Through the Looking Glass: Recent Decisions Bring Alice’s Wonderland into Focus

Through the Looking Glass: Recent Decisions Bring Alice’s Wonderland into Focus

35 U.S.C. §101 is the statute that addresses the basic question of “is this invention the type that is patentable.” Lately the USPTO and the courts have had trouble answering this question consistently. We’ve discussed the decision in Alice repeatedly, and why its lack of clarity on what constitutes an “abstract idea” has made the prosecution of patents for software, business methods and other less tangible inventions a challenge. However, a series of recent court decisions have shed some much needed light on Alice’s two-prong test and how to avoid and fight §101 rejections.

The first case, Enfish, LLC. v Microsoft Corp., dealt with the first prong of the Alice test: namely whether the claims are directed towards an abstract idea. In Enfish, the Federal Circuit reversed a district court ruling that the claims in a patent about data organization were “invalid as ineligible under §101”. Enfish had sued Microsoft for infringement of two U.S. patents, 6,151,604 and 6,163,775. These patents cover a “self-referential” data table model for storing information. In its reversal the court pointed to two features that made the invention distinct from traditional data systems. In particular, the court pointed out that the model in question “can store all entity types in a single table, and . . . can define the table’s columns using rows in that same table.” These features provide a number of advantages over traditional data structures from a technical standpoint and the net result is that data can be accessed and modified more quickly by a computer when it is organized this way. The Federal Circuit applied a test for patent eligible subject matter that asked “whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” The Enfish patents were found to be “directed to a specific improvement to the way computers operate”, and thus were patent eligible. The improvements over the prior art made the computer operate more efficiently, improving the ability of the computer to perform a task, rather than the invention simply being improving the performance of a task by using a computer.

Another recent case, Bascom Global Internet Service, Inc. v. AT&T Mobility LLC, dealt with the second prong of the Alice analysis: if the invention involves an abstract idea, does it deal with “something more”.  In Bascom, the patent holder claimed infringement of Patent 5,987,606, which is directed to a means for filtering internet traffic. The district court had found the claims ineligible under §101. The Federal Circuit reversed, holding that while the invention involved an arrangement of known elements in internet filtering, the elements were arranged in a non-conventional way. The filtering tool was installed at a specific, upstream location for internet traffic. Although filtering “content on the Internet” is an abstract idea, the ‘606 patent recited more than simply implementing this idea on a generic computer with a predictable result.

In a third case, McRo, Inc. v. Bandai Namco Games America Inc., McRo sued for infringement of U.S. Patents 6,307,576 and 6,611,278 which are directed to a method for synchronizing animated lips and facial expressions. While facial expressions, audio, and animated lips have been synchronized by software for some time, animators often had to manually insert specialty frames into video sequences in order to make the final product more realistic. Again, the Federal Circuit overruled the district court’s conclusion that the claims of the patent were ineligible under §101, holding that the claimed method did not simply replace the manual process with an automated digital one. Instead, the method improved upon the prior art by proposing rules for altering animated frames in areas where only animators had previously been able to operate.

These rulings, while not a complete clarification of the Alice standards, are a promising start. They provide paths for overcoming §101 rejections, and give further clarification to the Alice analysis. Using this information, patents can be drafted with a better chance of avoiding, or least overcoming §101 rejections. It’s likely that the Federal Circuit will continue to review cases requiring §101 analysis, and in each instance will hopefully continue to shed light on what is required to patent business methods and software.

Section §101: Abolish This Troubling Statute in Patent Law?

Section §101: Abolish This Troubling Statute in Patent Law?

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. 101 (Section §101)

As we’ve discussed before, Section 101 is one of the most basic and yet has become one of the most troubling statutes in patent law. While at first glance §101 appears broad, the “judicial exceptions” established in Bilski and expanded upon in Mayo, Myriad, and Alice have greatly limited what judges, (and as a result examiners) regard as patentable subject matter and not simply as “abstract ideas”. Determining what counts as “abstract ideas” has become so exceedingly difficult that some commentator have argued that the patent system is now broken.

Recognizing the predicament that many patent lawyers and patent owners now find themselves in, Dave Kappos, the former director of the USPTO, has proposed a rather eloquent solution to the §101 conundrum: simply drop §101 from the books. Speaking at a Federal Circuit Judicial Conference, Kappos called for Congress to “to abolish Section §101.” Kappos pointed out that many countries, including countries in Asia and Europe, do not have parallel provisions and yet “seem to be doing just fine in constraining patent-eligible subject matter”. To be fair, Kappos is not the first to suggest that §101 be abolished. Similar arguments were made by Eli Lily Co. in an Amicus brief for Ariosa v. Sequenom.

