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Prop Head Reads: The Martian and A Brief History of Time

by Stephen B. Schott
(You can view my non-prop-head book thoughts here)
martianThe Martian

by Andy Weir
(The Martian started as a personal blog writing project for Weir and its evolution from blog to book to a soon-to-be movie starring Matt Damon is a great story in itself.)
You know the scene in Apollo 13 where a bunch of engineers at NASA are locked in a room with a box of the supplies available to the astronauts and have 7 hours to figure out how to fix the filter or the astronauts die?
Well, there are generally two kinds of people. Those who have no connection to to the scene except a vague memory of it and those who think that scene is the best part of the movie.
If you're in the latter camp, you will love this book.
Engineers and scientists usually don't make for great novel heroes. To make them exciting, they get a Hollywood makeover and a flying tin suit that shoots lasers. And a supermodel girlfriend. But this book does the engineer hero justice: Showing off our hero's wits (stranded alone on Mars) and those of the people back on Earth trying to help him stay alive.
The Martian (Mark Watney) approaches each of his many challenges with an engineer's ingenuity and even if you can't follow all the science, you'll appreciate his mind and attitude. If his unfailing problem solving seems a little hard to believe at times, watch an action hero dodge automatic weapon fire in an action movie and tell me which is the greater exaggeration.
A gripping original.
hawkingA Brief History of Time
by Stephen Hawking
This was my 3rd attempt at this book. I finished it this time. I have to ask myself on your behalf, dear reader, "Why would you give 5 stars to a book that you could barely comprehend and could not finish 2 other times?" First, I'll start from the premise that I have to take on some faith: Hawking knows what he's talking about. Working from that premise, I felt reassured and on comfortable ground as he reviewed quantum mechanics, the uncertainty principle, strong and weak forces, and lots of the Einsteinian stuff that it has taken me years to absorb (and that I was better at when I could do all the math).
Second, building from those premises that I am comfortable with, Hawking helped me move the ball forward on the idea of multidimensional space, the event horizon (I finally get this, thanks to Hawking), the concept of time and the Big Bang, the stability of the universe, and the time arrows he discusses towards the end.
But man, there's some stuff that still escapes me, all these years after first studying them even when I still had the big math muscles. (1) There's much around black holes I still don't get. Hawking is the Mr. Miyagi of black holes in the physics world but he can talk all day about spherical black holes, spinning black holes, etc., and whoosh, right over my head. (2) The idea of imaginary time and the sum of histories. I understand the latter a little bit mostly because I remember the math that describes them that made the universe explicable, but conceptually outside the math I really don't grasp these even a little. (3) Really, again I have to deal with virtual particles and spins? Whoosh again.
This book is not for the faint of heart. If you want a shorter and more accessible trip through physics, try Feynman's Six Easy Pieces and Six Not So Easy Pieces books. Both are incredible and not as dense. The former explores Newtonian physics (anyone can get those concepts), the latter Einsteinian theories and quantum mechanics, which require a deeper preparedness.
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Federal Circuit Broadens Application of 35 USC 112(f)

By Stephen B. Schott
Federal-Circuit-cafcUS courts interpret patent claims written in a specific way under a special claim interpretation statute. Claims written in this way include “means plus function” elements that courts interpret under 35 USC 112(f) (often referred to as 35 USC 112(6)).
Most patent practitioners in the US avoid means plus function style claims but they are common in other parts of the world, particularly Europe, and thus sometimes make it into US applications that originate overseas. Further, means plus function claims can be found when a court reads a claim as not explicitly invoking the means plus function statute.
A recent Federal Circuit en banc case shed some light on identifying means plus function cases.
Interpreting Means Plus Function Claims
The statute that governs means plus function claim interpretation reads as follows:

Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Such a claim element might read like this:

“release means for retaining the guide in the charged position.”

A court interpreting such a claim follows 35 USC 112(f) above and first identifies the claimed function and then looks to the patent specification for the structure that performs this function. From the patent owner’s perspective, this method of claim interpretation is potentially problematic for two reasons: (1) If the specification fails to show a corresponding structure, a court will consider that the means plus function term is indefinite and the claim is invalid, or (2) The structure in the specification often provides a narrower interpretation of a claim element than the patent owner would want.
Thus in the US, many patent drafters try to avoid means plus function claims. Dennis Crouch at Patently O has charted an ongoing decline in the number of claims that use means plus function language (and interestingly the number of patents using language that is functional but lacks the magic “means” word has increased.)
Unclear Claims May Be Interpreted as Means Plus Function Claims
The Federal Circuit’s en banc Richard A. Williamson v. Citrix Online, LLC opinion may make it a little more challenging to avoid interpretation under the means plus function statute.
In the claim at issue, the element that the Federal Circuit scrutinized to determine if it was written in means plus form was this:

a distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.

