can you b odds s avoiding overcoming 101 r uspto · 7/22/2016 · serving the creative and legal...
TRANSCRIPT
CAN YOU BEAT THE ODDS?
STRATEGIES FOR AVOIDING & OVERCOMING
§101 REJECTIONS AT THE USPTO
Wednesday, July 20, 2016
~ TABLE OF CONTENTS ~
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II. Supporting Documentation
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Serving the
Creative and Legal Communities
Wednesday, July 20, 2016
Can You Beat the Odds?
Strategies for Avoiding & Overcoming
§101 Rejections at the USPTO
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Serving the
Creative and Legal Communities
Wednesday, July 20, 2016
Can You Beat the Odds?
Strategies for Avoiding & Overcoming
§101 Rejections at the USPTO
7
12:30 pm – 2:00 pm Eastern 10:30 am – 12:00 pm Mountain
11:30 am – 1:00 pm Central 9:30 am – 11:00 am Pacific
Online Programs Committee
Committee Leadership
8 © AIPLA 2016
Jennifer M. K. Rogers
Chair, Online Programs
Webinar Coordinator
Shumaker & Sieffert, PA
Jameson Ma
Vice Chair, Online Programs
Bookoff McAndrews
Presented by…
9
Nick Mattingly Webinar
Coordinator &
Moderator
Mattingly & Malur
Robert Sachs Fenwick & West, LLP
David Beck Viavi Solutions Inc.
Ken Nigon RatnerPrestia
Fenwick & West LLP
#AliceStorm
Patent Eligibility Forecast:
Dark Skies Continue,
Possible Clearing in Distant, Uncertain Future
Robert Sachs
Fenwick & West LLP
Fenwick & West LLP
Obligatory Slide on Alice Corp. v CLS Bank
Two-part test for eligibility:
Step 1: Are the claims at issue directed to a patent-
ineligible concept (e.g., abstract idea)?
Step 2: Is there an “inventive concept” – sufficient to
“transform” the claimed abstract idea into a patent-
eligible application? • “Under our precedents, [applying an abstract idea on a
computer] is not "enough" to transform an abstract idea
into a patent-eligible invention.”
Fenwick & West LLP
At the same time, we tread carefully in
construing this exclusionary principle lest
it swallow all of patent law. At some level,
"all inventions . . . embody, use, reflect,
rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.“
Alice Corp. v. CLS Bank
Words of Caution…
Fenwick & West LLP
What’s an Abstract Idea?
Alice: “In any event, we need not labor to delimit the precise
contours of the "abstract ideas" category in this case.”
Federal Circuit: “Because the Supreme Court has chosen not
to “delimit the precise contours of the ‘abstract ideas’
category,” Alice, 134 S. Ct. at 2357, “it is not always easy to
determine the boundary between abstraction and patent-
eligible subject matter.”
“[T]he two-step test may be more like a one step test evocative
of Justice Stewart’s most famous phrase [‘I know it when I see
it’].”).
Fenwick & West LLP
Don’t Worry, Software is Not Impacted…
“This is not the death of software patents. . . . This will not
affect software patents.” • Counsel for CLS Bank at Alice Oral Argument
Sotamayor: “Do you think we have to reach the patentability of
software to answer this case?”
Solicitor General: “Well, I think you can – I think the answer to
that question is no, not necessarily.” • Exchange during Alice Oral Argument
Fenwick & West LLP
Unintended Consequences
Fenwick & West LLP
#AliceStorm @Federal Courts
Don’t Blink, you’ll miss a court killing a patent. By the end of this week,
this slide will be out of date…
Don’t Blink II: Except for March 2016, the number of Section 101 decisions invalidating patents exceeded those upholding them. But March 2016 was simply a result of the Delaware court releasing 4 opinions that it held back for several months. Not a trend.
Fenwick & West LLP
Software is under attack: While business methods get the press, software patents are the ones being most frequently attacked in litigation
1
7
17
25
59
100
175
4
4
18
12
40
28
92
0 50 100 150 200 250 300
Hardware
Gaming
Biotech
Other
Communications
Business Methods
Software
Patents Challenged in Federal Courts, by Technology (n=582)
Invalid
Not Invalid
Judgment on the Pleadings on §101 are more successful than MSJ? Precisely what you would expect when courts consider patents in the absence of facts
Delaware accounts for 19% of all§101 decisions. E.D. Texas is an “outlier” for§101.
Fenwick & West LLP
State Street Bank (1998)
1998 marks the State Street decision (no prohibition on biz method patents). This is right as the Dotcom boom is occurring, so lots of patents filed. Then the Dotcoms go bust in 2000-01. They sell their business method patents, which are eventually bought up by patent trolls, and then litigated. That’s why we see these more biz method patent than others in Section 101 litigation.
#AliceStorm in the USPTO
Fenwick & West LLP
§101 Rejection Rates Before and After Alice
After Alice§101 rejection rates show modest increases or declines in most art units, except 3600 and 3600. Let’s dig deeper…
Fenwick & West LLP
Same data as before, but now aggregated by the technology type (Bio, Computer, Ecommerce, Other) and then the specific subject matter of the art units, particularly revealing what’s happen in Ecommerce vs the rest of TC 3600. Note the massive rise in 101 rejection rates there. The July Update made things worse not better. In 3700 Amusements/Education is the outlier: USPTO is taking position that games are per se not eligible.
Fenwick & West LLP
Final §101 Rejection Rates
“And That’s FINAL!”: A final rejection means that the examiner did not accept
your arguments and amendments. In the Computers and Other technology areas
the final rejection rates were essentially flat before and after Alice; in Biotech there
was slight (4%) increase.
But in Ecommerce we see a significant rise from 33% to 53% then to 92%, and
then a dip to 89%. That means Ecommerce examiners essentially ignore
amendments and arguments in response to §101 rejection, and go final far more
frequently than their peers.
Fenwick & West LLP
Examiner Section 101 Rejection Rates
How to read this table: Each row is a “bin” for an examiner’s own percentage 101 rejections. Each column is the cumulative % of examiners in the
technology area who have the row’s rejection rate. The 100% row means that an examiner has issued a 101 rejection in 100% of his/her cases; 50%
row means they issue 101 rejection in 50% of their cases.
Takeaway: After Alice, 92% of Ecommerce examiners issue 101 rejections more than 50% of the time as compared to just 1% to 5% of other
examiners—a 40x to 80x times difference.
Fenwick & West LLP
257 534
2914
6402
9139
4081
6906
13368
27273
0
5000
10000
15000
20000
25000
30000
Fuzzysharp Gametek Planet Bingo Bancorp Cyberfone Myriad* SmartGene Mayo* Alice*
Citations Since Jan. 24, 2014 in Office Actions
Precedential decision
Non-precedential decision
This is the number of citations to various CAFC cases in USPTO office actions between
1/24/14, the date of the Smartgene decision and 5/17/16.
Fenwick & West LLP
Patents 4 Patients
Obama’s Cancer Moonshot: “to achieve in just 5 years
research and treatment gains that otherwise might take a
decade or more”
Patents 4 Patients: the objective of the program “is to complete
the examination of an application containing a claim(s) to a
method of treating a cancer using immunotherapy within
twelve months of special status being granted”
USPTO: The USPTO is "standing up and doing its part to help
bring potentially life-saving treatments to patients, faster”
Fenwick & West LLP
Patents 4 Patients??
Disease No. of Patent Applications
Abandoned Since Alice
Cancer 126 Cardiovascular 15 Tumors 14 Diabetes 12 Alzheimers 10 Influenza 6 Inflammatory Diseases 6 Stem Cells 5
The Federal
Circuit and Patent
Eligibility Under
Alice: Recent Case
Review
David T. Beck
Director of Intellectual Property
Viavi Solutions Inc.
31
Alice v. CLS Bank
Two Part Framework from Mayo:
• Are the claims at issue are directed to one of the
patent-ineligible concepts (an abstract idea)?
• Do the claim elements both individually and as an
ordered combination transform the nature of the
claim into a patent-eligible invention?
32
Ultramercial v. Hulu • Recitation of a general computer and the Internet
did not provide an inventive concept.
• The addition of “merely novel or non-routine
components to the claimed idea” does not
“necessarily turn an abstraction into something
concrete.”
DDR v. Hotels.com • Claims necessarily rooted in computer technology
in order to overcome a problem specifically
arising in the realm of computer networks may be
patent eligible.
33
Enfish v. Microsoft
US Court of Appeals for the Federal Circuit
Decided May 12, 2016
By Judges Moore, Taranto, and Hughes
Opinion by Judge Hughes
34
Enfish v. Microsoft
Invention: US Patent 6,151,604
17. A data storage and retrieval system for a computer memory,
comprising:
means for configuring said memory according to a logical
table, said logical table including: a plurality of logical rows,
each said logical row including an object identification number
(OID) to identify each said logical row, each said logical row
corresponding to a record of information;
a plurality of logical columns intersecting said plurality of logical
rows to define a plurality of logical cells, each said logical
column including an OID to identify each said logical column;
and means for indexing data stored in said table.
35
Enfish v. Microsoft
Result:
Abstract Idea Proposed by Defendants,
but not adopted by the court:
NOT ABSTRACT
“the concepts of organizing data into a
logical table with identified columns and
rows where one or more rows are used
to store an index or information defining
columns.”
36
Enfish v. Microsoft No need for step 2 of the Alice Test:
• “The plain focus of the claims is on an
improvement to computer functionality itself, not
on economic or other tasks for which a computer
is used in its ordinary capacity.”
• “the claims…are directed to a specific
improvement to the way computers operate,
embodied in the self-referential table.”
• “the claims are directed to a specific
implementation of a solution to a problem in the
software arts.”
37
TLI v. AV AUTOMOTIVE
US Court of Appeals for the Federal Circuit
Decided May 17, 2016
By Judges Dyk, Schall, and Hughes
Opinion by Judge Hughes
38
TLI v. AV AUTOMOTIVE
Invention: US Patent 6,038,295 17. A method for recording and administering digital images, comprising the
steps of:
recording images using a digital pick-up unit in a telephone unit;
storing the images recorded by the digital pick-up unit in a digital form as digital
images;
transmitting data including at least the digital images and classification
information to a server, wherein said classification information is prescribable by a
user of the telephone unit for allocation to the digital images;
receiving the data by the server;
extracting classification information which characterizes the digital images from
the received data; and
storing the digital images in the server, said step of storing taking into
consideration the classification information.
