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Software Patents Demand Specific, Technologically Grounded Claims

| May 3, 2024

AI Visualize, Inc. vs. Nuance Communications, Inc. and Mach7 Technologies, Inc.

Decided: April 4, 2024

Before: MOORE, Chief Judge, REYNA, and HUGHES, Circuit Judges.

Summary

      The Federal Circuit upheld a district court decision that dismissed AI Visualize’s patent infringement lawsuit against Nuance Communications and Mach7 Technologies. The court agreed with the lower court’s finding that the patents claimed patent-ineligible subject matter under 35 U.S.C. § 101, focusing on abstract ideas without enough inventive concept to warrant patent protection.

Background

      AI Visualize asserted that Nuance Communications and Mach7 Technologies had infringed on its patents related to the visualization of medical scans through a web-based portal. The patents at issue include four patents: U.S. Patent Nos. 8,701,167; 9,106,609; 9,438,667; and 10,930,397. All these patents share a common specification that describes systems and methods aimed at improving the access and visualization of volumetric medical data, such as that obtained from MRI and CT scans, through a web-based portal. The patented technology demonstrates a centralized system that processes medical scan data and visualizes it remotely, allowing efficient transmission of three-dimensional views over low-bandwidth connections, thus facilitating better diagnostic capabilities across diverse medical environments.

      The central dispute revolved around whether the patented methods and systems constituted an abstract idea under the Alice two-step framework. Nuance and Mach7 argued that the patent claims failed to transform this abstract idea into a patent-eligible application due to lack of an inventive concept. The district court agreed, finding that the patents were directed to the basic concept of manipulating and displaying data, a task it considered routine and conventional in the field.

Claim 1 of the ‘609 patent, representing the first group of claims, was central to this dispute.

1.            A system for viewing at a client device at a remote location a series of three-dimensional virtual views over the Internet of a volume visualization dataset contained on at least one centralized database comprising:

at least one transmitter for accepting volume visualization dataset from remote location and transmitting it securely to the centralized database;

at least one central data storage medium containing the volume visualization dataset;

a plurality of servers in communication with the at least one centralized database and capable of processing the volume visualization dataset to create virtual views based on client request;

a resource manager device for load balancing the plurality of servers;

a security device controlling the plurality of communications between a client device, and the server; including resource manager and central storage medium;

at least one physically secured site for housing the centralized database, plurality of servers, at least a resource manager, and at least a security device;

a web application adapted to satisfy a user’s request for the three-dimensional virtual views by: a) accepting at a remote location at least one user request for a series of virtual views of the volume visualization dataset, the series of views comprising a plurality of separate view frames, the remote location having a local data storage medium for storing frames of views of the volume visualization dataset, b) determining if any frame of the requested views of the volume visualization dataset is stored on the local data storage medium, c) transmitting from the remote location to at least one of the servers a request for any frame of the requested views not stored on the local data storage medium, d) at at least one of the servers, creating the requested frames of the requested views from the volume visualization dataset in the central storage medium, e) transmitting the created frames of the requested views from at least one of the servers to the client device, f) receiving the requested views from the at least one server, and displaying to the user at the remote location the requested series of three-dimensional virtual views of the volume visualization dataset by sequentially displaying frames transmitted from at least one of the servers along with any frames of the requested series of views stored on the local data storage medium.

Discussion

      The Federal Circuit’s analysis focused on whether the district court was correct in its application of the Alice two-step test for patent eligibility. This two-step framework is critical for determining whether a patent’s claims involve patent-eligible subject matter under Section 101.

      In the first step of the Alice analysis, the court examines whether the claims at issue are directed to an abstract idea. For AI Visualize’s patents, the Federal Circuit assessed whether the system and method for visualizing medical scans, as claimed, merely recited an abstract concept without applying or using it in a uniquely technological manner.

      The court found that the patents were primarily directed to the abstract idea of manipulating and displaying data, specifically the storage, retrieval, and graphical representation of medical imaging data. The court referenced their conclusion in Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349 (Fed. Cir. 2023), noting that “converting information from one format to another . . . is an abstract idea.”

      Having determined that the claims were directed to an abstract idea, the court then proceeded to step two of the Alice test, which involves determining whether the claim elements, either individually or as an ordered combination, add something significantly more to the abstract idea to transform the claim into patent-eligible subject matter. This “something more” must be an inventive concept that is not merely an instruction to implement or apply the abstract idea on a generic computer or using generic technology.

      In reviewing AI Visualize’s claims, the court concluded that the methods described for processing and visualizing medical data did not involve an inventive concept sufficient to warrant patent protection. The claims were found to involve routine and conventional computer functions that are generic enough to be performed on any computer network. This included the creation of virtual views from medical data, transmitting these views over low-bandwidth networks, and enabling remote access via a web portal—none of which constituted a technological improvement over existing practices.

      AI Visualize cites several sections of the specification to argue that creating virtual views offers a technical solution to a technical problem. This includes a section that explains how dynamic and static virtual views are formed by selecting related image frames from a volume visualization dataset. However, the court declined to consider details from the specification that are not specifically claimed.

      Moreover, the court noted that the claimed invention did not solve a technical problem in an innovative way but rather applied a known solution (data manipulation and visualization) to a practice long prevalent in the field of computer systems.

      The decision reaffirms the strict standards imposed by the Federal Circuit for patent eligibility under Section 101, emphasizing that a patent’s claims must do more than simply apply an abstract idea using conventional and well-understood applications. They must demonstrate a specific, inventive concept that enhances the technological process in a non-obvious way. This ruling highlights the challenges patent applicants face in securing protection for software-based innovations, particularly those that could be viewed as abstract ideas without clear, specific, and technologically rooted implementations.

Takeaway

• The decision reinforces the importance of demonstrating a specific, technologically rooted inventive concept in patent claims, particularly in fields involving software and data manipulation.
• Patents that broadly claim the performance of “abstract ideas” such as data retrieval and display without a clearly defined inventive mechanism are likely to face challenges under 35 U.S.C. § 101.
• It is essential to provide detailed technical descriptions in patent applications and include technological specificity in the patent claims to effectively present the unique contributions.

Federal Circuit Affirms Alice Nix of Poll-Based Networking System

| August 10, 2023

Trinity Info Media v Covalent, Inc.

Decided: July 14, 2023

Before Stoll, Bryson and Cunningham.

Summary: 

            The Federal Circuit affirmed patent ineligibility of the Trinity’s poll-based networking system under Alice.  The claims are directed to the abstract idea of matching based on questioning, something that a human can do.  The additional features of a data processing system, computer system, web server, processor(s), memory, hand-held device, mobile phone, etc. are all generic components providing a technical environment for performing the abstract idea and do not detract from the focus of the claims being on the abstract idea.  The specification also does not support a finding that the claims are directed to a technological improvement in computers, mobile phones, computer systems, etc.

Procedural History: 

            Trinity sued Covalent for infringing US Patent Nos. 9,087,321 and 10,936,685 in 2021.  The district court granted Covalent’s 12(b)(6) motion to dismiss, concluding that the asserted claims are not patent eligible subject matter under 35 USC §101.  Trinity appealed.

Decision: 

Representative claim 1 from the ‘321 patent is as follows:

A poll-based networking system, comprising:

a data processing system having one or more processors and a memory, the memory being specifically encoded with instructions such that when executed, the instructions cause the one or more processors to perform operations of:

receiving user information from a user to generate a unique user profile for the user;

providing the user a first polling question, the first polling question having a finite set of answers and a unique identification;

receiving and storing a selected answer for the first polling question;

comparing the selected answer against the selected answers of other users, based on the unique identification, to generate a likelihood of match between the user and each of the other users; and

displaying to the user the user profiles of other users that have a likelihood of match within a predetermined threshold.

Representative claim 2 from the ‘685 patent is as follows:

A computer-implemented method for creating a poll-based network, the method comprising an act of causing one or more processors having an associated memory specifically encoded with computer executable instruction means to execute the instruction means to cause the one or more processors to collectively perform operations of:

receiving user information from a user to generate a unique user profile for the user;

providing the user one or more polling questions, the one or more polling ques-tions having a finite set of answers and a unique identification;

receiving and storing a selected answer for the one or more polling questions;

comparing the selected answer against the selected answers of other users, based on the unique identification, to generate a likelihood of match between the user and each of the other users;

causing to be displayed to the user other users, that have a likelihood of match within a predetermined threshold;

wherein one or more of the operations are carried out on a hand-held device; and

wherein two or more results based on the likelihood of match are displayed in a list reviewable by swiping from one result to another.

