In a recent article, we discussed how courts have used patent specifications in finding that patents satisfy the Supreme Court’s Mayo/Alice test. However, the specification may be a double-edged sword. Language in the specification can also doom the patent claims. Two recent federal court cases provide examples of how the courts have used the specification to invalidate claims under Alice.
The first case, Tranxition, Inc. v. Lenovo (United States) Inc., 2016 WL 6775967 (Fed. Cir., 2016) (non-precedential) involves two related patents (U.S. Pat. Nos.: 6,728,877 and 7,346,766) drawn to migrating settings between computers. The specification states that, in the prior art, users had to manually “migrate” settings (such as email addresses, desktop settings, stored passwords, etc.) from old computers to new computers when replacing an old computer. Because such manual migration was time-consuming, the patents-at-issue were developed to automatically transition these settings between old and new computers. An example claim from the ’877 patent discussed in the decision is reproduced below:
1. A method in a computer system for preparing configuration settings for transfer from a source computing system to a target computing system, the method comprising:
providing configuration information about configuration settings on the source computing system, the configuration information including a name and location of each configuration setting;
generating an extraction plan that identifies configuration settings to be extracted from the source computing system, the generating including providing a list of configuration settings known to the source computing system and including identifying active configuration settings out of the provided list of configuration settings to be extracted from the source computing system;
extracting the active configuration settings of the extraction plan from the source computing system, the extracted configuration settings being located using the provided configuration information;
generating a transition plan that identifies configuration settings to be transferred from the source computing system to the target computing system, the generating including providing active configuration settings of the extraction plan and including identifying from the active configuration settings of the extraction plan active configuration settings to be transferred from the source computing system to the target computing; and
for each active configuration setting of the transition plan,
retrieving the extracted configuration settings identified as active configuration settings of the transition plan; and
transitioning one or more of the retrieved configuration settings from a format used on the source computing system to a format used on the target computing system.
The Federal Circuit held that this claim was abstract because it was not directed to a technological improvement. Tranxition argued that the claim is directed to “transitioning” settings from one computer to another, which is a specific software-based solution to a computer-based problem. However, relying on the specification, the Federal Circuit found that the patent is directed to solving the problems arising out of “migration” that is performed manually, and not to improving computer functionality. Tranxition argued, inter alia, that the claims embodied an inventive concept because a manual process would not capture all configurations in a computer. The Federal Circuit, in response, reasoned that, while a human might apply an abstract idea in a different manner from a computer, the underlying application by a computer may still be abstract. Here, the Federal Circuit concluded that “[s]tating an abstract idea while adding the words ‘apply it with a computer’ will not render an abstract idea non-abstract.” Tranxition, 2016 WL 6775967*8 (internal citation omitted).
In the second case, Visual Interactive Phone Concepts, Inc. v. United States Cellular Corp., 2016 WL 4265750 (N.D. Ill. Nov. 16, 2016), the Northern District of Illinois likewise found the claims in a patent (U.S. Pat. No. 5,724,092) involving an interactive mailbox to be patent-ineligible under the Alice test. Although the claim describes a videophone interactive mailbox system, the court found that the claims are directed to the interactive system, not the tangible components of that system (e.g., the videophone). One relevant section of a claim at issue is provided below (emphasis added):
2. A videophone interactive mailbox facility system including a central data center for processing of information to conduct a transaction, comprising:
a) a user station having a videophone for viewing transaction information and video sent or received to conduct a transaction; and means for inputting said transaction information into said videophone; said videophone including a video screen, a memory chip for storing said transaction information and an interface chip for interfacing with said central data center; wherein said videophone is a single integrated device that includes a general purpose computer and a telephone; …
The court supported its finding of patent-ineligibility based on broad definitions of the term “videophone” in the patent specification and claims. Claim 1, for example, states that the videophone comprises components including “a video screen” and “a memory chip,” and describes the videophone as “a single integrated device that includes a general purpose computer and a telephone.” In addition, the specification states that “[t]he present invention defines a video phone to be any device having the capabilities to receive video/voice and/or video text as its primary function…” The court found that, when explaining the prior art in the specification, the applicant described the videophone as consisting of commonly known devices. Interpreting the video phone as generic, the court concluded that the claim does not relate to improvements in videophone technology, but rather to functionality of an interactive mailbox, such as collecting and displaying available mailbox information.
These two cases are in contrast with recent Federal Circuit cases, in which the claims were found to be patent-eligible, specifically with reference to the specification. In Amdocs, for example, the Federal Circuit construed claims directed to collecting network data to include a distributed architecture, and found them eligible under section 101 based on various advantages over the prior art’s centralized architecture described in the specification. Amdocs (Israel) Limited, v. Openet Telecom, Inc., --- F.3d ----, 2016 WL 6440387 (Fed. Cir., 2016). In Enfish, the Federal Circuit found that claims involving a referential table were not directed to an abstract idea because the specification describes the associated improvements to computer functionality. Enfish, LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir., 2016). In contrast, the patent specifications in Tranxition and Visual Interactive do not clearly describe the invention as providing a technical solution to a technical problem. It’s perhaps notable that the patents-at-issue in Tranxition and Visual Interactive were drafted some 10-20 years ago, long before the recent jurisprudence regarding 35 U.S.C. 101.
While the legal landscape is still developing in this area, courts are determining patent eligibility under 35 U.S.C. 101 with heavy reliance on the specification, despite lines of U.S. precedent that caution against importing limitations from the specification into the claims. Tranxition and Visual Interactive illustrate the importance of properly framing an invention and drafting the application such that the specification does not later undercut patent-eligibility under section 101 when a patentee attempts to enforce the patent. When preparing applications post-Alice, drafters should pay careful attention to the specification, to avoid describing the invention as merely performing manual processes by a computer or simply implementing straightforward functionality using generic computers and devices. As mentioned in earlier articles, it is also helpful to focus on technical solutions to technical problems, as well as on improvements to a technological field in the specification.