39
TLI v. AV AUTOMOTIVE
Result:
Abstract Idea:
ABSTRACT
“the abstract idea of taking,
organizing, classifying, and
storing photographs.”
40
TLI v. AV AUTOMOTIVE Fails step 2 of the Alice Test :
• “the claims here are not directed to a specific
improvement to computer functionality”
• “The specification fails to provide any technical
details for the tangible components”
• “mere recitation of concrete, tangible
components is insufficient to confer patent
eligibility”
• “the specification…describes the telephone unit
and server as either performing basic computer
functions…or performing functions “known” in the
art.
41
BASCOM v. AT&T
US Court of Appeals for the Federal Circuit
Decided June 27, 2016
By Judges Newman, O’Malley, and Chen
Opinion by Judge Chen
42
BASCOM v. AT&T
Invention: US Patent 5,987,606 1. A content filtering system for filtering content retrieved from an Internet
computer network by individual controlled access network accounts, said filtering
system comprising:
a local client computer generating network access requests for said individual
controlled access network accounts;
at least one filtering scheme;
a plurality of sets of logical filtering elements; and
a remote ISP server coupled to said client computer and said Internet computer
network, said ISP server associating each said network account to at least one
filtering scheme and at least one set of filtering elements, said ISP server further
receiving said network access requests from said client computer and executing
said associated filtering scheme utilizing said associated set of logical filtering
elements.
43
BASCOM v. AT&T
Result:
Abstract Idea:
ABSTRACT
“filtering content”
44
BASCOM v. AT&T Passes step 2 of the Alice test:
• “the limitations of the claims, taken individually, recite
generic computer, network and Internet components, none
of which is inventive by itself”
• “As is the case here, an inventive concept can be found in
the non-conventional and non-generic arrangement of
known, conventional pieces.”
• “The claims do not merely recite the abstract idea of
filtering content along with the requirement to perform it on
the Internet…Nor do the claims preempt all ways of
filtering content on the Internet; rather, they recite a
specific, discrete implementation of the abstract idea of
filtering content.”
45
IN RE Smith
US Court of Appeals for the Federal Circuit
Decided March 10, 2016
By Judges Moore, Hughes, and Stoll
Opinion by Judge Stoll
46
IN RE Smith
Invention: US Pat. App 12/912,410 1. A method of conducting a wagering game comprising:
[a]) a dealer providing at least one deck of…physical playing cards and shuffling the physical playing cards to form a random set of
physical playing cards;
[b]) the dealer accepting at least one first wager from each participating player on a player game hand against a banker’s/dealer’s
hand;
[c]) the dealer dealing only two cards from the random set of physical playing cards to each designated player and two cards to the
banker/dealer such that the designated player and the banker/dealer receive the same number of exactly two random physical
playing cards;
[d]) the dealer examining respective hands to determine in any hand has a Natural 0 count from totaling count from cards, defined
as the first two random physical playing cards in a hand being a pair of 5’s, 10’s, jacks, queens or kings;
[e]) the dealer resolving any player versus dealer wagers between each individual player hand that has a Natural 0 count and
between the dealer hand and all player hands where a Natural 0 is present in the dealer hand, while the dealer exposes only a
single card to the players;
[f]) as between each player and the dealer where neither hand has a Natural 0, the dealer allowing each player to elect to take a
maximum of one additional card or standing pat on the initial two card player hand, while still having seen only one dealer card;
[g]) the dealer/banker remaining pat within a first certain predetermined total counts and being required to take a single hit within a
second predetermined total counts, where the first total counts range does not overlap the second total counts range;
[h]) after all possible additional random physical playing cards have been dealt, the dealer comparing a value of each designated
player’s hand to a final value of the banker’s/dealer’s hand wherein said value of the designated player’s hand and the
banker’s/dealer’s hand is in a range of zero to nine points based on a pre-established scoring system wherein aces count as one
point, tens and face cards count as zero points and all other cards count as their face value and wherein a two-digit hand total is
deemed to have a value corresponding to the one’s digit of the two-digit total;
[i]) the dealer resolving the wagers based on whether the designated player’s hand or the banker’s/dealer’s hand is nearest to a
value of 0.
47
IN RE Smith
Result:
Abstract Idea:
ABSTRACT
“a set of rules for conducting a
wagering game”
48
IN RE Smith Fails step 2 of the Alice test:
• “Here, Applicants’ claimed “method of conducting a
wagering game” is drawn to an abstract idea much like
Alice’s method of exchanging financial obligations and
Bilski’s method of hedging risk.”
• “Just as the recitation of computer implementation fell
short in Alice, shuffling and dealing a standard deck of
cards are “purely conventional” activities.”
• “We could envisage, for example, claims directed to
conducting a game using a new or original deck of cards
potentially surviving step two of Alice.”
49
USPTO May 4, 2016 Memo
• Identify the judicial exception by referring to what is
recited (i.e., set forth or described) in the claim and
explain why it is considered an exception.
• Identify any additional elements (specifically point to claim
features/limitations/steps) recited in the claim beyond the
identified judicial exception.
• Explain the reason(s) that the additional elements taken
individually, and also taken as a combination, do not result
in the claim as a whole amounting to significantly more
than the judicial exception.
50
USPTO May 19, 2016 Memo
• Reviews the Enfish and TLI Federal Circuit decisions and
concludes that the May 4, 2016 memo is consistent.
• When performing an analysis of whether a claim is
directed to an abstract idea, examiners are to continue to
determine if the claim recites (i.e., sets forth or describes)
a concept that is similar to concepts previously found
abstract by the courts.
• The fact that a claim is directed to an improvement in
computer-related technology can demonstrate that the
claim does not recite a concept similar to previously
identified abstract ideas.
Thank You!
Patent Procurement and Strategy in the Era of Alice and Mayo
AIPLA Online Presentation
July 20, 2016
Ken Nigon [email protected]
52
Overview
The Supreme Court identifies 35 U.S.C. § 101 as a threshold issue
“§§ 102 and 103 say nothing about treating laws of nature as if they were part of the prior art.”
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1304 (2012)
“§112 … does not focus on … the risk that a patent on the law [of nature] would significantly impede future innovation.”
Id.
53
Overview
“These considerations lead us to decline the Government's invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101.”
Id.
54
55
Overview
The Federal Circuit does not agree that § 101 is a better established inquiry.
“[C]ourts could avoid the swamp of verbiage that is § 101 by … [insisting] that litigants initially address patent invalidity issues in terms of the conditions of patentability defenses as the statute provides, specifically §§ 102, 103, and 112. … it would be unnecessary to enter the murky morass that is § 101 jurisprudence.”
MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250,1260 (Fed. Cir. 2012)
Overview
“Subject matter that complies with Section 112 averts the generality or vagueness or imprecision or over-breadth that characterize abstract ideas. These are conditions of patentability, not of eligibility. The ‘conditions and requirements of this title’ weed out the abstract idea.”
Bascom Global Internet v. AT&T Mobility LLC., Fed Cir. 2015-1763 Newman concurrence at page 4
56
Overview
Although eligibility under § 101 is threshold issue, many concerns of patent eligibility can be avoided by ensuring that patent applications conform to §§ 103 and 112.
• Obviousness
• Enablement
• Written Description
• Definiteness
As well as the Utility provisions of § 101
57
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.
58
Specific Utility
“A ‘specific utility’ is specific to the subject matter claimed and can ‘provide a well-defined and particular benefit to the public.’ This contrasts with a general utility that would be applicable to the broad class of the invention.”
MPEP § 2107.01 (I)(A) (Citation Omitted)
59
35 U.S.C. § 103
A patent for a claimed invention may not be obtained… if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
60
Obviousness
“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR Int'l Co. v. Teleflex, Inc. 127 S. Ct. 1727, 1742
“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp.”
Id.
61
62
35 U.S.C. § 112(a)
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Enablement
63
Overly-broad claims can be rejected for lack of enablement or lack of support in the written description
“Whether the flaw in the specification is regarded as a failure to demonstrate that the patentee possessed the full scope of the invention … or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under section 112, paragraph one”
Lizardtech, Inc. v. Earth Res. Mapping, Inc. 424 F.3d 1336, 1345 (Fed. Cir. 2005)
Written Description
“[T]he purpose of the written description requirement is to ‘ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field as described in the patent specification.’”
ARIAD Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1353 (Fed. Cir. 2010) en banc
64
35 U.S.C. § 112(b)
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
65
Definiteness
“When an applicant has not given notice to the public that his or her purely functional claim element is to be limited by the application of 35 U.S.C. Section 112, sixth paragraph, a first USPTO concern is that the claim is indefinite under 35 U.S.C. Section 112, second paragraph.”
Ex parte Miyazaki 89 USPQ2d (BNA) 1207, 1217 (BPAI 2008)
66
Apply to 101 Cases
Bilski v. Kappos
Alice v. CLS
Enfish v. Microsoft
TLI v. AV Automotive
Bascom v. AT&T
67
Bilski v. Kappos
“A method for managing the consumption risk costs of a commodity … comprising the steps of:
(a) initiating a series of transactions … wherein said consumers purchase said commodity at a fixed rate based upon historical averages…;
(b) identifying market participants … having a counter-risk position…; and
(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position”
68
Bilski v. Kappos
Invalid under § 103
• Hedging is known
Invalid under § 112(a)
• Specification does not provide written description commensurate with scope of claim
• Claim not enabled over its full scope.
Solution:
• Limit claim to specific, novel algorithm
69
Alice v. CLS “A method of exchanging obligations as between parties … comprising the steps of:
(a) creating a shadow credit record and a shadow debit record…;
(b) obtaining … a start-of-day balance for each shadow credit record and shadow debit record;
(c) for every transaction … adjusting each respective party's shadow credit record or shadow debit record, and
(d) …instructing … the exchange institutions to exchange credits or debits … in accordance with the adjustments of the said permitted transactions.”
