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Fenwick & West LLP
#AliceStorm:
How Alice Has Crippled The Patent Law
Robert Sachs
Fenwick & West LLP
Fenwick & West LLP
At the same time, we tread carefully in
construing this exclusionary principle lest
it swallow all of p...
Don’t Worry, Software is Not Impacted…
 “This is not the death of software patents. . . . This will not
affect software p...
Fenwick & West LLP
Unintended Consequences
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
#AliceStorm @Federal Courts
5
 October 15, 2015
Fenwick & West LLP JANUARY 2015
Fenwick & West LLP
#AliceStorm @Federal Courts
8
Fenwick & West LLP
#AliceStorm @Federal Courts
9
Fenwick & West LLP
#AliceStorm @Federal Courts
10
District Courts with >= 2 §101
decisions
= 90% of all invalidity decisio...
Fenwick & West LLP
#AliceStorm @Federal Courts
11
 = 2 Decisions >= 3 Decisions
Fenwick & West LLP JANUARY 2015
Fenwick & West LLP JANUARY 2015
State Street
Bank (1998)
Fenwick & West LLP
Fenwick & West LLP
#AliceStorm @PTAB/CBM
15
 §101 fair game for CBM (but not IPR)
 PTAB has broad view of what qualifies...
#AliceStorm in the USPTO
Fenwick & West LLP
Rejections and Allowance Before and After Alice
JANUARY 2015PATENT LAW YEAR IN REVIEW
Section 101 Rejection Rates
in Biotech, Ecommerce
& Other Work Groups
Biotech= Art Units 1630, 1630, 1640,
1650, 1670
Ecom...
Fenwick & West LLP
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
Section 101 Rejection Rates Q1/2014 to Q1/2016.
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
Final §101 Rejection Rates
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
Status Analysis
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
Status Analysis by E-Commerce Technology
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
Ecommerce Abandonments, Mar. – Oct. 2015
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
Examiner % 101 Rejections in Ecommerce Art Units
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
E-Commerce Examiners’ Behave Differently
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
The Effect of #AliceStorm on USPTO Filings
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
The Effect of #AliceStorm on USPTO Filings
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
The Effect of #AliceStorm on USPTO Filings
JANUARY 2015PATENT LAW YEAR IN REVIEW
Fenwick & West LLP
Those who cannot remember the
past are condemned to repeat it.
George Santayana
Fenwick & West LLP
“Inventiveness” Pre-1952 Act
 “Results of inventive effort”
•Smith v. Goodyear Dental Vulcanite Co., 9...
Fenwick & West LLP
 “the exercise of the creative faculty amounting to a
meritorious invention”
•Expanded Metal Co. v. Br...
Fenwick & West LLP
McClain v. Ortmayer, 141 U.S. 419, 427 (1891)
“The truth is the word cannot be defined in such manner a...
Fenwick & West LLP
Sound and Fury Signifying Nothing
 “It has been stated to be the law that, in addition to being new
an...
Fenwick & West LLP
Rich, The Vague Concept of “Invention” as Replaced
by Section 103 of the 1952 Patent Act
46 J. Pat. Off...
Fenwick & West LLP
Rich: 1952 Act did three things:
36
Giles S. Rich, The Principles of Patentability, The George Washingt...
Fenwick & West LLP
Rich: 1952 Act did three things:
37
Fenwick & West LLP
Rich: 1952 Act did three things:
Fenwick & West LLP
History Repeats Itself: Eligibility as Inventiveness
 “The use of generic hardware and software runnin...
Fenwick & West LLP
Confusing Eligibility with Novelty
 “The concept of a database is not novel or unique.
Information exc...
Fenwick & West LLP
Confusing Eligibility with Definiteness and
Enablement
 “in the absence of any details about how the “...
Fenwick & West LLP
The USPTO is Waging War on §100(b)
100(b)The term “process” means process, art
or method, and includes ...
Fenwick & West LLP
In re Smith (CAFC)
 “At oral argument, the court asked, “[i]t has been my impression that the
PTO has ...
Fenwick & West LLP
 A method for alleviating congestion in a
communication network, the
communication network enabling th...
Sachs SCBA Apr 28
Sachs SCBA Apr 28
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Sachs SCBA Apr 28

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  • Excellent presentation, the data is compelling. I particularly agree with the admonition, "Abandon all hope ..." What could possibly happen to make the situation better, in our lifetime, given the proclivities of the S.Ct. and Congress?
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  • Robert, thank you for sharing. I particularly liked slide 7 (the scorecard, with 2 green squares for DDR), slide 18 (rejection rates of ecommerce vs. other patents), and slide 39, with the payoff quote about "sufficiently inventive." It may be a problem with the format used by LinkedIn, but slide 43 is cut-off and we can't see all of the second quote from In re Smith.
