Law of nature/natural phenomenon. Streamlined analysis. Clear non-preemption. Case studies.

1. June 22, 20181
Subject Matter Eligibility Test for Products and Processes
Vadim Braginsky
May 19, 2015
Law of nature/natural phenomenon.
Streamlined analysis.
Clear non-preemption.
Case Studies.

2. SM
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3. It’s Simple!
June 22, 20183

4. “Directed To” = merely present
June 22, 20184

5. an isolated DNA (Myriad);
a correlation that is the consequence of how a certain compound is
metabolized by the body (Mayo);
electromagnetism to transmit signals (Morse);
the chemical principle underlying the union between fatty elements and water
(Tilghman)
June 22, 20185
Laws of Nature/Natural Phenomena examples

6. Nature-Based Products: Use Markedly
Different Characteristics analysis
Markedly different characteristics can be expressed as the product’s
structure, function, and/or other properties.
This revised analysis represents a change from prior guidance, because now
changes in functional characteristics and other non-structural
properties can evidence markedly different characteristics, whereas in the
March 2014 Procedure only structural changes were sufficient to show a
marked difference.
In accordance with this analysis, a product that is purified or isolated, for
example, will be eligible when there is a resultant change in characteristics
sufficient to show a marked difference from the product’s naturally occurring
counterpart.
June 22, 20186

7. Abstract Idea examples
mitigating settlement risk (Alice);
hedging (Bilski);
creating a contractual relationship (buySAFE);
using advertising as an exchange or currency (Ultramercial);
processing information through a clearinghouse (Dealertrack);
comparing new and stored information and using rules to identify options
(SmartGene);
using categories to organize, store and transmit information (Cyberfone);
organizing information through mathematical correlations (Digitech);
managing a game of bingo (Planet Bingo);
the Arrhenius equation for calculating the cure time of rubber (Diehr);
a formula for updating alarm limits (Flook);
a mathematical formula relating to standing wave phenomena (Mackay
Radio);
a mathematical procedure for converting one form of numerical
representation to another (Benson)
June 22, 20187

8. Part 2: “Significantly More” examples:
Weight is given to dicta
Improvements to another technology or technical
field (Diehr)
Improvements to the functioning of the computer
itself (Alice)
Applying the judicial exception with, or by use of,
a particular machine (Bilski)
Effecting a transformation or reduction of a particular article to a different
state or thing (Diehr, Benson)
Adding a specific limitation other than what is well-understood, routine and
conventional in the field, or adding unconventional steps that confine the
claim to a particular useful application (Mayo)
Other meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment (Alice)
June 22, 20188

9. Claims reciting a plurality of judicial
exceptions
Every judicial exception must amount to “significantly more”
OK to use the same additional claim limitations amounting to “significantly
more” for multiple judicial exceptions
Can there really be a case where the presence of limitations meeting the
“significantly more” prong for a first judicial exception will not suffice to prevent
a second judicial exception from preempting all uses?
June 22, 20189

10. Streamlined analysis = clear non-preemption
For purposes of efficiency in examination, a streamlined eligibility analysis
can be used for a claim that may or may not recite a judicial exception but,
when viewed as a whole, clearly does not seek to tie up any judicial
exception such that others cannot practice it.
For instance:
a claim directed to a complex manufactured industrial product or process that
recites meaningful limitations along with a judicial exception
A robotic arm assembly having a control system that operates using certain
mathematical relationships is clearly not an attempt to tie up use of the
mathematical relationships
a claim directed to an artificial hip prosthesis coated with a naturally
occurring mineral is not an attempt to tie up the mineral
June 22, 201810

11. Digitech Image Tech., LLC v. Electronics for Imaging, Inc.
1. 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 dependent transformation of color infor-
mation 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.
Holding:
• Non-tangible. The claims do not require any physical embodiment.
June 22, 201811

12. Digitech Image Tech., LLC v. Electronics for Imaging, Inc.
(cont’d)
10.A method of generating a device profile that describes properties of a device in a
digital image reproduction system for capturing, trans-forming or rendering an image,
said method comprising:
generating first data for describing a device dependent transformation of color
information content of the image to a device independent color space through use
of measured chromatic stimuli and device response characteristic functions;
generating second data for describing a device dependent transformation of spatial
information content of the image in said device independent color space through
use of spatial stimuli and device response characteristic functions; and
combining said first and second data in-to the device profile.
Holding:
• Abstract process of gathering and combining data that does not require input
from a physical device
• Nothing in the claim language expressly ties the method to an image
processor.
• Mention of “system” in preamble is non-limiting here
June 22, 201812