If the claim had been written as a “distributed learning control means for receiving…” its interpretation as a means plus function would be clear. But because the claim used the word “module,” the issue arose as to whether the court should apply 35 USC 112(f).
dreamstime_xs_2123998The court reviewed its precedent and in particular, a line of cases that held that where a claim does not use “means,” there is a “strong” presumption that 35 USC 112(f) does not apply. It rejected this “strong” presumption and adopted a slightly broader view of when 35 USC 112(f) applies:

The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Greenberg, 91 F.3d at 1583. When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Watts, 232 F.3d at 880. The converse presumption remains unaffected: “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.” Personalized Media, 161 F.3d at 703.

The court found that the limitation was subject to interpretation as a means-plus-function limitation. As noted above, these means-plus-function limitations require disclosure in the patent specification of adequate “corresponding structure” to perform the claimed function. The court found that the specification failed to disclose this structure and held the patent invalid.
The takeaway is that if a claim drafter wants to avoid the means plus function claim interpretation rules, they should draft claims that steer further from any linguistic construction that is similar to the traditional means plus function language.
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Practical Topic: Systems of Personal Organization

By Stephen B. Schott
dreamstime_s_16832059You know when you have a thread hanging from a sweater. You give it a tug hoping it will snap off. But it doesn’t. So you pull a little more. Then a little more.  It will snap…it will snap… and you keep pulling…but deep down you know this sweater disassembly cannot be good. Before long your persistence at pulling the thread results in a ruined sweater.
This thread pulling, according to David Allen, the author of the best-selling book Getting Things Done, happens in your mind, too. It’s like this: Have you ever gone through your mental to-do list, just picking at one item in your mind? That thing you haven’t done leads to thinking of another, and another, and another—and before long you are undone with anxiety over not only the things you remember, but all the other things you know you're forgetting.
Take it a step further. I graduated from school more than 20 years ago. But still, a few times a year, I have the dream that I’m showing up for class and there’s a test that I somehow forgot about. I never wrote down the test date, never studied. It’s a terrible feeling and I wake up a bundle of nerves. More than two decades after my last class, this nightmare still holds power over me, and it’s a shared, recurrent nightmare among people who attended school. The nightmare of the forgotten task.
In some way, everyone relates to one or both of these stories. It’s part of our shared human anxiety. An anthropologist might link it back to an evolution where Caveman Ug forgets to bring his spear while out picking berries and gets attacked by a hungry lion. Anxious thread-pulling Ugs lived. Carefree non-thread-pulling Ugs died. And that’s why we’re a mess. Whatever the evolutionary basis, this problem of the “to-do list anxiety” is one we share.
The problem with To-Do List Anxiety, however, is that it no longer keeps us alive. In a modern world, it leaves us neurotic and anxious. Given its long history, you might think that humanity’s best minds have come up with a way to address To-Do List Anxiety, right?
Looking at some of our earliest written forms of moral code and psychological guidance, I cannot find any guidance on this topic in the Christian Bible, Jewish Torah, Muslim Koran, or an admittedly limited reading of Hindu texts. Buddhism most clearly articulates what the others mention about finding peace of mind and spirit. In Buddhism, a practitioner finds peace of mind through quiet meditation. The other religions offer versions of meditation in prayer and ritual. Which is all completely excellent…but as I sit on my meditation mat in the morning, the emails are piling up, my voicemail overflows, and my meditative peace is only a calm between an assault of things to do.
dreamstime_xs_50654310As someone seeking to maintain some semblance of that spiritual calm in the face of this to-do list assault, I have made a long study of personal organization systems. It’s kind of an obsession. In this study, I’ve read books, watched videos, attended seminars, and observed other people’s systems. Oh yes. I know your system. You probably fall into one of the following categories.
TYPICAL ORGANIZATIONAL SYSTEMS (NOT RECOMMENDED)

  1. The bound journal person. You carry a bound journal and you know it gives a level of confidence to the people around you. In a meeting, other people see you with the journal and think, “Ah, that fellow inspires great confidence. He’s organized. He will get things done.” But here’s my further observation: In my life, I have never once seen you refer back to one of these bound journals beyond a day later than the meeting. Seriously: How practical is it to go through your journal trying to find a single page from 8 months ago? And what way is it to organize your to-do lists? If you fill one of these books (something I’ve rarely seen), will you carry volumes of journals with you everywhere for future reference?

Style: 7
Effectiveness: 3
Recommended for: Captain of an ocean-going ship

  1. The post-it person. If you’re at wodreamstime_xs_47922230rk, look to your right. Look to your left. There are people all around who, just like you, are using post-it notes to keep track of tasks. And the notes end up stuck to your computer monitor looking like a seashell picture frame of neurosis. The notes also end up on handbags, doors, steering wheels, bathroom mirrors. All over. Take a long look at the computer monitor and ask yourself: Do you ever take down the notes? Can those notes travel with you? What focus can you maintain when all around you are notes shouting, “Pick-up dinner,” “Dentist appointment at 9am,” and “Call mom about yoga.”

