here: Download the Alice article now!

226 Pages·2015·2.17 MB·English

Alice In Wonderland
Court Decisions for 35 U.S.C. § 101 Patentability
After the Supreme Court’s Alice Decision
A Practitioner’s Guide
Edited By:
Jonathan (Yoni) J. Torchman, Esq.
Hui-Shan Sandra King, Pharm. D., Esq.
Patrick G. Wamsley, M.E., Esq.
INTRODUCTION
After the United States Supreme Court decision in Alice
Corporations Pty. Ltd. v. CLS Bank International, decided on
June 19, 2014 corporations and patent practitioners all over the
world have been left in a weary state. Unsure of what the courts
will now uphold as patentable under 35 U.S.C. § 101
practitioners have been struggling to make recommendations to
clients. This guide includes a compilation of court cases both
Appellate and District. This guide is intended as a reference to
help make precise decisions on patentability.
See the bookmarks on the left for fast viewing of different cases
as well as patents.
Appellate Decisions
Included is first a summary of the Federal court decisions made
in the past several years. Claim language and interpretation of
the Supreme Court’s now two prong model is attached.
The text of the full Federal decisions is presented as a reference
and condensed guide.
District Court Decisions
Following the text of the Federal decisions is a summary of
several district court decisions including an image of the patents
as reference.
This is intended as a reference for practitioners to use to assess
the Alice implications to their relevant technologies and arts.
This is a reference which is necessary for all practitioners and
CEO’s under Alice.
www.krameramado.com 1
Intellectual Property Law
TABLE OF CONTENTS
Federal Decisions
University of Utah v. Ambry Genetics
Buysafe v. Google
DDR Holdings v. Hotels.com
Digitech Image v. Electronics For Imaging
I/P Engine v. AOL
Planet Bingo v. VKGS
Ultramercial v. Hulu
District Court Decisions
Enfish, LLC v. Microsoft Corporation
Every Penny Counts, Inc. v. Wells Fargo Bank, N.A.
Genetic Technologies Ltd. v. Bristol-Myers Squibb
Company
Eclipse Ip LLC v. Mckinley Equipment Corporation
Dietgoal Innovations Llc v. Bravo Media LLC (Division Of Nbc
Universal Media, LLC)
Genetic Technologies Limited v. Laboratory Corporation Of
America Holdings
Amdocs (Israel) Limited v. Openet Telecom, Inc. Et Al.
Cmg Financial Services, Inc. v. Pacific Trust Bank, F.S.B.
www.krameramado.com 2
Intellectual Property Law
Intellectual Ventures I LLC v. Manufacturers And Traders Trust
Company

Joao Bock Transaction Systems, LLC, v. Jack Henry &
Associates, Inc.

Walker Digital, LLC. v. Google, Inc.

Ameranth, Inc. v. Genesis Gaming Solutions, Inc.

Card Verification Solutions, LLC. v. Citigroup Inc

Cal. Inst. Of Tech. v. Hughes Communs., Inc.

