Tag Archives: patent-eligibility

New Federal Circuit decision finds packet monitoring patent claims eligible under Section 101

Posted on November 16, 2021 | Leave a comment

For the first time since 2020, the Federal Circuit issued an opinion finding claims of a computer-related invention to be eligible. Although designated as non-precedential, the case may signal a key claim feature that the court will look for in future Section 101 cases involving computer-related inventions.

In Mentone Solutions LLC v. Digi International Inc. (Nov. 15, 2021), the court reversed the District Court of Delaware’s finding that the claims of U.S. Patent 6,952,413 are invalid. The court focused on claim 5 of the patent, which is directed to a “multiple access communication method in a mobile station”.  The claim requires the steps of:

  • monitoring an assigned PDCH [(packet data channel)] to detect a USF [(uplink status flag)], and
  • (i) if shifted USF operation is not used then a first assigned PDCH is monitored to detect a USF corresponding to the first assigned PDCH and (ii) if the shifted USF operation is used then a second assigned PDCH is monitored to detect the USF corresponding to the first assigned PDCH and a USF corresponding to the second assigned PDCH.

The district court noted that claim 5 does not recite “when, how, or why one would . . . shift the USF or how a shifted USF would specifically improve the functioning of a prior art system.” On this basis, the district court found the claim to be ineligible.

On appeal, the Federal Circuit reversed, finding that “claim 5 is directed to a patent-eligible improvement to computer functionality, namely permitting additional multislot configurations for certain classes of mobile stations using extended bandwidth allocation.”

Notably, quoting its April 2020 Uniloc USA Inc. v. LG Electronics USA, Inc. decision, the Federal Circuit stated: “To the extent either the Appellees or the district court believe claim 5 must expressly mention the additional timeslots available or enabled by this achievement, they are mistaken. ‘Claims need not articulate the advantages of the claimed combinations to be eligible.’”

The Federal Circuit also contrasted the claims of this patent with those that it held ineligible in a previous case (Two-Way Media Ltd. v. Comcast Cable Communications), noting that in the past case “[w]e held the claims ineligible because they merely recited a series of abstract steps (“converting,” “routing,” “controlling,”  “monitoring,” and “accumulating records”) using ‘result-based functional language’ without the means for achieving any purported technological improvement. … Here, there is no functional claiming, nor are there abstract steps.’”

The court’s quote from its Uniloc decision may signal that that in future cases, the court (or at least the judges on this panel) will more closely assess whether claims merely cite a result or a technical means of achieving the result, and the Uniloc decision (which is precedential) may become prominent in future cases.

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In Vanda decision, Federal Circuit finds method of treatment claims eligible for patenting

Posted on April 23, 2018 | Leave a comment

A recent Federal Circuit decision provides patent holders and applicants some guidance as to when patent claims that include methods of treatment may be eligible for patenting.

In Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals Int’l Ltd. (Fed. Cir. Apr. 13 2018), the decision involved U.S. Patent 8,586,610, which is directed to a method of trating a patient who is suffering from schizophrenia with iloperidone. The representative claims included the steps of performing a genotypic assay on the patient, and administering one of multiple dosages of iloperidone to the patient depending on the results of the assay.

The defendant argued that the claims were not patent-eligible “because they are directed to a natural relationship between iloperidone, CYP2D6 metabolism, and QT prolongation, and add nothing inventive to those natural laws and phenomena.” The patent holder argued that while the claims may “touch upon” laws of nature, they are not directed to any law of nature.

The court agreed with the patent holder, nothing that while the “inventors recognized the relationships between iloperidone [and certain natural phenomena,] that is not what they claimed. They claimed an application of that relationship. Unlike the claim at issue in Mayo [v. Prometheus], the claims here require a treating doctor to administer iloperidone in the amount of either (1) 12 mg/day or less or (2) between 12 mg/day to 24 mg/day, depending on the result of a genotyping assay.” Thus, the court found that the “patent claims are ‘a new way of using an existing drug’ that is safer for patients because it reduces the risk of QTc prolongation,” rather than purely a law of nature.

