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Where are we now?

Clues after Alice v. CLS Bank
Matt Weinstein
Accenture*
* The views presented are solely those of the presenter and do not represent an official position of Accenture

Executive Summary

Survey of Post-Alice Decisions
• Federal Circuit
• District Court
• PTAB

Post-Alice Drafting Strategies
• Where are we now?
• What strategies should be used based on
decisions to date?

* The views presented are solely those of the presenter and do not represent an official position of Accenture

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but instituted proceedings on other grounds * The views presented are solely those of the presenter and do not represent an official position of Accenture 3 . at least two decisions found failure to meet the initial burden to institute proceedings on § 101 grounds.Survey of Post-Alice Decisions • Three Federal Circuit Decisions – All held asserted claims unpatentable under § 101 • Ten plus District Court Decisions – Aware of two decisions to date supporting patentability – The remainder hold claims unpatentable under § 101 • PTAB – At least one decision reversed rejection of claims under § 101 (but other rejections affirmed) – In post-grant (IPR/CBM) proceedings.

Patent No.128.S. 6.415 were subject matter ineligible • “Device profile” nothing more than information and does not fall within one of the categories of eligible subject matter under section 101 • Method claims for “generating a device profile” encompassed the abstract idea of organizing data through mathematical correlations and was “not tied to a specific structure or machine.” • Clue? Don’t claim pure data * The views presented are solely those of the presenter and do not represent an official position of Accenture 4 .Digitech • First post-Alice Federal Circuit decision • “Device profiles” and “methods for generating a device profile” claimed in U.

” • “[P]atents do not claim the ‘accounting program. . retrieving.Planet Bingo • Claims directed to systems and methods for managing/playing the game of Bingo were subject matter ineligible • “[U]se of a computer in the … claims ‘adds nothing more than the ability to manage … Bingo more efficiently’. and verifying . Instead. . .” • Found fault in the way patentee chose to describe and claim the invention – specification contained only cursory descriptions of the technical details • Clue? Don’t skimp on description and don’t claim generically * The views presented are solely those of the presenter and do not represent an official position of Accenture 5 . .’ and ‘verification program’ . .’ ‘ticket program. the claims recite a program that is used for the generic functions of storing. .

and no new physical limitations – nothing “significantly more” than the ineligible matter • Clue? Technical disguises not likely to save business methods * The views presented are solely those of the presenter and do not represent an official position of Accenture 6 .” • Integration of computers in the claims added no inventive concept as any claimed computer functionality was generic and non-physical • No detail in claims about what information was exchanged.BuySAFE • Claims directed to method of establishing transaction performance guaranty were subject matter ineligible • Asserted claims did not even “push or even test the boundaries of Supreme Court precedents under section 101. how it was used to create the guaranty. The claims are squarely about creating a contractual relationship.

D. including: – designing the addendum to “avoid[] an overlap or intersection condition between sectional profiles” – “parameterizing the sectional profiles by the means of profile parameters” No in-depth analysis of why claims covered “more” Clue? Go narrow and specific (i.AutoFORM Engineering (E.e. Mich) • • • • • Claims covering computer implemented methods of designing addendum surfaces for tools used to produce sheet metal parts for automobiles pass § 101 Did not explicitly apply two-part Alice framework Claims not abstract because narrowing limitations present in the claims take claims outside of the realm of abstract ideas.. non-functional) * The views presented are solely those of the presenter and do not represent an official position of Accenture 7 .

Ill) • Claims covering specific computer implemented method of verifying a transaction pass § 101 on a motion to dismiss • Claims directed to abstract idea.D. but additional elements in the asserted claims plausibly transformed the nature of the claims into a patent eligible application • Limitations requiring generation of pseudorandom tags narrowed the scope of claims so they did not preempt underlying abstract idea • Court saw alignment with object of asserted patent to “transform data from one form into another ‘that will be recognized by the intended recipient but secure against decryption” • Clue? Stress technical benefits and data transformations to avoid preemption * The views presented are solely those of the presenter and do not represent an official position of Accenture 8 .Card Verification Solutions (N.

