I. Background
The Court is presiding over two sets of consolidated patent infringement cases filed by Plaintiff McRO, Inc., d.b.a. Planet Blue (“Plaintiff” or “Planet Blue”): the “Track 1” cases, consolidated under Case No. CV-12-10322,
This Motion for Judgment on the Pleadings Based on Unpatentability under 35 U.S.C. § 101 (“Motion”) was jointly filed by all defendants in both Tracks: Namco Bandai Games America, Inc.; Sega of America, Inc.; Electronic Arts, Inc.; Disney Interactive Studios, Inc.; Capcom USA, Inc.; Neversoft Entertainment, Inc.; Treyarch Corporation; Warner Bros. Interactive Entertainment, Inc.; LucasArts Entertainment Co. LLC; Activision Publishing, Inc.; Blizzard Entertainment, Inc.; Infinity Ward, Inc.; Atlus U.S.A., Inc.; Konami Digital Entertainment, Inc.; Square Enix, Inc.; Obsidian Entertainment, Inc.; Naughty Dog, Inc.; Sony Computer Entertainment America, LLC; Sucker Punch Productions, LLC; The Codemasters Software Company Limited; Codemasters, Inc.; Codemasters USA Group, Inc.; and Valve Corp. (collectively, “Defendants”). Notice of Mot., Docket No. 338 at 2. Plaintiff filed its Opposition on July 24, 2014. Docket No. 344. Defendants filed their Reply on July 31, 2014. Docket No. 350.
At issue are United States Patent Nos. 6,307,576 (“ '576 Patent”), issued October 23, 2001, and 6,611,278 (“ '278 Patent”), issued August 26, 2003, both to Maury Rosenfeld, and both titled “Method for Automatically Animating Lip Synchronization and Facial Expression of Animated Characters.” The '278 Patent resulted from a continuation of the application that resulted in the '576 Patent, meaning the patents share the same disclosure. See PowerOasis, Inc. v. T-Mobile USA, Inc.,
The patents explain that the prior art practice for 3-D computer generated speech animation was by manual techniques using a “morph target” approach. '576 Patent 1:44-46. That approach uses a reference model of a neutral mouth position in conjunction with “morph targets,” which are models of the mouth in non-neutral positions corresponding to different phonemes. '576 Patent 1:46-49. The reference model and morph targets all share the same “topology” of the mouth, defined by the same number and placement of “vertices” that designate specific points on the mouth. For example, vertex “n” on the neutral mouth and all of the morph targets may represent the left corner of the mouth. '576 Patent 1:51-54.
The “deltas,” or changes, of each vertex on each morph target relative to the corresponding vertex on the neutral model are computed as a vector to produce an individual “delta set” of vectors for each morph target. '576 Patent 1:58-62. From the neutral model, the animator need not move the mouth position all the way to a morph target. Instead, the animator can apply a value between 0 and 1, called the “morph weight,” to a delta set to move the mouth just a percentage of the way to the corresponding morph target. '576 Patent 1:63-2:1. For example, if the sound (morph target) is “oh,” and the morph weight is 0.5, the mouth only moves halfway between the neutral position and the “oh” morph target. '576 Patent 2:16-22. It is also possible to blend the morph targets, for example, 0.3 “oh” and 0.7 “ee,” resulting in a mouth position exhibiting a combination of the “oh” and “ee” sound characteristics. '576 Patent 2:23-28.
According to the patents, applying the appropriate morph weights in the prior art was usually done using a “keyframe” approach. In the keyframe approach, an artist sets the morph weights at certain important times, and a computer program then interpolates each of the channels at each frame between the keyframes. '576 Patent 2:29-34. The patents state that this method requires the artist to manually set a large number of keyframes, which is tedious, time consuming, and inaccurate. '576 Patent 2:34-37. Therefore, an object of the invention is to provide “an extremely rapid and cost effective means to automatically create lip synchronization and facial expression in three dimensional animated characters.” '576 Patent 2:50-54.