Style: 0
Effectiveness: 6
Recommended for: Owners of 3M stock

  1. The get organized app of the day person. I love you. I relate to you. When it comes to self-improvement apps, I am a model of self-experimentation so I relate to you trying the new “Get organized” app du jour. But your phone is constantly beeping and reminding you of things. You carry this app everywhere. But. Yes there’s a but. It hurts but you know this is true. One week later. Maybe 3 days later, your app sits on your phone unused. It’s still reminding you of all the things you’re not doing. But those things were due 3 weeks ago. Every phone buzz is a reminder that you are a complete organizational failure.

Style: 4
Effectiveness: 6
Recommended for: Teenagers who love video games

  1. The “I keep it all in my head” person. You have a mind like a steel trap. You sort it cleanly and neatly in your head and systematically prioritize everything and get it done on time. You are age 5 or under.  Your “To-Do” Anxiety is limited to: (1) Need food, (2) need fun, and (3) need sleep.

Style: 10
Effectiveness: 10
Recommended for: 4 year olds and supernatural beings

IMPROVED ORGANIZATIONAL SYSTEMS (RECOMMENDED)
After studying and reading over 20 years, I can recommend only two systems, and I use a hybrid of them. It’s better if you check them out and decide which one works better for you.
System One: The Franklin Planner and Seven Habits of Highly Effective People
51toHpibB3L._SX258_BO1,204,203,200_Stephen R. Covey wrote one of the best-selling books of all time: The Seven Habits of Highly Effective People. For a long time, the title turned me off. It sounded like a study of rich business owners. But it’s not. It’s an effective manual for how to lead a purpose-driven life. He presents a system that helps a person define their own personal mission and beliefs in a Personal Mission Statement, and then helps people identify and achieve goals that follow their personal mission.
Covey's 7 habits essential for living a principled and fulfilling life are the following:
Independent habits

  1. Be proactive.
  2. Begin with the end in mind. Focus on your goals and work towards them.
  3. Put first things first.

Interdependent habits

  1. Think win-win. This is all about finding ways to work with others that benefit both sides.
  2. Seek first to understand, then be understood. Use your empathy and listen.
  3. Synergize. Find the strengths of those around you and create teams that can achieve remarkable success.

Continuous improvements

  1. Sharpen the saw. Balance and renew your energy and mind.

In conjunction with the book, Covey created a tool: The Franklin Planner, named for Benjamin Franklin, one of the originators of self-improvement and time management in the Covey style. From 1996 until about a year ago, I faithfully carried a Franklin Planner. It’s a daily planner but with sections organized to help implement the seven habits, and to use it properly requires a little training. It’s 100 times better than the plain bound journal.
Bottom line. Covey’s system is for someone who wants to control more than their “to-do” list and is willing to embark on a mission to make their life more meaningful. Done right, his method not only helps you get things done but also helps you live a more fulfilled life. The downside is its lack of technology incorporation. In an era of endless technology, carrying around a planner can seem a little old-fashioned. That said, it’s not as distracting in meetings and there’s something rewarding about using pen and paper.
System Two: Getting Things Done (GTD)
GTDCover4About 5 years ago, I finally read Getting Things Done by David Allen. I was entrenched in the Franklin/Covey system at the time and skeptical about an entire book dedicated to just dealing with your list of “to-do” items. My skeptical and Franklin Covey cult-trained mind asked, “How will this align with my core principles?” At the same time, I was getting 140 emails for work daily and my “to-do” list always seemed like an impossible-to-scale mountain.
To climb the insurmountable To-Do list mountain, the initial step in the GTD system is the one that resonates with most people. The very first thing you are supposed to do is set aside some time and find a quiet place with sheets of blank paper and a pen. Then…data dump all of your tasks onto the papers. Write down everything you can think of that you have to and want to do. All the things you’re waiting for from others. Long-term tasks. Short-term tasks. Allen provides many prompts to help you get it all out. Just write and write and write until you can’t think of another thing you need to do that is not on that list.
Pause for a moment in this article and imagine that. Imagine you’ve just written out everything you currently need to do. There’s a record of it. You don’t have to wonder about all the things you’re overlooking. It’s captured somewhere. Does that sound appealing? Does peace of mind spring forth from easing up on the worried windmills of your mind? I’ll bet it does.
The remainder of the GTD system is a workflow for organizing and processing this list and additions to it. The GTD system fits in well with many software systems (like Outlook and Gmail), and has a superb and free implementation in Evernote (so it’s on your phone, laptop, and cloud) called The Secret Weapon.
Bottom line. The GTD system is great but incredibly complicated to implement. The Secret Weapon simplifies GTD and provides a technology that puts it to its best use.
WHAT DO I DO?
I use The Secret Weapon’s implementation of GTD within Evernote in conjunction with The Seven Habits to drive my priorities. In meetings, I carry a Livescribe notebook and use their proprietary pen to take notes, which then automatically transfer into Evernote. I do this to avoid looking at a screen while talking to people. My system is not for everyone but one, both, or your own combination of these tools and systems will help you feel more organized and fulfilled. Whatever you do, stop pulling threads.
If you have questions, contact me.
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Fitting Software Claims Into Statutory Categories

