Federal Circuit Affirms Rejection of Broad, Computer-Based ClaimsAs we’ve covered in other summaries, the Federal Circuit continues to define the line between computer-implemented claims that are patent ineligible under 35 U.S.C. § 101 for being directed to an abstract idea with no inventive concept applied to it and eligible claims directed to more than simply an abstract idea. The Federal Circuit’s recent decision in In re: Downing illustrates that broad, vague claims directed to an aspirational idea to be implemented on a computer will continue to be rejected. The decision further illustrates that such claims are also vulnerable to rejections under § 112. Applicants seeking computer-based claims should be mindful that claims addressing a technological problem in a specific, well-defined way remains the best path to avoid these pitfalls.

In Downing, the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that rejected all pending claims of the application as directed to ineligible subject matter, lacking adequate written description, and indefinite.

The Claims at Issue

The application at issue, No. 12/454,528 related to an allegedly new and improved planning model using electronic spreadsheets. Claim 1 was the only pending independent claim:

  1. A resource planning forecast product operable in a computer and recorded on a non-transitory computer-readable medium for retrieval interlinking non-business or business information relevant to the end user without mandatory reliance on a network or another computer file or Internet access to operate wherein the product is produced by processes of:

(a) designing a diffusion-based proprietary forecasting technique on an Excel computer platform for operation within a resource planning framework to: (1) simplify forecasting initialization with defaults option and exclusion of advanced statistical requirements in forecasting, (2) consider social and technological change, (3) make forecasts of operations and development and strategic plans of 1-5-15 years simultaneously, and (4) provide automatic updates reducing manual operations and storage requirements such that this process taken in combination improves the end user’s ease of operation and assessments;

(b) structuring presentations on the same computer platform by linking display of the forecasted data with features of: (1) additional resource planning applications beyond the typical such as an information resource utility and intangibles, (2) adjacent display of the operations and development and strategic plans’ 1-5-15 year forecasts, and (3) comprehensive print views available simultaneously of forecasted activity reports, resource plans, and yearly performance next 15 years such that this process taken in combination expands the utility of resource planning in the field of forecasting; and

(c) constructing one-time settings for the structure, on the same computer platform, for the capability of accommodating the full extent of resource planning cited and more efficient operation by: (1) fixed display of self-explanatory instructions and definitions, (2) only 4 required settings of initializing diffusion indices, starting calendar date, nonfinancial or financial mode, and the names for activity reports, resource plans, and optional information reports, and (3) optional settings related to goals-objective-missions, allocations, and risk-impact data such that this process taken in combination improves the end users’ ease of use and availability of forecasted resource planning applications;

such that this product’s capabilities and features accommodate the full extent of resource types and resource planning (encompassing the five categories of planning noted) for operation by nontechnical or technical users in one unbundled computer file through end user interaction with displays.

The PTO’s Decision

The examiner rejected all pending claims on three grounds: 1) they were directed to patent-ineligible subject matter, 2) they lacked adequate written description support, and 3) they were indefinite. Specifically, the examiner concluded the claims were directed to the abstract idea of creating an electronic spreadsheet for personal management and did not contain significantly more than that idea as any additional limitations were generic computer elements. The examiner further concluded that the term “intangibles” in the asserted claims lacked adequate written description. The term was not included in the original specification, and the examiner rejected amendments to the specification to describe the term as introducing new matter. Finally, the examiner concluded the claims were indefinite for two reasons: 1) it was unclear what class of invention the claims were directed to and 2) the term “end user” lacked antecedent basis. On appeal, the Board affirmed the examiner’s rejections on all three grounds. Downing then appealed to the Federal Circuit.

The Federal Circuit’s Decision

Beginning with the eligibility rejection, the Federal Circuit applied its standard two-step test from Alice Corp.: 1) whether the claims are directed to a patent-ineligible concept and, if so, 2) whether an element or combination of elements in the claim provides an “inventive concept” that amounts to more than a patent on the ineligible concept itself. At the first step, the Federal Circuit agreed that the claims were directed to the ineligible concepts of personal management, resource planning, or forecasting. The court likened the claims to others related to collecting, analyzing, and displaying information that it previously rejected as directed to abstract ideas and was not persuaded Downing’s reliance on cases such as McRO, Inc. v. Bandai Namco Games Am., Inc., 873 F.3d 1299 (Fed. Cir. 2016), and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), in which the court approved the eligibility of claims directed to improvements in computer technology. At step two, the court found no inventive concept as the claims recited only generic computer elements such as a “computer platform” using Excel or a “display.”