Supporters of abolishing §101 point out that it would help alleviate the mess the Supreme Court has made of software patents.  Furthermore, there is the argument that it makes economic sense. Much of the subject matter deemed unpatentable under Alice is still protected in many foreign countries, which may lead many companies to move their research and development departments out of the U.S. By removing §101 and allowing patent protection in the United States for inventions which are protected abroad, the U.S. would be signaling to companies that the country still values innovation.

However, the abolishment of §101 would not be without its own challenges. Foremost being what becomes of all the patents which were recently invalidated under §101. Would/could these patents be reinstated? If they are reinstated, what becomes of the businesses that moved forward believing the patents would remain invalid? Could owners of the now reinstated patents shut down these business or would the courts force compulsory licenses? As one can see, even fixing an arguably bad law is not without unforeseen consequences.

In summary, Kappos’ proposal is a possible, although unconventional, solution to the legal challenges now faced under §101. With many other statutory provisions acting as hurdles to obtaining a patent, perhaps §101 is causing more harm than good.  Nevertheless, lawmakers (and judges) need to tread lightly when making any modifications to the legal framework that governs patents.  Creating stability in patent law is often as important drafting good statutes.  Companies can and will adapt to consistent laws (even if the laws are consistently bad). What companies cannot prepare for, and what would cause them to abandon the patent system, is unpredictability.

April Fools Day

Welcome to April 1, the internet’s unofficial celebration of click bait titles and hoax articles. Over the years we’ve come across some interesting patents, and in the spirit of April Fools Day, thought we’d share some of the funnier ones.


Santa Claus Detector

The “useful” hurdle of 35 U.S.C. 101 isn’t all that difficult to clear when you consider U.S. Patent 5,523,741, for a “Santa Claus Detector” which describes “a children’s Christmas Stocking device for visually signaling the arrival of Santa Claus by illuminating an externally visible light source”. Our initial impression was that this device was a stocking that employed a pressure sensitive switch, remotely setting off a light to alert that child that Santa was actually present. Instead, there is a chord attached to a switch in the stocking, which “Santa” “accidentally” pulls on his way out. This lets the child know that Santa had arrived during the previous night. Perhaps some children need lights (in addition to the myriad of oddly shaped objects stuffing the stocking) to signal the arrival of Santa Claus, though we have yet to meet one.

Anti–Eating Face Mask

Our next contestant is 4,344,424, the “Anti–Eating Face Mask.” Patented in 1982, this head restraint with a grill over the mouth looks like a medieval torture device that’s been anachronistically repurposed. The grill is designed to prevent the user from eating, however the design disclosed in the drawings would tend to indicate that a dedicated user could simply eat foods with a narrow cross section. Maybe this where they got the idea for Hannibal Lecter’s famous mask in Silence of the Lambs.


User-Operated Amusement Apparatus for Kicking the User’s Buttocks

Finally, and definitely our favorite, is the “User-Operated Amusement Apparatus for Kicking the User’s Buttocks” (6,293,874). Essentially, this is a self–powered “kick in the butt” machine, which we can only assume is a masochistic substitute for morning coffee.

Bottom line, the patent office doesn’t have an “absurdity” standard you have to overcome. No matter how unusual or insane your idea is, we can help you protect it.

“March Madness”

In between March coming in like a lion and going out like a lamb is the multi-week long American tradition known simply as NCAA “March Madness”. A time when both diehard basketball fans and non-sports fans alike spend hours filing out their brackets hoping to win this year’s pool. (It’s estimated that companies will lose over three billion dollars in productivity over the next couple weeks as their employees sneak out of the office early to catch some of the games.)

But just how big of a deal is the NCAA Tournament, and what are those magical words “March Madness” actually worth?

It’s often difficult, if not impossible, to determine the value of famous trademarks such as “March Madness” (that being said the NCAA paid over $17 million just to have the exclusive rights to use the mark in programing for mobile devices back in 2011). However, to put things in perspective, the NCAA Tournament is arguably the biggest sporting event in the United States. This year companies looking to partake in the madness will spend about $1.1 billion dollar in television ads alone (about three times the amount spent on the Super Bowl). Meanwhile Philadelphia (one of four cities to host the “Sweet Sixteen” and “Elite Eight” (both registered trademarks)) is expected to fetch $18.2 million; while Houston, the host of the fabled “Final Four” (also a registered trademark), is expecting upwards of $300 million of economic impact from the tournament.

