Abstract Idea Analysis – OIP TECHNOLOGIES, INC. v. AMAZON.COM, INC.

OIP Technologies alleges that Amazon.com infringes on their patent that relates to a method of a price optimization in an e-commerce environment. Infringement is directed to claims regarding computer-implemented methods for “pricing a product for a sale”. OIP Technologies subsequently filed a lawsuit for patent infringement.

Amazon filed a motion to dismiss the complaint by OIP Technologies. District Court granted Amazon’s motion, finding that “the asserted claims merely use a general-purpose computer to implement the absract idea of ‘price optimization’ and is therefore ineligible”. District Court stated that “without the “insignificant computer-based limitaitons,” the claims merely “describe what any business owner or economist does in calculating a demand curve for given product.”

Under Section 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; however, laws of nature, natural phenomena, and abstract ideas are not patentable.

As per Supreme Court’s two-part test in Alice, the court must first determine whether the claims at issue are directed to a patent- ineligible concept”, such as an abstract idea. If so, the court must then consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible applicaiton.

Court remarks, “the claims are directed to the concept of offer-based price optimization”. This concept is similar to other “fundamental economic concepts found to be abstract ideas by the Supreme Court and this court. Claims merely recite “well understood, routine conventional activities”, either by requiring conventional computer activities or routine data-gathering steps. Moreover, the claims are exceptionally broad and the computer implementation limitations do little to limit their scope. The claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions. Both the prosecution history and the specification emphasize that the key distinguishing feature of the claims is the ability to automate or otherwise make more efficient traditional price-optimization methods.

Federal Circuit specify, nor does the claims’ recitation of “present[ing] [offers]to potential customers” and “gathering . . . statistics generated during said testing about how the potential customers responded to the offers” provide a meaningful limitation on the abstract idea. The processes claimed in the patent are well understood, routine and conventional data-gathering activities and therefore they render the claims patent ineligible.

The Federal Circuit concluded that the patent claims the abstract idea of offer-based price optimization and lacks an “inventive concept” sufficient to “transform” the claimed subject matter into a patent eligible application of that idea.

Obviousness – TRIVASCULAR, INC. v. SAMUELS

In 2013, Dr. Samuels filed a patent infringement action against TriVascular alleging infringement of patent ‘575, which claims inventions in the field of intraluminal stent technology. TriVasucular filed a petition for inter partes review (“IPR”) for obviousness pursuant to 35 U.S.C. § 103

In conjunction with the argument that appellee’s patent was obvious, TriVascular argues that the Board erred in the claim construction requiring the term “circumferential ridges” to mean a “raised strip disposed circumferentially about the outer surface of the inflatable cuff”. The court looks to the broadest reasonable interpretation here, which states the words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history. This rule however, does not give the Board the license to disregard the full claim language and written description when looking at words in a claim. Such disregard would lead to an unreasonable interpretation.

An interpretation is found to be reasonable when “the use of the words in the context of the written description and customarily by those of skill in the relevant art that accurately reflects both the ‘ordinary’ and ‘customary’ meaning of the terms in the claims”. Here, the Board used the definition of ‘ridge’ from a general purpose dictionary which considered in the context of the written description and plain language of the claims, was found to be proper by the court.

TriVascular then argued Appellee’s Patent to be invalid for obviousness. A patent may be found invalid as obvious if “there are a finite number of identified, predictable solutions, and a person of ordinary skill has good reason to pursue the known options within his or her technical grasp”. Because obviousness is a question of law based on underlying facts, the court takes a look at the patents in question side by side.

The Court found that while both patents were directed at stent technology, appellee’s patent teaches the use of inflatable, circumferential ridges that do not penetrate the vessel wall, unlike the prior art, which has the ridges designed to penetrate the vessel wall. ‘

TriVascular argues it would have been obvious to substitute these two versions of ridges, but the Court finds this unpersuasive and finds that this difference in these versions of ridges in appellee’s patent would destroy the basic objective of the barbs in the prior art.  Therefore, the Court affirmed the Board’s findings regarding the lack of a sufficient motivation to combine and the lack of a reasonable expectation of success in combining the prior art. The court found no error in the Boards claim construction or its judgment that TriVascular failed to meet its burden of demonstrating that the asserted claims are invalid as obvious.  Affirmed.

Section 101 Analysis – IN RE: RAY SMITH, AMANDA TEARS SMITH

Applicants filed a patent application titled “Blackjack Variation” which outlined a method of conducting a wagering game accompanied by the rules of the game. This application was originally rejected the application based on 35 U.S.C § 101, concluding the application because “an attempt to claim a new set of rules for playing a card game” which qualified as an abstract idea.

