After issuing two very negative decisions that called the future of software patent-eligbility into question, in January 2018 the Federal Circuit moved its software patent-eligibility pendulum back in the direction of finding eligible subject matter in software patents.
In Core Wireless Licensing S.A.R.L.. v. LG Electronics, Inc. (Jan. 25, 2018), the court affirmed a district court decision that denied a request for summary judgment that the claims of patents 8,713,476 and 8,434,020 were directed to ineligible subject matter.
The patents disclosed and claimed “improved display interfaces, particularly for electronic devices with small screens like mobile telephones…. The improved interfaces allow a user to more quickly access desired data stored in, and functions of applications included in, the electronic devices.”
Claim 1 of the ‘476 patent recited (with emphases added by the court):
1. 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 un-launched state.
Claim 1 of the ‘020 patent recited (with emphases added by the court):
1. A computing device comprising a display screen, the computing device being configured to display on the screen a main menu listing at least a first application, and additionally being configured to display on the screen an application summary window that can be reached directly from the main menu, wherein the application summary window displays a limited list of at least one function offered within the first application, each function in the list being selectable to launch the first application and initiate the selected function, and wherein the application summary window is displayed while the application is in an un-launched state.
The court held that “[t]he asserted claims in this case are directed to an improved user interface for computing devices, not to the abstract idea of an index.” The court also noted:
Although the generic idea of summarizing information certainly existed prior to the invention, these claims are directed to a particular manner of summarizing and presenting information in electronic devices. Claim 1 of the ‘476 patent requires ‘an application summary that can be reached directly from the menu,’ specifying a particular manner by which the summary window must be accessed. The claim further requires the application summary window list a limited set of data, ‘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.’ This claim limitation restrains the type of data that can be displayed in the summary window. Finally, the claim recites that the summary window ‘is displayed while the one or more applications are in an un-launched state,’ a requirement that the device applications exist in a particular state. These 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. Like the improved systems claimed in Enfish, Thales, Visual Memory, and Finjan, these claims recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.
In Core Wireless the court also focused on the technical problems to which the claims provided a technical solution:
The specification … teaches that the prior art interfaces had many deficits relating to the efficient functioning of the computer … [and] required users to drill down through many layers to get to desired data or functionality. That process could ‘seem slow, complex and difficult to learn, particularly to novice users.’ The disclosed invention improves the efficiency of using the electronic device. … The speed of a user’s navigation through various views and windows can be improved because it ‘saves the user from navigating to the required application, opening it up, and then navigating within that application to enable the data of interest to be seen or a function of interest to be activated.’ Rather than paging through multiple screens of options, ‘only three steps may be needed from start up to reaching the required data/functionality.’ This language clearly indicates that the claims are directed to an improvement in the functioning of computers, particularly those with small screens.
In Finjan, Inc. v. Blue Coat Systems, Inc. (Jan. 10, 2018), the Federal Circuit upheld a finding that U.S. patent 6,154,844 was patent-eligibile and not directed to an abstract idea. Claim 1 of the ‘844 patent is:
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 Doanloadable security profile to the Downloadable before a web server makes the downloadable available to web clients.
The court noted: “Starting at step one, we must first examine the ‘844 patent’s ‘claimed advance’ to determine whether the claims are directed to an abstract idea.” After noting that at claim construction the parties agreed that “‘Downloadable’ should be construed to mean ‘an executable application program,” the court found the claim to be eligible:
By itself, virus screening is well-known and constitutes an abstract idea…. Here, the claimed method does a good deal more. Claim 1 of the ‘844 patent scans a downloadable and attaches the virus scan results to the downloadable in the form of a newly generated file…. This operation is distinguished from traditional, ‘code-matching’ virus scans that are limited to recognizing the presence of previously-identified viruses, typically by comparing the code of the downloadble to a database of known suspicious code. The question, then, is whether this behavior-based virus scan in the ‘844 patent constitutes an improvement in computer functionality. We think it does.
The court also explained that “a result, even an innovative result, is not patentable…. Here, the claims recite more than a mere result. Instead, they recite specific steps – generating a security code that identifies suspicious code and linking it to a downloadable – that accomplish the desired result.”
The Finjan and Core Wireless decisions were issued too late to make it into the USPTO’s January 2018 Subject Matter Eligbility Quick Reference Sheet, and as of the date of this writing several USPTO examiners with whom I have spoken were not yet familiar with the cases. In January the court also issued a decision that found inligible an invention relating to a method of using a computer to locate real estate properties in a database. However, the Finjan and Core Wireless cases provide new opportunities to find subject matter eligibility in situations where the claims recite specific steps of accomplishing a result.
For a complete summary of all of the Federal Circuit decisions that found software inventions to be patent-eligible (along with many District Court and PTAB decisions), see this previous IP Spotlight post.