01/10/2015
Category: 101   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleContext Extraction and Transmission LLC v. Wells Fargo Bank, 2013-1588, -1589, 2014-1112, -1687 (Fed. Cir. Dec. 23, 2014).
Issues
[1: Abstract Idea] Are claims directed to 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory, an abstract idea?
See, generally, Context Extraction and Transmission LLC at *6-7.
[2: Additional Limitations] Does the use of a scanner in a claim limitation - either individually or as an ordered combination— transform the claims into a patent-eligible application?
See, generally, id. at 9.
Holdings
[1: Abstract Idea] [T]he claims of the asserted patents are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.
Id. at *7.
[2: Additional Limitations] CET’s claims merely recite the use of this existing scanning and processing technology to recognize and store data from specific data fields such as amounts, addresses, and dates. See id. There is no “inventive concept” in CET’s use of a generic scanner and computer to perform well-understood, routine, and conventional activities commonly used in industry.
Id. at *9.
 
 
 
12/27/2014
Category: 101  
 
 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleIn re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Lit., No. 2014-1361, -1366 (Fed. Cir. Dec. 17, 2014).
Issues
[I: Composition of Matter Claims] The four composition of matter claims now on appeal are directed to primers, which are “short, synthetic, single-stranded DNA molecule[s] that bind[] specifically to . . . intended target nucleotide sequence[s].” J.A. 13. The court held these were likely patent ineligible because they claim so-called products of nature—that is, they claim the same nucleotide sequence as naturally occurring DNA.
In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Lit., at *5.
[II: Method Claims] Ambry argues that Mayo is directly on point because the method claims here, as there, simply identify a law of nature (the precise sequence of the BRCA genes, and comparisons of the wild-type BRCA sequences with certain mutations of those gene sequences found in the test subject) and apply conventional techniques.
Id. at *13.
Holdings
[I: Composition of Matter Claims] We do not read the Supreme Court’s opinion in Myriad as conferring patent eligibility on composition of matter claims directed to naturally occurring DNA strands under such circumstances. A DNA structure with a function similar to that found in nature can only be patent eligible as a composition of matter if it has a unique structure, different from anything found in nature. Myriad, 133 S. Ct. at 2116–17 (citing Chakrabarty, 447 U.S. at 309–10). Primers do not have such a different structure and are patent ineligible.
Id. at *9.
[II: Method Claims] We need not decide if Mayo is directly on point here because the method claims before us suffer from a separate infirmity: they recite abstract ideas. […] [Furthermore, under the Alice analysis,] [t]he non-patent-ineligible elements of claims 7 and 8 do not add “enough” to make the claims as a whole patent-eligible [because the language only identifies the technique used to compare two gene sequences].
Id. at *13 and *17 (text added).
 
 
 
 
12/14/2014
Category: 101 
 
 
 
 
By: Abby Lin, Contributor 
 
CasePlanet Bingo, LLC v. VKGS, No. 2013-1663 (Fed. Cir. Aug. 26, 2014) (non-precedential).
Issues
1. Planet Bingo argues that “in real world use, literally thousands, if not millions of preselected Bingo numbers are handled by the claimed computer program,” making it impossible for the invention to be carried out manually [and thus impossible to be done mentally, making it patent eligible].
Planet Bingo, at *4 (text added).
2. Planet Bingo argues that the patents recite “significantly more” than an abstract idea because the invention includes “complex computer code with three distinct subparts.”
Id. at *5.
Holdings
1. But the claimed inventions do not require [thousands of preselected Bingo numbers]… although the ’646 and ’045 patents are not drawn to the same subject matter at issue in Bilski and Alice, these claims are directed to the abstract idea of “solv[ing a] tampering problem and also minimiz[ing] other security risks” during bingo ticket purchases. This is similar to the abstract ideas of “risk hedging” during “consumer transactions,” Bilski, 130 S. Ct. at 3231, and “mitigating settlement risk” in “financial transactions,” Alice, 134 S. Ct. at 2356–57, that the Supreme Court found ineligible. Thus, we hold that the subject matter claimed in the ’646 and ’045 patents is directed to an abstract idea.
Id. at *4(text added, internal citations omitted).
2. [T]he claims recite a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers. And, as was the case in Alice, “the function performed by the computer at each step of the process is ‘[p]urely conventional.’” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1298). Accordingly, we hold that the claims at issue do not have an ‘inventive concept’ sufficient to ‘transform’ the claimed subject matter into a patent-eligible application.
Id. at *6.
 