Given these numbers, it’s not surprising that the NCAA is in the middle of a 14 year, $10.8 billion broadcasting deal with CBS Sports and Turner Broadcasting. All things considered, the NCAA Tournament accounts for roughly 90% of NCAA revenue (sorry football).

None of the above figures include the equally stunning numbers from brackets and betting. Las Vegas sources estimate $9 billion will be wagered legally on the NCAA tournament (with about $7 billion being illegal betting).

So given all of the hoopla (no pun intend), where did the term March Madness actually originate? While one might suspect a bunch of partners at an advertising agency coming up with the idea after an eventful St. Patrick’s Day; in reality the term was coined by Henry Porter as the title of a 1939 essay for the Illinois High School Athlete, describing the Illinois High School Association’s (IHSA) basketball tournament.

The IHSA officially began using the term in 1973 in conjunction with its tournament, claiming exclusive rights to it and even licensing the use of “March Madness” to the likes of Pepsi and Wilson Sporting Goods. However, the IHSA did not officially apply for a trademark registration until 1990.

Unfortunately for the IHSA, the NCAA began using the term March Madness in 1982 (eight years prior to the IHSA’s trademark application) to describe the NCAA Tournament and also begun licensing its use much the dismay of the IHSA.

As often happens when companies don’t register and/or police there trademarks, the courts had to step in and straighten things out. In Illinois High School Association v. GTE Vantage Inc., the courts decided that due to the IHSA not policing its rights, both the NCAA and the IHSA had rights to the mark “March Madness” despite the IHSA being the first to use the mark. In its decision the court ruled that the mark had acquired multiple meanings. Needless to say, someone at the IHSA was probably fired.

The IHSA and NCAA have since formed the March Madness Athletic Association, dedicated to suing infringers of the mark. While the parties were able to reach an agreement, the IHSA would have been in a much better financial situation had they registered and policed the mark at an earlier stage. The takeaway is simple: register and police your trademarks or you might lose a lot more than just this year’s office pool.

How could the passing of Scalia affect patent owners?

The question many in the patent field are asking is how the recent passing of Justice Antonin Scalia may change the patent landscape. The short term answer is probably not a lot. The long term answer depends on who is eventually appointed to the Court.

During his thirty year tenure on the court since his appointment by Ronald Reagan, Scalia was known as an originalist and textualist. His opinions earned him varying degrees of praise and notoriety. Often seen as pro-business and a protector of property rights, Scalia admitted to not completely understanding patent law and, surprisingly, often turned to the liberal Justice Ginsberg for guidance on patent matters. 

While President Obama has nominated Merrick Garland (a move that patent owners should be skeptical of), it is unlikely that the Senate will confirm before the presidential election. This means that at least three patent cases (discussed below) will be decided by a Court that is ideologically split down the middle (4 conservatives and 4 liberals). While for many matters this would lead to 4-4 splits (and the decisions in the lower courts being affirmed), patent law is traditionally not an area decided along ideological lines (as indicated above Scalia often turned to Ginsberg for advice on patent matters).


It’s hopeful the Court (and Scalia’s replacement) will eventually see Scalia’s wisdom and help clarify the now uncertain patent landscape.

The three patent cases the Supreme Court has agreed to hear the session include Halo Electronics v. Pulse Electronics, Stryker Corporation v. Zimmer Inc, and Cuozzo Speed Technologies v. Michael K. Lee. The rulings on these cases will have impacts on damages and claim construction evaluation in inter partes reviews (IPR). Most legal scholars do not see the outcome of these cases changing with the passing of Scalia. However, in the unlikely event that Halo, Stryker, and/or Cuozzo ends in a 4-4 tie in, the Federal Circuit decision(s) will stand.

Despite openly admitting patent law was not his strong suit (Scalia said the hardest case he ever decided was a patent case) his legacy in patent law is likely to outlive his own expectations. Scalia was the first justice to use the term “patent troll” in an opinion. He also offered biting criticism of the tests that courts have adopted to try and make sense out of a highly abstract field (Scalia once referred to the court’s proposed test for non-obviousness as “gobbledygook”). Scalia also openly criticized the need to go beyond Bilski in Alice saying “Why isn’t doing it through a computer not enough? I mean, was the cotton gin not an invention because it just means you’re doing through a machine what people used to do by hand?”

It’s hopeful the Court (and Scalia’s replacement) will eventually see Scalia’s wisdom and help clarify the now uncertain patent landscape. Patent owners everywhere should hope for another justice who shares Scalia’s respect for property rights and recognizes that intellectual property should be provided that same respect.

Photo credit: Steve Petteway, photographer, Supreme Court of the United States - Collection of the Supreme Court of the United States (Public Domain)