The Vanda decision can be a useful reference point for applicants who seek to claim personalized medicine delivery methods. The court’s discussion of claims that touch on, but are not directed to, laws of nature may be helpful for those who are inventing new and useful methods that rely on laws of nature, but which aren’t inherently laws of nature on their own.

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Federal Circuit finds credit reporting patent ineligible; calls it the “height of abstraction”

Posted on March 29, 2017 | Leave a comment

A recent Federal Circuit decision illustrates the high eligibility hurdles that fintech software patents continue to face in view of the Supreme Court’s 2014 Alice v CLS Bank decision.

In Clarilogic, Inc. v. FormFree Holdings Corp. (Fed. Cir. Mar. 15, 2017), the court addressed the eligibility of U.S. Patent 8,762,243, which was directed to methods for electronic account certification and  credit reporting. The representative claim of the patent was: Continue reading →

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Federal Circuit invalidates three software patents; Judge Mayer calls for ban on all software patents

Posted on October 10, 2016 | Leave a comment

In the past few months, the Federal Circuit reversed a two-year trend of overturning software patents by publishing three decisions that outlined various parameters in which software can be eligible for patenting.  In those decisions (described in previous IP Spotlight posts published here and here) the court cautioned that not all improvements in computer-related technology are inherently abstract.  It also said that when assessing patent-eligibility, one must be careful to not use patent-eligibility to invalidate a claim when the real issue with the claim is obviousness.

A new opinion from the Federal Circuit sets some boundaries in the other direction, and limits how far software patent holders can push the boundaries of patent-eligibility. In Intellectual Ventures I LLC v. Symantec Corp., the court found certain claims of three software patents to be invalid. The patents were US 5,987,610 (directed to computer virus screening methods), US 6,073,142 (directed to automated analysis of e-mail messages) and US 6,460,050 (directed to a system for identifying distributed content).

The court drew an analogy between the representative claim of the ‘142 patent and a corporate mailroom that receives correspondence and uses business rules to define actions to be taken based on the application of the rules to the correspondence. The court found this claimed use of a “rule engine” to be a “conventional business practice” and noted that “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human.”

In the case of the ‘050 patent, the court found that the representative claim was directed to nothing more than “[c]haracterizing e-mail based on a known list of identifiers.”

The ‘610 patent was directed to a virus screening method.  The court noted that this patent “involves an idea that originated in the computer era – computer virus screening.” Nonetheless, the court said that “[p]erforming virus screening was a long prevalent practice in the field of computers” and that the representative claim “does not claim a new method of virus screening or improvements thereto.” The court also noted that “[j]ust as the performance of an abstract idea on the Internet is abstract,  so too the performance of an abstract concept in the environment of the telephone network is abstract.”

To understand the boundaries of what the Federal Circuit considers to be patent-eligible, the court’s analysis of the broad claims of the ‘142 and ‘050 patents can be compared to the court’s recent decisions that found claims directed to discrete, technical solutions to be patent-eligible.  However, the court’s analysis of the ‘610 patent arguably conflicts with its recent statements in Bascom Global Internet Services, Inc. v. AT&T Mobility et al., where the court cautioned that one should not use patent-eligibility to reject a claim when the real issue is obviousness.  Although not expressly stated in the decision, the court may have actually considered the possible pre-emptive effect of the claims,  as it did in recent cases such as Bascom Global and McRO, Inc. v. Bandai Namco Games America, Inc.

Notably, in a concurring decision Judge Mayer expressed a hard line view against software patents:  “claims directed to software implemented on a generic computer are categorically not eligible for patent.” Notwithstanding the Supreme Court’s statement to the contrary in Alice v. CLS Bank, Judge Mayer further argued that “[s]oftware is a form of language,” and that patents such as those at issue in the case “run afoul of the First Amendment” by “constricting the essential channels of online communication.”

Judge Mayer was not part of any of the court’s panels that upheld software patents earlier this year. Judge Mayer’s comments, while certainly provocative, do not reflect the overall direction of either the Federal Circuit or the Supreme Court. Although the court is unlikely to follow his call for all-out ban on software patents, it may do well to consider his request to “provide much-needed clarity and consistency in our approach to patent eligibility.”

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Federal Circuit: results are ineligible for patenting, but processes for achieving a result can be eligible

Posted on September 13, 2016 | Leave a comment

The Federal Circuit continued to refine the boundaries of patent-eligibility of software in 2016 with a new decision, McRO, Inc. v. Bandai Namco Games America, Inc. (Sept. 13, 2016), in which the court assessed whether claims directed to a method of automatically animating lip synchronization and facial expression of 3D characters are patent eligible.

The claims at issue were fairly discrete.  A representative claim of the patent at issue was:

A method for automatically animating lip synchronization and facial expression of three dimensional characters comprising:

obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;

obtaining a timed data file of phonemes having a plurality of sub-sequences;

generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;

generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and

applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

The court first cautioned that the courts must “‘avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims…. Whether at step one or step two of the Alice test, in determining patentability of a method, a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.”

The court also noted that it is important to distinguish between claims directed to a result, rather than claims directed to specific methods of accomplishing the result: “a patent may issue ‘for the means or method of producing a certain result, or effect.’”

In the claims at hand, the court found that “[b]y incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process … and does not preempt approaches that use rules of a different structure or different techniques.”

The new decision can serve as a useful guide for patent applicants when drafting software-implemented method claims.  The decision indicates that if the claims are directed to a result, however accomplished, then they are unlikely to be patent-eligible.  However, if the claims are directed to a discrete method of achieving a result, they may be patent-eligible even if implemented on a general purpose computer.

[A summary of all of the Federal Circuit decisions that found software to be patent eligible, as well as most district court and Patent Trial and Appeals Board decisions with similar results, is available at this post on IP Spotlight.]

 

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Federal Circuit finds Internet content filtering patent eligible after Alice

Posted on June 28, 2016 | Leave a comment

For the second time in two months, the Federal Circuit has issued a decision that describes a situation in which a software invention can be eligible for patenting.

In Bascom Global Internet Services, Inc. v. AT&T Mobility et al., the court vacated and remanded a district court’s decision that found a content filtering system invention to be not patent-eligible.

The patent at issue covered a system by which a remote ISP server filters content that a client computer requests from a website. Claim 1 of the patent is directed to:

1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
  a local client computer generating network access requests for said individual controlled access network accounts;
  at least one filtering scheme;
  a plurality of sets of logical filtering elements; and
  a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

The Federal Circuit passed on considering whether the claims were directed to an abstract idea, but instead focused on the second prong of the Alice v CLS Bank patent-eligibility analysis and found the claims to include an inventive concept. The Federal Circuit noted that “[t]he claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or perform it on a set of generic computer components…nor do the claims preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.”

The court also cautioned against confusing patent-eligibility with obviousness: “The district court’s analysis in this case … looks similar to an obviousness analysis under 35 U.S.C. 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

The decision closely follows the Federal Circuit’s recent decision in Enfish LLC v. Microsoft Corporation, in which the court cautioned against a broad interpretation of Alice v. CLS Bank as holding that all improvements in computer-related technology are inherently abstract.

For a summary of more Federal Circuit, district court, and PTAB decisions that have found software patents to be eligible for patenting since Alice, click here.

Thanks to my colleague Brienne Terril for her help writing this post.

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Federal Circuit finds two patents directed to specific database structures eligible for patenting, not abstract ideas

Posted on May 12, 2016 | Leave a comment

A new Federal Circuit decision gives software patent applicants some insight into when software can be patent-eligible. In Enfish LLC v. Microsoft Corporation (Fed. Cir. May 12, 2016), the court reversed a district court’s ineligibility determination for two patents directed to database structures.  In the decision, the Federal Circuit stated: “We do not read [the Supreme Court decision in] Alice [Corporation Pty Ltd. v. CLS Bank Int’l] to broadly hold that all improvements in computer-related technology are inherently abstract…. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis.”

With this in mind, the Federal Circuit directed that “the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities ([such as a] self-referential table for a computer database) or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”

The patents at issue were US patents 6,151,604 and 6,163,775.  A representative claim (claim 17 of the ‘604 patent) contained the following limitations:

17. A data storage and retrieval system for a computer memory, comprising:
means for configuring said memory according to a logical table, said logical table including:
a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
means for indexing data stored in said table.

