Orlando, Florida | 215 North Eola Drive Orlando, Florida 407-843-4600 Lowndes Drosdick Doster...

Orlando, Florida | www.lowndes-law.com

215 North Eola DriveOrlando, Florida407-843-4600

www.lowndes-law.com

Lowndes Drosdick Doster Kantor & Reed

Bagels and Bilski

August 24, 2010


OVERVIEW OF PRESENTATION


• History of Business Method and Software Patents

• Bilski Case• Patentability Including Patentable Subject

Matter• How the Bilski Decision Affects Business


History of Business Method and Software Patents


• Patents protect inventions of statutory subject matter including:– New, useful, nonobvious (35 U.S.C. 103) processes,

machines, (articles of) manufacture, or compositions of matter and useful improvements thereof (Utility Patent) (35 U.S.C. 101)

– Original ornamental designs for articles of manufacture (Design Patent)

• Patents do not protect:– Abstract ideas, laws of nature, and natural phenomena




Growth of Business Method and Software Patents

0

500

1000

1500

2000

2500

3000

3500

Year

Pa

ten

ts G

ran

ted Class 705 - Data Processing:

Financial, Business Practice,Management, or Cost/PriceDetermination

Class 707 - Data Processing:Database and File Managementor Data Structures


Overview of Bilski Case –Patent Application filed with USPTO


• Application filed on April 10, 1997• Claims directed to a method of hedging risks in

commodities trading*• Rejected Claims Under Section 101

– Claims “not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathematical problem without limited to a practical application, therefore, the invention is not directed to the technological arts”

*see handouts for claims


Overview of Bilski Case –USPTO Board of Patent Appeals and Interferences


• Affirmed Examiner’s Decision– Claims “do not recite any specific way of

implementing the steps, do not expressly or impliedly recite any physical transformation of physical subject matter, tangible or intangible, from one state into another, do not recite any electrical, chemical, or mechanical acts or results;…and do not involve making or using a machine, manufacture, or composition of matter.”


Overview of Bilski Case –Bilski Appeals to the Federal Circuit


• Federal Circuit Affirms Board’s Decision– concluding that a claimed process qualifies for

patent protection if:• It is tied to a particular machine or apparatus; or• It transforms a particular article into a different state or

thing

• Federal Circuit relies on Gottschalk v. Benson, Parker v. Flook, and Diamond v. Diehr


Overview of Bilski Case –Bilski Appeals to the Supreme Court


• Supreme Court grants cert on June 1, 2009• Amicus briefs filed by 72 different entities• Oral argument held on November 9, 2009• Supreme Court renders decision on June 28,

2010


Overview of Bilski Case –Issues Presented Before Supreme Court


• Is the Machine-or-Transformation Test the sole test?

• Does the Machine-or-Transformation Test contradict Congressional intent?


Overview of Bilski Case –Supreme Court Says:


• Federal Circuit is Wrong: Machine-or-transformation test is not the sole test for constituting a “process”

• Federal Circuit is Right: Machine-or-transformation test does not contradict the clear Congressional intent that patents protect methods of doing or conducting business


Overview of Bilski Case –Supreme Court Decision


• All Justices unanimous in rejecting claims• But, 5-4 Decision:

– Kennedy Majority Opinion (16 pages)– Stevens Concurring Opinion (47 pages)

• Would have held business methods are not patentable

– Breyer Concurring Opinion (4 pages)




• Kennedy Majority Opinion– Reject machine-or-transformation test as sole

test – But, plurality opine that machine-or-

transformation test would “create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals”




• Conclusions– Which business methods are patentable?

• “Business methods” are not categorically precluded from patent protection

– Which tests are approved to use in determining if a business method is patentable?

• Machine-or-transformation is a test, but not the sole test

– Do any other types of tests exist?• Will be up to future decisions by the Federal Circuit


Patent Prosecution in Light of Bilski


“Venturing near the metaphysical quicksand of uncertain patentable subject matter creates risks regarding the ability to obtain or to enforce patent rights.”

Stephen A Bent and Robert Silverman, Foley & Lardner, LLP, Lexology, Aug 2, 2010


What Did Not Change


• Bilski notable for what it did not change regarding what is and is not patent-eligible subject matter

• Bilski does not categorically preclude:– Software– Algorithms– Diagnostic tests– “Business methods”


Bilski’s Claim 1, abbreviated


1. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

(a) initiating a series of transactions between provider and consumers . . .;

(b) identifying market participants for said commodity having counter-risk position; and

(c) initiating a series of transactions between provider and market participants . . .


