New Framework for Alice Predictability

//New Framework for Alice Predictability

New Framework for Alice Predictability

By |2018-02-08T11:05:50+00:00February 8, 2018|

Framework for Patent Claims Drafting and Patent Litigation Post-Alice

  1. Patent practitioners – and the courts themselves – continue to struggle to clarify Supreme Court guidance on Alice two-step 
  2. Juhasz Law provides a new framework, a multi-step sequence to analyze patent claims for greater insight into patent claims drafting and patent litigation 
  3. View major post-Alice cases in light of The Juhasz Law PSAI-PG℠ Prism on our Keeping Tabs on Alice Page

In Alice vs. CLS Bank, the Supreme Court instructed that patent claims are to be looked at through the prism of “patent-ineligible concept(i.e., “determine whether the claims at issue are directed to a patent-ineligible concept,” for example, are the claims directed to an abstract idea) and “patent eligible application(i.e., “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,” for example, no preemption of the abstract idea and more than general functioning of computing components.)

Thanks to Alice, a startling high number of patent claims have been invalidated or denied as not patent eligible subject matter under 35 USC § 101. To put this number into perspective, between the time the Supreme Court ruled and August 2017, the appeals court decided 111 cases involving challenges under Section 101. In 102 of those cases — 92 percent — it found the patent was invalid, according to data reported by LexisNexis Law 360.

The problem with the Alice guidelines is that the Alice prism breaks the light beam shining from a patent claim into only two components of light – namely, the components of “patent-ineligible concept” (e.g., are the claims directed to an abstract idea) and “patent eligible application ” (e.g., no preemption of the abstract idea and more than general functioning of computing components.)  This leaves many patent practitioners – and the courts themselves – struggling with how to interpret those two components of light – to wit (1) what amounts to a “patent-ineligible concept”? (e.g., Are the claims directed to an abstract idea?)[Alice Step 1] and (2) what amounts to a “patent eligible application”? (e.g., Do the elements of each claim both individually and ‘as an ordered combination’ preempt the abstract idea and are more than simply general functioning of computing components?)[Alice Step 2].

This is especially true in the area of software patents.

A New Framework: The PSAI-PG Alice Prism

The Juhasz Law PSAI-PG℠ Alice Prism provides more clarity to the light beam coming out of the Alice prism from a patent claim by breaking that light beam into four additional components of light – namely, the components of (1) “P” for what is the problem addressed by the claims? (2) “S” for what is the solution to that problem? (3) “A” for what is the abstract idea? (4)  “I” for what is the improvement of that solution over conventional solutions? and breaking  Alice Step 2 into the two components of: (5) “P” for do the elements of each claim both individually and ‘as an ordered combination’ preempt the abstract idea? and (6) “G” for are the elements of each claim both individually and ‘as an ordered combination’ more than simply general functioning of computing components? Put these together and you get the PSAI-PG℠ Alice Prism.

The additional components of light – and the sequence of all components – generated by the PSAI-PG℠ Alice Prism provides a six-step analytic process. The Juhasz PSAI-PG℠ Alice Prism is a New Framework for analyzing patent claims under Alice and it provides significant insight into why a claim does or does not contain patent eligible subject matter.

In a series of upcoming blogs we will be analyzing a number of important Alice decisions using the PSAI-PG℠ Framework. In this, the first of these blogs, we put the patent claims in Mobile Telecommunications Technologies, LLC v. United Parcel Service, Inc., (DC ND Georgia Mar 24, 2016) (Affirmed Fed. Cir. Jan 11, 2018) through the Juhasz Law PSAI-PG℠ Framework to discern what claim recitations to avoid in a software patent to pass muster under Alice.

Mobile Telecommunications v. UPS

The Federal Circuit affirmed a district court decision Jan 11, 2018 on Mobile Telecommunications Technologies, LLC v. United Parcel Service, Inc. The patent covered delivery of a pager notification on receipt of an express package and was deemed patent-ineligible.

Mobile Telecommunications v. UPS patent claim drawing

Illustrative drawing above. Illustrative patent claim(s) appear at the end.

Why it failed the Alice Challenge

Conventional technological solution (SMS and text messaging) to a technological problem (notifying customers that their delivery has arrived or is late).

PSAI-PG Analysis

Problem: Getting information on status of an express mailing requires a person to call an 800 telephone number for the information. In other words, the tracking network requires action by persons, typically mailers, to determine whether critical express mailings have been successfully delivered to addressees.

Solution: Associate a page number to an express mailing and paging the recipient when the express mailing is delivered.

Abstract Idea (patent ineligible subject matter): Delivery notification for express packages.

Improvement: Send an express mail tracking service an ID number assigned to an express mailing and a page number of a delivery notification recipient. Relay the ID and page number to a paging operations center. Alert the paging operations center that the express mail has been delivered. Transmit a wireless page message to the recipient to notify of the express mailing delivery.

Patent Eligible Application

Preemption: YES. Preempts conventional steps for implementing the abstract idea by covering most popular methods of communication currently available in SMS text messages and email.

General function: YES. Delivery notification is implemented with generic components, using two of the most popular methods of communication currently available in SMS text messages and email.

Pat 5,786,748, Illustrative Claim 1

A method for providing notification of an express mail delivery to an addressee thereof, comprising the steps of:

sending to an express mail tracking service [“express mail tracking service that tracks the delivery status of a package” construed to mean “a network or service,”] an ID number assigned to an express mailing and a page number of a delivery notification recipient;

relaying the ID, page number, and an appointed time to a paging operations center [“paging operations center” construed to mean “a center that receives and processes information related to an express mailing, and transmits wireless page messages to the delivery notification recipient”];

providing a first indication to the paging operations center that the express mailing has been delivered to the addressee;

providing a second indication to the paging operations center that the express mailing has not been delivered to the addressee by the appointed time;

transmitting, responsive to the first indication, a wireless page message to the recipient as notification of the express mailing delivery; and

transmitting, responsive to the second indication, a wireless page message to the recipient notifying recipient that the express mailing has not been delivered by the appointed time.

The Juhasz Law PSAI-PG℠ Prism clearly shows why the patent claims in Mobile Telecommunications Technologies failed under 35 USC § 101.  The claims recited nothing more than a conventional technological solution (SMS and text messaging) to a technological problem (notifying customers that their delivery has arrived or is late).

For more on The Juhasz Law PSAI-PG℠ Prism go to Keeping Tabs on Alice Page

About The Juhasz Law Firm

About Paul R. Juhasz