Cal) • Identifying customers and engaging with them to improve their customer experience (Open Text. D. N.N.Y.D.D.X. E. C. S.Claims Invalidated by District Courts • Animating lip synchronization and facial expression of threedimensional characters using broadly claimed “rules” defining morph weights as a function of phonemes (McRO.) * The views presented are solely those of the presenter and do not represent an official position of Accenture 9 .D. Del.T.) • Making conditional decisions on a telephony network (Comcast.) • Converting non-negotiable credits earned in an award program into credits that can be used to purchase goods and services (Loyalty Conversion.D. Cal) • Selecting meals according to particular dietary goals and food preferences (DietGoal Innovations.

D. D.) • Asking someone whether they want to perform a task. asking someone else (Eclipse IP. Del. N. incremental differences into a recipient account (Every Penny Counts.) • Individualizing up-selling based both on the identity of the purchaser and the original product being purchased (Tuxis Technologies.D. Cal. M. Del. Fla. and if they do not. and if they do.More Claims Invalidated by District Courts • Allowing users to exercise control over the release of information to others to provide more efficient anonymous communication (Walker Digital.D.) * The views presented are solely those of the presenter and do not represent an official position of Accenture 10 . waiting for them to complete it.) • Routinely modifying transaction amounts and depositing the designated.

the formatted data (i) to enable the authenticity key to be retrieved” not abstract. • Claims to “transforming.Selected results from the PTAB • Claims reciting “management information base (MIB) comprising a keyed data set of managed objects. host computing platform coupled to the keyed data set of managed objects in the MIB” not abstract. at an authentication host computer. but obvious over prior art. received data by inserting an authenticity key to create formatted data. but possibly obvious over prior art (Secure Axcess) * The views presented are solely those of the presenter and do not represent an official position of Accenture 11 . (Ex Parte Love). from the authentication host computer. and returning.

* The views presented are solely those of the presenter and do not represent an official position of Accenture 12 .Post-Alice Drafting Strategies • Where are we now? – Still no bright line test – However. clear that merely reciting computer language will not yield subject matter eligibility – Preemption appears to be a primary policy concern – Ultramercial likely next major benchmark for computer implemented inventions.

Post-Alice Drafting Strategies • What strategies should be used based on the decisions to date? – Organize specifications to emphasize technical operation and specific aspects of hardware arrangements – Discuss technical benefits. etc. more secure. – Consider including emphasis on why invention cannot be performed by (or is at least highly impracticable to be performed by) a human with pen and paper – Consider describing incorporated abstract ideas to set the stage for why claims include “something more” – Avoid summarizing the invention at too high a level – Avoid discussion of non-technical benefits (i.. specifically how claimed invention makes system more efficient. economic benefits) * The views presented are solely those of the presenter and do not represent an official position of Accenture 13 .e.

cont’d. • What strategies should be used based on the decisions to date? – To avoid a preemption argument. – Avoid claims that can be reduced to non-technical description.Post-Alice Drafting Strategies. * The views presented are solely those of the presenter and do not represent an official position of Accenture 14 . – Connect any functional language (“for …”) to realworld/practical outputs. include as many specific detail around the implementation and novelty as possible. The specific details should at least be recited in dependent claims – Consider describing known implementations of the abstract idea on a computer to emphasize that the invention is not preemptive and claiming any differences – Draft broadest possible claims and include them as examples in the specification.

Claims Appendix * The views presented are solely those of the presenter and do not represent an official position of Accenture 15 .

said method comprising: • generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions. and • combining said first and second data into the device profile.S.128. • generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and device response characteristic functions. * The views presented are solely those of the presenter and do not represent an official position of Accenture 16 .415 • A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing. 6. Patent No.Digitech Claim 1. U. transforming or rendering an image.

