Post-Alice, the Patent Microcosm is Up in Arms and Scraping the Bottom of the Barrel for Anti-Alice Material

Posted in America, Deception, Patents at 3:12 pm by Dr. Roy Schestowitz

Summary: In search of new ways to justify software patents, those who are in the legal ‘industry’ seek to twist cases and cherry-pick cases from the lowest possible courts, relying perhaps on lack of research and blind trust in the legal ‘industry’ with its so-called ‘articles’ (marketing disguised as news)

IT IS always nice to see the patent microcosm losing its mind over the end of software patents (Alice/Section 101). This new blog post (Carl Oppedahl on Carol Bidwell) shows how procedural issues creep in and drive them nuts, too. In fact, one patent maximalist asked: “Why would @uspto be trusted to make it easier for prosecutors? Or, practitioners in general?”

“This just served to show the sort of privilege/entitlement the patent maximalists sense that they have. ““Their job or task is not to make it easier for prosecutors,” I told him. It developed into a conversation. This just served to show the sort of privilege/entitlement the patent maximalists sense that they have. If they apply for a monopoly and get rejected, that does not make them an unhappy customer but a failing applicant. People who go to job interviews, for instance, are not customers and there’s no customer service when they get rejected/declined. Anyway, from the Oppedahl/Bidwell post:

An Examiner made such an objection a couple of days ago in one of our cases. We will be able to force the Examiner to withdraw the objection.

Before explaining why it is that we will have no difficulty forcing the Examiner to withdraw this objection, let’s ask ourselves how such an objection could even arise.

The requirement that the Abstract commence on a separate sheet was imposed over a decade ago, and it was for a very simple purpose — to make life easier for Reed Tech (a LexisNexis company), which is the government contractor that carries out the printing of US patents. Almost every detail of the way that you and I file and amend US patent applications is spelled out in USPTO rules that are designed to make life easier for Reed Tech.


Of course this Abstract in our case, in the form in which the USPTO computer system obtained it from the WIPO computer system, was on the front page of a published PCT application. So it was not on a page by itself. It shared a page with lots of other things such as the title and the names of the inventors.

What matters is the substance of patent applications. It has already emerged, based on EPO insiders, that many patents now get rejected only on structural grounds (like the above) rather than actual assessment of patents (because there’s not enough time to actually do the job). But this post isn’t about EPO. We just want to highlight similarities.

“It has already emerged, based on EPO insiders, that many patents now get rejected only on structural grounds (like the above) rather than actual assessment of patents (because there’s not enough time to actually do the job).”Either way, there’s danger that USPTO examiners now rush to reject patents not based on prior art etc. (which takes time and effort to find and ascertain) but based on glaring technical errors in the structure. This way examiners can fake supposed ‘production’ or ‘productivity’ (when the yardstick is number of patents processed, i.e. accepted/rejected). We certainly hope that USPTO administration staff pays attention to these things.

It has meanwhile emerged that Watchtroll moved from endless PTAB and Alice bashing to webinars in which Watchtroll was/will be promoting UPC and software patents. These people strive for a “grant everything” policy (wherein all decisions are to be made in courts where they make plenty of money through legal bills). It is appalling when they also meddle in Europe. The other day Watchtroll wrote about the Court of Appeals for the Federal Circuit (CAFC), noting that CAFC may have touched Alice again. The headline is somewhat misleading; look at the body:

In Inventor Holdings the Federal Circuit affirmed an award of attorneys fees under Octane Fitness against a business method patentee who filed suit before the Supreme Court decided Alice. The Federal Circuit affirmed the award because Inventor Holdings did not “reassess” its case in light of Alice and at that point decide sua sponte that its claims were “objectively without merit”. This was done despite the fact that business methods are not unpatentable per se and, as Inventor Holdings itself argued, it was still reasonable post-Alice to believe its patent covered eligible material because Section 101 “was, and is, an evolving area of law and… the § 101 inquiry in this case was therefore difficult.”

But in so holding, the Federal Circuit also provided some very useful language that could be used by patent prosecutors and litigators alike in an attempt to overcome Alice:

So it’s basically some vague loophole about a case which actually predates Alice. CAFC has consistently rejected software patents throughout the year, so Watchtroll scrapes the bottom of the barrel in search of some “good news” (for patent predators like Watchtroll).