Looking at the claims first, the claimed functions of (1) receiving user information; (2) providing a polling question; (3) receiving and storing an answer; (4) comparing that answer to generate a “likelihood of match” with other users; and (5) displaying certain user profiles based on that likelihood are all merely collecting information, analyzing it, and displaying certain results which fall in the “familiar class of claims ‘directed to’ a patent ineligible concept,” which a human mind could perform.  The court agreed with the district court’s finding that these claims are directed to an abstract idea of matching based on questioning.

The ‘685 patent adds the further function of reviewing matches using swiping and a handheld device.  These features did not alter the court’s decision.  The dependent claims also added other functional variations, such as performing matching based on gender, varying the number of questions asked, displaying other users’ answers, etc.  These are all trivial variations that are themselves abstract ideas.  The further recitation of the hand-held device, processors, web servers, database, and a “match aggregator” did not change the “focus” of the asserted claims.  Instead, such generic computer components were merely limitations to a particular environment, which did not make the claims any less abstract for the Alice/Mayo Step 1.

With regard to software-based inventions, the Alice/Mayo Step 1 inquiry “often turns on whether the claims focus on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool.”  In addressing this, the court looks at the specification’s description of the “problem facing the inventor.”  Here, the specification framed the inventor’s problem as how to improve existing polling systems, not how to improve computer technology.  As such, the specification confirms that the invention is not directed to specific technological solutions, but rather, is directed to how to perform the abstract idea of matching based on progressive polling.

Under Alice/Mayo Step 2, the claimed use of general-purpose processors, match servers, unique identifications and/or a match aggregator is merely to implement the underlying abstract idea.  The specification describes use of “conventional” processors, web servers, the Internet, etc.  The court has “ruled many times” that “invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea.”  And, no inventive concept is found where claims merely recite “generic features” or “routine functions” to implement an underlying abstract idea.

Trinity’s Argument 1

Claim construction and fact discovery was necessary, but not done, before analyzing the asserted claims under §101.

Federal Circuit’s Response 1

“A patentee must do more than invoke a generic need for claim construction or discovery to avoid grant of a motion to dismiss under § 101.  Instead, the patentee must propose a specific claim construction or identify specific facts that need development and explain why those circumstances must be resolved before the scope of the claims can be understood for § 101 purposes.” 

Trinity’s Argument 2

Under Alice/Mayo Step One, the claims included an “advance over the prior art” because the prior art did not carry out matching on mobile phones, did not employ “multiple match servers” and did not employ “match aggregators.”

Federal Circuit’s Response 2

A claim to a “new” abstract idea is still an abstract idea.

Trinity’s Argument 3

Humans cannot mentally engage in the claimed process because humans could not perform “nanosecond comparisons” and aggregate “result values with huge numbers of polls and members” nor could humans select criteria using “servers, storage, identifiers, and/or thresholds.”

Federal Circuit’s Response 3

The asserted claims do not require “nanosecond comparisons” nor “huge numbers of polls and members.”

Trinity’s claims can be directed to an abstract idea even if the claims require generic computer components or require operations that a human cannot perform as quickly as a computer.  Compare, for example, with Electric Power Group, where the court held the claims to be directed to an abstract idea even though a human could not detect events on an interconnected electric power grid in real time over a wide area and automatically analyze the events on that grid.  Likewise, in ChargePoint (electric car charging network system), claims directed to enabling “communication over a network” were abstract ideas even though a human could not communicate over a computer network without the use of a computer.

Trinity’s Argument 4

Claims are eligible inventions directed to improvements to the functionality of a computer or to a network platform itself.

Federal Circuit’s Response 4

As described in the specification, mere generic computer components, e.g., a conventional computer system, server, web server, data processing system, processors, memory, mobile phones, mobile apps, are used.  Such generic computer components merely provide a generic technical environment for performing an abstract idea.  The specification does not describe the invention of swiping or improving on mobile phones.  Indeed, the ‘685 patent describes the “advent of the internet and mobile phones” as allowing the establishment of a “plethora” or “mobile apps.”  As such, “the specification does not support a finding that the claims are directed to a technological improvement in computer or mobile phone functionality.”

Trinity’s Argument 5

The district court failed to properly consider the comparison of selected answers against other uses “based on the unique identification” which was a “non-traditional design” that allowed for “rapid comparison and aggregation of result values even with large numbers of polls and members.” 

Federal Circuit’s Response 5

Use of a “unique identifier” does not render an abstract idea any less abstract.

On the other hand, the “non-traditional design” appears to be based on use of an “in-memory, two-dimensional array” that “provides for linear speed across multiple match servers” and permits “an immediate comparison to determine if the user had the same answer to that of another user.”  However, the asserted claims do not require any such in-memory, two-dimensional array.

Trinity’s Argument 6

The district court failed to properly consider the generation of a likelihood of a match “within a predetermined threshold.”  Without this consideration, “there would be no limit or logic associated with the volume or type of results a user would receive.” 

Federal Circuit’s Response 6

This merely addresses the kind of data analysis that the abstract idea of matching would include, namely how many answers should be the same before declaring a match.  This does not change the focus of the claimed invention from the abstract idea of matching based on questioning.

Trinity’s Argument 7

There is an inventive concept under Alice/Mayo Step 2 because the claims recite steps performed in a “non-traditional system” that can “rapidly connect multiple users using progressive polling that compare[s] answers in real time based on their unique identification (ID) (and in the case of the ’685 patent employ swiping)” which “represents a significant advance over the art.”

Federal Circuit’s Response 7

These conclusory assertions are insufficient to demonstrate an inventive concept.  “We disregard conclusory statements when evaluating a complaint under Rule 12(b)(6).”

Takeaways: 

The evisceration of software-related inventions as abstract ideas continues.  Although the court looks at the “claimed advance over the prior art” in assessing the “directed to” inquiry under Alice Step 1, conclusory assertions of advances over the prior art are insufficient to demonstrate inventive concept under Alice Step 2, at least for a 12(b)(6) motion to dismiss.  It remains to be seen what type of description of an “advance over the prior art” would not be “conclusory” and satisfy the “significantly more” inquiry to be an inventive concept under Alice Step 2.

The one glimmer of hope for the patentee might have been the use of an “in-memory, two-dimensional array” that “provides for linear speed across multiple match servers.”  An example of patent eligibility based on use of such logical structures can be found in Enfish.  However, if the specification does not describe this use of an in-memory two-dimensional array and the “technological” improvement resulting therefrom to be the “focus” of the invention, even this feature might not be enough to survive § 101.

Limitations of Result-Based Functional Language and Generic Computer Components in Patent Eligibility

| May 2, 2023

Hawk Technology Systems, Llc V. Castle Retail, LLC

Before REYNA, HUGHES, and CUNNINGHAM, Circuit Judges.

Summary

      The district court granted Castle Retail’s motion, finding that the patent claims were directed towards the abstract idea of storing and displaying video without providing an inventive step to transform the abstract idea into a patent-eligible invention. The district court dismissed Hawk’s case, and Hawk appealed. The Federal Circuit upheld the district court’s decision, affirming that the patent claims were invalid under 35 U.S.C. § 101.

Background

      Hawk Technology Systems is the owner of a US Patent  No. 10,499,091 ( the ’91 patent) entitled “High-Quality, Reduced Data Rate Streaming Video Product and Monitoring System.” The patent was filed in 2017 and granted in 2019, with priority claimed back to 2002. It describes a technique for displaying multiple stored video images on a remote viewing device in a video surveillance system, using a configuration that utilizes existing broadband infrastructure and a generic PC-based server to transmit signals from cameras as streaming sources at low data rates and variable frame rates. The patent claims that this approach reduces costs, minimizes memory storage requirements, and enhances bandwidth efficiency.

      Hawk Technology Systems sued Castle Retail for patent infringement in Tennessee, alleging that Castle Retail’s use of security surveillance video operations in its grocery stores infringed on Hawk’s patent. Castle Retail moved to dismiss the case, arguing that the patent claims were invalid under 35 U.S.C. § 101, as they were directed towards ineligible subject matter.

      The ‘091 patent contains six claims, but the appellant, Hawk Technology Systems, did not assert that there was any significant difference between the claims regarding eligibility. As a result, claim 1 was selected as representative, which recites:

1. A method of viewing, on a remote viewing device of a video surveillance system, multiple simultaneously displayed and stored video images, comprising the steps of:

receiving video images at a personal computer based system from a plurality of video sources, wherein each of the plurality of video sources comprises a camera of the video surveillance system;

digitizing any of the images not already in digital form using an analog-to-digital converter;

displaying one or more of the digitized images in separate windows on a personal computer based display device, using a first set of temporal and spatial parameters associated with each image in each window;

converting one or more of the video source images into a selected video format in a particular resolution, using a second set of temporal  and spatial  parameters associated with each image;

contemporaneously   storing   at   least   a subset of the converted images in a storage device in a network environment;

providing a communications link to allow an external viewing device to access the storage device;

receiving, from a remote viewing device remoted located remotely from the video surveillance system, a request to receive one or more specific streams of the video images;

transmitting, either directly from one or more of the plurality of video sources or from the storage device over the communication link to the remote viewing device, and in the selected video format in the particular resolution, the selected video format being a progressive video format which has a frame rate of less than substantially 24 frames per second using a third set of temporal and spatial parameters associated with each image, a version or versions of one or more of the video images to the remote viewing device, wherein the communication link traverses an external broadband connection between the remote computing device and the network environment; and

displaying only the one or more requested specific streams of the video images on the remote computing device.