By Stephen B. Schott
uscodesuppMost patents and applications directed at software frame the claims in terms of processes. This is a safe choice because the US Code that defines patentable subject matter limits the number of categories for what is patentable:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Software, unless it has specific ties to machines, generally falls within the “process” category, if claimed properly. The Federal Circuit elaborated on this in Allvoice Developments US, LLC v. Microsoft Corp. where it decided that certain software claims were not patentable subject matter because they did not fall into one of the above categories.
The patent claims at issue
Specifically, the court considered these two claims:

A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different computer-related applications, the universal speech-recognition interface comprising:
input means for receiving speech-recognition data including recognised words;
output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text; and
audio playback means for playing audio data associated with the recognised words.
A speech-recognition interface that enables operative coupling of a speech-recognition engine to a computer-related application, the interface comprising:
input means for receiving speech-recognition data including recognised words;
output means for outputting the recognised words into a computer-related application to allow processing of the recognised words as input text, including changing positions of the recognized words; and
means, independent of the computer-related application, for determining positions of the recognized words in the computer-related application.

The analysis under Section 101: Are the claims directed to a process, machine, article of manufacture, or composition of matter?
Without much analysis, the court merely stated that the claims were not directed to a process, then considered the other categories: “To be considered a machine under section 101, the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices." Similarly, “[t]o qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles.”
The court reached this conclusion over the argument from the patent owner “that the claimed software must necessarily be in a machine readable, physical state in order to exist, and that the district court therefore should have concluded that these claims are directed to [an article of] manufacture, one of the four categories of patentable inventions.”
The Federal Circuit responded to this by following its own precedent that “instructions, data, or information alone, absent a tangible medium, is not [an article of] manufacture.”
Nonprecedential Opinion
Daffy_DuckThe Federal Circuit can make any opinion nonprecedential, which means that the court considers the opinion to “not add significantly to the body of law.” While parties may cite nonprecedential decisions before the court, the court “will not give one of its own nonprecedential dispositions the effect of binding precedent.” In short, the court doesn’t have to follow the decision, or as Daffy Duck might say (in an exercise that I've just discovered is called shm-reduplication), “Rules shmules.”
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Client buzz: Check out The Bee Book

By Stephen B. Schott

The Bee Book is a beautiful book by Matthew Holbein and Emily Brooks of The Foliage Library, one of our clients who fulfills our mission to make the world a better place, one idea at a time.

Here's their Kickstarter The Bee Book Campaign and related video.


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For the next Two Weeks, Google is Buying Patents

By Stephen B. Schott
Do you have a patent you want to sell? Want to sell it to one of the biggest companies in the world? You might have a partner in Google.
How to Participate
googThrough May 22, Google is buying patents through an experimental Patent Purchase Promotion. The transaction process is simple. Patent owners go to this site, fill out some forms, name their price, then wait to hear from Google, who will finalize the form assignment agreement and wire the asking price, if it is interested.
The Details
Here's how it works.

  • Google is only buying one patent at a time. If you have more than one patent you want to sell, you need to complete the form multiple times.
  • Google is only interested in US patents for now.
  • Google is not interested in your patent if you/your company share ownership in the patent.
  • Your patent cannot be subject to litigation, encumbrances, etc.
  • You must have the authority to sell the patent.
  • You must provide an asking price.
  • All terms in Google's Patent Purchase Agreement are nonnegotiable.
  • You will retain a license back to your patent. The license is “irrevocable, non­exclusive, non­transferable, non­assignable (including by operation of law or otherwise), non­sublicensable, worldwide, [and] fully paid­ up.”
  • Google will let you know by June 26, 2015 if it tentatively accepts your offer and if it does, it will request more information from you. 
  • Upon finalization of the agreement, Google will wire the asking price amount to you.

Why is Google Doing This?
In its announcement about the Patent Purchase Promotion, Google states that

We view this as an experiment. We are looking for ways to help improve the patent landscape, and we hope that by removing some of the friction that exists in the secondary market for patents, this program might yield better, more immediate results for patent owners versus partnering with non­practicing entities.