Because the claim involved a specific structure of a logical table in a database, and were “not simply directed to any form of storing tabular data, but instead are directed to a self-referential table for a computer database,” the court found that the claims were directed to an improvement in the functioning of a computer.

[A summary of all of post-Alice Federal Circuit, U.S. District Court, and Patent Trial and Appeals Board decisions that found computer-related patent claims to be patent-eligible is available at this post on IP Spotlight.]

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India Patent Office: No patent if invention is merely software

Posted on February 29, 2016 | Leave a comment

After months of deliberation, India’s Patent Office has issued new guidelines that firmly maintain the country’s practice of not granting patents for software inventions. Issued February 19, 2016, the new Guidelines for Examination of Computer Related Inventions put to rest the country’s recent debate over whether software can be patentable if it has industrial applicability.

India’s patent law does not define or use the term “software,” but it does say that “a mathematical or business method or a computer programme per se or algorithms” are excluded from patentability, as is “a presentation of information.” However, during the past year, the Patent Office began to interpret this exclusion narrowly by stating that software could be patentable if it is applicable to a particular industry.

The new Guidelines reject that notion and direct examiners to apply a three-part test when examining claims for computer-related inventions:

  1. Properly construe the claim and identify the actual contribution;
  2. If the contribution lies only in mathematical method, business method or algorithm, deny the claim;
  3.  If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.

The Guidelines indicate that a claim must use some type of unique hardware, and that claims directed to “computer programmes,” a “set of instructions/ Routines and/or Sub-routines, “computer programme products,” a “Storage Medium having instructions,” a “Database,” or a “Computer Memory with instruction” should not be considered patentable.

The Guidelines include 15 examples of claims that are not patentable in India. Notably, the Guidelines include no examples in which the claims would considered acceptable.

The new Guidelines have been viewed as a win for Indian software company trade associations who lobbied hard to keep software out of the realm of patentability.

 

 

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Software patent-eligibility after Alice: where are we now?

Posted on March 31, 2015 | Leave a comment

Since the June 2014 U.S. Supreme Court decision in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the vast majority of district court decisions, Federal Circuit decisions, and Patent Trial and Appeals Board (PTAB) decisions that considered the issue have overturned software and business method patents under the new patent-eligibility standard of Alice.  In the first quarter of 2015 alone, when considering a motion to dismiss or a motion for judgment on the pleadings on the basis of patent-eligibility under §101, U.S. district courts have granted the motions and ruled the patents to be invalid over 66% of the time.

In November 2014, I published a post that summarized court and PTAB decisions that bucked this trend and found software to be patent-eligible. Since then, a small but growing number of cases refused to overturn patents that involved software, and the USPTO issued an Interim Guidance document describing actual and hypothetical claims that could survive post-Alice scrutiny.

To track the activity since then, I have updated my original post. It’s still available via this link. I intend to keep it updated on a periodic basis, so feel free to bookmark it or simply check back for future updates.

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USPTO retires SAWS: will it have an effect on the USPTO’s effort to screen out poor quality patents?

Posted on March 16, 2015 | Leave a comment

The USPTO sealUSPTO’s recent announcement that it is retiring its Sensitive Application Warning System (SAWS) yielded mixed reactions from the patent community. While many noted that the announcement was a win for transparency and accountability in government, others (including some patent applicants) found little comfort after they incurred substantial time and expenses resulting from the USPTO’s delay of patent applications that were assigned to the secret program.

With roots dating to 1994, SAWS first came to light in 2006 after a leaked memo revealed that the USPTO was flagging certain patent applications that could be considered “controversial or noteworthy.” SAWS applications could not be allowed before the Examiner prepared a memo to the USPTO Deputy Commissioners for Patent Operations and Patent Examination Policy.

Some of the criteria for SAWS designation were straightforward:  applications covering perpetual motion machines, anti-gravity devices, and technologies that violate laws of physics were included in the list. Other criteria were more fuzzy: Continue reading →

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