      In September 2021, the district court granted Castle Retail’s motion to dismiss the case. The court found that the claims in Hawk’s ‘091 patent failed the two-part Alice test. The court determined that the ‘091 patent is directed to an abstract idea of a method for storing and displaying video, and that the claimed elements are generic computer elements without any technological improvement.

      Hawk’s argument that the temporal and spatial parameters are the inventive concept was also rejected, as the claims and specification failed to explain what those parameters are or how they should be manipulated. The district court also found that the claimed “analog-to-digital converter” and “personal computer based system” were not technological improvements, but rather generic computer elements. Additionally, it determined that the “parameters and frame rate” defined in the claims and specification did not appear to be more than manipulating data in a way that has been found to be abstract.

      The district court concluded that the claims can be implemented using off-the-shelf, conventional computer technology and entered judgment against Hawk. Hawk appealed the decision.

Discussion   

       The Federal Circuit applied Alice step one in this case to determine if the ’091 patent claims were directed to an abstract idea. They agreed with the district court’s conclusion that the claims were directed to the abstract idea of  “storing and displaying video.”

      The Federal Circuit further clarified that the claims are directed to a method of receiving, displaying, converting, storing, and transmitting digital video “using result-based functional language.” Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017). The claims require various functional results of “receiving video images,” “digitizing any of the images not already in digital form,” “displaying one or more of the digitized images,” “converting one or more of the video source images into a selected video format,” “storing at least a subset of the converted images,” “providing a communications link,” “receiving . . . a request to receive one or more specific streams of the video images,” “transmitting . . . a version of one or more of the video images,” and “displaying only the one or more requested specific streams of the video images.” 

      Hawk argued that the ’091 patent claims were not directed to an abstract idea but to a specific technical problem and solution related to maintaining full-bandwidth resolution while providing professional quality editing and manipulation of digital video images. However, this argument failed because the Federal Circuit found that the claims themselves did not disclose how the alleged goal was achieved and that converting information from one format to another is an abstract idea. Furthermore, the claims did not recite a specific solution to make the alleged improvement concrete and, at most, recited abstract data manipulation. Therefore, the ’091 patent claims lacked sufficient recitation of how the purported invention improved the functionality of video surveillance systems and amounted to a mere implementation of an abstract idea.

      At Alice step two, the claim elements were examined individually and as a combination to determine if they transformed the claim into a patent-eligible application of the abstract idea. The district court found that the claims did not show a technological improvement in video storage and display and that the limitations could be implemented using generic computer elements.

      Hawk argued that the claims provided an inventive solution that achieved the benefit of transmitting the same digital image to different devices for different purposes while using the same bandwidth, citing specific tools, parameters, and frame rates.     The Federal Circuit acknowledged that the claims mentioned “parameters.” However, the claims did not specify what these parameters were, and at most they pertained to abstract data manipulation such as image formatting and compression. Hawk did not contest that the claims involved conventional components to carry out the method. The Federal Circuit also noted that the ‘091 patent affirmed that the invention was meant to “utilize” existing broadband media and other conventional technologies. Thus, the Federal Circuit found that there is nothing inventive in the ordered combination of the claim limitations and noted that Hawk has not pointed to anything inventive.

      The Federal Circuit determined that the claims in the ‘091 patent did not transform the abstract concept into something substantial and therefore did not pass the second step of the Alice test. As a result, the Federal Circuit concluded that the ‘091 patent is ineligible since its claims address an abstract idea that was not transformed into eligible subject matter.       

Takeaway

• Reciting an abstract idea performed on a set of generic computer components does not contain an inventive concept.
• Claims that use result-based functional language in combination with generic computer components may not be sufficient to transform an abstract idea into patent-eligible subject matter.

CLAIMS SHOULD PROVIDE SUFFICIENT SPECIFICITY TO IMPROVE THE UNDERLYING TECHNOLOGY

| September 30, 2021

Universal Secure Registry LLC, v. Apple Inc., Visa Inc., Visa U.S.A. Inc.

Before TARANTO, WALLACH, and STOLL, Circuit Judges. STOLL

Summary

      The Federal Circuit upheld a decision that all claims of the asserted patents are directed to an abstract idea and that the claims contain no additional elements that transform them into a patent-eligible application of the abstract idea.

Background

      USR sued Apple for allegedly infringing U.S. Patent Nos. 8,856,539; 8,577,813; 9,100,826; and 9,530,137 that are directed to secure payment technology for electronic payment transactions. The four patents involve different authentication technology to allow customers to make credit card transactions “without a magnetic-stripe reader and with a high degree of security.”

      The magistrate judge determined that all the representative claims were not directed to an abstract idea. Particularly it was concluded that the claimed invention provided a more secure authentication system. The magistrate judge also explained that the non-abstract idea determination is based on that “the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” However, the district court judge disagreed and concluded that the asserted claims failed at both Alice steps and the claimed invention was directed to the abstract idea of “the secure verification of a person’s identity.” The district court explained that the patents did not disclose an inventive concept—including an improvement in computer functionality—that transformed the abstract idea into a patent-eligible application.

      The Federal Circuit concluded that the asserted patents claim unpatentable subject matter and thus upheld the district court’s decision.

Discussion

      The Federal Circuit addressed all asserted patents. The claims in the four patents have fared similarly. The discussion here is focused on the ‘137 patent. The ’137 patent is a continuation of the ’826 patent and discloses a system for authenticating the identities of users. Claim 12 is representative of the ’137 patent claims at issue, reciting

12. A system for authenticating a user for enabling a transaction, the system comprising:

a first device including:

a biometric sensor configured to capture a first biometric information of the user;

a first processor programmed to: 1) authenticate a user of the first device based on secret information, 2) retrieve or receive first biometric information of the user of the first device, 3) authenticate the user of the first device based on the first biometric, and 4) generate one or more signals including first authentication information, an indicator of biometric authentication of the user of the first device, and a time varying value; and

a first wireless transceiver coupled to the first processor and programmed to wirelessly transmit the one or more signals to a second device for processing;

wherein generating the one or more signals occurs responsive to valid authentication of the first biometric information; and

wherein the first processor is further programmed to receive an enablement signal indicating an approved transaction from the second device, wherein the enablement signal is provided from the second device based on acceptance of the indicator of biometric authentication and use of the first authentication information and use of second authentication information to enable the transaction.

      Claim 12 recites a system for authenticating the identities of users, including a first device. The first device can include a biometric sensor, a first processor, and a first wireless transceiver, where the device utilizes authentication of a user’s identity to enable a transaction.   

      The district court emphasized that the claims recite, and the specification discloses, generic well-known components—“a device, a biometric sensor, a processor, and a transceiver—performing routine functions—retrieving, receiving, sending, authenticating—in a customary order.”

      The Federal Circuit agreed with the district court and found that the claims of ‘137 patent include some limitations but still are not sufficiently specific. The Federal Circuit cited their previous decision, Solutran, Inc. v. Elavon, Inc (Fed. Cir. 2019) that held claims abstract “where the claims simply recite conventional actions in a generic way” without purporting to improve the underlying technology. The Court explained that claim 12 does not tell a person of ordinary skill what comprises the secret information, first authentication information, and second authentication information.

      USR cited Finjan, Inc. v. Blue Coat Systems, Inc (Fed. Cir. 2018), arguing that the claim is akin to the claim in Finjan whose claims are directed to a method of providing computer security by scanning a downloadable file and attaching the scanned results to the downloadable file in the form of a “security profile.” However, the Court differentiated Finjan, explaining that Finjan employed a new kind of file enabling a computer system to do things it could not do before, namely “behavior-based” virus scans. In contrast, the claimed invention combines conventional authentication techniques to achieve an expected cumulative higher degree of authentication integrity. The claimed idea of using three or more conventional authentication techniques to achieve a higher degree of security is abstract without some unexpected result or improvement. The Court also acknowledged that some of the dependent claims provide more specificity on these aspects, but still concluded the claimed is still merely conventional and the specification discloses that each authentication technique is conventional.

