How Alice is a protector for Computer Implemented Inventions

The landmark decision by the Supreme Court in Alice vs CLS bank in 2014 created a stir across the tech industry followed by a wave of patents related to computer implementation being invalidated by PTAB and courts. However, on a detailed scrutiny of the judgment reveals that the court nowhere, in the 21-page opinion, held that computer implemented inventions are not patentable subject matter. In fact, the court even doesn’t use the term software even once.  The court while upholding the patent eligibility of computer implemented inventions expressly recognized that the countless incredible technological inventions that form the bedrock of our innovation economy deserve patent protection. The patents at issue in this case disclosed a computer implemented scheme for mitigating “settlement risk” (i.e., the risk that only one party to a financial transaction will pay what it owes) by using a third-party intermediary. The patent was invalidated on grounds of being an abstract idea related to fundamental economic practice, not that computer implemented invention do not warrant legal rights. The court, although skipped detailed discussion on what an abstract idea is, held that any pre-existing fundamental truth would be an abstract idea.

The court explained that its not the case of conventional steps using computers being added to the claims make the claims patent ineligible. It’s about the well-known methods in industry practice being described at a high level of generality using convention general purpose computer. (Read how to overcome drafting challenges for computer implemented inventions). The court has also expressly stated that any claim that purports to improve the functioning of the computer itself or allows improvement in any other technology domain is definitely eligible for patent protection.

The court went on to explain that

“At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___ (slip op., at 2). Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.Application[s] of such concepts “‘to a new and useful end,’” we have said, remain eligible for patent protection.”

While deciding whether the claims of the subject invention does something more than the general-purpose computer, each claim element and then their ordered combination has to checked to identify whether it performs in a manner different to the conventional computers. There is so much material out their summarizing the Alice decision but simply reciting that the invention must do something more than the general-purpose computer. Let’s clear it out to our readers what exactly this second step of Alice framework means. If each of the claim elements describe a step which doesn’t require the computer function in a special manner, it would be deemed as conventional practice. Generalizing further on this for better understanding, method claims of a particular invention related to authenticating a bank account transaction involves:

receiving a request for a transaction from a trading account associated with a user; – No special configuration or program required for any computer to implement this. Normal input/output functions available on general purpose computer would achieve this

receiving an alpha-numeric code for an authentication of the trading account associated with the user; No special configuration or program required for any computer to implement this. Normal input/output functions available on general purpose computer would achieve this

authenticating the alpha-numeric code from an information repository wherein the information repository comprises a mapping index of alpha-numeric codes to trading account; No special configuration or program required for any computer to implement this. The said repository is nothing but a look-up table stored in general memory of the computer

executing, in response to the authentication, the transaction from the trading account.  No special configuration or program required for any computer to implement this. Normal input/output functions available on general purpose computer would achieve this

However, lets assume another scenario wherein the computer is programmed to convert the alpha-numeric code to a control signal using a cryptographic hash function and user’s bio-metric and is then sent to an electronic intermediary which utilizes an algorithm to detect any impostor/fraud with the alpha-numeric codes. Now it would definitely not be a conventional computer , subject to the fact the algorithm that is being used to identify fraud activity is unique. This is a general example to help people understand what does something more exactly means in Alice test. Even the algorithm in the latter case may be determined as something already existing and which case we need to identify some other features to be added to the claims.

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Funny Decisions from Court invalidating patents on grounds of abstract idea

This blog lists out few of the most interesting (that’s not quite the right word though) decisions from the judicial authorities pertaining to determination of abstract idea under 35 USC 101. We convey our sympathies to the counsel. Choose your favourite one. I can anticipate these becoming one of the popular memes over internet in short time.

1.  Comcast IP Holdings I, LLC v. Sprint Commc’ns Co. L.P.,

The claims were directed to a method of optimizing a telephone network including a step of “determining whether a telephony parameter associated with the request requires acceptance of a user prompt to provide to the application access to the telephony network. 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.

Based on this even patents related to autonomous driverless cars could be invalidated citing decisions to turn or stop, although automatically, is a basic mental process.

2.  Broadband iTV, Inc. v. Oceanic Time Warner Cable, LLC

The claims were directed to a method of enabling the online uploading of videos and converting the uploaded videos to standard digital TV formats. These steps were to be completely implemented using a computer. The court held that the claimed invention describes a process that aperson could perform “using a pen, paper, and her own brain.” The court did not explain how a human with pencil and paper could themselves enable uploading of videos or convert the videos into a specific digital format.

3.  Kinglite Holdings Inc. v. Micro-Star Int’l Co. Ltd

The claims of the patent in dispute were directed to encrypting the BIOS of a computer. The method claims particularly recited “signing the service 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.”

The court held that the steps of “generating a 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.” The court did not explain exactly how a human would mentally create a service request for a BIOS service, since such an operation take place within the operating system, not at any user-accessible level of the computer.

Even I can reverse a blockchain cryptographic key, although that would take me roughly 31 million years, but owing to court’s logic distributed ledger cryptographic hashing shouldn’t be something that merits patent protection.

4.  Stanacard v. Rubard, LLC (My favourite)

The claims of the patented invention involved combining caller ID and call forwarding to route and connect a call to at least one unique recipient.  The customer of a telephone service has their own phone number. 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 numbers) 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. Specifically, the claims 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.

Yes , the court invalidated this claim using the same mental steps doctrine. All my legal research fials to find one instance in the history of litigation where  court has invalidated a patent based on its childhood memories of television shows. Citing the learned judge,

“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 plug Ruth’s line into so that Ruth’s call to Central would be forwarded to its intended 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.”

5. TDE Petroleum Data Solutions v AKM Enterprise

The claims were directed to a method of operating an oil well drilling rig. The claim read as follows:

An automated method for determining the state of a well operation, comprising:

  1. storing a plurality of states for a well operation; receiving mechanical and hydraulic data reported for the well operation from a plurality of systems; and
  2. determining that at least some of the data is valid by comparing the at least some of the data to at least one limit, the at least one limit indicative of a threshold at which the at least some of the data do not accurately represent the mechanical or hydraulic condition purportedly represented by the at least some of the data; and
  3. when at least some of the data are valid, based on the mechanical and hydraulic data, automatically selecting one of the states as the state of the well operation.

An oil well drilling rig is not an abstract idea. A method of operating an oil well drilling rig is definitely not an abstract idea. This proposition should be clear to all However, for the court it was an abstract idea of “storing data, receiving data, and using mathematics or a computer to organize that data and generate additional information.”

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