 
 
12/08/2014
Category: 101 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleUltramercial, Inc. v. Hulu, LLC, No. 2010-1544 (Fed. Cir. Nov. 14, 2014).
IssueUltramercial argues that the ’545 claims are not directed to the type of abstract idea at issue in Alice—one that was “routine,” “long prevalent,” or “conventional”— and are, instead, directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before.
Ultramercial, Inc., at *8.
HoldingThe process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application.
Id., at *9.
 
09/04/2014
Category: 101    
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitlebuySAFE, Inc. v. Google, Inc., No. 13-1575 (Fed. Cir. Sept. 3, 2014).
IssueThe district court granted Google’s motion for judgment on the pleadings, holding that the asserted claims fall outside section 101. The court concluded that the patent “describes a well-known, and widely-understood concept—a third party guarantee of a sales transaction— and then applied that concept using conventional computer technology and the Internet.”
buySAFE, Inc. at *4.
HoldingUnder the approach to section 101 affirmed by the Supreme Court in the recent decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the district court’s holding is correct [because: (1) the claims encompass only a contractual relationship, an abstract idea; and (2) the claimed computer functionality of receiving and transmitting ‘an offer of guarantee’ is a generic implementation that does not add an inventive concept.].
Id. at *2 (text added).
 
 
07/16/2014
Category: 101   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleDigitech Image Tech., LLC v. Electronics for Imaging, Inc., No. 2013-1600, -1601, -1602, -1603, -1604, -1605, -1606, -1607, -1608, -1609, -1610, -1611, -1612, -1613, -1614, -1615, -1616, -1617, -1618 (Fed. Cir. July 11, 2014).
Issues[1] First, Digitech asserts that the district court erred in finding that the device profile claims are directed to a collection of data that lacks tangible or physical properties. [2] Second, Digitech argues that the district court erred in finding that the asserted method claims encompass an abstract idea and are not tied to a specific machine or apparatus.
Digitech Image Tech., LLC at *6 (text added).
Holdings
[1] We […] hold that the device profile claims of the ’415 patent do not encompass eligible subject matter as required by section 101 and are therefore not patent eligible [because the claimed “device profile” is a collection of intangible color and spatial information, and there is nothing in the claims that require said information to be in a tangible medium].
Id. at *10.
[2] [W]e hold that the process described in the asserted claims is directed to an abstract idea and is not patent eligible under section 101 [because the claims recite an abstract process of gathering and combining data that does not require input from a physical device].
Id. at *13.
 
 
06/19/2014
Category: 101  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleAlice Corp. v. CLS Bank Int., No. 13-298 (June 19, 2014).
IssueThe patents at issue in this case disclose a computer- implemented scheme for mitigating “settlement risk” (i.e., the risk that only one party to a financial transaction will pay what it owes) by using a third-party intermediary. The question presented is whether these claims are patent eligible under 35 U. S. C. §101, or are instead drawn to a patent-ineligible abstract idea.
Alice Corp. at *1.
HoldingWe hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention. We therefore affirm the judgment of the United States Court of Appeals for the Federal Circuit.
Id. at *1.
 
 
 
 
Editor Comment
For further insight, check out the Audio Brief of oral arguments in Alice Corp. v. CLS Bank Int. by clicking here.
 
