas a claim to nothing more than the idea of doing that thing on a computer may not. He added the following:
Business Method Patents
- Celgene Corporation [2012] APO 12
- Discovery Holdings Limited [2011] APO 56 (9th August 2011)
Class 8: Internet and eCommerce Patents
- Patent Wars
- What should be patented?
- Do Internet patents threaten ecommerce?
- History of software and Internet patents
- Mayo Medical Laboratories v. Prometheus Laboratories, Inc. (U.S. Supreme Court decision 20 March 2012)
- State Street Bank
- Welcome Real-Time
- Bilski
- CLS Bank v Alice
YAHOO Sues Facebook For Infringing 10 patents
Article at: http://www.reuters.com/article/2012/03/12/us-yahoo-facebook-lawsuit-idUSBRE82B18M20120312 A copy of the lawsuit, with a list of the ten patents, is available at: http://www.scribd.com/doc/85094882/Yahoo-s-Patent-Lawsuit-Against-Facebook
Yahoo Facebook Patent War
Samsung Overturns Apple Injunction in Australia
The case concerned two Australian patents owned by Apple. Apple asserted that the Samsung Galaxy 10.1 Tablet infringed claims of those two patents. An injunction was granted by the trial judge to prevent Samsung launching the Galaxy 10.1 in Australia until trial. Today, Samsung was successful in having that injunction removed.
As soon as the appeal court decision was announced today, Apple asked for the decision to be suspended so that it could appeal to the High Court of Australia. Apple asked this without even reading the Court's decision. The judge today suspended the decision until 4pm Friday, in effect keeping the injunction in place until Friday. Apple now has until 4pm Friday to convince the High Court of Australia to keep the injunction in place -- a hard task.
Last Class!
Google Buys Nortel's patent portfolio
Bankrupt Nortel Networks Corp. has accepted Google Inc.'s $900 million stalking horse bid to buy an intellectual property lode of some 6,000 patents and patent applications that include wireless, data networking and semiconductor technology, the Internet giant said Monday.
See BBC and Google Blog
U.S. Patent Case
The recent U.S. case of CLS Bank v. Alice addresses patent eligibility requirements for computer-implemented business and financial methods.
Alice is an Australian company that owns four United States patents; it asserts that CLS infringes these four patents. CLS is an “Edge Act Corporation,” organized under Section 25A of the Federal Reserve Act, as amended, 12 U.S.C. § 611, and authorized by statute to engage in international banking activities.
Summary provided by the U.S. law firm that represented the successful party: On March 9, 2011, the U.S. District Court for the District of Columbia dismissed all claims of patent infringement brought under four patents directed to computer-implemented methods, systems, and products for exchanging a financial obligation, because each of the patent claims was directed to an “abstract idea” and was invalid because it was directed to non-patentable subject matter. The decision is significant because, among other things, it addressed numerous questions left unanswered by the U.S. Supreme Court’s decision last year in Bilski v. Kappos, 130 S. Ct. 3218 (2010). This Client Alert reviews the decision and the significance the decision may have on the scope of the abstract idea exception that had not been addressed either by the Federal Circuit or by the Supreme Court in their respective Bilski decisions.
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