A brief history of patentable subject matter rejections
A brief history of patentable subject matter rejectionsEver since Alice/Mayo, a number of decisions have been rendered regarding patentable subject matter or 35 USC 101. In other words, whether a claim in a patent or patent application is eligible for patent protection under Section 101. Each new case adds to the body of patentable subject matter case law to help the patenting community adjust its practice in preparing a patent application and litigating patent cases. With each decision comes an opportunity to learn how patent counsel might overcome a rejection related to patentable subject matter. The following explanation about Apple et al. v. Ameranth (Fed. Circ. 2016) provides a reasoned analysis as to how patent counsel might mitigate a finding that the alleged invention is merely an insignificant post solution activity.
Background of Dispute between Apple and Ameranth
Ameranth sued or threatened to sue Apple, Domino’s Pizza, Fandango, and Open Table for patent infringement of three patents (USPNs 6,384,850; 6,871,325; 6,982,733). In response, the defendants joined together to attack the validity of the Ameranth patents through a post-grant proceeding at the USPTO known as a Covered Business Method (CBM) review. A CBM review allows a 3rd party to attack the validity of the patent. The primary attack to invalidate Ameranth’s patents was that the patent claims were directed to ineligible patentable subject matter under Section 101 of the Patent Act and the USPTO agreed, ruling the claims unpatentable, after which Ameranth appealed.
Court’s analysis of patentable subject matter rejections
The basic reasoning that the appellate court applied in order to invalidate the patents was that the inventive concepts being claimed or alleged to be patentable subject matter were insignificant post-solution activities of a commonly used business practice – taking orders for food items over the phone and computer. As explained further below, it may make a difference as to whether a patent owner when faced with the same invalidity attack advocates for a broader or narrower description of the invention in the first step of the two-step Alice/Mayo analysis used to analyze when an invention is patentable subject matter.
Two-step Alice/Mayo analysis
In determining whether the claimed invention was patentable subject matter, the court analyzed the claimed invention based on the two-step Alice/Mayo analysis as stated below:
To determine whether a claim is eligible under § 101, we must “first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). If they are, we then “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim into a patent-eligible application.’ Id. (quoting Mayo Collaborative Servs. v. Prometheus labs., Inc., 132 S. Ct. 1289, 1297-98 (2012)).
First step of Alice/Mayo Analysis
The first step is used to determine whether the patent claims are directed to an abstract idea. Here, the court found that the claimed invention was directed to an abstract idea of “generating a second menu from a first menu and sending the second menu to another location” such as the user’s cell phone or tablet, or the computer
The court’s characterization of the claimed invention is more understandable when understood in the context of the patent specification which explained that ordering prepared foods was historically done verbally and the order written down on a piece of paper. The patent owner explained that there was no simple technique for creating restaurant menus on a computer was the reason that the widespread use of computer technology to take food orders at a restaurant was not utilized. The patented invention allowed the user to enter a menu (i.e., the first menu) on the desktop computer at the food provider (e.g., pizza parlor) and then transfer the menu to the tablet computer which would be the second menu. This simplified the process of creating restaurant menus on a tablet computer.
Take note that the description of the invention in the patent was narrowly drawn to the method by which the menu was created and transferred to the tablet computer. The description of invention could have been more broadly described as a method of taking an order on the tablet computer or even more generically described as a method and system of ordering food at a restaurant. This will be important as discussed below in determining whether the invention is patentable subject matter.
Second step of Alice/Mayo Analysis
For the second step, Amaranth provided a number of features of the system which it believed constituted an inventive concept so that the claimed invention was eligible for patent protection under § 101. However, for each feature asserted by Amaranth (the patent owner), the court found that those features were insignificant post-solution activity which did not transform the abstract idea into patent-eligible subject matter.
For example, in one of the claims, the modified second menu could be linked to a specific customer at a specific table. Amaranth argued that this was unconventional and unique at the time of filing (The application was filed in 1999) because the very capability of linking a particular order to a particular customer at a table was novel then and unique to mobility and wireless handheld devices. Nevertheless, the court found that this feature was directed to an insignificant post-solution activity. In other words, this feature was not related to the activity of creating a menu from a desktop computer to a tablet computer identified in step one but was instead related to an activity that occurred after that menu creation process. Thus, the claims were directed to an abstract idea, not patentable subject matter, and thus unpatentable.
A possible strategy for patentable subject matter rejections
Based on this decision, there may be a case for trying to achieve a broader definition of the invention in the first step of the two-step Alice/Mayo analysis so that the alleged solution activity would be considered as being part of the invention and not a post-solution activity.
Because the claimed invention was defined as directed to a method of generating a menu on a desktop so that it could be transferred to a tablet computer, I would tend to agree with the court that this would be post solution activity. However, if the claimed invention was defined as directed to a method and use of implementing the tablet computer and taking orders for prepared foods, then the linking orders feature, in my opinion, may be better characterized as being a part of the invention and not a post solution activity.
For these reasons, there may be a basis for arguing for a broader definition of the invention in the first step of the two-step Alice/Mayo analysis. In doing so, one would expect the claimed invention to be found as being directed to an abstract idea under step one. However, the goal would be to eliminate the argument that the features or steps asserted as the inventive concept in step two of the Alice/Mayo analysis would be considered as insignificant post solution activity.
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