Deciphering TLI Communications and FairWarning IP

Beginning in May 2016 with the Federal Court’s decision in Enfish, carrying over into the July decision in BASCOM, and then into the Court’s Fall decision in McRO (sometimes referred to as “the Blue Planet case”), the patent stakeholder community finally started receiving some much-needed guidance with respect to patent eligibility of computer-implemented inventions.

While decisions where claims have been ruled patent eligible have been helpful, decisions finding claims patent ineligible have been at least as informative, at least from a patent drafting standpoint. Indeed, as important as the aforementioned pro-patent-eligible decisions are two decisions where the Federal Circuit found the claims to be patent ineligible. In TLI Communications and then more recently in FairWarning IP, LLC v. Iatric Systems, Inc., the Federal Circuit distinguished the claims at hand from those that have been held patent eligible, which help identifies brighter lines and nuances of software practice.

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Deciphering BASCOM and McRo on Patent Eligibility

The United States Patent and Trademark Office issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to the patent examining corps from Robert Bahr, Deputy Commissioner for Patent Examination Policy, provides examiners with a discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility. What follows is my summary of these two important cases.

BASCOM v. AT&T (Decided June 27, 2016)

The claims generally recited a system for filtering Internet content. The claimed filtering system is located on a remote ISP server that associates each network account with (1) one or more filtering schemes and (2) at least one set of filtering elements from a plurality of sets of filtering elements, thereby allowing individual network accounts to customize the filtering of Internet traffic associated with the account. The patent explains that the advantages of the invention are found in the combination of the then-known filtering tools in a manner that avoids their known drawbacks. The claimed filtering system avoids being “modified or thwarted by a computer literate end-user,” and avoids being installed on and dependent on “individual end-user hardware and operating systems” or “tied to a single local area network or a local server platform” by installing the filter at the ISP server. Thus, the claimed invention is able to provide individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks.

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Not a lot closer to understanding when software is patent eligible

“There should be no serious question that computer-implemented inventions such as software constitute patent-eligible subject matter under § 101,” Paul Clement wrote in a brief filed on behalf of IBM to the Supreme Court in 2014. Ultimately, the IBM brief would argue that the abstract idea doctrine is unworkable, which it is. Sadly, nearly 30 months after the Supreme Court’s landmark decision in Alice v. CLS Bank we are not a lot closer to having a working understanding about when and under what circumstances software is patent eligible.

Yes, the Federal Circuit has started to issue rulings that give hope, but they also then issue non-precedential rulings that seem to just string together buzzwords too. They also continue to allow the invalidation of patent claims without a claim construction, which is antithetical to pretty much the whole of patent law. See No claim construction, CAFC rules claims ineligible.

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USPTO instructs examiners on patent eligibility cases

The United States Patent and Trademark Office recently issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to patent examiners provides discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility.

The PTO acknowledges in the memo that the Federal Circuit even more recently issued another precedential decision in Amdocs (Israel) Ltd. v. Openet Telecom, which will be discussed in forthcoming subject matter eligibility guidance. For more on that case, please see Software eligible because it recites technical solution to technical problem.

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Alice Experts and the Return of Second Pair of Eyes to the PTO

“I have not yet run into an Art Unit that does not have someone designated as an Alice expert,” explained JiNan Glasgow of Neopatents. “They won’t always tell you who it is, but they all say they have an Alice expert.”

While discussing the importance of doing interviews in every single case, Glasgow explained that although it is not something that has been generally publicly disclosed by the Patent Office, “in every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even if they are ready to allow a case, nothing can be allowed without the approval of that Alice expert.” This applies to TC 3600 and beyond, according to Glasgow.

If what examiner after examiner has told Glasgow is correct, this means there is essentially a return to the so-called “second pair of eyes” review at the Patent Office.

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