Hoffman Patent Firm continued to explore new frontiers of the judicially crafted exception to patentability known as patent-eligible subject matter.
Louis J. Hoffman was particularly active in guiding the national discussion of the USPTO’s reaction new developments in the area of patentable subject matter. In 2014, the Supreme Court issued its decision in Alice, which left many to question whether software was still patentable. Later in 2014, the Federal Circuit issued its decision in DDR Holdings, which is still the only post-Alice decision by the Federal Circuit upholding a computer-software-related patent in the face of a 101-based challenge. Mr. Hoffman briefed and argued on behalf of DDR Holdings in that case.
In the past year:
- Mr. Hoffman drafted an article, published by IPWatchdog.com, announcing the USPTO’s Interim Guidance on Subject Matter Eligibility and explaining its significance.
- In response to the USPTO’s request for public comment on the Guidance, Mr. Hoffman organized a group of Arizona attorneys who obtain the most patents and drafted a joint set of comments for submission to the USPTO. The USPTO official working in this area told Mr. Hoffman that the comments were influential in the PTO’s later adjusted guidance.
- Mr. Hoffman gave a joint presentation, with the USPTO lawyer who authored the USTPO’s December 2014 and July 2015 Guidance, at the National Association of Patent Practitioners’ (NAPP) annual convention.
- In addition, Mr. Hoffman submitted comments to the July 2015 updated updated guidance
- Hoffman also gave speeches about section 101 and patentable subject matter at the Arizona Bar and at a prominent California patent-prosecution law firm.
In client matters, Hoffman Patent Firm successfully obtained three different Patent Trials and Appeals Board (PTAB) decisions to not institute eight covered business method (CBM) attacks on patents in the computer-software area. The firm continues to defend patent holders in 101-related matters before the PTAB and the Federal Circuit. We obtained at least half-dozen patents this year for inventions relating to computer software or Internet technology. In addition, the firm successfully helped three of its clients license or sell patent and intellectual property rights in the computer and Internet-related software fields.
Alice obviously presents challenges for innovators in the computer arts. The best outcomes can be achieved by having the agility to take a variety of approaches and recognizing which is most appropriate for a given situation. Sometimes that requires challenging Alice-type rejections head-on through appeals (in courts or the USPTO), and in other situations, obtaining patent claims written differently is the better course. It is also important to consider protection outside the US or outside the patent field. Creative lawyering, including using the most up-to-date information to monitor this fluid situation, can improve the chances of overcoming the challenges posed by Alice. Hoffman Patent Firm looks forward to continued activity in connection with the Section 101 problem and continuing to address those challenges in 2016.