The invention “utilizes a set of rules that determine the system[’]s output comprising a stream or streams of morph weight sets when a sequence of timed phonemes or other timed data is encountered.” '576 Patent 3:3-7. The invention includes:
[Configuring a set of default correspondence rules between a plurality of visual phoneme groups and a plurality of morph we sets; and specifying a plurality of morph weight set transition rules Zrfo specifying durational data for the generation of transitionary curves between the plurality of morph weight sets, allowing for the production of a stream of specified morph weight sets to be processed by a computer animation system....
'576 Patent 3:23-30.
Defendants argue that the claims of both patents in suit are patent ineligible under 35 U.S.C. § 101 because they merely “set[] forth the previously-known animation method as a series of mathematical steps, and instruct[] the user to perform those steps on a computer.” Mot., Docket No. 338 at 12.
II. Legal Standard
A. Motion for Judgment on the Pleadings
Rule 12(c) of the Federal Rules of Civil Procedure permits a party to move to dismiss a suit “[a] fter the pleadings are closed ... but early enough not to delay trial.” Fed.R.Civ.P. 12(c). “Judgment on the pleadings is proper when, taking all allegations in the pleading as true, the moving party is entitled to judgment as a matter of law.” Stanley v. Trustees of Cal. State Unin,
A complaint may be dismissed for failure to state a claim upon which relief can be granted for one of two reasons: (1) lack of a cognizable legal theory or (2) insufficient facts under a cognizable legal theory. Bell Atlantic Corp. v. Twombly,
In deciding a 12(b)(6) or 12(c) motion, the court is limited to the allegations on the face of the complaint (including documents attached thereto), matters which are properly judicially noticeable and other extrinsic documents when “the plaintiffs claim depends on the contents of a document, the defendant attaches the document to its motion to dismiss, and the parties do not dispute the authenticity of the document, even though the plaintiff does not explicitly allege the contents of that document in the complaint.” Knievel v. ESPN,
B. Patentable Subject Matter Under 35 U.S.C. § 101
35 U.S.C. § 101 “defines the subject matter that may be patented under the Patent Act.” Bilski v. Kappos,
Whoever invents or discovers any new and useful process, machine manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Id. “In choosing such expansive terms ... modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope” “to ensure that ‘ingenuity should receive a liberal encouragement.’ ” Id. (quoting Diamond v. Chakrabarty,
The “wide scope” of patent eligibility is not unlimited. Instead, the Supreme Court has invented or discovered “three specific exceptions to § 101’s broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract ideas.’ ” Bilski,
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., — U.S. -,
First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us?” To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. We have described step two of this analysis as a search for an “ ‘inventive concept’ ” — i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”
Id. at 2355 (citations omitted).
Describing this as a two-step test may overstate the number of steps involved. If the claim is not “directed” to a patent-ineligible concept, then the test stops at step one. If the claim is so directed, but we find in step two that the claim contains an “inventive concept” that “transforms” the nature of the claim into something patent eligible, then it seems that there was a categorization error in finding the claim — which is considered “as an ordered combination” — “directed to an abstract idea” in step one.
So, the two-step test may be more like a one step test evocative of Justice Stewart’s most famous phrase. See Jacobellis v. State of Ohio,
Rest and relaxation prevailed in Alice because it was “enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue [in Alice ]. Both are squarely within the realm of ‘abstract ideas’ .... ” Id. at 2357 (citing to Bilski
But despite its narrow holding, Alice did categorically establish a clear rule that had previously been subject to debate: “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”
And, while the boundaries of the judicial exceptions remain subject to further development, the Supreme Court has clearly stated the policy underlying those exceptions, i.e. avoiding patents that “too broadly preempt the use of a natural law [or abstract idea].” Mayo,
Mayo discussed the Supreme Court’s 1854 decision upholding many of Samuel Morse’s telegraph patent claims, but invalidating the most general claim, which covered “the use of the motive power of the electric or galvanic current ... however developed, for making or printing intelligible characters, letters, or signs, at any distances.” Id. The Supreme Court presciently explained that such a claim would inhibit, rather than promote, the progress of the useful arts:
For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiffs specification. His invention may be less complicated — less liable to get out of order — less expensive in construction, and in its operation. But yet if it is covered b this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.