Turning to the written description rejection, the Federal Circuit agreed that “intangibles” lacked sufficient written description. The court noted that written description must be judged as of the filing date. As a result, written description must be found in the originally filed specification, and any amendments to add new matter to the specification during prosecution are prohibited. Echoing the examiner’s statement, the court found that “intangibles” was not disclosed or mentioned in the original specification. The court also agreed with the examiner’s objection to Downing’s attempt to amend the specification to define “intangibles” during prosecution. Lastly, the court approved the Board’s finding that a person of ordinary skill in the art would not have understood “intangibles” to refer to several specific items Downing pointed to in the specification.

Finally, the Federal Circuit agreed that the claims were indefinite. The court explained that while the claims purported to be product-by-process claims—“wherein the product is produced by processes of”—the remaining limitations did not define the process for making the product. Instead, those claim limitations—“designing a diffusion-based proprietary forecasting technique on an Excel computer platform for operation within a resource planning framework,” “structuring presentations on the same computer platform,” and “constructing one-time settings for the structure, on the same computer platform”—described functions or features of the product. Because the claims did note recite the steps for making the claimed product, they were indefinite.

The court disagreed with the Board’s conclusion that the claims were also indefinite because “end user” lacked antecedent basis. The court noted that the claims referenced one “end user,” which could only refer to the end user of the product. Thus, lack of an antecedent basis for that term did not render it indefinite.

The claims at issue were exactly the type an applicant for a computer-implemented invention should seek to avoid—vague, difficult-to-follow claims directed to an aspirational idea to be implemented on a computer. The takeaway continues to be that an applicant seeking to avoid Alice eligibility problems should focus on defining a technological problem and claiming a specific implementation that solves that problem and improves computer functionality.

Focusing Questions of Software Patent Eligibility on the Specific Technological Solution and Specific Technological Problem Being SolvedThe U.S. Supreme Court presented a two-step framework for determining whether a claim contains patentable subject matter under the abstract idea exception to 35 U.S.C. § 101 in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. According to the framework erected in Alice, one must first “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Then, if so, one must determine whether “additional elements transform the nature of the claim into a patent-eligible application.” Despite the Supreme Court’s Alice decision, Alice and its progeny have yet to provide a consistent and specific definition and/or test for what exactly is an abstraction under 35 U.S.C. § 101. As a result, the Federal Circuit has struggled to consistently apply Alice to computer software, and the law continues to be in flux.

Ancora Technologies, Inc. vs. HTC America, Inc. appears to be an attempt by the Federal Circuit to provide a test to determine whether the claimed computer-related subject matter is an abstraction. As noted by the Federal Circuit at page 11 of Ancora, the test provided in Ancora relates to step one of the Alice analysis. In short, Ancora requires that software claims identify the specific technological technique being used to solve a specific technological problem. Under this analysis, the Federal Circuit in Ancora held that the claims in the Ancora Technologies’ U.S. Patent 6,411,941 (the “‘941 patent”) were specific enough to pass step one of the Alice test. The Federal Circuit thus reversed the United States District Court for the Western District of Washington’s ruling that the claims of the ‘941 patent were directed to patent ineligible subject matter under Alice.

Claims of 941 and Technological Background

Ancora Technologies, Inc.’s ‘941 patent describes and claims methods of preventing a computer from running unauthorized software. Specifically, claim 1 of the ‘941 patent recites:

  1. A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:

selecting a program residing in the volatile memory,

using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,

verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS, and

acting on the program according to the verification.

Of particular importance to the Federal Circuit’s analysis in Ancora is the verification structure stored in the erasable, non-volatile memory of the BIOS. BIOS memory is typically utilized to store start-up programs in a computer. However, this is not how the BIOS memory is being used in the ‘941 patent. Instead, the ‘941 patent teaches using the BIOS memory to store a verification structure that can be used to determine whether the program stored in volatile memory is licensed to run on that computer. The innovation taught by the ‘941 patent thus lies in the interaction between the verification structure stored in BIOS memory and the program that is stored in another memory structure to check for permission to run the program. This was a new and specific use of the BIOS memory. According to the ‘941 patent, using the BIOS memory instead of other computer memory makes it much harder to hack the verification structure because successfully hacking the BIOS memory would render the computer inoperable. The teachings of the ‘941 patent therefore solved a particular technological problem.