dreamstime_xs_34612811Google's employee Code of Conduct and unofficial Mission Statement is "Don't be evil." You have to read between the lines of the announcement and Google's mission statement, and its previous criticism of nonpracticing entities (NPEs, often called patent trolls) to figure out Google's possible motivation.
Google has long been in tension with patent trolls, and is regularly in the top 10 of companies most sued by NPEs. Gene Quinn at IPWatchdog argues that Google promotes the demise of the patent system. I'm fairly certain that Google is not actively promoting the demise of the patent system, but it is almost certainly trying to take on NPEs.
One of the problems with attacking NPEs is that they often buy patents from smaller inventors who don't have resources to sue, license, or transact business around their patents. Thus the NPEs play a critical role in the idea economy--creating a marketplace for ideas.
Google, in buying patents, is entering the NPE arena and hoping to also become a buyer of ideas. In so doing, Google itself is taking on the role of NPE because it states that it "can license [the purchased patents] to others, etc." It's hard to see how this plays out, but I suppose the optimistic among us would hope that Google's "Don't be evil" will prevail over any nefarious use of the purchased patents.
Should you try this?
If you have a patent that is generating no value for you, or that has an upcoming maintenance fee that you don't want to pay, you might want to give this try. Might be like getting money for nothing. You also might sign up to see if Google will give you more money than you think your patent is worth.
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John Oliver's Anti-Patent-Troll Rant: Simple Thinking

By Stephen B. Schott
last-week-tonightUp is down and right is left when my inbox fills up with 10 friends linking me to something about patents. But this floppy-watches-hanging-from-trees moment came recently after comedian John Oliver, during his Last Week Tonight show, took on patent trolls. In doing so, he follows comedian Adam Corolla, who also had an anti-patent troll rant go viral (for patent news) last year.
Take a gander: It's possibly not safe for work on language.

My favorite line, of a few that were excellent, is his comparison of patents to "legally binding 'dibs.'" Unfortunately, as with his rant about pharmaceutical companies marketing to doctors, Oliver took the easy route and attacked a few bad actors who everyone would dislike and ignored many other businesses that fulfill an important role in the idea economy.

Who are these patent trolls?

Patent trolls prefer to be called non-practicing entities or NPEs, but the patent troll term is too pejoratively inviting to go away. The problem of patent trolls is, as my friends across the Atlantic might say, a sticky wicket. A lot of people feel like there’s some kind of a problem but no one seems to agree on who’s an actual troll.
A few examples illustrate the difficulty of defining a patent troll. Let’s say that a major automobile manufacturer invests several million dollars developing a new diesel engine. Along the way, it secures 50 patents on the technology, but then decides not to pursue the diesel engine and instead focuses on hybrid engines. A few years pass and one of its competitors releases a diesel engine using the patented technology. Is our automobile manufacturer a troll if it pursues the competitor for patent infringement, just because it didn’t produce the diesel engines?
Another problem example that commonly arises is universities, which are petri dishes of innovation that rarely make any products. Most universities do, however, have a technology transfer office that secures patent protection for innovations. If a university sees a company using its patented technology and approaches the company seeking a royalty, is the university a troll that should be punished?
And a third category is also troublesome. Picture a small business that invents a new technology and secures a patent on it. Later, a multinational corporation starts using the technology. The small business doesn’t have millions of dollars to bring a patent infringement lawsuit so it sells its patent to a third party who has enough money to bring the lawsuit. In this David and Goliath scenario, small-business David needed a sling, and the third party provided it. The third party may be in the business of nothing more than collecting promising patents—but legislation attacking the third party patent collector harms the small business and stifles innovation.
At the other end of the spectrum is an example where a patent attorney purchased a patent from an inventor. The patent was for a consumer product. The patent-owner/attorney sued a manufacturer for infringement even though it was clear that there was no infringement. The manufacturer was faced with a terrible decision tree: Choice 1: Pay the patent-owner a small amount of money to settle the lawsuit, or Choice 2: Pay litigation costs (hundreds of thousands of dollars at least) to win the lawsuit and pray for the never-to-be-found Questing Beast that is judge-awared attorney’s fees for bringing a frivolous lawsuit. Choice 1, as painful as it is, is often the better business decision. So yes, there are definitely bad patent trolls.
The Problems With Oliver’s Rant
One of the biggest problems with the Oliver rant is that he fails to acknowledge that in the last two years, a lot has happened to curb bad actors in the patent world. Patent litigation is down 20% in the last year. The most-abused patents, those based on software, are now undergoing heightened legal scrutiny following the Alice Supreme Court case. The US Patent and Trademark Office has set up several new procedures for challenging the validity of granted patents. In all, a lot of work has already been done to fix this problem: The laws, procedures, and cases are having an effect.
dreamstime_xs_8645058Another problem, and perhaps it is obvious from the above descriptions of trolls, is that some of these patent entities help, not hurt, smaller inventors. Patent enforcement is expensive, and without patent entity companies help smaller companies enforce their patent rights against infringers. Thus, many trolls fill an economic need by helping small inventors protect their rights when the costs for doing so get too high.
Oliver encourages more legal action to curb patent trolls, but no one yet knows how all the solutions that were enacted in the last 2 years will play out. In the end, Oliver will hopefully get his dream of fewer true trolls and more innovation, but that will take time and politicians should be careful not to create more problems in their haste to react to the anti-troll sentiment.
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The USPTO's Alice-Based Patentable Subject Matter Hypotheticals with Boilerplate Responses

