Internet of Things (IoT) Best Practices For Protecting IP and Prosecuting IoT Applications Before the U.S. Patent and Trademark Office

Transcription

1 Internet of Things (IoT) Best Practices For Protecting IP and Prosecuting IoT Applications Before the U.S. Patent and Trademark Office Finland Patent Office April 10, 2018

2 Overview 概要 IoT Background What is IoT? Classification of IoT Technology Best Practices Drafting IoT-related Patent Claims Drafting and Prosecuting IoT-related Patent Applications Protecting IoT-related Software via Copyright 2

3 IoT Background What is IoT? The Internet of Things (IoT) is defined by a devices connectivity to the internet and to other devices, as well as the data it collects. IoT refers to the growing network of connected objects that collect and exchange data using embedded sensors. Typically consisting of a physical device with embedded electronics, software, sensors, actuators, and connectivity which allows these objects to exchange data IoT allows objects to be sensed or controlled remotely across existing network infrastructure It is estimated that there will be 30 billion IoT objects by

4 IoT Background Amazon Echo Allows remote control of lights, viewing of security cameras, listening to music, answering questions Driverless cars Reducing traffic, increased safety, reduced emissions Smart Fridge Utilizes sensors and cameras that allows the user to check spoilage from their phone Wearables Fitbit, Apple watch Bluetooth Connected Toothbrush IoT Examples Records brushing activity as data that you can chart on your own and share with dental professionals. 4

5 IoT Background Technology Advances at a Rapid Pace Advances in technology and reduction in costs has allowed researches to explore remotely controlling from a handful, to hundreds, of devices using data networks. Due to the relative infancy of IoT technologies, it is often difficult to identify how to best classify IoT innovations, draft claims covering IoT innovations, and prosecute applications relating to IoT innovations. 5

6 IoT Background Patent filings directed towards the IoT have grown exponentially over the past several years. China and the U.S. are overwhelmingly the preferred venue for IoT Applications Country of Filing China U.S. PCT Number of Publications Published Applications per Year 2007 Republic of Korea EPO UK Japan Germany Canada Spain Russian Federation Publication Year Published Applications per Year 6

7 Classification of IoT Technology Because of the myriad devices that can be utilized by IoT technologies, it is often difficult to identify a classification under which the IoT technology falls. Of the 12,957 Applications filed that are directed to the IoT, 29% were classified under class H04L. IPC Percentages 7% 5% 4% 4% 19% 3% 3% 2% 23% 29% H04L H04W G06F G06Q G05B G06K H04B H04N G08B H04M 7

8 Classification of IoT Technology Classification Descriptions IPC H04L H04W G06F G06Q Description Transmission of Digital Information Wireless Communication Networks Electric Digital Data Processing Data Processing Systems or Methods, Specifically Adapted for Administrative, Commercial, Financial, Managerial, Supervisory or Forecasting Purposes; Systems of Methods Specially Adapted for Administrative, Commercial, Financial, Managerial, Supervisory or Forecasting Purposes, Not Otherwise Provided For 8

9 Classification of IoT Technology Classification Descriptions IPC G05B G06K H04B H04N G08B H04M Description Control or Regulating Systems in General; Functional Elements of Such Systems; Monitoring or Testing Arrangements for Such Systems or Elements Recognition of Data; Presentation of Data; Record Carriers; Handling Record Carriers Transmission Pictoral Communication Signalling or Calling Systems; Order Telegraphs; Alarm Systems Telephonic Communication 9

10 Classification of IoT Technology Takeaway from IPC data is that IoT Applications are classified generally in electrical communications classes or classes related to the transmission of data 10

11 Classification of IoT Technology Levels of IoT: At the highest level it is: Devices that are equipped with sensors and communicate via a network Processing of sensor data At the lowest level it is: Sensor hardware Network hardware, topology, and communication protocols 11

12 Drafting IoT-related Patent Claims IoT claims are similar in structure to software or business method (BM) claims. Therefore, issues that are applicable to software and BM claims are similarly applicable to IoT claims; most notably: patent-eligibility of claimed subject matter (e.g., under 35 U.S.C. 101 and applicable case law), and functional claiming issues (e.g., claim interpretation under 35 U.S.C. 112(f)) 12

13 Drafting IoT-related Patent Claims (cont d) The Alice/Mayo test is a main hurdle IoT claims must overcome in order to be considered to be directed to patent-eligible subject matter under 35 U.S.C Two Step test: Is the Claim directed to a judicial exception? If it does, are the elements of the claim, considered both individually and as an ordered combination, sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself? 13