70
Alice v. CLS
Invalid under § 103
• Mediated settlement is known
Invalid under § 112(a)
• Specification does not provide written description commensurate with scope of claim
• Claim not enabled over its full scope.
Solution:
• Limit claim to specific, novel algorithm
71
Enfish v. Microsoft
A data storage and retrieval system for a computer memory, comprising:
means for configuring said memory according to a logical table, … including:
a plurality of logical rows, each … row including an … (OID) to identify each said logical row, …;
a plurality of logical columns intersecting said plurality of logical rows…, each said logical column including an OID to identify each said logical column; and
means for indexing data stored in said table
72
Enfish v. Microsoft
Means-plus-function claims
“The district court found that the four-step algorithm sufficiently identified a structure for a person of skill in the art to implement the function of ‘configuring said memory according to a logical table.’ We agree.”
822 F.3d 1327, 1339 (Fed. Cir. 2016)
Claim directed to “specific type of data structure designed to improve the way a computer stores and retrieves data in memory” Id.
Not an Abstract Idea
73
TLI v. AV Automotive
“17. A method for recording and administering digital images, comprising …
recording images using a digital pick up unit in a telephone unit,
storing the images … in a digital form as digital images,
transmitting … the digital images and classification information [that] is prescribable by a user,
storing the digital images in the server, …
taking into consideration the classification information.”
74
TLI v. AV Automotive
“The specification fails to provide any technical
details for the tangible components, but instead predominately describes the system and methods in purely functional terms.”
2015-1372 at page 9
“Although the claims recite that the abstract idea of classifying and storing digital images in an organized manner is carried out in a telephone system, the ’295 patent fails to provide the requisite details necessary to carry out that idea.”
Id. at page 14
75
TLI v. AV Automotive
Claim not directed to hardware but to method of storing image data
Invalid under 112(a) as lacking written description
Invalid under 112(f) and 112(b)
Claimed functionally
Insufficient description of corresponding acts
76
Conclusion
Do not claim function or result
• Claim details of functional steps
• Claim how the result is achieved
• Specific algorithm
• Specific apparatus
Support broad claims with multiple specific embodiments
• Consider claim using means-plus-function format
77
Conclusion
Make sure claims satisfy §§ 101 (specific utility), 103 and that specification satisfies 112(a) and 112(b)
Model claim on patentable example from guidance
Improve computer hardware
Improve systems software or data structures
Avoid TC 3600 (Business methods)
78
THANK YOU
79
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1
The Mind as Computer Metaphor: Gottschalk v Benson and the Mistaken Application of Mental Steps to Software Inventions
Robert R. Sachs1,2
Of the three recognized judicial exceptions to Section 101—laws of nature, natural phe-nomena, and abstract ideas—none has proved more resistant to reasoned judicial analysis than the last. From its inception in Gottschalk v. Benson1 to the Supreme Court’s explicit refusal to define the term in Alice Corporation v. CLS Bank International,2 the boundaries of this exception have remained elusive. Rather than principled analysis drawn on well-developed theories in phi-losophy of language, linguistics, cognitive psychology and other disciplines, the courts have gone “hunting for abstractions”3 to slowly but steadily sweep a variety of different and unrelated constructs into this “murky morass.”4 Thus, abstract ideas are said to encompass fundamental economic practices, methods of organizing human activities, mathematical algorithms, ideas themselves, and finally mental steps.
Courts now routinely invoke this last subcategory to invalidate claims for software inven-tions that “can be performed in the human mind, or by a human using a pen and paper.” CyberSource Corp. v. Retail Decisions, Inc.5 The emphasis on can be is intentional and im-portant: it reflects the fundamental shift in the patent eligibility jurisprudence from considering whether the claimed invention was intended in fact to performed mentally (the “factual form” of mental steps) to a hypothetical embodiment of whether it could be (the “fictional form” of men-tal steps).
It is this shift in framing that has led to the vigorous use of the mental steps doctrine in the field of software patents. Between the June 2014 Alice decision and March 29, 2016, there have been 175 federal court decisions invalidating patents under Section 101, and 24% of those decisions relied upon the “mental steps” doctrine. The eighty-two patents thus invalidated were not limited to suspect categories such as “business methods,” but included electronic design au-tomation,6 computer and database security,7 information retrieval,8 microbiology,9 user interfaces for interactive television,10 telecommunications,11 and digital image management.12
How did the mental steps doctrine come to have such sweeping breadth? The answer lies at the intersection of the popularity of the “mind as computer” metaphor and aggressive advoca-cy. This paper will examine the development of the mental steps doctrine, focusing in particular on its transformation in Benson from the relatively narrow factual form of the doctrine to an unbounded fictional form of the doctrine.
1 The views expressed herein should not be attributed to Fenwick & West LLP, or any clients thereof, or other or-ganization with which I’m affiliated. 2 My thanks to Adam Lewin for his significant contributions and suggestions to this article.
2
I. THE ORIGINAL DOCTRINE: INVENTIONS REQUIRING MENTAL STEPS IN FACT
Historically, the “mental steps” doctrine was used only in very narrow circumstances, where an invention as conceived by the inventor and as claimed necessarily required steps per-formed in the human mind. This “factual form” of the mental steps doctrine arose in cases involving inventions that occurred before the use of computers in business and industrial applica-tions. The patent disclosures thus described the invention in terms of mathematical or other procedures that could only be performed mentally by “head and hand,” or human judgments, at best guided by mathematical or other considerations. That is, there was no disclosure of any way to perform the mathematical operations except by mental operations, at best assisted using exist-ing mechanical devices, such as adding machines.
The earliest Court of Customs and Patent Appeals case that expressly applied the mental steps doctrine to method claims is In re Heritage (1945).13 The claims were directed to a method of “producing a porous coated fiber board” including coating samples with varying amounts of material, testing them for sound reduction coefficient, selecting a specimen within the range of coefficients, and using the amount of material applied to the selected specimen as the criterion for further coatings.14 There was no disclosure of any apparatus or machine used to make the selection. Rather, all of these steps had to be carried out by the artisan using his own judgment. The court held that “owing to the fact that claims 1 and 2 are essentially directed to a purely mental process of making a selection of the amount of coating material to be used in coating a porous fiber board in accordance with a predetermined system they do not define patentable sub-ject matter.”15
The C.C.P.A. applied In re Heritage in a line of cases considering mental steps before the advent of claims for computer implemented inventions.16 By the time of In re Prater (1951),17 pro-grammed digital computers were in common use in commercial and scientific settings. The claims before the court included a method of performing spectral analysis on gas mixtures to identify an unknown component with minimum error. Claim 9 recited:
In mass spectrographic analysis where, from a given sample of material there is generated a spectrum function having peaks therein spaced along a mass scale with respect to which the relationship between concentration, contribution factor of each of the m constituents of the mixture and the magnitude of each of the n peaks in said spectrum is represented by a set of m linear algebraic equations and where n is an integer greater than m, the method of selecting for analysis a set of m peaks least susceptible to error in concentration determination which comprises
dividing each said contributing factor for each peak by a normalizing function,
successively generating a determinant function for each said set of peaks,
successively generating output indications of the magnitudes of said de-terminant functions, and
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selecting therefrom the determinant function of greatest magnitude for identification of said peaks least susceptible to error.18
The court distinguished its prior decisions of In re Abrams and In re Yuan, in which there was no physical apparatus to perform the claimed processes.19 That is, the court viewed the mental steps embodiment as a necessary one that required human performance and judgment. The Prater court stated that “Although in view of our decision here we find it unnecessary to analyze and/or review in depth the so-called "mental steps" doctrine, it would appear that the disclosure of appa-ratus for performing the process wholly without human intervention merely shows that the disclosed process does not fall within the so-called "mental steps" exclusion.”20 In support of this narrow interpretation of the mental steps doctrine, the court cited an early treatise on the pa-tent eligibility of software, “Disclosure of apparatus for performing the process without human intervention may make out a prima facie case that the disclosed process is not mental and is, therefore, statutory.”21 Ultimately, the court did invalidate the method claim, but under Section 112, not Section 101, because claim did read on “a mental process augmented by pencil and pa-per markings,” and “thus interpreted, reads on subject matter for which appellants do not seek coverage, and therefore tacitly admit to be beyond that which "applicant regards as his inven-tion.”22 As to the apparatus claims, the court held that “We do not perceive of any "mental steps" issue in regard to apparatus claim 10. It is quite clear that claim 10, in typical means-plus-function language as expressly permitted by the third paragraph of 35 USC 112, does not en-compass the human being as the "means" or any part thereof.”
The question of whether a method claim that recited computer elements was statutory was intentionally left open in Prater. The Court of Customs and Patent Appeals addressed that specific question a few months later In re Bernhart (1951).23 The claims included method and apparatus claims for automatically making a two-dimensional portrayal of a three-dimensional object from any desired angle and distance and on any desired plane of projection. The patent disclosed the use of a general purpose computer and the specific equations used to generate the projections. The method claim recited steps of programming the computer to perform equations and generate the plots.24 The apparatus claims were set forth in means-for form, including “elec-tronic digital computer means programmed” to compute a set of signals values based on a specified equation.