By Stephen B. Schott
www.masterplaques.comThe USPTO recently published hypotheticals to help guide applicants when defining patentable subject matter. Instead of just a case law review, the office provided claim drafting examples. While not legally binding, these provide a helpful roadmap for practitioners when addressing subject matter rejections. I've parsed the hypotheticals below and for each one, provided a sample argument that practitioners might make at the USPTO based on each of the hypotheticals that found claims to be patentable.
Because this is a longer article, I created a summary page of the sample arguments to overcome the USPTO's subject matter rejections.
Patentable Subject Matter Eligibility Test
The USPTO applied the test that has become well-known following the Supreme Court's Alice v. CLS Bank case.
Slide1
In each of the hypotheticals, the USPTO applied the three-part test pictured above and summarized below that follows the developing case law on this subject.

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? If no, the claim is does not patentable. If yes, move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? If no, the claim contains patent-eligible subject matter. If yes, go to (3).
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? If no, the claim is not patentable. If yes, the claim contains patent eligible subject matter.

Hypothetical 1: Removing Malicious Code From Emails
In this hypothetical, the email scanning operation is done in a quarantined memory sector. The hypothetical claim reads:

1. A computer-implemented method for protecting a computer from an electronic communication containing malicious code, comprising executing on a processor the steps of:
receiving an electronic communication containing malicious code in a computer with a memory having a boot sector, a quarantine sector and a non-quarantine sector;
storing the communication in the quarantine sector of the memory of the computer, wherein the quarantine sector is isolated from the boot and the non-quarantine sector in the computer memory, where code in the quarantine sector is prevented from performing write actions on other memory sectors;
extracting, via file parsing, the malicious code from the electronic communication to create a sanitized electronic communication, wherein the extracting comprises scanning the communication for an identified beginning malicious code marker, flagging each scanned byte between the beginning marker and a successive end malicious code marker, continuing scanning until no further beginning malicious code marker is found, and creating a new data file by sequentially copying all non-flagged data bytes into a new file that forms a sanitized communication file;
transferring the sanitized electronic communication to the non-quarantine sector of the memory; and
deleting all data remaining in the quarantine sector.

Following the subject matter analysis steps above:

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it's a process. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? NO because it is directed towards physically isolating a received communication on a memory sector and extracting malicious code from that communication to create a sanitized communication in a new data file. The USPTO points out that this solution is inextricably tied to the technology and thus not an abstract idea that fits into the judicial exceptions. Therefore, the claim is patent eligible.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 1 in the USPTO's Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because an email communication was isolated in a memory sector and thus inextricably tied to computer technology. In the current claim, the [claim element] is inextricably tied to computer technology, and is thus patent-eligible subject matter.

Hypothetical 2: E-Commerce Outsourcing System/Generating a Composite Web Page 
This hypothetical is based on DDR Holdings, LLC v. Hotels.com et al discussed in detail here.?????????????????????????????????????????????????????????????????????????
In the patented system, a customer who clicks on an advertising link is not transported from the host web page to the merchant’s web page, but instead is re-directed to a composite web page that combines product information associated with the selected item and visually perceptible elements of the host web page.
The claim is as follows: (The USPTO's analysis considers two similar claims.)

19. A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:
(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages;
(i) wherein each of the first web pages belongs to one of a plurality of web page owners;
(ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and
(iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;
(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;
(ii) automatically identify as the source page the one of the first web pages on which the link has been activated;
(iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and
(iv) 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 source page.

Following the subject matter analysis steps above:

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it's a machine. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? NO because "the claim addresses a business challenge (retaining website visitors) that is particular to the Internet." The USPTO points out that the claim does 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," quoting the DDR holding. Therefore, the claim is patent-eligible. The USPTO (and Federal Circuit) went on to step 3 and thus it's worth reviewing as well.
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? The DDR court and USPTO note that “'not all claims purporting to address Internet-centric challenges are eligible, "but in this case these additional limitations amount to more than simply stating “apply the abstract idea on the Internet.” Thus, under this third prong, the subject matter is patent-eligible subject matter.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines:

The current claim is similar to hypothetical 2 in the USPTO's Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because the claim addressed a business challenge (retaining website visitors) that is particular to the Internet, which is not among the judicial exceptions to patentable subject matter. In the current claim, the [claim element] also addresses a business challenge that is particular to the Internet, and is thus patent-eligible subject matter. And even if the claim were to be found to fit into one of the judicial exceptions to patentable subject matter, the additional limitations in the claim directed to [claim element] amount to more than simply stating “apply the abstract idea on the Internet." See also DDR Holdings, LLC v. Hotels.com et al., 113 USPQ2d 1097 (Fed. Cir. 2014).