www.krameramado.com 3
Intellectual Property Law
APPELLATE DECISIONS
The CAFC which decides federal patent appeals for the United
States, has so far invalidated nearly all 35 U.S.C. § 101 patents
on appeal. The court in DDR Holdings was one of the only cases
so far involving Alice which determined the patent to be
significantly more.
www.krameramado.com 4
Intellectual Property Law
CAFC Court Cases Involving Alice
Cases Claimed Invention Prong One Prong Two Eligible
(Page Number) Abstract Siginificantly under
Abstract Idea Additional Features Considered
Idea? More? Alice?
Digitech Image "A method of generating a device profil that Y It describes a process of Not considered. Not N
Techs. LLC v. describes properties of a device in a digital image organizing information considered.
Electronics for reproduction system for capturing transforming or through mathematical
Imaging Inc. rendering an image" correlations and is not tied
(1347) to a specific structure or
machine.
(1350)
I/P Engine A search engine system comprising: a system Y Which filters information The asserted claims do not meet N N
8/15/14 for scanning a network to make a demand search for relevance to a user’s subject matter eligibility requirements
for informons relevant to a query from an individual query using combined because they do not “improve the
user; a content-based filter system for receiving the content and collaborative functioning of the computer itself” or
informons from the scanning system and for data, see U.S. Patent No. “effect an improvement in any other
filtering the informons on the basis of applicable 6,314,420 col.28 ll.1-15; technology or technical field.”
content profile data for relevance to the query; U.S. Patent No. 6,775,664 Alice, 134 S. Ct. at 2359. To the
and a feedback system for receiving collaborative col.27 ll.27-37, does not contrary, the use of search engines was
feedback data from system users relative to pass muster under section well-established and the clear
informons considered by such users; the filter 101. advantages of combining content-based
system combining pertaining feedback data from (6 - 2nd opinion) and collaborative filtering were widely
the feedback system with the content profile data in recognized at the time of the claimed
filtering each informon for relevance to the query. invention. See ante at 8-9.
(6 - 2nd opinion)
A search system comprising: a scanning system for
searching for information relevant to a query
associated with a first user in a plurality of users; a
feedback system for receiving information found to
be relevant to the query by other users;
and a content-based filter system for combining the
information from the feedback system with the
information from the scanning system and for
filtering the combined information for relevance to
at least one of the query and the first user.
(4)
Planet Bingo The claims at issue recite computer-aided methods Y The claims here recite The '646 and '045 patents do not claim N N
8/26/14 and systems for managing the game of bingo. methods and systems for the “accounting program,” “ticket
Generally, the claims recite storing a player's “managing a game of program,” and “verification program”
preferred sets of bingo numbers; retrieving one Bingo.” ... This is similar to that Planet Bingo identifies in its briefs.
such set upon demand, and playing that set; while the kind of “organizing Instead, the claims recite a program
ssiimmuullttaanneeoouussllyy ttrraacckkiinngg tthhee ppllaayyeerr'ss sseettss,, ttrraacckkiinngg hhuummaann aaccttiivviittyy” aatt iissssuuee iinn tthhaatt iiss uusseedd ffoorr tthhee ggeenneerriicc ffuunnccttiioonnss ooff
player payments, and verifying winning numbers. Alice… these claims are storing, retrieving, and verifying a
(1) directed to the abstract idea chosen set of bingo numbers against a
of “solv[ing a] tampering winning set of bingo numbers. And, as
problem and also was the case in Alice, “the function
minimiz[ing] other security performed by the computer at each step
risks” during bingo ticket of the process is ‘[p]urely conventional.’
purchases. This is similar (2)
to the abstract ideas of “risk
hedging” during “consumer
transactions,”
(2)
BuySAFE, Inc. Receiving, by at least one computer application Y The claims are squarely "Computer receives a request for a N N
9/3/14 program running on a computer of a safe about creating a guarantee and transmits an offer of
transaction service provider, a request from a contractual relationship-- a guarantee in return."
first party for obtaining a transaction performance 'transaction performance (1355)
guaranty service with respect to an online guaranty' -- that is beyond
commercial transaction following closing of the question of ancient lineage.
online commercial transaction; (1355)
processing, by at least one computer application
program running on the safe transaction service
provider computer, the request by underwriting the
first party in order to provide the transaction
performance guaranty service to the first party,
...
(1352)
www.krameramado.com 5
Intellectual Property Law
CAFC Court Cases Involving Alice
Cases Claimed Invention Prong One Prong Two Eligible
(Page Number) Abstract Siginificantly under
Abstract Idea Additional Features Considered
Idea? More? Alice?
Ultramercial Claim 1 includes eleven steps for displaying an Y The process of receiving The claims simply instruct the N N
11/14/14 2014 advertisement in exchange for access to copyrighted copyrighted media, practitioner to implement the abstract
media. Without purporting to construe the claims, selecting an ad, offering the idea with routine, conventional activity.
as the district court did not, the steps include: 1) media in exchange for None of these eleven individaul steps,
receiving copyrighted media from a content watching the selected ad, viewed "both individually and 'as an
provider; 2) selecting an after consulting an activity displaying the ad, allowing ordered combination,' transmform the
log to determine whether the ad has been played the consumer access to the nature of the claim into paten-eligible
lass than a certain number of times; 3) offering the media, and receiving subject matter. the majority of those
media for sale on the internet; 4) restricting public payment from the sponsor steps comprise the abstract concept of
access to the media; 5) offering the media to the of the ad all describe an offering media content in exchange for
consumer in exchange for watching the selected ad; abstract idea, devoid of a vewing an advertisement.
6) receiving a request to view the ad from the concrete or tangible Adding routine additional steps such as
consumer; 7) facilitating diplay of the ad; 8) allowing application. updating an activity log, requiring a
the consumer access to the media; 9) allowing the (5) request from the consumer to view the
consumer access to the media if the ad is ad, restrictions on public access, and
