Patent Eligibility

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That’s a Really Great (Abstract) Idea!

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.

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.