Where are we now?

Clues after Alice v. CLS Bank

Matt Weinstein
Accenture*
* The views presented are solely those of the presenter and do not represent an official position of Accenture

Executive Summary

Survey of Post-Alice Decisions

Federal Circuit
District Court
PTAB

Post-Alice Drafting Strategies

Where are we now?
What strategies should be used based on
decisions to date?

* The views presented are solely those of the presenter and do not represent an official position of Accenture

Survey of Post-Alice Decisions

Three Federal Circuit Decisions

All held asserted claims unpatentable under 101

Ten plus District Court Decisions

Aware of two decisions to date supporting patentability
The remainder hold claims unpatentable under 101

PTAB
At least one decision reversed rejection of claims under 101
(but other rejections affirmed)
In post-grant (IPR/CBM) proceedings, at least two decisions
found failure to meet the initial burden to institute proceedings
on 101 grounds, but instituted proceedings on other grounds

* The views presented are solely those of the presenter and do not represent an official position of Accenture

Digitech

First post-Alice Federal Circuit decision

Device profiles and methods for generating a device profile

claimed in U.S. Patent No. 6,128,415 were subject matter
ineligible

Device profile nothing more than information and does not fall
within one of the categories of eligible subject matter under
section 101

Method claims for generating a device profile encompassed

the abstract idea of organizing data through mathematical
correlations and was not tied to a specific structure or
machine.

Clue? Dont claim pure data

* The views presented are solely those of the presenter and do not represent an official position of Accenture

Planet Bingo

Claims directed to systems and methods for managing/playing

the game of Bingo were subject matter ineligible

[U]se of a computer in the claims adds nothing more than

the ability to manage Bingo more efficiently.

[P]atents do not claim the accounting program, ticket

program, and verification program . . . . Instead, the claims
recite a program that is used for the generic functions of storing,
retrieving, and verifying . . . .

Found fault in the way patentee chose to describe and claim the
invention specification contained only cursory descriptions of
the technical details

Clue? Dont skimp on description and dont claim generically

* The views presented are solely those of the presenter and do not represent an official position of Accenture

BuySAFE

Claims directed to method of establishing transaction

performance guaranty were subject matter ineligible

Asserted claims did not even push or even test the boundaries
of Supreme Court precedents under section 101. The claims
are squarely about creating a contractual relationship.

Integration of computers in the claims added no inventive

concept as any claimed computer functionality was generic and
non-physical

No detail in claims about what information was exchanged, how

it was used to create the guaranty, and no new physical
limitations nothing significantly more than the ineligible
matter

Clue? Technical disguises not likely to save business methods

* The views presented are solely those of the presenter and do not represent an official position of Accenture

AutoFORM Engineering (E.D. Mich)

Claims covering computer implemented methods of designing

addendum surfaces for tools used to produce sheet metal parts
for automobiles pass 101
Did not explicitly apply two-part Alice framework
Claims not abstract because narrowing limitations present in the
claims take claims outside of the realm of abstract ideas,
including:
designing the addendum to avoid[] an overlap or intersection
condition between sectional profiles
parameterizing the sectional profiles by the means of profile
parameters
No in-depth analysis of why claims covered more
Clue? Go narrow and specific (i.e., non-functional)
* The views presented are solely those of the presenter and do not represent an official position of Accenture

Card Verification Solutions (N.D. Ill)

Claims covering specific computer implemented method of

verifying a transaction pass 101 on a motion to dismiss

Claims directed to abstract idea, but additional elements in the

asserted claims plausibly transformed the nature of the claims
into a patent eligible application

Limitations requiring generation of pseudorandom tags

narrowed the scope of claims so they did not preempt
underlying abstract idea

Court saw alignment with object of asserted patent to transform

data from one form into another that will be recognized by the
intended recipient but secure against decryption

Clue? Stress technical benefits and data transformations to

avoid preemption
* The views presented are solely those of the presenter and do not represent an official position of Accenture

Claims Invalidated by District Courts

Animating lip synchronization and facial expression of threedimensional characters using broadly claimed rules defining
morph weights as a function of phonemes (McRO, C.D. Cal)

Identifying customers and engaging with them to improve their

customer experience (Open Text, N.D. Cal)

Selecting meals according to particular dietary goals and food

preferences (DietGoal Innovations, S.D.N.Y.)