Id. (quoting O’Reilly v. Morse,
Of course, § 101 is not the sole, or even primary, tool to ensure that balance. Every condition of patentability set forth in the Patent Act acts to ensure that patents promote, rather than retard, the progress of science and useful arts. For example, in a manner quité similar to recent § 101 jurisprudence, “[t]he written description requirement guards against
However, scholars have argued that the written description and enablement doctrines of § 112, as currently applied, do not adequately prevent unwarranted obstructions to follow-on innovation, and have urged that § 101 can and should do so. See, e.g., Lemley et al., Life After Bilski, 63 Stan. L. Rev. 1315, 1330 (2011) (cited in Mayo,
In any event, the Supreme Court has spoken, and § 101 now plays an important limiting role. But District Courts and the Federal Circuit are now left with the task of figuring out when the “two-part” test is satisfied. Perhaps something like the function-way-result test used to evaluate infringement under the doctrine of equivalents might be useful. Thus, in one longstanding formulation, an accused instrumentality, infringes “if it performs substantially the same function in substantially the same way to obtain the same result.” Union Paper-Bag Mach. Co. v. Murphy,
The test in practice often focuses on the “way” aspect of the test, because function and result are often identical in the patent and accused product, and the question is whether the accused infringer uses the same “way.” Laura A. Handley, Refining the Graver Tank Analysis with Hypothetical Claims: A Biotechnology Exemplar, 5 Harv. J.L. & Tech. 36 (1991) (“In practice, the second prong of the test — ‘substantially the same way’ is often emphasized, since most infringement suits result from competition for a given market niche which dictates the ‘function’ and ‘-result’ prongs.”) (citing Perkin-Elmer Corp. v. Westinghouse Elec. Corp.,
Similarly, the question in the abstract idea context is whether there are other ways to use the abstract idea in the same field. If so, the Supreme Court has expressly encouraged others to find those other ways, without being held back by patents that preempt the. whole concept. Mayo,
Concomitantly, we must be wary of facile arguments that a patent preempts all applications of an idea. It may often be easier for an infringer to argue that a patent fails § 101 than to figure out a different way to implement an idea, especially a way that is “less complicated — less
III. Analysis
A. Defendants’ Patents Are Irrelevant
Plaintiff argues that Defendants’ own patents for lip-synchronization, some of which issued very recently, undermine Defendants’ argument that the patents-in-suit are directed to unpatentable subject matter. Opp’n, Docket No. 344 at 20-22. The validity of Defendants’ patents is not before the Court, and Plaintiff has cited no authority for the proposition that Defendants’ obtaining them operates as an estoppel in this case. There may be numerous factual differences between Defendants’ patents and those at issue here. And even if Defendants’ patents rise and fall with Plaintiffs, it is hard to fault anyone for seeking patents that may turn out to be invalid where the applicable standards are shifting and uncertain. “A change in the weather has known to be extreme.” Bob Dylan, You’re a Big Girl Now, Blood on the Tracks (Columbia Records 1974).
B. The Patents-in-Suit Fail § 101
1. The Claims, In Isolation, Appear Tangible and Specific
Defendants argue that the patents-in-suit are directed to a “fundamental, abstract animation practice,” namely, “the abstract idea of rules-based synchronization of animated mouth movement.” Mot., Docket No. 338 at 12. That is, Defendants argue that the patents cover the mere idea of using rules for three-dimensional lip synchronization, without requiring specific content for those rules. Id. at 12-13. But considered standing alone, the asserted claims do not seem to cover any and all use of rules for three-dimensional lip synchronization. The independent claims of each of the patents in suit are:
'576 Patent claim, 1:
A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;
obtaining a timed data file of phonemes having a plurality of sub-sequences;
generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;
generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and
applying aid final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.
'278 Patent claim 1:
A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;
obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;
generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and
applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.
Facially, these claims do not seem directed to an abstract idea. They are tangible, each covering an approach to automated three-dimensional computer animation, which is a specific technological process. They do not claim a monopoly, as Defendants argue, on “the idea that the human mouth looks a certain way while speaking particular sounds,” “applied to the field of animation.” Mot., Docket No. 338 at 12, n. 9. Further, the patents do not cover the prior art methods of computer assisted, but non-automated, lip synchronization for three-dimensional computer animation.
