by suzuki manabu
2017年 02月 25日
【Alice §101、patent-eligibility、抽象的アイディア、ordered combination】
”B. Step Two
At step two, the Court must “consider the elements of each claim both individually and ‘as an ordered combination’” and assess whether there are any “additional features” in the claims that constitute an “inventive concept.” Alice, 134 S. Ct. at 2357. Jawbone argues that there are none because the asserted claims are comprised of elements (e.g., transferring information over Bluetooth, connecting to the internet, “mobile devices,” “server,” “client”) that are generic and well-known in the art. Mot. 20-21, Dkt. No. 88. Jawbone maintains that the claims are not confined to applications in wearable activity tracker technology, but that, even if they were, this does not save them under step two because limiting claims to a certain technical environment does not make them patentable. Id. at 21. Jawbone also argues that there is nothing inventive about the claims as an ordered combination, as there is nothing “non-conventional” or “non-generic” about how the claim elements are arranged and nothing they recite constitutes a specific improvement to portable device technology. Id. at 21-22.
Fitbit disagrees, asserting that the use of a server to identify eligible devices and the use of tapping, detected by a motion sensor, to validate a pairing are unconventional elements which supply an inventive concept. Opp. 16-17, Dkt. No. 105. Fitbit also argues that the ordered combination of claim elements also supplies an inventive concept because it recites a specific, detailed, non-conventional sequence of steps, which far from preempt the entire field. Id. at 17. Fitbit further contends that an inventive concept can be found in the fact that the claims “improve [the] existing technological process” of portable device pairing by addressing issues relating to security (i.e., setting forth a reliable pairing mechanism, which ensures that a user’s biometric data is not paired to the wrong device) without compromising design constraints. Id. at 17-18.
In reply, Jawbone argues that neither the server nor tapping supply an inventive concept, as the “server” in the claims is just a generic, undefined component and tapping was a known form of validation at the time of invention. Reply 7-10, Dkt. No. 108. Weighing the parties’ arguments against the asserted claims and appropriate context, the Court agrees with Jawbone that none of the claim elements, assessed individually, provide an inventive concept. Even under the Court’s constructions, the “server,” “client,” and “portable monitoring device” are, in broad terms, generic, conventional components, none of which are inventive. The various steps of transmitting or receiving information and how they are accomplished are also generic—the claims recite these steps only functionally and require no inventive algorithm or data structure for performing them. See DIRECTV, 838 F.3d at 1262 (finding no inventive concept where “[t]he claim simply recites the use of generic features of cellular telephones, such as a storage medium and a graphical user interface, as well as routine functions, such as transmitting and receiving signals, to implement the underlying idea.”).
The Court also agrees with Jawbone that the claims’ relation to wearable activity tracker technology, in and of itself, does not make them patent-eligible. As the Supreme Court and Federal Circuit have long held, “limiting the use of an abstract idea ‘to a particular technological environment’” “is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358.
Nevertheless, the Court agrees with Fitbit that the ordered combination of claim elements, interpreted in the light most favorable to Fitbit, contains inventive concepts. First, the addition of tapping as the form of validation is an inventive concept. As the background section of the patents highlights, one problem that confronted the process of pairing small, portable devices was that they were “purposefully designed to eliminate keyboards and multiple buttons in order to satisfy other design criteria.” ’053 patent, col. 1 ll. 49-51. Tapping overcame this problem in an inventive way because it took advantage of the inherent, technical capabilities of the portable monitoring device—its ability to detect motion with a motion sensor—to provide a manner of validating the device that was different from traditional forms of input (i.e., buttons and keyboards). This is similar to the inventive concept in BASCOM, which found that taking advantage of a technical feature of certain ISP servers—the ability “to identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account”—transformed the idea of content filtering into a specific type of filtering that constituted a “technical improvement over prior art ways of filtering such content.” 827 F.3d at 1350.
Jawbone nevertheless contends that tapping cannot supply an inventive concept because it was known in the art. This argument conflates patent eligibility with novelty, which are inquiries that, although “might sometimes overlap,” Mayo, 132 S. Ct. at 1304, are separate. See Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (rejecting the argument that adding a second freeze-thaw cycle was not an inventive concept because it was allegedly obvious, reasoning that “patent-eligibility does not turn on ease of execution or obviousness of application. Those are questions that are examined under separate provisions of the Patent Act.”) (citing Mayo, 132 S. Ct. at 1304). 4 Thus, even if tapping was a known form of validation, this does not necessarily prevent it from having a transformative effect on an abstract idea and bringing it within the realm of patentable subject matter. It is the case that “recit[ing] [an] abstract idea . . . along with the requirement . . . to perform it on a set of generic computer components . . . would not contain an inventive concept” because that, at base, would still just be the abstract idea. BASCOM, 827 F.3d at 1350. Adding in tapping to a portable device pairing process—even if tapping was a known form of validation—is not this, because it transforms a more abstract device pairing process into something specific: a pairing process narrowly tailored to a certain class of devices, which enables them to be paired even though they lack buttons or keyboards. In this sense, it “improves an existing technological process” by expanding the scope of devices that can be paired. Alice, 134 S. Ct. at 2358. For these easons, tapping transforms the asserted claims into “something more” than just an abstract device pairing process. Accordingly, the fact that tapping appears in the prior art does not prevent it from supplying an inventive concept here.