Making conditional decisions on a telephony network (Comcast,

D. Del.)

Converting non-negotiable credits earned in an award program

into credits that can be used to purchase goods and services
(Loyalty Conversion, E.D.T.X.)
* The views presented are solely those of the presenter and do not represent an official position of Accenture

More Claims Invalidated by District Courts

Allowing users to exercise control over the release of

information to others to provide more efficient anonymous
communication (Walker Digital, D. Del.)

Individualizing up-selling based both on the identity of the

purchaser and the original product being purchased (Tuxis
Technologies, D. Del.)

Asking someone whether they want to perform a task, and if

they do, waiting for them to complete it, and if they do not,
asking someone else (Eclipse IP, N.D. Cal.)

Routinely modifying transaction amounts and depositing the

designated, incremental differences into a recipient account
(Every Penny Counts, M.D. Fla.)

* The views presented are solely those of the presenter and do not represent an official position of Accenture

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Selected results from the PTAB

Claims reciting management information base (MIB) comprising

a keyed data set of managed objects; host computing platform
coupled to the keyed data set of managed objects in the MIB
not abstract, but obvious over prior art. (Ex Parte Love).

Claims to transforming, at an authentication host computer,

received data by inserting an authenticity key to create
formatted data; and returning, from the authentication host
computer, the formatted data (i) to enable the authenticity key to
be retrieved not abstract, but possibly obvious over prior art
(Secure Axcess)

* The views presented are solely those of the presenter and do not represent an official position of Accenture

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Post-Alice Drafting Strategies

Where are we now?

Still no bright line test
However, clear that merely reciting computer language will not
yield subject matter eligibility
Preemption appears to be a primary policy concern
Ultramercial likely next major benchmark for computer
implemented inventions.

* The views presented are solely those of the presenter and do not represent an official position of Accenture

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Post-Alice Drafting Strategies

What strategies should be used based on the decisions to date?

Organize specifications to emphasize technical operation and
specific aspects of hardware arrangements
Discuss technical benefits, specifically how claimed invention
makes system more efficient, more secure, etc.
Consider including emphasis on why invention cannot be
performed by (or is at least highly impracticable to be
performed by) a human with pen and paper
Consider describing incorporated abstract ideas to set the
stage for why claims include something more
Avoid summarizing the invention at too high a level
Avoid discussion of non-technical benefits (i.e., economic
benefits)
* The views presented are solely those of the presenter and do not represent an official position of Accenture

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Post-Alice Drafting Strategies, contd.

What strategies should be used based on the decisions to date?

To avoid a preemption argument, include as many specific
detail around the implementation and novelty as possible. The
specific details should at least be recited in dependent claims
Consider describing known implementations of the abstract
idea on a computer to emphasize that the invention is not preemptive and claiming any differences
Draft broadest possible claims and include them as examples
in the specification.
Avoid claims that can be reduced to non-technical description.
Connect any functional language (for ) to realworld/practical outputs.

* The views presented are solely those of the presenter and do not represent an official position of Accenture

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Claims Appendix

* The views presented are solely those of the presenter and do not represent an official position of Accenture

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Digitech
Claim 1, U.S. Patent No. 6,128,415

A method of generating a device profile that describes properties of a device in a digital

image reproduction system for capturing, transforming or rendering an image, said
method comprising:

generating first data for describing a device dependent transformation of color

information content of the image to a device independent color space through use of
measured chromatic stimuli and device response characteristic functions;

generating second data for describing a device dependent transformation of spatial

information content of the image in said device independent color space through use of
spatial stimuli and device response characteristic functions; and

combining said first and second data into the device profile.

