Latest Blog Post

Alice Helps Another Company Stop a Patent Troll

Michael Skelps, the General Manager of Capstone Photography, has a piece in the Hill today. It seems that Capstone got sued by a patent troll a few years ago. Capstone, which is a small business based in Connecticut, had to lay off 60% of its staff in fighting that troll; Capstone managed to survive because of the Alice decision, which added clarity to patent eligibility of software. Here’s a key quote:

Luckily, on June 19, 2014, the Supreme Court made an important ruling in Alice Corp. Pty. Ltd. v. CLS Bank International that threw a lifeline to companies facing these types of vague patents. In its unanimous decision, the Court held that patent claims that simply add “do it on a computer” to an abstract idea are not eligible for patent protection under U.S. patent law. In its opinion, the Court made clear that abstract ideas that utilize generic computer methods are not something our patent system was designed to protect.

This ruling provided the support Capstone needed to mount a successful defense against our accuser. We argued that the patents at issue should be invalidated for not satisfying U.S. patent law as defined by the Alice decision. Nearly a year after the litigation process began – a federal judge ruled in our favor. She invalidated all three patents at issue in the suit, finding that the ideas they catalogued were abstract ideas and ineligible for patent protection.

It’s critical to have a way to quickly invalidate bad software patents. Alice and 35 U.S.C. § 101 have been invaluable, as the Capstone case attests. But there are critics who complain about Section 101 and its supposed “incoherence.”

For example, David Kappos, the former head of the USPTO, wants to get rid of Section 101 altogether; but then again, he’s not being sued by patent trolls, is he?

Recent posts

Update: PTO Releases Case Study Topics

Following up on this post, the USPTO has released its case study topics: 1) Evaluation of the deviation of 35 U.S.C. §101 rejections from official guidance, correctness of rejections and completeness of the analysis. This study will evaluate whether examiners are properly making subject matter eligibility rejections under 35 U.S.C. §101 and clearly communicating their…

Proposed PTO Case Studies Show Common Concerns

Case Study words stamped in red ink on a manila file folder to illustrate a good example or best practice to explore, read or study

The USPTO recently requested proposals for case studies that the Office might do in order to improve patent prosecution. There were over 100 proposals submitted from associations, companies, law firms, and individuals. There are definitely some proposals that the USPTO should use. I’m hoping that at the USPTO’s Patent Quality Community Symposium on Wednesday, some…