14 Drafting IoT-related Patent Claims (cont d) 14

15 Drafting IoT-related Patent Claims (cont d) Rare to find no abstract idea USPTO March 2018 Eligibility Quick Reference Sheet (CAFC cases) Identifying Abstract Idea Fundamental Economic Practices - 12 Methods of Organizing Human Activity 40 An Idea Of Itself 33 Mathematics/Formulas 11 Number of cases finding no abstract idea 8 Must not be directed to any of the broad categories above 15

16 Drafting IoT-related Patent Claims (cont d) Factors supporting inventiveness Unconventional approach Technical solution to a technical problem Transformation Useful and tangible result or application Improves another field Factors unhelpful to inventiveness Computer merely implements existing mental activity or business process Technological elements are generic components Nothing more beyond applying abstract idea to a particular context Insignificant post-solution activity Essentially preempting all practical applications of the abstract idea 16

17 Drafting IoT-related Patent Claims (cont d) Recent Court of Appeals for the Federal Circuit (CAFC) decisions have provided valuable guidance on how to draft software and BM claims that are directed to patent-eligible subject matter. Core Wireless Licensing V. LG Electronics, Inc Enfish LLC v. Microsoft Corp. 17

18 Drafting IoT-related Patent Claims (cont d) McRO, Inc. v. Bandai Namco Games America Inc pdf Bascom Global Internet v. AT&T Mobility LLC Amdocs (Israel) Limited v. Openet Telecom, Inc. 18

19 Drafting IoT-related Patent Claims (cont d) Newer cases in the March 2018:Eligibility Quick Reference Sheet: Exergen v. Kaz PDF Finjan v. Blue Coat Sys PDF Additional guidance on patent-eligibility of subject matter is provided on the USPTO website. See Examination Guidance and Training Materials portion of the website 19

20 Drafting IoT-related Patent Claims (cont d) Best Practices Draft claims that only require one actor More difficult to prove infringement if multiple actors are required Draft claims that are analogous to those that have been considered patent-eligible in the case law and USPTO guidance Avoid language that invokes 35 U.S.C. 112(f) Means plus function language such as device for..., unit for..., module for..., component for..., mechanism for..., etc. Draft claims to include structure Include sensors, devices, or other tangible structure that are used to enable the elements directed towards software or BMs. 20

21 Drafting and Prosecuting IoT-related Patent Applications Best Practices 35 U.S.C. 112(f) To the extent that IoT claims can be distinguishable from the prior art in terms of structure, it is advisable to do so. However, many IoT claims will be directed to how the software operates, the aspects of which will likely be functionally claimed, and therefore it is likely that at least some IoT claims will invoke 112(f). In light of potential for claims to invoke 112(f), Applicants should ensure that their applications and claims are drafted in a manner such that the claims are likely to: (1) survive (i.e., not be invalidated under) an eventual interpretation under 112(f); and (2) have a sufficiently broad scope (i.e., a scope that is not unduly narrowed because of the 112(f) interpretation) 21

22 Drafting and Prosecuting IoT-related Patent Applications (cont d) Best Practices 35 U.S.C. 112(f) (cont d) Ensuring that the application includes adequate written description of structure corresponding to the claimed functions will be helpful in addressing both of the above issues In other words, care must be taken to ensure that other requirements of 35 U.S.C. 112 are satisfied, particularly: 112(a): Written description/enablement requirements; and 112(b): Definiteness. 112(a) Link Material to Function Structure disclosed in the specification is corresponding structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link structure to function is the quid pro quo for employing 112(f) (See MPEP 2181). 22

23 35 USC 112(f) A 3-prong analysis is used for determining whether 35 U.S.C. 112(f) applies to a claim: (A) the claim limitation uses the term means or step or a term used as a substitute for means that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term means or step or the generic placeholder is modified by functional language, typically, but not always linked by the transition word for (e.g., means for ) or another linking word or phrase, such as "configured to" or "so that"; and (C) the term means or step or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. 23

24 Drafting and Prosecuting IoT-related Patent Applications (cont d) Best Practices 35 U.S.C. 112(f) (cont d) Example claim language that may be interpreted under 112(f) : a communication unit a means for wirelessly communicating Language that should avoid interpretation under112(f): a wireless communicator 24

