Articles

Alice Corp. and Patent Claiming

A Simple Example

by Howard Skaist

In the wake of Alice Corp (“Alice”), many practitioners, including myself, are thinking about its implications, in particular, with respect to drafting patent claims. Of note, especially, is the Court’s statement, recited more than once in Alice, that “this Court has long “warn[ed] …. against” interpreting section 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’”  See 573 U.S. ____ (2014); slip opinion at 16. I would like to test that notion and, potentially, its general boundaries with a simple example.

Let’s consider, as an example, the early days of computers and the creation of VisiCalc.  If today’s law applied then, e.g., Alice, would a patent claim covering VisiCalc have been statutory? I would be inclined to say, even today, that it depends a lot on the particular claim, but we also have the Supreme Court’s position on the mattermentioned above. So, to what extent does the answer depend on the particular claim?

Here is one possible claim to VisiCalc:

A method comprising:  implementing a spreadsheet on a computer. One issue worthy of mention here is that cases getting to the Court are ones in which the claims do not appear on their face to appropriately flush out the subject matter considered innovative, at least if we can rely on the opinions without taking the trouble to look at other claims of the particular patents.   However, most skilled practitioners tend to make sure that a spectrum of claims are included, at least for considerations related to section 103.  As shall be seen, this may also be the best practice for addressing 101 issues.

The claim above, thus, is in line with claims previously adjudicated before the Court.  That is, the claim on its face does not appear to communicate details about the innovation itself. Rather, this claim would likely be held non-statutory under the approach in Alice.  Applying the analysis, spreadsheets constitute a way to organize human activity that is of longstanding use.  Thus, it would seem that, following Bilski and Alice, a spreadsheet may potentially be deemed an abstract idea or a fundamental concept.  Thus, it is, if anything, a building block for human ingenuity and, on policy grounds, section 101 exceptions to statutory subject matter are potentially implicated.

Again, then, following the approach in Alice, the aspect of the claim calling out implementation on a computer likewise does not constitute a sufficiently meaningful addition, whether analyzed element by element or as a whole.  It might be argued that computer implementation is faster than performing spreadsheet calculations on paper, but merely being faster is not sufficient, generally, to pass muster here.

It is important to realize, however, that when technology is implemented, rarely does it just result in being faster and nothing more.  Usually, the implementation provides other advantages.  Here, referring to this simple example as an illustration, VisiCalc made a type of functionality possible that had not existed before.  Therefore, if that aspect were particularly claimed, perhaps such a claim would be deemed statutory under the analysis in Alice.

For example, consider the following two claims, recognizing that this example is not intended to illustrate the best claims possible, but is just a simple example to test the Court’s recent pronouncement.

A method comprising: generating and displaying a matrix of cells comprising an electronic spreadsheet on a computer, said electronic spreadsheet to implement on said computer one or more user-specified mathematical operations in which one or more operands for said one or more user-specified mathematical operations are to be entered in particular cells of said matrix and results of performing said one or more user-specified mathematical operations on said one or more operands are to be displayed in other particular cells of said matrix; and displaying on said computer, in said particular cells and in said particular other cells, after said one or more operands are entered, said one or more operands and said results of performing said one or more user-specified mathematical operations on said one or more operands, respectively.

The method of claim 1, wherein said results of performing said one or more user-specified mathematical operations on said one or more operands comprise one or more operands of one or more other user-specified mathematical operations either with or without displaying said one or more operands of said one or more other user-specified mathematical operations in cells of said matrix.

Several arguments are available that one, if not both, of these claims is statutory.  To turn the issue around, we should, perhaps, ask the following:  If we ignore the conventional hardware elements of the claim, is the implementation, as claimed, more than merely conventional

 

This question, of course, as framed, clearly is not the same question presented under section 103. Thus, while the Court may be criticized for making considerations under 101 more similar to considerations under 103 than had previously been the case, the analysis is still different.

To be even more explicit, we may ask:  is an innovation being claimed (even if it may in light of prior art later be determined to be an obvious one)? 

Here, the answer is quite arguably, yes!

Most everyone is familiar with the functioning of VisiCalc and Excel.  Certainly, at the time Apple introduced VisiCalc, it was an innovation over what had been done previously with conventional spreadsheets of the time.