“They just try to ‘sell’ the idea that software patents are still worth pursuing (it’s their business after all).”Other elements of the patent microcosm have meanwhile looked at district courts (lower than CAFC) for some “good news” and found the District of Minnesota denying Alice as applicable/relevant. To quote: “The District of Minnesota recently issued its fourth post-Alice decision, this time addressing the question of patent subject matter eligibility for a check processing patent. After analyzing a representative claim using the two-step Alice framework, the Honorable Susan Richard Nelson held that the claims were not directed to an abstract idea, and even if they were, provided an inventive concept. The Court also granted summary judgment in favor of Solutran, Inc. (Solutran), finding that U.S. Bancorp’s Electronic Check Service system infringed the asserted patent. For businesses that rely on check processing technology, the decision and breadth of the patent could have significant implications.”

It’s very rare for US courts (especially like CAFC or higher ones) to not accept Alice, so when it happens the patent microcosm amplifies it. The headlines can sometimes be misleading. They just try to ‘sell’ the idea that software patents are still worth pursuing (it’s their business after all).

The Patent Trial and Appeal Board (PTAB) Reaffirms USPTO Rejections of Abstract Patents/Applications ~83% of the Time

Posted in America, Patents at 2:12 pm by Dr. Roy Schestowitz

So these patents won’t even reach the dockets/courts

To reject

Summary: As software patents are rejected by US courts (more so the higher courts) the USPTO and PTAB are adapting, in effect working in a coordinated fashion to reject such patents — examiners and technical judges, respectively

THE USPTO is being helped by the Patent Trial and Appeal Board (PTAB), which invalidates patents without exception if these patents are not patent-eligible. PTAB has more resources to do this, just like the appeal boards at the EPO (although they’re grossly understaffed at the EPO, by intention). Clear misuse of tribal immunity, misappropriated to protect very bad patents from PTAB, won’t work. Based on this report from a few days, even universities aren’t safe havens anymore:

An expanded PTAB panel has determined that the filing of a federal court action waives the University of Minnesota’s Eleventh Amendment immunity, in the fourth decision to address state sovereign immunity

The Patent Trial and Appeal Board has denied the patent owner’s motion to dismiss inter partes review (IPR) in Ericsson v Regents of the University of Minnesota.

Judge Ruschke, the head of PTAB (chief judge), spoke to Michael Loney (same author as the above) and made it clear that no major changes are afoot, except some pertaining to amendments (and that too is not for sure). “Speaking at Managing IP’s European Patent Forum USA,” Loney wrote, “David Ruschke discussed a number of ways that amendments could be made easier to obtain at the PTAB [...] David Ruschke, chief judge of the Patent Trial and Appeal Board (PTAB), said the Board is contemplating some changes to its amendment practice.”

“The good news is that software patents continue to be invalidated at a very high rate at PTAB.”The rest is behind paywall. The USPTO will make inter partes reviews (IPRs) more expensive, just like the EPO did in order to render “access” to appeal boards more limited/financially prohibitive. If the number of IPRs declines a wee bit, that might be why.

The good news is that software patents continue to be invalidated at a very high rate at PTAB. “PTAB reverses abstract idea rejections about 17% of the time,” Anticipat wrote. That means that 83% of the time it does not. Anticipat continues trying to undermine SCOTUS and promote software patents. They’re selling their product/service and if they blurt out some statistics, we can take advantage of those and present them differently.

For difficult grounds of rejection, the right advocacy can make all the difference. The right counsel can know when to appeal and how to win on appeal. Here, we explore the demographic of firms that represent appellants that overturn one of the most difficult of all rejections: Section 101 abstract idea. Recent data show that while some big/specialized firms are successful, others without the same name recognition also are doing relatively well.

