Tag Archives: software patent

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

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.]

Federal Circuit: standard computer components do not transform covered business method into a “technological invention”

A recent Federal Circuit decision boosts a broad definition for the term “covered business method” as used in the context of the America Invents Act (AIA). As a result, a wider variety of patents may be subject to review in certain challenger-friendly administrative proceedings before the U.S. Patent and Trademark Office.

Under the AIA, entities charged with infringement of a covered business method (CBM) patent can challenge the patent’s validity. Accused infringers of a CBM patent may take advantage of these proceedings within one year after being named in a lawsuit or otherwise being charged with infringement. CBM proceedings have certain procedural advantages for challenger, and the Patent Trial and Appeals Board has canceled well over 75% of patent claims challenged in CBM proceedings to date.

CBM review is limited to patents “that claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service”.  The AIA also states that the term CBM patent “does not include patents for technological inventions.” The AIA did not define the term “technological inventions” but instead left the task of defining that term to the USPTO. USPTO regulations explain that a patent is directed to a technological invention if “the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.”

The “technological inventions” exception was the issue in the recent case, Blue Calypso v. Groupon, Inc. In the case, the court said that the presence of a general purpose computer in the claims does not necessarily yield a technological invention. The patent required  “a system comprising a network, a source communication device, a destination communication device and an intermediary connected to the network,” but the court found these elements to be “nothing more than general computer system components used to carry out the claimed process of incentivizing consumers to forward advertisement campaigns to their peers’ destination communication device[s].” Thus, the court found no “technological aspect in the claims that rises above the general and conventional.”

U.S. patent law needs a definition of “abstract idea”

Recent U.S. Patent and Trademark Office actions relating to software patents have confused and frustrated many patent applicants. After the U.S. Supreme Court published its opinion in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the USPTO’s application of the Court decision to software inventions has been anything but consistent. Does the USPTO’s action signal a need for Congressional action or another Supreme Court decision with more concrete guidelines?

In Alice, and as explained by the recent USPTO Preliminary Examination Instructions in view of the Supreme Court Decision in Alice, the determination of subject matter eligibility involves a two part test:  (1) Is the claim directed to an abstract idea?  (2) If so, are there other elements in the claim sufficient to ensure that the claim amounts to significantly more than the abstract idea itself?

However, rather than a rigorous application of any test, in the past few months the USPTO’s patent-eligibility determinations contain little analysis of any specific claim language. Instead, they primarily consist of a boilerplate paragraph stating that the claimed invention is directed to an abstract idea.

To illustrate this problem, the USPTO recently issued a rejection asserting that the following claim was patent-ineligible because it is directed to a “fundamental economic practice:”

8.   A device for predicting a future occurrence of a transportation system incident, the device comprising:
  a processor; and
  a computer readable medium operably connected to the processor, the computer readable medium containing a set of instructions configured to instruct the processor to perform the following:
          collect historic operating information related to the previous operation of a vehicle along a transportation route,
          determine schedule deviation information for the transportation route based upon the historic operating information and observed schedule adherence for the vehicle along the transportation route, the schedule deviation information comprising at least an identification of a driver and a sequence number for a period of time associated with the historic operating information and the observed schedule adherence,
          construct a plurality of models, each of the plurality of models including at least one combination of factors that contribute to schedule deviation,
          rank each of the plurality of models according to at least one information criterion,
          assess an impact of the driver and the sequence number on a highest ranked model to produce a results set, wherein the results set comprises at least a highest ranked model showing at least one combination of factors that most contributes to schedule deviation, and
          present the results set. Continue reading