And according to Defendants, they do not cover the automated methods of lip synchronization for three-dimensional computer animation that Defendants employ. It is hard to show that an abstract idea has been preempted if there are noninfringing ways to use it in the same field. Section 101 motions can place parties in unfamiliar and uncomfortable positions: here it is to the patentee’s advantage to identify nonin-fringing alternatives, and it is the accused infringer’s advantage to posit the lack of any; the reverse of their positions at the infringement and damages stages of the case.
At first blush, it is therefore difficult to see how the claims might implicate the “basic underlying concern that these patents tie up too much future use of’ any abstract idea they apply. Mayo,
2. The Claims Must Be Evaluated in the Context of the Prior Art
However, for purposes of the § 101 analysis, it is not enough to view the claims in isolation. Instead, when determining whether a patent contains an adequate inventive concept, the Court must factor out conventional activity. That is because the inclusion of ‘Veil-understood, routine, conventional activity” previously used in the field “is normally not sufficient to transform an unpatentable law of nature [or abstract idea] into a patent-eligible application.... ” Mayo,
This dual analysis tracks the law’s longstanding concern with patents that consist of old material with the addition of a new, but abstract, idea: “the vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.” Gen. Elec. Co. v. Wabash Appliance Corp.,
Thus, where a claim recites tangible steps, but the only new part of the claim is an abstract idea, that may constitute a claim to an abstract idea. See Alice,
Here, the patents teach that in the prior art, three-dimensional character lip synchronization was performed using a “timed data file of phonemes having a plurality of sub-sequences,” as recited in the claims. '576 Patent 1:32-43. But the prior art did not, according to the patents, involve obtaining rules that define output morph weight sets as a function of the phonemes, or using those rules to generate the morph weight sets. Instead, an artist manually set the morph weights at certain important keyframes, and a computer program then interpolated the frames between the keyframes. '576 Patent 2:29-37.. Therefore, while tangible, the steps of (1) using a .timed phoneme transcript, (2) setting morph weight sets at keyframes, or (3) interpolating between keyframes, are not “inventive steps” that could transform the claims herein into patent eligible subject matter, if those claims are directed to an abstract idea.
In attacking the claims as simply drawn to the abstract idea of “rules-based lip-synchronized animation on a computer,” Mot., Docket No. 338 at 3, Defendants’ argument does not account for the presence in the claims, or the Court’s construction, of “morph weight set.” The Court construed “morph weight set” as a “set of values, on,e for each delta set, that, when applied, transform the neutral model to some desired state, wherein each delta set is the [set of vectors] from each vertex on the neutral (reference) model to each vertex on a model of another mouth position.” Rulings on Claim Constr., Docket No. 298-1 at 9.
However, the patents themselves teach that the prior art includes using morph targets that correspond to phonemes and calculating delta sets that contain the vectors from each vertex on the neutral model to the morph target. '576 Patent at 1:44-
A central part of the creative insight of the patents is the realization to use the specific approach of using morph weight set representations of the facial shape coupled with rules, including explicit and distinct timing rules, to generate key-frames. This approach uniquely provides the automation required to produce animation in a- cost-effective way, yet provided the necessary artistic control required tp- produce commercial grade animation. •
Declaration of Michael Gleicher, Ph.D. in Supp. of Opp’n, Docket No. 345, ¶ 20. Defendants object to this testimony, because “[t]he Court may not consider declarations in opposition to a Rule 12(c) motion without converting the motion to a motion for summary judgment.” Defs.’ Objections to Declarations Filed in Connection with Motion for Judgment on the Pleadings, Docket No. 351 at 2.
However, nothing in the Declaration affects the analysis. In the paragraph quoted above, Plaintiffs expert opines that a central part of the patents is “using morph weight set representations of the facial shape coupled with rules, including explicit and distinct timing rules, to generate key-frames.” Everyone appears to agree with that characterization, except that Defendants point out that no particular “explicit and distinct” rules are required by the claims. The question is therefore whether the inclusion of that concept in the claims satisfies § 101 given (1) the prior art, and (2) the fact that the claims do not require any particular rules.
