The pendulum continues to slowly drift toward patentees in this post-Alice world. Last week, in Ancora Technologies v HTC America, the Federal Circuit reversed a lower court’s invalidity ruling under 35 USC §101 by concluding that Ancora’s claimed subject matter was concrete—not abstract—because it assigned specific functions to specific parts of a computer to improve computer security. The claims at issue were directed toward selectively limiting use of a software application on a computer. To do so, the computer stores certain license data in a specified part of its BIOS memory, and verifies against that stored license data to permit or prevent use of that software on the computer.
The district court ignored the specific requirements of the claims and simply abstracted the concept to “selecting a program, verifying whether the program is licensed, and acting on the program according to the verification.” Reversing the lower court ruling, the court pointed out that this analysis clearly ignores the concrete requirements of the claims—using a part of the computer (a specific portion of the BIOS memory) to solve the technical problem of preventing unauthorized use of software. Instead, this claim focuses on a specific improvement in computer capabilities using the BIOS memory.
To support its position, the court discusses other Federal Circuit cases finding non-abstract concepts that improve computer functionality, including:
- A behavior based virus scan (Finjan)
- Self-referential tables that improved the way computers operated and handled data (Enfish)
- A specific way to store a certain type of data in cache memory (Visual Memory)
- A method of making web sites easier to navigate on a small screen (Core Wireless Licensing)
- A method of navigating through three dimensional spreadsheets using a specific structure—tabs (Data Engines Technology)
In a manner similar to these past cases, the claims here relate to use of a specific part of the computer that improves computer performance. In other words, these claims involve a concrete way of solving a technical problem in computer technology. The court reiterated that software can make non-abstract improvements to computer technology (from Enfish), particularly when the claims focus on specific asserted improvements in computer technology as opposed to processes in which computers are used merely as a tool (also from Enfish).
The court contrasted this case and the patentee favorable cases noted above with another computer security case, Intellectual Ventures v Symantec, in which the claims merely installed virus protection in a telephone network. The court reasoned that the Intellectual Ventures claims were abstract because they neither relate to any improvement in virus scanning, nor solve any problem associated with a telephone network. Indeed, the claims of the Intellectual Ventures case are quite broad.
This case is yet another in a string of post-Alice cases suggesting that patents should be drafted with an emphasis on the technical problem and technical solution delivered by the claims. In other words, for similar technologies, the patent draftsperson should describe and claim how the innovation uses the computer or other technology in a specific, new manner to overcome technical hurdles. In this case, the court also considered Ancora’s discussion, in the patent, contrasting the claimed solution with other prior art technological solutions to the same problem (e.g., writing a license signature on the computer’s hard drive or requiring insertion of a dongle into a computer port), which seemed to help convince the court both that the invention was directed to a problem that arises in technology and that the invention provided an improvement to computer technology. The patent draftsperson thus should avoid generic claims that simply apply old technology to a computer. Instead, claiming improved technology and using a computer or other technology in a specific manner can help improve the odds of protecting commercially valuable software innovations, especially where specific improvements over prior art technologies can be demonstrated. As an added bonus, this approach also will pay dividends when protecting the claimed technology overseas, such as in Europe.