Monday, October 03, 2016

CAFC: past practices in snail-mail render Intellectual Ventures claims “fundamental . . . practice[s] long prevalent” and thus abstract ideas.

A big loss for Intellectual Ventures at the CAFC; the outcome
The district court (D. Del., CJ Stark) held the asserted
claims of the ’050 patent and the
’142 patent to be ineligible under § 101, and the asserted
claim of the ’610 patent to be eligible. We affirm as to the
asserted claims of the ’050 patent and ’142 patent, and
reverse as to the asserted claim of the ’610 patent.

The CAFC wrote in IV vs. Symantec:

Here, it was long-prevalent practice for people receiving
paper mail to look at an envelope and discard certain
letters, without opening them, from sources from which
they did not wish to receive mail based on characteristics
of the mail.6 The list of relevant characteristics could be
kept in a person’s head. Characterizing e-mail based on a
known list of identifiers is no less abstract. The patent
merely applies a well-known idea using generic computers
“to the particular technological environment of the Internet.”
DDR Holdings, LLC v., L.P., 773 F.3d
1245, 1259 (Fed. Cir. 2014).

Judge Mayer wrote separately:

I agree that all claims on appeal fall outside of 35
U.S.C. § 101. I write separately, however, to make two
points: (1) patents constricting the essential channels of
online communication run afoul of the First Amendment;
and (2) claims directed to software implemented on a
generic computer are categorically not eligible for patent.

Mayer referenced Mark Lemley:

See Brief of Amicus Curiae Elec. Frontier Found. in
Support of Respondents, Alice, 134 S. Ct. 2347 (No. 13-
298), 2014 WL 828047, at *6–7 (“EFF Brief”) (“The software
market began its rapid increase in the early 1980s
. . . more than a decade before the Federal Circuit concocted
widespread software patents in 1994. . . . Obviously,
no patents were needed for software to become a $60
billion/year industry by 1994.”); Mark A. Lemley, Software
Patents and the Return of Functional Claiming,
2013 Wis. L. Rev. 905, 935 (2013) (“Software patents . . .
have created a large number of problems for the industry,
particularly for the most innovative and productive companies.
. . . [T]he existence of a vibrant open source
community suggests that innovation can flourish in
software absent patent protection.” (footnote omitted))


Software patents typically do not include any actual code
developed by the patentee, but instead describe, in intentionally
vague and broad language, a particular goal or
objective. See Dan L. Burk & Mark A. Lemley, Is Patent
Law Technology-Specific?, 17 Berkeley Tech. L. J. 1155,
1164–65 (2002) (“Unfortunately, the Federal Circuit’s
peculiar direction in the software enablement cases has
effectively nullified the disclosure requirement for software
patents. And since source code is normally kept
secret, software patentees generally disclose little or no
detail about their programs to the public.” (footnote
omitted)). Here, for example, the ’610 patent discusses
the objective of “screen[ing] computer data for viruses . . .
before communicating the computer data to an end user,”
’610 patent, col. 1 ll. 59–61, but fails to disclose any specific,
inventive guidance for achieving that goal. In effect,
the ’610 patent, like most software patents, describes a
desirable destination but neglects to provide any intelligible
roadmap for getting there.


The journal Fortune paid much attention to Mayer's separate concurring opinion:

Friday’s ruling is also significant because Judge Mayer eschews the insider baseball language that typically dominates patent law, and addresses patents in the broader context of technology and government monopolies.

Pointing out that intellectual property monopolies can limit free speech, Mayer notes that copyright law has built-in First Amendment protections such as “fair use” and that patent law must include similar safeguards. He suggests that the safeguard comes in the form of a part of the Patent Act, known as “Section 101,” which says some things—including abstract ideas—simply can’t be patented in the first place

IPBiz questions "insider baseball language"???



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