      The district court also turned to Alice step two to determine that claim 12 “lacks the inventive concept necessary to convert the claimed system into patentable subject matter.” USR asserted that the use of a time-varying value, a biometric authentication indicator, and authentication information that can be sent from the first device to the second device form an inventive concept. The Federal Circuit rejected this argument, explaining that the specification makes clear that each of these devices and functions is conventional because the patent acknowledged that the step of generating time-varying codes for authentication of a user is conventional and long-standing. USR further argued that authenticating a user at two locations constitutes an inventive concept because it is locating the authentication functionality at a specific, unconventional location within the network. However, the Court found that the specification of the patent suggests that the claims only recite a conventional location for the authentication functionality and thus rejected the argument. The court further stated that there is nothing in the specification suggesting, or any other factual basis for a plausible inference (as needed to avoid dismissal), that the combination of these conventional authentication techniques results in an unexpected improvement beyond the expected sum of the security benefits of each individual authentication technique.

      The Federal Circuit ruled that all the patents simply described well-known and conventional ways to perform authentication and did not include any technological improvements that transformed those abstract ideas into patent-eligible inventions. The Court also cited  several of its previous decisions related to patent invalidity under Alice, noting that “patent eligibility often turns on whether the claims provide sufficient specificity to constitute an improvement to computer functionality itself.”

Takeaway

• An abstract idea is not patentable if it does not provide an inventive solution to a problem in implementing the idea.
• Claims may be abstract even when they are directed to physical devices but include generic well-known components that perform conventional actions in a generic way without improving the underlying technology or only to achieve an expected cumulative improvement.

Tailored Advertising Claims Are Invalidated Due to Lack of Improvements to Computer Functionality

| June 8, 2021

Free Stream Media Corp., DBA Samba Tv, V. Alphonso Inc., Ashish Chordia, Lampros Kalampoukas, Raghu Kodige

Decided on May 11, 2021

Before DYK, REYNA, and HUGHES. Opinion by REYNA.

Summary

       The Federal Circuit reversed the district court’s decision and found that the asserted claims directed to tailored advertising were patent ineligible under 35 U.S.C. § 101.

Background

       Free Stream sued Alphonso for infringement of its US patents No. 9,026,668 (“the ’668 patent”) and No. 9,386,356 (“the ’356 patent”). The patents describe a system sending tailored advertisements to a mobile phone user based on data gathered from the user’s television. Claim 1 and 10 were involved in the alleged infringement. Free Stream conceded claims 1 and 10 are similar.  Listed below is claim 1.

1. A system comprising:

a television to generate a fingerprint data;

a relevancy-matching server to:

match primary data generated from the fingerprint data with targeted data, based on a relevancy factor, and

search a storage for the targeted data;

wherein the primary data is any one of a content identification data and a content identification history;

a mobile device capable of being associated with the television to:

              process an embedded object,

              constrain an executable environment in a security sandbox, and

execute a sandboxed application in the executable environment; and

              a content identification server to:

                           process the fingerprint data from the television, and

communicate the primary data from the fingerprint data to any of a number of devices with an access to an identification data of at least one of the television and an automatic content identification service of the television.

       The asserted claims of ‘356 patent includes three main components: (1) a television (e.g., a smart TV) or a networked device ; (2) a mobile device or a client device ; and (3) a relevancy matching server and a content identification server. The television is a network device collecting primary data, which can consist of program information, location, weather information, or identification information. The mobile phone is a client device that may be smartphones, computers, or other hardware showing advertisements. The client device includes a security sandbox, which is a security mechanism for separating running programs. Finally, the servers use primary data from the networked device to select advertisements or other targeted data based on a relevancy factor associated with the user.

       Alphonso argued that the asserted claims are patent ineligible under § 101 because they are directed to the abstract idea of tailored advertising.  But Free Stream characterized the claims as directed to a specific improvement of delivering relevant content (e.g., targeted advertising) by bypassing the conventional “security sandbox” separating the mobile phone from the television.

       The district court rejected Alphonso’s argument and applied step one of the Alice test to conclude that the asserted claims are not directed to an abstract idea.  The district court found that the ’356 patent “describes systems and methods for addressing barriers to certain types of information exchange between various technological devices, e.g., a television and a smartphone or tablet being used in the same place at the same time.”

Discussion

       The Federal Circuit agreed with Alphonso’s contention that the district court erred in concluding that the ’356 patent is not directed to patent-ineligible subject matter. Claims 1 and 10 were reviewed by the Federal Circuit as being directed to (1) gathering information about television users’ viewing habits; (2) matching the information with other content (i.e., targeted advertisements) based on relevancy to the television viewer; and (3) sending that content to a second device.

       Free Stream contended that claim 1 is “specifically directed to a system wherein a television and a mobile device are intermediated by a content identification server and relevancy-matching server that can deliver to a ‘sandboxed’ mobile device targeted data based on content known to have been displayed on the television, despite the barriers to communication imposed by the sandbox.” Free Stream also asserted that its invention allows devices on the same network to communicate where such devices were previously unable to do so, namely bypassing the sandbox security.

       The Federal Circuit, however, noted that the specification does not provide for any other mechanism that can be used to bypass the security sandbox other than “through a cross site scripting technique, an appended header, a same origin policy exception, and/or an other mode of bypassing

a number of access controls of the security sandbox.” Also, the Federal Circuit pointed out that the asserted claims only state the mechanism used to achieve the bypassing communication but not at all describe how that result is achieved.

       Further, the Federal Circuit went on to note that “even assuming the specification sufficiently discloses how the sandbox is overcome, the asserted claims nonetheless do not recite an improvement in computer functionality.” The asserted claims do not incorporate any such limitations of bypassing the sandbox. The Federal Circuit determined that the claims were directed to the abstract idea of “targeted advertising.”

       The Federal Circuit further reached Step 2 because the district court concluded that the claims were not directed to an abstract idea at Step 1. Free Stream argued that the claims of the ’356 patent “specify the components or methods that permit the television and mobile device to operate in [an] unconventional manner, including the use of fingerprinting, a content identification server, a relevancy-matching server, and bypassing the mobile device security sandbox.”

       The argument on Step 2 was also directed around bypassing sandbox security. The Federal Circuit explained that the security sandbox may limit access to the network, but the claimed invention simply seeks to undo that by “working around the existing constraints of the conventional functioning of television and mobile devices.” It was concluded that “such a ‘work around’ or ‘bypassing’ of a client device’s sandbox security does nothing more than describe the abstract idea of providing targeted content to a client device.” The Federal Circuit emphasized that “an abstract idea is not patentable if it does not provide an inventive solution to a problem in implementing the idea.” Finally, the Federal Circuit found that the asserted claims simply utilized generic computing components arranged in a conventional manner but failed to embody an “inventive solution to a problem.”

Takeaway

• An abstract idea is not patentable if it does not provide an inventive solution to a problem in implementing the idea.
• The “work-around” does not add more features that give rise to a Step 2 “inventive concept.”

Quality and Quantity of Specification Support in Determining Patent Eligibility

| March 19, 2021

Simio, LLC v Flexsim Software Products, Inc.

December 29, 2020

Prost, Clevenger, and Stoll

Summary: 

            In upholding a district court’s finding of patent ineligibility for a computer-based system for object-oriented simulation, the Federal Circuit uses a new “quality and quantity” assessment of the specification’s description of an asserted claim limitation that supposedly supports the claim being directed to an improvement in computer functionality (and not an abstract idea).  Here, numerous portions of the specification emphasized an improvement for a user to build object-oriented models for simulation using graphics, without the need to do any programming.  This supported the court’s finding that the character of the claim as a whole is directed to an abstract idea – of using graphics instead of programming to create object-oriented simulation models.  In contrast to the numerous specification descriptions supporting the abstract idea focus of the patent, one claimed feature that Simio asserted as reflecting an improvement in computer functionality was merely described in just one instance in the specification. This “disparity in both quality and quantity” between the specification support of the abstract idea versus the specification support for the asserted claim feature does not change the claim as a whole as being directed to the abstract idea.

Procedural History: 

Simio, LLC sued FlexSim Software Products, Inc. for infringing U.S. Patent No. 8,156,468 (the ‘468 patent).  FlexSim moved for judgment on the pleadings under Rule 12(b)(6) for failing to state a claim upon which relief could be granted because the claims of the ‘468 patent are patent ineligible under 35 USC § 101.  The district court granted that motion and dismissed the case.  The Federal Circuit affirmed.

Background: 

            Representative claim 1 of the ‘417 patent follows:

A computer-based system for developing simulation models on a physical computing device, the system comprising:

one or more graphical processes;

one or more base objects created from the one or more graphical processes,

wherein a new object is created from a base object of the one or more base objects by a user by assigning the one or more graphical processes to the base object of the one or more base objects;

wherein the new object is implemented in a 3-tier structure comprising:

an object definition, wherein the object definition includes a behavior,

one or more object instances related to the object definition, and

one or more object realizations related to the one or more object instances;

wherein the behavior of the object definition is shared by the one or more object instances and the one or more object realizations; and

an executable process to add a new behavior directly to an object instance of the one or more object instances without changing the object definition and the added new behavior is executed only for that one instance of the object.

