ClearstoneIP is proud to announce the beta release of its next generation freedom-to-operate management platform, Clearstone FTO. With guidance and feedback from IP industry leaders, we’ve infused this new web-based application with the ideal combination of best practices, workflows, and collaboration features to bring much-needed efficiency to a critical process.
Some of the core features of the platform include:
Product-focused organization of FTO reviews – all reviews for a product easily locatable in one place.
Claim-by-claim FTO determinations with integrated patent review interface.
Team collaboration – messaging, workflow management, asset sharing, all easily handled between team members.
Patent history review – easily see what decisions were made on a patent, in any prior review and any other product.
Customizable reporting – user-configurable to report the most essential information.
With state-of-the-art security features, Clearstone FTO makes it simple and safe to access vital information from anywhere. It’s an intuitive and powerful approach to manage and interact with information that was previously relegated to hundreds of spreadsheets scattered throughout organizations.
The Federal Circuit’s recent decision in Enfish v. Microsoft Corp. was significant in that it was the first time that the court reversed a trial court’s finding of invalidity under § 101 based on the Supreme Court’s Alice decision, and only the second time that it upheld validity under that section post-Alice (the first being DDR Holdings v. Hotels.com).
The opinion was well-received by the patent bar, and the software industry in particular, as powerful precedent that can be used to fight rejections by the USPTO, defend counterclaims of invalidity in court, and otherwise strengthen the value of software patents. While the line between eligible and ineligible subject matter has become somewhat clearer, there is still ambiguity in certain areas, and questions exist regarding practical implications.
The Claimed Invention
Enfish involved patent claims directed to a “self-referential” database. The court referred to the following representative claim:
A data storage and retrieval system for a computer memory, comprising:
means for configuring said memory according to a logical table, said logical table including:
a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
means for indexing data stored in said table.
The court referred to the invention generally as “an innovative logical model for a computer database.” The primary contribution to the art of the invention was the “self-referential” aspect, which purportedly avoided the need in conventional “relational database model” systems to define and maintain many separate tables. Instead, the claimed invention can store the pertinent information in a single table. According to the patents, the new approach improved searching efficiency and resulted in more-effective storage of unstructured data.
The Court’s Reasoning
The court began with the two-step analysis set forth in Alice and prior cases, in which the first step determines whether the claims are directed to a patent-ineligible concept, such as an abstract idea, and the second step considers whether the particular elements of the claims transform the nature of the claim into a patent-eligible application.
There is no doubt that the Federal Circuit took aim at some of the more egregious gaps that Alice left open. Primary among these gaps was the perceived Alice takeaway that there was no real limit on the height of abstraction that can be carried out on software claims in step one. In other words, one could conclude from Alice, and courts often did conclude, that a software claim is abstract if it can be summarized into something reasonably conventional, specific claim limitations be damned.
Enfish at least partly rectified this misconception by recognizing that “[t]he ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world.” Further, “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” Instead, claims must be considered as a whole and in light of the specification.
Accordingly, the Enfish panel carefully considered each element of the claims, including applying § 112, sixth paragraph, to interpret means-plus-function limitations, and examined the patent specification to both (i) shed light on the claim language; and (ii) express the advantages of the claimed invention over the prior art.
The court ultimately held that the relevant question is “whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” It concluded that the claimed self-referential database logic model is “a specific type of data structure designed to improve the way a computer stores and retrieves data in memory” and is therefore not an abstract idea. Having satisfied the first step of the Alice inquiry in the patentholder’s favor, the court did not need to address step two.
The Enfish holding gives teeth to the first step of the Alice inquiry and requires that the analysis take into consideration the nature of the invention and how it affects computer capabilities. In cases where the claims simply add conventional computer components to “well-known business practices,” they might be more likely to be found abstract under step one of the Alice inquiry.
Enfish is certainly a useful precedent for owners and seekers of software patents and should serve to strengthen patents as a general matter, but it does not (and cannot) fix the real havoc that was wreaked by the Supreme Court in Alice. Namely, the biggest problem with Alice is that it conflated and blurred the lines between questions of eligibility and those of prior art (i.e., novelty and obviousness).
Questions as to whether a claimed idea is “conventional,” “well known,” or is a “fundamental practice” have no place in an abstractness inquiry. These are questions that can be answered only by proving the existence or absence of prior art, not by some common sense-based purely mental exercise. Whether a claimed invention is abstract or practical is completely independent of novelty. The “abstractness” question should rely predominantly, if not entirely, on an isolated analysis of the actual features of the invention and whether it has some technical or practical component that makes it more than a mere idea in the ether. But that is a battle for another day, and one which the Federal Circuit does not appear to have the authority to fight until Alice is overturned or distinguished by future Supreme Court decisions.
What a week! Our first trip to Legaltech was a whirlwind, but a ton of fun. It was amazing to meet so many people who are excited about new ways that technology can improve our work in the legal industry. The show took place at the Hilton NY Midtown on Feb. 2-4. With thousands of attendees and hundreds of exhibitors, Legaltech is the largest trade show in the industry.
