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2 months ago
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SCOTUS Denies Challenges to Section 101 Test, Trademark Domicile Rules and Obviousness-Type Double-Patenting Analysis
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Steve Brachmann
16 hours ago 1
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“Eolas noted the myriad calls on SCOTUS to clarify the Section 101 eligibility test in Federal Circuit rulings… and from the U.S. Solicitor General.”
SCOTUSOn October 7, the U.S. Supreme Court issued an order list that included cert denials for several intellectual property cases that were presented to the nation’s highest court. In rendering those denials, the Supreme Court leaves in place an appellate ruling invalidating patents claiming improvements to computer networking technologies under Section 101’s abstract idea jurisprudence. U.S. Patent and Trademark Office (USPTO) requirements on listing domicile addresses on trademark applications, and the Federal Circuit’s application of obviousness double-type patenting doctrine in the patent term adjustment context, were also allowed to stand due to these denials.
Eolas Technologies v. Amazon.com: Another Call for Section 101 Clarity Goes Unheeded
Web development company Eolas Technologies was formed as a spinoff company from the University of California, San Francisco, to commercialize early web technologies in the mid-1990s. This included improvements to the distribution of hypermedia across the World Wide Web, claimed in patents that Eolas asserted in U.S. district court against Big Tech giants Amazon and Google. Eolas’ patent claims were invalidated by the Northern District of California as directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. On appeal, the Federal Circuit faulted the district court for not recognizing the patent’s claimed improvements to configuration requirements in the nascent web, but still concluded that “interacting with data objects on the World Wide Web is an abstraction,” affirming the Section 101 ruling.
Eolas filed its petition for cert this May challenging the abstract idea determination as conflicting with the Supreme Court’s 2014 ruling in Alice Corp. v. CLS Bank International, which confirmed the patent eligibility of claims “improv[ing] an existing technological process.” While the Federal Circuit issued rulings finding software claims patent-eligible when directed to improvements in computer functionality, Eolas’ brief notes that appellate rulings on Section 101 have strayed from the scope of patent eligibility defined by Alice.
Echoing concerns raised by many commentators on the expansion of abstract idea jurisprudence, Eolas’ petition also contended that the Federal Circuit’s analysis improperly blended other patentability statutes, including the written description requirement under 35 U.S.C. § 112, into the Section 101 patentability analysis. Eolas noted the myriad calls on the Supreme Court to clarify the Section 101 eligibility test in Federal Circuit rulings like American Axle & Manufacturing v. Neapco Holdings, and from the U.S. Solicitor General, which has urged SCOTUS to grant cert on Section 101 issues in five petitions that were later denied certiorari.
Chestek PLLC v. Vidal: Domicile Reporting Requirements for Trademark Owners Survive Challenge
In 2019, the USPTO promulgated a final rule under its general rulemaking authority codified at 35 U.S.C. § 2(b)(2) that required all trademark applicants to disclose their domicile address on their applications. Trademark law firm Chestek PLLC challenged the USPTO’s refusal of its own trademark applications for failure to list a domicile address, arguing that Section 2(b)(2)’s cross-reference to 5 U.S.C. § 553 required the agency to follow notice-and-comment procedures required by the Administrative Procedures Act (APA). Earlier this year, the Federal Circuit affirmed the agency’s refusal after ruling that the reporting requirement does not alter the substantive standards of trademark examination, making it a procedural rule properly promulgated without notice-and-comment rulemaking.
Filing its petition for cert this May, Chestek PLLC cited rulings from several regional circuits finding that statutory cross-references to Section 553 are not simply directed to that statute’s notice-and-comment exceptions. Further, Chestek argued that the Federal Circuit’s ruling improperly vitiated Section 2(b)(2)(B)’s cross-reference to Section 553, “evidently designed to serve [the] concrete function” of applying Section 553’s requirements to agency rulemaking that was historically only procedural. Chestek also noted privacy concerns that would have been easily identified through notice-and-comment rulemaking, while amicus filings highlighted democratic concerns posed by the USPTO Director’s unilateral ability to promulgate rules.