Affirming the eligibility of the apparatus claims first, the court stated broadly:
Moreover, all machines function according to laws of physics which can be math-ematically set forth if known. We cannot deny patents on machines merely because their novelty may be explained in terms of such laws if we are to obey the mandate of Congress that a machine is subject matter for a patent. We should not penalize the inventor who makes his invention by discovering new and unobvious mathematical relationships which he then utilizes in a machine, as against the in-ventor who makes the same machine by trial and error and does not disclose the laws by which it operates.25
This is a profound insight into not just the legal jurisprudence of patent eligibility, but in-to the nature of the creativity and innovation. The inventor who discovers and discloses the law governing the operation of a machine for new purposes makes a greater contribution to the store
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of human knowledge than one who merely discovers the machine by trial and error. The former teaches principles that can be further developed upon and extended, often to new and unantici-pated domains; the latter merely contrives a new artifact, leaving it to others to determine—or perhaps not—the governing relationships. The latter is at best a highly skilled craftsman; the former is a true engineer.26
The court also upheld the method claims:
In the case now before us, the disclosure shows only machinery for carrying out the portrayal process. In fact it is the chief object of the invention to eliminate the drudgery involved in a draftsman's making the desired portrayals. Accordingly, a statutory process is here disclosed. Looking then to method claim 13, we find that it in no way covers any mental steps but requires both a "digital computer" and a "planar plotting apparatus" to carry it out. To find that the claimed process could be done mentally would require us to hold that a human mind is a digital comput-er or its equivalent, and that a draftsman is a planar plotting apparatus or its equivalent. On the facts of this case we are unwilling so to hold. We conclude that the method defined by claim 13 is statutory, and its patentability must be judged in light of the prior art.27
Here the court expressly denounces the fictional approach to mental steps, since that would re-quire holding that the human mind was the equivalent of a digital computer, and there were no facts in the record (nor could there have been) in support of such a finding. The court affirmed this approach a year later in In re Mahoney (1952), where it upheld method claims for synchro-nizing a receiver with an incoming bitstream based on comparisons of bit values.28 The court held that the words "bit" and "bit stream," as used in the claims and understood in the art, make “mental performance of the claimed process impossible.”29 The court emphasized “it would be absurd to say that the claims reasonably read on a mentally implemented process. We are aware of no way in which the human mind can operate on such signals.”30
This line of reasoning was further extended by the court in In re Musgrave, in an opinion by Judge Rich.31 The claims there dealt with methods of correcting seismographic signals for timing errors caused by variations in the soil that the signals pass through before being detected at a seismograph.32 The court again rejected the fictional form of the mental steps argument that the claims were ineligible “merely because some or all the steps therein can also be carried out in or with the aid of the human mind or because it may be necessary for one performing the pro-cesses to think.”33 Instead of asking whether mental steps were involved, the court proposed the technological arts test.34 . Judge Baldwin, the author of Prater, concurred in the result, but ex-pressed grave concern that the latter was an unnecessary change in the law that had “foreseeable problems” in “interpreting the meaning of "technological arts.””35 Nonetheless, Judge Baldwin agreed that “cases before this court have made it clear that there is now only a very narrow scope to this "fearful" mental steps doctrine,” noting that “in reality very little remains of the "mental steps" doctrine.”36
The Court of Customs and Patent Appeals maintained this view of mental steps in In re Foster,37 In re McIlroy,38 and most significantly, in its decision in In re Benson.39 In In re Ben-son, the USPTO rejected the claims as being directed to mental steps. The court disagreed, and
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upheld the claims as statutory.40 The court was nonplussed by the argument that a human could perform the claim “manually although in actual practice it seems improbable anyone would ever do that,” because of “speed measured in milli- or even micro-seconds being essential in the prac-tical utilization of such a process.”41 The court’s acknowledgement of the importance of speed of operation in practical embodiments is another example of how the Rich court was sensitive to the realities of actual technology practice—in contrast with the present view of the Federal Circuit that speed of computation is irrelevant.42 The court went so far as to state that even mental per-formance was irrelevant, because such mental steps were “only to the extent necessary to assure that [the operator] is doing what the claim tells him to do. In no case is the exercise of judgment required or even the making of a decision as between alternatives.”43
Thus, until the Supreme Court’s decision Benson, no court had invalidated claims com-puter-implemented inventions using the fictional form of the mental steps doctrine, that the claims “could be” performed by a human. Indeed, this approach had been repeatedly rejected by Judge Rich and others on the Court of Customs and Patent Appeals. Instead, the court applied the factual form of the doctrine: claims to a computer-implemented invention were ineligible on-ly if mental implementation was necessary. A disclosure of a programmed computer was sufficient structure to demonstrate the mental implementation was not necessary.
To extend the mental steps doctrine into the fictional form, the Court in Benson needed support for the assumption that the operations of a computer are “the same procedures which a human being would perform” by “head and hand.” As will be shown next, this view was set forth by the Solicitor General in its brief to the Court.
II. BENSON AND SHIFT TO FICTIONAL MENTAL STEPS
The fictional form of the mental steps doctrine arose in Benson, where the Court stated:
A digital computer, as distinguished from an analog computer, is that which oper-ates on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.44
and
the conversion of BCD numerals to pure binary numerals can be done mentally… can al-so be performed without a computer.45
Where did the Supreme Court come up with this principle that a digital computer solves prob-lems the same way a person does? The Court cited Ronald Benrey, Understanding Digital Computers (1964) as support. First, it seems odd that a book titled Understanding Digital Com-puters (“UDC”), which would likely be directed to a technical discussion of the operation of digital computers, would make such an authoritative-sounding statement at a time when science had little real insight into how the human brain actually performs calculations. Second, the cita-tion to UDC is illuminating but not sufficient, since clearly the Supreme Court did not do its own research to source this statement.
The explanation for the latter problem is that this principle was argued by the Solicitor General, based on a partial quotation from UDC:
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A digital computer solves a problem by actually doing arithmetic in much the same way a person would by hand.46
The Solicitor General went on to argue that a computer performs essentially mental steps when performing calculations because “the conversion of BCD numerals to pure binary numerals can be accomplished by a conventional series of mental steps.”47 While the Solicitor General’s brief acknowledged that “the computer operates by physical equivalents of logical functions,” the So-licitor General nonetheless maintained that “the functions themselves are the same procedures which a human being would perform in working the same computation, but reduced to the physi-cal characteristics of the device.”48 These two statements of procedural equivalence became the basis on which the Supreme Court transformed the mental steps doctrine from the factual form to its fictional one and applied it to computer-implemented inventions.
But that leaves the question of whether UDC actually made this rather bold assertion about the procedural equivalence of brains and computers. It turns out that it did not.
III. UNDERSTANDING DIGITAL COMPUTERS AND THE USE OF THE MIND-COMUTER METHOR
A careful reading of UDC shows that to support its argument that computers use the same procedures as humans, the Solicitor General took the various statements out of context.49
As author Ronald Benrey explains in his introduction to UDC, in 1964 “advances in elec-tronic digital computer technology [had] made possible many spectacular scientific achievements that would have seemed like ‘science fiction’ three or four decades ago,” and computers were “generally pictured as incredibly complex electronic machines, aglow with flashing lights.”50 Benrey’s goal as a writer was to demystify computers and clearly explain that they “owe many of their capabilities to their inherent simplicity.”51 His book was not intended for scholars, but “for the person who wants more than a “cocktail party conversation” familiarity with digital comput-ers, but who does not have the background or desire to delve into a rigorous consideration of electronic digital computer design techniques.”52
In the early 1960s, many hobbyists were familiar with analog computers, which had been in use for many years. Thus, before delving into the details of the structure of digital computers, UDC included a short section labeled What does “digital” mean? to distinguish between analog and digital computers. This is the section which the Solicitor General selectively quoted, and thus it is reproduced here in its entirety. The portion quoted by the Solicitor General is shown in italics:
The “digital” in digital computer tells us a lot about how these devices calculate. As we have said, input numbers are fed into a digital computer and output num-bers are taken out. But what happens inside?
“Digital” describes any calculating mechanism that represents quantity with inte-gers as it calculates. Another way of saying the same thing is that a digital computer solves a problem by actually doing arithmetic, in much the same way a person would “by hand.”
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If you were to look inside a digital computer as it is performing a calculation (we will in later chapters) you would see different numbers represented by the mecha-nism at various times: At the start of the problem, the input numbers would be “visible.” Then, as the calculation goes on, “intermediate” results would appear. Finally, the answer would pop into view, just before it is sent out through the out-put. In effect, the computer is “writing the numbers down” as it does the arithmetic.
Notice that “digital” can be used to describe any calculating device that represents quantity in this fashion. Desk calculators, cash registers, abacuses and most me-chanical counters, such as odometers, meet this requirement. These devices are actually mechanical digital computers. The abacus represents numbers with wooden beads, the others use gears or notched wheels.53
As is clear from the entire context of this section, UDC here explained that digital computers op-erate on digits—representations of discrete numbers. UDC provided additional examples to illustrate the concept, noting that many types of calculating devices familiar to 1960s readers can be considered digital: desk calculators, cash registers, abacuses, and even odometers in automo-biles. Later on, Benrey returned to the idea that devices that manipulate numbers can be considered digital, writing, “We learned in Chapter 1 that digital mechanisms actually represent within themselves, the numbers being manipulated. Pascal’s adding machine, for example, repre-sented the numbers with notched wheels. Each wheel had ten notches—one notch for each decimal digit.”54 Thus, it is clear from context that Benrey’s statement was as part of a larger discussion that related the meaning of digital—contrasted with analog—computation to some-thing Benrey’s reader were familiar with—doing arithmetic. It was not intended as a statement of scientific fact that computers operate like human brains.
Moreover, as a full reading of the third paragraph makes clear, Benrey used a simple analogy—arithmetic done with pencil and paper—to help lay readers understand this founda-tional concept. Obviously one cannot “look inside” a computer to “see” actual numbers “pop into view”—this is simply a useful metaphor—nor does the computer “write down” anything on pa-per. When UDC was published in 1964, most people performed simple arithmetic using pencil and paper, and so Benrey used the pencil-and-paper analogy since it would have been instantly understood by every reader. That made it an effective and obvious figure of speech to help read-ers grasp an essential difference between analog and digital computers—but it was never intended as a scientific statement.
Most importantly, Benrey indeed took pains to point out that computers operated differ-ently from human minds. In other portions not cited by the Solicitor General, Benrey expressly distinguished computers from human minds. In his introduction, Benrey lamented that “newspa-pers are forever reporting the latest feat performed by an electronic brain. As a result amazing intellectual powers and super-human thinking abilities have been attributed to digital comput-ers.”55 Benrey then stated that “digital computers cannot ‘think,’ and as we shall see, they are not as complicated as most people believe. In fact, computers owe many of their capabilities to their inherent simplicity.”56 Benrey went on to explain that “No computer ‘thinks for itself’; it only operates at high speed according to the instructions it has received.”57
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In summary then, UDC provided no support—indeed precisely contradicted—the propo-sition for which the Solicitor General cited it, and upon which the Supreme Court relied when it applied the mental steps doctrine to Benson’s claims.