Second, the use of a server as a part of the claimed pairing process supplies an inventive concept. As the name suggests, the concept of pairing traditionally involves two devices: the device that gets paired and the device it is paired with. See also ’053 patent, col. 1 ll. 35-38. By injecting a third device—a server—into this process, the asserted claims shift this paradigm so that all of the information needed for pairing does not have to be provided through the two devices.
Instead, the server can also regulate and facilitate this process. For example, the server can narrow the field of possible portable devices to pair by sending the client the list of devices that are “eligible”—e.g., devices that have not already been paired, that belong to a class of devices that that user’s account is authorized to work with, etc. Id., col. 6 l. 40-col. 7 l. 4. This helps accomplish the goal of “minimiz[ing] the amount of user interaction and input required in the pairing process,” because the server can automatically supply eligibility information that a user might otherwise have to supply himself. Accordingly, when viewed in the light most favorable to Fitbit, the server limitation also helps transform a more abstract device pairing process into “something more” because it narrows it to a specific, discrete implementation of this idea that specifically addresses needs in the particular field of portable device monitors.
In sum, both the use of tapping and the use of a server, when considered along with the rest of the claims as an ordered combination, supply an inventive concept that transforms the asserted claims into patent eligible subject matter under step two. ”
（February 9, 2017）
2017年 02月 07日
【Alice/Mayo、Patent-Eligible subject matter、2ステップテスト、101条、ソフトウェア関連発明、ユーザインターフェース、単なる抽象的アイディアでなくアクセス方法の改良に向けられている、GUI、タイプ不要、ミスタイプ、preemption】
"The Court finds that the claimed invention is directed at solving a challenge unresolved by the prior art in which a search in a hierarchical directory structure did not guarantee a result. The claimed invention addressed that concern with the mechanism of allowing the user to search only those terms that are actually contained in the file description, thereby eliminating the possibility that the user may mistype or misspell a search term. The claimed invention seeks to remedy the problem by ensuring that the user is guaranteed a search result because (1) “the user is not required to type the key words to search; instead the user simply chooses the words from pick lists, making mistyping impossible”; and (2) “as the user builds the search filter definition, categories which would find no data are automatically excluded as pick list possibilities.” (’360 Patent at 4:5-14.) The Court finds that this improvement in the context of computer capabilities when accessing files stored in computer data storage device both guarantees a search result and makes mistyping impossible. The description of the invention and the claims created a technological solution to the problems that had existed with conventional file access methods. Because the Court finds that the patent claims are directed to a specific improvement to computer functionality, the claims are not directed to an ineligible abstract idea. See Enfish, 822 F.3d at 1336 (holding that where the plain focus of the claims was an improvement to computer functionality itself, the claims are not directed to an abstract idea within the meaning of Alice); see also In re TLI Communications LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016)."
”Here, the Court finds the asserted claims of the ’360 Patent recite specific implementation of a system of retrieving and accessing files stored in a computer storage device, using the combination of a “category description table,” a “file information directory,” and a “search filter” which, in combination, guarantees a search result and makes mistyping impossible.
The Court further finds that although the patent claims do not preempt all ways to access files on a computer storage device, they do recite an improvement over the prior art methods for accessing such files that includes the additional features created to guarantee a search result. See, e.g. id. at 1350 (holding that “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”). ”
(NORTHERN DISTRICT OF CALIFORNIA, January 23, 2017)
(2017.2.7. 弁理士 鈴木学)
2017年 01月 19日
"The district court first applied Step 1 of this two-step framework. The court held that, rather than reciting “a mathematical algorithm,” “a fundamental economic or longstanding commercial practice,” or “a challenge in business,” the challenged patents “solve problems of prior graphical user interface devices . . . in the context of computerized trading relating to speed, accuracy and usability.” Dist. Ct. op. at *4 (citations omitted). The court found that these patents are directed to improvements in existing graphical user interface devices that have no “preelectronic trading analog,” and recite more than “‘setting, displaying, and selecting’ data or information that is visible on the [graphical user interface] device.” Id.
