Author: Michael Blake

My client Kenny Briel of Savage Surfing Products recently received a patent for his adjustable fin system for surfboards. The Patent can be found here. Savage Surfing Products is located in Wilmington, NC, and their website is here.

Congratulations to my client Kevyn Kilgore of Milford, CT for obtaining a patent on his Staple Holder invention. The patent can be found here. I prepared and prosecuted the patent application.

I attended the intellectual property section of the ABA Annual meeting in Boston earlier this month. You can find details of the presentations given here. I enjoyed meeting other patent attorneys, and discussing how to better protect my client’s inventions and trademarks.

I am happy to announce that I have accepted a part-time position at the University of Connecticut School of Law as an Assistant Clinical Professor of Law in Hartford. In that position I will teach law students the nuts and bolts of preparing patent applications, purchase filing patent applications, and responding to office actions. In addition, I will show law students how to interact with clients. I will of course continue with my private patent, trademark, and copyright law practice.

My mother was from Mexico and the first language I spoke was Spanish. I still remember a lot of it, so I am happy to help Spanish speakers with their patents, trademarks, and copyrights!

On July 11, 2014 the Federal Circuit came down with a decision in Digitech Image v. Electronics for Imaging (Fed Cir 2014) . The court held the following:

“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.”

An example of the issued claims that were invalidated is below:

• A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:
  first data for describing a device de-pendent transformation of color information content of the image to a device independent color space; and
  second data for describing a device de-pendent transformation of spatial in-formation content of the image in said device independent color space.

A decision in Arlington Industries, Inc. v. Bridgeport Fittings, Inc has just been published here. It is interesting to me because Bridgeport Fittings, Inc. is a local company, located in Stratford, CT despite its name. The Federal Circuit is the federal appeals court that hears generally patent cases, and is only one court below the Supreme Court of the United States. Bridgeport Fittings, Inc.lost the appeal only because the Federal Circuit found it did not have jurisdiction over a contempt order arising out of a patent infringement matter that was not final. It appears that the contempt order has been recently made final, and I presume that Bridgeport Fittings, Inc. will make another appeal, and hopefully the Federal Circuit will decide the contempt order on the merits.

Yesterday I posted a link to guidelines promulgated by the USPTO in light of the Alice Corporation Ply. Ltd. v. CLS Bank supreme court case. After further review, I noticed this important statement by the USPTO in those guidelines:

“Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods. ” (emphasis this author’s).

Thus, I think it is clear that there is no longer any question that business methods and software patents are perfectly fine at the USPTO.

Inventors and patent attorneys should read the new USPTO issued instructions in light of the recent supreme court case of Alice v. CLS Bank. The instructions are here. The two part test described in Alice has been restated in the instructions,  and I have copied and pasted them below.
“Two-part Analysis for Abstract Ideas
Following Alice Corp.,  now analyze all claims (product and process) having an abstract idea using the following two-part analysis set forth in Mayo :
Part I: Determine whether the claim is directed to an abstract idea. As emphasized in Alice Corp.,  abstract ideas are excluded from eligibility based on a concern that monopolization of the basic tools of scientific and technological work might impede innovation more than it would promote it. At the same time, the courts have tread carefully in construing this exclusion because, at some level, all inventions embody, use, reflect, rest upon or apply abstract ideas and the other exceptions. Thus, an invention is not rendered ineligible simply because it involves an abstract concept. In fact, inventions that integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are eligible.
Examples of abstract ideas referenced in Alice Corp. include:

• Fundamental economic practices;
• Certain methods of organizing human activities;
• “[A]n idea of itself; and,
• Mathematical relationships/formulas.

Claims that include abstract ideas like these should be examined under Part 2 below to determine whether the abstract idea has been applied in an eligible manner.
If an abstract idea is present in the claim, proceed to Part 2 below. If not, proceed with examination of the claim for compliance with the other statutory requirements for patentability.

Part 2: If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. In other words, are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea? Consider the claim as a whole by considering all claim elements, both individually and in combination.

Limitations referenced in Alice Corp. that may be enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples:

• Improvements to another technology or technical fields;
• Improvements to the functioning of the computer itself;
• Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

Limitations referenced in Alice Corp. that are not enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples:

• Adding the words “apply it” (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computers;
• Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.

If there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, the claim should be rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter (use Form paragraph 7.05.01).
After conducting the two-part analysis, proceed with examination of the claim, regardless of whether a rejection under § 101 has been made, to determine patentability in accordance with the other requirements of 35 U.S.C. § 101 (utility and double patenting), non-statutory double patenting, and §§ 112, 102, and 103.”

On June 19, 2014, the Supreme Court issued a new patent opinion relating to business methods, which can be seen here As a patent attorney, it was necessary that I read the case. These are my observations. Business methods are still available to be patented, as long they pass a two part test: 1. Are the claims at issue directed to patent-ineligible concepts (i.e. laws of nature, natural phenomena, and abstract ideas); 2. if so, do the claims purport to improve the functioning of a computer, or effect an improvement in any other technology or technical field.
The court held that the claims in Alice did not improve the functioning of a computer, or effect an improvement in any other technology or technical field, and therefore were not patent eligible. The abstract idea of Alice was the “use of a third party to mitigate settlement risk”. The problem, as seen by the Supreme Court, was that the claims simply instructed to apply the abstract idea using some unspecified, generic computer, and thus did not effect an improvement in the functioning of a computer or in any other technology or technical field.
What could have Alice (or the original drafters of the patent application) have done to make the claims patent eligibly. The supreme court gives a clue when it discussed Diamond v. Diehr, 450 U.S. 175 (1981), and stated:
“The invention in Diehr used a “thermocouple” to record constant temperature measurements inside the rubber mold—something “the industry ha[d] not been able to obtain.” Id., at 178, and n. 3. The temperature measurements were then fed into a computer,which repeatedly recalculated the remaining cure timeby using the mathematical equation. Id., at 178–179. These additional steps, we recently explained, “transformed the process into an inventive application of theformula.” Mayo, supra, at ___ (slip op., at 12). In other words, the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.”
Thus, if the Alice claims used some sort of hardware, or even software that improved the process described in Alice, then perhaps the claims would be patent eligible. Perhaps such software could provide a data window that would pop up at the request of any of the parties to the settlement risk showing the likelihood of any party satisfying their own obligations, thus giving information to the parties that they did not have before, and therefore improving the technical field of risk allocation. Of course that leads to the question of whether risk allocation is a technical field!!