Matt WeinsteinAccenture*Clues after Alice v. CLS Bank* The views presented are solely those of the presenter and do not represent an official position of AccentureWhere are we now?

Survey of Post-Alice DecisionsFederal CircuitDistrict CourtPTABPost-Alice Drafting StrategiesWhere are we now?What strategies should be used based on decisions to date?Executive Summary#* The views presented are solely those of the presenter and do not represent an official position of AccentureThree Federal Circuit DecisionsAll held asserted claims unpatentable under 101Ten plus District Court DecisionsAware of two decisions to date supporting patentabilityThe remainder hold claims unpatentable under 101PTABAt 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 groundsSurvey of Post-Alice Decisions#* The views presented are solely those of the presenter and do not represent an official position of AccentureFirst post-Alice Federal Circuit decisionDevice profiles and methods for generating a device profile claimed in U.S. Patent No. 6,128,415 were subject matter ineligibleDevice profile nothing more than information and does not fall within one of the categories of eligible subject matter under section 101Method 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

Digitech#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaims 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 detailsClue? Dont skimp on description and dont claim genericallyPlanet Bingo#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaims directed to method of establishing transaction performance guaranty were subject matter ineligibleAsserted 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-physicalNo 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 matterClue? Technical disguises not likely to save business methods

BuySAFE#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaims covering computer implemented methods of designing addendum surfaces for tools used to produce sheet metal parts for automobiles pass 101Did not explicitly apply two-part Alice frameworkClaims 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 parametersNo in-depth analysis of why claims covered moreClue? Go narrow and specific (i.e., non-functional)

AutoFORM Engineering (E.D. Mich)#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaims covering specific computer implemented method of verifying a transaction pass 101 on a motion to dismissClaims directed to abstract idea, but additional elements in the asserted claims plausibly transformed the nature of the claims into a patent eligible applicationLimitations requiring generation of pseudorandom tags narrowed the scope of claims so they did not preempt underlying abstract ideaCourt 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 decryptionClue? Stress technical benefits and data transformations to avoid preemptionCard Verification Solutions (N.D. Ill)#* The views presented are solely those of the presenter and do not represent an official position of AccentureAnimating lip synchronization and facial expression of three-dimensional 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.)Claims Invalidated by District Courts #* The views presented are solely those of the presenter and do not represent an official position of AccentureAllowing 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.)More Claims Invalidated by District Courts#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaims 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)

Selected results from the PTAB#* The views presented are solely those of the presenter and do not represent an official position of AccentureWhere are we now?Still no bright line testHowever, clear that merely reciting computer language will not yield subject matter eligibilityPreemption appears to be a primary policy concernUltramercial likely next major benchmark for computer implemented inventions.Post-Alice Drafting Strategies#* The views presented are solely those of the presenter and do not represent an official position of AccentureWhat strategies should be used based on the decisions to date?Organize specifications to emphasize technical operation and specific aspects of hardware arrangementsDiscuss 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 paperConsider describing incorporated abstract ideas to set the stage for why claims include something moreAvoid summarizing the invention at too high a levelAvoid discussion of non-technical benefits (i.e., economic benefits)Post-Alice Drafting Strategies#* The views presented are solely those of the presenter and do not represent an official position of AccentureWhat 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 claimsConsider describing known implementations of the abstract idea on a computer to emphasize that the invention is not pre-emptive and claiming any differencesDraft 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 real-world/practical outputs.Post-Alice Drafting Strategies, contd.#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaims Appendix#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaim 1, U.S. Patent No. 6,128,415A 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; andcombining said first and second data into the device profile.

Digitech#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaim 1, U.S. Patent No. 6,398,646A 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;Planet Bingo#* The views presented are solely those of the presenter and do not represent an official position of Accenture(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.

Planet Bingo, contd.#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaim 1, U.S. Patent No. 7,644,019A 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.BuySAFE#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaim 1, U.S. Patent No. 7,894,929A 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, wherebye. said addendum zone complements the component geometry in the edge zone and runs into the component and the binder with a continuous tangent.

AutoFORM Engineering#* The views presented are solely those of the presenter and do not represent an official position of AccentureClaim 1, U.S. Patent No. 5,826,245A 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.

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