35 U.S.C. §101
November 2, 2015
Stephen G. Kunin
skunin@oblon.com
Michael L. Kiklis
mkiklis@oblon.com
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
THE SUPREME COURT’S HISTORICAL
TREATMENT OF PATENT LAW
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From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer
Law & Business. Copyright © 2015 CCH Incorporated. All rights reserved.
THE SUPREME COURT’S HISTORICAL
TREATMENT OF PATENT LAW
3
From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer
Law & Business. Copyright © 2015 CCH Incorporated. All rights reserved.
Patentable Subject Matter
4
PATENTABLE SUBJECT MATTER
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From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer
Law & Business. Copyright © 2015 CCH Incorporated. All rights reserved.
PATENTABLE SUBJECT MATTER
6
From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer
Law & Business. Copyright © 2015 CCH Incorporated. All rights reserved.
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,
subject to the conditions and requirements of this title.
 35 U.S.C. § 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.
 Judicially created exceptions:
• “laws of nature, natural phenomena, and abstract ideas.”
Diehr (S. Ct. 1981)
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PATENTABLE SUBJECT
MATTER
 Le Roy v. Tatham (1852)
• Principles are not patent-eligible:
 “It is admitted, that a principle is not patentable. A principle, in
the abstract, is a fundamental truth; an original cause; a
motive; these cannot be patented, as no one can claim in either
of them an exclusive right. Nor can an exclusive right exist to
a new power, should one be discovered in addition to those
already known.”
• Need a practical application for patent eligibility:
 “A new property discovered in matter, when practically applied
. . . is patentable.”
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From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer
Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
PATENTABLE SUBJECT
MATTER
 Cochrane v. Deener (1876)
• Definition of process includes transformation:
 “A process is a mode of treatment of certain materials to
produce a given result. It is an act, or a series of acts,
performed upon the subject-matter to be transformed and
reduced to a different state or thing. If new and useful, it is just
as patentable as is a piece of machinery. In the language of the
patent law, it is an art. The machinery pointed out as suitable
to perform the process may or may not be new or patentable;
whilst the process itself may be altogether new, and produce
an entirely new result.”
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From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer
Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
PATENTABLE SUBJECT
MATTER
 Expanded Metal Co. v. Bradford (1909)
• Definition of process includes machines:
 “We therefore reach the conclusion that an invention or
discovery of a process or method involving mechanical
operations, and producing a new and useful result, may be
within the protection of the Federal statute, and entitle the
inventor to a patent for his discovery.”
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From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer
Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
PATENTABLE SUBJECT
MATTER
 Recently active area of law
• Alice v. CLS
• Association for Molecular Pathology v. Myriad
• Mayo Collaborative Services v. Prometheus Labs. Inc.
• Bilski v. Kappos
 Lessons from Supreme Court
• Proactive Court
• Little deference to the U.S. Government’s position or USPTO’s
practice
• Demonstrates a trend that § 101 should be construed narrowly
11
From the book, The Supreme Court on Patent Law by Michael L. Kiklis published by Wolters Kluwer
Law & Business. Copyright © 2014 CCH Incorporated. All rights reserved.
PATENTABLE SUBJECT
MATTER
 Trilogy of Supreme Court cases:
• Gottschalk v. Benson, 409 U.S. 63 (1972)
• Parker v. Flook, 437 U.S. 584 (1978)
• Diamond v. Diehr, 450 U.S. 175 (1981)
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GOTTSCHALK V. BENSON
(S. CT. 1972)
 Binary Coded Decimals (BCD) to pure binary conversion
process
 Abstract:
• “Here the ‘process’ claim is so abstract and sweeping as to
cover both known and unknown uses of the BCD to pure
binary conversion.”
 The practical effect of patenting the claimed BCD to binary
conversion system would be to patent an idea
 Congress should decide whether computer programs are
patentable
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PARKER V. FLOOK
(S. CT. 1978)
 Method of updating alarm limits
 The only difference between conventional methods and that
described in the patent application was the inclusion of a
mathematical formula
 Point-of-novelty test:
• “Respondent’s process is unpatentable under § 101, not
because it contains a mathematical algorithm as one
component, but because once that algorithm is assumed to
be within the prior art, the application, considered as a
whole, contains no patentable invention.”
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DIAMOND V. DIEHR
(S. CT. 1981)

Process for molding rubber
•

Review claim as a whole, no dissection:
•

“[W]hen a claim containing a mathematical formula implements or applies that
formula in a structure or process which, when considered as a whole, is performing a
function which the patent laws were designed to protect (e.g., transforming or
reducing an article to a different state or thing), then the claim satisfies the
requirements of § 101.”
Reject point-of-novelty test:
•
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“We view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula. We recognize, of
course, that when a claim recites a mathematical formula (or scientific principle or
phenomenon of nature), an inquiry must be made into whether the claim is seeking
patent protection for that formula in the abstract.”
“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of
no relevance in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.”
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BILSKI V. KAPPOS
(S. CT. 2010)

The Machine-or-Transformation Test:
•


M-O-T is not the sole test for determining patent eligibility, instead it is
"a useful and important clue, an investigative tool.”
Abstract Idea Analysis:
•
•

Preemption: “The concept of hedging . . . is an unpatentable abstract idea . . . .
Allowing [Bilski] to patent risk hedging would preempt use of this approach in all
fields, and would effectively grant a monopoly over an abstract idea.”
Limiting an abstract idea to one field of use or adding token post-solution components
is not enough
Back to the Wild West:
•
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“a claimed process is patent eligible if: (1) it is tied to a particular machine or
apparatus, or (2) it transforms a particular article into a different state or thing.”
“And nothing in today’s opinion should be read as endorsing interpretations of §101
that the [Fed. Cir.] has used in the past.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
MAYO COLLABORATIVE SERVICES
V. PROMETHEUS LABS, INC.
(S. CT. 2012)
 Appeal following post-Bilski GVR
 Claims directed to a drug administration process
 “to transform an unpatentable law of nature into a patenteligible application of such law, one must do more than simply
state the law of nature while adding the words ‘apply it.’”
 Patents should not be upheld where the claim too broadly
preempts the use of the natural law
 Court dissected the claim elements:
• “To put the matter more succinctly, the claims inform a relevant
audience about certain laws of nature; any additional steps
consist of well-understood, routine, conventional activity
already engaged in by the scientific community”
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MAYO COLLABORATIVE SERVICES
V. PROMETHEUS LABS, INC.
(CONT’D)


“Other cases offer further support for the view that simply appending
conventional steps, specified at a high level of generality, to laws of
nature, natural phenomena, and abstract ideas cannot make those
laws, phenomena, and ideas patentable.”
Point-of-novelty test?
• “We recognize that, in evaluating the significance of additional steps,
the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry
might sometimes overlap. But that need not always be so.”


The M-O-T test does not trump the law of nature exclusion
The proper role of §101:
• The Court rejected the Government’s argument that virtually any step
beyond the law of nature should render the claim patent-eligible under
§101, because §§102, 103, and 112 are sufficient to perform the
screening function
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CLS BANK V. ALICE CORP.
(FED. CIR. 2013, EN BANC)
 Case was heard en banc in an attempt to address uncertainty
 Questions presented:
1) What test should the court adopt to determine whether a
computer-implemented invention is a patent ineligible “abstract
idea”; and when, if ever, does the presence of a computer in a
claim lend patent eligibility to an otherwise patent-ineligible idea?
2) In assessing patent eligibility under 35 U.S.C. § 101 of a
computer-implemented invention, should it matter whether the
invention is claimed as a method, system, or storage medium;
and should such claims at times be considered equivalent for §
101 purposes?
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CLS BANK V. ALICE CORP.
(FED. CIR. 2013, EN BANC)
(CONT’D)
 Fed. Cir. issued one-paragraph per curiam opinion
• Majority found method and computer-readable
medium claims patent ineligible
• Even split on the patent eligibility of system
claims
• Result: patent-ineligibility affirmance of lower
court’s decision
• No rationale was provided
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CLS BANK V. ALICE CORP.
(FED. CIR. 2013, EN BANC)
(CONT’D)
 Five non-precedential opinions were issued that provide insight
into thinking of majority of Judges
 Agreement between Judges (Lourie and Rader opinions):
• Mayo decision does not resurrect the point-of-novelty test
• Broad claims do not necessarily fail the §101 inquiry
• District Court §101 challenges must overcome clear-andconvincing evidentiary standard
• Proper §101 inquiry under Mayo involves determination of
whether claim includes meaningful limitations beyond an
abstract idea instead of novelty assessment
 No agreement on what makes a limitation meaningful
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ALICE V. CLS
(S. CT. 2014)
 Issue:
• Patentable subject matter for computerrelated inventions under 35 U.S.C. § 101.
 Decided: June 19. Unanimous decision.
 Invention: Mitigating settlement risk
 High level points:
• Court dissected claims and considered them
as an ordered whole
• System and C-R medium claims fell with
method claims
• Point-of-novelty test?
22
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ALICE V. CLS
(CONT’D)
 Court’s concern is with preemption
 Must distinguish between the “building
blocks of human ingenuity and those that
integrate the building blocks into
something more” rendering them patent
eligible.
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ALICE V. CLS
(CONT’D)
 Used Mayo framework:
1. Determine whether claims are directed to a law
of nature, natural phenomena, or abstract idea;
2. If so, then ask “What else is there in the claims
before us?”