Perhaps I am overly optimistic and not everyone will agree that claim 2 at least is statutory.  However, these claims call out an improvement over existing processes involving spreadsheets. See 573 U.S. ____ (2014); slip opinion at 13 (discussing that the claims in Diehr improved on an existing process).  A user is able to link together in a spreadsheet format, complex calculations and display the results in a manner so that any change in “operands” is able to be rippled across the spreadsheet and displayed immediately.  This is an improvement over use of a paper spreadsheet and provides a new functionality that previously did not exist.  I am not arguing that this is necessarily patentable, since that is judged relative to particular prior art, only that it is at least statutory because it is not merely conventional.

If it were generally agreed that the first example is likely non-statutory under the Court’s recent pronouncement and the second example is likely statutory[2], then what does that tell us in terms of claim drafting? One thing it demonstrates is that including limitations directed to innovative aspects of particular implementations may provide a claim drafting safe harbor, so to speak, for this area. Where this is done correctly, it would seem that claims of value to a client should ultimately stand up as statutory.  As was mentioned, most practitioners tend to make sure that a spectrum of claims are included.  This is good practice, now, to address, not just 102 and 103, but also 101.

If we compare the two example claims above, what is the difference?  Why, from a policy perspective should one be statutory and the other not, since they are both directed to what is meant to be the same core subject matter?  It appears that section 101 imposes a statutory requirement of proper form.  That is, from a formal perspective, it is necessary that innovative aspects of the invention, as implemented or intended to be implemented, be on the face of the claim for the claim to be statutory.[3]

Recall that we started with the notion that “this Court has long “warn[ed] …. against” interpreting section 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’”  The ironic twist here seems to be that, if section 101 imposes a statutory requirement of proper form, then the prevailing situation would seem quite the opposite of the Court’s stated view.  That is, that patent eligibility indeed depends on the draftsman’s art and our example appears to confirm as much.

Several points are therefore addressed with this example.

  1. Take care when evaluating inventions for meeting statutory subject matter – rarely are things as simple as they look.
  2. Great care is needed in drafting claims in general but particularly in this area because otherwise there may have been a statutory invention inadvertently left unclaimed.
  3. The policy view that patent-eligibility should not turn on the draftsman’s art is not the full story.

[1] Howard Skaist founded Berkeley Law & Technology Group (BLTG) in 2003 after having been employed as the Director of Patents for Intel Corp.  BLTG has a total of twelve patent lawyers and handles all aspects of intellectual property law practice, including patent law.  Mr. Skaist has also been an adjunct professor at Boalt Hall Law School in Berkeley, CA, at Willamette School of Law in Salem, OR, at Lewis and Clark Law School in Portland, OR, and at Albany Law School.

[2] A separate twist is raised by Sotomayor’s concurrence (also expressly by Judge Mayer recently in I/P Engine v. AOL). Would the second example get over those hurdles?  I would say probably not.  It appears difficult here to argue that the problem solved is technical in nature rather than being directed to organizing human activity.  Thus, three justices would probably say that the second example is also non-statutory.

[3] Of course, one would expect that this would also be true to meet section 103.  However, perhaps a difference is that, for purposes of section 103, dissection is not permitted, at least not yet.  While Alicelooks at the claim as a whole as well as the claim elements, it was clear as far back as Flook, that some amount of dissection was permissible.  Alice has made that even clearer, following Mayo, by permitting an element by element analysis.

Drafting Patent Eligible Claims

A Simple Example - Continued

by Howard Skaist
Founder, Berkeley Law & Technology Group, LLC

In 2014, two months after Alice was decided by the Supreme Court, a post that I wrote appeared on this website proposing an approach to claim drafting in light of the Alice decision using a “thought experiment” as an illustration. A hypothetical in that post suggested trying to claim the original computer spreadsheet VisiCalc before the Alice decision and then after the Alice decision. The conclusion of the post as to Section 101 was summarized at the time, as follows:

“…from a formal perspective, it is necessary that innovative aspects of the invention, as implemented or intended to be implemented, be on the face of the claim …” (emphasis supplied)

One problem, however, as illustrated starkly by the hypothetical is that claims drafted in light of the Alice decision are generally narrower than they would have been drafted before the Alice decision.

Today, perhaps, one could write better (e.g., broader) claims to pass muster under the Mayo-Alice Framework than the example claims provided in that 2014 post.  However, the point of this post is not to attempt to do that, but rather to consider the pre-Alice claim provided as an illustration and ask the following two questions.

First, how would the pre-Alice claim from that original post fare under the new subject matter eligibility guidance? Second, how might that claim (or claims) be re-drafted to hopefully significantly improve the chances that the claim (or claims) will pass muster under those same new guidance?