Federal Circuit’s Analysis

The Federal Circuit’s analysis is interesting in that it attempts to synthesize many of the Federal Circuit’s post-Alice computer-related decisions. The Federal Circuit focuses the question of abstraction in computer-related technologies by stating:

In cases involving software innovations, this inquiry often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.’ Ancora at pg. 8 (citing Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (external citations omitted)).

The Federal Circuit begins its analysis by characterizing its holding in Enfish. The Federal Circuit in Ancora describes Enfish as holding that the patent claims at issue were not directed to an abstract idea. According to Ancora, the claimed self-referential tables in Enfish improved the way that computers operated and handled data, which enabled programmers to construct databases in new ways and with less configuration prior to launch.

The Federal Circuit then moves onto its holding in Visual Memory LLC v. NVIDIA Corp. According to the Federal Circuit in Ancora, the claims in Visual Memory were directed to an improved memory system that configured operational characteristics of a computer’s cache memory to accommodate different types of processors without compromising performance. Thus, the patent in Visual Memory was characterized by the Federal Circuit as being specifically directed to an improved computer memory system, not to the abstract idea of categorical data storage.

Next, the Federal Circuit characterizes its holding in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. The claims in Core Wireless were directed to a method for making websites easier to navigate on a small-screen device. According to the Federal Circuit in Ancora, the claims were not directed to the abstract idea of indexing information but rather directed to a specific type of index for a specific type of user and thus were not abstract.

Finally, the Federal Circuit discusses its holding in Data Engine Technologies LLC v. Google LLC. According to the Federal Circuit in Ancora, the claims in Data Engine were a specific technological solution in the art of electronic spreadsheets. The claimed method in Data Engine solved the navigation difficulties of prior art spreadsheets by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment. In Data Engine, the court distinguished other cases in which the claims were held to be directed to abstract subject matter, such as displaying a graphical user interface, or collecting, manipulating and organizing information. According to the court in Ancora, the claims in Data Engine recited a specific structure of notebook tabs within a spreadsheet display that performs the specific function of navigating within a three-dimensional spreadsheet. This provided the specificity required to find that the claims were patent eligible.

The Federal Circuit in Ancora then asserts that claim 1 of the ‘941 patent is not directed to an abstract idea based on the precedents of the aforementioned cases. According to the Federal Circuit, preventing a computer from using a program without authorization is not abstract “if done by a specific technique that departs from earlier approaches to solve a specific computer problem” (Ancora at pg. 10). Claim 1 of the ‘941 patent specifically identifies how a functionality improvement is effectuated. More specifically, claim 1 recites a structure containing a license record (i.e., verification structure) stored in a particular modifiable portion of the computer’s BIOS memory and that structure is used for verification by interacting with the distinct computer memory that contains the computer program to be verified. The technological problem solved is the vulnerability of license-authorization software to hacking. The Federal Circuit in Ancora thus concludes that claim 1 of the ‘941 patent is not abstract under step 1 of Alice because “[i]n short, claim 1 of the ‘941 patent is directed to a solution to a computer-functionality problem: an improvement in computer functionality that has ‘the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it’” (Ancora at pg. 11, quoting SAP America, Inc. vs. InvestPic, LLC).

Key Takeaway

The court’s holding in Ancora is a reminder to patent prosecutors that vague and generic software claims are unlikely to pass the Alice test. Whenever writing a software patent, patent counsel should be able to identify the specific technological technique being used and the particular technological problem being solved by the technique. The specific technological technique should be worked into the claims, and the particular technological problem being solved should be discussed in the specification in detail. Certainly, identifying the electronic components and working these electronic components into the claims will go a long way to ensure patent eligibility. If not, the claims should at least identify the virtual “structures” produced by the software in order to solve the particular technological problem, like in Data Engine. Software claims that merely recite actions (e.g., the processing of information) performed by a computer are not likely to pass step one of the Alice test under Ancora.