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Consider elements of claim individually and as an
ordered combination to determine if the additional
elements “transform the . . . claim into patent-eligible”
subject matter.
This is a “search for an ‘inventive concept’ . . . An
element or combination of elements that is ‘sufficient
to ensure that the patent in practice amounts to
significantly more than a patent upon” the abstract
idea.
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ALICE V. CLS
(CONT’D)
 Step one:
• The Court refers to two books and states:
The claims are drawn to the “abstract idea” of
intermediated settlement, which is a fundamental concept
It “is a building block of the modern economy”
• Compared to Bilski:
Like Bilski’s hedging, intermediated settlement is an
abstract idea.
“In any event, we need not labor to delimit the precise
contours of the ‘abstract ideas’ category in this case. It is
enough to recognize that there is no meaningful distinction
between the concept of risk hedging in Bilski and the
concept of intermediated settlement at issue here.”
• No clear guidance
25
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ALICE V. CLS
(CONT’D)
 Step two:
• A claim that recites an abstract idea must include
“additional features” to ensure “that the [claim] is
more than a drafting effort designed to
monopolize the [abstract idea].”
• Per Mayo, need more than “apply it.”
• The computer implementation must supply the
necessary “inventive concept” – what does
“inventive concept” mean?
26
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ALICE V. CLS
(CONT’D)
 Step two (cont’d):
• Mere recitation of a generic computer is not
enough
• Nor is limiting the claim to a technological
environment
• “[T]he relevant question is whether the claims
here do more than simply instruct the practitioner
to implement the abstract idea of intermediated
settlement on a generic computer. They do not.”
27
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ALICE V. CLS
(CONT’D)
 Step two (cont’d):
• The claim elements separately are “purely
conventional”
• “In short, each step does no more than require a
generic computer to perform generic computer
functions.”
• Considered as an ordered combination, the
claims “simply recite the concept of intermediated
settlement as performed by a generic computer.”
They do not improve the functioning of the computer
itself
“Nor do they effect an improvement in any other
technology or technical field.”
Safe harbors?
28
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ALICE V. CLS
(CONT’D)
 System and C-R Medium Claims
• “Petitioner conceded below that its media
claims rise or fall with its method claims.”
• System claims
Purely functional and generic
None of the hardware recited “offers a meaningful
limitation beyond generally linking” the method to
a “particular technological environment” –
implementation on a computer
“Put another way, the system claims are no
different from the method claims in substance.”
29
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ALICE V. CLS - CONCLUSIONS
 Clarity?
 Will the Fed. Cir. resist the point-ofnovelty test and continue with its
“meaningful limitations” test?
 Will the PTO do the same?
30
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DIGITECH IMAGE TECHS., LLC V.
ELECTRONICS FOR IMAGING, INC.
(FED. CIR. JULY 11, 2014)
 Holding:
• Claims invalid under § 101
 Rationale:
• “Device profile” claims:
 “The asserted claims are not directed to any tangible embodiment
of this information (i.e., in physical memory or other medium) or
claim any tangible part of the digital processing system.”
• Process claims:
 Abstract Idea? - “The method in the '415 patent claims an abstract
idea because it describes a process of organizing information
through mathematical correlations and is not tied to a specific
structure or machine.”
 Inventive concept? - “Contrary to Digitech's argument, nothing in
the claim language expressly ties the method to an image
processor.”
31
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I/P ENGINE, INC. V. AOL INC.
(FED. CIR. AUG. 15, 2014)
 Holding:
• Claims invalid under § 101
 Rationale:
• Abstract Idea?
“The asserted claims simply describe the well-known and
widely-applied concept that it is often helpful to have both
content-based and collaborative information about a
specific area of interest.”
• Inventive Concept?
“I/P Engine’s claimed system is merely an Internet iteration
of the basic concept of combining content and
collaborative data, relying for implementation on ‘a generic
computer to perform generic computer functions.’”
32
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PLANET BINGO, LLC. V. VKGS LLC
(FED. CIR. AUG. 26, 2014)
 Holding:
• Claims invalid under § 101
 Rationale:
• Abstract Idea?
“[T]hese claims are directed to the abstract idea of ‘solv[ing
a] tampering problem and also minimiz[ing] other security
risks’ during bingo ticket purchases.”
• Inventive Concept?
“[T]he claims recite a program that is used for the generic
functions of storing, retrieving, and verifying …. And, as
was the case in Alice, ‘the function performed by the
computer at each step of the process is “[p]urely
conventional.'’”
33
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BUYSAFE, INC. V. GOOGLE, INC.
(FED. CIR. SEPT. 3, 2014)
 Holding:
• Claims invalid under § 101
 Rationale:
• Abstract Idea?
“The claims are squarely about creating a contractual
relationship—a ‘transaction performance guaranty’—that
is beyond question of ancient lineage.”
“The claims thus are directed to an abstract idea.”
• Inventive Concept?
“The claims' invocation of computers adds no inventive
concept.”
34
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ULTRAMERCIAL, INC. V. HULU, LLC
(FED. CIR. NOV. 14, 2014)


Holding:
• Claims invalid under § 101
Rationale:
• The panel “found” an abstract idea with little analysis:
 The process of receiving copyrighted media, selecting an ad, offering the media
in exchange for watching the selected ad, displaying the ad, allowing the
consumer access to the media, and receiving payment from the sponsor of the ad
all describe an abstract idea, devoid of a concrete or tangible application.
• The panel performed a point-of-novelty analysis
 In any event, any novelty in implementation of the idea is a factor to be
considered only in the second step of the Alice analysis.
 Adding routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and use
of the Internet does not transform an otherwise abstract idea into patent-eligible
subject matter. Instead, the claimed sequence of steps comprises only
“conventional steps, specified at a high level of generality,” which is insufficient to
supply an “inventive concept.”
• The panel also applied the MOT test
 The claims of the ’545 patent, however, are not tied to any particular novel
machine or apparatus, only a general purpose computer.
35
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
ULTRAMERCIAL, INC. V. HULU, LLC
(FED. CIR. NOV. 14, 2014)(MAYER CONC.)
 § 101 is a threshold question that should be
decided at the outset of litigation
 No presumption of eligibility for § 101
 Alice announced a technical arts test
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DDR HOLDINGS, LLC V. HOTELS.COM, L.P.
(FED. CIR. DEC. 5, 2014)
 Holding:
• Claims valid under § 101
• Affirmed the district court’s denial of the motion for JMOL of invalidity
under § 101
 Rationale:
• The panel found it difficult to determine the abstract idea:
 “[I]dentifying the precise nature of the abstract idea is not as
straightforward as in Alice or some of our other recent abstract idea
cases.”
• The panel held that the claims satisfied the Mayo/Alice step
two:
 “[T]hese 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.”
37
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
BRCA1- & BRCA2-BASED HEREDITARY CANCER
TEST PATENT LITIG. V. AMBRY GENETICS CORP.
(FED. CIR. DEC. 17, 2014)
 Holding:
• Claims invalid under § 101
• Affirmed the district court’s denial of the motion for preliminary
injunction because the claims are invalid under § 101
 Rationale:
• The panel held that their previous 2012 opinion in Myriad
already determined that the claims were directed to an
abstract idea:
 “Claims 7 and 8 at issue here depend from claim 1. … In our 2012
decision, we held that claim 1 was patent ineligible because it claimed
an abstract mental process of 'comparing' and 'analyzing' two gene
sequences.”
• The panel held that the claims “do not add ‘enough’ to make
the claims as a whole patent-eligible”:
 “Nothing is added by identifying the techniques to be used in making
the comparison because those comparison techniques were the wellunderstood, routine, and conventional techniques that a scientist would
have thought of when instructed to compare two gene sequences.”
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CONTENT EXTRACTION & TRANSMISSION LLC
V. WELLS FARGO BANK, N.A.
(FED. CIR. DEC. 23, 2014)
 Holding:
• Claims invalid under § 101
 Rationale:
• The panel compared the claims at issue to those found
invalid in Alice and held that the claims were directed to an
abstract idea:
 “[T]he asserted patents are drawn to the abstract idea of 1) collecting
data, 2) recognizing certain data within the collected data set, and 3)
storing that recognized data in a memory. The concept of data
collection, recognition, and storage is undisputedly well-known.”
• The panel held that the claims did not contain any limitation
that transformed the patent-ineligible abstract idea into a
patent-eligible invention:
 “There is no ‘inventive concept’ in CET’s use of a generic scanner and
computer to perform well-understood, routine, and conventional
activities commonly used in industry.”
39
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ALLVOICE DEVS. US, LLC V. MICROSOFT CORP.
(FED. CIR. MAY 22, 2015) (UNPUBLISHED)
 Holding:
• Claims invalid under § 101
 Rationale:
• The panel held that the claims were not directed to any of
the categories of patent eligible subject matter:
 The independent claims were directed to a “speech-recognition
interface”
 “Here, claims 60-68 of the ‘273 Patent do not recite a process or
tangible or physical object and, thus, do not fall within any of the
categories of eligible subject matter.”
• The panel rejected the patent owner’s argument that the
claims were patent eligible as “software instructions”:
 “Software may be patent eligible, but when a claim is not directed
towards a process, the subject matter must exist in tangible form. Here,
the disputed claims merely claim software instructions without any
hardware limitations.”
40
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OIP TECHS., INC. V. AMAZON.COM, INC.
(FED. CIR. JUNE 11, 2015)
 Holding:
• Claims invalid under § 101
 Rationale:
• The panel held that the claims were directed to an
abstract idea:
“[T]he claims are directed to the concept of offer-based price
optimization. … This concept of ‘offer based pricing’ is similar to
other ‘fundamental economic concepts’ found to be abstract
ideas by the Supreme Court and this court.”
• The panel held that the claims did not contain any
limitation that transformed the patent-ineligible
abstract idea into a patent-eligible invention:
“Beyond the abstract idea of offer-based price optimization, the
claims merely recite ‘well-understood, routine conventional
activit[ies],’ either by requiring conventional computer activities
or routine data-gathering steps.”
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ARIOSA DIAGNOSTICS, INC. V. SEQUENOM, INC.
(FED. CIR. JUNE 12, 2015)
 Holding:
• Claims invalid under § 101
 Rationale:
• The panel held that the claims were directed to a
naturally occurring phenomenon:
“Thus, the claims at issue, as informed by the specification, are
generally directed to detecting the presence of a naturally
occurring thing or a natural phenomenon, cffDNA in maternal
plasma or serum.”
• The panel held that the claims did not contain an
inventive concept:
“The method at issue here amounts to a general instruction to
doctors to apply routine, conventional techniques when seeking
to detect cffDNA. Because the method steps were wellunderstood, conventional and routine, the method of detecting
paternally inherited cffDNA is not new and useful.”
42
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
INTERNET PATENTS CORP. V.
ACTIVE NETWORK, INC.
(FED. CIR. JUNE 23, 2015)
 Holding:
• Claims invalid under § 101
 Rationale:
• The panel held that the claims were directed to an
abstract idea:
“We agree with the district court that the character of the
claimed invention is an abstract idea: the idea of retaining
information in the navigation of online forms.”
• The panel held that the claims did not contain an
inventive concept:
The panel held that all the claims “are directed to the idea
itself” and do not contain any inventive concept.
The panel describes the claims as being directed to
“conventional,” “well-known,” and “common” features.
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Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
INTELLECTUAL VENTURES I LLC V.
CAPITAL ONE BANK (USA)
(FED. CIR. JULY 6, 2015)