interactive; 10) updating the activity log; and 11) use of the Intentet does not transform
receiving payment from the sponsor of the ad an...
(5)
DDR Holdings An e-commerce outsourcing system comprising: Y As an initial matter, it is The ’399 patent’s claims are different Y Y
12/5/14 2014 a) a data store including a look and feel description true that the claims here enough in substance from those in
associated with a host web page having a link are similar to the claims in Ultramercial because they do not
correlated with a commerce object; and the cases discussed above broadly and generically claim “use of
b) a computer processor coupled to the data store in the sense that the claims the Internet” to perform an abstract
and in communication through the Internet with involve both a computer business practice (with insignificant
the host web page and programmed, upon receiving and the Internet. But these added ivity). Unlike the claims in
an indication that the link has been activated by a claims stand apart because Ultramercial, the claims at issue here
visitor computer in Internet communication with they do not merely recite specify how interactions with the
the host web page, to serve a composite web page to the performance of some Internet are manipulated to yield a
the visitor computer wit[h] a look and feel based on business practice known desired result—a result that overrides
the look and feel description in the data store and from the pre-Internet world the routine and conventional sequence
with content based on the commerce object along with the requirement of events ordinarily triggered by the
associated wit[h] the link. to perform it on the click of a hyperlink. Instead of the
(3) Internet. Instead, the computer network operating in its
claimed solution is normal, expected manner by sending
A system useful in an outsource provider serving necessarily rooted in the website visitor to the third-party
web pages offering commercial opportunities, the computer technology in website that appears to be connected
system comprising: order to overcome a with the clicked advertisement, the
(a) a computer store containing data, for each of a problem specifically arising claimed system generates and directs
ppluralityy of first web ppagges, definingg a ppluralityy of in the realm of compputer the visitor to the abovedescribed hyybrid
visually perceptible elements, which visually networks. web page that presents product
perceptible elements correspond to the plurality of (20) information from the third-party and
first web pages; visual “look and feel” elements from the
(5) host website. When the limitations of
the ’399 patent’s asserted claims are
taken together as an ordered
combination, the claims recite an
invention that is not merely the routine
or conventional use of the Internet.
BRCA1- & BRCA2 A method for screening germline of a human Y Allowing a patent on the There must be a further inventive N N
12/17/14 2014 subject for an alteration of a BRCA1 gene which comparison step could concept to take the claim into the realm
comprises comparing germline sequence of a impede a great swath of of patent-eligibility. Id. at 2355. The
BRCA1 gene or BRCA1 RNA from a tissue sample research relating to the second paragraph of claim 7 describes
from said subject or a sequence of BRCA1 cDNA BRCA genes, and it is the way in which the sequences are
made from mRNA from said sample with germline antithetical to the patent compared: they are compared by 1)
sequences of wild-type BRCA1 gene, wild-type laws to allow these basic hybridizing a BRCA gene probe and 2)
BRCA1 RNA or wild-type BRCA1 cDNA, wherein a building blocks of scientific detecting the presence of a
difference in the sequence of the BRCA1 gene, research to be monopolized. hybridization product. Similarly, claim
BRCA1 RNA or BRCA1 cDNA of the subject from 8 requires 1) amplification of the
wild-type indicates an alteration in the BRCA1 gene BRCA1 gene and 2) sequencing of the
in said subject[,] amplified nucleic acids.
A method for screening germline of a human The non-patent-ineligible elements of
subject for an alteration of a BRCA1 gene which claims 7 and 8 do not add “enough” to
com prises comparing germline sequence of a make the claims as a whole patent-
BRCA1 gene or BRCA1 RNA from a tissue sample eligible. The district court found, and
from said subject or a sequence of BRCA1 cDNA Myriad does not challenge, that the
made from mRNA from said sample with germline elements of the second paragraphs of
sequences of wild-type BRCA1 gene, wild-type claims 7 and 8 “set forth well-
BRCA1 RNA or wild-type BRCA1 cDNA, wherein a understood, routine and conventional
difference in the sequence of the BRCA1 gene, activity engaged in by scientists at the
BRCA1 RNA or BRCA1 cDNA of the subject from time of Myriad’s patent applications.”
wild-type indicates an alteration in the BRCA1 gene (16)
in said subject[,]
(10)
www.krameramado.com 6
Intellectual Property Law
CAFC Court Cases Involving Alice
Cases Claimed Invention Prong One Prong Two Eligible
(Page Number) Abstract Siginificantly under
Abstract Idea Additional Features Considered
Idea? More? Alice?
Content Extraction A method of processing information from a diversity Y The claims of the asserted CET’s claims merely recite the use of N N
and Transmission of types of hard copy documents, said method patents are drawn to the this existing scanning and processing
LLC v. Wells Fargo comprising the steps of: abstract idea of 1) collecting technology to recognize and store data
Bank (a) receiving output representing a diversity data, 2) recognizing certain from specific data fields such as
12/23/14 2014 of types of hard copy documents from an automated data within the collected amounts, addresses, and dates.
digitizing unit and storing information from said data set, and 3) storing that See id. There is no “inventive concept”
diversity of types of hard copy documents into a recognized data in a in CET’s use of a generic scanner and
memory, said information not fixed from one memory. The concept of computer to perform well-understood,
document to the next, said receiving step not data collection, recognition, routine, and conventional activities
preceded by scanning, via said automated digitizing and storage is undisputedly commonly used in industry. See Alice,
unit, of a separate document well-known. Indeed, 134 S. Ct. at 2359. At most, CET’s
(4) humans have always claims attempt to limit the abstract idea
performed these functions. of recognizing and storing information
(7) from hard copy documents using a
scanner and a computer to a particular
technological environment. Such a
limitation has been held insufficient to
save a claim in this context.
(9)
www.krameramado.com 7
Intellectual Property Law
United States Court of Appeals
for the Federal Circuit
______________________