Hypothetical 3:Digital Image Processing  
?????????????????????????????????????????????????????????????????????????????????????????????????????????????????This hypothetical is based on Research Corporation Technologies, Inc. v. Microsoft Corp.
In the patented method, "the inventor has improved upon previous halftoning techniques by developing an improved mask called a “blue noise” mask. The blue noise mask requires less memory than previous masks and results in a faster computation time while improving image quality. The blue noise mask is produced through an iterative mathematical operation that begins with generating a dot profile with blue noise properties from an image at a 50% gray level using a blue noise filter. Subsequently, additional dot profiles are generated at differing gray levels. As pixels of the dot profile change across the gray levels, these changes are encoded in a cumulative array. Once all the dot profiles are built, the cumulative array becomes the blue noise mask."
The claim is as follows: (The USPTO's analysis considers 3 similar claims.)

1. A computer-implemented method for halftoning a gray scale image, comprising the steps of:
generating, with a processor, a blue noise mask by encoding changes in pixel values
across a plurality of blue noise filtered dot profiles at varying gray levels;
storing the blue noise mask in a first memory location;
receiving a gray scale image and storing the gray scale image in a second memory
location;
comparing, with a processor on a pixel-by-pixel basis, each pixel of the gray scale image
to a threshold number in the corresponding position of the blue noise mask to produce a binary
image array; and
converting the binary image array to a halftoned image.

Following the subject matter analysis steps above:

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it's a process. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? YES because "the mathematical operation of generating a blue noise mask is recited in the claim, [and thus,] the claim is “directed to” a judicial exception."  Move to (3).
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? YES, for two reasons. First, "tie the mathematical operation (the blue noise mask) to the processor’s ability to process digital images. These steps add meaningful limitations to the abstract idea of generating the blue noise mask and therefore add significantly more to the abstract idea than mere computer implementation." Second, "the claimed process with the improved blue noise mask allows the computer to use to less memory than required for prior masks, [resulting] in faster computation time without sacrificing the quality of the resulting image as occurred in prior processes [which in turn] produces an improved digital image. These are also improvements in the technology of digital image processing." Thus, under this third prong, the subject matter is patent-eligible subject matter.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines:

The current claim is similar to hypothetical 3 in the USPTO's Abstract Ideas Hypotheticals published on January 27, 2015, which is based on Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). In that hypothetical the USPTO pointed out that the claim was patentable because tying the mathematical operation to the processor's ability to process digital images added significantly more to the abstract idea. In the current claim, [claim element] similarly ties the [algorithm] to the processor's ability to [perform the claim element]. Further, in the hypothetical, the  USPTO notes that the algorithm allows the computer to use less memory than required for prior masks, which allows the computer to to use less memory. Similarly in the current claim, the [claim element] allows a computer to use less memory, which amounts to an innovation in computer technology that adds significantly more to the abstract idea. Thus, [claim #] is patentable subject matter.

Hypothetical 4: Global Positioning System
This hypothetical is based on SiRF Technology Inc. v. International Trade Commission.
In the patented system, the systems and methods in which a server wirelessly coupled to a mobile GPS receiver uses a mathematical model to solve for the mobile receiver position without receiving satellite positioning data or absolute time information from a satellite. These systems and methods improve GPS techniques by enabling the mobile GPS receiver to determine its position more accurately and improve its signal-acquisition sensitivity to operate even in weaksignal environments. In particular, the mobile GPS receiver is a mobile device that includes 10 examples: Abstract Ideas GPS antenna, a GPS receiver, a microprocessor, a display, and a wireless communication transceiver. Using mathematical formulas, the device calculates pseudo-ranges (estimated ranges from the GPS receiver to each satellite in view) based on PN codes received from the satellites, and the transceiver sends the pseudo-ranges to the server.
The claim is as follows: (The hypothetical considers 2 similar claims.)

1. A system for calculating an absolute position of a GPS receiver and an absolute time of
reception of satellite signals comprising:
a mobile device comprising a GPS receiver, a display, a microprocessor and a wireless
communication transceiver coupled to the GPS receiver, the mobile device programmed to
receive PN codes sent by a plurality of GPS satellites, calculate pseudo-ranges to the plurality of
GPS satellites by averaging the received PN codes, and transmit the pseudo-ranges, and
a server comprising a central processing unit, a memory, a clock, and a server
communication transceiver that receives pseudo-ranges from the wireless communication
transceiver of the mobile device, the memory having location data stored therein for a plurality
of wireless towers, and the central processing unit programmed to:
estimate a position of the GPS receiver based on location data for a wireless tower
from the memory and time data from the clock,
calculate absolute time that the signals were sent from the GPS satellites using the
pseudo-ranges from the mobile device and the position estimate,
create a mathematical model to calculate absolute position of the GPS receiver based
on the pseudo-ranges and calculated absolute time,
calculate the absolute position of the GPS receiver using the mathematical model, and
transmit the absolute position of the GPS receiver to the mobile device, via the server
communication transceiver, for visual representation on the display.