25 Drafting and Prosecuting IoT-related Patent Applications (cont d) Best Practices 35 U.S.C. 112(f) (cont d) 112(b) Definiteness If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by the language. If an applicant fails to set forth an adequate disclosure, the application has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of 112. (See MPEP 2181). Satisfying 112(b) when 112(f) is invoked The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means (or step)-plus function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure (or material or acts) will perform the recited function. (See MPEP 2181). 25

26 Drafting and Prosecuting IoT-related Patent Applications (cont d) IoT Applications should be drafted in a manner similar to other software/bm applications Therefore, include as much structure as possible in the application to support the software/bm portion of the application Describe hardware that enables the use of the software such as sensors, processors, electrical/communication wires, display screens, etc. Be overly inclusive; include as much detail as possible in the application to draw from while prosecuting the claims Use USPTO guidance and case law to frame arguments for the Examiner during prosecution Pay particular attention to any clues the Examiner may give with respect to how to place the claims in condition for allowance 26

27 Protecting IoT-related Software via Copyright In view of the volatile legal landscape for software-related patents (such as IoT patents), notably in relation to 35 U.S.C. 101, many applicants have begun to look to copyright as a means to protect software-related claims Although copyright protection has its drawbacks Not as broad as patent protection Often more difficult to prove infringement It also has advantages Inexpensive to obtain relative to the cost of obtaining a patent No showing of innovation required Some level of secrecy provided Treaties and international conventions provide global protection IoT innovators should thus consider pursuing copyright registration to provide some measure of protection for their IoT-related software 27

28 Questions? Robert Michal ROBERT P. MICHAL, Esq., a partner with the New York Intellectual Property law firm of, concentrates his patent practice on advising companies on ways to strategically build and manage their global patent portfolios which includes patent application preparation and prosecution, as well as counseling on patent validity, infringement and patentability. He focuses on business methods and software, consumer products, medical devices, materials, machines, digital imaging and display technologies, electro-chemical devices and electrical engineering, especially chip design and manufacture, graphics and cellular technologies. He also maintains an active trademark practice and lectures extensively at U.S. Embassies and Consulates and professional organizations, influential trade associations and bar associations around the world +1 (631) rmichal@cdfslaw.com Internet of Things

29 THANK YOU! Kiitos! 445 Broad Hollow Road, Suite 420 Melville, New York (631) (Telephone) (631) (Facsimile) 29

30 Appendix A This appendix covers the various CAFC cases discussed earlier in the presentation under the section discussing 35 USC section

31 Federal Circuit Precedent Recent More recent cases have continued to expand the scope of what is patentable subject matter Recent cases have rebuked the Patent Office and insisted that the Patent Office present support for their determinations of unpatentable subject matter 31

32 Enfish (CAFC, May 2016) Patent claimed database software designed as a self-referential table that is patent eligible CAFC held that claims reciting a specific improvement to computer functionality are not directed to an abstract idea, do not have to be analyzed under step 2 (i.e., 2B) of Mayo/Alice test 32

33 Enfish Claim at issue A data storage and retrieval system for a computer memory, comprising: means for configuring said memory according to a logical table, said logical table including: a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information; a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and means for indexing data stored in said table. 33

34 Enfish CAFC Analysis CAFC Applied Eligibility Test: Step 1: Determine whether the claim is directed to a process, machine, manufacture, or composition of matter, or new and useful improvement thereof Step 2A: Determine whether the claim is directed to a judicial exception, i.e. a law of nature, natural phenomenon, or abstract idea 34

35 Enfish CAFC Analysis Directed to Acts as a filter for interpreting the claims Whether a claim as a whole, when interpreted in view of the specification, is directed to a patent ineligible concept. Court asked whether the focus of the claims is on the specific asserted improvement in computer capabilities Court looked to the teachings of the specification Specification claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Improvement is defined by logical structures and processes, rather than particular physical features Not simply applying a general-purpose computer to a fundamental economic process or mathematical equation Directed to a specific implementation of a solution to a problem in the software arts 35

36 Enfish CAFC Analysis(cont d) Claims must be compared to claims already found to be directed to an abstract idea in a previous court decision Cannot determine that the claim is abstract without comparison An invention's ability to run on a general purpose computer does not automatically doom the claim Improvements in computer related technology, including claims directed to software, are not necessarily abstract Court emphasizes: Some improvements in computer-related technology are undoubtedly not abstract 36

