On March 1, 2017, (in a nonprecedential opinion) the court of appeals federal circuit (“CAFC”) invalidated 3 patents owned by Smartflash and asserted against Apple.  A jury found that Apple was liable for $533 in damages to Smartflash.  The CAFC threw out those damages when it found the patents ineligible.

At pages 7-8 the court laid out the relevant law and the test for patent eligibility:

     “Section 101 of the Patent Act states that “[w]hoever 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 therefore, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. In interpreting this statute, the Supreme Court has held that the broad language of this provision is subject to an implicit exception for “laws of nature, natural phenomena, and abstract ideas,” which are not patentable. Alice, 134 S. Ct. at 2355.

     “To determine whether the exception applies, the Supreme Court has set forth a two-step inquiry. Specifically, courts must determine (1) whether the claim is directed to a patent-ineligible concept, i.e., a law of nature, a natural phenomenon, or an abstract idea; and if so, (2) whether the elements of the claim, considered “both individually and ‘as an ordered combination,’” add enough to “‘transform the nature of the claim’ into a patent eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).”

At pages 9-10 the CAFC went on and applied inquiry (1) of the Alice rule:

     “In Alice, the Supreme Court explained that “fundamental economic practice[s]” and other “method[s] of organizing human activity” are not patent-eligible because they are abstract ideas. 134 S. Ct. at 2356–57. … Following this guidance, we have noted that when considering claims purportedly directed to “an improvement of computer functionality,” we “ask whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016);…             

“…The district court correctly concluded that “the asserted claims recite methods and systems for controlling access to content data, such as various types of multimedia files, and receiving and validating payment data.” Smartflash, 2015 WL 661174, at *8. As such, the asserted claims are directed to the abstract idea of conditioning and controlling access to data based on payment.”

At page 12, the CAFC applied inquiry (2) of the Alice rule:

“…As such, merely storing, transmitting, retrieving, and writing data to implement an abstract idea on a computer does not “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355.

“….There, we found that the claims were patent eligible because they transformed the manner in which a hyperlink typically functions to resolve a problem that had no “pre-Internet analog.” Id. at 1258. …As we noted there, the Ultramercial claims were “directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–16). Nevertheless, those claims were patent ineligible because they “merely recite[d] the abstract idea of ‘offering media content in exchange for viewing an advertisement,’ along with ‘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.’” Id.

Since the two step inquiry of Alice came out, my goal has been to try my best to make sure that the claims are NOT directed to an “abstract idea” but rather, try to write the claims so they are directed to a tangible result, namely “a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” as stated in 35 §101–in this way, one can hopefully avoid the entire Alice problem.  The opinion can be found here.


Next Inventors Association of Connecticut meeting on 2-27-2017

Hi All,

I plan on attending the next IACT meeting tomorrow night at Fairfield University.  Paul Striebel will be presenting about the Connecticut Center for Advanced Technology (“CCAT”).  CCAT is a continually evolving resource in the state. Its Mission is to create and execute bold ideas advancing applied technologies, IT strategies, energy solutions, STEM education and career development that help others succeed. In little more than 10 years, hear how CCAT has become a nationally recognized technology leader and what they are doing to help manufacturers, academia, government, entrepreneurs and nonprofit organizations thrive. More information can be found here.

Trademark Handbook from the USPTO

Hi All,
I was recently reviewing some information at the United States Patent and Trademark Office (“USPTO”) and saw this Trademark Handbook at the USPTO website entitled “Basic Facts about Trademarks”.  The Handbook gives basic information about the trademark system, how to do a trademark search, whether you need to apply for federal registration, and what benefits you get from registration.  I recommend it highly to all those who are interested in learning a little about trademarks.

Patents, Trademarks & Copyrights class at Milford Adult Education 3/23 to 3/30

Hi All.  It is not too late to register for my two part introductory class on Patents, Trademarks & Copyrights. This class is geared for the individual inventor and small business. An overview of the US patent system, trademarks, and copyrights will be presented. The patent process, preparation, prosecution and issuance will be discussed on the first night. Trademarks and copyrights will be discussed on the second night. Come learn about each and what you need to do to protect your invention. The class will be held on March 23 and March 30, 2017 at 6:30 pm to 8:30 at Law High School, Room 101, in Milford, CT.  To sign up, go here.

Wonderful meeting at the Inventors Association of Connecticut

Last night, January 31, 2017, I presented at the Inventors Associate of Connecticut (IACT) meeting at the Fairfield University Library in Fairfield, CT.  The topic of my presentation was “The Pros and Cons of Provisional Patent Applications.”

It was snowy evening, the roads were not too bad, but the sidewalks were treacherous.  The meeting began at 7 pm.  At 6:55 pm there was a grand total of 3 of us at the meeting.  But by 7:05 the number grew to about 18! There were lots of great questions and interactions with audience, and about 1/2 hour of questions at the end of the presentation.