What characteristics of a claim do the courts use to determine if a claimed invention meets the statutory requirements under 35 USC §101? This question has been vexing patent attorneys for years, with the question becoming more important in light of the Supreme Court’s decision in Bilski and its progeny. While no one characteristic of a claim is outcome determinative, review of the case law can provide guidance in drafting patent eligible claims.
The Court of Appeals for the Federal Circuit (CAFC) issued several recent decisions on patent eligibility for inventions directed to the computer arts from June to August of this year. As each of these cases were decided within three months of one another, they offer insight into the logic of the CAFC in analyzing the patent eligibility issue in the computer arts.
The cases discussed here are:
- Credit Acceptance Corp. v. Westlake Services (June 9, 2017) – ineligible under §101; Claims directed to the abstract idea of processing an application for financing a purchase
- Prism Technologies LLC. v. T-Mobile USA, Inc. (June 23, 2017) – ineligible under §101; Claims directed to the abstract idea of restricting access to resources
- Return Mail, Inc., v. United States Postal Service (August 28, 2017) – ineligible under §101; Claims directed to the abstract idea of relaying mail address data
Each of these cases was deemed to recite patent eligible subject matter under §101. Part one of this post examines what these cases teach us about factors that lead a court to find patent claims ineligible under §101.
The CAFC also found patent claims to be eligible under §101 in Visual Memory LLC v. Nvidia Corporation (August 15, 2017). In part two of this post, we will examine the logic the CAFC found in finding these claims complied with the patent eligibility requirements.
Common Themes for Patent Ineligible Claims
In Credit Acceptance, Prism Technologies and Return Mail each CAFC panel echoed several common themes in finding that the claims did not meet the requirements of §101.
First, the CAFC noted that configuring a general purpose computer, even with specific instructions to accomplish a series of operations not previously implemented on a computer, in order to supplant or enhance an otherwise manual procedure is not enough under the §101 analysis. The panels viewed such claims, without more, as simply using the computer as a tool to conduct the process.
Second, each panel also stressed the claims at issue recited generic computer elements or processes and that no evidence was presented that the arrangement or use of the generic elements provided a benefit or improvement that trumped the conventional use of the elements. The CAFC noted that a unique arrangement of generic elements can be patent eligible (citing Bascom), but when the generic components perform the same function in the same manner as is known in the art, patent eligibility is in question. In Credit Acceptance Corp., the concept of linking two previously unlinked databases together to enhance the financing options was not enough to confer patent eligibility when the database functioned in an art-recognized manner.
Third, when claims use functional/generic language to carry out a claimed method or process, the details of how the process is carried out need to be disclosed, preferably in the claims (note that in Visual Memory the panel seemed willing to consider such details present in the specification only). The Credit Acceptance panel stressed that claims directed to a results-oriented solution that provide insufficient detail on how the solution is implemented fall short in terms of patent eligibility (citing Intellectual Ventures I).
Finally, arguments that the claimed methods solve an art-recognized problem are not likely to confer patent eligibility on the claims, absent something more (for example, a unique arrangement of generic computer elements). In Prism Technologies, the patent holder’s argument that the hardware identifiers combined with the generic elements provided a solution to an internet- centered problem was rejected based on the finding that the hardware identifiers functioned as was known in the art.
The message the CAFC is conveying appears to be that when the computer is used as a tool to conduct a fundamental activity (for example, facilitating a financial transaction), the claims or the specification are required to clearly describe how the function or arrangement of elements differs from what is art recognized.
What Can We Learn
The take-home from these four cases is that details are important and that the specification can be determinative in winning or losing the patent eligibility fight.
- Use the specification to provide a detailed description of how the claimed elements function in the claimed methods.
- Consider adding dependent claims to provide increasing levels of detail as to how the claimed methods are carried out.
- Use the specification to describe the benefits of the claimed invention, with specific reference to the features claimed.
- Use the specification to tie the solution of art-recognized problems to specific elements identified in the claims.
- Describe any ways in which the claimed elements function in a different manner or are arranged in a different manner than is art recognized.
While there are no guarantees on the patent eligibility battleground, realizing the importance of the specification in setting up successful arguments for overcoming §101 rejections can only be beneficial.
The second part of this post will compare the claims found patent eligible in Visual Memory to analyze why these claims were deemed to comply with the patent-eligibility requirements.