Cellect LLC v. Vidal: Agency Prosecution Delays Do Not Impact ODP Analysis
After Cellect filed a patent infringement suit against Samsung Electronics over image-sensor technology, Samsung requested ex parte reexamination of Cellect’s patents, including three that received patent term adjustments (PTA) under 35 U.S.C. § 154(b) for the USPTO’s delay in prosecuting patent applications. Cellect’s patent claims were invalidated during those proceedings for “obviousness-type double-patenting” (ODP), differentiating PTA from patent term extensions (PTE) under 35 U.S.C. § 156 for delays caused by regulatory approval due to references to terminal disclaimers in the PTA statute. Affirming this ruling, the Federal Circuit found that Cellect could have avoided the ODP invalidations if they had filed terminal disclaimers on the challenged patents.
Also filing its petition for cert in May, Cellect argued that Sections 154 and 156 were textually interlocked for the purposes of ODP analysis, alleging that the perceived difference due to Section 154’s reference to terminal disclaimers was improperly read as an oblique reference to judicially-created ODP doctrine. Cellect also contended that the Federal Circuit’s ruling created unreasonable uncertainty in patent term length that patentees can only overcome by preemptively filing terminal disclaimers even where unnecessary.
Several amicus briefs were filed on Cellect’s petition. Seed engineering firm Inari Agriculture argued that the USPTO’s procedural rules for prosecution give patent applicants several opportunities to maximize PTA improperly. By contrast, the New York Intellectual Property Law Association noted negative impacts ODP has had on medical research, and questioned whether the doctrine was still necessary following changes to the calculation of patent terms in the mid-1990s.
dounome
2 months ago
Checking in With Alice: Section 101 Developments at the Federal Circuit, District Courts, USPTO and Congress
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Michael Gulliford
21 hours ago 1
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“The statistics show that district courts are more forgiving than the Federal Circuit when it comes to Alice issues. In 2023, for instance, district courts denied more motions to invalidate under Alice than they granted.”
AliceEver since the Supreme Court’s seminal decision in Alice Corp. v. CLS Bank Int’l, the law of subject matter eligibility for software patents has remained an enigma. While practitioners understand that abstract ideas, without more, are not patentable under 35 U.S.C. § 101, gleaning from relevant precedent whether a particular software patent will or will not pass muster under Alice remains a challenge.
This article attempts to make sense of what’s been happening with software patents over the course of the last six years (2018-2023). To sum up the current state of affairs: the Federal Circuit’s Alice test has become a search for technological specificity, different district courts take very different approaches, and the USPTO has charted its own course on the issue.
Alice Cases at the Supreme Court
Although many believed that the Supreme Court would jump back into the Section 101 fray by at least granting certiorari in American Axle, such was not the case. Despite urging from the Solicitor General, the Supreme Court did not elect to hear the case. As of this article’s writing, no Alice issues appear likely to garner the Supreme Court’s attention. The task of further reform appears to rest solely on Congress’s shoulders.
Alice At the Federal Circuit in 2018-23
With Congress and the Supreme Court remaining largely on the sidelines with respect to Section 101, the U.S. Court of Appeals for the Federal Circuit’s treatment of the issue needs to be closely considered. By this author’s count, the Federal Circuit issued 96 opinions that considered substantive Alice issues in 2018-23. You can see a full list of the cases here. Forty-one such opinions were precedential, and all but 10 of the precedential opinions dealt with a lower court finding of invalidity for failure to satisfy Section 101. In 14 instances (Core Wireless, Data Engine, Ancora, SRI, Koninklijke, Uniloc USA, Packet Intelligence, EcoServices, TecSec, Cosmokey, Mentone, Cal. Tech., Weisner, Adasa Inc.) the Federal Circuit found challenged patent claims not invalid under Section 101 (with the exception of Cosmokey and Weisner — involving Step Two wins — all cases were based on passing Step One of the Alice test). In at least five instances, the Federal Circuit vacated the district court’s finding of ineligibility under Section 101 due to factual disputes, and remanded for further proceedings (Berkheimer, Aatrix Software, Cellspin, MyMail, Cooperative Ent.’t). The remainder of the Federal Circuit’s 2018-23 opinions resulted in the challenged claims being invalidated under Section 101, often based on the lack of technical detail sufficient to save the claim under Steps 1 or 2 of the Alice/Mayo framework.
A table summarizing the Federal Circuit’s 2018-2023 precedential decisions is available here.
Alice In the District Courts
In the end, it falls upon district courts to make sense of the Federal Circuit’s Alice jurisprudence. Although a full-scale survey of district court Alice decisions is beyond the scope of this article, the relevant data allows several interesting conclusions.