PTO Interim Guidance, 27 July 10


• Set of factors given to patent examiners for determining if a process is patent-eligible:

– “Machine or transformation” test still plays prominent role

• Still not patent-eligible:– Natural phenomena– Abstract ideas– Scientific facts– General concepts


Factors Weighing Towards Eligibility


1. Recitation of particular machine or transformation.2. Machine implements the method steps.3. Article undergoes a change in state or thing (e.g., an

objectively different function or use).4. Article being transformed is an object or substance.5. If the claim is directed to applying a law of nature, must

meaningfully limit the execution of the steps.6. The claim is more than a mere statement of a concept and

either describes a particular solution to a problem or implements the concept in some tangible way.


Factors Weighing Against Eligibility


1. No, or insufficient, recitation of machine or transformation.2. Machine or transformation nominally, insignificantly, or

tangentially related to performance of method steps. 3. Machine only generically recited or merely an object on

which method operates.4. Transformation involves only a change in position or

location of an article.5. Claim would monopolize a natural force, patent a scientific

fact, or effectively grant a monopoly over a concept (“pre-emption”).


Industry Sectors Potentially Impacted by Bilski


• Medical/biotechnology• Financial/securities industries• Telecommunications• Software• Internet commerce


Medical/Biotechnology - Assays


• Important area of medical treatment – “molecular diagnostics”

– Predict likely development or course of disease– Suggest likely effective drug therapies

• Composition of matter claims broadly patentable-eligible here & abroad (kits, reagents)

• Is the following exemplary claim patent-eligible?A method of assessing the risk of developing disease x comprising detecting the presence or absence of allele y in a patient sample, wherein allele y is indicative of an increased risk of developing disease x.


Prometheus Laboratories, Inc. v. Mayo Collaborative Services


• Invention involving assaying drug levels in body - Supreme Court returned to Fed. Circuit to “rethink” in light of Bilski

• Claim steps:(1) administering 6-thioguanine to a patient and

then(2) determining a blood level of that drug in the

patient against a fixed concentration, thereby to inform a decision on raising or lowering subsequent dosages.

[no step (3) recited, to alter subsequent dosage as a result of (2)]


Isolated Genes Are Unpatentable Products of Nature


• Claims directed to isolated human genes associated with increased risk of breast cancer (the BRCA1 and BRCA2 genes)

• Exclusive licensor Myriad Genetics is sole entity that provides full sequencing of the BRCA1 and BRCA2 genes on a commercial basis in the U.S.

• Held not patent-eligible because the isolated DNA is not “markedly different” from the native DNA

Assoc. for Molecular Pathology et al. v. United States Patent and Trademark Office et al., 09 Civ 4515 (S.D.N.Y. 2010)


Potential Effect of Holding in Myriad Case


• If upheld on appeal, will likely have profound effect on biotechnology industry, which has been obtaining and enforcing patents claiming purified and isolated genes for over 30 years

• Will be difficult to secure patent claim covering a gene sequence that can be used for diagnostic or treatment purposes because would have to be shown that sequence is “markedly different” from native form


Recommendations


• Ground patent strategies in claims that recite:

– Tangible assay formats– Diagnostic platforms

• Recite hardware and real-world biological, chemical, or physical interactions and operation of invention


Data-Driven Medical Process


• Transform data via computer-implemented algorithm from one form (e.g., signal encoding x-ray results) to another form accessible (e.g., through visualization) to instruct particular diagnostic or treatment procedure

• Add claims directed to treatment steps to be taken in light of diagnostic information:

– Provide a warning– Alter a therapy


Financial/Securities Industries


• Bilski did not categorically abolish business method patents

• Split decision on question of business method subject-matter eligibility leaves question somewhat open for future cases to be taken up


Recommendations


• Implement invention in some tangible way• Include computerized implementation• Algorithm that could be performed entirely in the

human mind would not be patent-eligible (e.g., algorithm to predict whether a stock price will increase)

• Include post-solution steps having more “structure”:Transmit an electronic signal to another computer system to execute a stock trade based upon output of algorithm


Chainbridge Software Patent


• PTO issued on May 1, 2010, for a computer-implemented method to conduct contingent fee state tax audits

• Invention claimed as a computer-implemented method for identifying entities that have avoided a state corporate income tax, with the following steps:

identify and perform transfer pricing analysis on a state taxpayer based on publicly available information;

use state corporate income tax data to identify taxpayers who have transactions with related companies (controlled transactions);

perform transfer pricing analysis on the taxpayer by determining a ratio of operating profit to sales;

compare ratio to ratios for a plurality of companies in the taxpayer’s industry;

determine if taxpayer avoided state corporate income taxes.• Why was this considered patent-eligible subject matter?


