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Dr. Greg Peterson represents and advises clients on a wide variety of intellectual property issues. Dr. Peterson specializes in domestic and international biotechnology, chemical, pharmaceutical and medical device patent prosecution. Dr. Peterson has filed and prosecuted over 100 patent applications in diverse technological areas. View articles by Greg

B.S. Microbiology
Ph.D. Biochemistry and Molecular Genetics

Patent Registration Number: 45,587

The Court of Appeals of the Federal Circuit (CAFC) starts the new year off with a victory for patentees in the subject matter eligibility arena. In Finjan v. Blue Coat Systems, Inc. (case no. 2016-2520; January 2018), the CAFC determined a claim directed to virus screening was patent eligible under 35 USC §101 despite holding claims directed to virus screening abstract in previous cases.

The Finjan case stands out for three reasons: 1) the procedural posture of the case which resulted in significant limitations being read into the claims as a result of claim construction; 2) the CAFC’s application of the step 1 analysis in the Mayo/Alice framework; and 3) a possible expansion of how the improvement to computer functionality doctrine is applied. This post explores the procedural issues and provides a general overview of the case. The panel’s step 1 analysis and the expansion of the computer functionality doctrine will be discussed in the next post.

Federal Circuit Expanding Patent Eligibility Analysis in <i>Finjan v. Blue Coat Systems, Inc.</i> (Part 1)

Finjan asserted a number of patents against Blue Coat in an infringement action. The district court found that Blue Coat infringed four of the patents resulting in a substantial damages award. After the infringement finding, the patent eligibility of US Patent No. 6,154,844 was determined in a bench trial, with the district court finding claim 1 of the ‘844 patent covered patent eligible subject matter.

Claim 1 of the ‘844 patent states:

1. A method comprising:

receiving by an inspector a Downloadable;

generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and

linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.

As evident, claim 1 is broad and does not contain a significant amount of detail regarding how the method is carried out.

Procedural Posture

In Finjan, Blue Coat did not raise a patent eligibility challenge in the initial phase of the action or in a summary judgement motion. A jury trial on the infringement issue was conducted which required the district court to engage in claim construction, a process that is often skipped when patent edibility issues are raised at the pleadings stage. The term “Downloadable” was construed as “an executable application program, which is downloaded from a source computer and run on the destination computer.” The term “Downloadable security profile that identifies suspicious code in the received Downloadable” was construed as “a profile that identifies code in the received Downloadable that performs hostile or potentially hostile operations.” The claim construction was adopted by the CAFC. This claim construction was important to the ultimate holding of patent eligibility.

Effect of Claim Construction

The decision placed significant weight on the limitations imported into the claims during claim construction. The CAFC held the phrase “identifies suspicious code” could only be satisfied if the security profile includes “details about the suspicious code in the received Downloadable, such as … ‘all potentially hostile or suspicious code operations that may be attempted by the Downloadable.’” The result was claim 1 was determined to require a behavioral-based approach to virus scanning as opposed to the traditional code-matching type of virus scans that were used in the art.

This finding was reached despite the fact that the specification of the ‘844 patent does not include the term “behavior-based” and the fact that the specification states that the Downloadable security profile can also include a list of “suspicious code patterns.” Specifically, in the Summary of the Invention section, the ’844 patent recites:

“The inspector includes a content inspection engine that uses a set of rules to generate a Downloadable security profile corresponding to a Downloadable. The content inspection engine links the Downloadable security profile to the Downloadable. The set of rules may include a list of suspicious operations, or a list of suspicious code patterns.”

Essentially, the claim construction process limited claim 1 to a preferred embodiment of the invention as described in the specification. The critical features of the claim are contained in the specification, but not in the claim itself.

The CAFC’s Step 1 Analysis

The panel analyzed claim 1 according to the two-step framework described by the U.S. Supreme Court (USSC) in Mayo and Alice, finding claim 1 was not abstract under step 1. In the panel’s step 1 inquiry, the court first determined what the claims were directed to by focusing on the “claimed advance” asserted by claim 1.

The panel determined the “claimed advance” was rooted in the behavior-based screening and the linking of the resulting information to the Downloadable as a Downloadable security profile. The panel noted that the Downloadable security profile “communicates granular information about potentially suspicious code made available by the behavior-based scans” and can be used to protect against previously unknown virus threats and viruses that have been altered to avoid code-matching scans. The foregoing allows a more “flexible and nuanced approach” to virus scanning and provides a function not present in the art.

With the “claimed advance” determined, the CAFC concluded claim 1 employs a “new kind of file that enables a computer security system to do things it could not do before” and that the claim is directed to a “non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large.”