The district court explained that the challenged pa-tents do not simply claim displaying information on a graphical user interface. The claims require a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art. The district court concluded that the patented subject matter meets the eligibility standards of Alice Step 1. We agree with this conclusion, for all of the reasons articulated by the district court, including that the graphical user interface system of these two patents is not an idea that has long existed, the threshold criterion of an abstract idea and ineligible concept, as the court explained in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 73 (2012) (the patent must “amount to significantly more in practice than a patent upon the [ineligible concept itself]”).
The district court alternatively continued the analysis under Alice Step 2, and determined that the challenged claims recite an “inventive concept.” The court observed that Step 2 “requires something different than pre-AIA §§ 102 and 103.” Dist. Ct. op. at 8. The court identified the static price index as an inventive concept that allows traders to more efficiently and accurately place trades using this electronic trading system. The court distinguished this system from the routine or conventional use of computers or the Internet, and concluded that the specific structure and concordant functionality of the graphical user interface are removed from abstract ideas, as compared to conventional computer implementations of known procedures. Thus the court held that the criteria of Alice Step 2 were also met.
The district court’s rulings are in accord with precedent. Precedent has recognized that specific technologic modifications to solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter. In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the court upheld the patent eligibility of claims “necessarily rooted in computer technology” that “overcome a problem specifically arising in the realm of computer networks.” Id. at 1257. Similarly, “claimed process[es] us[ing] a combined order of specific rules” that improved on existing technological processes were deemed patent-eligible in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016). Claims that were “directed to a specific improvement to the way computers operate, embodied in [a] self-referential table,” were deemed eligible in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).
Illustrating the operation of this principle to facts that negated patent eligibility, claims “drawn to the idea itself” of “out-of-region broadcasting on a cellular telephone,” without implementing programmatic structure, were deemed ineligible in Affinity Labs of Tex. v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). Similarly, claims directed to the “idea of generating a second menu from a first menu and sending the second menu to anoth-er location” were held patent-ineligible in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016). Claims directed to the “process of gathering and analyzing infomation of a specified content, then displaying the results,” without “any particular assertedly inventive technology for performing those functions,” were held ineligible in Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). As these cases illustrate, ineligible claims generally lack steps or limitations specific to solution of a problem, or improvement in the functioning of technology. For some computer-implemented methods, software may be essential to conduct the contemplated improve-ments. Enfish, 822 F.3d at 1339 (“Much of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes.”). Abstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole. Id. at 1336. We reiterate the Court’s recognition that “at some level, all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or ideas.” Alice, 134 S. Ct. at 2354, quoting Mayo 566 U.S. at 71. This threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability, for an invention that is new, useful and unobvious is more readily distinguished from the general-ized knowledge that characterizes ineligible subject matter. This analysis is facilitated by the Court’s guid-ance whereby the claims are viewed in accordance with “the general rule that patent claims ‘must be considered as a whole’.” Alice, 134 S. Ct. at 2355 n.3, quoting Dia-mond v. Diehr, 450 U.S. 175, 188 (1981).
As demonstrated in recent jurisprudence directed to eligibility, and as illustrated in the cases cited ante, the claim elements are considered in combination for evaluation under Alice Step 1, and then individually when Alice Step 2 is reached. See BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Applying an overview of this evolving jurisprudence, the public interest in innovative advance is best served when close questions of eligibility are considered along with the understanding flowing from review of the patentability criteria of novelty, unobviousness, and enablement, for when these classical criteria are evaluated, the issue of subject matter eligibility is placed in the context of the patent-based incentive to technologic progress. "
( CAFC、January 18, 2017 )
（2017.1.19. 弁理士 鈴木学）
2017年 01月 04日
【PTAB、米国特許庁、eligibility、特許適格性、Alice、101条、撮像画像、分類、表示、Ex parte Hiroyuki Itagaki】
” Claims 1—11 and 13—15 are rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed subject matter is directed to classification. Classification is a building block of human ingenuity. As such the classification concept is an abstract idea.
Step two is “a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the abstract idea of classification into an inventive concept.
The classification as claimed is more particularly image classification. But applying the concept of classification to images in particular does not make the classification concept any less abstract. At best it provides a practical application for the classification concept in the image domain. But a recitation of practical application for an abstract idea is insufficient to transform an abstract idea into an inventive concept. Cf CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court [Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation of a practical application for the calculation could alone make the invention patentable.”).
