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Joe Bird is a registered patent attorney and combines an active patent prosecution practice with technology- and science-related litigation. He attended UAB’s graduate program in Vision Science and completed the coursework for an M.S. Degree. Vision Science at UAB is a combination of neurobiology, cognitive neuroscience, physiological optics and biochemistry and genetics. View articles by Joe

B.A.
M.S., Vision Science Graduate Program (coursework completed without degree)

Patent Registration Number: 50,366

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:

  1. linkage of the main menu to the application summaries by specifying a particular manner by which the summary window must be accessed;
  2. requirement that the application summary window list a limited set of data which are selectable to launch the application; and
  3. 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.

Roadmap to Software Patent Eligibility - ContinuedRecent Federal Circuit cases provide direction on how to satisfy the PTO or the federal courts that software is eligible for a patent. Some key points include:

  • New ways of organizing data
  • New connections between modules of data
  • New ways of providing access to data
  • New locations on a computer or network for operations previously known
  • Deletion of steps previously used in the prior art
  • The outcome of the above results in faster searching, more effective storage of data such as using less space, more flexibility in the organizing and use of the data

In addition to the Enfish case, another recent case, Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, also held the software invention in patent 5,987,606 to be patent-eligible, but it was a closer question than in Enfish.

The claimed invention provides individually customizable filtering at a remote Internet Service Provider (ISP) server by taking advantage of the technical capability of certain communication networks. In these networks, the ISP is able to associate an individual user with a specific request to access a website (or other Internet content), and can distinguish that user’s requests from other users’ requests. One way that the ISP is able to make this association, as described in the ’606 patent, is by requiring each user to first complete a log-in process with the ISP server. After a user has logged in, the ISP server can associate the user with a request to access a specific website (“In the TCP/IP protocol, each Internet access request or ‘packet’ includes the [website] from which content is requested”). Because the filtering tool on the ISP server contains each user’s customized filtering mechanism, the filtering tool working in combination with the ISP server can apply a specific user’s filtering mechanism to the websites requested by that user. To summarize, the ISP server receives a request to access a website, associates the request with a particular user, and identifies the requested website. The filtering tool then applies the filtering mechanism associated with the particular user to the requested website to determine whether the user associated with that request is allowed access to the website. The filtering tool returns either the content of the website to the user, or a message to the user indicating that the request was denied. This patent describes its filtering system as a novel advance over prior art computer filters, in that no one had previously provided customized filters at a remote server.

The patent owner argued that the claims are directed to the specific implementation of filtering content set forth in the claim limitations. Specifically, it argued claim 1 is “directed to the specific problem of providing Internet-content filtering in a manner that can be customized for the person attempting to access such content while avoiding the need for (potentially millions of) local servers or computers to perform such filtering and while being less susceptible to circumvention by the user.” Claim 23 is directed to the even more particular problem of structuring a filtering scheme not just to be effective, but also to make user-level customization remain administrable as users are added instead of becoming intractably complex. The Federal Circuit, however, found that the patent’s disclosure and the claims were directed to an abstract idea, i.e., data filtering.

The Court’s finding was not the end of the analysis, however, as even abstract ideas can be patentable if “an inventive concept” is claimed specifically if it claims “significantly more than the abstract idea itself, and is not merely an instruction to implement or apply the abstract idea on a computer.”

The Court found that the inventive concept is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server. The inventive concept rests on taking advantage of the ability of at least some ISPs to identify individual accounts which communicate with the ISP server and to associate a request for Internet content with a specific individual account. For example, FIG. 3 of the ‘606 patent shows the ISP server 100 process for accepting a log-in request 200; the ISP server 100 first verifies 201 whether the user is a registered subscriber. In the TCP/IP protocol, each Internet access request or ‘packet’ includes the website from which content is requested. The inventive concept harnesses this technical feature of network technology in a filtering system by associating individual accounts with their own filtering scheme and elements while locating the filtering system on an ISP server.

The claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet or to perform it on a set of generic computer components. Nor do the claims preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content. Preemption is a very important question, asking whether the patent’s claims would prevent all methods of filtering. Filtering content on the Internet was already a known concept, and the patent describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content.