The statistics show that district courts are more forgiving than the Federal Circuit when it comes to Alice issues. In 2023, for instance, district courts denied more motions to invalidate under Alice than they granted (including motions at the pleading stage, SJ and post-trial).
Prior Years
Source: Docket Navigator
At a micro level, and perhaps not surprisingly when it comes to Alice challenges, litigants considering the most popular patent venues should be aware that a patent owner is likely to face significantly more difficulty passing the Alice hurdle in California compared to Texas. In 2023, Delaware also proved a moderate jurisdiction for software patent owners.
Section 101 Legislative Reform Efforts
In response to Alice and the cases from the Federal Circuit and district courts that have followed Alice, efforts to reform Section 101 have progressed, but have yet to prove successful.
In 2017, the Intellectual Property Owners Association (IPO) put forth a proposed revision to Section 101, as did the American Intellectual Property Lawyers Association (AIPLA). In 2018, the IPO and AIPLA agreed on a “Joint AIPLA-IPO Proposal on Patent Eligibility,” under which only laws of nature and mental steps would be patent-ineligible under Section 101.
Building on these proposals, a bipartisan group of legislators (including Senators Thom Tillis and Chris Coons) released a draft bill in May 2019 which would eliminate the judicial exceptions to patent eligibility altogether, and instead only require that an invention meet one of the statutory subject matter areas (process, machine, manufacture, or composition of matter) in order to be patentable under Section 101. Following the release of this draft legislation, the Senate Judiciary Subcommittee on Intellectual Property held three public hearings in June 2019 on Section 101 reform.
Most recently, in August of 2022, Senator Tillis first presented legislation to reform subject matter eligibility in the United States, dubbed the Patent Eligibility Restoration Act (“PERA”). The new bill would allow subject matter to qualify for potential patent protection so long as the subject matter does not fall within the following, predefined exclusions derived from case law:
A mathematical formula, apart from a useful invention or discovery.
A process that – (i) is a non-technological economic, financial, business, social, cultural, or artistic process; (ii) is a mental process performed solely in the human mind; or (iii) occurs in nature wholly independent of, and prior to, any human activity.
An unmodified human gene, as that gene exists in the human body.
An unmodified natural material, as that material exists in nature.
Senator Coons has since co-sponsored the Bill. The Senate Judiciary Committee on Intellectual Property introduced the bill in June of 2023 (S.2140) and it is currently scheduled for mark-up on September 26, 2024.
Alice at the USPTO
One of the most noteworthy developments on the Alice front came on January 7, 2019, when the USPTO issued its “2019 Revised Patent Subject Matter Eligibility Guidance.” See generally 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidelines”), 84 Fed. Reg. 50-57 (Jan. 7, 2019). By strictly interpreting the kinds of subject matter that fall within judicial exceptions to subject matter eligibility, the Guidelines are likely to significantly reduce the volume of Section 101 rejections emanating from the USPTO.
The Guidelines mandate a two-pronged approach to Alice issues. Under Prong One, an Examiner must determine whether a patent claim is directed to a judicial exception (law of nature, natural phenomenon or abstract idea). The Guidelines set forth the three categories that qualify as abstract ideas: “mathematical concepts, certain methods of organizing human activity, and mental processes.” Guidelines at 50. Only if a given claim falls within one of these three abstract idea categories (or is directed to a law of nature or natural phenomenon) is it directed to a judicial exception. Id. at 53. When a judicial exception is not present, the analysis ends and the patent passes muster under Section 101. Id. When a judicial exception is present, the Examiner must proceed to Prong 2 of the analysis. Id.
Under Prong 2 (Step TwoA), the Examiner must determine whether a claim, though directed to a judicial exception, is nonetheless “integrated into a practical application of the judicial exception.” Id. “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Id. In delineating specific considerations that should guide this analysis, the USPTO leans on a number of Federal Circuit cases finding no abstract idea when the challenged claim set forth technological improvements or other limitations that remove the claim from being abstract. Id. at 55 & nn. 25-32.
