On November 16, 2016, the United States Court of Appeals for the Federal Circuit issued a non-precedential opinion in Tranxition, Inc. v. Lenovo (United States) Inc. Normally when we write about a non-precedential opinion it is because there is something interesting about the case, sometimes a procedural twist worth knowing about despite the non-precedential label. Sometimes it is because it is difficult to understand why a decision on an issue that seems relatively important was made non-precedential. In this case, this non-precedential decision is really a whole lot of nothing. Nothing to see here, just another case where the Federal Circuit invalidated patent claims without doing a proper, thorough and complete claim interpretation to figure out what the claims actually cover.
The decision in Tranxition won’t be at all useful for anyone on any level to review. Other than learning that Chief Judge Prost and Judges Reyna and Chen concluded, without any thoughtful analysis, that the claims are patent ineligible we learned absolutely nothing else. There are no twists or turns. Frankly, there is almost no analysis, and what is present is hopelessly disingenuous. All we know is that a patent owner appealed a decision after having had patent claims declared invalid as being patent ineligible and for the life of me I couldn’t begin to explain why that happened. I can only imagine how the patent owner and the attorneys representing the patent owner must feel. In a word, cheated.
The patents in question were U.S. Patent No. 6,728,877 and U.S. Patent No. 7,346,766, which the United States District Court for the District of Oregon said contained patent ineligible claims. The patents both concern computer system upgrades. Typically, a person’s computer system contains many individualized settings, such as email addresses, desktop settings, and stored passwords. When a computer is replaced, those settings do not appear on the new computer by default, which requires the purchaser of the new computer to manually “migrate” the settings from their old computer to the new computer. The patents in question offer a solution by automatically transitioning these settings between computers, which the patent explains provides an advantage over the prior art because it obviates the need for the time consuming manual migration process.
The claims clearly were directed to a process, and therefore patent eligible according to the statute – 35 U.S.C. 101. But the statute is not the only question that must be answered. In their infinite wisdom the Supreme Court has said the statutory test identified by Congress needs more, which is why they created judicially created exceptions to patent eligibility. So even if the claims are patent eligible according to the Patent Act they must pass muster under the judicially created and not legislatively enacted Alice/Mayo framework.
The first inquiry (Step 2A as it is known) asks whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (i.e., a judicial exception). If the claim is directed to a judicial exception, in order to be patent-eligible a claim directed to a judicial exception must include additional features to ensure that the claim describes a process or product that applies the exception in a meaningful way, such that it is more than a drafting effort designed to monopolize the exception. Thus, the next inquiry (Step 2B as it is known) asks whether “significantly more” has been added to the claims or whether the claims merely seek to protect a judicial exception. This is frequently referred to as a search for an ‘‘inventive concept.’’
With respect to Step 2A, the Federal Circuit said that the claim was directed to an abstract idea because manual migration is an abstract idea. Of course, the claims did not cover manual migration. Unfortunately, how or why the Federal Circuit thought it relevant that manual migration is an abstract idea is not explained. It is simply stated in a matter of fact way that manual migration is an abstract idea so, therefore, Tranxition’s arguments to the contrary are “unconvincing.” Why? Apparently the answer is because.
To be fair, the Federal Circuit did try and explain, saying:
There is nothing in the claim to suggest that, once settings have been transitioned, the target computer will be any more efficient. Cf. Enfish, 822 F.3d at 1338. The claim merely “transitions” data from one computer to another and thus automate the migration process. Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 258 F.3d 1344, 1351 (Fed. Cir. 2014). Therefore, the claim is directed to the abstract idea of migration, or transitioning, of settings.
That reasoning is absurd on its face. Apparently a better process is an abstract idea. I wonder if that ruling will be applied outside the software space to real world methods that do nothing other than improve a process. Something tells me this type of “it only improves a process” rationale will be limited to the software field, or perhaps even just to non-precedential cases within the software field.
More specifically, of course a method of transferring data to a computer wouldn’t improve the targeted computer, so pointing that out is horribly disingenuous to say the least. Clearly the process of transferring data from one computer to another is not an abstract idea if the data from the old computer actually winds up on the new computer. Something that happens is not abstract! But the Federal Circuit hasn’t seen fit to define what is and what is not an abstract idea, so we live in this Twilight Zone fictitious world where things that actually happen are nothing more than some abstract idea in the same way an H.G. Well time machine is an idea or a perpetual motion machine is an idea.