Recommendations


• Continue to seek patent protection for inventions that represent important innovations for company and are core to corporate success, particularly if can be reverse-engineered and are not amenable to trade secret protection

• Add as much “structure” or “transformation” as possible – computer, output, post-solution effect of calculation


Telecommunications Industry


• Patent-eligibility could be vulnerable in areas such as methods of processing and transferring information (e.g., data compression, manipulation of digital signals)

• Recite “structure” – effect of signal manipulation, hardware performing the signal transmission


Software Industry


• If “machine or transformation” test rigorously applied, will need to tie claims to a particular machine (processor) and/or recite a tangible outcome based upon calculations performed by software

• Not sufficient merely to install software on a processor


What About Europe?


• Generally the U.S. is more lenient than Europe in subject-matter eligibility

• May 2010 – judicial authority of the European Patent Office issued opinion on patentability of software

– Inventions that provide a technical solution to a technical problem are eligible; those that do not are not

– In computer-implemented business method, if inventive features limited to the business method itself, not eligible

– If invention lies in how business method is implemented (e.g., in a computer), eligible


Unity?


• UK law different from European – computer-implemented inventions not subject-matter eligible

• Thus still no trans-Atlantic unity after Bilski, nor yet trans-Channel unity


Recommendations for Patent Prosecution in the Wake of Bilski


• Prepare disclosure that supports claims under at least one approved test (for now, “machine or transformation” only approved test)

• Draft claims directed to different classes of statutory subject matter

– System– Method– Composition of matter– Machine or apparatus


HOW DOES THIS IMPACT YOUR BUSINESS?


• Firm value, licensing and M & A• Portfolio review• Litigation


Firm Value, Licensing and M&A –The Good!

• Under Bilski, business method patents (BMPs) live– This is critical for:

• Start-up companies• Existing industries (i.e., banking, insurance, biotech, life sciences,

medical research, securities, accounting, online shopping, etc.)

– Firm’s market value is a combination of:• Tangible assets• Intangible assets (patents, brands, trade secrets)

– For example, Amazon places 93% of its firm value on intangible assets such as intellectual property and brands


Firm Value, Licensing and M&A

• For many businesses, BMPs represent a significant and growing portion of firm value– Licensing revenue– Preclusion of competition– Revenues derived from BMPs that increase

consumer demand


Bilski Effect on Software Patent $1B+ Public Companies

Screening SEC filings for “software patent” and selecting publicly traded companies with market capitalization greater than $1B results in the following chart:

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Large Companies with Software Patents Historical Prices as a % of Price on 6/28/10

Intel Corporation (INTC)

Deere & Company (DE)

Cognizant Technology Solutions Corp. (CTSH)

Autodesk, Inc. (ADSK)

Red Hat, Inc. (RHT)

VeriSign Inc. (VRSN)

Snap-on Ince. (SNA)

Sunoco Logistics Partners L.P. (SXL)

Gen-Probe Inc. (GPRO)

Fortinet Inc. (FTNT)

CIENA Corp. (CIEN)

CROCS Inc. (CROX)

SunPower Corporation (SPWR.A)

TiVo Inc. (TIVO)

CROX -12% 7/6/10

CROX +22% 8/9/10

TIVO +21% 7/26/10


Bilski Effect on Software Patent $1B+ Public Companies

Screening SEC filings for “business method patent” and selecting publicly traded companies with market capitalization greater than $1B results in the following chart:

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Large Companies with Business Method Patents Historical Prices as a % of Price on 6/28/10

Williams-Sonoma Inc. (WSM)

Thomson Reuters Corporation (TRI)

priceline.com (PLCN)

Dell Inc. (DELL)

NCR Corp. (NCR)

Western Union Co. (WU)


Bilski Effect on Amicus Brief Public Companies

Sampling some of the publicly traded companies whose names were included in the amicus briefs for Bilski results in the following chart:

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Amici CuriaeHistorical Prices as a % of Price on 6/28/10

Bank of America Corp. (BAC)

Barclays Capital Inc.

Google Inc (GOOG)

MetLife, Inc. (MET)

Morgan Stanley (MS)

BAC -9% 7/2/10


Firm Value, Licensing and M&A –The Bad!

