Month: December 2014

Most (and Least) Popular IdeaEsq Articles of 2014

By Stephen B. Schott
????????????????????????????????????????????????????????????????????In 2014, I published 39 articles. My goal was one a week so I fell short, even counting some lame efforts. But still, 39 is a good number and based on the analytics, here are the top and bottom three articles from the last year. Please be kind to those bottom three. They need your love, too.
The Top Three IdeaEsq Articles of 2014
Number ThreeThe Ten Most Important Patent Cases. When I click on blog articles that list "The top five ___" and "Six ways to ___," I feel dirty. Something about the number in the headline knocks down my ability to resist the link and I just want to see the list. I don't know why we humans are stupid like this but we are. This was my earliest effort at selling the irresistible drug that is the "number-list" title. I tried to stay away from it over the course of the year but I did do a companion piece later titled The Ten Most Important Trademark Cases. Go ahead and try to resist clicking.
Number TwoUsing "Configured to" in Patent Claims. Make no mistake, dear reader: You are a fun bunch and that's why this article shot up the charts to number two. Go ahead and read up on this now. I promise you'll be a hit at your New Year's party.
Number One. Demystifying the Final Office Action: Seven Options for Responding to a USPTO Final Office Action. This article gets more hits than any page on my entire website so clearly it hit a nerve. Hundreds of people find their way here every single week. I've written so many more amusing and helpful articles, but you love this one the most. Do me a favor, though--take a look at the dunce brigade below and see if you don't agree that they are more fun.
The (Unloved) Bottom Three IdeaEsq Articles of 2014
Number three unloved. Schott, PC Sponsors World Cup Contest. Yeah OK, this was blatant self-promotion. But it was the summer of the World Cup and I was excited about soccer. You punished me by not reading it and I thank you for the lesson learned.
Number two unloved. Hot Off the Press: Updates to USPTO Practice. I'm happy this one is so low: It's down right dull as dull can be. Informative, yes. But the fun factor was lacking. I tried to fool you with "hot off the press" but you saw through my ruse.
Number One, the biggest loser of them all.  Patent Haikus. I'd like to thank my proofer for reading this post but according to Google Analytics, even she didn't look at it. The good news is that if you Google "patent" and "haiku," this is the only relevant hit. How can you not love:

subject matter test
machine or transformation
incomplete says Court

It's gold, people. Solid gold.
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Federal Circuit Identifies Software as Patentable Subject Matter (post Alice)

By Stephen B. Schott
dreamstime_xs_8424111_med_hrSoftware has been patentable subject matter for a long time but following this summer's Supreme Court Alice v. CLS Bank decision, exactly when software crosses into patentable subject matter territory has been in flux. Last week, the Federal Circuit’s DDR Holdings, LLC v., L.P. et al. decision provided some guidance on this point.
The patent in dispute describes what seems commonplace technology today: Sometimes when you go to a website, you’ll click a link and instead of the link taking you to a new web page, the link opens a window within the website you’re currently on. When this application was filed in 1998, it was a new idea. The inventors claimed their invention as follows:

19. A system useful in an outsource provider serving web pages offering commercial opportunities...comprising:
(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements... (ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity…
(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to: (i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages; …
using the data retrieved, automatically generate and transmit to the web browser a second web page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the [first] page.

Facing the question about whether this claim recited patent-eligible subject matter, the court looked to the Supreme Court’s Alice two part test: (1) Determine if the claimed invention covers an abstract idea, and if (1) is satisfied, (2) determine if the claim amounts to “significantly more” than a patent on an ineligible concept.
Turning to the first part of the test regarding whether the claims recite a patent-ineligible abstract idea, the court pointed out that even the patent’s owner struggled to define the abstract idea and in the end, suggested several ways "including 'making two web pages look the same,' 'syndicated commerce on the computer using the Internet,' and 'making two e-commerce web pages look alike by using licensed trademarks, logos, color schemes and layouts.'”
Rather than identify which of these was the abstract idea itself, the court determined that no matter which of these characterizations it chose, the second test prong requiring “something more” would be satisfied.
The Big Money Quote. The court distinguished the website-within-a-website claims as “something more” than what had come before with the following reasoning that should be quoted in every software prosecution before the US Patent and Trademark Office for the foreseeable future: “[T]hese claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
The court also approvingly noted that the claimed additional features “ensure the claims are ‘more than a drafting effort designed to monopolize the [abstract idea]'…In short, the claimed solution amounts to an inventive concept for resolving this particular Internet-centric problem, rendering the claims patent-eligible."
The court’s rationale is not without at least one problematic aspect. The three judge Federal Circuit appellate panel that decided the case split 2-1, with the dissenting judge arguing that the claims merely captured an earlier concept and performed it on a general computer. Dissenting Judge Mayer compared website-within-a-website technology to, of all things, branded brick and mortar vendors housed within big box stores. That Judge Mayer, a patent serial killer, could blithely compare a brick and mortar construction with website programming, shows some questionable rationale that is hopefully limited to just him.
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