Holding:
• Claims of the ’137 and ’382 patents invalid under § 101
Rationale for the ’137 patent:
• The panel held that the claims were directed to an abstract idea:
 “Here, the patent claims are directed to an abstract idea: tracking financial
transactions to determine whether they exceed a pre-set spending limit (i.e.,
budgeting).”
 “The abstract idea here is not meaningfully different from the ideas found to
be abstract in other cases before the Supreme Court and our court involving
methods of organizing human activity.”
• The panel held that the claims did not contain an inventive
concept:
 “The recited elements, e.g., a database, a user profile (‘a profile keyed to a
user identity,’ …) and a communication medium, are all generic computer
elements.”
 “Instructing one to ‘apply’ an abstract idea and reciting no more than generic
computer elements performing generic computer tasks does not make an
abstract idea patent-eligible.”
44
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
INTELLECTUAL VENTURES I LLC V.
CAPITAL ONE BANK (USA)
(CON’T)

Rationale for the ’382 patent:
• The panel held that “the claim relates to customizing information based on
(1) information known about the user and (2) navigation data.”
• The panel held that both aspects of the claims were directed to abstract
ideas:
 “With respect to the first aspect, … [t]his sort of information tailoring is ‘a fundamental . .
. practice long prevalent in our system . . . .’ Id. There is no dispute that newspaper
inserts had often been tailored based on information known about the customer….
Providing this minimal tailoring … is an abstract idea.”
 “With respect to the second aspect, … Intellectual Ventures did not challenge the
conclusion that tailoring content based on the time of day at which the user viewed the
content is within the scope of the claim limitation. Tailoring information based on the
time of day of viewing is also an abstract, overly broad concept long-practiced in our
society.”
•
The panel held that the claims did not contain an inventive concept:
 “Intellectual Ventures argues that claims limited to dynamic presentation of data …
supplies an inventive concept. … [T]he fact that the web site returns the pre-designed
ad more quickly than a newspaper could send the user a location-specific
advertisement insert does not confer patent eligibility.”
 “Intellectual Ventures argues that the ‘interactive interface’ is a specific application of the
abstract idea that provides an inventive concept. … Rather, the ‘interactive interface’
simply describes a generic web server with attendant software, tasked with providing
web pages to and communicating with the user’s computer.”
45
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
VERSATA DEV. GROUP, INC. V. SAP AM., INC.
(FED. CIR. JULY 9, 2015)


