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.
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.
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.
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.