05/08/2014
Category: 101 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
 
TitleIn re Roslin Inst. (Edinburgh), No. 13-1407 (Fed. Cir. May 8, 2014).
IssueWhile Roslin does not dispute that the donor sheep whose genetic material was used to create Dolly could not be patented, Roslin contends that copies (clones) are eligible for protection because they are “the product of human ingenuity” and “not nature’s handiwork, but [their] own.” [...]. Roslin argues that such copies are either compositions of matter or manufactures within the scope of § 101 [because of phenotypic and mitochondrial differences between the original and the clone].
In re Roslin Inst. at *7 (internal citations omitted, text added).
HoldingDolly herself is an exact genetic replica of another sheep and does not possess “markedly different characteristics from any [farm animals] found in nature.” Chakrabarty, 447 U.S. at 310 [...] (stating that “the clones are genetic copies”). Dolly’s genetic identity to her donor parent renders her unpatentable [because of it is indistinguishable from a natural occuring sheep, and because the asserted phenotypic and mitochondrial differences between the clone and the original are not claimed].
Id. (some citations omited; text added).
 
 
 
 
04/07/2014

Category: 101 

 

By: Jesus Hernandez, Blog Editor/Contributor  

 

03/11/2014
Category: 101 
 
 
 
By: Eric Paul Smith, Contributor   
 
 
TitleCyberfone Systems, LLC v. CNN Interactive Group, Inc., Nos. 2012-1673, -1674 (Fed. Cir. Feb. 26, 2014) (non-precedential).
IssueWhether the United States District Court for the District of Delaware properly "found that the subject matter of [U.S. Patent No. 8,019,060] was nothing more than a disembodied concept of data sorting and storage and granted summary judgment of invalidity under [35 U.S.C. ]§ 101[ (2012)]." Cyberfone at *5 (citations and internal quotation marks omitted).
Holding"We agree with the district court that the '060 patent claims ineligible subject matter--an abstract idea--and that the patent is invalid under § 101." Id. at *10.
 
 
01/27/2014
Category: 101
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleSmartgene, Inc. v. Advanced Biological Lab., No. 2013-1186 (Fed. Cir. Jan. 24, 2014) (non-precedential).
Issues
[1] Based on the failure of ABL’s briefing to contest SmartGene’s characterization of claim 1 of the ’786 patent as representative of all claims, the district court found “that the differences between the various method and system claims within the patents-in-dispute are immaterial with respect to whether the patents constitute eligible subject matter under 35 U.S.C. § 101” and, therefore, analyzed only [method] claim 1 of the ’786 patent. [ABL contends that the district court erred in invalidating simlarly worded system and Beauregard claims based solely on the analysis of the method claim.]
Smartgene, Inc. at *5 (text added).
[2] The [district] court held claim 1 of the ’786 patent [directed to a method for guiding the selection of therapeutic regimens], and hence all asserted claims, “invalid” under section 101 [as being directed to no more than an abstract mental process since the claim is drafted in steps that can be performed by a person]. […]
Id. at *5 (text added, citations omitted).
Holdings
[1] It is well established that arguments that are not appropriately developed in a party’s briefing may be deemed waived.[…] We view the court’s ruling as essentially one that ABL forfeited any argument that any patent claims here are to be treated differently from claim 1 of the ’786 patent.
Id. at *7.
[2] [T]his court [has] held that section 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. […] Claim 1 does no more than call on a “computing device,” with basic functionality for comparing stored and input data and rules, to do what doctors do routinely.
Id. at *7-8 (internal citations omitted, text added).
 
10/24/2013
Category: 101
 
 
 
By: Eric Paul Smith, Contributor   
 
TitleUltramercial, Inc. v. Hulu, LLC, No. 2010-1544 (Fed. Cir. Jun. 21, 2013).
Issues[In response to a motion to dismiss, the] district court dismissed Ultramercial’s claims [1] for failure to claim statutory subject matter [and 2] without formally construing the claims and, further, without requiring defendants to file answers.
Ultramercial at *5 (text added).
Holdings
[1] [A]s a practical application of the general concept of advertising as currency and an improvement to prior art technology, the claimed invention is not “so manifestly abstract as to override the statutory language of section 101[,]” [because the disclosure need not detail the particular instrumentalities for each step in the claims and the steps likely require complex computer programming.]
Ultramercial at *33 (text added).
[2] In this procedural posture, the district court should either have construed the claims in accordance with Markman, required the defendant to establish that the only plausible construction was one that, by clear and convincing evidence rendered the subject matter ineligible (with no factual inquiries), or adopted a construction most favorable to the patentee.
Id. at *25.
 