To refresh, the ‘before’ claim of the post was:

  1. A method comprising:  implementing a spreadsheet on a computer.

The primary change under the new subject matter guidance is to so-called step 2A (using the terminology of the US Patent Office).  The new subject matter guidance adds a first prong and a second prong.  Thus, following the first prong, an examiner is to determine whether the claim recites a judicial exception, in this case an abstract idea, by referring to subject matter groupings. The subject matter groupings are specified as: mathematical concepts, certain methods of organizing human behavior, and mental processes.

I note that the guidance is quite specific in saying that the claim must “recite” matter that falls within the enumerated groupings.  Thus, here, I would say it does not.   Nonetheless, I have to question if an examiner would take that view.  While the claim clearly does not recite a mathematical concept, I could imagine an examiner asserting that the claim recites a mental process.  While I would not agree with this latter conclusion, I could imagine that an examiner might say, for example, that a spreadsheet can be a mental process and that the language “implementing … on a computer” is nothing more than clever patent drafting.

How, then, might the claim be re-drafted to overcome such a rejection, but still retain some measure of breadth?  To challenge ourselves, and perhaps, recite slightly more than necessary, how about this claim?

  1. A method comprising:  implementing a spreadsheet via a computer, including determining contents of one or more cells thereof, based at least in part on one or more user-specified operations to be applied to signals and/or states to be provided as operands for the one or more user-specified operations.

This re-drafted claim at least arguably does not recite a mental process.  Rather, the claim language is pretty specific to make it clear that physical processes are taking place.  Thus, at least two out of three groupings have been drafted around.

Still, an examiner might say that a spreadsheet is a long-standing, fundamental economic practice or one that is a method of organizing human activities, demonstrating one danger with this particular grouping. It is, by its very nature, a bit vague.  Without making any admissions, thus, it would not be not entirely unreasonable for an examiner to suggest that a spreadsheet might fall into this grouping.

Fortunately, all is not lost.  Even if one fails to pass muster under the first prong, an opportunity to satisfy section 101 under the second prong remains.  Here, the new guidance says that if the recited exception is integrated into a practical application, then the claim is still patent-eligible.

Specifically, the guidance says that to meet the second prong the claim is to integrate the judicial exception into a practical application that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort to monopolize the judicial exception.  Being an advocate, my position would be that we have met this already with the claim above.

However, again, to be especially hard on ourselves, perhaps we need to make it clear that some sort of result is generated, so that, as a whole, the claim comprises an improvement over a spreadsheet generated by hand, perhaps, as follows:

  1. A method comprising:  implementing a spreadsheet via a computer, including: determining contents of one or more cells thereof, based at least in part on one or more user-specified operations to be applied to signals and/or states to be provided as operands for the one or more user-specified operations; and generating output signals and/or states based at least in part on the determining, wherein the generating includes generating a report that comprises at least a table portion or a sub-portion of the spreadsheet.

Now, it seems that it would be challenging to assert that a practical application with meaningful limits has not been claimed.  Furthermore, if needed, more dependent claims could be used to flush out more application specific features.  Thus, it would seem, we have successfully written or could successfully write a claim that is patent-eligible under the new guidance.

Given the length limitations of a post such as this, it is important that I now quickly move to the point of my prior musings.  So, I have three general observations to make in light of my “thought experiment” above.

First, that my re-drafted claim would pass the Mayo-Alice Framework under the close scrutiny of a court at best is unclear.  Thus, as one conclusion, even if you are able to draft a claim to pass the new subject matter guidance, it seems prudent to include, as dependent claims, features that you believe more clearly pass the patent eligibility test being applied by courts. 

As a second conclusion, in an attempt to provide greater certainty, it appears that the new guidance permits one to present broader patent-eligible claims to the US Patent Office than previously.  To rephrase this latter point, the Patent Office has provided guidance intended to ferret out the more egregious cases of patent-ineligibility, thereby leaving it to courts to sort out closer question situations, as this example might illustrate

As a third conclusion, with respect to the new guidance, the “money,” so to speak, resides in meeting the second prong. More specifically, while a patent drafter should certainly attempt to draft claims to comply with the first prong and the second prong; still, given the vagueness at the edges of the first prong groupings, efforts by a patent claim drafter to comply with the second prong appear to me to be more likely to succeed.