With respect to Step 2B, what the Federal Circuit wrote is nearly incomprehensible. Chief Judge Prost wrote:
Tranxition argues that the claims contain an inventive concept because a manual process would not necessarily capture all the configuration settings in a computer and that there is no record evidence showing that the automated transition process operates in the same way as a manual process. These arguments miss the mark. Though a computer could potentially have dozens, if not hundreds of settings across numerous applications, the claim language only requires one or more configuration settings. It does not provide a maximum number of settings. Further, it is not relevant that a human may perform a task differently from a computer. It is necessarily true that a human might apply an abstract idea in a different manner from a computer. What matters is the application. “Stating an abstract idea while adding the words ‘apply it with a computer’” will not render an abstract idea non-abstract. See id. at 2359. There must be more.
The Tranxition argument misses the mark? Fine, explain why. Why is it relevant that the claim does not provide a maximum number of settings? If a human would perform the task differently from a computer, which seems to be admitted by the Court, doesn’t that call into question that the claim covers an abstract idea because the way humans would do it manually is an abstract idea? And if humans would do it differently doesn’t that have to mean that the computerized process would be unconventional within the meaning of Mayo? Seriously, it seems that this paragraph, and likely the entire decision, was written by an intern who was trying to string together buzz words. Sadly, that is likely exactly what happened, why this decision is incomprehensible, and why it is considered non-precedential.
Chief Judge Prost then writes:
Here, the claim instructs a practitioner to (1) provide configuration information, (2) generate an extraction plan, (3) extract the configuration settings, (4) generate a transition plan, and (5) transition those settings to a new computer. These steps, both individually, and as an ordered combination, do not disclose an inventive concept. They merely describe a generic computer implementation, using “routine, conventional activities,” of the abstract idea, “which is insufficient to transform the patent-ineligible abstract idea into patent-eligible subject matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014).
So the claims do not disclose an inventive concept. I wonder whether the specification discloses an inventive concept? I wonder if the Federal Circuit even looked? I know the answer because I actually read through the specification. Sadly, despite all the cases of recent vintage that talk incessantly about the importance of what is described in the specification, when determining patent eligibility the specification is completely irrelevant. How is that possible? Well, it shouldn’t be.
In order to actually understand what the claims mean a proper claim construction requires that the entirety of the application be considered, as well as all of the prosecution history. In this case, if you actually read the specifications of the patents in question you will be left with the clear and unambiguous understanding that there is an inventive concept present. The application describes the transition architecture in great detail, for example. But the Federal Circuit didn’t do a claim construction of any kind, let along an adequate claim construction. Instead, what they did was impermissibly limit the scope of their invalidity review to a disassociated facial review of the claims without any consideration as to what the terms used in the claims mean, how they are defined in the application, how they were understood by the examiner during prosecution, or how they may have been limited by argument. In other words, the Federal Circuit didn’t do their jobs!
How patent claims can be invalidated without a proper and thorough claim construction is baffling. It flies in the face of everything patent law stands for and does nothing but encourage patent examiners, PTAB judges and district courts to do a facial check based on a gut feeling, nothing more. On its face do I think without any thoughtful consideration of the invention that these claims are patent eligible? That type of subjective, half-baked analysis is antithetical to the patent process and the Federal Circuit should be ashamed for engaging in such a review. The only way to competently determine what a claim is directed to and whether the claim adds significantly more, whatever that means, is to do a proper, thorough and competent claim construction, period.
Seriously, if the Court is going to publish a decision like this that is heavy on conclusions, non-existent on analysis, and almost certainly drafted by an intern or Staff Attorney, then why even make it a non-precedential opinion? Why not just make it a Rule 36 summary affirmance? At least that way there won’t be any evidence of the half-hearted attempt and the stringing together of buzz words that make no sense and raise more questions than they provide answers.
To be polite, this decision is not the best work of the Federal Circuit. To be blunt, even if this is the correct decision from a legal perspective the decision is an embarrassment. Tranxition deserves better, and so does the public.