Where no practical application has been found, an examiner must determine (Prong 2, Step TwoB) whether the claim nonetheless sets forth an “inventive concept.” Id. at 56. Only if an inventive concept is found will the claim survive under § 101. See id. Tracking Federal Circuit precedent on the issue, the inventive concept inquiry examines considerations such as whether the claim sets forth a limitation or combination of limitations “that are not well-understood, routine, conventional activity in the field.” Id. at 56. If an inventive concept is found under Step TwoB, the patent remains eligible under Section 101. Id. If no such inventive concept is found, the patent is not eligible. Id.
As the USPTO’s data has demonstrated, the issuance of the Guidelines resulted in markedly fewer first office-action Alice rejections. [1] Whether this trend will continue in light of recent Federal Circuit precedent remains a very open question. One interesting technology area to follow with respect to Alice will be artificial intelligence (“AI”). On July 17, 2024, the USPTO issued an extremely important update to the Guidelines with respect to patent directed to artificial intelligence technologies (“AI Update”). The AI Update provides several teaching examples and highlights that in order to pass muster under Section 101, AI patent claims must set forth sufficient technological specificity as to “how”, and be directed to technologies that go far beyond mere data processing.
Next Week: A Closer Look
When it comes to predicting whether a particular software technology can even qualify for patenting, knowing the data is obviously not going to be enough. Having read over 90 Federal Circuit decisions since 2018, there is a lot more to share. What kinds of software technologies have a shot at surviving Alice? How should a software patent claim or specification be drafted to survive? What themes can be drawn from the last six years of Federal Circuit precedent on software patents? Please check back next week, or join us at IPWatchdog LIVE, for key takeaways and best practices.
Don’t miss Michael Gulliford’s panel, “101 in the District Courts and Federal Circuit: What is Happening with Alice” at IPWatchdog LIVE on September 30, where he will discuss these issues in more depth. You can read the full version of this paper, which was first published with the Practising Law Institute, here.
Image Source: Deposit Photos
Author: highflier
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surfkast
2 months ago
On August 25, 2024, Zerify, Inc., a Wyoming corporation (the “Company”), entered into letter agreement (the “SIM Tech Agreement”), with SIM Tech Licensing, LLC (“SIM Tech”), the wholly-owned subsidiary of Sauvegarder Investment Management, Inc. focused on the monetization and enforcement of intellectual property, pursuant to which SIM Tech is to act as the Company’s worldwide intellectual property licensing agent for the Company’s intellectual property and is to provide the services relating to the acquisition, sale, licensing, commercialization, monetization, enforcement, prosecution and settlement with respect to the Company’s intellectual property. In general terms, after being reimbursed for costs advanced (plus a fifteen percent (15%) interest factor) and for any amounts due under any future litigation and funding agreement, SIM Tech is entitled to be paid forty percent (40%) of gross consideration received by the Company from the efforts of SIM Tech. The SIM Tech Agreement terminates one year after the last-to-expire of the Company’s patents included in the Company’s intellectual property or earlier by mutual consent, upon a breach by either the Company or SIM Tech or by the Company if it fails to receive bona fide proposals that have or would have resulted, or may result, in at least $5 million in gross consideration being received by the Company.
As further consideration for its entering into the SIM Tech Agreement, the Company agreed to issue an option (the “Option”) to SIM Tech prior to December 15, 2024, which would allow SIM Tech to purchase up to five percent (5%) of the then-outstanding shares of Company common stock. The exercise price of the Option is to be the same as issued to the Company’s key officers in connection with an amended employee incentive plan and is to vest (i) fifty percent (50%) upon the Company realizing Three Million Dollars ($3,000,000) in Gross Consideration from Monetization Events pursuant to the SIM Tech Agreement and (ii) fifty percent (50%) upon the Company realizing Ten Million Dollars ($10,000,000) in Gross Consideration from Monetization Events pursuant to the SIM Tech Agreement.
The foregoing description of the SIM Tech Agreement is qualified in its entirety by the full text of the SIM Tech Agreement, which is filed as Exhibit 10.1 to, and incorporated by reference in, this Current Report. Terms used, but not defined, herein shall have the meaning ascribed to such term in the SIM Tech Agreement.
Item 3.02. Unregistered Sales of Equity Securities.
In August 2024, the Company agreed to issue the Option, pursuant to the SIM Tech Agreement. The issuance of the Option to SIM Tech will be made without registration under the Securities Act of 1933, as amended (the “Act”), or the securities laws of the applicable state, in reliance on the exemptions provided by Section 4(a)(2) of the Act and Regulation D promulgated thereunder, and in reliance on similar exemptions under applicable state law, based on the offering of such securities to only one person, the lack of any general solicitation or advertising in connection with such issuance, that the issuee is an accredited investor (as that term is defined in Rule 501(a) of Regulation D), and that the issuee acquired the Option for its own account and without a view to distribute such security.