A consideration of the prior art recited in the patents shows that the point of novelty here is the idea of using rules, including timing rules, to automate the process of generating keyframes. The following chart compares the '576 Patent’s claim elements to the prior art described in that patent.
[[Image here]]
So, what the claim adds to the prior art is the use of rules, rather than artists, to set the morph weights and transitions between phonemes. However, both of these concepts are specified at the highest level of generality. At the hearing on the Motion, Plaintiff emphasized that the rules inventively take into account the timing of the phoneme sequence. But the specification states clearly that “[i]n operation and use, the user must manually set up default correspondence rules” that “specify the durational information needed to generate appropriate transitionary curves between morph weight sets, such as transition start and end times.” '576 Patent 6:46-54. Thus, the user, not the patent, provides the rules. And while the patent does provide an example of a very partial set of default and secondary rules, it expressly states that “this is only an example of a set of rules which could be use[d] for illustrative purposes, and many other rules could be specified according to the method of the invention.” '576 Patent 7:36-9:23. Because the claim purports to cover all such rules, in light of the prior art, the claim merely states “an abstract idea while adding the words ‘apply it.’ ” Alice,
Here, while the patents do not preempt the field of automatic lip synchronization for computer-generated 3D animation, they do preempt the field of such lip synchronization using a rules-based morph target approach. And if, as Plaintiff suggests, the inventive step is the use of timing rules, given the state of the prior art, that still leaves an abstract idea at the point of novelty, and preventing the development of any additional ways to use that abstract idea in ,the relevant field. See Alice,
Defendants argue that a “patentee simpl[y] does not waste the time, money and effort to prosecute a patent application for an invention they casually indicate was known in the art.” Opp’n, Docket No. 344 at 10-11. But a § 101 defect does not mean that the invention was in the prior art. The invention here may have been novel, but the claims are directed to an abstract idea. And the patent’s casual— and honest — description of the prior art was made at a time when, under the then-prevalent interpretation of the law, such admissions were unlikely to be harmful. One unintended consequence of Alice, and perhaps of this and other decisions to come, is an incentive for patent applicants to say as little as possible about the prior art in their applications.
Plaintiff points to one Defendant’s contemporaneous characterization of Plaintiffs system as “revolutionary.” Opp’n, Docket No. 344 at 1 (quoting Deel. of John Petrsoric In Opp’n to Mot., Docket No. 346, Ex. 2, January 27, 1999 Warner Bros. Memorandum (inviting colleagues to a demonstration of Plaintiffs “revolutionary lip synch technique” that “utilizes proprietary software.”)).
This argument is unpersuasive in this context for two reasons. First, for purposes of the § 101 inquiry, which is different from the § 103 inquiry, the revolutionary nature of an abstract idea does not weigh in favor of patentability. See Mayo,
4. None of the Additional Content in the Asserted Dependent Claims Yields a Different Result
Plaintiff has asserted '576 Patent claims 1, 7-9, and 13, and '278 Patent, claims 1^4, 6, 9, 13, 15-17. Mot., Docket No. 338 at 2. The additional content of the dependent claims is addressed in the following chart:
[[Image here]]
5. The Draftsman’s Art
This case illustrates the danger that exists when the novel portions of an invention are claimed too broadly. As noted above, the claims here are drafted to give the impression of tangibility, but the Supreme Court has “long warn[ed] ... against interpreting § 101 in ways that make patent eligibility depend simply on the draftsman’s art.” Alice,
IV. Conclusion
For the foregoing reasons, the Court would GRANT the Motion, and hold '576 Patent claims 1, 7-9, and 13, and '278 Patent claims 1-4, 6, 9, 13, and 15-17 invalid under 35 U.S.C. § 101.