37 Enfish CAFC Analysis The court cautioned court and Examiners against interpreting a claim at a high level of abstraction untethered from the language of the claim when determining the focus (directed to) of the claimed invention 37

38 Enfish Holding Claims recited an improvement to the functionality of a computer, and thus the claim is patent-eligible under Step 2A of the Mayo/Alice test and need not be evaluated under Step 2B 38

39 Enfish Takeaways Establish the art by which you want the claims to be judged Enfish was judged in the software art and succeeded Other claims have failed when judged against dissimilar art that led to levels of abstraction that were too high Emphasize the benefit of the claimed invention Emphasize benefit in the specification Emphasize benefit in the claims Emphasize how the claims are an improvement at every opportunity especially elements are generic or steps are performed by a generic computer Include details sufficient to allow Examiners to look at the claims with a lower level of abstraction argue that they are viewing that claims with too high a level of abstraction if they don t recognize the novel details There is no question that software claims can be patent eligible 39

40 Bascom (CAFC, June 2016) Patent claimed a filtering scheme with a specific location for the filtering system and allowing users to customize filtering for their individual network accounts that is patent eligible Additional elements may be generic components individually, but an inventive concept may be found in their combination ( Ordered combination of limitations can provide the inventive concept ) 40

41 Bascom Claim at issue A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising: a local client computer generating network access requests for said individual controlled access network accounts; at least one filtering scheme; a plurality of sets of logical filtering elements; and a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements. 41

42 Bascom Claim at Issue An ISP server for filtering content forwarded to controlled access network account generating network access requests at a remote client computer, each network access request including a destination address field, said ISP server comprising: a master inclusive-list of allowed sites; a plurality of sets of exclusive-lists of excluded sites, each controlled access network account associated with at least one set of said plurality of exclusive-lists of excluded sites; and a filtering scheme, said filtering scheme allowing said network access request if said destination address exists on said master inclusive-list but not on said at least one associated exclusive-list, whereby said controlled access accounts may be uniquely associated with one or more sets of excluded sites. 42

43 Bascom CAFC Analysis 2A. The claims are directed to an abstract idea... or at least it was a close call Abstract idea: filtering content on the Internet Move on to step 2B 2B. The claims amount to significantly more The inventive concept described and claimed in the 606 patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. The combination and ordering of elements is a novel idea that amounts to significantly more than the individual elements 43

44 Bascom Holding The Bascom claims contain an inventive concept in the claims ordered combination of limitations, and this establishes eligibility. 44

45 Bascom Takeaways The United States does not have the same system as Europe, but emphasis of an inventive step may cause claim to overcome a 101 rejection under step 2B Allows patentee to dictate the line between directed to and additional elements If overly generalize, claims may fail step 2A with nothing left to analyze for step 2B If no individual steps or elements are novel, emphasize their use and association to generate a novel combination Describe elements in relation to other elements Require steps be performed in a specific order If possible, tie orientation or order to the benefit of the improvement 45

46 McRO (CAFC, Sept. 2016) Patent claimed a method of automatic lip synchronization and facial expression animation using computer-implemented rules that is patent eligible Claims were not directed to an abstract idea Claims were directed to an improvement in computer-related technology 46

47 McRO Claim at issue A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising: obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence; obtaining a timed data file of phonemes having a plurality of sub-sequences; generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules; generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters. 47

48 McRO CAFC Analysis Federal Circuit Reasoning: Claims are directed to an improvement in computer-related technology Allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that previously could only be produced by human animators Court looks to specification Specification described the invention as improving computer animation through the use of specific rules, rather than human artists, to set morph weights Human artists did not use the claimed rules, and instead relied on subjective determinations (process is not one that would be performed with paper and pencil) Court relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated Unlike Alice, the claimed invention "improved [the] existing technological process", rather than merely use a computer as a tool to perform an existing process 48

49 McRO CAFC Analysis Federal Circuit Advice to Examiners and Courts alike: "must be careful to avoid oversimplifying the claims Specific requirements of the claims should be considered rather than grouped into a more generalized process Focus on the specific way of solving the problem rather than the outcome Essentially, under step 2A, the claims should be considered as a whole without oversimplification 49

50 McRO CAFC Holding When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Alice, 134 S. Ct. at 2358 (citing Diehr, 450 U.S. at 177). Claim 1 of the 576 patent, therefore, is not directed to an abstract idea. 50