IV. FUNCTIONALISM: A PHILOSOPHICAL ARGUMENT IN SUPPORT OF THE FUNCTIONAL EQUIVALENCE OF MENTAL STEPS AND COMPUTER
Even if UDC did not support the Solicitor General’s argument that “the functions them-selves are the same procedures which a human being would perform in working the same computation,” there remains whether this theory nonetheless holds merit on its own. This is an important question because this argument underlies the “pencil and paper” test of patent eligibil-ity that is frequently invoked by the courts.
The functional equivalence argument—that the mind/brain operates in a similar way as a digital computer—is now a familiar part of the “mind as computer” metaphor. The “mind as computer” metaphor is presently formalized as the computational theory of mind or computa-tionalism,58 the view “that intelligent behavior is causally explained by computations performed by the agent’s cognitive system (or brain).”59 Simply stated, as applied to humans, it holds that cognition in the brain is provided by computation. This view is now the dominant view in cogni-tive science and related fields.
The Solicitor General’s argument is more specific than that. It argues that computers ac-tually perform the same functional procedures as the mind/brain itself. This stronger claim falls within a specific version of computationalism known as “machine functionalism” formalized by Hilary Putnam:
According to this model, psychological states (“believing that p,” “desiring that p,” “consider whether p,” etc.) are simply “computational states” of the brain. The proper way to think of the brain is a digital computer. Our psychology is to be described as the software of this computer—its “functional organization.”60
Simplified, functionalism is the view that mental states are identified by what functions they per-form, rather than by the underlying structure of the brain that generates them. This thesis was inspired by numerous developments in computer science and in the field of artificial intelligence, which sought to construct machines that could think. Early successes in the field, such as the computer program Logic Theorist (1956), which successfully proved numerous mathematical theorems by a deductive process, suggested that this goal was achievable.61 In the 1930s Alan Turing proposed the model of an abstract machine (the Turing Machine) that could be pro-grammed to compute any computable sequence.62 In the 1940’s McCollough and Pitts modeled the operation of neurons in the brain using Boolean logic, the same logic used in computer pro-gramming.63 John von Neumann, regarded with Turing as one of the architects of the modern computer,64 took these works further and proposed a general theory of automata in which both living organisms and machines could be described using the same principles, including those of the sort described by McCollough and Pitts. To von Neumann, biological entities, including the human brain, could be modeled and replicated, in digital mechanisms, at least under certain cir-cumstances.65 However, functionalism, as proposed by Putnam, and as implicitly present in the mental steps doctrine, is not without its problems. Putnam himself described his own functional-
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ism doctrine: “Functionalism, construed as the thesis that propositional attitudes are just compu-tational states of the brain, cannot be correct.” 66
But even machine functionalism does not make the same philosophical and factual com-mitments set forth by the Solicitor General’s procedural equivalence argument. Machine functionalism describes the operations of the mind/brain architecturally. It makes no argument or assumption about how specific types of computations would be made by the brain, nor does it imply that a digital computer, even accounting for the differences in its “physical characteris-tics,” performs the same procedures as a human brain would for a given function. While there are still strong arguments for more sophisticated versions of functionalism, the Solicitor Gen-eral’s procedural equivalence argument is very likely wrong, particularly when applied to mathematical operations.
Over the past two decades, significant work in neurophysiology has begun to discretely identify the specific structures in the brain that are involved in mathematical operations and how those operations are performed.67 The brain does not simply add, subtract, multiply and divide numbers in a single region, but instead uses between ten and twenty different regions performing different tasks.68 In particular, multiplication first involves conversion of the numbers into a lin-guistic or verbal (word) format to access a verbal (not numerical) memory of multiplication tables; in contrast, number comparisons (e.g., “is 3 > 7?” or deciding between images which has more “dots”) are entirely non-linguistic.69 As Dehaene notes, “The diversity of cerebral areas involved in multiplication and comparison underline once more that arithmetic is not a holistic phrenological “faculty” associated with a single calculation center. Each operation recruits an extended cerebral network. Unlike a computer, a brain does not have a specialized arithmetic processor.”70 Not only are many mathematical operations linguistically driven, they are use the same brain circuits used for the perception of time, space, and even hand and eye movement.71 Tests showed that during addition, subjects’ eyes moved to the right (increasing along an internal number line, and during subtraction, their eyes moved to the right (decreasing along the number line).72 Dehaene observes: “When we think about numbers, or do arithmetic, we do not solely rely on a purified, ethereal, abstract concept of number. Our brain immediately links the abstract number to concrete notions of size, location and time. We do not do arithmetic “in the ab-stract.””73 The brain does not merely compute numbers: it uses multiple and diverse operations involving linguistic, spatial, visual, and temporal components.
Thus, the arguments and assumptions that underlie Benson’s procedural equivalence of computers and brains are false. Computers do not convert digital bits for “1” and “0” into the words “one” and “zero” or activate a digital camera (the “eyes”) to determine results. The actual computational procedures performed by a computer are entirely different both in form and pro-cess from what a human does, even if both would ultimately achieve the same results. For example, when a computer multiplies two numbers, the underlying procedures are entirely dif-ferent from what a human would do. What a human does in a few operations to multiply two digits, say “9 x 8,” requires dozens of operations at the level of individual logic gates (complexes of transistors). Even if a person were to perform the calculation in binary, the sequence of opera-tions used would be quite different.
Another problem with this procedural equivalence argument is that it turns the inventor’s disclosure of the invention as required by Section 112 against the invention’s eligibility under
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Section 101. To satisfy Section 112, the disclosure must allow one of skill in the art to practice the invention. To an engineer this is often an explanation of the operative principles of the inven-tion, often in terms of engineering equations or other computational representations. Once thus described, a court can readily conclude that a human can perform the equations with “pencil-and-paper”—a trivial conclusion at best.
One rebuttal to this line of analysis is that of course computers do not do exactly what human brains do, because they have digital circuits, not neurons. What matters, this line of rea-soning goes, is that operations are functionally equivalent, not physically or procedurally the same. But this argument begs the question since there does not appear to be any level of func-tional organization at which the actual native operations of the brain use the “same procedures” as, or are functionally equivalent to, the computer. The argument assumes that relevant proce-dures are the entirely artificial ones created by humans to define the mathematical operations of interest. But that ignores the fact that these operations are implemented on a machine that was designed in the first place in accordance with mathematical principles precisely for the purpose of implementing such procedures. The power of computers comes not from their ability to per-form monolithically complex equations per se, but rather from a design that relies on the ability of the hardware to perform a limited number of very simple, repetitive operations at high speed. This hardware model was adopted because mathematical problem solving involves breaking complex operations down into a large (often extremely large) number of simpler operations. Af-ter all, humans invented the formal symbolism of arithmetic, and likewise invented computers, as well as other machines, to perform these functions. Put another way, generally speaking, there is no algorithm that is executed by a computer that was not first thought of by a human computer programmer. It should be no surprise then, let alone considered an insightful analysis, that a per-son can perform the operations described for a computer.
Further, the articulation of the Step 1 of the Alice test, to identify whether the claim is “directed to” an abstract idea only serves to make matters worse, not better.74 The courts use this step as a “quick look” for the “gist” of the claim.75 This merely allows the courts to create a high level description of the purpose of the invention, which in the software domain is frequently to solve a functional problem--the very reason humans create artifacts in the first place.76 At that point it becomes trivially easy to argue that a human could perform the function. For example, in Comcast IP Holdings I, LLC v. Sprint Commc'ns Co. L.P., the claim was directed to a method of optimizing a telephone network, and included a step of “determining whether a telephony pa-rameter associated with the request requires acceptance of a user prompt to provide to the application access to the telephony network, 77 The court boiled this down to simply “the abstract idea at the heart of the claim is the very concept of a decision,” which immediately led to the conclusion that “A decision is a basic mental process upon which everyone relies. A decision may be performed, and generally is performed, entirely in the human mind.”78 In short, Step 1 of the Alice test enables the question-begging of the fictional form of the mental step doctrine to begin right off the bat.
Another key difference between how computers perform their operations and how hu-mans do is that humans, but not computers, understand what they are doing, and the meaning of their operations. A human undertaking the task of sorting book on a shelf alphabetically by title knows that she is dealing with books, that the sequence of words on the binding are titles, and that words are composed of letters, and so forth. She performs these operations directly on the
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words. This knowledge of the domain impacts how the operations themselves are performed. A computer can sort the same titles, but only once each title is represented as a string of numbers—the computer does not “know” that the numbers represent a book title any more than the human’s finger “knows” she is moving a book, and cannot use this knowledge to change the manner of sorting.
Thus, whether taken as a specific or general statement, the arguments made by the Solici-tor General and adopted by the Supreme Court, do not support the functional equivalence of the operations of digital computers in relationship to human minds.
V. THE CONTINUED APPLICATION OF MENTAL STEPS TO SOFTWARE IN-VENTIONS
Unfortunately, the Supreme Court’s misstatement of the relationship between computers and minds continues to this day to be cited as authority and a statement of fact about how com-puters operate. The Court’s conversion of the mental steps doctrine from its factual form to its fictional form in essence turned the performance of mental steps from being a necessary condi-tion for ineligibility to a sufficient condition. And since the Alice decision refused to offer a definition or even a methodology for identifying abstract ideas, the fictional form of mental steps has been taken up as a model tool. As a result, it has substantively impacted both the case law and the outcome of many patent cases.
