Tag Archives: Section 101

Federal Circuit starts 2018 with two favorable decisions for software patents

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): Continue reading

Cybersecurity Patent Strategies vs. the Growing Barriers to Software Patents

More and more companies who offer blockchain and other next generation cybersecurity technologies are seeking patents to help protect their competitive position. The U.S. Patent and Trademark Office’s (USPTO’s) Technology Center 2400, which covers networking, multiplexing, cable and security technologies, includes over 200 Patent Examiners who focus on security technologies. TC 2400 issued over 33,000 patents in 2017. During this period, the USPTO’s overall allowance rate was 59.4%.

Despite this apparent boom, patent applications covering cybersecurity technologies have faced increasing scrutiny since the June 2014 U.S. Supreme Court decision in Alice Corporation Pty Ltd. v. CLS Bank Int’l. In Alice, the Court found that a software implementation of an escrow arrangement was not eligible for patenting in the U.S. because it merely involved implementing an “abstract idea” on a computer. The Court did not define the term “abstract idea” other than to describe it as a building block of human ingenuity, or a fundamental concept, including concepts that involve a “fundamental economic practice.”

Since then, the USPTO has issued several guidance documents, and lower courts have issued several opinions, describing when software is and (more often) is not eligible for patenting under Section 101 of the Patent Act. The USPTO typically denies, and courts often strike down, patent applications and patents covering methods of manipulating data, completing financial transactions, and algorithms that do not require any particular hardware other than a general-purpose computer.

Patent applications that focus on financial applications of blockchain technologies often face patent-eligibility hurdles. A search of the USPTO’s Patent Application Information Retrieval (PIR) system indicated that as of January 2018, over 90% of the published applications and issued patents having the term “blockchain” and any combination of “cryptocurrency,” “coin,” or “currency” in the claims were assigned to the USPTO’s Technology Center 3600. (TC 3600 includes the USPTO’s business methods examining unit.) Over 80% of these patents and patents applications received a Section 101 rejection on first action. In addition, the allowance rate in TC 3600 remains far below that of the USPTO’s overall statistics.

Claim Drafting Strategies Continue reading

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

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.”

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

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.]