Holding:
• Claims invalid under § 101
• Affirmed the PTAB’s Final Written Decision
Rationale:
• The panel held that the claims were directed to an abstract idea:
 “Claims 17 and 26-29 of the ’350 patent are directed to the abstract idea of
determining a price, using organizational and product group hierarchies, in the
same way that the claims in Alice were directed to the abstract idea of
intermediated settlement, and the claims in Bilski were directed to the abstract
idea of risk hedging.”
• The panel held that the claims did not contain an inventive
concept:
 “[T]he function performed by the computer at each step is purely conventional.”
 “For example, the limitations of claim 17 involve arranging a hierarchy of
organizational and product groups, storing pricing information, retrieving
applicable pricing information, sorting pricing information, eliminating less
restrictive pricing information, and determining the price. All of these limitations
are well-understood, routine, conventional activities previously known to the
industry.”
46
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
DISTRICT COURT CASES
Date
District
Case Name
Outcome
7/8/2014
S.D.N.Y.
Claims invalid under § 101
Summary Judgment
7/16/2014 D. Del.
8/19/2014 D.N.J.
9/2/2014 E.D. Tex.
DietGoal Innovations LLC v. Bravo Media LLC (Div. of
NBC Universal Media, LLC)
Comcast IP Holdings I, LLC v. Sprint Communs. Co. L.P.
Data Distrib. Techs., LLC v. Brer Affiliates, Inc.
Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc.
Claims invalid under § 101
Denied
Claims invalid under § 101
9/3/2014
D. Del.
Genetic Techs. Ltd. v. Lab. Corp. of Am. Holdings
Claims invalid under § 101
9/3/2014
9/3/2014
9/4/2014
9/5/2014
D. Del.
D. Del.
C.D. Cal.
E.D.
Mich.
Tuxis Techs., LLC v. Amazon.com, Inc.
Walker Digital, LLC v. Google, Inc.
Eclipse IP LLC v. McKinley Equip. Corp.
Autoform Eng'g GMBH v. Eng’g Tech. Assocs.
Claims invalid under § 101
Claims invalid under § 101
Claims invalid under § 101
Denied
Summary Judgment
Motion to Dismiss
Judgment on the
Pleadings
Motion to Dismiss
(Magistrate Judge
Opinion only)
Motion to Dismiss
Summary Judgment
Motion to Dismiss
Summary Judgment
9/11/2014 M.D. Fla.
9/18/2014 D. Del.
Every Penny Counts, Inc. v. Wells Fargo Bank, N.A.
Helios Software, LLC v. Spectorsoft Corp.
Claims invalid under § 101
Claims valid under § 101
Summary Judgment
Summary Judgment
9/19/2014 N.D. Cal.
Open Text S.A. v. Alfresco Software Ltd.
Claims invalid under § 101
Motion to Dismiss
47
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
Procedural Context
DISTRICT COURT CASES
Date
District
Case Name
Outcome
9/22/2014
C.D. Cal.
Claims invalid under § 101
Judgment on the
Pleadings
9/29/2014
C.D. Cal.
McRO, Inc. v. Namco Bandai Games Am., Inc.
(consolidated case combining 20 cases) and McRo, Inc.
v. Valve Corp. (consolidated case combining 3 cases)
CMG Fin. Servs. v. Pac. Trust Bank, F.S.B.
Claims invalid under § 101
Summary Judgment
9/29/2014
9/30/2014
11/3/2014
11/3/2014
11/12/2014
12/15/2014
N.D. Ill.
N.D. Cal.
C.D. Cal.
C.D. Cal.
C.D. Cal.
D. Del.
Denied
Claims invalid under § 101
Claims invalid under § 101
Claims invalid under § 101
Denied
Claims invalid under § 101
Motion to Dismiss
Motion to Dismiss
Summary Judgment
Summary Judgment
Summary Judgment
Summary Judgment
12/16/2014
N.D. Cal.
Card Verification Solutions, LLC v. Citigroup Inc.
Cogent Med., Inc. v. Elsevier Inc.
Enfish, LLC v. Microsoft Corp.
Cal. Inst. of Tech. v. Hughes Communs., Inc.
Ameranth, Inc. v. Genesis Gaming Solutions, Inc.
Joao Bock Transaction Sys., LLC v. Jack Henry &
Assocs.
OpenTV, Inc. v. Netflix Inc.
12/17/2014
12/18/2014
D. Del.
D. Del.
IpLearn v. K12 Inc.
Cloud Satchel, LLC v. Amazon.com, Inc.
48
Procedural Context
Some claims invalid under
Summary Judgment
§ 101 (2 patents) and denied
as to other claims (1 patent)
Claims invalid under § 101 Summary Judgment
Claims invalid under § 101 Summary Judgment
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
DISTRICT COURT CASES
Date
District
Case Name
Outcome
Procedural Context
12/18/2014 D. Del.
Intellectual Ventures I LLC v. Mfrs. & Traders Trust Co.
12/23/2014 D. Utah
KomBea Corp. v. Noguar L.C.
Some claims invalid under
Motion to Dismiss
§ 101 (3 patents) and denied
as to other claims (1 patent)
Claims invalid under § 101 Summary Judgment
12/23/2014 C.D. Cal.
MyMedicalRecords, Inc. v. Walgreen Co.
Claims invalid under § 101
12/23/2014 C.D. Cal.
Morsa v. Facebook, Inc.
Claims invalid under § 101
12/23/2014 S.D. Tex. Fairfield Indus. v. Wireless Seismic, Inc.
12/30/2014 W.D. Tex. Morales v. Square, Inc.
Denied
Claim invalid under § 101
1/2/2015
1/12/2015
1/15/2015
1/20/2015
N.D. Cal.
C.D. Cal.
D.N.H.
N.D. Cal.
Bascom Research, LLC v. LinkedIn, Inc.
Mortg. Grader, Inc. v. Costco Wholesale Corp.
E. Coast Sheet Metal Fabricating Corp. v. Autodesk, Inc.
Open Text S.A. v. Box, Inc.
Claims invalid under § 101
Claims invalid under § 101
Claims invalid under § 101
Claims invalid under § 101
1/20/2015
1/21/2015
N.D. Cal.
E.D. Va.
Synopsys, Inc. v. Mentor Graphics Corp.
CertusView Techs., LLC v. S&N Locating Servs.
Claims invalid under § 101
Claims invalid under § 101
49
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
Judgment on the
Pleadings
Judgment on the
Pleadings
Motion to Dismiss
Motion to Dismiss
Summary Judgment
Summary Judgment
Summary Judgment
Judgment on the
Pleadings
Summary Judgment
Judgment on the
Pleadings
DISTRICT COURT CASES
Date
District
Case Name
Outcome
Procedural Context
1/27/2015
D. Del.
Money Suite Co. v. 21st Century Ins. & Fin. Servs.
Claim invalid under § 101
Motion to Dismiss
1/29/2015
N.D. Ill.
Claims invalid under § 101
2/6/2015
2/9/2015
E.D. Va.
M.D. Fla.
Vehicle Intelligence & Safety LLC v. Mercedes-Benz
USA, LLC
In re TLI Communs. LLC Patent Litig.
Stoneeagle Servs. v. Pay-Plus Solutions
2/10/2015
2/11/2015
M.D. Fla.
C.D. Cal.
Enpat, Inc. v. Tenrox Inc.
Essociate, Inc. v. 4355768 Canada Inc. and Essociate,
Inc. v. Clickbooth.com
Claims invalid under § 101
Claims invalid under § 101
Judgment on the
Pleadings
Motion to Dismiss
Judgment on the
Pleadings
Summary Judgment
Judgment on the
Pleadings
2/13/2015
2/18/2015
E.D. Tex.
W.D.
Wis.
Smartflash LLC v. Apple, Inc.
Ameritox, Ltd. v. Millennium Health, LLC
2/24/2015
2/24/2015
N.D. Ill.
D. Del.
Trading Techs. Int'l v. CQG, Inc.
Intellectual Ventures I, LLC v. Motorola Mobility LLC
3/3/2015
E.D. Tex.
Clear with Computers, LLC v. Altec Indus.
Denied
Some claims invalid under
§ 101 (1 patent) and denied
as to other claims (1 patent)
Denied
Some claims invalid under
§ 101 (1 patent) and denied
as to other claims (1 patent)
Claims invalid under § 101
50
Claims invalid under § 101
Denied
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
Summary Judgment
Summary Judgment
J.M.O.L.
Summary Judgment
Motion to Dismiss
DISTRICT COURT CASES
Date
District
Case Name
Outcome
Procedural Context
3/10/2015
N.D. Cal.
Hewlett Packard Co. v. ServiceNow, Inc.
Claims invalid under § 101
Summary Judgment
3/11/2015
D. Del.
Tenon & Groove, LLC v. Plusgrade S.E.C.
Claims invalid under § 101
Summary Judgment
3/13/2015
N.D. Ill.
Celsis in Vitro, Inc. v. CellzDirect, Inc.
Claims invalid under § 101
Summary Judgment
3/17/2015
C.D. Cal.
Modern Telecom Sys. LLC v. Juno Online Servs.
Denied
3/18/2015
3/25/2015
D. Del.
D. Del.
Priceplay.com v. AOL Adver., Inc.
Tuxis Techs., LLC v. Amazon.com, Inc.
Claims invalid under § 101
Claims invalid under § 101
Judgment on the
Pleadings
Motion to Dismiss
Motion to Dismiss
3/17/2015
S.D. Cal
Advanced Auctions LLC v. Ebay Inc.
Claims invalid under § 101
3/29/2015
E.D. Tex.
Denied
3/30/2015
3/31/2015
E.D. Va.
D. Minn.
Certified Measurement, LLC v. Centerpint Energy
Houston
Carfax, Inc. v. Red Mt. Techs.
Genetic Veterinary Scis., Inc. v. Canine EIC Genetics,
LLC
Judgment on the
Pleadings
Motion to Dismiss
Claims invalid under § 101
Claims invalid under § 101
Motion to Dismiss
Summary Judgment
4/6/2015
4/14/2015
N.D. Cal.
N.D. Cal.
OpenTV, Inc. v. Apple, Inc.
Shortridge v. Found. Constr. Payroll Serv., LLC
Claims invalid under § 101
Claims invalid under § 101
Motion to Dismiss
Judgment on the
Pleadings
51
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
DISTRICT COURT CASES
Date
District
Case Name
Outcome
Procedural Context
4/15/2015
D. Del.
Messaging Gateway Solutions, LLC v. Amdocs, Inc.
Claims valid under § 101
4/20/2015
N.D. Cal.
Mobile-Plan-IT LLC v. Facebook Inc.
Denied
4/20/2015
D.N.J.
Claims invalid under § 101
4/22/2015
4/24/2015
4/28/2015
4/28/2015
D. Del.
D. Wisc.
S.D.N.Y.
D. Mass.
Wireless Media Innovations, LLC v. Maher Terminals,
LLC
Intellectual Ventures I LLC v. Symantec Corp.
Ameritox, Ltd. v. Millennium Health, LLC
Intellectual Ventures II LLC v. JP Morgan Chase & Co.
Kenexa Brassring, Inc. v. HireAbility.com, LLC
5/4/2015
N.D. Cal.
Good Tech. Corp. v. MobileIron, Inc.
Denied
5/7/2015
N.D. Tex.
Jericho Sys. Corp. v. Axiomatics, Inc.
Claims invalid under § 101
5/15/2015
N.D. Tex.
BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC
Claims invalid under § 101
Summary Judgment
Summary Judgment
Summary Judgment
Judgment on the
Pleadings
Judgment on the
Pleadings
Judgment on the
Pleadings
Motion to Dismiss
5/21/2015
C.D. Cal.
Elec. Power Grp., LLC v. Alstom, S.A.
Claims invalid under § 101
Summary Judgment
52
Claims invalid under § 101
Claims invalid under § 101
Claims invalid under § 101
Denied
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
Judgment on the
Pleadings
Judgment on the
Pleadings
Motion to Dismiss
DISTRICT COURT CASES