Though the Federal Circuit decided dozens eligibility cases after Benson, it was not until some forty years later that Federal Circuit adopted the fictional form of mental steps. First, in Cyber-source, that court stated that “in finding that the process in Benson was not patent-eligible, the Supreme Court appeared to endorse the view that methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas--the "basic tools of scientific and technological work" that are open to all.”79 Then in Bancorp, the court stated
As the Supreme Court has explained, “[a] digital computer . . . operates on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.” Benson, 409 U.S. at 65. Indeed, prior to the information age, a “computer” was not a machine at all; rather, it was a job title: “a person employed to make calculations.” Oxford English Dictionary, supra. Those meanings con-veniently illustrate the interchangeability of certain mental processes and basic digital computation, and help explain why the use of a computer in an otherwise patent-ineligible process for no more than its most basic function—making calcu-lations or computations—fails to circumvent the prohibition against patenting abstract ideas and mental processes.80
Here too, the statements from UDC have been taken out of context and used in a manner at odds with their intended purpose and meaning. However, as should be clear, the digital operations of a computer are not “interchangeable” with the mental processes of a human. As demonstrated above, that both can be described in a common way does not make them the same in fact. If the programmed operations of a computer are interchangeable with the mental processes of a human, then so too are the mechanical operations of an adding machine, since these operations can like-
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wise be described as the “same procedures” performed by a human. Clearly, this result would not be correct, and thus it implies that the “interchangeability” premise is false.
After Alice, reliance on Benson’s “mental steps” and the pencil-and-paper test increased significantly, even where the claims were directed to processes that were disclosed as fully per-formed by a computer. These types of claims that would have been eligible under the pre-Benson factual mental steps approach of Judge Rich and the Court of Customs and Patent Ap-peals. What follows is a short survey of several exemplary cases:
In Planet Bingo, LLC v. VKGS LLC, the Federal Circuit stated that “The district court correctly concluded that managing the game of bingo “consists solely of mental steps which can be carried out by a human using pen and paper,” and expressly relied on Benson: “Like the claims at issue in Benson, not only can these steps be “carried out in existing computers long in use,” but they also can be “done mentally.””81
In Broadband iTV, Inc. v. Oceanic Time Warner Cable, LLC, the claims included steps of “enabling the online uploading of videos” and “converting the uploaded videos standard TV digital format.” 82 The court nonetheless held “Even though the ‘336 Patent anticipates that its steps will be performed through computer operation, it describes a process that a person could perform “[u]sing a pen, paper, and her own brain.”83 The court did not explain how a human with pencil and paper could themselves enable uploading of videos or convert the videos into a specif-ic digital format.
In Concaten, Inc. v. Ameritrak Fleet Solutions, LLC, one of the claims dealt with generat-ing maps of the locations of snow plows, and presenting graphical users interfaces based on such maps, along with automated instructions to the snow plow operator. The claim included steps of “processing, by the server, the received collected information to (i) provide a map associated with a physical location of a selected snow maintenance vehicle” and providing, over the wire-less cellular network, the map and an operator instruction to the selected snow maintenance vehicle of the plurality of snow maintenance vehicles, wherein the map is visually displayed, by a touch screen monitor”.84 The court held that these steps were “nothing more than taking steps routinely performed by humans.”85
In Evolutionary Intelligence, LLC v. Sprint Nextel Corp., the claims were directed com-puter search methods using a data structure described as a “container” formed of “registers” with specific types of relationships ("the container registers having defined therein data comprising historical data associated with interactions of the identified containers with other containers from the plurality of containers, wherein searching the first container registers comprises searching the historical data;” etc.). 86 The court held that the claims cover “no more than a computer automa-tion of what “can be performed in the human mind, or by a human using a pen and paper.””87
In Kinglite Holdings Inc. v. Micro-Star Int'l Co. Ltd., the claims were directed to encrypt-ing the BIOS of a computer:88 “A method to securely invoke Basic Input and Output System (BIOS) services, comprising: creating a service request to invoke BIOS services; signing the ser-vice request with a service request signature generated using a private key in a cryptographic key pair; and verifying the service request signature using a public key in the cryptographic key pair to ensure the integrity of the service request.”89 The court held that the steps of “generating a
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signature using a “private key” and verifying that signature with a “public key” can be performed by a human who is capable of reading such keys.”90 The court did not explain exactly how a human would mentally create a service request for a BIOS service, since such an operation takes within the operating system, not at any user-accessible level of the computer.
Finally, perhaps the strangest application of the mental steps doctrine is Stanacard v. Rubard, LLC.91 The invention involved combining caller ID and call forwarding to route and connect a call to a unique recipient. The customer of a telephone service has their own phone number, as is normal. The telephone service also provides a local ten-digit telephone number that the customer can assign to a second phone number (including long distance international num-bers) of another person. When the customer, calling from their own phone, calls the local number, the telephone service determines the caller’s number using caller ID, and then looks up the second number that the caller assigned to the local number. The service then connects the caller to that second number.92 Claim 1 recited:
1. A method comprising
detecting an identity of a caller;
receiving an assigned incoming telephone number;
identifying a recipient associated with the assigned incoming telephone number and the identity;
connecting the caller and the recipient;
wherein said caller has a plurality of assigned incoming telephone numbers to choose from, at least one of said plurality of assigned incoming telephone numbers being associated with said recipient,
wherein each assigned incoming telephone number is associated with multiple recipient telephone numbers, a particular telephone number of a recipient being determined solely by a particular assigned incoming telephone number used by a particular identified caller and without input of further data by said caller, whereby said caller is not required to be within a particular network for making calls.
The court went so far as to refer to the “genius of the '156 patent (and it is indeed clever and cre-ative),”93 as an “elegant solution to the problem of the calling card PIN was apparently overlooked by a lot of smart people for a very long time.”94 Nonetheless, the court found the claims directed to a mental process, relying on Cybersource and the pencil-and-paper analysis. The court’s implementation of the pencil-and-paper test, however, borders on the bizarre:
When I was a child I watched Lassie on television. Whenever June Lockhart, playing Ruth Martin, wanted to reach someone by telephone, she rang Jenny at Central and got herself connected to whomever she wished just by saying "Can you get the doctor?" or "I need to speak to Timmy's teacher, Miss Jones." Ruth didn't have to dial any numbers at all. Jenny, the intermediary, recognized Ruth as the caller from the line that rang at Central, and she knew which receptacle to
14
plug Ruth's line into so that Ruth's call to Central would be forwarded to its in-tended recipient. Nothing different happens here, except that switching machinery and computers (none of which is claimed) recognize who the incoming caller is and to whom she wishes her call forwarded. As defendant points out, a room full of telephone operators with sheets of paper containing the look-up tables could accomplish the same result- expensively, true, but the same result, using the same process.95
It’s a fair bet that in the history of patent litigation no court has invalidated a patent based on its childhood memories of television shows.
These cases illustrate the types of patents that have been invalidated under the fictional form of the mental steps doctrine and pencil-and-paper test. Not all courts presented claims for software inventions adopt the mental steps approach. The most cogent judicial critique of the mental steps test is by Judge Pfaelzer in California Inst. of Tech. v. Hughes Commc'ns Inc.96 The claim before the court dealt with the generation of parity bits for communication packets, “Claim 1 of the ’032 patent recites generating a parity bit by accumulating two values: (i) the value of the previous parity bit and (ii) the sum of a number of randomly chosen irregular repeats of mes-sage bits.” Even accepting this simplification of the claim, the court rejected Hughes’s argument that the steps could be performed mentally:
One of Hughes’ arguments deserves special attention. Hughes argues that calcu-lating parity bit values involve “mental steps [that] can be performed by a person with pencil and paper.” Therefore, Hughes, argues the claim is not patentable. Defs.’ Mem. in Supp. of Invalidity at 14, Dkt. No. 126. The Court finds this mode of analysis unhelpful for computer inventions. Many inventions could be theo-rized with pencil and paper, but pencil and paper can rarely produce the actual effect of the invention. Likewise, with regard to software, a human could spend months or years writing on paper the 1s and 0s comprising a computer program and applying the same algorithms as the program. At the end of the effort, he would be left with a lot of paper that obviously would not produce the same result as the software.97
The court offers two further insightful observations. First, “Pencil-and-paper analysis can mis-lead courts into ignoring a key fact: although a computer performs the same math as a human, a human cannot always achieve the same results as a computer.”98 This is an important point, one regularly overlooked by the courts, as the examples in Kinglite and Broadband iTV above show: while a human may be able to calculate manually a cryptographic key (Kinglite) or perhaps even manually encode a video (Broadband iTV) that would not achieve the same results as claimed. This is consistent with Judge Rich’s observation in In re Benson that speed of computation is “essential in the practical utilization” of the process.99 Today, the courts have distanced them-selves entirely from appreciating the significance of practical considerations—patent eligibility is performed in an intellectual vacuum.
The court’s second observation was that “it is clear that Caltech’s error correction codes were not conventional activity that humans engaged in before computers, and the codes do not become conventional simply because humans can do math.”100 This point is likewise routinely ignored:
15
once a court decides a human can perform the claimed steps, it typically reduces the subsequent analysis of whether there is an inventive step to these simplistic terms. This is how the Stanacard undertook the inventive step analysis: “The claimed invention is literally no more sophisticated than what Jenny the Operator did on Lassie, those many years ago; as defendant argues, any tel-ephone operator given a copy of the lookup table (which is not part of the claimed invention) can route and connect the call.”101
VI. THE FICTIONAL MENTAL STEPS DOCTRINE DOES NOT APPLY TO PRO-GRAMMED GENERAL PURPOSE COMPUTERS
The fictional form of the mental steps doctrine is inapplicable to digital computers and computer-implemented inventions for several reasons.
First, prior to the widespread usage of the general purpose computer, many inventions were created, and many patents granted, for mechanical and electrical machines that performed mathematical calculations. For example, between 1900 and 1960, there were over 2,300 patents issued that related to mechanical computing devices. That such devices were patent-eligible sub-ject matter seemed beyond dispute, and there are no federal cases in which claims to such devices or their methods of operation were held to be unpatentable subject matter. Calculating machines also perform simple arithmetic that a human could easily do by “head and hand”, but that does not disqualify them as patentable subject matter. This is because the mathematical op-erations had been mechanized into physical elements: the “locus of the operation” was in the mechanical or electrical elements of the machine.