51 McRO Takeaways Carefully craft specification to describe a specific problem or shortcoming that is being overcome or improved Describe an improvement over existing computer methods Do not merely state an outcome being achieved using a computer; detail each step Emphasize the problem or improvement in the claim itself Can t guarantee the court will look to the specification Push back on Examiners who generalize Examiners must analogize claims to those found by the court to be ineligible subject matter Analogy will necessarily require some level of generalization and will leave the rejection vulnerable 51

52 Trading Tech. (CAFC, Jan. 2017) Patents claimed graphical user interface methods for dynamically displaying bid and asked prices in a trading system that is patent eligible Claims were not directed to an abstract idea Claims were directed to an improvement in computer-related technology 52

53 Trading Tech. Claim at issue A method of placing a trade order for a commodity on an electronic exchange having an inside market with a highest bid price and a lowest ask price, using a graphical user interface and a user input device, said method comprising: setting a preset parameter for the trade order displaying market depth of the commodity, through a dynamic display of a plurality of bids and a plurality of asks in the market for the commodity, including at least a portion of the bid and ask quantities of the commodity, the dynamic display being aligned with a static display of prices corresponding thereto, wherein the static display of prices does not move in response to a change in the inside market; displaying an order entry region aligned with the static display prices comprising a plurality of areas for receiving commands from the user input devices to send trade orders, each area corresponding to a price of the static display of prices; and selecting a particular area in the order entry region through single action of the user input device with a pointer of the user input device positioned over the particular area to set a plurality of additional parameters for the trade order and send the trade order to the electronic exchange. 53

54 Trading Tech. Claim at issue A method for displaying market information relating to and facilitating trading of a commodity being traded in an electronic exchange having an inside market with a highest bid price and a lowest ask price on a graphical user interface, the method comprising: dynamically displaying a first indicator in one of a plurality of locations in a bid display region, each location in the bid display region corresponding to a price level along a common static price axis, the first indicator representing quantity associated with at least one order to buy the commodity at the highest bid price currently available in the market; dynamically displaying a second indicator in one of a plurality of locations in an ask display region, each location in the ask display region corresponding to a price level along the common static price axis, the second indicator representing quantity associated with at least one order to sell the commodity at the lowest ask price currently available in the market; displaying the bid and ask display regions in relation to fixed price levels positioned along the common static price axis such that when the inside market changes, the price levels along the common static price axis do not move and at least one of the first and second indicators moves in the bid or ask display regions relative to the common static price axis; displaying an order entry region comprising a plurality of locations for receiving commands to send trade orders, each location corresponding to a price level along the common static price axis; and in response to a selection of a particular location of the order entry region by a single action of a user input device, setting a plurality of parameters for a trade order relating to the commodity and sending the trade order to the electronic exchange. 54

55 Trading Tech. CAFC Analysis General Reasoning: [I]neligible claims generally lack steps or limitations specific to solution of a problem, or improvement in the functioning of technology. [T]he issue of subject matter eligibility is placed in the context of the patentbased incentive to technologic progress. Federal Circuit Approved District Court Rationale: The Claims "require a specific, structured graphical user interface" and prescribed functionality related to the interface; therefore they are not directed to abstract ideas The Claims recite an inventive concept 2A: Claim were directed to improvements in existing technological processes in recent high-profile cases like DDR (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)), Enfish, and McRo 55

56 Trading Tech. CAFC Holding For Section 101 purposes, the claimed subject matter is directed to a specific improvement to the way computers operate, [Enfish], for the claimed graphical user interface method imparts a specific functionality to a trading system directed to a specific implementation of a solution to a problem in the software arts. 56

57 Trading Tech. Takeaways Draft claims to recite steps or limitations specific to solution of a problem, or improvement If the problem or feature being improved over is not self evident, include claim language relating the problem or improvement Establish a technological context Describe the invention in terms of technological progress Do not describe the invention too generally such that an Examiner may claim the general process could be performed with pencil and paper Graphical User Interfaces (GUIs) can be patent eligible Must include enough specific detail to differentiate from a generic GUI 57

58 Visual Memory (CAFC, Aug. 2017) Patents claimed a computer memory system having programmable operational characteristics which are defined based on the type of processor connected to the system and separate caches that can be programmed to store different types of data based on those characteristics. Claims were not directed to an abstract idea Claims were directed to an improvement in computer-related technology 58