Following the steps above,

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? YES because it's a machine. Move to (2).
(2) Is the claim directed to an abstract idea that is a judicial exception to the categories in (1), such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship? YES because the claim recites mathematical operations. Move to (3).
(3) When taken as a whole, does the claim have additional limitations that amount to significantly more than the abstract idea? YES because the combination of elements impose meaningful limits in that the mathematical operations are applied to improve an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. Thus, under this third prong, the subject matter is patent-eligible subject matter.

Quote to use when responding to a subject matter rejection at the USPTO. When responding to a rejection at the USPTO, you might try a response along these lines:

The current claim is similar to hypothetical 4 in the USPTO's Abstract Ideas Hypotheticals published on January 27, 2015, which is based on SiRF Technology Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010). In that hypothetical, the USPTO pointed out that the claim was patentable because the claim improves an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. Similarly, [claim element] improves [technology] and adds significantly more to the abstract idea. Thus, the subject matter is patent-eligible subject matter.

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Four Boilerplate Responses for Responding to Subject Matter Rejections Based on the USPTO Hypotheticals

By Stephen B. Schott
This is a summary of the sample argument sections of a longer article based on the USPTO's subject matter-based hypotheticals.
Hypothetical 1: Removing Malicious Code From Emails
When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 1 in the USPTO's Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because an email communication was isolated in a memory sector and thus inextricably tied to computer technology. In the current claim, the [claim element] is inextricably tied to computer technology, and is thus patent-eligible subject matter.

Hypothetical 2: E-Commerce Outsourcing System/Generating a Composite Web Page 
When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 2 in the USPTO's Abstract Ideas Hypotheticals published on January 27, 2015. In that hypothetical the USPTO pointed out that the claim was patentable because the claim addressed a business challenge (retaining website visitors) that is particular to the Internet, which is not among the judicial exceptions to patentable subject matter. In the current claim, the [claim element] also addresses a business challenge that is particular to the internet, and is thus patent-eligible subject matter. And even if the claim were to be found to fit into one of the judicial exceptions to patentable subject matter, the additional limitations in the claim directed to [claim element] amount to more than simply stating “apply the abstract idea on the Internet." See also DDR Holdings, LLC v. Hotels.com et al, 113 USPQ2d 1097 (Fed. Cir. 2014).

Hypothetical 3:Digital Image Processing  
When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 3 in the USPTO's Abstract Ideas Hypotheticals published on January 27, 2015, which is based on Research Corporation Technologies, Inc. v. Microsoft Corp, 627 F.3d 859 (Fed. Cir. 2010). In that hypothetical the USPTO pointed out that the claim was patentable because tying the mathematical operation to the processor's ability to process digital images added significantly more to the abstract idea. In the current claim, [claim element] similarly ties the [algorithm] to the processor's ability to [perform the claim element]. Further, in the hypothetical, the  USPTO notes that the algorithm allows the computer to use less memory than required for prior masks, which allows the computer to to use less memory. Similarly in the current claim, the [claim element] allows a computer to use less memory, which amounts to an innovation in computer technology that adds significantly more to the abstract idea. Thus, [claim ##] is patentable subject matter.

Hypothetical 4: Global Positioning System
When responding to a rejection at the USPTO, you might try a response along these lines.

The current claim is similar to hypothetical 4 in the USPTO's Abstract Ideas Hypotheticals published on January 27, 2015, which is based on SiRF Technology Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010). In that hypothetical, the USPTO pointed out that the claim was patentable because the claim improves an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. Similarly, [claim element] improves [technology] and adds significantly more to the abstract idea. Thus, the subject matter is patent-eligible subject matter.

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The Federal Circuit Breathes More Life Into Claim Preambles

By Stephen B. Schott
?????????????????????????????????????????????????????????????Claim preambles are given little weight in claim interpretation, which is seemingly incongruous with the amount of scrutiny courts give to all the other words in patent claims. But the Federal Circuit recently breathed just a little more life into preambles in Pacing Technologies, Inc. v. Garmin International, Inc.
The decision focused on US patent 8,101,843 claim 25:

A repetitive motion pacing system for pacing a user comprising:
a web site adapted to allowing the user to pre-select from a set of user-selectable activity types an activity they wish to perform and entering one or more target tempo or target pace values corresponding to the activity;
a data storage and playback devices; and
a communications device adapted to transferring data related to the pre-selected activity or the target tempo or the target pace values between the web site and the data storage and playback device.

In explaining its decision, the Federal Circuit repeatedly referred to claim 25's preamble, pointing out how certain preamble terms affect the meaning of terms later in the claims.
Claim 25’s preamble uses two terms, “user” and “repetitive motion pacing system” that are then referred back to in subsequent claim elements. The Federal Circuit pointed out that this construction made claim 25’s preamble language so important to the entirety of the patent as to render it a “necessary component of the claimed invention,” and therefore “limiting.”
Does this case elevate the importance of claim preambles, and, if so, will it change the way that practitioners structure them? It’s hard to know if the import of preambles is now elevated or whether this case will stand by itself, but in either case, practitioners would be wise to craft preambles with care.
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