09/05/2013
Category: 101
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleAccenture Global Serv., GMBH v. Guidewire Soft., Inc., No. 2011-1486 (Sept. 5, 2013).
Issue(s)[1] "[Whether] system claim 1’s inclusion of an insurance claim folder, a task library database, a server component, and a task engine in attempting to show that the system claim is meaningfully different from the ’284 patent’s method claims [is enough to avoid having the claims ‘rise and fall together’ ?]" Accenture Global Serv. at *11 (text added).
[2] "[W]hether system claim 1 remains patent-eligible even after our decision in CLS Bank [by implementing] the general idea of generating tasks for insurance claim processing, but narrow[ing] it through […] recitation of a combination of computer components [?]" Accenture Global Serv. at *14 (emphasis added).
Holding(s)“In sum, the system claims of the ’284 patent are patent-ineligible both because [1] Accenture was unable to point to any substantial limitations that separate them from the similar, patent-ineligible method claim [which was found invalid by the district court and NOT appealed] and [2] because, under the two-part test of CLS Bank, the system claim does not, on its own, provide substantial limitations to the claim’s patent-ineligible abstract idea.“ Accenture Global Serv. at *18.
 
Editor's Note
A concurring-in-part/dissenting-in-part opinion in the en banc CLS Bank decision stated that "[n]o portion of any opinion issued today other than our Per Curiam Judgment garners a majority. […] nothing said today beyond our judgment has the weight of precedent." CLS Bank Int’l, Rader/Moore Op. at n1. However, the majority opinion here in Accenture Global Serv. bases its holding on CLS Bank.
 

08/12/2013
Category: 101 
  
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleAsso. for Molecular Pathology v. Myriad Genetics, Inc., No. 12–398 (June 13, 2013).
Issue“This case […] requires us to resolve whether a naturally occurring segment of deoxyribonucleic acid (DNA) is patent eligible under 35 U. S. C. §101 by virtue of its isolation from the rest of the human genome. We also address the patent eligibility of synthetically created DNA known as complementary DNA (cDNA), which contains the same protein-coding information found in a segment of natural DNA but omits portions within the DNA segment that do not code for proteins.” Myriad, at *1.
Holding“[W]e hold that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring.” Myriad, at *1.
 

08/08/2013

Category: 101 

 

101

 

* This is a brief of the plurality opinion, and various dissents and concurrences. The majority opinion was a two sentence per curiam decision of the district court's findings.

** The SCOTUS granted cert. and affirmed the per curiam decision. Its analysis modified the plurality opinion below.  

By: Jesus Hernandez, Blog Editor/Contributor

TitleCLS Bank Int'l v. Alice Corp., No. 2011-1301 (Fed. Cir. May 10, 2013) (en banc, split).
Issue"a. 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?" CLS Bank Int'l, Rader/Moore Op. at *4.
"b. 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?" Id.
Holdinga. “[T]he following analysis should apply in determining whether a computer-implemented claim recites patent-eligible subject matter under § 101 or falls into the common law exception for abstract ideas. [Inquiry 1] The first question is whether the claimed invention fits within one of the four statutory classes set out in § 101. […] [Inquiry 2] [T]he analysis turns to the judicial exceptions to subject-matter eligibility. A preliminary question in applying the exceptions to such claims is whether the claim raises § 101 abstractness concerns at all. […] [Inquiry 3] Where bona fide § 101 concerns arise […] it is important at the outset to identify and define whatever fundamental concept appears wrapped up in the claim so that the subsequent analytical steps can proceed on a consistent footing. […] [Inquiry 4] The §101 inquiry next proceeds to the requisite preemption analysis.“ CLS Bank Int’l, at * 17-19 (emphasis/numbering added).
b. "[A]pplying a presumptively different approach to system claims generally would reward precisely the type of clever claim drafting that the Supreme Court has repeatedly instructed us to ignore. As illustrated by the obvious parallels between the method and system claims now before us, it is often a straightforward exercise to translate a method claim into system form, and vice versa." CLS Bank Int’l, at *33.


© 2000-2014, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy