In Part 1 of this post series, several decisions from the Court of Appeals for the Federal Circuit (CAFC) were analyzed to explore factors that may lead a court to find patent claims ineligible under §101. The cases discussed were Credit Acceptance Corp. v. Westlake Services (June 9, 2017), Prism Technologies LLC v. T-Mobile USA, Inc. (June 23, 2017), and Return Mail, Inc., v. United States Postal Service (August 28, 2017).

During this same period of time, the CAFC decided Visual Memory LLC v. Nvidia Corporation (August 15, 2017) in which the claims were found to be patent eligible under §101. As each of these cases was decided in a relatively narrow three-month window from June to August 2017, they offer insight into the logic of the CAFC in analyzing patent eligibility issues, particularly in regard to computer arts.

Part 2 of this post examines those factors in Visual Memory that the CAFC relied on in determining the claims were patent eligible under §101. While no one characteristic of a claim is outcome determinative, Visual Memory serves as a guidepost in drafting patent eligible claims.

Patent Eligibility Pointers from the Federal Circuit – Part 2The patent at issue in Visual Memory was US Patent No. 5,953,740. Claim 1 of the ‘740 patent was found to be representative (shown below).

A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising:

  • a main memory connected to said bus; and
  • a cache connected to said bus;
  • wherein a programmable operational characteristic of said system determines a type of data stored by said cache.

The claims are directed to a computer memory system comprising at least one memory cache with the computer memory system having one or more “programmable operating characteristics” that are configured by the computer based on the type of processor contained in the computer. In essence, the cache element(s) are configured to store specific sets of data (for example, code data and non-code data) and/or communicate with specified components of the computer based on the type of processor contained in the computer. The specification provides several examples of specific programmable operational characteristics and how they are varied depending on processor type, as well as providing an appendix of computer code for carrying out such operations.

The district court, on a motion to dismiss for failure to state a claim, found claim 1 f the ‘740 patent was directed to the abstract idea of “categorical data storage” under step 1 of the Alice framework and found the claims did not recite inventive concepts under step 2 of the Alice framework. The district court held the “programmable operating characteristics” limitation represented only a generic concept that determined the type of data to be stored in the cache and the specification failed to explain the mechanisms for accomplishing the result.

The CAFC reversed, finding claim 1 of the ‘740 patent was directed to an improved memory system per se, as can be seen in the previous cases in this area, the specificity in which the claims are defined under the “directed to” inquiry is often dispositive of the ultimate patent eligibility issue.

In reaching this conclusion, the CAFC relied on several factors that led to a more specific description of the claims under the “directed to” inquiry mandated in step 1 of the Alice framework.  First, the court stressed that the specification described the benefits of the claimed computer memory system. The specification provided the advantages of computer memory system, such as allowing different processors to be used with the memory system without compromising the performance of either the processor or the memory system, as well as the improved performance of the claimed memory system in comparison to prior art memory systems.

To be clear, describing the benefits of the system alone is not always enough to obtain a favorable outcome under the “directed to” inquiry, as many prior cases have provided such descriptions and still found the claims characterized at a high level. However, a discussion of the benefits and advantages of the invention and how the invention overcomes problems noted in the art, particularly when specifically related to the claimed elements, gives a court the opportunity to resist a high-level characterization of the claims and provide a more specific description of what the claims are “directed to” under step 1 of the Alice framework. As noted in prior precedent, courts must “articulate with specificity what the claims are directed to” in order that the step 1 inquiry under the Alice framework is a meaningful one.

The court also noted that the focus of the claims was on the improvement to computer functionality itself in contrast to improvements in a method in which the computer is used only as a tool. In claim 1 above, note the claimed element “cache” is modified to store only a specific type of data by the “programmable operational characteristic” of the claim. The opinion drew analogies to the claims in Enfish (claiming a specified self-referential data table that improved the function of a computer) and Thales Visionix (claiming a unique configuration of two inertial sensors that improved the accuracy of the system). By focusing the claims on the claimed improvement, the content of the claims is linked to the description of the computer memory system and thereby, indirectly, to the benefits/advantage of the system.

Importantly, the claims at issue here and in Thales Visionix did not specify the exact method by which the invention was carried out. In this case, claim 1 did not specifically describe how the “programmable operating characteristic” determines the type of data stored by the cache. The same fact pattern was also present in MCRO where the claims described a generic rule set for animating lip synchronization and facial expression. The operational details and implementation were described in the specification, and to varying degrees, in the dependent claims in each of these cases.

While the specific description of how the object of the invention is carried out in the claims is not absolutely required, thought should be given to providing dependent claims providing such details when possible. Furthermore, the role of the specification is describing how the claimed invention is implemented cannot be underestimated. The dissent in this case argued that the term “programmable operational characteristic” was nothing more than a black box and the claims provided no meaningful limitations on how the “programmable operational characteristics” were implemented. In essence, the dissent argued that the claims failed patent eligibility, at least in part, for failure to satisfy the requirements of 35 USC §112. The majority stated that while §112 issues must be considered for patent validity, they are not a part of the §101 eligibility analysis (however, see a differing approach in dicta from Trading Technologies, a non-precedential decision). In short, while various panels have differing opinions on the role of written description/enablement issues in the patent eligibility analysis, using the specification to describe how the claims are implemented allows the patentee to address such issues if they arise.

Another aspect worth noting is that while the claims in Visual Memory recited “generic” computer elements (similar to the claims in Credit Acceptance Corp., Prism Technologies and Return Mail), the function of the generic computer elements in the current case was altered. Specifically, the cache element, while arguably generic, functioned in a different manner than the cache components of the prior art as a result of the modification implemented by the programmable operating characteristics. Contrast this with Credit Acceptance Corp., where the concept of linking two previously unlinked databases together to enhance the financing options was not enough to confer patent eligibility when each database functioned in an art-recognized manner. Courts are willing to find claims patent eligible even when the claims recite generic components when the claims are properly structured (see also Bascom).

What Can We Learn

A number of lessons can be gleaned from Visual Memory and the CAFC’s commentary on the claims.

  1. Use the specification to specifically describe the innovation(s) presented in the claims to avoid a high-level characterization of the claims at the directed inquiry of Alice step 1.
  2. Use the specification to describe the benefits of the claimed invention, with specific reference to the features claimed.
  3. Provide as much detail as possible on the operation of the claimed invention, with specific attention to the unique claim elements.
  4. Use the specification to tie the solution of art-recognized problems to specific elements identified in the claims.
  5. Describe any ways in which the claimed elements are modified as compared to corresponding prior art elements, emphasizing any new functions that result from the modification.
  6. Tailor the claims to support a specific characterization of the claims under the “directed to” inquiry of Alice step 1 based on the description in the specification.

While there are no guarantees when arguing patent eligibility, realizing the importance of the specification in setting up successful arguments for overcoming §101 rejections is critical.

What characteristics of a claim do the courts use to determine if a claimed invention meets the statutory requirements under 35 USC §101? This question has been vexing patent attorneys for years, with the question becoming more important in light of the Supreme Court’s decision in Bilski and its progeny. While no one characteristic of a claim is outcome determinative, review of the case law can provide guidance in drafting patent eligible claims.

Patent Eligibility Pointers from the Federal Circuit – Part IThe Court of Appeals for the Federal Circuit (CAFC) issued several recent decisions on patent eligibility for inventions directed to the computer arts from June to August of this year. As each of these cases were decided within three months of one another, they offer insight into the logic of the CAFC in analyzing the patent eligibility issue in the computer arts.

The cases discussed here are:

Each of these cases was deemed to recite patent eligible subject matter under §101. Part one of this post examines what these cases teach us about factors that lead a court to find patent claims ineligible under §101.

The CAFC also found patent claims to be eligible under §101 in Visual Memory LLC v. Nvidia Corporation (August 15, 2017). In part two of this post, we will examine the logic the CAFC found in finding these claims complied with the patent eligibility requirements.

Common Themes for Patent Ineligible Claims

In Credit Acceptance, Prism Technologies and Return Mail each CAFC panel echoed several common themes in finding that the claims did not meet the requirements of §101.

First, the CAFC noted that configuring a general purpose computer, even with specific instructions to accomplish a series of operations not previously implemented on a computer, in order to supplant or enhance an otherwise manual procedure is not enough under the §101 analysis. The panels viewed such claims, without more, as simply using the computer as a tool to conduct the process.

Second, each panel also stressed the claims at issue recited generic computer elements or processes and that no evidence was presented that the arrangement or use of the generic elements provided a benefit or improvement that trumped the conventional use of the elements. The CAFC noted that a unique arrangement of generic elements can be patent eligible (citing Bascom), but when the generic components perform the same function in the same manner as is known in the art, patent eligibility is in question. In Credit Acceptance Corp., the concept of linking two previously unlinked databases together to enhance the financing options was not enough to confer patent eligibility when the database functioned in an art-recognized manner.

Third, when claims use functional/generic language to carry out a claimed method or process, the details of how the process is carried out need to be disclosed, preferably in the claims (note that in Visual Memory the panel seemed willing to consider such details present in the specification only). The Credit Acceptance panel stressed that claims directed to a results-oriented solution that provide insufficient detail on how the solution is implemented fall short in terms of patent eligibility (citing Intellectual Ventures I).

Finally, arguments that the claimed methods solve an art-recognized problem are not likely to confer patent eligibility on the claims, absent something more (for example, a unique arrangement of generic computer elements). In Prism Technologies, the patent holder’s argument that the hardware identifiers combined with the generic elements provided a solution to an internet- centered problem was rejected based on the finding that the hardware identifiers functioned as was known in the art.

The message the CAFC is conveying appears to be that when the computer is used as a tool to conduct a fundamental activity (for example, facilitating a financial transaction), the claims or the specification are required to clearly describe how the function or arrangement of elements differs from what is art recognized.

What Can We Learn

The take-home from these four cases is that details are important and that the specification can be determinative in winning or losing the patent eligibility fight.

  1. Use the specification to provide a detailed description of how the claimed elements function in the claimed methods.
  2. Consider adding dependent claims to provide increasing levels of detail as to how the claimed methods are carried out.
  3. Use the specification to describe the benefits of the claimed invention, with specific reference to the features claimed.
  4. Use the specification to tie the solution of art-recognized problems to specific elements identified in the claims.
  5. Describe any ways in which the claimed elements function in a different manner or are arranged in a different manner than is art recognized.

While there are no guarantees on the patent eligibility battleground, realizing the importance of the specification in setting up successful arguments for overcoming §101 rejections can only be beneficial.

The second part of this post will compare the claims found patent eligible in Visual Memory to analyze why these claims were deemed to comply with the patent-eligibility requirements.

The courts have long stated that one goal of patent law is to provide certainty to both inventors and the public regarding the law that is applied in determining the metes and bounds of a patent claim. Patent claims that are ambiguous and vague in scope leave the public in doubt as to what is protected by the patent and is considered to exert a chilling effect on further innovation. What is one sure fire way to destroy certainty? Having two differing legal standards applied to claim interpretation seem to fit the bill. This is exactly the situation encountered when patent claims are evaluated for indefiniteness under 35 USC §112(b) by courts in the context of patent litigation and the Patent Trial and Appeal Board (PTAB) in pre- and post-issuance proceedings.

Lower Threshold for Indefiniteness Confirmed by PTAB in Ex Parte McAward

Differing Standards for Indefiniteness

District courts and the CAFC apply the now familiar standard for claim indefiniteness under Nautilus as set forth by the Supreme Court, which states a claim is invalid as indefinite if the claim “read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus replaced the prior test for indefiniteness which required a claim to be “insolubly ambiguous.” The PTAB however has stated that it is not bound by the USSC’s decision in Nautilus. The PTAB standards for determining indefiniteness are whether a claim “contains words or phrases whose meaning is unclear” as set forth in In re Packard or “when a claim is amenable to two or more plausible constructions” as discussed in Ex Parte Miyazaki.

The PTAB explained in Ex Parte Miyazaki that in pre-issuance proceedings the board is justified in using a lower threshold “because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent.”

The same standard has been applied in post-grant proceedings in Google, Inc. v. SimpleAir, Inc., where the board stated the basis for applying the lower threshold for indefiniteness in pre-issuance proceedings “stems from two factors: (1) the broadest reasonable interpretation claim construction standard; and (2) the lack of a presumption of validity before the Office.” As the board found the same two factors apply to post-grant proceedings, the lower standard for indefiniteness was proper. This approach was also confirmed in Tinnus Enterprises, LLV v. Telebrands Enterprises, where the board stated “We do not understand Nautilus, however, to mandate the Board’s approach to indefiniteness in patent examination or reexamination matters or in AIA proceedings, in which the claims are interpreted under the broadest reasonable interpretation standard, and an opportunity to amend the claims is afforded.”

As we discussed previously, these differing standards can result in different outcomes in the CAFC and the PTAB (Tinnus Enterprises, LLV v. Telebrands Enterprises).

Ex Parte McAward Confirms PTAB Approach in Pre-Issuance Proceedings

The PTAB issued a precedential decision, a rare occurrence, in Ex parte McAward on August 25, 2017. The decision serves as clear confirmation that the PTAB will continue to use the lower threshold for indefiniteness as set forth in In re Packard and Ex Parte Miyazaki in pre-issuance proceedings. However, the board’s decision expressly limits the holding to pre-issuance proceedings, leaving some doubt as to the continued application of the lower standard to post-grant proceedings. Specifically, the board stated “We do not address, in this decision, the approach to indefiniteness that the Office follows in post-grant trial proceedings under the America Invents Act.” Therefore, until a precedential decision from the board addresses the application of the lower standard in post-grant proceedings, the proper standard for the evaluation of claim indefiniteness for post-grant proceedings is still in some doubt.

While the same factors relied on by the PTAB in applying the lower threshold are arguably present in post-issuance proceedings, the issue of how freely claim amendments are entered in post-grant proceedings has recently been called into question. In In re Aqua Products (CAFC, 2015-1177), the CAFC granted en banc review in December 2016 to determine if the board’s approach to claim amendments during post-grant proceedings is too limiting. While a decision still has not been handed down, if it is found that patent owners do not have the opportunity to freely amend their claims (as required by the logic of Google, Inc. v. SimpleAir, Inc. and Tinnus Enterprises, LLV v. Telebrands Enterprises) the PTAB’s logic in applying the lower standard is called into question, arguing that the proper standard for evaluating claim indefiniteness in post-grant proceedings should in fact be the Nautilus standard as applied by the district courts and the CAFC.

Points to Consider

For the present, it should be expected that the PTAB will continue with its current approach to evaluating claim indefiniteness in both pre- and post-issuance proceedings. As a result, it will remain the case that patent claims will be easier to invalidate on indefiniteness grounds in front of the board as compared to district court. While the situation may change with respect to post-grant proceedings, it is unlikely to change with respect to pre-issuance proceedings.

Therefore, those wishing to challenge claims on the ground of indefiniteness should carefully consider their options and consider taking advantage of the lower threshold available in front of the board. Likewise, patent applicants and owners should evaluate their cases for vulnerability under the PTAB’s current standards.