Computer-based simulations can be event-oriented, process-oriented, or object-oriented.  Earlier object-oriented simulation platforms used programming-based tools that were “largely shunned by practitioners as too complex” according to the ‘468 patent.  Use of graphics emerged in the 1980s and 1990s to simplify building simulations, via the advent of Microsoft Windows, better GUIs, and new graphically based tools.  Along this graphics trend, the ‘468 patent focuses on making object-oriented simulation easier for users to build simulations using graphics, without any need to write programming code to create new objects.

Decision: 

            Under Alice step one’s “directed to” inquiry, the court asks “what the patent asserts to be the focus of the claimed advance over the prior art.”  To answer this question, the court focuses on the claim language itself, read in light of the specification. 

Here, the preamble relates the claim to “developing simulation models,” and the body of the claim recites “one or more graphical processes,” “one or more base objects created from the one or more graphical processes,” and “wherein a new object is created from a base object … by assigning the one or more graphical processes to the base object…”  There is also the last limitation (the “executable-process limitation”).  Although other limitations exist, Simio did not rely on them for its eligibility arguments. 

            The court considered these limitations in view of the specification.  The ‘468 patent acknowledged that using graphical processes to simplify simulation building has been done since the 1980s and 1990s.  And, the ‘468 patent specification states:

“Objects are built using the concepts of object-orientation. Unlike other object-oriented simulation systems, however, the process of building an object in the present invention is simple and completely graphical.  There is no need to write programming code to create new objects.”  ‘468 patent, column 8, lines 22-26 (8:22-26).

“Unlike existing object-oriented tools that require programming to implement new objects, Simio™ objects can be created with simple graphical process flows that require no programming.” 4:39-42.

“By making object building a much simpler task that can be done by non-programmers, this invention can bring an improved object-oriented modeling approach to a much broader cross-section of users.” 4:47-50.

“The present invention is designed to make it easy for beginning modelers to build their own intelligent objects … Unlike existing object-based tools, no programming is required to add new objects.” 6:50-53.

“In the present invention, a graphical modeling framework is used to support the construction of simulation models designed around basic object-oriented principles.” 8:60-62.

“In the present invention, this logic is defined graphically … In other tools, this logic is written in programming languages such as C++ or Java.” 9:67-10:3.

Taking the claim limitations, read in light of the specification, the court concludes that the key advance is simply using graphics instead of programming to create object-oriented simulations.  “Simply applying the already-widespread practice of using graphics instead of programming to the environment of object-oriented simulations is no more than an abstract idea.”  “And where, as here, ‘the abstract idea tracks the claim language and accurately captures what the patent asserts to be the focus of the claimed advance …, characterizing the claim as being directed to an abstract idea is appropriate.’”

Simio argued that claim 1 “improves on the functionality of prior simulation systems through the use of graphical or process modeling flowcharts with no programming code requited.”  However, an improvement emphasizing “no programming code required” is an improvement for a user – not an improvement in computer functionality.  An improvement in a user’s experience (not having to write programming code) while using a computer application does not transform the claims to be directed to an improvement in computer functionality.    

Simio also argued that claim 1 improves a computer’s functionality “by employing a new way of customized simulation modeling with improved processing speed.”  However, improved speed or efficiency here is not that of the computer, but rather that of the user’s ability to build or process simulation models faster using graphics instead of programming.  In other words, the improved speed or efficiency is not that of computer functionality, but rather, a result of performing the abstract idea with well-known structure (a computer) by a user.

Simio finally argued that the last limitation, the executable-process limitation reflects an improvement to computer functionality.  It is with regard to this last argument that the court introduces a new “quality and quantity” assessment of the specification.  In particular, the court noted that “this limitation does not, by itself, change the claim’s ‘character as a whole’ from one directed to an abstract idea to one that’s not.”  As support of this assessment of the claim’s “character as a whole,” the court cited to at least five instances of the specification emphasizing graphical simulation modeling making model building easier without any programming, in contrast to a single instance of the specification describing the executable process limitation: 

Compare, e.g., ’468 patent col. 4 ll. 29–42 (noting that “the present invention makes model building dramatically easier,” as “Simio™ objects” can be created with graphics, requiring no programming), and id. at col. 4 ll. 47–50 (describing “this invention” as one that makes object-building simpler, in that it “can be done by non-programmers”), and id. at col. 6 ll. 50–53 (describing “[t]he present invention” as one requiring no programming to build objects), and id. at col. 8 ll. 23–26 (“Unlike other object-oriented simulation systems, however, the process of building an object in the present invention is simple and completely graphical.  There is no need to write programming code to create new objects.”), and id. at col. 8 ll. 60–62 (“In the present invention, a graphical modeling frame-work is used to support the construction of simulation models designed around basic object-oriented principles.”), with col. 15 l. 45–col. 16 l. 6 (describing the executable-process limitation).  This disparity—in both quality and quantity—between how the specification treats the abstract idea and how it treats the executable-process limitation suggests that the former remains the claim’s focus.

            Even Simio’s own characterization of the executable-process limitation closely aligns with the abstract idea: (a) that the limitation reflects that “a new behavior can be added to one instance of a simulated object without the need for programming” and (b) that the limitation reflects an “executable process that applies the graphical process to the object (i.e., by applying only to the object instance not to the object definition).”  Although this is more specific than the general abstract idea of applying graphics to object-oriented simulation, this merely repeats the above-noted focus of the patent on applying graphical processes to objects and without the need for programming.  As such, this executable-process limitation does not shift the claim’s focus away from the abstract idea.

            At Alice step two, Simio argued that the executable-process limitation provides an inventive concept.  However, during oral arguments, Simio conceded that the functionality reflected in the executable-process limitation was conventional or known in object-oriented programming.  In particular, implementing the executable process’s functionality through programming was conventional or known.  Doing so through graphics does not confer an inventive concept.  What Simio relies on is just the abstract idea itself – use of graphics in object-oriented simulation.  Reliance on the abstract idea itself cannot supply the inventive concept that renders the invention “significantly more” than that abstract idea.

            Even if the use of graphics instead of programming to create object-oriented simulations is new, a claim directed to a new abstract idea is still an abstract idea – lacking any meaningful application of the abstract idea sufficient to constitute an inventive concept to save the claim’s eligibility.

Takeaways: 

1. This case serves a good reminder of the importance of proper specification drafting to address 101 issues such as these.  An “improvement” that can be deemed an abstract idea (e.g., use graphics instead of programming) will not help with patent eligibility.  The focus of an “improvement” to support patent eligibility must be technological (e.g., in order to use graphics instead of programming in object-oriented simulation modeling, this new xyz procedure/data structure/component replaces the programming interface previously required…).  “Technological” is not to be confused with being “technical” – which could mean just disclosing more details, albeit abstract idea type of details that will not help with patent eligibility.  Here, even a “new” abstract idea does not diminish the claim still being “directed to” that abstract idea, nor rise to the level of an inventive concept.  Improving user experience is not technological.  Improving a user’s speed and efficiency is not technological.  Improving computer functionality by increasing its processing speed and efficiency could be sufficiently technological IF the specification explains HOW.  Along the lines of Enfish, perhaps new data structures to handle a new interface between graphical input and object definitions may be a technological improvement, again, IF the specification explains HOW (and if that “HOW” is claimed).  In my lectures, a Problem-Solution-Link methodology for specification drafting helps to survive patent eligibility.  Please contact me if you have specification drafting questions.

• This case also serves as a good reminder to avoid absolute statements such as “the present invention is …” or “the invention is… .”  There is caselaw using such statements to limit claim interpretation.  Here, it was used to ascertain the focus of the claims for the “directed to” inquiry of Alice step one.  The more preferrable approach is the use of more general statements, such as “at least one benefit/advantage/improvement of the new xyz feature is to replace the previous programming interface with a graphical interface to streamline user input into object definitions…”

• This decision’s “quality and quantity” assessment of the specification’s focus on the executable-process limitation provides a new lesson.  Whatever is the claim limitation intended to “reflect” an improvement in technology, there should be sufficient specification support for that claim limitation – in quality and quantity – for achieving that technological improvement.  Stated differently, the key features of the invention must not only be recited in the claim, but also, be described in the specification to achieve the technological improvement, with an explanation as to why and how.