• (b) an input and output terminal connected to the CPU and memory of the computer. • (iii) assignment by the computer of a player identifier unique to the player for the group having the sets of Bingo numbers which are preselected by the player wherein the player identifier is assigned to the group for multiple sessions of Bingo.398.Planet Bingo Claim 1.646 • A system for managing a game of Bingo which comprises: • (a) a computer with a central processing unit (CPU) and with a memory and with a printer connected to the CPU.S. * The views presented are solely those of the presenter and do not represent an official position of Accenture 17 . Patent No. and • (c) a program in the computer enabling: • (i) input of at least two sets of Bingo numbers which are preselected by a player to be played in at least one selected game of Bingo in a future period of time. 6. U. • (ii) storage of the sets of Bingo numbers which are preselected by the player as a group in the memory of the computer.

and • (viii) output for verification of a winning set of Bingo numbers by means of the control number which is input into the computer by a manager of the game of Bingo. * The views presented are solely those of the presenter and do not represent an official position of Accenture 18 . cont’d. • (v) selection from the group by the player of at least one of the sets of Bingo numbers preselected by the player and stored in the memory of the computer as the group for play in a selected game of Bingo in a specific session of Bingo wherein a number of sets of Bingo numbers selected for play in the selected game of Bingo is less than a total number of sets of Bingo numbers in the group. a price for the set of Bingo numbers which is preselected. a date of the game of Bingo and optionally a computer identification number. • (iv) retrieval of the group using the player identifier. • (vii) output of a receipt with the control number.Planet Bingo. the set of Bingo numbers which is preselected and selected by the player. • (vi) addition by the computer of a control number for each set of Bingo numbers selected for play in the selected game of Bingo.

7. • processing. by at least one computer application program running on a computer of a safe transaction service provider. comprising: • receiving.644.019 • A method. a request from a first party for obtaining a transaction performance guaranty service with respect to an online commercial transaction following closing of the online commercial transaction. * The views presented are solely those of the presenter and do not represent an official position of Accenture 19 . the transaction performance guaranty service that binds a transaction performance guaranty to the online commercial transaction involving the first party to guarantee the performance of the first party following closing of the online commercial transaction.S. by at least one computer application program running on the safe transaction service provider computer. • wherein the computer of the safe transaction service provider offers. the request by underwriting the first party in order to provide the transaction performance guaranty service to the first party. via a computer network. Patent No. U.BuySAFE Claim 1.

• d. before the sheet metal is pressed in a drawing direction by the means of the punch into the die. * The views presented are solely those of the presenter and do not represent an official position of Accenture 20 . 7. whereby the sectional profiles are parameterized by the means of profile parameters. U. • b. a binder and a punch. said program being configured to make a computer execute the steps of a method for designing a tool for deep drawing of sheet metal to form a sheet metal component having a predefined component geometry.S. the profile parameters being scalar values. • c.AutoFORM Engineering Claim 1. said tool comprising a die. whereby • e. laterally interconnecting the sectional profiles by a continuous surface to form the geometry of the addendum zone of the tool. said method comprising the following steps: • a. whereby the binder is used to fix the sheet metal in an edge zone of the die. smoothing an irregular component edge by filling in a fill surface whereby a smooth component edge is formed and the fill surface runs into the predefined component geometry by a continuous tangent. said tool comprising at least one addendum zone surrounding the component. arranging along the smooth component edge at a distance from one another several sectional profiles directing away from the smooth component edge.894. Patent No. said addendum zone complements the component geometry in the edge zone and runs into the component and the binder with a continuous tangent.929 • A non-transitory computer readable medium containing a program.

the method comprising: • on behalf of the initiating party. • verifying the confidential information at the verifying party based on the first and second tokens. 5. • sending the first token electronically via a nonsecure communication network from the initiating party to the verification-seeking party. and sending the verification information electronically via a nonsecure communication network from the verifying party to the verification-seeking party.826.245 • A method for giving verification information for a transaction between an initiating party and a verification-seeking party. generating first and second tokens each of which represents some but not all of the confidential information. the verification information being given by a third. U. verifying party. • sending the first token electronically via a nonsecure communication network from the verification-seeking party to the verifying party. * The views presented are solely those of the presenter and do not represent an official position of Accenture 21 .Card Verification Solutions Claim 1.S. based on confidential information in the possession of the initiating party. • sending the second token electronically via a nonsecure communication network from the initiating party to the verifying party. Patent No.