We have previously reported that in the post-Alice era, the PTAB reverses abstract idea rejections about 17% of the time. Updated for the past few months (blog post forthcoming), this overall rate has dipped. But this low percentage still represents a sizeable 135 decisions over the past year and a half (specifically, July 25, 2017 through December 1, 2017). This span of time represents the applications that are most likely to have been issued a post-Alice rejection and subsequently appealed. It turns out that select firms make up a good share of these successes, followed by a long tail of single reversals per firm.


For the uncertainties, Section 101 case law has been evolving very regularly since Alice, meaning that there is a large amount of unpredictability and volatility.

Good. Let’s hope that these so-called ‘uncertainties’ (that’s how the patent microcosm frames the reality of software patents being worthless) lead to the perpetual and definite end of all such patents, even without the defendant having to rely on expensive legal proceedings to prove it.

Suffice to say, patent maximalists like to (cherry-)pick the exceptions and say things like “US Pat 8311945, Method for processing checks; Survived Alice/101 in Dist. Ct. and PTAB” (not CAFC). Maybe Alice just really isn’t applicable in this case.

2017: The Year Software Patents Died Even in the Court Which Started Them

Posted in America, Courtroom, Patents at 1:35 pm by Dr. Roy Schestowitz

Software patents (1968 — 2017)

Room that's dying

Summary: Software patents are a dying breed as high US courts tackle them, IP Australia pretty much bans them, and UPC goes the way of the dodo

THE emergent reality that software patents are somewhat of “a thing of the past” was reaffirmed this year by the Court of Appeals for the Federal Circuit (CAFC), which had introduced/affirmed these patents in the first place. When even CAFC says “no!” that ought to really mean something. What will 2018 bring? We don’t know for sure, but PTAB will likely get more backing, this time from the Supreme Court. Alice will not be challenged by the Supreme Court.

Software patents and UIs are not patentable or at least not assert-able in a court of law. Apple should know that, but it keeps pursuing such patents based on these new reports. These patents are bunk, they’re worthless now. Why bother? Are these just ‘trophies’ or something to be used/sold in bulk? Digimarc has just just claimed to have been “rank[ed] third for its patent portfolio in the computer software category,” even though the criteria/yardstick is ludicrous, as are these patents. Those are software patents, i.e. worthless patents. Some of today’s software patents have been ‘dressed up’ using buzzwords like “AI”. There’s even this article about it in Korean media, which asserts that South “Korea Files Third-largest Number of AI Patents” and continues:

South Korea has filed the third-largest number of patents and the seventh-largest number of dissertations related to artificial intelligence (AI) technology over the past 12 years, according to a state-run information and communications promotion agency. The country has the base to take off in the AI sector in terms of sheer bulk.

According to information technology (IT) industry sources on December 21, the Institute for Information and Communications Technology Promotion (IITP) said its finding is based on AI-related technologies applied to patent bodies in the United States, Japan, China, the European Union and South Korea from January 2005 to September of this year. The U.S. ranked No. 1 in terms of AI patents, followed by Japan, South Korea, Germany, China, France, the Netherlands, Canada, the United Kingdom and Taiwan.

But so-called ‘AI’ is a branch of algorithms and is thus unlikely to withstand the scrutiny of a court, not just in the US but also in Korea (similar restrictions). We believe that China remains more or less the only resort/stronghold left for such patents. Even Australia, long regarded as a haven for software patents, changed its policy. We wrote about it earlier this year and last year. IP Kat wrote about the changes last week, but the author/blogger neglected to cover the fact that IP Australia is getting tougher on software patents, instead focusing on the innovation patent system:

They were meant to be the cheaper, faster alternative to standard patents, intended to protect lower level or incremental inventions and promote innovation by SMEs. Yet just like the petty patent system which came before it, the innovation patent system is set to be abolished (or rather ‘phased out’). An innovation patent provides fast protection and lasts for 8 years from the filing of the application. An innovation patent must meet the same novelty test as a standard patent, but only needs to possess an ‘innovative step’ (a lower threshold than the ‘inventive step’ required for a standard patent). The PC recommended that the innovation patent system be abolished because it does not achieve its objectives and protects innovations that are of low social value.