• This is yet another unfortunate case putting the Federal Circuit’s imprimatur on the flawed standard to find the “the focus of the claimed advance over the prior art” in Alice step one, albeit not as unfortunate as Chamberlain v Techtronic (certiorari denied) or American Axle v Neapco (still pending certiorari).  In another lecture, I explain why the “claimed advance” standard is problematic and why it contravenes Supreme Court precedent.  Briefly, the claimed advance standard is like the “gist” or “heart” of the invention standard of old that was nixed.  In Aro Mfg. Co. v. Convertible Top Replacement Co., the Supreme Court stated that “there is no legally recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the invention in a combination patent.”  In §§102 and 103 issues, the Federal Circuit said distilling an invention down to its “gist” or “thrust” disregards the claim “as a whole” requirement.  Likewise, stripping the claim of all its known features down to its “claimed advance over the prior art” is also contradictory to the same requirement to consider the claim as a whole under section 101.  Moreover, the claimed advance standard contravenes the Supreme Court’s warnings in Diamond v Diehr that “[i]t is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. … [and] [t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possibly patentable subject matter.”  Furthermore, the origins of the claimed advance standard have not been vetted.  Originally, the focus was on finding a practical application of an abstract idea in the claim.  This search for a practical application morphed, without proper legal support, into today’s claimed advance focus in Alice step one.  Interestingly enough, since the 2019 PEG, the USPTO has not substantively revised its subject matter eligibility guidelines to incorporate any of the recent “claimed advance” Federal Circuit decisions.

Printed Matter Challenge to Patent Eligiblity

| December 11, 2020

C R Bard Inc. v. AngioDynamics Inc.

November 10, 2020

Opinion by:  Reyna, Schall, and Stoll (November 10, 2020).

Summary: 

            A vascular access port patent recited “identifiers” that were not given patentable weight under the printed matter doctrine.  Printed matter constitutes an abstract idea under Alice step 1.  Nevertheless, even though printed matter was not given any patentable weight and the claim was directed to printed matter under Alice step 1, the claims were found eligible under Alice step 2.      

Background: 

            Bard sued AngioDynamics in the District of Delaware for infringing U.S. Patent Nos. 8,475,417, 8,545,460, and 8,805,478.  One representative claim is claim 1 of the ‘417 patent:

An assembly for identifying a power injectable vascular access port, comprising:

a vascular access port comprising a body defining a cavity, a septum, and an outlet in communication with the cavity;

a first identifiable feature incorporated into the access port perceivable following subcutaneous implantation of the access port, the first feature identifying the access port as suitable for flowing fluid at a fluid flow rate of at least 1 milliliter per second through the access port;

a second identifiable feature incorporated into the access port perceivable following subcutaneous implantation of the access port, the second feature identifying the access port as suitable for accommodating a pressure within the cavity of at least 35 psi, wherein one of the first and second features is a radiographic marker perceivable via x-ray; and

a third identifiable feature separated from the subcutaneously implanted access port, the third feature confirming that the implanted access port is both suitable for flowing fluid at a rate of at least 1 milliliter per second through the access port and for accommodating a pressure within the cavity of at least 35 psi.

Vascular access ports are implanted underneath a patient’s skin to allow injection of fluid into the patient’s veins on a regular basis without needing to start a new intravenous line every time.  Certain procedures, such as computed tomography (CT) imaging, required high pressure and high flow rate injections through such ports.  However, traditional vascular access ports were used for low pressure and flow rates, and sometimes ruptured under high pressures and flow rates.  FDA approval was eventually required for vascular access ports that were structurally suitable for power injections under high pressures and flow rates.  To distinguish between FDA approved power injection ports versus traditional ports, Bard used the claimed radiographic marker (e.g., “CT” etched in titanium foil on the device) on its FDA approved power injection ports that could be detected during an x-ray scan typically performed at the start of a CT procedure.  Additional identification mechanisms included small bumps that were palpable through the skin, and labeling on device packaging and items that can be carried by the patient (e.g., keychain, wristband, sticker).  AngioDynamics also received FDA approval for its own power injection vascular access ports including a scalloped shaped identifier and a radiographic “CT” marker.

AngioDynamics raised ineligibility under §101 using the printed matter doctrine to nix patentable weight for the claimed identifiers in its motion to dismiss the complaint, its summary judgment motion, and later during the trial on an oral JMOL motion.  In advance of the trial, the district court requested a report and recommendation from a magistrate judge regarding whether “radiographic letters” and “visually perceptible information” limitations in the claims were entitled patentable weight under the printed matter doctrine, as part of claim construction.  The district court judge adopted the magistrate judge’s recommendations on the printed matter and ultimately granted AngioDynamic’s JMOL motion for ineligiblity.

The Printed Matter Doctrine: 

This decision summarized the printed matter doctrine as follows:

1. “printed matter” is not patentable subject matter
2. the printed matter doctrine prohibits patenting printed matter unless it is “functionally related” to its “substrate,” which includes the structural elements of the claim
3. while this doctrine started out with literally “printed” material, it has evolved over time to encompass “conveyance of information using any medium,” and “any information claimed for its communicative content.”
4. “In evaluating the existence of a functional relationship, we have considered whether the printed matter merely informs people of the claimed information, or whether it instead interacts with the other elements of the claim to create a new functionality in a claimed device or to cause a specific action in a claimed process.”

Federal Circuit’s Decision: 

Here, there is no dispute that the claims include printed matter (markers) “identifying” or “confirming” suitability of the port for high pressure or high flow rate.  These markers inform people of the claimed information – suitability for high pressure or high flow rate. 

Bard asserted that the markers provided a new functionality for the port to be “self-identifying.”  This reasoning was rejected because mere “self-identification” being new functionality “would eviscerate our established case law that ‘simply adding new instructions to a known product’ does not create a functional relationship.”  For instance, marking of meat and wooden boards with information concerning the product does not create a functional relationship between the printed information and the substrate.

Bard asserted that the printed matter is functionally related to the power injection step of the method claims because medical providers perform the power injection “based on” the markers.  This reasoning was also rejected because the claims did not recite any such causal relationship.

Accordingly, the Federal Circuit held that the markers and the information conveyed by the markers, i.e., that the ports are suitable for power injection, is printed matter not entitled to patentable weight.

Nevertheless, despite the holding about printed matter not given patentable weight, the Federal Circuit still found the claims to be patent eligible under Alice step 2. 

Before getting to Alice step 2, the Federal Circuit equates printed matter to an abstract idea, citing to an eighty year old decision “where the printed matter, is the sole feature of alleged novelty, it does not come within the purview of the statute, as it is merely an abstract idea, and, as such, not patentable.”  The court further equates this to post-Alice decisions (Two-Way Media, Elec. Pwr Grp, Digitech) recognizing that “the mere conveyance of information that does not improve the functioning of the claimed technology is not patent eligible subject matter. under §101.”  “We therefore hold that a claim may be found patent ineligible under §101 on the grounds that it is directed solely to non-functional printed matter and the claim contains no additional inventive concept.”

However, with regard to Alice step 2’s inventive concept, the court viewed “the focus of the claimed advance is not solely on the content of the information conveyed, but also on the means by which that information is conveyed” (i.e., via the radiographic marker).  Bard admitted that use of radiographically identifiable markings on implantable medical devices was known in the prior art.  Nevertheless, “[e]ven if the prior art asserted by AngioDynamics demonstrated that it would have been obvious to combine radiographic marking with the other claim elements, that evidence does not establish that radiographic marking was routine and conventional under Alice step two.”  “AngioDynamics’ evidence is not sufficient to establish as a matter of law, at Alice step two, that the use of a radiographic marker, in the ‘ordered combination’ of elements claimed, was not an inventive concept.”   Even with regard to the corresponding method claim, “while the FDA directed medical providers to verify a port’s suitability for power injection before using a port for that purpose, it did not require doing so via imaging of a radiographic marker…[t]here is no evidence in the record that such a step was routinely conducted in the prior art.”

Takeaways: 

1. The printed matter doctrine not only precludes patentable weight for §§102 and 103 inquiries, but also raises abstract idea issues under Alice step 1.
2. This case also reminds us of the eligibility hurdles for data processing inventions, with Two-Way Media “concluding that claims directed to the sending and receiving of information were unpatentable as abstract where the steps did not lead to any ‘improvement in the functioning of the system;’” Elec. Pwr Grp “holding that claims directed to ‘a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions’ are directed to an abstract idea;” and Digitech stating that “data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.”
3. For Alice step 2, this case exemplifies the high bar for establishing “routine and conventional.”  Here, the patentee’s admission that radiographic marking on implanted medical devices is known in the prior art was not enough to establish “routine and conventional.”  Even prior art that demonstrates the obviousness of combining radiographic marking with the other claim elements was also not enough to establish “routine and conventional.” 
4. For Alice step 2, this case may exemplify the breadth of what constitutes an inventive concept in “an ordered combination.”  The court does not specify exactly what the “ordered combination” was here.  Perhaps, the “significantly more” (beyond the abstract idea of the printed matter) could simply be the combination of a radiographic marker and a port.