59 Visual Memory Claim at issue A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising: a main memory connected to said bus; and a cache connected to said bus; wherein a programmable operational characteristic of said system determines a type of data stored by said cache. 59

60 Visual Memory CAFC Analysis General Reasoning for Reversing District Court: [the claims] are directed to an improved computer memory system, not to the abstract idea of categorical data storage. None of the claims recite[s] all types and all forms of categorical data storage. Rather, the patent explains the multiple benefits of the system such as obviating the need to design a separate memory system for each type of processor. configuring the memory system based on the type of processor connected the memory system is the improvement in computer technology to which the [ 740] claims are directed. Alice requires no more from the claims or the specification to support our conclusion that the claims are not directed to an abstract idea. The CAFC determined that the 740 claims met the standard for patent eiligibility under step one of Alice, and therefore, the CAFC did not analyze the 740 claims under step two of Alice. 60

61 Visual Memory CAFC Holding The use of conventional computer components is not, in itself, fatal to patent eligibility where the claims are directed to an improvement in the functioning of a computer 61

62 Visual Memory Takeaways Similarly to previous cases, it is prudent to draft claims to recite steps or limitations specific to a solution to a problem, or an improvement thereupon If the problem or feature being improved over is not self evident, include claim language relating the problem or improvement Visual Memory affirms that is it beneficial to establish a technological context Describe the invention in terms of technological progress Do not describe the invention too generally such that an Examiner may claim the general process could be performed with pencil and paper 62

63 Finjan v. Blue Coat Sys. (CAFC, Jan. 2018) Patents claimed a behavior-based approach to virus scanning; which are distinguished from traditional, code-matching virus scans that are limited to recognizing the presence of previouslyidentified viruses, typically by comparing the code in a downloadable to a database of known suspicious code. Claims were not directed to an abstract idea Claims were directed to an improvement in computer functionality 63

64 Finjan v. Blue Coat Sys. Claim at issue A method comprising: receiving by an inspector a Downloadable; generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients. 64

65 Finjan v. Blue Coat Sys. CAFC Analysis General Reasoning: [the claims] are directed to a behavior-based approach to virus scanning and not to traditional code-matching systems. The method of claim 1 employs a new kind of file that enables a computer security system to do things it could not before. The asserted claims were therefore directed to a non-abstract improvement in computer functionality rather than the abstract idea of computer security writ large. Here the claims recite more than a mere result. Instead they recite specific steps... that accomplish the desired result. The CAFC determined that the 844 claims met the standard for patent eligibility under step one of Alice, and therefore, the CAFC did not analyze the 844 claims under step two of Alice. 65

66 Finjan v. Blue Coat Sys. CAFC Holding The claims recite more than a mere result. Instead they recite specific steps... that accomplish the desired result. 66

67 Finjan v. Blue Coat Sys. Takeaways Similarly to previous cases, it is prudent to draft claims to recite specific steps or limitations specific to a solution to a problem, or an improvement thereupon and not merely the results 67

68 Core Wireless v. LG Electronics (CAFC, Jan. 2018) Patents claimed an improved display interface, particularly for electronic devices with small screens like mobile phones. Claims were not directed to an abstract idea Claims were directed to an improvement in the functioning of computers 68

69 Core Wireless v. LG Electronics Claim at issue A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an un-launched state. 69

70 Core Wireless v. LG Electronics CAFC Analysis General Reasoning: The limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer. Rather than merely reciting indices, the patents claimed a concrete solution to a problem specific to computers, which was lack of screen size and resulting navigational difficulties. The court analogized these patents to others that offered seemingly abstract solutions to novel issues created by computers that the Court had previously held to be patent eligible. The CAFC determined that the 476 and 020 claims met the standard for patent eligibility under step one of Alice, and therefore, the CAFC did not analyze the 844 claims under step two of Alice. 70

71 Core Wireless v. LG Electronics CAFC Holding This language clearly indicates that the claims are directed to an improvement in the functioning of computers, particularly those with small screens. 71

72 Exergen v. Kaz (CAFC, Mar. 2018) Patents claimed a body temperature detector that calculates a person s core temperature by detecting the temperature of the forehead directly above the superficial temporal artery. Claims were directed to a natural phenomena 72

73 Exergen v. Kaz Claim at issue 48. A body temperature detector comprising: a radiation detector; and electronics that measure radiation from at least three readings per second of the radiation detector as a target skin surface over an artery is viewed, the artery having a relatively constant blood flow, and that process the measured radiation to provide a body temperature approximation, distinct from skin surface temperature, based on detected radiation. 49. The body temperature detector of claim 48 wherein the artery is a temporal artery. 73