• While Bilski does not preclude BMPs, it is uncertain as to which BMPs are still patentable and their scope

• Lower courts may begin to narrow the scope of BMPs– This can have a negative impact on earnings and market

cap• Lower licensing revenues• Inability to prevent competition• Decreased consumer demand• Possible write-down of intangible assets• Possible impairment expenses


What Do We Do Now?

• Increase due diligence in M&A activity• Portfolio reviews• Reassess litigation strategies


Due Diligence• When companies acquire BMPs through

acquisitions, they are required to record the value of the patents as assets on their balance sheets– Must carefully review the existing patent portfolio

• Periodic impairment testing requires write-down of these assets if their values decline– Has the company being acquired performed these

tests?


Portfolio Review post-Bilski Issuance


• Patent owners and investors should review existing portfolios– Some existing patent claims may be considered

invalid• May be able to proactively address this issue

– The US patent system provides three tools to change the claims of an issued patent

• Reissue• Reexamination• Certificates of correction




• Certificates of correction – Will not apply to correcting Bilski issues

• Correct clerical transcription type errors in the printing of the issued patent

• Reexaminations– Allows the Patent Office to reconsider the granted claims in light of

prior patents and publications (“prior art”) overlooked during the initial examination

– Thus Bilski issues may not be used as a basis to request a reexamination; but

• If a reexamination is granted on other grounds, all invalidity defenses become fair game

– Including issues under 35 USC 101, for any amended reexamined claims, or if any new claims are added during the reexamination process




• Reissue– Can correct “defects” in issued patents

• Claims that are too broad to be valid may be narrowed, and claims that are narrower than necessary under the new ruling may be broadened

– Strict two-year time limit to broaden any claim– No time limit to narrow any claim

• Requires patent owner to cite at least one error that causes the issued patent to be “wholly or partially inoperative or invalid”

• The cited errors should have material impact on issued patent




• WARNING– Improper or insufficient errors may lead a court to

invalidate claims – Reissue process may not “recapture” previously

surrendered subject matter– Possible “intervening rights”– Infringement litigation and license deals may be

held up pending reissue process


Litigation post-Bilski


• Bilski provides more uncertainty than clarity in regard to how an “abstract idea” should be defined for patent eligibility purposes– Supreme Court basically stated that lower courts should

handle these issues on a case-by-case basis– Uncertainty breeds litigation!

• Since 2008 several District Courts invalidated claims under 35 USC 101 by relying solely on the MOT test– Some of these cases may now be appealable

• All eyes back to Federal Circuit to see how it applies Bilski– Numerous cases pending




• Plaintiffs may seek to – Assert only those non-process claims of a patent

• Effect would be to deprive the defendant from asserting a Bilski-type invalidity defense

– Emphasize that method/process claims are• Concrete, specific and limited in scope, and • That they do not preempt any abstract ideas or

fundamental principles– Request reissue prior to filing litigation

• Must consider “intervening rights”




• “Patent trolls”– The uncertainty present in Bilski appears to open

to door for more cases now that there is some clarity that business methods are in fact patentable

• NTP, Inc. v. Apple, Google et al. filed July 9, 2010– Patents concerning wireless e-mail delivery– Seeking billions in damages– NTP never made commercial products or produced services




• Defendants in infringement cases may challenge the validity of claims under 35 USC 101 in view of the Bilski ruling– Will have to prove that a method/process claim

• Fails the MOT test, and • Falls within one of the exclusions to patent eligibility

• Non-patentees may file Declaratory Judgment actions requesting that a patent be held invalid under the same theory


Contact Information


Teddy [email protected]

Angela [email protected]

Jacki [email protected]

Jason [email protected]

www.lowndes-law.com


PCE ValuationsVictor E. Jarosiewicz, CFA, ASAVictor E. Jarosiewicz has performed hundreds of valuation and valuation consulting engagements, written about the topic for leading industry publications, taught business valuation continuing education courses and testified as a business valuation expert in U.S. Bankruptcy and Florida Civil Circuit courts. Victor currently is responsible for PCE’s valuation analyses and reports and is involved in all aspects of its business valuation and consulting services. Formerly an analyst with one of Central Florida’s largest public accounting firms, his background also includes transactional financial analysis and due diligence and fairness opinions. He earned a Bachelor’s degree in mechanical engineering from the University of Florida and a Master’s degree in Business Administration from the Rollins College Crummer Graduate School of Business. Victor holds the Chartered Financial Analyst designation and serves on the CFA Society of Orlando’s board of directors. Victor is a member of the Strategic Planning Task Force of the ASA Business Valuation Committee, the governing body for the Business Valuation discipline of the American Society of Appraisers.

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