Federal Circuit Clarifies ‘Inventive Concept’ as Applied to Computers

Intellectual Ventures I LLC v. Symantec Corp., (Fed. Cir. Sept. 30, 2016) (Before Dyk, Mayer, and Stoll, J.) (Opinion for the court, Dyk, J.) (Concurring opinion, Mayer, J.) (Dissenting-in-part, Stoll, J.)

This case concerned the subject matter eligibility of patents under 35 U.S.C. § 101, for a computer-related invention. The Federal Circuit affirmed the district court’s decision that two patents were ineligible, and reversed the court’s decision that one patent was eligible. All three patents at issue were held to be drawn to abstract ideas, and none of them had a patentable inventive concept.

Intellectual Ventures I LLC (“IV”) sued Symantec Corp. and Trend Micro for infringement of various claims of IV’s ’050 patent, ‘142 patent, and ’610 patent.  A jury found that Symantec infringed the ’142 and ’610 patents. Symantec responded with a motion for a judgment, alleging that all of the asserted claims of all three patents are unpatentable under 35 U.S.C. § 101. The district court held that the ’050 patent and ’142 patents claimed ineligible subject matter, but the ’610 patent claimed eligible subject matter. IV appealed and Symantec cross-appealed.

The Court began with the ’050 patent, directed to filtering e-mails that contain unwanted content, e.g. a virus. At Mayo/Alice step one, the Court agreed with the district court: filtering files and e-mails is an abstract idea, because it applies the well-known idea of filtering mail to an Internet context. At Mayo/Alice step two, the Court found there was no inventive concept, because the claims only improved the speed or efficiency of filtering mail by applying the abstract idea to a computer. IV argued unsuccessfully that, because the jury verdict determined that prior art did not anticipate the ‘050 claims or make them obvious, the subject matter was not abstract. However, the Court held that whether a patent claim is new and non-obvious does not affect whether it is abstract. IV then argued that the ’050 patent provides an inventive concept, in the form of a non-abstract improvement, because the invention more quickly identifies a computer virus and distributes that knowledge to users, and it decreases the amount of antivirus signatures to be downloaded. The Court found that this alleged inventive concept was not recited in the asserted claims, and therefore the claims were not patent-eligible.

Next, the Court analyzed the ’142 patent, which relates to screening and distributing e-mail. The Court affirmed that the claims encompassed an abstract idea, because they are directed to the simple concept of sorting mail. Except for generic computer-implemented steps, nothing in the claims foreclose the claimed steps from being performed by hand, by a human.  There was no inventive concept because the ’142 claims provided only generic computers performing generic functions. The proper inquiry is whether each step in a claim does more than require a generic computer to perform generic computer functions, not whether the prior computers already applied that concept.

Finally, the’610 patent was directed to computer virus screening on the Internet and telephone network. Finding that the idea of virus screening has long been practiced using computers, the Court held that the asserted claim was for an abstract idea under Mayo/Alice step one. This reversed the district court’s holding.  At Mayo/Alice step two, the Court found no inventive concept.  Performing an otherwise abstract activity on the Internet or on a telephone network does not make the idea patent-eligible. IV argued that the asserted ‘610 claim included limitations that narrow the invention to a specific way of screening for viruses within the telephone network, and do not preempt all virus detection. The Court rejected this argument. Although preemption may signal patent-ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. Because the ’610 claims did not improve or change the way a computer functions or overcome a problem unique to the Internet, the Court found no inventive concept under Mayo/Alice step two.

Judge Mayer concurred in the judgment, and also argued that patents constricting the essential channels of the online communication violate the First Amendment. He noted that restrictions on subject matter eligibility can be used to keep patent protection within constitutional bounds. He also argued that all software patents should be outside the bounds of § 101 and in the domain of copyright.

Judge Stoll dissented with respect to the ’610 patent. She argued that the asserted claim of the ’610 patent is eligible as an ordered combination. She also agreed with the district court that unlike the ’050 and ’142 patents, the ’610 patent constitutes an improvement of the network itself because it helped solve “the problem of individual computer users having periodically to update their virus screening software locally on their computers in order to ensure adequate protection from computer viruses.”

Under Mayo/Alice step two, the determination that a patent claim is not anticipated or obvious has no effect on whether it claims an abstract idea. Further, an inventive concept must be recited in the claims to qualify under Mayo/Alice step two. When a patent involves an abstract idea applied to a computer, the claims must provide an improvement to the way a computer functions or overcome a unique problem.

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