• Share
  • Email
  • Embed
  • Like
  • Private Content
Patentable Subject Matter in the United States
 

Patentable Subject Matter in the United States

on

  • 723 views

Knobbe attorneys presented "Patentable Subject Matter in the United States" at a recent seminar held in Japan.

Knobbe attorneys presented "Patentable Subject Matter in the United States" at a recent seminar held in Japan.

Statistics

Views

Total Views
723
Views on SlideShare
574
Embed Views
149

Actions

Likes
0
Downloads
9
Comments
0

6 Embeds 149

http://knobbe.com 75
http://accessibility_checker.siteimprove.com 37
http://www.knobbe.com 34
https://twitter.com 1
http://knobbe.dcsam.com 1
http://www.avvo.comwww.knobbe.com 1

Accessibility

Categories

Upload Details

Uploaded via as Adobe PDF

Usage Rights

© All Rights Reserved

Report content

Flagged as inappropriate Flag as inappropriate
Flag as inappropriate

Select your reason for flagging this presentation as inappropriate.

Cancel
  • Full Name Full Name Comment goes here.
    Are you sure you want to
    Your message goes here
    Processing…
Post Comment
Edit your comment

    Patentable Subject Matter in the United States Patentable Subject Matter in the United States Presentation Transcript

    • Patentable Subject Matter in the United States Daniel Altman October 19, 2012 TokyoThe recipient may only view this work. No other right or license is granted.
    • The Law of Patentable Subject Matter • 35 U.S.C. § 101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, . . .” • Congress intended statutory subject matter to “include anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303 (1980).© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2
    • Implicit Exceptions to Patentable Subject Matter • Judge-made exceptions to Patentable Subject Matter – Products of Nature – Natural Laws / Natural Phenomena – Abstract Ideas / Mental Processes They are “part of the storehouse of knowledge … free to all men and reserved exclusively to none.” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948).© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3
    • Gottschalk v. Benson, 409 U.S. 63 (1972) Representative Claim 8. The method of converting signals from binary coded decimal form into binary which comprises the steps of: (1) storing the binary coded decimal signals . . . , (2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position . . . , (3) masking out said binary ‘1’ in said second position . . . , (4) adding a binary ‘1’ to the first position . . . , (5) shifting the signals to the left by two positions, (6) adding a ‘1’ to said first position, and (7) shifting the signals to the right by at least [3] positions in preparation for a succeeding binary ‘1’ in the second position . . . .© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4
    • Gottschalk v. Benson, 409 U.S. 63 (1972) Holding • The claims are patent ineligible because they merely recite a formula, rather than its discrete/limited practical application. • Phenomena of nature, mental processes, and abstract ideas are not patentable, for “they are the basic tools of scientific and technological work.” • The claim is not compliant with § 101 because it “would wholly preempt the . . . Formula.”© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5
    • Parker v. Flook, 437 U.S. 584 (1978) Representative Claim 1. A method for updating the value of at least one alarm limit . . . in . . . the catalytic chemical conversion of hydrocarbons . . . which comprises: (1) determining the present value of said process variable, said present value being defined as PVL; (2) determining a new alarm base B1, using the following equation: B1=Bo(1.0-F) + PVL(F)…; (3) determining an updated alarm limit which is defined as B1 + K; and thereafter (4) adjusting said alarm limit to said updated alarm limit value.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 6
    • Parker v. Flook, 437 U.S. 584 (1978) Holding • The claims cover a formula and are therefore patent ineligible. • A formula cannot be patented; the case must “be considered as if the principle or mathematical formula were well known.” • “[O]nce that algorithm is assumed to be within the prior art, the application . . . contains no patentable invention.” • A patent involving a law of nature or a mathematical formula must include some other inventive concept in the application of that law of nature or mathematical formula. • Post-solution activity is insufficient to render a claim patent eligible.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7
    • Diamond v. Chakrabarty, 447 U.S. 303 (1980)Representative Claim1. A bacterium from the genus Pseudomonas containingtherein at least two stable energy-generating plasmids,each of said plasmids providing a separate hydrocarbondegradative pathway.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8