Blue Coat argued that the claim remained abstract despite the claim construction because the claim did not describe with sufficient detail how to produce the Downloadable security profile, but rather claimed the result of the operation itself (the Downloadable linked to the security profile). The panel disagreed, stating:

“Here, the claims recite more than a mere result. Instead, they recite specific steps—generating a security profile that identifies suspicious code and linking it to a downloadable—that accomplish the desired result. Moreover, there is no contention that the only thing disclosed is the result and not an inventive arrangement for accomplishing the result. There is no need to set forth a further inventive concept for implementing the invention. The idea is non-abstract and there is no need to proceed to step two of Alice.”

This language is important and should be useful in arguing patentability of claims subject to 101 eligibility rejections.

Conclusions

Finjan is another example of why details as to how a claimed method is implemented are needed for a claim to pass muster under the patent eligibility test. In this case, the details were included as a result of claim construction. However, when drafting claims, such limitations should be explicitly included in the claims and specification, along with a discussion of the advantages provided. Without the importation of substantial limitations into the claims under the claim construction process, the claim at issue here looks suspiciously like claims held to be patent ineligible in the Intellectual Ventures v. Symantec and Apple v. Ameranth cases.

Further, in reviewing patents for susceptibility on eligibility grounds, the possibility of limitations from the specification being read into the claims must be considered. This decision may also embolden non-practicing entities to assert patents where the claims lack the required details, but those details are contained in the specification.

This decision also points to the potentially dispositive issue of claim construction in the patent eligibility analysis. There is no requirement that a district court construe claim terms prior to determining patent eligibility, and the CAFC has endorsed this approach. Without claim construction, the result is often a high-level characterization of the claim under the directed to inquiry which more often than not leads to the claims describing patent ineligible subject matter. As a result, the procedural posture of the case and not the substantive legal issues will continue to determine the outcome of cases under §101. Without clear direction from the CAFC or USSC on the claim construction issue, patent eligibility decisions will continue to remain unpredictable.

When claims are subject to the subject matter eligibility inquiry under 35 USC 101, details matter. In previous posts, the Patent 213 blog has stressed the need to provide details of the invention not only in the specification, but also in the claims. In Two-Way Media Ltd. v. Comcast Cable Communications, LLC (Nov. 1, 2017, Case Nos. 016-2531; -2532), the U.S. Court of Appeals for the Federal Circuit (CAFC) held a series of patents invalid under 35 USC 101 for failing to provide such details in the claims.

Two-Way Media asserted U.S. Patent Nos. 5,778,187, 5,983,005, 6,434,622 and 7,266,686 against Comcast. The asserted patents relate generally to systems for streaming audio/visual information over a communications network such as the internet. The patents explain that the prior art systems operated on a point-to-point, or unicast, basis, where a message is converted into a series of addressed packets which are routed from a source node to a destination. Multi-casting systems provide a way to transmit a single packet of information to multiple recipients on a network, a feature lacking in the unicast systems. Such technology had been previously used to provide audio/visual conferencing services and radio-like broadcasts. Two-Way Media argued that the asserted patents provided an improvement over the prior art by providing a multi-casting system with a scalable distribution architecture and a scalable control architecture that provides for superior management and administration of users who are to receive the information.

Unclaimed Features Doom Patent Claims Under Section 101 Eligibility Analysis -- Lessons from Two-Way Media

Claim 1 of the ‘187 was determined to be representative of the claims of the ‘187 and ‘005 patents (the claims of the remaining patents are not discussed, but were found by the CAFC to be broader than claim 1 below).

  1. A method for transmitting message packets over a communications network comprising the steps of:
  • converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol;
  • for each stream, routing such stream to one or more users;
  • controlling the routing of the stream of packets in response to selection signals received from the users; and
  • monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.

The district court found claim1 was directed to the abstract idea of sending information, directing the sent information, monitoring receipt of the sent information, and accumulating records about receipt of the sent information under step 1 of the Alice framework and concluded that claim 1 failed to recite a saving inventive concept, either viewing the claim elements individually or as an ordered combination, under step 2 of the Alice framework.

The CAFC agreed with the district court’s findings. The CAFC framed the step 1 inquiry in terms of specificity, stating “We look to whether the claims in the patent focus on a specific means or method, or are instead directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery” (citing McRO and Enfish).  In examining claim 1, the panel noted that the claim recited various functional aspects/results (such as converting, routing, controlling, monitoring and accumulating), but the claim did not adequately specify how the results were to be achieved. In other words, the claim did not recite any means/structure for achieving the results claimed.

