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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.

Data and cell phonesNot all abstract ideas fall under the scrutiny of 35 USC 101. Over the past year, the CAFC has chipped away at the granite façade that is 35 USC 101 issuing several opinions finding abstract ideas to be patent eligible under the Alice framework (Enfish, Bascom and MRCO). In such cases, the court has identified factors that distinguish patent eligible subject matter from an abstract idea. One such factor is a determination that the invention as claimed improves the functionality of a computer itself.

The CAFC has also discussed the preemption doctrine as it applies to Section 101, but this doctrine has not been routinely applied in a direct manner. Each of these issues were front and center in Evolutionary Intelligence, LLC. v. Sprint Nextel Corporation (WL 655442, Fed. Cir. 2017).

District Court Analysis

Evolutionary Intelligence, LLC (EI) owns U.S. Patents 7,010,536 and 7,702,682. The EI patents describe systems and methods that allow “computers to process data that are dynamically modified based upon external-to-the-device information, such as location and time.”

The EI patents (each under the same logic) were held invalid under 35 USC 101. As an initial matter, the district court framed the 101 inquiry with an emphasis on preemption, which may have shaped how the court viewed the application of the Alice framework. Under step 2A of the Alice inquiry, the court held that the claims were directed to “age-old forms of information processing,” such as those used in “libraries, businesses, and other human enterprises with folders, books, time-cards, ledgers, and so on” and as such were abstract ideas.

Under step 2B of the Alice inquiry, the court found each step of the method and the various components required to implement the method to be routine and conventional. EI conceded the point, but argued the claims, when viewed as an ordered combination, improved the function of a computer itself by overcoming limitations inherent in the static information model of computerized data processing by allowing “computers to process containerized data in a way that results in dynamic modifications in order to improve future processing efforts by computers” (citing DDR Holdings).

The court disagreed and held that the problem solved by the EI patents, failure to dynamically update data structures over time and by location, or based on search history, was not a problem unique to the computing or even a computing problem, but is simply “an information organization problem.” In essence, because the problem to be solved could be found in a non-computer field, the court dismissed the solution provided by the ordered combination of the claims. It could be argued that the same could be said of the solution reached in DDR Holdings and Enfish, where the problems addressed (customer retention and data organization, respectively) could also be said to be present in the prior art.

The district court stated that an inventive feature question (which read as being equivalent to improving the functionality of a computer) under Section 101 asks whether the patent adds something to the abstract idea that is “integral to the claimed invention.” In making this inquiry, the court noted it was important to “distinguish between claim elements that are integral to the claimed invention from those that are merely integral to the abstract idea embodied in the invention.” This approach arguably is in conflict with the Alice mandate to examine the claim elements alone and as an ordered combination.

The court concluded by stating “Regardless of whether the concept of ‘dynamically’ updating information containers and registers may have been novel and nonobvious at the time this patent was filed, the claims do nothing to ground this abstract idea in a specific way, other than to implement the idea on a computer.” It appears the district court found the claims to be invalid under Section 101 based at least in part on preemption grounds (i.e., the failure of the specification to specifically describe a particular embodiment of how the method was implemented).

Federal Circuit Analysis

In a brief opinion, the CAFC upheld the district court decision. The panel agreed with the district court on the abstract idea (citing Affinity Labs of Texas, Intellectual Ventures I, and Electric Power Group). Enfish was distinguished on the grounds that the main focus of the claims in that case was on an improvement to computer functionality itself, stating that the specific improvement in Enfish related to the way a computer database carried out the basic functions of data storage and retrieval “regardless of the subject matter or use to which that functionality might be put.”

Regarding the step 2B analysis, the CAFC seemed to echo the district court’s pre-emption fears, stating “Whether analyzed individually or as an ordered combination, the claims recite those conventional elements at too high a level of generality to constitute an inventive concept.” The panel distinguished Bascom Global based on a specific implementation of the internet filtering protocol. Interestingly, the claimed methods in Bascom also recited the method steps at a high level of generality as compared to prior cases, such as Enfish.

Conclusion

This case again points to the dangers in viewing the exception to Section 101 (in this case an abstract idea) and the technical issue to be solved at a high level divorced from the features claimed. When claims are analyzed in this way, it becomes very difficult to show the additional claim elements add significantly more to the judicial exception as required under the current analytical framework. Furthermore, this characterization allows the preemption doctrine to come into play as well.

In writing the specification, it is important to carefully describe the claimed methods and their relationship to the prior art in order to allow a fact-finder to properly place the claims in the correct context vis-à-vis the prior art and problem to be solved.