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Sachs SCBA Apr 28

  1. 1. Fenwick & West LLP #AliceStorm: How Alice Has Crippled The Patent Law Robert Sachs Fenwick & West LLP
  2. 2. Fenwick & West LLP At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, "all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.“ Alice Corp. v. CLS Bank Words of Caution…
  3. 3. Don’t Worry, Software is Not Impacted…  “This is not the death of software patents. . . . This will not affect software patents.” •Counsel for CLS Bank at Alice Oral Argument  Sotamayor: “Do you think we have to reach the patentability of software to answer this case?”  Solicitor General: “Well, I think you can – I think the answer to that question is no, not necessarily.” •Exchange during Alice Oral Argument
  4. 4. Fenwick & West LLP Unintended Consequences JANUARY 2015PATENT LAW YEAR IN REVIEW
  5. 5. Fenwick & West LLP #AliceStorm @Federal Courts 5  October 15, 2015
  6. 6. Fenwick & West LLP JANUARY 2015
  7. 7. Fenwick & West LLP #AliceStorm @Federal Courts 8
  8. 8. Fenwick & West LLP #AliceStorm @Federal Courts 9
  9. 9. Fenwick & West LLP #AliceStorm @Federal Courts 10 District Courts with >= 2 §101 decisions = 90% of all invalidity decisions
  10. 10. Fenwick & West LLP #AliceStorm @Federal Courts 11  = 2 Decisions >= 3 Decisions
  11. 11. Fenwick & West LLP JANUARY 2015
  12. 12. Fenwick & West LLP JANUARY 2015 State Street Bank (1998)
  13. 13. Fenwick & West LLP
  14. 14. Fenwick & West LLP #AliceStorm @PTAB/CBM 15  §101 fair game for CBM (but not IPR)  PTAB has broad view of what qualifies as “financial product or service” •“The Specification discloses that protection attributes are used to protect against unauthorized access of a data portion in a database and that banking is a field where protection against unauthorized access to databases that are used for administering and storing sensitive information is desired” CBM2015-00021  CBM decisions since Alice addressing §101 •97/114 institution decision on §101 grounds •61 final written decisions –61 find patents invalid Abandon all hope, ye who enter here
  15. 15. #AliceStorm in the USPTO
  16. 16. Fenwick & West LLP Rejections and Allowance Before and After Alice JANUARY 2015PATENT LAW YEAR IN REVIEW
  17. 17. Section 101 Rejection Rates in Biotech, Ecommerce & Other Work Groups Biotech= Art Units 1630, 1630, 1640, 1650, 1670 Ecommerce = Art Units 3620, 3680, 3690
  18. 18. Fenwick & West LLP JANUARY 2015PATENT LAW YEAR IN REVIEW
  19. 19. Fenwick & West LLP Section 101 Rejection Rates Q1/2014 to Q1/2016. JANUARY 2015PATENT LAW YEAR IN REVIEW
  20. 20. Fenwick & West LLP Final §101 Rejection Rates JANUARY 2015PATENT LAW YEAR IN REVIEW
  21. 21. Fenwick & West LLP Status Analysis JANUARY 2015PATENT LAW YEAR IN REVIEW
  22. 22. Fenwick & West LLP Status Analysis by E-Commerce Technology JANUARY 2015PATENT LAW YEAR IN REVIEW
  23. 23. Fenwick & West LLP Ecommerce Abandonments, Mar. – Oct. 2015 JANUARY 2015PATENT LAW YEAR IN REVIEW
  24. 24. Fenwick & West LLP Examiner % 101 Rejections in Ecommerce Art Units JANUARY 2015PATENT LAW YEAR IN REVIEW
  25. 25. Fenwick & West LLP E-Commerce Examiners’ Behave Differently JANUARY 2015PATENT LAW YEAR IN REVIEW
  26. 26. Fenwick & West LLP The Effect of #AliceStorm on USPTO Filings JANUARY 2015PATENT LAW YEAR IN REVIEW
  27. 27. Fenwick & West LLP The Effect of #AliceStorm on USPTO Filings JANUARY 2015PATENT LAW YEAR IN REVIEW
  28. 28. Fenwick & West LLP The Effect of #AliceStorm on USPTO Filings JANUARY 2015PATENT LAW YEAR IN REVIEW
  29. 29. Fenwick & West LLP Those who cannot remember the past are condemned to repeat it. George Santayana
  30. 30. Fenwick & West LLP “Inventiveness” Pre-1952 Act  “Results of inventive effort” •Smith v. Goodyear Dental Vulcanite Co., 93 U.S. 486, 497 (1876)  “A substantial invention or discovery.” •Atlantic Works v. Brady, 107 U.S. 192, 200 (1882)  “Exercise of inventive skill” •Ansonia Brass & Copper Co. v. Elec. Supply Co., 144 U.S. 11, 18 (1892)  “The creative work in the inventive faculty.” •Hollister v. Benedict & Burnham Mfg. Co., 113 U.S. 59, 73 (1885)  “Exercise of the inventive faculty,” •Potts v. Craeger, 155 U.S. 597, 608 (1895)
  31. 31. Fenwick & West LLP  “the exercise of the creative faculty amounting to a meritorious invention” •Expanded Metal Co. v. Bradford, 214 U.S. 366 (1909)  “An invention is the result of an inventive act.” •Walker on Patents, First Deller Ed., Vol. 1, p. 110 (1937)  “Something new, unexpected, and exciting.” •Thurber Corp. v. Fairchild Motor Corp., 269 F.2d 841, 849 (5th Cir. 1959)  “The flash of creative genius.” •Cuno Eng’g Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 32 “Inventiveness” Pre-1952 Act
  32. 32. Fenwick & West LLP McClain v. Ortmayer, 141 U.S. 419, 427 (1891) “The truth is the word cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not. In a given case we may be able to say that there is present invention of a very high order. In another we can see that there is lacking that impalpable something which distinguishes invention from simple mechanical skill.”