The United States Court of Appeals for the Federal Circuit examined the claim by applying the two-part test introduced in Mayo. Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 289. This two-part test requires the court to determine whether the claims are directed to a patent-ineligible concept such as an abstract idea, and whether the claims contain an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.

The Court finds the claims are directed to rules for conducting a wagers game and compare this to “other fundamental economic practices” and a method of hedging risk, both of which were found to be abstract ideas by the Supreme Court.

Even when a claim is found to be abstract, the court is required to look at the second step to see if there is an inventive concept to transform this abstract idea. The court found that appending purely conventional steps to an abstract idea does not supply a sufficiently inventive concept. The claims here require shuffling and dealing of standard playing cards, which are purely conventional activities.

Had a new deck of cards been required in the claims, there would have been a greater chance of it transforming the abstract idea. The Court affirms the lower court’s holdings and finds the idea to be an abstract idea without an inventive concept to transform the claim to a patent eligible application.

Federal Circuit Strikes Down More Myriad Cancer Test Patents

The Federal Circuit ruled Wednesday that three Myriad Genetics Inc. breast cancer test patents are invalid for claiming patent-ineligible subject matter, another major setback for the company after the U.S. Supreme Court ruled last year that it could not patent human genes.

In a win for Ambry Genetics Corp., which makes rival breast cancer tests that Myriad accused of infringement, the appeals court ruled that Myriad’s patents on single-stranded synthetic DNA molecules known as primers used in its tests are not any different from the isolated genes that the high court ruled could not be patented.

The court said that for the purposes of patent-eligibility, it makes no difference that the primers are created synthetically, since they are structurally identical to the ends of DNA strands found in nature.

The court also invalidated Myriad’s patents on methods of detecting mutations in the BRCA1 and BRCA2 genes associated with an increased risk of breast and ovarian cancer. The patents involve ways of comparing a patient’s genes with non-cancerous genes, which the court said is nothing more than an abstract idea that cannot be patented.

“Similar concerns to the ones the Supreme Court expressed in Myriad with respect to isolated DNA exist here: allowing a patent on the comparison step could impede a great swath of research relating to the BRCA genes, and it is antithetical to the patent laws to allow these basic building blocks of scientific research to be monopolized,” the court ruled.

Institution of Inter Partes Review IPR2014-00584

The United States Patent and Trademark Office Patent Trial and Appeal Board (PTAB) has instituted an Inter Partes Review against all the claims of the US Patent No. 7864503.

The petition was filed by Bayramoglu Law Offices representing Digital Empire Limited.

 

More information can be found on PTAB website using the following link:

 

https://ptabtrials.uspto.gov/prweb/PRWebLDAP2/HcI5xOSeX_yQRYZAnTXXCg%5B%5B*/!STANDARD?UserIdentifier=searchuser

 

Litigation News

Bayramoglu Law Offices is representing Digital Empire Limited in several patent lawsuits initiated in Southern District Court of California.

 

The case numbers are listed below:

3:14-CV-1688-GPC-NLS

3:14-CV-02077-BEN-NLS

3:14-CV-02079-AJB-RBB

3:14-CV-01608-BAS-KSC

US Supreme Court Decision on Abstract Idea

The Supreme Court has issued its opinion in Alice v. CLS Bank case.

In the case Alice v. CLS Bank: Alice Corp. owned several patents covering a computer system that helps with closing financial transactions by avoiding settlement risk (the risk that comes with any financial transaction if one party cannot uphold its end of the bargain). CLS Bank claimed the patents were invalid because they were nothing more than an abstract idea, and U.S. patent law has long held that abstract ideas cannot be patented. The district court agreed, finding the invention—which “simply provides the formula, or manner, in which to use an electronic intermediary to exchange obligations as a way to hedge against the risk of loss”—abstract, and therefore unpatentable.

But the U.S. Court of Appeals for the Federal Circuit—the appellate court that has exclusive jurisdiction over patent appeals—reversed that ruling, holding that implementing this invention on a computer system made it somehow nonabstract.

The Supreme Court court stated that if you have an idea so abstract that it cannot be patented, simply tying it to a “generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” It also stated that tying an abstract idea to “purely functional and generic” hardware similarly would not make the idea patentable.

Recent PTAB Decision

Bayramoglu Law Offices has recently successfully appealed a case to Patent Trial and Appeal Board (PTAB). The case application number is 11/963,796. The Appeal number is 2011-008945. The application was rejected by the Examiner. PTAB reversed the Examiner on all grounds therefore allowing the patent grant for the application. Considering the reversal rate of Examiners at PTAB is about 30.1%, this is a great example of how we at Bayramoglu Law Offices are able to use our knowledge and passion to help our clients.