We look to whether the claims in the patent focus on a specific means or method, or are instead directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery

In order to overcome the lack of specificity in claim 1, Two-Way Media argued for a construction of the term “controlling the routing of the stream of packets in response to selection signals received from the users” to mean “directing a portion of the routing path taken by the stream of packets from one of a designated group of intermediate computers to the user in response to one or more signals from the user selecting the stream.” Even adopting this claim construction (which the district court adopted), the CAFC found that the claims still failed to specify the relevant details of the scalable network architecture and how this scalable network architecture resulted in an improvement in the functioning of the system.

Under step 2, the panel determined that claim 1, either alone or as an ordered combination, failed to recite any inventive concept sufficient to rescue the claims from patent ineligibility. While recognizing the various advantages described in the specification for the scalable architecture (reducing of bottlenecks for example), the CAFC noted “While the specification may describe a purported innovative ‘scalable architecture,’ claim 1 of the ’187 patent does not.” In exemplifying the lack of specificity, the panel noted that with regard to the claim limitation of “data being routed in response to one or more signals from a user,” the claims did not specify the rules forming the communication protocol or the parameters for the user signals. As a result, these aspects, even though described to varying degrees in the specification, could not be considered in the step 2 inquiry.

Under the ordered combination analysis, the CAFC found that the claimed steps were performed in a conventional order, using conventional technology to achieve the desired result. The panel distinguished BASCOM, where the non-generic arrangement of known elements was sufficient to save the claims under the step 2 inquiry.

This case provides an excellent reminder regarding the need for claims, particularly claims having broad functional language, to provide claim detail sufficient to describe how the various aspects of the claim are achieved. In this case, the CAFC recognized the specification contained certain key details but did not consider these details in the eligibility analysis. It could be argued that the CAFC “read in” certain claim limitations in the McRO case to define the generically claimed rule sets, the claims in McRO specified certain concrete relationships required for the rule set. For example, the details of the first rule set were not provided in the claims, but the claim required the first set of rules to “define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence,” providing the basis for the operation of the rule set. This case also highlights the importance of recognizing when a claim is granted that may be overly broad and providing additional claims in the application with the required specificity.

The take home from Two-Way Media is that claims with broad functional language are likely to be construed as directed to a result/effect to be achieved unless the claims contain features that describe how the concept operates or is implemented.

In Part 1 of this post series, several decisions from the Court of Appeals for the Federal Circuit (CAFC) were analyzed to explore factors that may lead a court to find patent claims ineligible under §101. The cases discussed were Credit Acceptance Corp. v. Westlake Services (June 9, 2017), Prism Technologies LLC v. T-Mobile USA, Inc. (June 23, 2017), and Return Mail, Inc., v. United States Postal Service (August 28, 2017).

During this same period of time, the CAFC decided Visual Memory LLC v. Nvidia Corporation (August 15, 2017) in which the claims were found to be patent eligible under §101. As each of these cases was decided in a relatively narrow three-month window from June to August 2017, they offer insight into the logic of the CAFC in analyzing patent eligibility issues, particularly in regard to computer arts.

Part 2 of this post examines those factors in Visual Memory that the CAFC relied on in determining the claims were patent eligible under §101. While no one characteristic of a claim is outcome determinative, Visual Memory serves as a guidepost in drafting patent eligible claims.

Patent Eligibility Pointers from the Federal Circuit – Part 2The patent at issue in Visual Memory was US Patent No. 5,953,740. Claim 1 of the ‘740 patent was found to be representative (shown below).

A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising:

  • a main memory connected to said bus; and
  • a cache connected to said bus;
  • wherein a programmable operational characteristic of said system determines a type of data stored by said cache.

The claims are directed to a computer memory system comprising at least one memory cache with the computer memory system having one or more “programmable operating characteristics” that are configured by the computer based on the type of processor contained in the computer. In essence, the cache element(s) are configured to store specific sets of data (for example, code data and non-code data) and/or communicate with specified components of the computer based on the type of processor contained in the computer. The specification provides several examples of specific programmable operational characteristics and how they are varied depending on processor type, as well as providing an appendix of computer code for carrying out such operations.

The district court, on a motion to dismiss for failure to state a claim, found claim 1 f the ‘740 patent was directed to the abstract idea of “categorical data storage” under step 1 of the Alice framework and found the claims did not recite inventive concepts under step 2 of the Alice framework. The district court held the “programmable operating characteristics” limitation represented only a generic concept that determined the type of data to be stored in the cache and the specification failed to explain the mechanisms for accomplishing the result.