Claim 1 describes a multi-station MRI, comprising an image acquisition unit, a display control unit, a classification processing unit. Each unit is “configured” to perform certain functions. Notwithstanding, that no “unit” claimed is structurally limited, e.g., there is no requirement that the multi-station MRI as a whole or any “unit” of it be computer-implemented, the multi-station MRI as claimed is generic. Claim 1 apparatus is a typical multi-station MRI. Any multi-station MRI available at the time the application was filed would have satisfied this. The Specification supportsthat view. See Spec, para 2(“Among magnetic resonance imaging apparatuses (hereinafter referred to as MRI apparatuses), there is a kind comprising the multi-station imaging method which performs imaging ... .”). See Spec., para. 12. In effect, the classification abstract idea to which claim 1 is directed to is applied to the images a generic multi-station MRI necessarily produces. But merely reciting a generic multi-station MRI so as to apply the classification abstract idea to its images is insufficient to transform the classification abstract idea into an inventive concept. Cf.Alice, 134 S. Ct. at 2358. “[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply if” is not enough for patent eligibility.”
Arguably, the claim 1 apparatus differs from the typical generic multi-station MRI by including a classification processing unit; that is, “a classification processing unit configured to classify the plurality of images by image types and station position, based on imaging condition including imaging parameters.” But the “unit” as claimed is described in general functional terms, i.e., to classify images a generic multi-station MRI necessarily produces, that does no more than place the classification abstract idea in a particular context. Further classifying said images by “image types and station position, based on imaging condition including imaging parameters” does little to patentably transform the classification abstract idea. The “unit” as claimed performs a classification that, apart from the particular context within which it is placed, could be performed mentally or manually. Nothing about the unit as claimed, or the apparatus claimed as awhole, suggests claim 1 provides a solution that is necessarily rooted in multi-station MRIs in order to overcome a problem specifically arising in the realm of multi-station MRIs. Cf. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)(“[a] claimed solution [that] is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”) The multi-station MRI as claimed does not operate in an unconventional manner to achieve an improvement in its functionality. See Amdocs (Israel) Limited v. Openet Telecom, Inc, No. 2015-1180, 2016 WL 6440387, *10 (Fed. Cir. Nov. 1, 2016). It merely recites the performance of some long-known practice of classifying images with the requirement to perform said classification to images from a typical generic multi-station MRI. Classifying images is not transformed into an inventive concept by simply applying it to the images a typical multi-station MRI necessarily produces.
For the foregoing reasons, we find that claim 1 covers claimed subject matter that is judicially-excepted from patent eligibility under § 101. The other independent claim — method claim 11 parallels claim 1 — similarly covers claimed subject matter that is judicially-excepted from patent eligibility under § 101. The dependent claims describe various classification schemes which do little to patentably transform the abstract idea.”
（2017.1.4. 弁理士 鈴木学）
2016年 12月 27日
【意匠、MPEP1500、Design Patent、Hague Agreement、ハーグ、USPTO、審査基準、審査便覧】
（2016.12.27. 弁理士 鈴木学）
2016年 12月 13日
【方法クレーム、一部実施、複数主体、オールエレメントルール、All element、単一主体、single entity、Akamai、直接侵害、間接侵害】
・“all steps of the claim are performed by or attributable to a single entity.”
・” indirect infringement is predicated on direct infringement”
（2016.12.14. 弁理士 鈴木学）
2016年 10月 31日
◆IDS提出に関するルールの改定 Therasense判決の影響を受け”but for”基準。
”Revision of the Duty To DiscloseInformation in Patent Applications andReexamination Proceedings”
【IDS、Rule1.56、materiality standard、Therasense判決、but for、Federal Register、inequitable conduct、コメント～12/27】
(2016.10.31. 弁理士 鈴木学)
2016年 10月 27日
・「●独立した別個の発明（two or more independent and distinct inventions）が単一の出願中にクレームされており」、かつ、「●審査官に厳しい負担（serious burden）を課する場合」に発せられる（高岡、245頁）。
（2016.10.27. 弁理士 鈴木学）
2016年 09月 05日
2016年 07月 19日
「USPTO Global Dossierとは、米国特許商標庁（USPTO）が提供する世界各地の特許文献に無料アクセスが可能なオンラインサービスのことです。USPTO Global Dossierホームページで番号検索を行うことで、日米欧中韓五大特許庁（五庁）のいずれかの庁に出願された出願・審査関連情報（ドシエ情報）を取得することができます。パテントファミリー出願のドシエ情報に加え、それらの引用文献情報や特許分類情報を取得する機能も設けられています。」
（2016.7.19. 弁理士 鈴木学）