Most calculating machines typically could only perform individual mathematical opera-tions such as addition, subtraction, multiplication, division, logarithm, and so forth. Performing a complex series of mathematical calculations, therefore, required the human operator to control the sequence and execution of a series of calculations, as well as in many cases to store, typically on a notepad, intermediate results for later entry into the machine. In short, even though the locus of the operation was in the machine, the locus of control in those devices was always in the mind of the human operator, whether he was using a desk calculator, a slide rule, or an abacus. Ac-cordingly, in patent cases decided prior to the widespread application of computers, the courts were correct to hold that a claim to mathematical procedures or use of formula was essentially one for mental steps, because there was then no known way to have a machine perform the entire mathematical process automatically.
However, von Neumann’s architecture of the stored program computer represented a fundamental change in where control of the operations is held. Prior to the von Neumann archi-tecture, a human had to enter a program one step at a time into the computer’s memory—this was essentially the same as the human controlling the adding machine by pressing keys and pull-ing handles. In the stored program computer, the locus of control resides in the machine itself: the computer program controls the operation of the computer by sequentially changing the sig-nals stored and manipulated by the computer, without any human intervention other than high level inputs. These low level signals are not representative of the mental states of the human but rather are signals that electronically represent the machine language “instructions” that the com-puter can execute. At a minimum, just as the mechanical or electrical implementation of
16
calculating machines would not be ignored in deciding patent eligibility, the implementation of a digital computer should not be ignored either.
The only reason to ignore the presence of digital computer elements, such as the shift reg-ister in Benson, or even a general-purpose computer itself, is if one assumes that computers perform mental steps in the same way that a human does. Once this assumption is removed, there is no principled reason to distinguish between the mechanical nature of a calculating machine and the computer technology in digital computers. Both likewise contribute to patent eligibility. And as shown above, the assumptions of functional and procedural equivalence was without support in Benson in 1972 and remains even less likely today.
The fictional form of the mental steps doctrine represents a significant and unwise depar-ture from the factual form. The fictional form is untethered from the conceptual and technological attributes of computer design, the nature of human cognition, and the practical re-ality and value in computer-implemented inventions. The courts should return to the doctrine’s factual form, and avoid a further descent into the fact-free analysis that now characterizes patent eligibility.
*** End Notes
1 409 U.S. 63 (1972). 2 573 U.S. ___ , 134 S.Ct. 2347 (2014). 3 CLS Bank Int'l v. Alice Corp. Pty, Ltd., 717 F.3d 1269, 1298 (Rader, J., dissent) (“A court cannot go hunting for abstractions by ignoring the concrete, palpable, tangible limitations of the invention the patentee actually claims.”). 4 MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1259 (Fed. Cir. 2012). Apparently, not much has changed in forty-two years; see In re Musgrave, 431 F.2d 882, 890 (C.C.P.A. 1970) (“whatever law there may be on the subject [of “mental steps”] cannot be attributed to Congress. It is purely a question of case law.That law we, like others, have found to be something of a morass.”). 5 654 F.3d 1366, 1373 (Fed. Cir. 2011) (emphasis added). 6 Synopsys Inc. v. Mentor Graphics Corp., 78 F. Supp. 3d 958 (N.D. Cal., 2015). 7 Kinglite Holdings Inc. v. Micro-Star Int'l Co. Ltd. Case No. CV-14-03009 JVS (PJWx), 2015 U.S. Dist. LEXIS 145121 (C.D. Cal. Oct. 16, 2015); Protegrity USA, Inc. v. Netskope, Inc., Case No. 15-cv-02515-YGR 2015, U.S. Dist. LEXIS 142633 (N.D. Cal., Oct. 19, 2015); FairWarning IP, LLC v. Iatric Sys., Inc. Case,8:14-cv-2685-T-23MAP, 2015 U.S. Dist. LEXIS 81999 (M.D. Fla. June 24, 2015) 8 Collarity, Inc. v. Google Inc., C.A. No. 11-1103-MPT, 2015 U.S. Dist. LEXIS 159031 (D.Del., Nov. 25, 2015). 9 Univ. of Utah Res. Foundation v. Ambry Genetics Corp., 774 F.3d 755 (CAFC Dec. 17, 2014). 10 Netflix, Inc. v. Rovi Corp., No. 11-cv-6591 PJH, 2015 U.S. Dist. LEXIS 92766 (N.D. Cal., July 15, 2015). 11 Stanacard v. Rubard, LLC, 12 Civ. 5176 (CM (MHD), 2015 U.S. Dist. LEXIS 157345 (S.D.N.Y. , Nov. 18, 2015); Comcast IP Holdings I, LLC v. Sprint Commc'ns Co. L.P., No. CV 12-205-RGA, 2014 WL 3542055 (D. Del. July 16, 2014); Telenit Techs., LLC v. Alteva, Inc., Civ. No. 2:14-CV-369 2015, U.S. Dist. LEXIS 125991 (E.D. Tex. Sept. 21, 2015). 12 Wolf v. Capstone Photography, 2-13-cv-09573, 2014 U.S. Dist. LEXIS 156527 (C.D. Cal., Oct. 28, 2014); In re: TLI Comm'ns LLC Patent Litig., 87 F. Supp. 3d 773 (E.D. Va. 2015). 13 150 F.2d 554 (C.C.P.A. 1945). 14 Id. at 1172. 15 Id. at 1174.
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16 In re Abrams, 188 F.2d 165 (C.C.P.A 1951) (claims ineligible as mental steps where no No specific apparatus or machine was disclosed for performing the steps, thus requiring human performance); In re Yuan, 188 F.2d 377 (C.C.P.A 1951) (relying on Abrams, claims ineligible as mental steps where no specific structure disclosed). 17 415 F.2d 1393 (C.C.A.P. 1969). 18 Id. at 1407. 19 Id. at 1402, 1407 20 Id. 21 Id., citing Kayton, Patent Protectability of Software: Background and Current Law, in The Law of Software 1968 Proceedings B-25 (1968). 22 Id. 23 417 F.2d 1395 (C.C.P.A. 1969). 24 13. A plotting method comprising: (a) a first step of programming the computer to compute the position of planar Cartesian coordinate axes in the given plane relative to the given set of object points, (b) a second step of programming the computer to compute and produce an output defining in sequence the coordinates of the projection of each given point on the plane with ref-erence to the Cartesian coordinate axes, and (c) the step of applying the computer output to the input of a planar plotting apparatus adapted to provide on a plane a succession of straight-line segments that connect between sequential points having positions corresponding to the coordinates computed by the second step. 25 Id. at 1399 (emphasis added). 26 See Dasgupta, Technology and Creativity 12-14 (1996). 27 417 F.2d at 1400 (emphasis added). 28 421 F.2d 742 (C.C.P.A. 1970). 29 Id. at 745. 30 Id. 31 431 F.2d 882 (C.C.P.A. 1970). 32 Id. at 884. 33 Id. at 892. 34 Id. 35 Id. at 895 (Baldwin, J., concurring). 36 Id. 894 (Baldwin, J. concurring; “this court should concern itself only with realities and let the law professors worry about academic problems.”). 37 438 F.2d 1011 (C.C.P.A. 1971). 38 442 F.2d 1397 (C.C.P.A. 1971). 39 441 F.2d 682 (C.C.P.A. 1971). 40 Id. at 688. 41 Id. 42 See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a computer to perform routine tasks more quickly or more accurately isinsufficient to render a claim patent eligible.”). 43 Id. (emphasis added). The acknowledgement that claims would still be eligible even if mental steps were re-quired, so long as the person simply performed the claimed steps without the exercise of judgment provides a basis for the patent eligibility of games (e.g., card games, board games) using standard components (e.g., playing cards, balls, etc.), as well as some business methods. 44 409 U.S. at 65 n.3, citing Benrey, Understanding Digital Computers, New York, John Rider Pub. Inc. (1964) p. 4. 45 Id. at 67. 46 Brief of Solicitor General, Gottschalk v. Benson, 1972 WL 137527 *4 (U.S.) (hereinafter “Solicitor General Brief”), citing UDC, at 4. 47 Id. at *12. 48 Id. *7 (emphasis added).
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49 Significant portions of this section are based upon the Brief of Ronald Benrey as Amicus Curiae, Alice Corp. v. CLS International, 573 U.S. ___ (2014) No. 13-298, which I co-authored, and personal communications with Mr. Benrey. 50 UDC at 2. 51 Id. at 3 52 Id. 53 Id., at 4-5. (emphasis added). 54 Id. at 28. 55 Id at 2. Given the availability of academic textbooks on digital computers available in 1972, it’s unclear why the Solicitor General relied upon a hobbyist book from 1964 to support its argument. 56 Id. at 3. 57 Id. 58 See The Computational Theory of Mind, Stanford Encyclopedia of Philosophy (Oct. 16, 2015), http://plato.stanford.edu/entries/computational-mind/. 59 Piccinini, Computationalism in Philosophy of Mind, Philosophy Compass, v4 515-532 (2009), DOI: 10.1111/j.1747-9991.2009.00215.x. 60 Putnam, Representation and Reality 73 (1988). 61 See Dasgupta, It Began with Babbage-The Genesis of Computer Science 236 (2014). Dasgupta’s book provides an exceptional review and analysis of the history of computer science. 62 Turing, On Computable Numbers, with an Application to the Entscheidungs problem, Proceedings of the London Mathematical Society 2 (1937). 63 McColluch, Pitts, A Logical Calculus of the Ideas Immanent in Nervous Activity, Bulletin of Mathematical Bio-physics 5:115–133 (1943). 64 von Neumann authored the seminal report on the EDVAC computer in 1945, in which he described architecture of the stored program computer. See Dasgupta, fn. 61, p. 108-112. 65 von Neumann, The General and Logical Theory of Automata (1951). 66 Putnam, fn. 60, p. 73 (emphasis in original). 67 See generally Dehaene, The Number Sense—How the Mind Creates Mathematics (Revised and Updated Ed.) (2011). See also Dehaene, Molko, Cohen, and Wilson, Arithmetic and the brain, Current Opinion in Neurobiology 14:218-224 (2004), and references cited therein (summarizing several decades of research into how the brain per-forms mathematical and related operations). 68 Dehaene, p. 200. 69 Id. at 180, 202, 242, 70 Id. at 204. 71 Id. at 244-245. 72 Id. 246. 73 Id. See also Lakoff, Johnson, Philosophy in the Flesh-The Embodied Mind and Its Challenge to Western Thought, 4 (1990) (“Reason is not disembodied, as the tradition has largely held, but arises from the nature of our brains, bod-ies, and bodily experience…The same neural and cognitive mechanisms that allow us to perceive and move around also create our conceptual systems and modes of reason. Thus, to understand reason we must understand the details of our visual system, our motor system, and the general mechanisms of neural binding.”) 74 Alice, 134 S. Ct. at 2355. 75 Enfish, LLC v. Microsoft Corp., 56 F. Supp. 3d 1167, 1173 (C.D. Cal. 2014) ("Step one is a ... 'quick look' test, the purpose of which is to identify a risk of preemption and ineligibility. If a claim's purpose is abstract, the court looks with more care at specific claim elements at step two."); Open Text S.A. v. Box, Inc., 78 F. Supp. 3d 1043, 1046 (N.D. Cal. 2015) (citing Bilski v. Kappos, 561 U.S. 593, 611-12 (2010)). (“In evaluating the first prong of the Mayo/Alice test, which looks to see if the claim in question is directed at an abstract idea, the Court distills the gist of the claim.” 76 See, Simon, Sciences of the Artificial 4-5 (1996) (“The engineer, and more generally the designer, is concerned with how things ought to be how they ought to be in order to attain goals, and to function.”)(emphasis in original). 77 Civ. No. CV 12-205-RGA, 2014 WL 3542055, at *4 (D. Del. July 16, 2014).