The CAFC reversed, finding claim 1 of the ‘740 patent was directed to an improved memory system per se, as can be seen in the previous cases in this area, the specificity in which the claims are defined under the “directed to” inquiry is often dispositive of the ultimate patent eligibility issue.

In reaching this conclusion, the CAFC relied on several factors that led to a more specific description of the claims under the “directed to” inquiry mandated in step 1 of the Alice framework.  First, the court stressed that the specification described the benefits of the claimed computer memory system. The specification provided the advantages of computer memory system, such as allowing different processors to be used with the memory system without compromising the performance of either the processor or the memory system, as well as the improved performance of the claimed memory system in comparison to prior art memory systems.

To be clear, describing the benefits of the system alone is not always enough to obtain a favorable outcome under the “directed to” inquiry, as many prior cases have provided such descriptions and still found the claims characterized at a high level. However, a discussion of the benefits and advantages of the invention and how the invention overcomes problems noted in the art, particularly when specifically related to the claimed elements, gives a court the opportunity to resist a high-level characterization of the claims and provide a more specific description of what the claims are “directed to” under step 1 of the Alice framework. As noted in prior precedent, courts must “articulate with specificity what the claims are directed to” in order that the step 1 inquiry under the Alice framework is a meaningful one.

The court also noted that the focus of the claims was on the improvement to computer functionality itself in contrast to improvements in a method in which the computer is used only as a tool. In claim 1 above, note the claimed element “cache” is modified to store only a specific type of data by the “programmable operational characteristic” of the claim. The opinion drew analogies to the claims in Enfish (claiming a specified self-referential data table that improved the function of a computer) and Thales Visionix (claiming a unique configuration of two inertial sensors that improved the accuracy of the system). By focusing the claims on the claimed improvement, the content of the claims is linked to the description of the computer memory system and thereby, indirectly, to the benefits/advantage of the system.

Importantly, the claims at issue here and in Thales Visionix did not specify the exact method by which the invention was carried out. In this case, claim 1 did not specifically describe how the “programmable operating characteristic” determines the type of data stored by the cache. The same fact pattern was also present in MCRO where the claims described a generic rule set for animating lip synchronization and facial expression. The operational details and implementation were described in the specification, and to varying degrees, in the dependent claims in each of these cases.

While the specific description of how the object of the invention is carried out in the claims is not absolutely required, thought should be given to providing dependent claims providing such details when possible. Furthermore, the role of the specification is describing how the claimed invention is implemented cannot be underestimated. The dissent in this case argued that the term “programmable operational characteristic” was nothing more than a black box and the claims provided no meaningful limitations on how the “programmable operational characteristics” were implemented. In essence, the dissent argued that the claims failed patent eligibility, at least in part, for failure to satisfy the requirements of 35 USC §112. The majority stated that while §112 issues must be considered for patent validity, they are not a part of the §101 eligibility analysis (however, see a differing approach in dicta from Trading Technologies, a non-precedential decision). In short, while various panels have differing opinions on the role of written description/enablement issues in the patent eligibility analysis, using the specification to describe how the claims are implemented allows the patentee to address such issues if they arise.

Another aspect worth noting is that while the claims in Visual Memory recited “generic” computer elements (similar to the claims in Credit Acceptance Corp., Prism Technologies and Return Mail), the function of the generic computer elements in the current case was altered. Specifically, the cache element, while arguably generic, functioned in a different manner than the cache components of the prior art as a result of the modification implemented by the programmable operating characteristics. Contrast this with Credit Acceptance Corp., where the concept of linking two previously unlinked databases together to enhance the financing options was not enough to confer patent eligibility when each database functioned in an art-recognized manner. Courts are willing to find claims patent eligible even when the claims recite generic components when the claims are properly structured (see also Bascom).

What Can We Learn

A number of lessons can be gleaned from Visual Memory and the CAFC’s commentary on the claims.

  1. Use the specification to specifically describe the innovation(s) presented in the claims to avoid a high-level characterization of the claims at the directed inquiry of Alice step 1.
  2. Use the specification to describe the benefits of the claimed invention, with specific reference to the features claimed.
  3. Provide as much detail as possible on the operation of the claimed invention, with specific attention to the unique claim elements.
  4. Use the specification to tie the solution of art-recognized problems to specific elements identified in the claims.
  5. Describe any ways in which the claimed elements are modified as compared to corresponding prior art elements, emphasizing any new functions that result from the modification.
  6. Tailor the claims to support a specific characterization of the claims under the “directed to” inquiry of Alice step 1 based on the description in the specification.

While there are no guarantees when arguing patent eligibility, realizing the importance of the specification in setting up successful arguments for overcoming §101 rejections is critical.