13. Planet Bingo, LLC v. VKGS LLC
1. A system for managing a game of Bingo which comprises:
(a) a computer with a central processing unit (CPU) and with a memory and with a printer connected to the CPU;
(b) an input and output terminal connected to the CPU and memory of the computer; and
(c) a program in the computer enabling:
(i) input of at least two sets of Bingo numbers which are preselected by a player to be played in at least one selected
game of Bingo in a future period of time;
(ii) storage of the sets of Bingo numbers which are preselected by the player as a group in the memory of the
computer;
(iii) assignment by the computer of a player identifier unique to the player for the group having the sets of Bingo
numbers which are preselected by the player wherein the player identifier is assigned to the group for multiple
sessions of Bingo;
(iv) retrieval of the group using the player identifier;
(v) selection from the group by the player of at least one of the sets of Bingo numbers preselected by the player and
stored in the memory of the computer as the group for play in a selected game of Bingo in a specific session of
Bingo wherein a number of sets of Bingo numbers selected for play in the selected game of Bingo is less than a
total number of sets of Bingo numbers in the group;
(vi) addition by the computer of a control number for each set of Bingo numbers selected for play in the selected game
of Bingo;
(vii) output of a receipt with the control number, the set of Bingo numbers which is preselected and selected by the
player, a price for the set of Bingo numbers which is preselected, a date of the game of Bingo and optionally a
computer identification number; and
(viii) output for verification of a winning set of Bingo numbers by means of the control number which is input into the
computer by a manager of the game of Bingo.
June 22, 201813

14. Planet Bingo, LLC v. VKGS LLC (cont’d)
Managing the game of bingo consists solely of mental steps which can be
carried out by a human using pen and paper. The claims do not impose any
requirements that would make the invention impossible to carry out manually.
“Planet Bingo argues that “in real world use, literally thousands, if not millions
of preselected Bingo numbers are handled by the claimed computer
program,” making it impossible for the invention to be carried out manually.
But the claimed inventions do not require as much. At most, the claims
require “two sets of Bingo numbers,” “a player,” and “a manager.”
We need not, and do not, address whether a claimed invention requiring
many transactions might tip the scales of patent eligibility, as the claims fall
far short of capturing an invention that necessarily handles “thousands, if not
millions” of bingo numbers or players.
June 22, 201814

15. buySAFE, Inc. v. Google, Inc.
Claim 1. A method, comprising:
receiving, by at least one computer application program running on a computer
of a safe transaction service provider, a request from a first party for
obtaining a transaction performance guaranty service with respect to an
online commercial transaction following closing of the online commercial
transaction;
processing, by at least one computer application program running on the safe
transaction service provider computer, the request by underwriting the first
party in order to provide the transaction performance guaranty service to the
first party,
wherein the computer of the safe transaction service provider offers, via a
computer network, the transaction performance guaranty service that binds a
transaction performance guaranty to the online commercial transaction
involving the first party to guarantee the performance of the first party
following closing of the online commercial transaction.
June 22, 201815

16. Ultramercial, LLC v. Hulu,
LLC and WildTangent
only the abstract idea of
showing an advertisement
before delivering content.
consulting and updating an
activity log represent
insignificant “data-gathering
steps,
restricting public access
represents only insignificant
“[pre]-solution activity,”
narrowing the idea to the
Internet is an attempt to limit
the use of the abstract idea “to
a particular technological
environment.
Step 2:
“the claims simply instruct the
practitioner to implement the
abstract idea with routine,
conventional activity.”
June 22, 201816

17. DDR Holdings, LLC v. Hotels.com, L.P.
June 22, 201817

18. June 22, 201818
DDR Holdings, LLC v. Hotels.com, L.P. (Cont’d)
•Here, we note that the ’399 patent’s asserted claims do not recite a
mathematical algorithm.
•Nor do they recite a fundamental economic or
•longstanding commercial practice.
•Although the claims address a business challenge (retaining website visitors), it
is a challenge particular to the Internet.
•identifying the precise nature of the abstract
idea is not as straightforward as in Alice or some of our
other recent abstract idea cases.
Step 2
•these claims stand apart because they do not merely recite the performance of
some business practice known from the pre-Internet world along with the
requirement to perform it on the Internet.
•Instead, the claimed solution is necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks.

19. DDR Holdings, LLC v. Hotels.com, L.P. (Cont’d)
Unlike the claims in Ultramercial, the claims at issue here specify how
interactions with the Internet are manipulated to yield a desired result—a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink.
the claimed system generates and directs the visitor to the abovedescribed
hybrid web page that presents product information from the third-party and
visual “look and feel” elements from the host website.
the claims at issue do not attempt to preempt every application of the idea
of increasing sales by making two web pages look the same, or of any other
variant suggested by NLG. Rather, they recite a specific way to automate the
creation of a composite web page by an “outsource provider” that
incorporates elements from multiple sources in order to solve a problem
faced by websites on the Internet.
June 22, 201819

20. June 22, 201820
Vadim Braginsky
Partner
Patterson Thuente Pedersen, P.A.
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braginsky@ptslaw.com
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