Date
District
Case Name
Outcome
Procedural Context
5/29/2015
E.D. Tex.
Kroy IP Holdings, LLC v. Safeway, Inc.
Claims invalid under § 101
Summary Judgment
6/11/2015
N.D. Cal.
Potter Voice Techs., LLC v. Apple Inc.
Summary Judgment
6/11/2015
N.D. Ill.
6/24/2015
6/29/2015
7/1/2015
7/1/2015
7/7/2015
M.D. Fla.
S.D.N.Y
M.D. Fla.
D.N.J.
N.D. Ill.
Market Track, LLC v. Efficient Collaborative Retail
Mktg., LLC
FairWarning IP, LLC v. Iatric Sys.
Kickstarter, Inc. v. Fan Funded, LLC
Stoneeagle Servs. v. Pay-Plus Solutions, Inc.
Source Search Techs., LLC v. Kayak Software Corp.
Chamberlain Grp., Inc. v. Linear LLC
Some claims invalid under
§ 101 and denied as to other
claims
Claims invalid under § 101
7/7/2015
W.D. Tex.
7/9/2015
7/9/2015
53
Claims invalid under § 101
Claims invalid under § 101
Denied
Claims invalid under § 101
Denied
Judgment on the
Pleadings
Motion to Dismiss
Summary Judgment
Summary Judgment
Summary Judgment
Motion to Dismiss
Affinity Labs of Tex., LLC v. Directv, LLC
Claims invalid under § 101
Motion to Dismiss
D. Ore.
Tranxition, Inc. v. Lenovo (United States) Inc.
Claims invalid under § 101
Summary Judgment
W.D.
Wash.
Appistry, Inc. v. Amazon.com, Inc.
Claims invalid under § 101
Judgment on the
Pleadings
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
DISTRICT COURT CASES
Date
District
Case Name
Outcome
Procedural Context
Claims invalid under § 101
Motion to Dismiss
N.D. Cal.
Pragmatus Telecom, LLC v. Genesys Telecomms.
Labs., Inc.
IPLearn-Focus, LLC v. Microsoft Corp.
Claims invalid under § 101
Summary Judgment
7/10/2015
N.D. Ill.
Smart Sys. Innovations, LLC v. Chi. Transit Auth.
Claims invalid under § 101
7/14/2015
E.D. Tex.
Landmark Tech., LLC v. Assurant, Inc.
Claims invalid under § 101
7/15/2015
7/17/2015
N.D. Cal.
E.D. Va.
Netflix, Inc. v. Rovi Corp.
Microstrategy Inc. v. Apttus Corp.
Claims invalid under § 101
Claims invalid under § 101
Judgment on the
Pleadings
Motion to Dismiss
(Magistrate Judge
Order Only)
Summary Judgment
Motion to Dismiss
7/20/2015
Fed. Cl.
Thales Visionix, Inc. v. United States
Claims invalid under § 101
7/23/2015
Telebuyer, LLC v. Amazon.com, Inc.
Claims invalid under § 101
7/23/2015
7/27/2015
W.D.
Wash.
S.D.N.Y.
E.D. Cal.
Judgment on the
Pleadings
Summary Judgment
Adrea, LLC v. Barnes & Noble, Inc.
Boar's Head Corp. v. DirectApps, Inc.
Claims invalid under § 101
Claims invalid under § 101
Motion for Judgment
Motion to Dismiss
8/3/2015
W.D. Tex.
Becton, Dickinson & Co. v. Baxter Int'l, Inc.
Claims invalid under § 101
Summary Judgment
7/9/2015
D. Del.
7/10/2015
54
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
DISTRICT COURT CASES
Date
District
8/6/2015
E.D. Tex.
ContentGuard Holdings, Inc. v. Amazon.com, Inc.
Denied
Summary Judgment
8/10/2015
M.D. Fla.
Claims invalid under § 101
Summary Judgment
8/10/2015
D. Del.
Claims invalid under § 101
8/10/2015
D. Del.
Joao Bock Transaction Sys., LLC v. Fid. Nat'l Info.
Servs.
Personalized Media Communs., LLC v. Amazon.com,
Inc.
TriPlay, Inc. v. WhatsApp Inc.
8/19/2015
E.D. Tex.
Uniloc USA, Inc. v. E-Mds, Inc.
8/19/2015
8/21/2015
E.D.N.Y.
D. Del.
Paone v. Broadcom Corp.
Inventor Holdings, LLC v. Bed Bath & Beyond Inc.
Some claims invalid under
§ 101 and denied as to other
claims
Some claims invalid under
§ 101 and denied as to other
claims
Denied
Claims invalid under § 101
Judgment on the
Pleadings
Motion to Dismiss
8/21/2015
D. Del.
Everglades Game Techs., LLC v. Supercell, Inc.
Claims invalid under § 101
8/26/2015
D.D.C.
Encyclopedia Britannica, Inc. v. Dickstein Shapiro
LLP
Claims invalid under § 101
55
Case Name
Outcome
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
Procedural Context
Motion to Dismiss
Motion to Dismiss
Judgment on the
Pleadings
Motion to Dismiss
Judgment on the
Pleadings
DISTRICT COURT CASES
Date
District
Case Name
Outcome
Procedural Context
8/28/2015
D. Mass.
Exergen Corp. v. Brooklands Inc.
Claims invalid under § 101
Summary Judgment
8/31/2015
N.D. Cal.
Klaustech, Inc. v. Admob, Inc.
Denied
9/2/2015
D. Md.
Intellectual Ventures I LLC v. Capital One Fin. Corp.
Claims invalid under § 101
Judgment on the
Pleadings
Summary Judgment
9/2/2015
D. Del.
Novo Transforma Techs., LLC v. Sprint Spectrum L.P.
Claims invalid under § 101
9/4/2015
D. Mass.
DataTern, Inc. v. MicroStrategy, Inc.
Denied
9/8/2015
N.D. Cal.
Spike v. Google Inc.
Claims invalid under § 101
9/8/2015
D. Del.
Gammino v. AT&T Co.
Claims invalid under § 101
9/8/2015
D. Del.
Cronos Techs., LLC v. Expedia, Inc.
Denied
9/10/2015
9/11/2015
D.N.J.
S.D. Tex.
WAG Acquisition, LLC v. Multi-Media, LLC
TDE Petroleum Data Solutions, Inc. v. AKM Enter.
Denied
Claims invalid under § 101
9/15/2015
9/17/2015
D. Mass.
S.D. Tex.
Exergen Corp. v. Thermomedics, Inc.
Canrig Drilling Tech., Ltd. v. Trinidad Drilling L.P.
Claims invalid under § 101
Denied
56
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
Judgment on the
Pleadings
Summary Judgment
Judgment on the
Pleadings
Judgment on the
Pleadings
Judgment on the
Pleadings
Motion to Dismiss
Motion to Dismiss
Summary Judgment
Judgment on the
Pleadings
DISTRICT COURT CASES
Date
District
Case Name
Outcome
Procedural Context
9/21/2015
E.D. Tex.
eDekka LLC v. 3balls.com, Inc.
Claims invalid under § 101
Summary Judgment
9/21/2015
E.D. Tex.
Telinit Techs., LLC v. Alteva, Inc.
Claims invalid under § 101
9/23/2015
D. Colo.
Concaten, Inc. v. AmeriTrak Fleet Solutions, LLC
Claims invalid under § 101
9/23/2015
E.D. Tex.
Denied
9/23/2015
D. Del.
Mobile Telcoms. Techs., LLC v. Leap Wireless Int’l,
Inc.
Endo Pharms., Inc. v. Actavis Inc.
9/23/2015
9/25/2015
9/25/2015
W.D. Tex.
E.D. Tex.
W.D. Pa.
Affinity Labs of Tex., LLC v. Amazon.com, Inc.
SimpleAir, Inc. v. Google Inc.
Intellectual Ventures I LLC v. Erie Indem. Co.
Claims invalid under § 101
Denied
Claims invalid under § 101
Judgment on the
Pleadings
Judgment on the
Pleadings
Judgment on the
Pleadings
Motion to Dismiss
(Magistrate Judge
Order Only)
Motion to Dismiss
Summary Judgment
Motion to Dismiss
9/25/2015
W.D. Pa.
Esoterix Genetic Labs. LLC v. Qiagen Inc.
Claims invalid under § 101
Motion to Dismiss
9/28/2015
D. Col.
HealthTrio, LLC v. Aetna, Inc.
Claims invalid under § 101
9/30/2015
D. Del.
Execware, LLC v. BJ’s Wholesale Club, Inc.
Denied
Judgment on the
Pleadings
Motion to Dismiss
57
Claims invalid under § 101
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
DISTRICT COURT CASES
Date
District
Case Name
Outcome
9/30/2015
D. Del.
Inventor Holdings, LLC v. Gameloft, Inc.
Claims invalid under § 101
10/1/2015
E.D. Tex.
Orostream LLC v. ABS-CBN Int’l
Claims invalid under § 101
10/5/2015
10/6/2015
E.D. Tex.
N.D. Cal.
ContentGuard Holdings, Inc. v. Amazon.com, Inc.
Evolutionary Intelligence, LLC v. Sprint Nextel Corp.
Denied
Claims invalid under § 101
10/8/2015
W.D. Tex.
Denied
10/8/2015
D. Del.
A PTY Ltd. v. HomeAway, Inc.; A Pty Ltd. v.
Facebook, Inc.; A Pty Ltd v. Google, Inc.
CyberFone Sys., LLC v. Lexmark Int'l, Inc.
10/8/2015 D. Del.
10/8/2015 D. Del.
10/13/2015 N.D. Ill.
Parus Holdings, Inc. v. Sallie Mae Bank
YYZ, Inc. v. Hewlett-Packard Co.
Neochloris, Inc. v. Emerson Process Mgmt. LLLP
Claims invalid under § 101
Claims invalid under § 101
Claims invalid under § 101
58
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
Claims invalid under § 101
Procedural Context
Judgment on the
Pleadings
Motion to Dismiss
Summary Judgment
Summary Judgment
Motion to Dismiss
Judgment on the
Pleadings
Motion to Dismiss
Judgment on the
Pleadings
Motion to Dismiss
Summary Judgment
Summary Judgment
PTAB § 101 CASES
 SAP America, Inc. v. Versata Development Group,
Inc. (CBM2012-00001)
• Claim 17 – a method of determining a price
• Claim 27 – a computer-implemented method of determining a
price
• Claims 26 and 28 – computer-readable storage media claims
implementing the methods of Claims 17 and 27
• Claim 29 – “apparatus” for determining a price including
computer program instructions capable of performing the same
method steps recited in Claim 27
• PTAB analyzed all claims together
59
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 SAP America, Inc. v. Versata Development Group,
Inc. (CBM2012-00001)
• “The key question is, therefore, whether the claims do
significantly more than simply describe the law of nature or
abstract idea.”
• The abstract idea: “determining a price using organizational and
product group hierarchies, which are akin to management
organizational charts.”
• Having found an abstract idea, “we must further analyze
Versata’s claims to determine whether they incorporate sufficient
meaningful limitations. . . .”
60
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 SAP America, Inc. v. Versata Development Group,
Inc. (CBM2012-00001)
• Mental steps test: “while the challenged claims are drafted to
include computer hardware limitations, the underlying process . .
. could also be performed via pen and paper.”
• General purpose computer: “The claimed invention . . . requires
only routine computer hardware and programming.”
• Additional meaningful limitations: “the additionally claimed steps
. . . are well-known, routine, and conventional steps.”
61
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 CRS Adv. Tech., Inc. v. Frontline Tech. Inc.
(CBM2012-00005)
• Holding – All challenged claims (method and system) are
unpatentable under § 101
• “[T]he terms ‘one or more computers,’ ‘website,’ and
‘communication link’ at issue in this case do not impose
meaningful limits on the challenged claims’ scope.”
• Compared technology limitations to those of:





SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013)
Dealertrack, Inc. v. Huber, 674 F.3d 1315, (Fed. Cir. 2012)
Bancorp Servs. v. Sun Life Assurance Co., 687 F.3d 1266 (Fed. Cir. 2012)
Accenture Global v. Guidewire Software, 728 F.3d 1336 (Fed. Cir. 2013)
• Note: PTAB did not discuss/use CLS Bank decision
62
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Interthinx, Inc. v. CoreLogic Solutions, LLC
(CBM2012-00007)
•
Found all claims (method claims) unpatentable:
 Patent Owner: Under M-O-T, “the computer plays a necessary and vital role to
the development and storage of the predictive and error models.”
o
PTAB: “Although the preamble recites a computer implemented process, none of
the claim elements, with the possible exception of the ‘storing’ limitations,
specifically recites a relationship to the computer.”
 Patent Owner: “[T]he claims pass the Federal Circuit’s ‘mental process test’
because they … cannot be performed entirely manually or in the human mind.”
o
PTAB: “However, the claims …do not tie necessarily these steps to a computer
or a particular application.”
 Patent Owner: “[T]he claims satisfy the “abstract idea” test for patentable subject
matter because, rather than being tied preemptively to a field of use, they are
narrowly tied to a specific application”
o
63
PTAB: “A claim is not patent eligible if, instead of claiming an application of an
abstract idea, the claim instead is drawn to the abstract idea itself.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 U.S. Bancorp v. Retirement Capital Access
Management Co. (CBM2013-00014)
•
•
•
•
•
•
•
•
64
Found all claims (method and system) unpatentable
First case after CLS
Abstract idea – (not disputed) advancing funds based on future retirement
payments, which is “an economic practice long prevalent”
Preamble reciting “computerized method” ignored (relying upon Digitech)
Used mental steps test
Method required only a generic computer
Noted that “preemption is only one test” to use
System claims requiring only “use of a computer in a generalized fashion”
does not meaningfully limit the claims
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 SAP America Inc. v. Lakshmi Arunachalam
(CBM2013-00013)
•
•
•
65
Found claims at issue unpatentable
Abstract idea – “claim 1 recites an abstract method, i.e., performing a realtime Web transaction by displaying and providing at least one application a
user selects to access checking and savings accounts, and transferring
funds (i.e., debiting or crediting) in response to user signals from an input
device.”
“The remaining limitations in claim 1 do not contribute any patent–eligible
subject matter. The service network atop the Web … is an abstract concept
under which customers and service providers communicate over a network
so that the service provider can service the customer…. This does not
impose a meaningful limitation on the scope of the claim.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 SAP America Inc. v. Lakshmi Arunachalam
(CBM2014-00018)
•
•
•
•
•
66
Found claims (method) at issue unpatentable
Dependent claim 9 and 10 at issue
• Depend upon claim 1, which was found unpatentable under 101 in
CBM2013-00013
Claims 9 further limits claim 1 by reciting that the transaction is a loan
requested from a lender across the Web from a Web application.
Claim 10 further limits claim 1, reciting that the Web transaction is vehicle
purchased with bank financing across the Web from a Web application.
“Claims 9 and 10 do not add limitations that contribute to patent eligibility.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Salesforce.com, Inc. v. Virtualagility, Inc.
(CBM2013-00024)
•
•
•
•
•
•
67
Found claims at issue unpatentable
Abstract idea – “we find that the challenged claims are directed to an
abstract idea, the creation and use of models to aid in processing
management information by organizing and making the information readily
accessible by the collaborators of the project”
“The model, as described by the specification, is a disembodied concept
that is not tied to a specific algorithm or specialized computer.”
“[T]he claims do not recite a specialized algorithm that could move the
claims from the abstract to the concrete.”
“[W]ith respect to the processor, we note that at least operations (ii) through
(vi) actually are carried out by the user, albeit, via the processor.”
“[S]imply executing an abstract concept on a computer does not render a
computer ‘specialized,’ nor does it transform a patent-ineligible claim into a
patent-eligible one.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 LinkedIn Corp. v. AvMarkets Inc. (CBM2013-00025)
•
•
•
•
Found claims (method) at issue unpatentable
The patent at issue is generally related to generating sales leads on the Internet
through the creation of Web pages to display information
Abstract idea (Not disputed by Patent Owner)
Do the claims contain significant meaningful limitations beyond the abstract
idea?
•
•
•
68
We find that the claimed invention merely requires the use of a general-purpose
computer.
[W]e find that the limitations . . . identified as meaningful represent merely
routine computer technology used in conjunction with a conventional network—
the Internet with its billions of existing documents—in a conventional manner,
generating Web pages upon activation of a hyperlink.
We hold that the additional limitations . . . are merely an attempt to limit the use
of the abstract idea to a particular technological environment, which has long
been held insufficient to save a claim in this context.
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Metavante Corp. et al. v. Cashedge, Inc.
(CBM2013-00028)
•
•
•
•
69
Found claims (method) at issue unpatentable
The patent at issue is generally related to the transfer of funds between
accounts at different financial institutions, where the first and second accounts
are held commonly.
Abstract idea – “The concept of transferring funds from one account to another
through an intermediary, as recited in the claims of the ’223 Patent, is a
fundamental economic practice. Thus, in the first step of the analysis under 35
U.S.C. § 101, we conclude that claim 1 of the ’223 Patent recites an abstract
method.”
“Even if the financial system is construed to require implementing complex
protocols to access and transfer the data among the accounts, the
implementation of those protocols reflects nothing more than implementing the
abstract idea of transferring funds thorough an intermediate account with
routine, conventional activity. Such an implementation does not transform the
abstract idea into patent eligible subject matter.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 International Securities Exchange, LLC v. Chicago
Board Options Exchange, Inc. (CBM2013-00049)
(CBM2013-00050) (CBM2013-00051)
•
•
•
•
•
70
Found claims (method and system) at issue unpatentable
The patents relate to automated trading systems for option contracts.
Specifically, the claimed inventions are directed to methods for managing
the risk of a maker of an options market in an automated trading system.
Abstract idea – “we conclude that the concept of managing trading risk
(“risk management”) is an economic practice long prevalent in our system
of commerce and squarely within the realm of abstract ideas.”
“The claims contemplate using a generic computer to perform ‘wellunderstood, routine, conventional activit[ies]’ previously known to the
industry.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Dell Inc. v. Disposition Services LLC
(CBM2013-00040)
•
•
•
•
71
Found claims (method and system) at issue unpatentable
“The ’944 patent ‘relates to a system and method for the controlled
disposition of selected capital assets.’”
Abstract idea - “We are persuaded that, like risk hedging in Bilski and
intermediated settlement in Alice, the idea of handling a customer’s asset in
such a way that the customer can verify that its handling instructions were
followed is unpatentably abstract.”
“[T]he claims of the ’944 patent do not add any inventive concept to the
abstract idea of handling a customer’s physical item in such a way that the
customer can verify that its handling instructions were followed.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Fidelity National Info. Servs., Inc. v. Check Free Corp.
(CBM2013-00030) (CBM2013-00031)
(CBM2013-00032)
•
•
•
•
72
Found claims (method, system, “computer-implemented method,” and
“computer program product, comprising a computer usable medium”) at
issue unpatentable
The patents at issue generally related to electronic commerce and an
electronic bill payment systems
Abstract idea - “The computer implementation associated with comparing
the account number and the credit limit are incidental to the fundamental
economic concept of having a third party intermediate a settlement either
by crediting the payee from the third party’s funds (as in a credit
transaction) or from the payer’s funds (as when the amounts exceed the
payer’s credit limit with the service provider).”
“A computer used for its most basic function, the performance of repetitive
calculations, does not impose a meaningful claim limitation.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 American Express Co. et al. v. MetaSearch Sys., LLC
(CBM2014-00001)
•
•
•
•
•
73
Found claims (method) at issue unpatentable
The patent at issue is generally related to metasearching on the internet
Abstract idea - “[T]he claim embraces the abstract idea of marketing an
item on a metasearch Web site with keyword ads and providing a way to
order the item.”
“[T]he claims recite, for the most part, an ordered combination of steps that
contain Internet operations that were conventional at the time of invention.”
“The claims are drawn to implementing the abstract idea … with routine,
conventional activity. Such an implementation does not transform the
abstract idea into patent eligible subject matter.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Agilysis, Inc. et al. v. Ameranth, Inc.
(CBM2014-00015)
•
•
•
•
•
74
Found claims (system) at issue unpatentable
The patent at issue is generally related to a GUI for building menus
Abstract idea – “[W]e determine that claim 1 is directed to the abstract idea
of generating a second menu from a first menu and sending the second
menu to another location.”
“Independent claims 1 recites a CPU, a data storage device, and an
operating system with a GUI. … These claim elements require nothing