IN RE BRCA1- AND BRCA2-BASED HEREDITARY
CANCER TEST PATENT LITIGATION
- - - - - - - - - - - - - - - - - - - - - - -

UNIVERSITY OF UTAH RESEARCH
FOUNDATION, THE TRUSTEES OF THE
UNIVERSITY OF PENNSYLVANIA, HSC
RESEARCH AND DEVELOPMENT LIMITED
PARTNERSHIP, ENDORECHERCHE, INC., AND
MYRIAD GENETICS, INC.,
Plaintiffs-Appellants,

v.

AMBRY GENETICS CORPORATION,
Defendant-Appellee.
______________________

2014-1361, -1366
______________________

Appeals from the United States District Court for the
District of Utah in Nos. 2:13-cv-00640-RJS and 2:14-md-
02510-RJS, Judge Robert J. Shelby.
______________________

Decided: December 17, 2014
______________________

www.krameramado.com 8
Intellectual Property Law
2 UNIVERSITY OF UTAH RESEARCH v. AMBRY GENETICS
CORPORATION
JONATHAN E. SINGER, Fish & Richardson P.C., of Min-
neapolis, Minnesota, argued for plaintiffs-appellants.
With him on the brief were DEANNA J. REICHEL; and
GEOFF D. BIEGLER, of San Diego, California. Of counsel
on the brief were DAVID G. MANGUM, MICHAEL R.
MCCARTHY, KRISTINE E. JOHNSON, and C. KEVIN SPEIRS,
Parsons Behle & Latimer, of Salt Lake City, Utah.

WILLIAM G. GAEDE, McDermott Will & Emery LLP, of
Menlo Park, California, argued for defendant-appellee.
With him on the brief were ERIC W. HAGEN and JAMES W.
HILL; M. MILLER BAKER and DANIEL K. GREENE, of Wash-
ington, DC, and JOHN C. LOW, of Houston, Texas.

SANDRA S. PARK, American Civil Liberties Union
Foundation of New York, New York for amici curiae.
With her on the brief was LENORA M. LAPIDUS. Of counsel
on the brief was BARBARA JONES, AARP Foundation
Litigation of Pasadena, California.
______________________

Before PROST, Chief Judge, CLEVENGER and DYK, Circuit
Judges.
DYK, Circuit Judge.
Plaintiffs are the University of Utah Research Foun-
dation, The Trustees of the University of Pennsylvania,
HSC Research and Development Limited Partnership,
Endorecherche, Inc., and Myriad Genetics, Inc. (collective-
ly “Myriad”). Myriad owns U.S. Patent No. 5,753,441
(“the ’441 patent”), U.S. Patent No. 5,747,282 (“the ’282
patent”), and U.S. Patent No. 5,837,492 (“the ’492 pa-
tent”), which cover compositions of matter and methods
relating to the BRCA1 and BRCA2 genes. Defendant is
Ambry Genetics Corporation (“Ambry”), a company that
www.krameramado.com 9
Intellectual Property Law