Item 7.01 Regulation FD Disclosure.
On August 28, 2024, the Company intends to post an announcement regarding the SIM Tech Agreement on X(Twitter), LinkedIn and Facebook.
The foregoing description of the Company’s intended social media posts is qualified in its entirety by the full texts thereof, which is filed as Exhibit 99.1 to, and incorporated by reference in, this Current Report.
surfkast
2 months ago
Look what I found!
Item 1.01 Entry into Material Agreement.
Item 1.01 Entry into Material Agreement.
As reported in its Current Report on Form 8-K filed on July 26, 2024 (the “Prior Report”), on July 1, 2024, Zerify, Inc., a Wyoming corporation (the “Company”), entered into a Binding Memorandum of Understanding (the “Sovereign Agreement”), with Sovereign Assets, LLC (“Sovereign”). The Sovereign Agreement contains provisions that are to be implemented over a period of time ending, at the latest, June 30, 2025. Such provisions, along with the current status of each, are described below.
Current Status
(a)
Sovereign will make its manager, Abraham Poznanski, available for 20 hours per week to serve as the Company’s fractional President and Chief Strategic Officer;
Item 3.02. Unregistered Sales of Equity Securities.
In August 2024, Sovereign purchased 80,000,000 units of securities (the “Units”) of the Company in the Company’s Regulation A offering (File No. 024-12026), with each Unit consisting of 5 shares of common stock and one (1) warrant to purchase one (1) share of common stock at an exercise price of $0.02, at a per Unit price of $0.00125, or $100,000, in the aggregate. The sale of the Units to Sovereign was made in reliance on an exemption from registration pursuant to Regulation A under the Securities Act of 1933, as amended.
In August 2024, the Company issued four (4) shares of its Series A Preferred Stock to four individuals as a bonus for becoming directors of the Company, in accordance with the terms of the Sovereign Agreement. The issuances of Series A Preferred Stock were made in reliance on an exemption from registration under Section 4(a)(2) of the Securities Act of 1933, as amended, and Rule 506(b) of Regulation D promulgated thereunder, as there was no general solicitation, the issuances did not involve a public offering, and there were only four issuees, each of whom is accredited or financially sophisticated.
https://www.sec.gov/ix?doc=/Archives/edgar/data/1285543/000147793224005418/zrfy_8k.htm
dukeb
3 months ago
Since we are well past halfway through 2024 I think Mark should provide a status on the $ 3.9 million +++ revenue projection that he made back in January. The 2023 K and the Qs for the first two quarters of 2024 are well past due. Are the revenue numbers so large that the bean counters have run out of mason jars to hold those beans?
What's going on, Mark?
Mark L. Kay, CEO of Zerify expressed his enthusiasm for the company's trajectory, highlighting, "We are extremely optimistic about both our company's future and that of our shareholders. Our Zerify Meet & Defender technologies represent the most groundbreaking innovations in the video conferencing market over the past two decades. We firmly believe that no other company in this industry can match the competitive advantages we possess."
“That’s why in 2024 Zerify is projecting $3.9M in revenues, which only includes our current contracts,” says Kay. “The bulk of those monies will be brought in via an already contracted white-labeled partner which we already announced, as well as newly signed partners i.e. CNS, Rackbuild, HealEstate, ConectUS Wireless, 323Link and others. Though our large white-labeled partner did not launch last year as expected due to the size & complexity of integration and rollout, they are in the final stages of testing and expecting a Q1 launch.”
“Additionally, we are excited about a new emerging revenue stream for us with our Zerify Meet API which enables easy integration of our Zerify Meet directly into an existing application. HealEstate, a recently announced customer, is embedding our Zerify Meet API into their existing platform,” says Kay.
"In summary, we are encouraged about our strategic path and corporate outlook, especially as we expect 2024 to be a year of significant growth, particularly in terms of revenue. Our solutions address the critical need for secure communications in today's world of video conferencing, and we remain steadfast in seizing this opportunity to provide a more secure method for consumers and organizations to communicate," concluded Kay.
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