Claim 1 of the Bascom patent provides a content filtering system for filtering content retrieved from an Internet computer network by individually controlled access network accounts, said filtering system comprising:

  • A local client computer generating network access requests for said individually controlled access network accounts;
  • At least one filtering scheme;
  • A plurality of sets of logical filtering elements; and
  • A remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

Additional discussion of the Roadmap to Software Patentability from another new case can be found here.

Roadmap to Software Patent EligibilityRecent Federal Circuit cases provide direction on how to satisfy the PTO or the federal courts that software is eligible for a patent. Some key points include:

  • New ways of organizing data
  • New connections between modules of data
  • New ways of providing access to data
  • New locations on a computer or network for operations previously known
  • Deletion of steps previously used in the prior art
  • The outcome of the above results in faster searching, more effective storage of data such as using less space, more flexibility in the organizing and use of the data

The first of these cases, and the most definitive, is Enfish, LLC v. Microsoft which involved patent 6,151,604 disclosing software for a “self-referential database.” The invention was distinguished from a “relational database” in which each type of thing which is modeled is provided in a separate table, such as for a document, person or company. A prior art database might store a document called project.doc, a person called Scott Wlachsin or a company as depicted below left. To indicate that Scott Wlachsin is the author of proj.doc and is employed by Dexis, the relational database uses relationships as depicted below right. The topmost relationship shows that the value for “Author” in the Document table refers to the “ID” column of the Person table. Because the row for proj.doc has AUTHOR=1, the row in the Person table that has ID=1 is the author of proj.doc. The relational database captures information about each item in a separate table and creates relationships informing the connections between rows in different tables.

Roadmap to Software Patent Eligibility

The patented invention, however, has two features which are different: (1) storing all entity types in a single table, and (2) defining the table’s columns by rows in the same table, as seen here:

Roadmap to Software Patent Eligibility

An additional row is included in the self-referential table, the row beginning with ID = #4. This row has values of TYPE = “field” and LABEL = “Employed By.” A row with TYPE = “field” is a special row because it defines characteristics of a column in that same table. The row with ID = #4 corresponds to the penultimate column, which is denoted by also marking that column with the ID of #4. The row with ID = #4 defines a single characteristic of the corresponding column, i.e., its label. Because the row with ID = #4 has LABEL = “Employed By,” we know that the corresponding column is labeled “Employed By,” as seen in the penultimate column. In other situations, the row might define other characteristics of the column, such as the type of data that the column can hold, e.g., text, integer numbers, or decimal numbers. Because the patent describes a model where the table’s columns are defined by rows in that same table, it is “self-referential” (see ’604 patent, col. 2, ll. 59–65).

The new invention claimed faster searching of data, more effective storage, and more flexibility in configuring the database on-the-fly instead of extensive modeling before launching the database. As to flexibility, the database could be launched with no or only minimal column definitions. Then, as a new attribute of information is encountered, such as an email address, an “Email” column could be added simply by inserting a new row of TYPE = “field” and LABEL = “email.” The addition of this new row can then instigate the database to create a new corresponding column. The addition of a new row-defining-a-column to the previous example might result in the following:

Roadmap to Software Patent Eligibility

The Enfish Court said the first step in its inquiry is to ask whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. The Court held “the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” The claims “are directed to a specific improvement to the way computers operate, embodied in the self-referential table.” Again, “the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database” which “functions differently than conventional database structures.” The claims were for “a specific type of data structure designed to improve the way a computer stores and retrieves data in memory.” The situation was not “where general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation. Rather, the claims are directed to a specific implementation of a solution to a problem in the software arts.” The claims were not “simply adding conventional computer components to well-known business practices.” In sum, the invention was not an abstract idea.

One of the representative claims approved by the Federal Circuit was a data storage and retrieval system for a computer memory, comprising:

Means for configuring said memory according to a logical table, said logical table including:

  • A plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
  • A plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
  • Means for indexing data stored in said table.

This is the kind of claim which will be allowed by the PTO and upheld by the federal courts, and is a go-by in developing the kind of information and strategy for a software patent application.

Additional discussion of the Roadmap to Software Patentability from another new case can be found here.