* The views presented are solely those of the presenter and do not represent an official position of Accenture

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Planet Bingo
Claim 1, U.S. Patent No. 6,398,646

A system for managing a game of Bingo which comprises:

(a) a computer with a central processing unit (CPU) and with a memory and with a printer
connected to the CPU;

(b) an input and output terminal connected to the CPU and memory of the computer; and

(c) a program in the computer enabling:

(i) input of at least two sets of Bingo numbers which are preselected by a player to be
played in at least one selected game of Bingo in a future period of time;

(ii) storage of the sets of Bingo numbers which are preselected by the player as a group
in the memory of the computer;

(iii) assignment by the computer of a player identifier unique to the player for the group
having the sets of Bingo numbers which are preselected by the player wherein the player
identifier is assigned to the group for multiple sessions of Bingo;

* The views presented are solely those of the presenter and do not represent an official position of Accenture

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Planet Bingo, contd.

(iv) retrieval of the group using the player identifier;

(v) selection from the group by the player of at least one of the sets of Bingo numbers
preselected by the player and stored in the memory of the computer as the group for play
in a selected game of Bingo in a specific session of Bingo wherein a number of sets of
Bingo numbers selected for play in the selected game of Bingo is less than a total
number of sets of Bingo numbers in the group;

(vi) addition by the computer of a control number for each set of Bingo numbers selected
for play in the selected game of Bingo;

(vii) output of a receipt with the control number, the set of Bingo numbers which is
preselected and selected by the player, a price for the set of Bingo numbers which is
preselected, a date of the game of Bingo and optionally a computer identification
number; and

(viii) output for verification of a winning set of Bingo numbers by means of the control
number which is input into the computer by a manager of the game of Bingo.

* The views presented are solely those of the presenter and do not represent an official position of Accenture

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BuySAFE
Claim 1, U.S. Patent No. 7,644,019

A method, comprising:

receiving, by at least one computer application program running on a computer of a safe

transaction service provider, a request from a first party for obtaining a transaction
performance guaranty service with respect to an online commercial transaction following
closing of the online commercial transaction;

processing, by at least one computer application program running on the safe

transaction service provider computer, the request by underwriting the first party in order
to provide the transaction performance guaranty service to the first party,

wherein the computer of the safe transaction service provider offers, via a computer
network, the transaction performance guaranty service that binds a transaction
performance guaranty to the online commercial transaction involving the first party to
guarantee the performance of the first party following closing of the online commercial
transaction.

* The views presented are solely those of the presenter and do not represent an official position of Accenture

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AutoFORM Engineering
Claim 1, U.S. Patent No. 7,894,929

A non-transitory computer readable medium containing a program, said program being configured
to make a computer execute the steps of a method for designing a tool for deep drawing of sheet
metal to form a sheet metal component having a predefined component geometry, said tool
comprising a die, a binder and a punch, whereby the binder is used to fix the sheet metal in an
edge zone of the die, before the sheet metal is pressed in a drawing direction by the means of the
punch into the die, said tool comprising at least one addendum zone surrounding the component,
said method comprising the following steps:

a. smoothing an irregular component edge by filling in a fill surface whereby a smooth component
edge is formed and the fill surface runs into the predefined component geometry by a continuous
tangent;

b. arranging along the smooth component edge at a distance from one another several sectional
profiles directing away from the smooth component edge;

c. whereby the sectional profiles are parameterized by the means of profile parameters, the profile
parameters being scalar values;

d. laterally interconnecting the sectional profiles by a continuous surface to form the geometry of
the addendum zone of the tool, whereby

e. said addendum zone complements the component geometry in the edge zone and runs into the
component and the binder with a continuous tangent.
* The views presented are solely those of the presenter and do not represent an official position of Accenture

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Card Verification Solutions

Claim 1, U.S. Patent No. 5,826,245

A method for giving verification information for a transaction between an initiating party
and a verification-seeking party, the verification information being given by a third,
verifying party, based on confidential information in the possession of the initiating party,
the method comprising:

on behalf of the initiating party, generating first and second tokens each of which
represents some but not all of the confidential information,

sending the first token electronically via a nonsecure communication network from the
initiating party to the verification-seeking party,

sending the second token electronically via a nonsecure communication network from
the initiating party to the verifying party,

sending the first token electronically via a nonsecure communication network from the
verification-seeking party to the verifying party,

verifying the confidential information at the verifying party based on the first and second
tokens, and sending the verification information electronically via a nonsecure
communication network from the verifying party to the verification-seeking party.
* The views presented are solely those of the presenter and do not represent an official position of Accenture

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