The U.S. Supreme Court’s 2014 Alice decision changed the landscape as to how software patents specifically are examined, but the Alice decision also has had broader implications for other technology art areas. 35 U.S.C. Section 101 – Patentable Subject Matter Rejections – have historically been unheard of, but after the Alice decision, Section 101 rejections are commonplace. Also, Alice has been used to invalidate many already issued computer and software patents for claiming abstract ideas, but recent Federal Circuit decisions have given patent owners and those prosecuting patent applications ways to make counter arguments. The pendulum appears to be at least beginning to swing in the opposite direction with three separate Federal Circuit decisions this year that appear to highlight what the court views as making computer related technologies patent eligible.
In the Enfish v. Microsoft Federal Circuit decision in May of this year, the Federal Circuit found that the database patents at issue were not directed to abstract ideas but to improvements in computer operations, which the high court said in Alice are patent-eligible. The court also cautioned against summarizing patents in broad, general terms when analyzing eligibility.
In summary the court found the following:
We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.
In the Bascom Global v. AT&T Mobility Federal Circuit decision in June of this year, the Federal Circuit found that while the internet filter patent at issue was directed to the abstract idea of filtering content and the claim elements were known in the art, they were combined in an inventive way that transformed the abstract idea into a patent-eligible application. The claimed invention is able to provide individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks. In these networks, the ISP is able to associate an individual user with a specific request to access a website (or other Internet content), and can distinguish that user’s requests from other users’ requests.
The court found the following:
The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces. While the claims of the ’606 patent are directed to the abstract idea of filtering content, BASCOM has adequately alleged that the claims pass step two of Alice’s two-part framework. BASCOM has alleged that an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea. We find nothing on this record that refutes those allegations as a matter of law or justifies dismissal under Rule 12(b)(6). We therefore vacate the district court’s order granting AT&T’s motion to dismiss underFRCP 12(b)(6) and remand so that the case may proceed.
In the McRO (Planet Blue) v. Bandai Namco Games et. al, Federal Circuit decision in September of this year, the court reversed the invalidation of patents covering lip-sync animation technology. The Federal Circuit held that the claimed process for animating characters using a computer is patent-eligible because it uses different methods from what animators had previously utilized. The court held that the ordered combination of claimed steps, using unconventional rules that relate sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea and is therefore patent-eligible subject matter under § 101. The patents relate to automating part of a preexisting 3-D animation method. The district court found and Defendants argued that the claims were not specifically claiming particular rules, and instead required that the user provide the rules. Defendants argued that if the claims were allowed, they would result in broad preemption because the rules only reflect relationships “that any intelligible lipsynchronization process must consider.” The relationships expressed by these rules, the Defendants argue, inevitably capture “a preexisting fundamental truth” regarding how a human mouth appears while speaking, thereby broadly preempting all possible rules-based methods. The court found that Claim 1 of the ’576 patent addressed a specific improvement in computer based animation, i.e., the automatic use of rules of a particular type. When examining the claim as a whole, claim 1 is directed to a patentable improvement over the existing, manual 3-D animation techniques. The limitations in claim 1 are sufficiently narrow to prevent preemption of all processes for achieving automated lip-synchronization of 3-D characters. The court further finds that McRO illustrates that motion capture animation provides an alternative process for automatically animating lip synchronization and facial expressions. The court cites – Even so, we have recognized that “the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The court finds that the primary concern is whether the claimed genus of rules preempts all techniques for automating 3-D animation that rely on rules. The court determined that Claim 1 requires that the rules be rendered in a specific way: as a relationship between subsequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing (as represented by the morph weight set). The above Federal Circuit cases further add to the toolkit of arguments that already available based on the 2014 DDR Federal Circuit decision, which held that software can be patent-eligible if it is “necessarily rooted in computer technology.” Patentees have further guidance now as to how to write and prosecute patent applications before the U.S. Patent Office, and as to how to defeat Alice challenges to patents in litigation, but it is still a work in progress.
The Enfish finding focuses on technical improvements, which is reiterated in McRo. Providing detail in the written description of an application as to how it was done in the field previously, and how the invention represents an improvement with specific advantages is even more critical than it has been in the past. Expert declarations can bolster your arguments in this regard. McRo emphasizes whether the claims are limited to a specific way of achieving a result as a key for determining patent eligibility under Section 101. Also, the ability to assert that there is specific claim language beyond the abstract idea and it’s relevance to the invention tends to be most persuasive. Enfish addressed technical improvements. While, Bascom emphasized that one must consider how the elements of the patent work together when determining patent eligibility. The Federal Circuit’s holding in DDR that inventions tied to computer technology can be patent-eligible, even if there is not a technical improvement, is still in play. In DDR, the court found that claims involving a way of including several pages on a single website, allowing users to visit several online stores at once, were patent-eligible, because it was “firmly rooted” in the internet. The ship that has drifted way off course appears to be slowly righting itself – so there is light at the end of the tunnel, but we have a ways to go.