Old dog, new tricks

Barney Dixon speaks to James Muraff of Neal Gerber Eisenberg on how to tackle patent subject matter eligibility in the ever-growing wake of Alice

How does Neal Gerber & Eisenberg’s approach to Section 101 litigation differ from other law firms?

Arguing the first step equally to, if not more than, the second is important because it gives a patent examiner a better sense of what the invention really is and the meaning of the specific required claim limitations, all up front. This often causes the examiner to realise the invention is really not just some broad (abstract) idea, at the outset of the arguments. I think the firms with better success argue both steps strongly, especially the first step.

The two steps are not mutually exclusive, although you only need to win one to win.

If one can characterise an invention in a much more detailed set of required functions and solutions, and characterise such solutions being carried out in a technical and non-conventional manner, then a patent claim will more likely not be ‘merely directed’ to a patent ineligible concept. The more non-conventional detail can be attributed to the concept of the invention, the more likely step one will be satisfied. Since step two considers whether there is something more than the idea itself, similar arguments of the detail and around how such functions are being carried out are also not necessarily a part of step two.

For step two, you should try to argue that functions of the implementations of the invention are different to the functions of other similar technology (which may just happen to solve the same higher-level concept). These functions and implementations provide distinct advantages over conventional manifestations of performing that same higher-level functionality. This should be done for each significant element of the claim, and for the combined claim language as a whole. But, I think arguing part one of the two-step test is very important to characterising the claim and invention in the best light.

A lot of the time you can get on the phone with the Examiner and you can work through some of the specifics and come up with ways to clarify these matters. The Examiners are not always trying to dig their heels in; they’re doing their job to the best of their ability. Getting on the phone with them can be a good initial step, to see if there is some clarifications that can be made that will make getting over the hump easier.

We want to be efficient with clients’ resources, and an initial interview with the Examiner can go a long way with a lot of the applications and avoid a long drawn-out battle.

What are Neal Gerber & Eisenberg’s key strategies when handling Section 101 cases?

I think the whole strategy begins with inventor interviews of what has been created.

Instead of only getting a higher-level understanding of functionality and how it is implemented, you should drill down on aspects of an invention that could be argued improves how computer technology and its interoperations function.

Trying to find nuggets here, especially when the overall invention is necessarily a product of such nuggets, can be very helpful. Quite often this allows for a characterisation of an invention that will keep the patent application out of certain examination groups at the USPTO, which have very low allowance rates and much higher rates of patent eligibility rejections.

Also, the extent to which computer technology is used within a system, when other technology is also used within a system—such as a mobile phone, kiosk, point-of-sale system, or even an automobile—focusing in on the functionality of the non-computer aspects of the system and how such other functionality is improved, can go a long way to avoiding or overcoming patent eligibility issues. This can often work even when the computer technology is heavily involved in a system (as it most often is).

Do you think certain case law, such as the Alice Corp v CLS Bank International case, should be looked at by Congress to better strengthen the patent system?

From my perspective, yes, and I’m not alone here. The American Intellectual Property Law Association and the Intellectual Property Owners association both have proposals to amend section 101 of US Code Title 35. Why? Because the case law is inconsistent.

Part of the strategy to try to overcome rejections is to find some case law that is similar to or in the same area of technology as, your invention and use that to argue the invention. Because the case law is inconsistent, it can be hard to do that without opposing views from the bench. These associations recognise that inconsistency, and have come up with proposals to amend the statute. In my view, their main purpose is to remove the concepts of novelty from patent eligibility. There are other statutory sections that deal with novelty and nonobviousness. The patent eligibility section had, for a long time, been interpreted as not including the novelty and nonobviousness requirements. The Supreme Court has confused that, conflating sections 101, 102 and 103. The associations are putting forward proposals to make it clear that they are separate requirements.

I think right now it is absolutely stifling invention. For app developers, for example, unless there is some underlying improvement to the computer itself, it can be very difficult to get patent protection, even if they have made some novel and functional improvement. In the pure software category, there is no question in my mind that the problems with section 101 are stifling innovation.

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