more than a generic computer with generic computer elements performing
generic computer functions.”
“Further, displaying menus in a GUI, including in a hierarchical format, is a
well-understood, routine, conventional activity that does not add
significantly more to the abstract idea.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Regions Financial Corp. et al. v. Retirement Capital
Access Management Co. LLC (CBM2014-00012)
•
•
•
•
75
Found claims (method) at issue unpatentable
The patent at issue is generally related to a method for enabling recipients
of Social Security payments to convert a designated portion of future
payments into currently available financial resources.
Abstract idea – “[W]e find that the concept of advancing funds based on
future retirement payments is an economic practice long prevalent in our
system of commerce and squarely within the real of abstract ideas.”
“[W]e conclude that even if we were to construe the “deposited” limitation of
claims 1 and 18 to require a computer, the claims amount to nothing
significantly more than an instruction to apply the abstract idea of
advancing funds based on future retirement payments using an
unspecified, generic computer.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Westlake Servs., LLC v. Credit Acceptance Corp.
(CBM2014-00008)
•
•
•
•
76
Found claims (method) at issue unpatentable
The patent at issue is generally related to a method for facilitating the
purchase of products on credit and a system for implementing such a
method.
Abstract idea – “The abstract idea of processing an application for financing
a purchase claimed is a known concept described in the ’807 patent.”
“We are not persuaded that the claims include something beyond the
abstract idea that transforms the claimed abstract idea into patent eligible
subject matter. Merely using a computer to speed the steps of generating a
financing package for each item of inventory is not such a transformation.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Google Inc. v. Unwired Planet, LLC (CBM2014-00004)
(CBM2014-00006)
•
•
•
•
77
Found claims (method) at issue unpatentable
The patent at issue is generally related to using location-based services
over mobile wireless networks.
Abstract idea – “[T]he claimed invention is directed to an abstract idea,
specifically, the abstract idea of controlling access to location information
using a subscriber profile.”
“The wireless network, wireless device, and access terminal are all defined
in the specification as including commonly known technical solutions. …
Thus, the hardware itself certainly is not an inventive concept sufficient to
transform the abstract idea into a patentable claim.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Fidelity National Information Services, Inc. v.
DataTreasury Corp. (CBM2014-00020),
(CBM2014-00021)
•
•
Found claims (method) at issue unpatentable
The patents at issue are generally related to a system for remote data
acquisition, and centralized processing and storage of the acquired data.
•
•
78
Abstract idea – “[W]e have identified the abstract idea as involving the
transfer of information from one location to another where the transferred
information is unreadable without a secret decoder key….”
“We hold that the additional limitations in Patent Owner’s claims that seek
to narrow the application of the abstract idea are merely an attempt to limit
the use of the abstract idea to a particular field of use or add token
postsolution components, which has long been held insufficient to save a
claim in this context.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Bank of America, N.A. v. Intellectual Ventures I LLC
(CBM2014-00028)
•
•
•
•
79
Found claims (method and system) at issue unpatentable
The patent at issue is generally related to a credit facility for allowing a user
to place self-imposed limits on the user’s spending in selected transaction
categories.
Abstract idea – “[T]he ʼ137 patent claims are directed to the abstract idea of
storing information about a user’s preferences for a credit limit and
presenting, i.e., notifying, the user of the limit when providing the user a
transaction summary based on categories.”
“[T]he claims simply instruct the practitioner to implement the abstract idea
with routine, conventional activity.” (quoting Ultramercial)
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Bank of America, N.A. v. Intellectual Ventures I LLC
(CBM2014-00029)
•
•
•
•
80
Found claims (method, apparatus, and article of manufacture) at issue
unpatentable
The patent at issue is generally related to facilitating electronic purchases
while maintaining privacy of customer billing data.
Abstract idea – “[T]he claims are directed to the basic idea of protecting
personal billing data from thieves and hackers by providing ‘substitute
billing data’ to a consumer for making online purchasing transactions.”
“[C]laim 1, which merely requires generic computer implementation, fails to
transform an abstract idea into a patent-eligible invention.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Bank of America, N.A. v. Intellectual Ventures I LLC
(CBM2014-00030)
•
•
•
•
81
Found claims (method and system) at issue unpatentable
The patent at issue is generally related to a system for delivering
information from an information provider to an information user that is
selectively tailored toward the capabilities of the information provider and
the needs of the information user.
Abstract idea – “[T]he ʼ382 patent claims are directed to the abstract idea of
tailoring an information provider’s web page based on data about a
particular user.”
“[C]laims 1–23 of the ʼ382 patent simply instruct the practitioner to
implement the abstract idea with routine, conventional activity. … [N]one of
the elements recited in the claims, including the ‘interactive interface’ and
the ‘plurality of data streams,’ transforms the nature of the claims into
patent-eligible subject matter.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Bank of America, N.A. v. Intellectual Ventures I LLC
(CBM2014-00033)
•
•
•
•
82
Found claims (method) at issue unpatentable
The patent at issue is generally related to a method for organizing digital
images.
Abstract idea – “[T]he claims of the ’587 patent are directed to the abstract
idea of organizing digital images of hard copy prints according to an
instruction form.”
“Claims 1, 10, and 18 all use conventional computer components in a well
understood way to produce, as Petitioner states, a photo album.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 American Express Co. v. Harvey Lunenfeld
(CBM2014-00050)
•
•
•
•
83
Found claims (process) at issue unpatentable
The patent at issue is generally related to a method and system for clientserver multitasking or metasearching.
Abstract idea – “[C]laims 1 and 21 are each directed to the abstract idea of
searching for travel information from multiple sources and ordering travel
items from the combined search results––essentially, the abstract idea of
buying a trip chosen from multiple options provided through a
knowledgeable travel broker.”
“We find that the challenged claims recite Internet conventions that were
common in the art at the time of the invention.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Allscripts Healthcare Solutions, Inc. v. MyMedical
Records, Inc. (CBM2015-00022)
•
•
•
•
•
•
84
Found claims (method) at issue unpatentable
The patent at issue is generally related to a method for consumers to
request their medical records from health care providers and store their
medical records for online access.
Abstract idea – “[T]he claimed invention is directed to an abstract idea:
privately managing files by the user.”
“We conclude that receiving and sending data is a routine and conventional
computer function.”
“Restricting access by password also is routine and conventional.”
“Claim 8 includes additional recitations relating to how data is stored and
managed on the server. We determine that these limitations recite generic
functions performed by a generic server and computing device. Storing files
is a basic computer function.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 Cambridge Associates, LLC v. Capital Dynamics
(CBM2014-00079)
•
•
•
•
•
85
Found claims (method) at issue unpatentable
The patent at issue is generally related to method for analyzing a
performance of a financial product or asset having an irregular cash flow by
“benchmarking the performance” of the asset relative to “a public market or
other index.”
Abstract idea – “[B]ecause we agree with Petitioner that the challenged
claims involve determining a mathematical correlation, like the claims in
Digitech, we conclude that the first step in the Alice/Mayo test is met for
claims 1–17.”
“[M]athematical computations, even if required by the claims, are not
sufficient to transform the claims into patent eligible subject matter.”
“[T]he claimed steps do not add a technological advance because they are
directed to the abstract idea of manipulating and calculating data for a
financial product.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PTAB § 101 CASES
 eBay, Inc. v. Paid, Inc.
(CBM2014-00125) – (CBM2014-00128)
•
•
•
•
•
86
Found claims (method) at issue unpatentable
The patents at issue is generally related to using location-based services
over mobile wireless networks
Abstract idea – All four patents at issue, “like the claims in Bilski and Alice,
are directed to an abstract idea, namely, determining shipping rates for an
online auction item.”
“The claims simply recite steps that were routinely done manually before
the filing date of the patent.”
“[S]imply adding a computer limitation to claims covering an abstract
concept, without more, is insufficient to render the claim patentable under §
101, even if the use of a computer enables faster operation.”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
TIPS
 At district court, file early motion
 Build a sufficient factual record to support your argument
 Build a sufficient legal record to support the changing
landscape
•
•
•
•
•
•
Machine-or-transformation test
Generic computer hardware/special computer test
Abstract idea analysis
Mental steps test
Point-of-novelty test
Case-specific factual comparisons
 Know the Supreme Court § 101 cases
 Frame the issue
 Tips for Accused infringers
 Tips for Patent Owners
87
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
2014 INTERIM GUIDANCE ON PATENT
SUBJECT MATTER ELIGIBILITY
88

