Patentably Reliable Data Transmission in the Age of COVID-19
Last November, as the Corona virus was triggering a COVID-19 pandemic that made the need for reliable digital communication more crucial than it has ever been, the Federal Circuit issued a boon to the telecommunication industry by ruling in Koninklijke KPN NV v. Gemalto N2M GmBH et al. that sufficiently well-defined improvements in the transmission of digital data will be patentable. Even though Koninklijke did not develop its improvement to digital communication in anticipation of a pandemic with lockdowns and forced social isolation, this case illustrates how the patent system rewards innovations that can have inestimable value.
The Koninklijke appeals court decision overturned a lower court’s ruling that U.S. Patent No. 6,212,662 of Hekstra et al., entitled “Method and devices for the transmission of data with transmission error checking,” was invalid because it was directed to non-patent eligible subject matter.
The ’662 patent claims to electronic devices designed for improved data checking in transmitted digital data feeds. The claimed devices generate ‘check data’ from a digital data message being sent to another device, so that the receiving device can confirm the integrity of the data received.
The patent owner, Koninklijke (KPN) N.V., sued Gemalto and others for infringement of the ‘662 patent, but the trial court ruled in favor of Gemalto on the basis that all four claims (claims 1–4) of the ’662 patent were ineligible for patent protection under 35 U.S.C. § 101. In reaching that ruling, the trial court had attempted adhere to analytical framework for identifying patent-eligible subject matter as required by the U.S. Supreme Court in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). Alice requires a court first to decide whether a patent claim merely defines an abstract idea or other non-eligible matter and if so, then to decide whether the claim recites additional elements that amount to significantly more. Under this rubric, the trial court found in step 1 that the disputed claims were drawn to an abstract idea and according to the Federal Circuit, then “entertained the possibility that patent-eligible subject matter is recited in the specification [of the ‘662 patent]” but concluded that the claims are ineligible because KPN’s “purported inventive concept [was] not captured in the claims.”
The claims of the ‘662 patent relate to an improvement to prior art communication devices that are enabled take a given set of data (a “message”) and add “check data” to it, and transmit the message with the check data. The receiving device receives both the message and the check data, generates its own check data from the message, and then compares its check data to the check data from the sender. A discrepancy indicates an error in transmission.
The ‘662 patent adds a step of using a ‘varying device’ to make a simple change (“permutation”) to the message itself before generating the check data. Claim 2 goes farther, by periodically varying the permutation strategy:
1.) A device for producing error checking based on original data provided in blocks with each block having plural bits in a particular ordered sequence, comprising:
a generating device configured to generate check data; and
a varying device configured to vary original data prior to supplying said original data to the generating device as varied data;
wherein said varying device includes a permutating device configured to perform a permutation of bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data.
2.) The device according to claim 1, wherein the varying device is further configured to modify the permutation in time.
For reasons not explained in the Federal Circuit court’s decision, Koninklijke’s appeal did not include claim 1. The asserted advantage of using a time-varying permutation as defined in claim 2 is that doing so will reveal transmission errors that might go undetected when a permutation is used consistently.
In its review of the trial court’s ruling, , the Federal Circuit found in Step 1 of the Alice test that the claims on appeal (claims 2 – 4) were patent eligible “because they are directed to a non-abstract improvement in an existing technological process (i.e., error checking in data transmissions).” Specifically, claim 2 specified a specific implementation of varying the way check data is generated (i.e., by imposing a permutation which is modified “in time”). Drawing an analogy to the court’s earlier ruling in Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299 (Fed. Cir. 2018) in which the court decided that the claimed software process was non-abstract “because it employed “a new kind of file that enable[d] a computer security system to do things it could not do before,” the Koninklijke court found that the claims of the ‘662 patent were likewise directed to a non-abstract improvement, i.e., the employment of a new way of generating check data that enables the detection of persistent systematic errors in data transmissions that prior art systems were previously not equipped to detect.
The Koninklijke case provides a positive example to drafters and defenders of software patents by again pointing to the earmarks of patents that disclose and claim patent-eligible subject matter: the claim should be directed to the concept of the improved invention (“A device for producing error checking based on original data …”), and should recite specific features which are described in the specification as leading to the realization of that improvement (e.g., “a permutating device configured to perform a permutation of bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data (and, in claim 2:) the varying device is further configured to modify the permutation in time.”).
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