First we’d like to thank ALM, the organizer of the huge show, and the Stanford CodeX Center for inviting us to exhibit as part of the much-buzzed-about CodeX Pavilion. It was an honor to be part of such an amazing group of innovators (keep an eye out for Casetext – these guys are doing amazing things by crowd-sourcing legal commentary in a free research platform!).
Our exhibit attracted a lot of attention from patent professionals, press, and tech aficionados alike. Here is Jesse being interviewed by Larry Port of Rocket Matter:
We also had the privilege to participate in CodeX’s Legal Disruption Pitch Lightning Round, where we presented ClearstoneIP in front of a packed ballroom.
ClearstoneIP announces the launch of a pilot testing program for its new web application, Clearstone Elements™. The pilot program is slated to begin in November 2014 and run until Spring 2015. Clearstone Elements™ will apply ClearstoneIP’s revolutionary claims-based patent analysis platform to the field of arterial stent technology. Approved pilot group testers will be granted unlimited, free access to the Clearstone Elements™ software for the duration of the program.
Pilot Group Applicants Requested
Pilot testers will be the first to experience this groundbreaking patent analysis tool, which enables users to conduct clearance, infringement, and other claim-coverage-based analyses against all patents existing in released patent collections. The first patent collection will contain the approximately 1,200 U.S. patents assigned to Boston Scientific SciMed, Inc. that are classified in USPC 623/1.1 through 1.54 (relating to “Arterial Prosthesis”). Owning more than 15% of the stent patent universe, Boston Scientific Scimed is the largest patent holder in the field. The program’s launch will immediately provide powerful insight into the patent landscape of the industry’s largest participant.
Additional patent collections will be released each week by assignee, including Abbott Cardiovascular, Endologix, Medtronic, Cook Medical, Advanced Cardiovascular, W.L. Gore, Bard, Medinol, Johnson & Johnson, and more. The complete pool of all patents classified in USPC 623/1.1 through 1.54 is expected to be available in Spring 2015.
ClearstoneIP’s platform has been recognized for delivering a truly unique approach to patent analysis. For the first time, patent professionals can access a hierarchically organized record of technical elements that reflect actual claim coverage (as opposed to general patent disclosure). When a user selects elements that are not embodied by a product undergoing analysis, the application will automatically eliminate patents that require the selected element for infringement. With each mouse click, patents are removed from the results, eventually resulting in a manageable list of highly relevant patents for further review by the user. Initial test results comparing Clearstone Elements™ to conventional search methods have been staggering – with ClearstoneIP’s software yielding vast improvements in precision, reliability and speed.
ClearstoneIP is determined to map and organize the entire universe of patents in this manner. It has begun the process by focusing on medical devices, but this just the beginning.
Patent litigation in the medical device arena generates some of the largest damages and settlements of any industry. The number of patent infringement lawsuits in the field is also sky-high, with stent-related actions notoriously common. Companies are often unaware of the risks they face because conventional patent search methods are simply not tailored for claims-based searching.
Using Clearstone Elements™ with the forthcoming stent database, companies can mitigate the risk of litigation by quickly ascertaining problematic patents based on what the claims actually cover. Many other benefits may also be realized through the program’s unique product-to-patent mapping capability, including determining licensing opportunities, evaluating potential patent acquisitions, and improving patent marking processes.
ClearstoneIP is a California-based company built to provide industry leaders and innovators with a truly revolutionary platform for conducting product clearance, freedom to operate, and patent infringement searches. ClearstoneIP was founded by a team of forward-thinking patent attorneys and software developers who believe that barriers to innovation can be overcome with innovation itself.
Palo Alto, CA: ClearstoneIP LLC announced today the release of its debut product and the first elimination-based patent search and management platform – Clearstone Innovator. The application is expected to disrupt existing industry standards and conventional wisdom about patent clearance and other patent management activities by creating an entirely new analytical paradigm.
ClearstoneIP rejects the traditional notion that clearance searches ought to be carried out using the same methods applicable to prior art or validity searches. Instead, the Innovator search platform uniquely ties patents to their required claim elements and presents the elements in an intuitive and functional hierarchy. Searchers narrow the set of relevant patents by selecting elements that are not embodied by a product undergoing search. The software employs a patented method to eliminate patents that require the selected elements for infringement, resulting in a manageable short list of potentially relevant patents. The program also enables users to uniquely memorialize patent infringement analysis so that repeated analysis is avoided in subsequent searches.
The company believes that much of the problem with patent clearance relates to the excessive amount of search results, or “hits,” commonly retrieved with traditional (prior art-focused) search methods, such as those based on keywords, synonyms, and concept-mapping. These traditional methods are adept at amassing a large set of resultant patents, but do not help zero in on the most relevant results. In addition, conventional methods fail to take account of fundamental differences between validity searching and clearance searching – which include the recognition that patent disclosures are almost always very different in scope from patent claims. These differences are at the core of the Clearstone Innovator logic.
By inverting the traditional logic paradigm so that the focus is on features not embodied by a product being cleared, ClearstoneIP’s software cuts to the chase and enables complete clearance searches to be performed in a fraction of the time and cost, generally within one day. Clearstone Innovator also simplifies and uniquely enables ongoing patent portfolio and marking management.