    • Diamond v. Chakrabarty, 447 U.S. 303 (1980) Holding • ‘Manufacture’ is a broad term meaning “the production of articles for use from raw materials prepared by giving to these materials new forms, qualities, properties, or combinations whether by hand labor or by machinery.” • While “a new mineral discovered in the earth or a new plant found in the wild” or a “hitherto unknown natural phenomenon” is not patentable subject matter,” a “nonnaturally occurring manufacture or composition of matter - a product of human ingenuity having a distinctive name, character and use” is patentable subject matter. • The relevant distinction is “not between living and inanimate things, but between products of nature, whether living or not, and human- made inventions.”© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9
    • Diamond v. Diehr, 450 U.S. 175 (1981)Representative Claim 1. A method of operating a rubber-molding press for precisionmolded compounds with the aid of a digital computer, comprising: providing said computer with a data base . . . , initiating an interval timer in said computer upon the closure of thepress . . . , constantly determining the temperature (Z) of the mold . . . andconstantly providing the computer with the temperature (Z), repetitively performing in the computer … integrations to calculatefrom the series of temperature determinations the Arrhenius equation . . ., which is ln v = CZ + x, where v is the total required cure time, repetitively comparing in the computer . . . said calculation of thetotal required cure time . . . and said elapsed time, and opening the press automatically when a said comparison indicatescompletion of curing.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 10
    • Diamond v. Diehr, 450 U.S. 175 (1981) Holding • Claim is a patent-eligible application of the mathematical formula. • Claims are “drawn to an industrial process,” and therefore do not wholly preempt the use of the equation recited in the claim.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 11
    • Bilski v. Kappos, 130 S. Ct. 3218, 561 US ___ (2010) Representative Claim 1. A method for managing the consumption risk costs of a commodity … comprising the steps of: (a) initiating a series of transactions … wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer; (b) identifying market participants for said commodity having a counter-risk position to said consumers; and (c) initiating a series of transactions … at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 12
    • Bilski v. Kappos, 130 S. Ct. 3218, 561 US ___ (2010) Holding • Hedging risk is an unpatentable abstract idea. • The claim would wholly preempt the use of this approach in all fields and grant a monopoly over an abstract idea. • Limiting this abstract idea to one field of use or adding token post-solution steps does not render this claim compliant with §101. • The machine-or-transformation test is not the definitive test of patent eligibility, but is merely a useful tool in the analysis.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 13
    • Federal Circuit (CAFC) Case Law Developments Since Bilski©2012 Knobbe, Martens, Olson & all rights reserved.©2012 Knobbe Martens, Olson & Bear, LLPBear, LLP all rights reserved. 14
    • Cybersource v. Retail Decisions Representative Claim 3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of: a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction; b) constructing a map of credit card numbers based upon the other transactions; and c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15
    • Cybersource v. Retail Decisions • Holding the claim does not satisfy § 101. • “[W]e have never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind [is sufficient].” • “Regardless of what statutory category (‘process, machine, manufacture, or composition of matter,’ 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.” • “[T]he machine must play a significant part in permitting the claimed method to be performed.”© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 16
    • Ultramercial v. Hulu Representative Claim 1. A method for distributing products over the Internet via a facilitator, said method comprising the steps of: a first step of receiving, from a content provider, media products that are covered by intellectual property rights protection and are available for purchase . . . ; a second step of selecting a sponsor message to be associated with the media products . . . ; a third step of providing the media product for sale at an Internet website; a fourth step of restricting general public access to said media product; a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message; ... an eleventh step of receiving payment from the sponsor of the sponsor message displayed.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 17
    • Ultramercial v. Hulu Holding • Claim satisfies § 101 • Vacated by the Supreme Court (and remanded to Federal Circuit) • “[T]he broadly claimed method in the ’545 patent does not specify a particular mechanism for delivering media content to the consumer (i.e., FTP downloads, email, or real-time streaming). This breadth and lack of specificity does not render the claimed subject matter impermissibly abstract.” • “[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.’”© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18
    • 2040 Main Street, 14th FloorDaniel Altman Irvine, California 92614 Dan.Altman@knobbe.com