  33. 33. Fenwick & West LLP Sound and Fury Signifying Nothing  “It has been stated to be the law that, in addition to being new and useful, and invention, to be patentable, must involve ‘invention.’ Merely to state that proposition, in the absence of an initiation into the mysteries, sounds ridiculous.” •Giles S. Rich  “[T]he so-called ‘standard of invention’…is an ummeasurable quantity having different meanings for different persons.” •P.J. Federico
  34. 34. Fenwick & West LLP Rich, The Vague Concept of “Invention” as Replaced by Section 103 of the 1952 Patent Act 46 J. Pat. Off. Soc’y 855, 866 (1964)
  35. 35. Fenwick & West LLP Rich: 1952 Act did three things: 36 Giles S. Rich, The Principles of Patentability, The George Washington University Law Review, January 1960, pp. 393-407.
  36. 36. Fenwick & West LLP Rich: 1952 Act did three things: 37
  37. 37. Fenwick & West LLP Rich: 1952 Act did three things:
  38. 38. Fenwick & West LLP History Repeats Itself: Eligibility as Inventiveness  “The use of generic hardware and software running an intrusion detection application is not viewed as new and inventive” Intellectual Ventures I LLC v. Capital One Fin. Corp  “because Plaintiff’s insight…is not a sufficiently inventive concept, the Court concludes that the patents are drawn to an ineligible subject matter” HealthTrio, LLC v. Aetna, Inc.  “Here, the Court finds that the patent claims merely automate the practice of booking and tracking shipping containers; this automation is insufficient to transform the nature of the patents.” GT Nexus, Inc. v. Inttra, Inc. JANUARY 2015PATENT LAW YEAR IN REVIEW
  39. 39. Fenwick & West LLP Confusing Eligibility with Novelty  “The concept of a database is not novel or unique. Information exchanged between a database (as part of or remote from a computer) and the computer is not novel and adds nothing to the 101 analysis.”.OpenTV, Inc. v. Apple, Inc. JANUARY 2015PATENT LAW YEAR IN REVIEW
  40. 40. Fenwick & West LLP Confusing Eligibility with Definiteness and Enablement  “in the absence of any details about how the “expert system” works, the claims at issue are drawn to a patent ineligible abstract idea, satisfying Mayo/Alice step one.” Vehicle Intelligence v. Mercedes-Benz USA  The additional recitation of specific computer components such as a “database,” “memory,” “transceiver” and “wire-based network,” and computer functions such as “storing,” “transmitting” and “receiving,” are incapable of conferring the requisite specificity.” Clear With Computers LLC v. Altec Indus., Inc.  Claim “does not purport to limit itself to a specific way of converting a message from one layout to another-it simply covers the act of 'converting' messages”, TriPlay, Inc. v. WhatsApp Inc. JANUARY 2015PATENT LAW YEAR IN REVIEW
  41. 41. Fenwick & West LLP The USPTO is Waging War on §100(b) 100(b)The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. JANUARY 2015PATENT LAW YEAR IN REVIEW
  42. 42. Fenwick & West LLP In re Smith (CAFC)  “At oral argument, the court asked, “[i]t has been my impression that the PTO has sort of adopted the position that games are in general not going to be patent eligible post Bilski, is that a correct position? Games as a whole, any kind of card games … none of those would be allowed now?” PTO counsel answered, “[t]hat’s correct your honor. In fact, the Government argued in Bilski that things like card games should not be eligible.” Oral Argument at 13:33 In Re Smith, No. 2015-1664 (Dec. 10, 2015), “  “That is not to say that all inventions in the gaming arts would be foreclosed from patent protection under§ 101. We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice. The GovernmentJANUARY 2015PATENT LAW YEAR IN REVIEW
  43. 43. Fenwick & West LLP  A method for alleviating congestion in a communication network, the communication network enabling the flow of data to and from a plurality of end user devices that are connected to the network through a plurality of communication devices, the method comprising the steps of:  monitoring data flows to and from the plurality of end user devices for indications of congestion; and  controlling the data rate of at least one end user device in response to the congestion indications.  A method for reducing startup latency associated with a data transmission system having a first device configured to communicate with a second device over a communication channel, the method comprising the steps of:  establishing a call between the first device and the second device;  determining whether a characteristic of the communication channel is similar to a corresponding characteristic associated with a previously established communication channel; and  if the characteristic is similar to the corresponding characteristic, initializing at least one of the first and second devices using a number of stored parameters associated with the previously established communication Quiz: Which is Eligible? JANUARY 2015PATENT LAW YEAR IN REVIEW

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