The proposed amendments will take effect 12 months after the amending Act receives Royal Assent – most likely some time in 2019. The proposed amendments mean that IP Australia will no longer be able to (1) grant an innovation patent on an application having an effective filing date on or after the day the amendments take effect or (2) certify a claim of an innovation patent having a priority date on or after that day (an innovation patent must be certified before it can be enforced). The current regime will continue to operate for existing applications. Also, the existing rights to file divisional applications and convert a standard patent to an innovation patent will remain for any patent/application that was filed before the amendments take effect. So fear not, innovation patent enthusiasts – there will still be innovation patents in effect for up to 8 years after the amendments commence.

The bottom line is, China strengthened patenting of software (and all sorts of other things), whereas everywhere else in the world — including the US (birthplace of software patents) — these patents are on their way out. With the UPC collapsing, the EPO‘s ambitions of spreading software patents to every country in the EU will collapse as well. Merry Christmas and Happy New Year!

Align Technology Uses Some Software Patents Litigiously, Conjoined With Financial Sanctions/Pressure Through ITC

Posted in Patents at 12:50 pm by Dr. Roy Schestowitz

Array of lit bulbs

Summary: 3Shape has come under substantial threat after Align Technology called in the notorious ITC, which boasts the power to disrupt businesses if they’re alleged to have infringed patents (even before a trial concludes)

THE new reality, more so after Alice, is that software patents are bunk. Sure, the USPTO granted many of these before, but when brought before a court these patents typically get invalidated. That not an expression of wish/hope but a reality. It’s satisfying for many of us who fought against software patents (as software developers).

“The patents in question are mostly about a scanner, but at least two are software patents.”Align Technology could be seen paying to spread a press release about a new complaint (not yet a lawsuit) in several wires, e.g. [1, 2]. Even the ITC, which can flippantly impose embargoes, got involved. The patents in question are mostly about a scanner, but at least two are software patents. From the press release:

The first ITC complaint includes six Align patents and alleges that 3Shape’s Trios intraoral scanner infringes four Align patents related to confocal lens scanning technologies and that 3Shape’s software infringes two Align patents related to software…

They are using software patents (in part) for “cease and desist order prohibiting 3Shape from importing [allegedly] infringing” products. Here’s an article about it:

Align Technology said it is requesting that the ITC “institute immediate investigations and ultimately issue a cease and desist order prohibiting 3Shape from importing infringing Trios intraoral scanners and related software products into the US,” according to a press release.

Days later another announcement came:

Align Technology, Inc. (NASDAQ: ALGN) announced today that due to 3Shape’s infringing conduct and the resulting litigation against Shape A/S of Copenhagen, Denmark and 3Shape Inc. of Warren N.J. (collectively “3Shape.”), the company terminated its Invisalign interoperability contract with 3Shape and will no longer be able to accept digital scans for new Invisalign treatment and/or retention cases from TRIOS scanners in the United States, effective January 31*, 2018. Doctors who need to submit additional TRIOS scans for an existing Invisalign case (for refinement or additional aligners) will still be able to do so.

An article by Brian D. Kacedon, John C. Paul and Cecilia Sanabria (from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) was published around the same time in lawyers’ media. It reminded us of the controversial nature of ITC; it can instate embargoes before actual patent justice. Incredible that it even disregarded PTAB judgments earlier this year!

Here’s what Finnegan staff wrote:

Succeeding in obtaining a ruling in an inter partes review petition at the Patent Trial and Appeal Board that issued patent claims are unpatentable, may not be enough to modify or suspend an ITC exclusion order previously entered by the ITC, based on the successfully challenged patent claims. Instead, the ITC may require exhaustion of all appeals from the PTAB decision and the USPTO issuing and publishing a certificate canceling the claims of the patent before the ITC will modify such an order.

The unfortunate thing is, ITC’s harsh attitude may mean that the atmosphere of fear rather than justice prevails. Companies that utilise the ITC basically threaten rivals with embargoes and the rivals often settle before actual justice, sometimes after modifying their products. This may be further accentuated by Cisco’s patent strategy, which we wrote about on numerous occasions earlier this year.

Align Technology may have some perfectly legitimate patents, but some of them are likely to be void in lieu with Section 101. Ultimately, since ITC powers got invoked, will there be justice or just mob ‘justice’?

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