. The current Track 1 cases are: McRO, Inc. v. Namco Bandai Games America, Inc., CV-12-10322; McRO, Inc. v. Konami Digital Entertainment, Inc., CV-12-10323; McRO, Inc. v. Sega of America, Inc., CV-12-10327; McRO, Inc. v. Electronics Arts, Inc., CV-12-10329; McRO, Inc. v. Obsidian Entertainment, Inc., CV-12-10331; McRO, Inc. v. Disney Interactive Studios, Inc., CV-12-10333; McRO, Inc. v. Naughty Dog, Inc., CV-12-10335; McRO, Inc. v. Capcom USA, Inc., CV-12-10337; McRO, Inc. v. Square Enix, Inc., CV-12-10338; McRO, Inc. v. Neversoft Entertainment, Inc., CV-12-10341; McRO, Inc. v. Treyarch Corporation, CV-12-10342; McRO, Inc. v. Atlus U.S.A.. et al. CV-13-1870: McRO, Inc. v. Sucker Punch Productions, LLC, CV-14-0332; McRO, Inc. v. Activision Blizzard, Inc., CV-14-0336; McRO, Inc. v. Infinity Ward, Inc., CV-14-0352; McRO, Inc. v. LucasArts Entertainment Company LLC, CV-14-358; McRO, Inc. v. Sony Computer Entertainment America, LLC, et al., CV-14-0383; McRO, Inc. v. Warner Bros. Interactive Entertainment Inc., CV-14-0417.
. The current Track 2 cases are: McRO, Inc. v. Valve Corporation, CV-13-1874; McRO, Inc. v. Codemasters USA Group, Inc. et al., CV-14-0389; McRO, Inc. v. Codemasters, Inc., et al., CV-14-0439.
. This section concerning the applicable legal standard is the same as the corresponding section in this Court’s recent decision in Eclipse IP LLC v. McKinley Equip. Corp., CV-14-154-GW (AJWx),
. "Statutory stare decisis” is a recent coinage, apparently used for the first time by Justice Scalia concurring in part in Rita v. United States,
. Mayo noted that, as to the patent-ineligible approach of simply instructing artisans “to apply” unpatentable subject matter, “[t]he process in Diehr was not so characterized; that in Flook was characterized in roughly this way.”
. Scholars have argued that “the Mayo decision has revived the Flook approach, although without displacing Diehr or explaining how the two apparently contradictory decisions can be reconciled.” Brief of Professors Peter S. Menell and Jeffrey A. Lefstin as Amici Curiae in Support of Respondents, Alice Corp. Pty, Ltd. v. CLS Bank Int’l, No. 13-298,
. Indeed, in the USPTO's view, Alice’s embrace of the Mayo framework for abstract idea cases was such a significant change or clarification that it has withdrawn issued notices of allowance — that is, stopped patents that had made it all the way through examination and were about to issue — "due to the presence of at least one claim having an abstract idea and no more than a generic computer to perform generic computer functions.” USPTO Commissioner for Patents Peggy Focarino, Update on USPTO's Implementation of ‘Alice v. CLS Bank' (Aug. 4, 2014), available at http://www.uspto.gov/blog/ director/entry/update_on_uspto_s_ implementation.
. Perkin-Elmer held that "repeated assertions that the claimed and accused devices perform substantially the same function and achieve substantially the same end result are not helpful. That circumstance is commonplace when the devices are sold in competition. That a claimed invention and an accused device may perform substantially the same function and may achieve the same result will not make the latter an infringement under the doctrine of equivalents where it performs the function and achieves the result in a substantially different way.”
. In a forthcoming paper, Jeffrey Lefstin argues that for more than a hundred years, the lesson drawn from the English Neilson case (relied upon by the Supreme Court in Mayo) was that any practical application of a new discovery was patentable, even if the application was entirely conventional. Jeffrey Lefs-tin, Inventive Application: A History, Fla. L. Rev. & Hastings Research, Paper No. 94 (Mar.2014), available at http://ssrn.com/ abstract=2398696. This is contrary to the current law that "appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable." Mayo,
. Plaintiff submitted a response to Defendant’s Objections, which also included an unauthorized five-page sur-reply, which the Court would not consider. Planet Blue’s Response to Defs.' Objections to Declarations Filed in Opposition to Motion for Judgment on the Pleadings, Docket No. 355. Neither would the Court consider Defendants' Reply to that Response, Docket No. 356.
. However, that strategy is limited by the doctrine of inequitable conduct.