CLS Services v. Alice Corporation was decided yesterday by the Court of Appeals for the Federal Circuit, en banc. See Judgment. Alice Corporation is an Australian company. Its U.S. patent was held to be invalid as it did not claim patentable subject matter.
"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."
Showing posts with label patent. Show all posts
Showing posts with label patent. Show all posts
Australian Federal Court Limits Patentability
A recent Australian Federal Court decision limits the scope of patent protection for business methods implemented by computer. The invention in question related to securities investing and, more specifically, to construction and use of passive portfolios and indexes.
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
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
From a Kenyon & Kenyon newsletter:
Patent-eligibility of inventions implemented by computers: CLS Bank v. Alice Corp
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:
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:
I. 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?
II. 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?
Given the large number of software patents that issue each year, this decision could significantly impact numerous litigations, licensing negotiations, and prosecution practices.
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:
-
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?
-
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?
[N]othing in the Supreme Court’s
precedent, nor in ours, allows a court to go hunting for abstractions by
ignoring the concrete, palpable, tangible, and otherwise not abstract
invention the patentee actually claims. It is fundamentally
improper to paraphrase a claim in overly simplistic generalities in
assessing whether the claim falls under the limited “abstract ideas”
exception to patent eligibility under 35 USC §101. Patent eligibility
must be evaluated based on what the claims recite,
not merely on the ideas upon which they are premised.
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
Apple won one of the largest patent damages awards against Samsung. First reactions. News Report. Will this impact the Australian court cases?
Computer Patent - Patentable Subject Matter
A system claim which includes as a limitation a computer to perform
steps in a method is ineligible for patent protection under 35 U.S.C.
§101
as a claim to an abstract idea because the computer functions solely as
an obvious mechanism to solve a problem quickly, the Federal Circuit
held July 26, 2012.
Bancorp Services, L.L.C. v. Sun Life Assurance Company of Canada (U.S.), Fed. Cir., No. 2011-1467, 7/26/12.
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.
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
Apple CEO Tim Cook has said that he wants other companies to "invent their own stuff", and that Apple shouldn't be "inventor for the world".
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
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
The Apple v. Samsung patent case restarted in Federal Court of Australia today. See Sydney Morning Herald
U.S. Federal Circuit Responds to Supreme Court on Patent Eligibility
Reversing a summary judgment of patent
ineligibility under 35 U.S.C.§101, the Federal Circuit in a 2-1 decision
responded to the Supreme Court’s recent decision in
Prometheus v. Mayo with the caution that patent eligibility
must be decided by examining claims for specific, concrete applications
of the ideas behind an invention.
CLS Bank v. Alice Corp., Fed. Cir., No. 11-1301, 9 July 2012. Alice Corporation Pty Ltd is an Australian corporation.
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 challenged patents in this case are
directed to 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 a summary judgment motion that the claims
were not patent eligible because they are directed to an abstract idea.
On appeal the Federal Circuit reversed, concluding that the system,
method, and media claims are directed to practical
applications of an invention falling within the categories of patent
eligible subject matter defined by Section 101.
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.
With respect to implementing inventions in
computer hardware or software, the court stated that the “mere
implementation” on a computer of an otherwise ineligible abstract idea
will not render the invention patent eligible, citing
Fort Props. Inc. v. Am. Master Lease LLC, 671 F.3d 1317 (Fed. Cir. 2011).
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:
To read the Court’s opinion and the dissenting opinion, click here.
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:
While the use of a machine in these limitations is less substantial or limiting than the industrial uses examined in
Diehr (curing rubber) or Alappat (a rasterizer), the
presence of these limitations prevents us from finding it manifestly
evident that the claims are patent ineligible under § 101. … In such
circumstances, we must leave the question of validity
to the other provisions of Title 35.
Business Method Patents
For tonights class, in addition to the reading listed below, the following recent Australian Patent Office decisions are relevant:
- Celgene Corporation [2012] APO 12
- Discovery Holdings Limited [2011] APO 56 (9th August 2011)
Class 8: Internet and eCommerce Patents
Reading for the Internet patent class:
- 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
Also, please read the prior posts located here on patents.
YAHOO Sues Facebook For Infringing 10 patents
Reuters reports Yahoo has sued 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
Yahoo has demanded licensing fees from Facebook for use of its technology, the companies said on Monday, potentially engulfing social media in the patent battles and lawsuits raging across much of the tech sector.
Yahoo has asserted claims on patents that include the technical mechanisms in the Facebook's ads, privacy controls, news feed and messaging service, according to a source briefed on the matter.
Representatives from the two companies met on Monday and the talks involved 10 to 20 of Yahoo's patents, said the source, who was not aware of what specific dollar demands Yahoo may have made for licenses.
See Yahoo and Managing IP
Samsung Overturns Apple Injunction in Australia
Samsung was successfully in having an interlocutory injunction overturned today in the Full Court of the Federal Court of Australia. See decision: Samsung Electronics v. Apple Inc. [2011] FCAFC 156 (30 November 2011).
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.
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!
Next Monday is the last class for this semester.
The reading for this class is the following:
Google - Oracle patent lawsuit and here
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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