Supplements the June 25, 2014 Preliminary
Instructions

Supersedes the March 4, 2014 Procedures for Subject
Matter Eligibility Analysis of Claims Reciting or
Involving Laws of Nature/Natural Principles, Natural
Phenomena, and/or Natural Products

Supersedes MPEP §§ 2106(II)(A), 2106(II)(B), and
2106.01

Supersedes MPEP § 2105 to the extent that the
section suggests that “mere human intervention”
necessarily results in eligible subject matter
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
2014 INTERIM GUIDANCE ON PATENT
SUBJECT MATTER ELIGIBILITY
89
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
SAFE HARBORS

90
“Significantly More” Considerations
–
Improvements to another technology or technical
field
–
Adding a specific limitation other than what is wellunderstood, routine and conventional in the field, or
adding unconventional steps that confine the claim
to a particular useful application
–
Other meaningful limitations beyond generally
linking the use of the judicial exception to a
particular technological environment
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
JULY 2015 UPDATE ON SUBJECT MATTER
ELIGIBILITY – 80 FR 45429

Showing lack of preemption not enough to overcome
101 rejection

Examiners given power similar to “judicial notice”
• Need to provide evidence to establish what is old and wellknown in the claims

New examples help in determining an “abstract idea”
• Useful examples to show what passes muster under the
significantly more test

There is still no clear definition of an “abstract idea”
• PTO provides categories of abstract ideas (i.e., organizing
human activities)

91
Rise of the “technical effect” test?
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
JULY 2015 UPDATE ON SUBJECT MATTER
ELIGIBILITY – 80 FR 45429

92
Showing lack of preemption not enough to overcome
101 rejection
–
“[W]hile a preemptive claim may be ineligible, the
absence of complete preemption does not
guarantee that a claim is eligible.”
–
Need to show that a claim clearly does not preempt
the abstract idea that the claim is eligible for
streamlined analysis
–
Participate in the First Action Interview program to
present §101 related arguments to the examiner
before a §101 rejections is ever made
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
JULY 2015 UPDATE ON SUBJECT MATTER
ELIGIBILITY – 80 FR 45429

93
Examiners given power similar to “judicial notice”
–
Examiner does not have to provide evidence of
what is “well-understood, routine, and conventional”
–
Applicants will have little recourse to argue with the
examiner regarding what is “generally known in the
art”
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
JULY 2015 UPDATE ON SUBJECT MATTER
ELIGIBILITY – 80 FR 45429

94
New examples help in determining an “abstract idea”
–
Example 21 compares and contrasts hypothetical
software claims
–
Examples 22 and 23 are directed to GUIs and show
the level of detail needed to distinguish patent
eligible claims
–
Example 27 provides streamlined eligibility analysis
for a claim directed to remote access and storage of
computer control software
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
JULY 2015 UPDATE ON SUBJECT MATTER
ELIGIBILITY – 80 FR 45429

95
Rise of the “technical effect” test?
–
Example 21 provides “additional limitations” that transform the
claim from “a generic computer performing generic computer
functions” to “an ordered combination” that addresses an
“Internet-centric challenge”
–
Examples 23 and 25 also refer to an “ordered combination”
that renders the claim patent eligible

As a whole, the claims contain language affixing the
method to a particular technology area and cause a
particular technical effect

Showed that the claim “demonstrate[d] an improvement in
the field” or “improve[d] the functioning” of the computer
itself
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
DESPITE NEW GUIDELINES AND TRAINING
MATERIALS, EXAMINERS CONTINUE TO MAKE
BOILER PLATE SECTION 101 REJECTIONS
 Broad characterization of the abstract
idea, natural law or physical phenomenon
 Treating software as an abstract idea even
when embodied as executable code in the
claims
 Treating claim limitations as old and
conventional without citing prior art to
support the findings
96
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
REJECTIONS UNDER SECTION 101 OF
COMPUTER RELATED APPLICATIONS
 Claim 1: An automatic analyzer comprising:
a reaction disc configured to hold a plurality of cuvettes, each
of the cuvettes containing a sample and a reagent;
a cleaning mechanism configured to clean the plurality of
cuvettes using a plurality of nozzles;
a setting unit configured to set role in cleaning of a target
cuvette to each of the plurality of nozzles for sequentially cleaning the
target cuvette used in measurement of a plurality of measurement
items, for each of the plurality of measurement items of the sample; and
a controller configured to control the cleaning mechanism to
clean the target cuvette according to the set role in cleaning.
97
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
REJECTIONS UNDER SECTION 101 OF
COMPUTER RELATED APPLICATIONS
 Con’t
 Claims 1-3, 5 and 6 are rejected under 35 U.S.C. §101
because the claimed invention is directed to nonstatutory subject matter.
− the instant apparatus claims recite a controller, which
can be construed as software (i.e., a set of
instructions/algorithm capable of being executed by a
computer), which is not statutory subject matter.
98
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
RESPONDING TO § 101 REJECTIONS
 Challenge definition of abstract idea
 Amend to add technical limitations that are specialized
 Amend claims to require “specific” ordered technical way
of accomplishing process
 Argue improvement to technical field to which claims are
applied
− If possible, argue that claims could not be performed
without claimed specialized component or
combination of components, and that the components
add “significantly more”
99
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
IMPLICATIONS
 A major problem could exist for pending applications that
lack sufficient disclosure regarding the details of
advances to technology provided by an invention.
 Need to adopt claim-drafting techniques that target a
lower level of abstraction, including incorporating
implementation details into claims that illustrate an
improvement of the functioning of a computer,
technology, or technical field provided by an invention.
100
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
PRACTICAL TIPS FOR DRAFTING
SPECIFICATIONS
 Explain the technical implementation in detail
− Stress improvements in functioning of computer
 Emphasize technical solution to a technical problem
being solved and novel technical effects
 Avoid generic computer description
− Emphasize specialized technical features
 Use technical terminology to distance invention from
pure business method
− E.g., “advertisement” -> “multimedia content file”
101
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PRACTICAL TIPS FOR DRAFTING CLAIMS
 Draft method and system claims differently – System
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
102
claims should not merely be written as means plus
function claims that mirror the method claims
Draft and prosecute narrow claims first
Focus on specialized technical features of invention
Prosecute system claims first
Avoid claim limitations that read on mental steps
Per In re Alappat, claims should emphasize how the
general purpose computer is configured into a specific
purpose computer
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
EX PARTE CYRIAC J. WEGMAN III
 Representative Claim:
1. A method for providing an empirical model of a defined
space comprising steps of:
a.
b.
c.
d.
e.
f.
103
defining the desired space;
describing at least a portion of the defined space with multiple
correlated dimensions;
reducing the dimensionality of the described portion;
combining the described portion with the remaining portion of
the defined space;
creating a hypothetical model of the defined space; and
calculating coefficients for the hypothetical model according to
an analysis of real and/or or virtual objects.
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
EX PARTE CYRIAC J. WEGMAN III
 The PTAB reversed the examiner’s § 101 rejection
 The PTAB found that:
– “claim 1 requires performing an analysis of objects,
either actual or virtual, and calculating coefficients for
the model based upon that analysis,” and
– “these steps are sufficiently concrete as to set them
outside the broad definition of abstract idea as set
forth in Alice.”
104
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
EX PARTE BRUCE GORDON FULLER ET AL.
 Representative Claim:
1.
105
A method of associating a first variable and an event on a display, the
method comprising:
displaying the first variable relative to a time period on the display,
resulting in a graph of the first variable;
receiving first user input from a graphical indicator device, wherein the
first user input comprises an instruction to position an indicator over a
portion of a data curve of the graph corresponding to a time period of
interest to the user;
in a processor, determining if the event occurred during the time period
of interest; and
displaying the event on the display nearby the portion of the graph if the
event occurred during the time period of interest.
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
EX PARTE BRUCE GORDON FULLER ET AL.
 The PTAB reversed the examiner’s § 101 rejection
 The PTAB agreed with the Appellant’s arguments that:
– “[C]laim 1 recites physical elements that ‘allow a user
to view a graph and an event occurring during a time
period of interest on the display if the processor
determines that an event occurred’ and that ‘these
elements provide sufficient structure to prevent the
method steps from being interpreted as too abstract.’”
– “[T]he specification describes each of these elements
as [a] physical computer component.”
106
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CONCLUSION
 Take advantage of safe harbors
− Improvements to another technology or technical fields
− Improvements to the functioning of the computer
− Take advantage of the training examples (21, 23, 25)
 Emphasis that claimed invention provides technical solutions to
technical problems
 Emphasize the novel and non-obvious limitations that are not
conventional and are subject to the MOT test for process claims.
 Point out why the new combination of old elements achieves a novel
and non-obvious result (i.e., an inventive contribution)
107
Copyright © 2015 Oblon, McClelland, Maier & Neustadt, LLP
THE SUPREME COURT ON PATENT LAW
“In this well organized, readily accessible and highly readable
treatise, Michael Kiklis analyzes the serial interventions by the
Supreme Court that keep altering the purely statutory patent
law as interpreted by the Federal Circuit and understood by
patent practitioners. Because these alterations are continuing
and even accelerating, practitioners need to anticipate where
the Court is headed next if they are to serve their clients
well. By stressing trends and explaining dicta for what it may
portend, Kiklis provides an invaluable chart for navigating
shifting seas." – Paul Michel, former Chief Judge, United
States Court of Appeals for the Federal Circuit
“In this one volume, Michael Kiklis has filled in a critical gap in
our understanding of modern American patent law. Every
person interested in the field must study the current Supreme
Court’s take on patents, and there is no better source than this
treatise.” – Tom Goldstein, Publisher, Scotusblog.com
108
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