74 Exergen v. Kaz CAFC Analysis General Reasoning: [T]he step two dispute in this case turns entirely on whether the combination of elements was well-understood, routine, and conventional at the time of invention. The district court reasoned that while the asserted claims are based in natural phenomena, the claims recite additional steps which, like the claims in Diamond v. Diehr, 450 U.S. 175 (1981), transformed the underlying natural laws into inventive methods and useful devices that noninvasively and accurately detect human body temperature. The district court s conclusion that these claim elements were not wellunderstood, routine, and conventional is a question of fact to which we must give clear error deference. while the 101 inquiry is ultimately a legal question, sometimes the inquiry may contain underlying factual issues. Something is not well-understood, routine, and conventional merely because it is disclosed in a prior art reference. There are many obscure references that nonetheless qualify as prior art. 74

75 Exergen v. Kaz CAFC Holding Even if the concept of such measurement is directed to a natural phenomenon and is abstract at step one, the measurement method here was not conventional, routine, and well-understood. Following years and millions of dollars of testing and development, the inventor determined for the first time the coefficient representing the relationship between temporal-arterial temperature and core body temperature and incorporated that discovery into an unconventional method of temperature measurement. As a result, the method is patent eligible, similar to the method of curing rubber held eligible in Diehr. In other words, at the second step of Mayo/Alice, the patent incorporated an inventive concept. The same is true here. The inventor transformed the process into an inventive application of the formula. 75

76 Federal Circuit Precedent: Overall Practical Considerations Include as much detail in the specification describing a computer-based problem or an existing computer based system which is being improved upon Develop a theme that suggests the invention would not have been obvious The Court has difficulty separating issues of obviousness and patent eligibility of subject matter If the Court sees claims which it believes are novel and nonobvious, it will be more likely to find a way for the claims to describe patent eligible subject matter Tie the theme and problem to the independent claims Independent claims should remain broad However, language that does not restrict the claims may be used to remind the Examiner why the invention is important and not merely the performance of a known process using existing elements Add detail to dependent claims More specific details can shift unpatentable subject matter into patent eligible subject matter Subject matter from dependent claims can be incorporated into independent claims Allows patentee to start broad and then narrow independent claims as needed for allowance Don t give up! Computer-related claims (including GUIs) are absolutely patent eligible if the claims and application are properly drafted Recent cases should make it easier to acquire computer-related claims Examiners may not be up on their case law, but they often can be convinced of patent eligibility 76

77 Advice and Application General Advice Establish a pace for incremental patenting process Inventions may include a number of features, so of which may be novel or patentable claiming them separate be provide more protection for the invention However, if each application describes Don t fear the 101 rejection 101 rejections are not rare They are not a death sentence for a claim Claims should be written broadly to start applicants should not give up claim scope out of fear of a 101 rejection Don t underestimate 101 rejections 101 rejections can be complex The may require complex legal and/or technological arguments 101 rejections shouldn t be thought of as an afterthought each step in the patenting process should be taken with consideration of 101 rejections 77

78 References Alice Corp. v. CLS Bank International, 134 S. Ct (2014) Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct (2013) BASCOM Global Internet Servs. v. AT&T Mobility LLC., 827 F.3d 1341 (Fed. Cir. 2016) Bilski v. Kappos, 561 U.S. 593 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) Diamond v. Diehr, 450 U.S. 175 (1981) Digitech Image Techs., LLC v Electronics for Imaging, Inc., 758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014) Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) Gottschalk v. Benson, 409 U.S. 63 (1972) Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct (2012) McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016) Parker v. Flook, 437 U.S. 584 (1978) Planet Bingo, LLC v VKGS LLC, 576 Fed. Appx (Fed. Cir. 2014) TLI Communcations LLC v. AV Autotomotive, L.L.C., 2016 U.S. App. LEXIS 8970 (May 17, 2016) Trading Technologies Int l., Inc. v. CQG, Inc., (Fed. Cir. Jan 18, 2017) Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, F. App x, 2015 WL (Fed. Cir. 2015), cert. denied (May 31, 2016) Visual Memory LLC v. NVIDIA Corp., No , 2017 U.S. App. LEXIS (Fed. Cir. Aug. 15, 2017) 78