Full Federal Circuit Continues 101 Spin on Driveshaft Eligibility

| August 14, 2020

American Axle & Manufacturing v. Neapco Holdings – Part II

July 31, 2020

Opinion by:  Dyke, Moore and Taranto

Dissent by:  Moore

Summary: 

            A 6-6 split vote for en banc rehearing dooms clarification on the patent eligibility of a driveshaft manufacturing method by the full Federal Circuit.  The petition for rehearing en banc for this case engendered 6 amici curiae briefs.  The denial of en banc rehearing triggered 2 concurrences and 4 dissenting opinions. 

Nevertheless, a new modified panel decision is issued, with different results than the first panel decision.  While the first panel decision found representative claims 1 and 22 ineligible under 35 U.S.C. §101, this second panel decision still found claim 22 ineligible for essentially the same reasons as before, but remanded claim 1.  Like the first panel decision, this new panel decision also includes a strong dissent by Judge Moore. 

The conflicting positions of a split Federal Circuit in this case highlight the turmoil in current 101 jurisprudence.

Procedural History: 

American Axle & Manufacturing, Inc. (AAM) sued Neapco Holdings, LLC (Neapco) for infringement of U.S. Patent 7,774,911 (the ‘911 patent) on a method of manufacturing driveline propeller shafts for automotive vehicles.  On appeal, the Federal Circuit upheld the District Court of Delaware’s holding of invalidity under 35 U.S.C. §101 in the first panel decision issued October 3, 2019 (hereinafter, AAM I).   A combined petition for panel rehearing and for en banc rehearing was filed.  A modified, precedential, panel decision was issued on July 31, 2020 in response to the petition for panel rehearing (hereinafter, AAM II) – affirming the ineligibility of claim 22, its dependent claims and claim 36, but remanding claim 1 and its dependent claims to the district court.  The petition for en banc rehearing was denied.  

Background: 

            The ‘911 patent relates to a method for manufacturing driveline propeller shafts (“propshafts” that transmit power in a driveline) with liners that attenuate vibrations transmitted through a shaft assembly.   During use, propshafts experience three types of vibration: bending mode vibration, torsion mode vibration, and shell mode vibration, each involving different frequencies.  To attenuate the noise accompanying such vibration, various conventional methods using weights, dampers, and liners are inserted to frictionally engage the propshaft to dampen certain vibrations.  However, such conventional dampening methods were designed to individually attenuate each of the three types of vibration.  According to AAM, the ‘911 patent seeks to attenuate two vibration modes simultaneously, which the prior art did not do.

            The CAFC focused on independent claims 1 and 22 as being “representative” claims:

            The district court construed claim 1’s “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member” to mean “controlling characteristics of at least one liner to configure the liner to match a relevant frequency or frequencies to reduce at least two types of vibration transmitted through the shaft member” (emphasis in original).  Claim 22’s “tuning a mass and a stiffness of at least one liner” was construed to mean “controlling the mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies.”  Notably, the above claim interpretation for claim 1 was not mentioned in AAM I, and the district court made no distinction between claims 1 and 22 in its decision.

AAM II Panel Decision: 

Claim 22

With regard to claim 22, the §101 analysis is essentially the same between AAM I and AAM II. 

Under the Mayo/Alice step 1, claim 22 was deemed “directed to” Hooke’s law, mathematically relating mass and stiffness of an object to the frequency with which that object vibrates.  Claim 22 merely recites “tuning a mass and a stiffness of at least one liner,” without any particular physical structures or steps for tuning.  “[C]laim 22 here does not specify how target frequencies are determined or how, using that information, liners are tuned to attenuate two different vibration modes simultaneously, or how such liners are tuned to dampen bending mode vibrations.” As such, claim 22 is merely claiming a desired result (tuning a liner), without limitation to any particular structures or ways to achieve it.  AAM II concludes, “[t]his holding as to step 1 of Alice extends only where, as here, a claim on its face clearly invokes a natural law, and nothing more, to achieve a claimed result.”  

Notably absent from AAM II’s Alice step 1 analysis is the majority’s earlier reference in AAM I to Hooke’s law “and possibly other natural laws” in describing what natural law claim 22 is directed to.

Under the Mayo/Alice step 2, claim 22 does not recite an “inventive concept” to transform it into patent eligible subject matter.  The majority summarizes AAM’s argument for an inventive concept to be merely a restatement of the desired results (tuned liners that dampen two different vibration modes simultaneously) being an advance.  However, an ineligible concept cannot supply the inventive concept.  And the remaining steps in claim 22 are merely conventional pre- and post-solution activity.

Claim 1

With regard to claim 1, the majority focused on three differences from claim 22. 

One difference is that claim 1’s feature of “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member” was construed by the district court to mean “controlling characteristics of at least one liner to configure the liner to match a relevant frequency or frequencies to reduce at least two types of vibration transmitted through the shaft member” (emphasis in original).  Claim 22 did not require “controlling characteristics…” 

Second, such “characteristics” are described in the specification to include variables other than mass and stiffness, including length and outer diameter of the liner 204, diameter and wall thickness of a structural portion 300 and the material thereof, quantity of resilient member(s) 302 and the material thereof, a helix angle 330 and pitch 332 with which resilient members 302 are fixed to the structural portion 300, the configuration of lip member(s) 322 of the resilient member 302, and the location of the liners 204 within the shaft member 200.  Claim 22 did not go beyond tuning involving mass and stiffness. 

Third, claim 1 requires “positioning the at least one liner.”  The majority considered claim 22’s “inserting the at least one liner into the shaft member” as not being equivalent to claim 1’s “positioning” feature, without explanation.  On this point, J. Moore, noted in the dissent, that this is improper sua sponte appellate claim construction which neither parties briefed nor argued.  J. Moore argued claim 22’s ineligibility should not have been premised on such unsupported sua sponte claim construction.

Because of these differences, the majority held that claim 1 is not merely directed to Hooke’s law “and nothing more.”  “The mere fact that any embodiment practicing claim 1 necessarily involves usage of one or more natural laws is by itself insufficient to conclude the claim is directed to such natural laws.”

But, this doesn’t mean that claim 1 is eligible.  The majority notes that the district court and Neapco also raised ineligibility based on the judicial exception for an abstract idea.  “But the abstract idea basis was not adequately presented and litigated in the district court.”  Thus, the majority remanded the claim 1 and its dependent claims to the district court to address this abstract idea issue in the first instance.

J. Moore’s Dissent: 

Like in AAM I, J. Moore’s dissent in AAM II is likewise stinging.  “The majority’s decision expands §101 well beyond its statutory gate-keeping function and collapses the Alice/Mayo two-part test to a single step – claims are now ineligible if their performance would involve application of a natural law.”  

1. A new “Nothing More test”

J. Moore asserts that the majority created a new test, a “Nothing More test” – “when claims are directed to a natural law despite no natural law being recited in the claims.”  According to the majority, claim 22’s “tuning” feature meant “controlling the mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies” and “[t]hus, claim 22 requires use of a natural law of relating frequency to mass and stiffness – i.e., Hooke’s law.”  However, J. Moore notes that “[e]very mechanical invention requires use and application of the laws of physics.  It cannot suffice to hold a claim directed to a natural law simply because compliance with a natural law is required to practice the method.”

“Section 101 is monstrous enough, it cannot be that use of an unclaimed natural law in the performance of an industrial process is sufficient to hold the claims directed to that natural law.”  “All physical methods must comply with, and apply, the laws of physics and the laws of thermodynamics…[t]he fact that they do does not mean the claims are directed to all such laws.” “This case turns the gatekeeper into a barricade.  Unstated natural laws lurk in the operation of every claimed invention.  Given the majority’s application of its new test, most patent claims will now be open to a §101 challenge for being directed to a natural law or phenomena.”

The majority’s counterpoint: “If patentees could avoid the natural law exception by failing to recite the law itself [like here – no mention of ‘Hooke’s law’, but varying frequency attenuation (tuning) based on mass and stiffness is on its face Hooke’s law], patent eligibility would depend upon the ‘draftsman’s art,’ the very approach that Mayo rejected.”

However, avoiding the “draftsman’s art” is not the primary focus of §101.  Instead, it is on preemption.  That is why claims may be patent eligible under §101 if the “claimed advance” reflects an improvement in technology.  As J. Moore also noted, “[t]he claims at issue contain a specific, concrete solution (inserting a liner inside a propshaft) to a problem (vibrations in propshafts).”  The ‘911 claims are directed to the traditional manufacturing of a drive shaft assembly for a car, which have historically avoided any concern under §101.  On this point, see also J. Stoll’s dissent on the denial of en banc rehearing below.