USPTO Extends After Final Consideration Pilot For Patent Applications

The USPTO is extending a popular program that allows patent applicants to submit minor amendments for consideration after final rejection. Launched in May 2013, the USPTO’s After Final Consideration Pilot is designed to reduce patent application pendency and help applicants avoid the time and cost associated with Requests for Continued Examination (RCEs) after final rejection.

To take advantage of the program, applicants must submit a request and certification for consideration in the program, an amendment to at least one claim, and any fees that may be due. The amendment may not broaden the scope of the claims.

The Examiner will review the amendment and decide whether to accept it for additional consideration.  Factors in the Examiner’s decision include whether the Examiner’s review of the amendment will only require a limited amount of additional consideration and search. If the response does not place the application in condition for allowance, the Examiner will schedule an interview with the applicant.

The After Final Consideration Pilot was originally scheduled to end on September 30, 2013. The USPTO’s announcement extends the program to include requests that are filed through December 14, 2013.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Quick Path Information Disclosure Statement (QPIDS)

The Quick Path Information Disclosure Statement (QPIDS) pilot program is part of the USPTO’s on-going efforts towards compact prosecution and pendency reduction.

In particular, the QPIDS pilot program eliminates the requirement for processing of a request for continued examination (RCE) with an information disclosure statement (IDS) filed after payment of the issue fee in order for the IDS to be considered by the examiner.  Where the examiner determines that no item of information in the IDS necessitates reopening prosecution, the USPTO will issue a corrected notice of allowability.

The QPIDS pilot program has been extended to run through December 14, 2013. All compliant requests for consideration of an information disclosure statement under the QPIDS pilot program filed on or before December 14, 2013, will be considered.

USPTO Pilot Programs

USPTO After Final Consideration Pilot 2.0 

Like AFCP, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. Under AFCP 2.0, examiners will also use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with you, if your response does not place the application in condition for allowance. In this way, you will benefit from the additional search and consideration afforded by the pilot, even when the results do not lead to allowance.

In addition, the procedure for obtaining consideration under AFCP 2.0 has been revised. The revised procedure focuses the pilot on review of proposed claim amendments and allows the USPTO to better evaluate the pilot.

To be eligible for consideration under AFCP 2.0, you must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. Please see the notice published in the Federal Register at 78 Fed. Reg. 29117 for a complete description of how to request consideration under AFCP 2.0. As was the case with the AFCP, examiners will continue to use their professional judgment to decide whether the response can be fully considered under AFCP 2.0.  This will include determining whether any additional search is required and can be completed within the allotted time, in order to determine whether the application can be allowed.

As always, the option to request an interview with the examiner, consistent with MPEP 713, is available to you irrespective of whether the submission was considered under AFCP 2.0.

If you are considering filing a response to a final rejection under 37 CFR 1.116 that you believe will lead to allowance of your application with only limited further searching and/or consideration by the examiner, you should consider requesting consideration of the response under AFCP 2.0.

Click here for the guidelines related to the consideration of responses under AFCP 2.0.

US Supreme Court Decision on Patenting of Genomic DNA

The US Supreme Court, in a nearly unanimous ruling (Scalia joined the majority for most of the decision), has held that a piece of DNA that occurs naturally is not eligible for patenting. This means that any sequences that are normally present in the human genome—or that of any other organism—cannot be the subject of patent infringement.

You can find the complete article at the following address:
http://arstechnica.com/tech-policy/2013/06/supreme-court-blocks-patenting-of-genomic-dna/

USPTO Practices

  • Do you know that USPTO implemented a new program where an inventor or applicant can qualify for a “micro entity” wherein certain office fees are further reduced?  If you want to know more about it please contact us either at 702-724-2628 or send us an email with your question: in@bayramoglu-legal.com.
  • Do you know that you can make your application a “priority application” by paying the required fee and submitting a petition wherein if it is granted, USPTO examines and finalizes the examination of your patent application within 12 months from the application date?
  • Do you know that an oath or declaration has to be filed for a national phase application that is filed at the USPTO under 35 U.S.C. Section 371? Do you know that if an oath or declaration is not filed on the day that the application is filed, you will get a missing oath/declaration notification and you can file an oath or declaration within the time given to you in the office notice. You will also have to pay additional office fee based on your entity status.
  • Do you know that under U.S.C. 35 Section 112, a multiple dependent claim cannot depend on another multiple dependent claim?
  • Do you know that as an inventor you have the option to either file patent applications and prosecute patent applications by yourself at the USPTO or you can hire a Patent Agent or a Patent Attorney registered with the USPTO to represent you and help you with patent application prosecution at the USPTO?