On January 25, 2018, in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., the Federal Circuit found a software invention to be patent eligible, holding that the claims are not directed to an abstract idea under step one of the test in Alice-Mayo. The patentee obtained a jury verdict for infringement in the Eastern District of Texas, and the alleged infringer appealed.
A representative claim of one the patents in Core Wireless provided for:
A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an unlaunched state.
The defendant argued on appeal that the menu listing linked to application summaries was merely the abstract idea of an index. The Federal Circuit disagreed, citing three patent claim limitations suggesting no abstract idea was present:
- linkage of the main menu to the application summaries by specifying a particular manner by which the summary window must be accessed;
- requirement that the application summary window list a limited set of data which are selectable to launch the application; and
- requirement that the application be in an “un-launched” state while its summary window is displayed.
The court held that these three limitations “disclose a specific manner of displaying a limited set of information to the user rather than using conventional user interface methods to display a generic index on a computer.” Citing language from the specification, the court found “the invention improves the efficiency of using the electronic device by bringing together ‘a limited list of common functions and commonly accessed stored data,’ which can be accessed directly from the main menu.” The holding was that “the claims are directed to an improvement in the functioning of computers, particularly those with small screens” and, thus, the invention was not an abstract idea.
What an abstract idea itself is, though, is not so easy to say. In 2010, Justice Stevens said the Supreme Court had “never provide[d] a satisfying account of what constitutes an unpatentable abstract idea” (Bilski v. Kappos, 561 U.S. 593, 621 (2010)). It is almost always possible to state an abstract idea behind any invention. As the Supreme Court said in Mayo Collaborative Services v. Prometheus Labs, Inc. (132 S. Ct. 1289, 1293-94 (2012)), “We tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, ‘all inventions … embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’” Even more recently, the PTO’s July 2015 Guidance noted that ”the courts have declined to define abstract ideas, other than by example….” (USPTO, July 2015 Update: Subject Matter Eligibility, at 3 (2015)). Great care is needed in applying the exclusionary principle of “abstract idea,” to bring stability and predictability to the law.
Although the Core Wireless Court did not say so expressly, “a menu (or index) listing for each listed item having a summary” is a fair extrapolation of what abstract idea underlies the invention of Core Wireless. That is, the abstract idea underlying Core Wireless could be either (1) a set of mental observations and steps, or (2) a printed index such as a page from a technical manual or, even more simply, a restaurant menu listing entrees. On appeal, the patentee’s brief took this argument head on, arguing that there is a difference between an abstract idea underlying the claim, and a claim which is “directed to” an abstract idea. Citing Thales Visionex, Inc. v. United States and Trading Technologies v. CGQ, the patentee argued the recitation of a specific structure and set of limitations: “an improved graphical user interface that solves… problems with prior GUIs.” The difference between “underlying” and “directed to” does not seem compelling, but this distinction was part of the rationale for patent eligibility in Thales and appears to be an effective part of an argument, when coupled with recitation of specific limitations in the claims.
One final observation about Core Wireless is that Bilski v. Kappos held writing claims as data transformations was a possible way to satisfy the machine-or-transformation test, and the Core Wireless District Court rested its decision partially on satisfaction of machine-or-transformation. Although the Federal Circuit did not decide for the patentee on this basis, patent prosecutors and litigators should keep the transformation prong of the test in mind for computer-implemented inventions.