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The former PTO patent commissioner identifies lessons from four Federal Circuit patent eligibility rulings and provides guidance for new patent claim drafters.
By Robert L. Stoll
Bob Stoll is a partner at Drinker Biddle and Reath, co-chair of the firm's IP Group and a previous Commissioner for Patents at the U.S. Patent and Trademark Office. The views expressed above are his own and do not necessarily represent the views of his firm or its clients.
Recently, a panel at the U.S. Court of Appeals for the Federal Circuit handed down a long-awaited, seminal decision on software patent subject matter eligibility in McRO, Inc., d/b/a Planet Blue v. Bandai Namco Games America that unquestionably confirms the patent eligibility of software innovations.
Until now, few software patents were surviving the test for patent eligibility that was set forth by the Supreme Court in Mayo and Alice. However, over the past few months, we've begun to see a more aggressive posture from the Federal Circuit, as the court seeks to dispel the shadow of uncertainty that was hanging over patent applicants, litigants and the lower courts.
Planet Blue (2016 BL 297537, 120 U.S.P.Q.2d 1091 (Fed. Cir. 2016) (92 PTCJ 1426, 9/16/16)) joins a growing body of decisions—which includes DDR Holdings, LLC v. Hotels.com, L.P. (773 F.3d 1245, 2014 BL 342453 (Fed. Cir. 2014) (89 PTCJ 370, 12/12/14)), Enfish, LLC v. Microsoft Corp. (822 F.3d 1327, 118 U.S.P.Q.2d 1684 (Fed. Cir. 2016) (92 PTCJ 166, 5/20/16)) and Bascom Glob. Internet Servs., Inc. v. AT&T Mobility, LLC (827 F.3d 1341, 119 U.S.P.Q.2d 1236 (Fed. Cir. 2016) (92 PTCJ 662, 7/8/16))-–that confirm the patent eligibility of software inventions, while pushing back against overly aggressive application of the U.S. Supreme Court's 2014 ruling in Alice Corp. Pty Ltd. v. CLS Bank Int'l (134 S. Ct. 2347, 2014 BL 170103, 110 U.S.P.Q.2d 1976 (2014) ( 88 PTCJ 513, 6/20/14 )), and providing much needed guidance to lower courts regarding appropriate application the test.
In the decision, the Federal Circuit sets out key guide posts that will help ensure that quality software patents survive under Alice:
These points not only provide important guidance to the lower courts, but also provide applicants a clearer roadmap to getting valid software claims allowed by the patent office.
In my view, there are a number of practical lessons and strategies that savvy applicants should take away from the Planet Blue decision, including:
Characterize the claim as a technological solution to a technological problem. As illustrated by Planet Blue and other recent decisions, the most effective way to overcome (or avoid) an abstract idea objection is to emphasize the technical nature and effects of the invention.
The specification matters. Courts are more frequently looking to the description of the invention in the specification as a means of interpreting the claims and determining their technological context and nature. Applicants should bulk up the structure described in the specification and may also want to consider including means-plus-function claims. Under Section 112, these claims are construed to incorporate the structure recited in the specification and have been useful in avoiding or overcoming eligibility rejections in some cases.
Include “significantly more.” Applicants should anticipate and be prepared for the question of whether the claimed invention amounts to “significantly more” than an abstract idea. While it's not clear exactly what is required to satisfy the amorphous standard articulated by the Supreme Court, we do have some general guideposts from the Federal Circuit and PTO. For example, a specific, practical application of an abstract idea weighs heavily in favor of eligibility.
As discussed above, demonstrating (or at least asserting) an improvement over existing technology goes a long way toward satisfying Alice. Providing the right prior art can be effective in illustrating both the practical need for the invention and its potential technical benefits. Prior art can also be useful in supplying evidence of other solutions, demonstrating that claims do not preempt an entire field or seek to monopolize a law of nature or fundamental scientific principle.
Follow the PTO's examples. One of the best ways to avoid a Section 101 rejection is to draft your claims to look as similar as possible to the PTO examples of allowable claims. Closely mirroring the allowable claims provides an applicant persuasive arguments against a rejection and gives the examiner comfort that allowing the claim is consistent with PTO examination policy.
Classification matters. Both the data on Section 101 rejections and anecdotal evidence suggest that certain art units are more likely than others to reject claims based on Alice. Claims can often be written to avoid key words that increase the chances of an application going to these art units, while still accurately disclosing the invention. While mindful drafting does not ensure avoidance of a Section 101 rejection, it can significantly improve the odds of avoiding eligibility problems.
In conclusion, after a long spell of bad news, Planet Blue—along with decisions like Bascom and Enfish—provides software innovators, applicants and owners with not only increased clarity, but also concrete evidence that the courts are working to address the challenges arising from the Alice test and that we're not headed for a software patent apocalypse (as some have claimed).
I, for one, remain optimistic that the courts and PTO are fully committed to a healthy patent system and will continue working to resolve the remaining issues around patent eligibility and to ensure that effective patent protection is available to innovations in software (and every other field of technology).
Copyright © 2016 The Bureau of National Affairs, Inc. All Rights Reserved.
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