Court Begins Year with Consistent 101 Decisions, But Then Adds Confusion
Since the start of the year, the CAFC has handed down four cases in rapid succession relating to patent subject matter eligibility – the precedential Finjan vs Blue Coat, Core Wireless vs LG electronics, and Berkheimer vs HP Inc. decisions and the non-precedential Move Inc. vs Real Estate Alliance decision. In each, the validity of patents relating to software inventions was challenged, in part on the grounds that the inventions covered abstract ideas (an ineligible subject matter under 35 U.S.C. § 101). In the first three cases released (Finjan, Core Wireless, and Move Inc.), the CAFC displayed refreshing consistency in their evaluation of the ‘abstractness’ of patents, offering a glimmer of hope that the court may finally be offering a clear path forward, in particular with regards to step one of the Alice/Mayo test. Unfortunately, that hope was dashed in Berkheimer, in which the CAFC reverted to a different procedure for evaluating the abstractness of patents. This inconsistency in the application of the Alice/Mayo test sows confusion in the patent field, and continues to make the drafting of ‘101 – resistant’ patents more difficult.
As in all § 101 cases, the court evaluated the ‘abstractness’ of the claimed inventions using the Alice/Mayo two-step test, consisting of: 1) determining whether an invention is ‘directed to’ an abstract idea; and 2) determining whether the claimed invention contains any ‘inventive concepts’ that make the invention more than an abstract idea. While it was necessary to proceed to step two of Alice in Move Inc. and Berkheimer (and incidentally in Berkheimer, was the more consequential portion of the decision), in this article we focus on the approach of the court in performing step one of Alice. When evaluating software patents, step one typically centers on determining whether the claimed invention constitute an improvement to computer functionality, or merely use computers to perform some routine task (an abstract idea).
In Finjan, Core Wireless, and Move Inc., the court provided surprising consistency in analyzing and answering step one of the Alice inquiry. To determine whether or not a patent was directed towards improving computer functionality, the courts looked to the patent specification. In both Finjan and Core Wireless, the specifications took great pains to highlight the traditional methods for performing a task, the problems associated with performing the task in that manner, and the advantages conferred by performing the task using the described invention. Critically, these specifications were both written in such a way as to highlight the improvements in computer functionality that are imparted. In Finjan, which centered on patents covering anti-viral software, the ability to identify viruses that could not be detected using conventional methods and an improved ability to screen downloaded material were both considered improvements to computer function. Likewise, the patents in Core Wireless, which covered a Graphic User Interface (GUI, essentially the manner in which data is displayed to users, think graphics, icons, etc.) the ability to more easily navigate software applications was considered an improvement to computer functionality. In Move Inc., by contrast, which involved patents covering a database and software for searching real estate listings, the specification only described how the invention would improve the ability to search for and identify new real estate listings, making no mention of improved computer functionality. As such, while the invention may make performing real estate searches easier, it does not constitute an improvement to computer functionality, and is therefore an abstract idea that is not eligible for patent coverage. While the ultimate verdict delivered in the three cases may have differed, the court used the same analysis process in step one of Alice to reach these conclusions.
Also integral to determining whether an invention was directed towards an abstract idea was whether the claim language described a result (abstract) or a particular process for achieving that result (not abstract). As the court notes in Finjan, “A result, even an innovative result, is not itself patentable.” To achieve this, patents needed to provide specific details about how some step was being implemented that would make it more than an abstract idea. In Core Wireless, the fact that the claims specified when data was to be displayed, placed limits on what that data would be, and also specified the manner in which the data would be displayed, was sufficient detail for the court to declare that the claims “are directed to a particular manner of summarizing and presenting information in electronic devices,” and therefore not abstract. Likewise, in Finjan, the court found, “the claims recite more than a mere result. Instead, they recite specific steps – generating a security profile that identifies suspicious code and linking it to a downloadable – that accomplish the desired result.” In Move Inc., in contrast, while the court found claim language to “provide[s] steps for using the computer to perform the search, they contain no technical details or explanation of how to implement the claimed abstract idea using the computer.”
Contrast this measured, systematic approach used in the first three cases, to that used in Berkheimer, in which the court seemed to take a cursory look at the claim language, summarize the invention to a very high level, and then declare this overly-simplified description of the invention to be an abstract idea. At dispute in Berkheimer was a patent relating to a system for processing and storing digital data. Examining the claimed invention, the court declared that “claims 1-3 and 9 are directed to the abstract idea of parsing and comparing data; claim 4 is directed to the abstract idea of parsing, comparing, and storing data; and claims 5-7 are directed to the abstract idea of parsing, comparing, storing, and editing data.” To support this decision, the court compared these overly-simplified descriptions of the invention to inventions from cases that were previously determined to cover abstract ideas. No use of the specification was made during this process, nor any detailed examination of the claim language to determine if it describes a specific process or a result.
By no means does the approach offered in Finjan, Core Wireless, and Move Inc. settle all questions regarding § 101 analyses. It is still unclear what level of detail is required in the patent claims to make an invention more than abstract, and the amount of information courts are willing to read into claims from the specification still varies widely from case to case. Regardless, at least these decisions offered a consistent framework for evaluating patent eligibility. Reconciling the approach used in the first three decisions with that used in Berkheimer is exceedingly difficult, if not impossible. Clear guidance either in the form of an en banc decision from the CAFC, or from a Supreme Court ruling, may eventually be needed to settle the confusion that continues to surround subject matter eligibility.
-Michael Hinrichsen, PhD and Anthony Sabatelli, PhD, JD
Mike Hinrichsen received his Ph.D. in Molecular Biophysics and Biochemistry at Yale University. His thesis research was focused on using protein design to develop novel methods for imaging proteins and genomic loci in living cells. Prior to attending Yale, Mike graduated with a B. S. in Chemistry from the College of New Jersey.
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