Archive for the ‘Patent eligibility’ Category

Aspirational claiming

Saturday, February 3rd, 2018

It is always interesting when the Federal Circuit introduces a new term into the lexicon of patent law.  The court did so the other day.  Judge Stoll’s opinion for the court referred to a claim as “aspirational.”

The step-one analysis requires us to consider the claims “in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Claim 1 is aspirational in nature and devoid of any implementation details or technical description that would permit us to conclude that the claim as a whole is directed to some- thing other than the abstract idea identified by the dis- trict court.

Move, Inc. et al. v. Real Estate Alliance Ltd., et al., 2017-1463 (Fed. Cir. Feb. 1, 2018)(slip opinion at page 8)(emphasis added).

You can listen to the oral argument here:


The court has been asking about aspirational claims in oral arguments at least as far back as 2016.  For example, Judge Chen inquired about aspirational language in this oral argument sound bite back in 2016: [Listen].  And, Judge Moore asked about aspirational language back in 2017: [Listen].

If you do a search on previous Federal Circuit, CCPA, or district court cases, you will not find any that use the term “aspirational claim” or “aspirational claiming.”  So, it will be interesting to see if this term gets any traction at the Federal Circuit.

In reality, aspirational claiming is not a new concept.  The Supreme Court discussed result-oriented claiming in Corning v. Burden, 56 U.S. 252, 268 (1853) (explaining that patents are granted “for the discovery or invention of some practicable method or means of producing a beneficial result or effect . . . and not for the result or effect itself”).  Moreover, the Federal Circuit has discussed result-oriented claiming in prior cases.  See, e.g., Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.Cir.1997)(“The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention.”); and, Fiers v. Revel, 984 F.2d 1164 (Fed. Cir. 1993)(“Claiming all DNA’s that achieve a result without defining what means will do so is not in compliance with the description requirement; it is an attempt to preempt the future before it has arrived.”).  But, the Federal Circuit has done so in a §112 context as opposed to a §101 context.

Unfortunately, aspirational claiming may turn out to be a vehicle that some members of the court use to introduce a §112 concept into the §101 analysis.

By the way, as you contemplate aspirational claiming, consider the following claim that the Federal Circuit deemed patent eligible in Thales:

22. A method comprising determining an orientation of an object relative to a 1346*1346 moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.

Thales Visionix Inc. v. US, 850 F.3d 1343, 1345-46 (Fed. Cir. 2017).

Paper topic #1:  An interesting paper or student note, if somebody wanted to write it:  What principles of §§102, 103, 112, etc. have the courts imported into the §101 analysis in order to try to make sense of what constitutes an “abstract idea.”

Update 2/7/2018:

By the way, keep your eyes peeled for “patent dance.”  That will be a fun new term that we should soon be seeing in forthcoming biosimilarity cases.



Oral Argument of the Month: IPLEARN-FOCUS, LLC v. Microsoft Corp.

Wednesday, September 7th, 2016

The oral argument of the month is from IPLEARN-FOCUS, LLC v. Microsoft Corp., No. 2015-1863 (Fed. Cir. July 11, 2016).  The issue in dispute was step two of the Alice/Mayo test.  The Appellant argued that the claims, while broad, nevertheless did not recite a conventional system when considered as an ordered combination.

The oral argument recording has a lot of interesting sound bites.  For example, Judge Linn made the astute point that under the current state of affairs, a claimed system that is entirely patent eligible under 35 U.S.C. §101 suddenly becomes patent ineligible when the claim is narrowed to perform an arguably abstract function. [Listen].

The fact that a broad claim can become patent ineligible by making the claim narrower illustrates just how nonsensical the Supreme Court’s jurisprudence has become with respect to 35 U.S.C. §101 and how the Court has strayed from its original concerns about preemption.  The test for judicial exceptions is now the tail that wags the dog of patent eligibility.

Judge O’Malley also proposed an example of a drone for delivering packages and asked why the function of package delivery should make a normally patent eligible drone suddenly patent ineligible.  At the 35 minute, 6 second mark, she also talks briefly about her change in position in the Ultramercial case.

At the 20 minute, 17 second mark, Judge Moore proposed a new claim based on the Appellant’s specification, in which facial feature recognition techniques could be used to detect when a user’s attention has drifted away from a computer screen. In jest, she suggested that her system could be used to monitor the PTAB’s hoteling judges.  [Listen].  I suppose their retort, equally in jest, might be:  “Thank you for the helpful suggestion on how we can improve our production.  Some day we hope to have a small brigade of judicial clerks of our own and a heavy club like your Rule 36  to help us attack our workload.

The panel decided the case by a Rule 36 Judgment, available [here].

You can listen to the entire oral argument [here].