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78 Id. at 6. 79 Cybersource, 654 F.3d at 1371. 80 Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1277 (Fed. Cir. 2012) (holding patent claims to a computer-implemented system non-statutory as mental steps). 81 576 F. App’x 1005, 1008 (Fed. Cir. 2014), quoting Benson, 409 U.S. at 67. 82 Civ. No. 15-00131-ACK-RLP, 2015 U.S. Dist. LEXIS 131726, at *16 (D. Haw. Sep. 29, 2015). 83 Id. at *23. 84 Civ. No. 14-cv-00790-PAB-NYW, 2015 U.S. Dist. LEXIS 127679, at *2 (D.Colo. Sep. 23, 2015). 85 Id. at *12. 86 Civ. No. 13-04513, 2015 U.S. Dist. LEXIS 136458, at *6 (N.D. Cal. Oct. 6, 2015). 87 Id. at *15, quoting Cybersource, 654 F.3d at 1372. 88 Civ. No. CV-14-03009 JVS (PJWx), 2015 U.S. Dist. LEXIS 145121 (C.D. Cal. Oct. 16,2015). 89 Id. at *12 90 Id. at 14. 91 12 Civ. 5176 (CM (MHD), 2015 U.S. Dist. LEXIS 157345 (S.D.N.Y. Nov. 18, 2015). 92 Id. at *2. 93 Id. at *10. 94 Id. 11. 95 Id. at 9 96 59 F. Supp. 3d 974 (C.D. Cal. 2014). 97 Id. at 982. 98 Id. 99 In re Benson, 441 F.2d. at 688 (emphasis added). 100 Id. 101 Stanacard, 2015 U.S. Dist. LEXIS 157345, at *10.
Robert Sachs Bio
Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing patent portfolios for companies of all sizes, from startups to multi-nationals. He is the primary evaluator for standards essential patents on today's most important audio, video, and communications technologies, including 3GPP-LTE, IEEE 802.11, MPEG-4 AAC, DVB-MHP, OCAP, Digital Radio Mondiale, AMR-NB, AMR-WB, AMR-WB+, G.711, G.729, AGORA-C, and NFC-IP. He conducts and supervises patent evaluations in US, as well as Europe, Japan, China, South Korea, Mexico and Canada. One of Bob’s areas of expertise is patentable subject matter: the question of what kinds of inventions are eligible for patent protection, and particularly whether software and life sciences related inventions are patentable. This issue has become the new battleground in the development of the patent law, with several important cases having been recently decided by the Supreme Court and the Court of Appeals for the Federal Circuit. While most authors and scholars take a results-oriented approach to this question, Bob instead starts with the first principles of creativity and innovation that drive humans to solve functional problems. From that understanding, software and life sciences inventions are squarely in the domain of what the patent law is designed to protect. Follow Bob’s commentary on patent eligibility and related patent issues on Bilski Blog.
David Beck is Director of Intellectual Property at Viavi Solutions Inc., a manufacturer of software and
hardware platforms and instruments to deliver test and measurement solutions across physical, virtual
and hybrid communication networks. Dave counsels the Company on all aspects of intellectual property
strategy and protection, and directs the Company’s patent and trademark portfolios. Prior to joining
Viavi Solutions, Dave was in-house intellectual property counsel with Accenture LLP and JDS
Uniphase. Prior to his in-house career, Dave was an attorney at the law firm of Dickstein Shapiro LLP, a
patent examiner at the United States Patent Office, and a process engineer at Kimberly-Clark
Corporation. Dave earned his J.D. from the Boston College Law School and his B.S. in Chemical
Engineering from the University of Akron.
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Mr. Nigon has 32 years of experience in Intellectual Property Law, including five years asPatent Counsel for a major consumer electronics corporation and 27 years withRatnerPrestia. In his work at RatnerPrestia, Mr. Nigon has acted as Patent Counsel for threeU.S. laboratories of a major Japanese consumer electronics company, advised inhousepatent counsel of a major U.S. research laboratory and managed the procurement andlicensing of Intellectual Property for numerous other companies. Mr. Nigon has counseledclients in the full range of Intellectual Property matters. He has also served as an expertwitness in litigation in the Eastern District of Pennsylvania. At RatnerPrestia, Mr. Nigon chairs the Patent Preparation and Prosecution Group and RP’sComputer Architecture, Software, Business Methods, Semiconductor and Signal Processingpractices. He has served on the Management Committee, and held various other positions inthe firm. Mr. Nigon is the author of a chapter, "Drafting the Specification," of Electronic and SoftwarePatents, Law and Practice 3rd ed. published by BNA Books and the American IntellectualProperty Law Association (AIPLA), of “Advanced Specification Drafting Issues: Electronicand Computer Inventions,” The Computer & Internet Lawyer vol. 30, nos. 4 & 5, April, May2013, "The New Written Description Requirement" Journal of the Patent and TrademarkOffice Society, vol. 84, no. 9, September 2002 and of "Patent Portfolio Management," ThePatent Journal vol. 1, no. 11, September 2002. Before he became an attorney, Mr. Nigon worked for nine years as an EngineeringProgrammer and Systems Programmer for a major U.S. computer manufacturer. Mr. Nigon is an active member of AIPLA where he is currently serving as Vice Chair of thePatent Relations with the USPTO Committee. He has served as Treasurer of AIPLA, Chairand Vice Chair of the Patent Law Committee, Vice Chair of the Committee on Legislationand Chair and ViceChair of the Electronic and Computer Law Committee. He has alsoserved as Co ViceChair of the Professional Programs Committee. Mr. Nigon has presentedwebinars on Patent Eligible Subject Matter for BNA and AIPLA in 2009, 2010 and 2011.Mr. Nigon has spoken at the AIPLA Midwinter Institute in 2000, at the AIPLA SpringMeeting in 2002 and at the AIPLA Annual Meeting in 2006. He has also spoken at severalseminars sponsored by the AIPLA, including the Basic Electronic and Computer LawPractice Seminar (1994), the Advanced Electronic and Computer Practice Seminar (1998 and2001) and at the AIPLA Basic Training Seminar (2000 and 2001). Mr. Nigon has alsospoken since 2008 at the PLI Advanced Patent Prosecution Seminar, of which he is a CoChair, on considerations in drafting patent specifications.
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NICHOLAS R. MATTINGLY
NICHOLAS R. MATTINGLY
Mr. Mattingly focuses on patent prosecution for foreign anddomestic clients. In addition, Mr. Mattingly writes patent applicationsin the electrical, mechanical, and software technical 娴ｈelds. He alsohas experience in various aspects of infringement, validity analyses,claim construction, and discovery matters.
Mr. Mattingly is experienced in handling patent matters in varioustechnologies including networking, storage systems, mobile devices,biometric identi娴ｈcation, cloud storage, digital rights management,digital and analog circuits, electron microscopy, solar celltechnologies, particle therapy systems, wireless communications,construction machines, and other various mechanical technologies.
Before going to law school Mr. Mattingly worked as a registeredpatent agent for Mattingly & Malur. During law school he was a sta尀�member on the University of Baltimore Intellectual Property LawJournal and served as a judicial intern with the Honorable ClaytonGreene, Jr. on the Court of Appeals of Maryland.
EducationUniversity of Baltimore School of Law, J.D., cum laude
University of Delaware, B.S., Electrical Engineering
Bar AdmissionsU.S. Patent and Trademark O琀�ce
District of Columbia
Virginia
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Professional AssociationsAmerican Intellectual Property Law Association
American Bar Association
Speaking Engagements andPublicationsFebruary 10, 2016 | Speaker Putting the Fun in Functional Claiming: §112(f) and RelatedInde娴ｈniteness Considerations after Williamson v. Citrix and Nautilusv. BioSig AIPLA Webinar
July 22, 2015 | Moderator Navigating Ex Parte Reexamination and Reissue Applications: TheMechanics of Preparation and Interplay With AIA Post-GrantProceedings And Litigation AIPLA Webinar
June 19, 2015 Functional Claiming of Computer-Implemented Inventions in View ofRecent Decisions
June 18, 2015 Avoiding the Invocation of Functional Claim Language in Computer-Implemented Inventions
September 25, 2014 Moderator – Charting New Territory: Prosecution and Diligence in theWake of the AIA American Bar Association, Section of Intellectual Property Law (ABA-IPL) Webinar
April 16, 2012 Prior User Rights: The Uncertainty Will Cost You
March 11, 2012 Prior User Rights: Rewarding Those Who Don’t Contribute
March 1, 2012 Prior User Rights: The Incentive to Keep Innovations Secret
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