Another problem with the majority’s new “Nothing More test” is that it arguably requires appellate judges to “resolve questions of science de novo on appeal.”  J. Moore raises a concern about appellate judges making determinations of scientific fact on appeal, in the first instance, as a matter law.  Nothing in the intrinsic record (nothing in the patent and nothing in the prosecution history) mentions Hooke’s law.  So, “how can we conclude, as a matter of law, the claim nonetheless clearly invokes Hooke’s law?”  To J. Moore, “judges are not fact or technical experts…[t]he only appropriate fact finder is the district court and not on summary judgment.”

Indeed, during litigation both sides’ experts and the district court noted that the claims involve Hooke’s law and friction damping.  Yet, the majority concludes that the natural law used is Hooke’s law “and nothing more.”  The majority’s counterpoint is that even “[i]f claim 22’s language could be properly interpreted in a way such that it invokes friction damping as it does with Hooke’s law, the claims would still on its face clearly invoke natural laws, and nothing more, to achieve a claimed result.” 

“A disturbing amount of confusion will surely be caused by this opinion, which stands for the proposition that claims can be ineligible as directed to a natural law even though no actual natural law is articulated in the claim or even the specification.  The majority holds that claims are directed to a natural law if performance of the claimed method would use the natural law.”

• Failure to consider unconventional claim elements under Mayo/Alice step 2

Under the Mayo/Alice step 2 analysis, while the majority asserts that “[w]hat is missing is any physical structure or steps for achieving the claimed result,” J. Moore notes that AAM’s arguments identified “many” inventive concepts that should have at least precluded summary judgment.  For instance, AAM argued that liners (a physical and explicitly recited claim element) were never before used to reduce bending mode vibrations.  Instead of addressing all the inventive concepts laid out by AAM, “the majority creates its own strawman to knock down” (i.e., sophisticated FEA software and computer modeling that are not claimed).

• Enablement on Steroids

“[T]he majority has imbued §101 with a new superpower – enablement on steroids.”  “The majority’s concern is not preemption of a natural law (which should be the focus), but rather that the claims do not teach a skilled artisan how to tune a liner without trial and error.  The majority’s blended 101/112 defense is confusing, converts fact questions into legal ones and eliminates the knowledge of a skilled artisan.” 

Of course, the majority clarified that there is a “how to” 1 and a “how to” 2.  The “how to” 1 is a requirement under 101 that “the claim itself (whether by its own words or by statutory incorporation of specification details under section 112(f)) must go beyond stating a functional result: it must identify ‘how’ that functional result is achieved by limiting the claim scope to structures specified at some level of concreteness, in the case of a product claim, or to concrete action, in the case of a method claim.”  The “how to” 2 is a different requirement that applies to the specification under §112, not to the claim.  But, see, J. Stoll’s dissent below.  At what level of specificity is sufficient to pass muster under the majority’s “how to” 1?  How is this to be determined, absent any input by a skilled artisan?  Doesn’t this “how to” inquiry involve  questions of fact which should not be determined de novo as a matter of law by appellate judges?

Concurring and Dissenting Opinions on the Denial of en banc Rehearing: 

J. Dyk’s concurrence argues that this modified panel decision is consistent with precedent and that there was no “new” test.

J. Chen’s concurrence also states that the panel majority’s decision is consistent with long-standing precedent, and there was no new patent-eligibility test.  And, “[a]s evidenced by the majority opinion’s conclusion that claim 1 is not directed to a natural law, the narrow holding of this case should not be read to open the door to eligibility challenges based on the argument that a claim is directed to one or more unspecified natural laws.”  J. Chen also disagrees about 101 being enablement on steroids, “result-oriented claim drafting raises concerns under section 101 independent from section 112.”  “The lesson to patent drafters should now be clear: while not all functional claiming is the same, simply reciting a functional result at the point of novelty poses serious risks under section 101.”

J. Newman’s dissent stated “[t]he court’s new spin on Section 101 holds that when technological advance is claimed too broadly, and the claims draw on scientific principles, the subject matter is barred ‘at the threshold’ from access to patenting.”  This is contrary to the warning in Alice to be careful to avoid oversimplifying the claims because ‘[a]t some level, ‘all inventions…embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’”  “The court’s notion that the presence of a scientific explanation of an invention removes novel and non-obvious technological advance from access to the patent system, has moved the system of patents from its once-reliable incentive to innovation and commerce, to a litigation gamble.”

J. Stoll’s dissent makes notable challenges to the majority’s “how to” analysis in §101’s directed to inquiry:

“Even assuming that claim 22 applies Hooke’s law (or any other unnamed law of nature), the claim seems sufficiently specific to qualify as an eligible application of that natural law.  The claim identifies specific variables to tune, including ‘a mass and a stiffness of at least one liner.’ It requires that the tuned liner attenuate specific types of vibration, including ‘shell mode vibrations’ and ‘bending mode vibrations,’ and further requires that the tuned liner is inserted in a ‘hollow shaft member.’  With this level of specificity, claim 22 appears to be properly directed to ‘the application of the law of nature to a new and useful end,’ not to the law of nature itself.  Yet this level of detail is insufficient in the majority’s view, and it remains unclear how much more ‘how to’ would have been sufficient to render the claim eligible under the majority’s approach.”  (citations omitted).

J. Stoll also remarked, “[i]n my view, the result in this case suggests that this court has strayed too far from the preemption concerns that motivate the judicial exception to patent eligibility.”

J. O’Malley’s dissent identifies at least three problems in the majority opinion: “(1) it announces a new test for patentable subject matter at the eleventh hour and without adequate briefing; (2) rather than remand to the district court to decide the issue in the first instance, it applies the new test itself; and (3) it sua sponte construes previously undisputed terms in a goal-oriented effort to distinguish claims and render them patent ineligible, or effectively so.”

Takeaways: 

1. Even in traditionally eligible industrial and mechanical inventions, potential §101 issues may now be raised depending on the scope of the functional claiming being used, especially if result-oriented.  J. Stoll expressed legitimate concerns about the practical effect of this modified panel decision, “[a]lthough the majority has dialed back its original decision to some degree on panel rehearing, one can still reasonably ponder whether foundational inventions like the telegraph, telephone, light bulb, and airplane – all of which employ laws of nature – would have been ineligible for patenting under the majority’s revised approach.”
2. But, don’t give up.  Whether defending a patent or challenging a patent on §101, the Federal Circuit is clearly split on various issues under 101.  Unfortunately, §101 jurisprudence is, as J. Newman remarked, becoming a “litigation gamble.”  Nevertheless, depending on who is on your panel, you may get a favorable decision.  Only the Supreme Court or Congress can come to the rescue of §101. 
3. This case is a reminder that claim construction can change the result of the 101 determination.
4. As J. Chen noted, functional, result-oriented, claiming, especially at the point of novelty, may trigger serious 101 issues, even in mechanical cases that, until now, were mostly immune to §101 attack.
5. Try to include a “kitchen sink” claim.  The specificity provided may help overcome such 101 issues.
6. Perhaps AAM never expected such results for its independent claims.  But, another lesson learned from this case is to try to preserve arguments based on the dependent claims and challenge the characterization of the “representative” claim if possible.

Claims Directed to the Abstract Idea of Encoding/Decoding Image Data are Found Not Patent Eligible

| May 22, 2017

RecogniCorp v. Nintendo

April 28, 2017

Before Lourie, Reyna and Stoll.  Opinion by Reyna.

Summary:

RecogniCorp sued Nintendo in district court for infringement of U.S. Patent No. 8,005,303 (“ the ‘303 patent”) directed to a method and apparatus for encoding/decoding image data.  Nintendo filed a motion for judgment on the pleadings, asserting that the claims were ineligible under 35 U.S.C. §101.  The district court concluded that RecogniCorp’s claims failed the Alice test, and granted Nintendo’s motion.  On appeal, the Court of Appeals for the Federal Circuit (CAFC) affirmed, finding that the ‘303 patent’s claims are directed to the abstract idea of encoding and decoding image data, and the claims do not contain an inventive concept sufficient to render the claims patent eligible.

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Another fatality attributed to 35 U.S.C. §101 abstract idea

| August 5, 2016

Electric Power Group, LLC v Alstom

August 1, 2016

Before: Taranto, Bryson and Stoll.  Opinion by Taranto.

Summary:

Electric Power Group sued Alstom alleging infringement of various claims of U.S. Patents Nos. 7,233,843; 8,060,259; and 8,401,710 directed to systems and methods for performing real-time performance monitoring of an electric power grid.  On Alstom’s motion for summary judgment, the district court held that Electric Power Group’s asserted patent claims fail the standard for patent eligibility under §101.  The CAFC affirmed finding the claims don’t go beyond the abstract idea of the collection, analysis, and display of available information in a particular field.

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