A Trademark Primer for Startups

by Ted D. Karr

Whether you are forming a new business or introducing a new product, Federal registration of a trademark is an important consideration to support your company’s business strategy.

A trademark is a company asset that gains value through association with the company’s product or service, and registration is the most efficient mechanism to protect that asset while building brand recognition. Federal registration is a great tool for providing notice of trademark ownership to other parties and it offers a presumption of ownership of your mark for use throughout the United States. Additionally, it provides for more efficient enforcement by bringing an action in one Federal court rather than each state court.

Most startups, of course, do not have a trademark expert on staff. So we’ve put together this quick primer to give you the basics on managing trademarks for your company.

What is a trademark?

A trademark is a brand name. Generally speaking, a trademark includes any word, name, symbol, device, or any combination thereof (or of same), used or intended to be used to identify and distinguish the goods/services of one provider from those of others, and to indicate the source of the goods/services. Examples of strong trademarks include Apple® and Chevrolet®. They identify and distinguish a source of goods and services, and consumers attribute a value and quality to them.

Selecting a mark

There is a natural tendency for those naming a product or service to choose a name that is descriptive or generic. By doing so, they are able to communicate to the consumer exactly what it is they are selling. However, in order to establish enforceable trademark rights the trademark must be distinctive. The more arbitrary or fanciful the mark is, the more distinctive it will be and the more protectable it will be. Choosing Washington Apples for an apple business would be descriptive and generic. Apple®, on the other hand, used in association with mobile phones, is arbitrary and distinctive.

What to protect

Executives from startups often ask me, “Should I register my business name?“, “Should I register my logo?”, “Can I protect a tagline with registration?” The short answer is yes, you can protect all of those, and many companies, even startups, protect their company name, their product names, and often logos and taglines. These marks become assets that grow in value with the company.

Registration on the Federal register

Seeking Federal registration of a trademark in the early stages of forming a company or naming a new product allows a company to develop protectable brands while avoiding pitfalls, such as infringement of another company’s mark. It is much less expensive to perform a trademark clearance search early in the naming process, than it is to rebrand a product line already introduced to the market, or worse yet to fight a trademark infringement claim.

Federal registration of trademarks is not required, but highly recommended. Owning a federal trademark registration on the Principal Register provides a number of advantages, including: 1) a legal presumption of ownership of the mark and an exclusive right to use the mark nationwide in connection with the goods/services listed in the registration; 2) public notice of your claim of ownership of the mark; 3) the right to use the federal registration symbol®; 4) the ability to bring an action concerning the mark in federal court, rather than having to sue for trademark infringement in each individual state; and 5) the use of the U.S. registration as a basis to obtain registration in foreign countries.

The process for securing Federal registration

Registration of a trademark typically takes 6 months to a year and the process is generally as follows:

  • Step 1: Identify mark(s) – Identify one or more possible marks for registration, then contact a trademark attorney. The attorney will work with you to develop a trademark registration strategy that aligns with your business strategy and the attorney will facilitate the trademark registration process.
  • Step 2: Search – The attorney will often start with a search for similar (or confusingly similar) marks. A search can range from a manual review of the USPTO trademark database (knockout search) to a more comprehensive search that identifies potential likelihood of confusion issues based on the federal trademark register, state registrars, domain names, company name searches, and common law use from web searches.
  • Step 3: Establish scope – Once the mark is cleared for possible registration, the attorney will work with you to identify the scope of the registration, including a selection of applicable classes of goods and services and the description of goods and services to be included in the application.
  • Step 4: Proof of use – If the application is based on an intent to use the mark in the future, the application will not require proof of use until later in the process. If the trademark is already and currently in use in commerce, the attorney will assist you with selecting and preparing an acceptable specimen of use to support the application and will assist with identifying the first date of use of the trademark and the first date of use in commerce for the application.
  • Step 5: File – The attorney will then prepare and file the trademark application through the Trademark Electronic Application System. While the application is pending you can use the mark in association with your goods/services and you can associate the “TM” symbol with your mark to provide notice of your unregistered trademark.
  • Step 6: Prosecution – The Examiner will issue an office action if the application needs to be modified or if the Examiner believes the mark is confusingly similar to another mark. If you are able to navigate around the Examiner’s issues, the examiner will publish the application for public review and opposition. The publication period is 30 days.
  • Step 7: Registration – Assuming no opposition is filed, the Examiner will issue a notice of allowance, followed by a certificate of registration. Once you receive your certificate of registration, you should associate the ® with use of the registered mark.
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