“The Step 1 ‘directed to’ analysis called for by our cases depends on an accurate characterization of what the claims require and of what the patent asserts to be the claimed advance. The accuracy of those characterizations is crucial to the sound conduct of the inquiries into the problem being addressed and whether the line of specificity of solution has been crossed.” – Federal Circuit opinion
Thankfully, there has been a recent and noticeable drop in precedential abstract idea cases from the U.S. Court of Appeals for the Federal Circuit. But on October 23, 2020, the Federal Circuit provided further “guidance” with respect to Alice Step 1 and upheld a district court finding that a TecSec patent was eligible under Section 101. The case is TecSec v. Adobe, Appeal Nos. 2019-2192 and 2019-2258 (Fed. Cir. 2020). The Federal Circuit panel for the case consisted of Chief Judge Prost along with Judges Reyna and Taranto. Judge Taranto wrote the opinion for the court.
The Venerable Attempt to Define ‘Abstract’
While there were some other interesting issues that the opinion raises, here we will focus on the Federal Circuit’s abstract idea analysis. According to the Federal Circuit, the asserted claims recite particular systems and methods for multi-level security of various kinds of files being transmitted in a data network. In particular, the claims describe a method in which a digital object is assigned a level of security that corresponds to a certain combination of access controls and encryption. The encrypted object can then be embedded or “nested” within a “container object,” which, if itself encrypted and access-controlled, provides a second layer of security.
Representative Claim 1 reads as follows:
A method for providing multi-level multimedia security in a data network, comprising the steps of:
A) accessing an object-oriented key manager;
B) selecting an object to encrypt;
C) selecting a label for the object;
D) selecting an encryption algorithm;
E) encrypting the object according to the encryption algorithm;
F) labelling the encrypted object;
G) reading the object label;
H) determining access authorization based on the object label; and
I) decrypting the object if access authorization is granted.
The Federal Circuit began its abstract idea analysis by indicating that “[w]e have approached the Step 1 ‘directed to’ inquiry by asking ‘what the patent asserts to be the ‘focus of the claimed advance over the prior art’….In conducting that inquiry, we ‘must focus on the language of the Asserted Claims themselves,’…‘considered in light of the specification.’”
The Federal Circuit then made a familiar observation that, for software, the issue often centers around whether the invention improves the functioning of a computer or merely uses a computer as a tool. As is typical for any abstract idea analysis devoid of the benefit of a concrete definition of “abstract idea”, for comparison the Federal Circuit then discussed past cases in which patent eligibility was found in the software arts and then cases in which patent ineligibility was found in the software arts.
During its discussion, the Federal Circuit indicated that “we have made two inquiries of significance here: whether the focus of the claimed advance is on a solution to ‘a problem specifically arising in the realm of computer networks’ or computers…and whether the claim is properly characterized as identifying a ‘specific’ improvement in computer capabilities or network functionality, rather than only claiming a desirable result or function.”
Then in layering on additional “guidance” for the abstract idea inquiry and further demonstrating that we’re well past the critical mass needed for additional Supreme Court clarity on what has become an indecipherable body of law, the Federal Circuit indicated that “[t]he Step 1 ‘directed to’ analysis called for by our cases depends on an accurate characterization of what the claims require and of what the patent asserts to be the claimed advance. The accuracy of those characterizations is crucial to the sound conduct of the inquiries into the problem being addressed and whether the line of specificity of solution has been crossed [emphasis added].”
Specification as Key
Of note was that Adobe argued to the district court that “the claims are directed to the impermissibly abstract idea of managing access to objects using multiple levels of encryption.” But the Federal Circuit indicated that this characterization “is materially inaccurate. To arrive at it, Adobe had to disregard elements of the claims at issue that the specification makes clear are important parts of the claimed advance in the combination of elements.”
The Federal Circuit then noted that Adobe’s characterization of what claim 1 as a whole is directed to does not go beyond what is required simply by the claim term “multi-level security.” But according to the Federal Circuit, the claim itself requires more: “It goes beyond managing access to objects using multiple levels of encryption, as required by ‘multi-level…security.’ Notably, it expressly requires, as well, accessing an ‘object-oriented key manager’ and specified uses of a ‘label’ as well as encryption for the access management…To disregard those express claim elements is to proceed at ‘a high level of abstraction’ that is ‘untethered from the claim language’ and that ‘overgeneraliz[es] the claim [citations omitted].’” If it seems like that analysis conflates the “significantly more” analysis of Alice Step 2 with the Alice Step 1 analysis of identifying the abstract idea itself, you’re not alone.
The Federal Circuit went on to note that a claim element Adobe left out of its proposed abstract idea – the key manager requirement – was already indicated as “important during prosecution” by the Federal Circuit in a related appeal. And yet again highlighting the importance of crafting a self-serving and facially technical background no matter the invention, the Federal Circuit then discussed TecSec’s own background where it indicated:
As to the combination of labeling with the required encryption, the specification makes clear that this is part of the focus of the claimed advance. The [background] expressly identifies a deficiency of using only multilevel security through encryption requiring keys at more than one level: that approach, the [background] says, ‘is quite unwieldy, inflexible, and difficult to manage by a security officer or key administrator’…The [background] then explains that it proposes a solution in which ‘[a] secure method of labelling files or messages that are sent from a sending user to a receiving user over a network’ is used ‘in addition to cryptographic protection’ [emphasis by the Federal Circuit].
Based on this, the Federal Circuit reasoned that “Adobe has not shown how it could properly disregard these claim requirements in determining ‘what the patent asserts to be the focus of the claimed advance over the prior art.’” Thus, the Federal Circuit indicated that “[t]he focus of the claimed advance cannot ignore all but the multilevel encryption.”
In continuing to discuss the patent’s background in combination with another part of the detailed description, the Federal Circuit then indicated that the specification “elaborates in a way that simultaneously shows that the claims at issue are directed at solving a problem specific to computer data networks. The patent focuses on allowing for the simultaneous transmission of secure information to a large group of recipients connected to a decentralized network—an important feature of data networks—but without uniform access to all data by all recipients.”
Thus, the Federal Circuit concluded that the proposed improvement involves labeling together with encryption. Accordingly, “the claims are directed to improving a basic function of a computer data-distribution network, namely, network security.” According to the Federal Circuit, this conclusion was based on the fact that the background “makes clear that the focus of the claimed advance is on improving such a data network used for broadcasting a file to a large audience, with the improvement assertedly being an efficient way for the sender to permit different parts of the audience to see different parts of the file.”
In some of the most useful language practitioners can take out of the case, the Federal Circuit then noted that:
While non-computer settings may have security issues addressed by multilevel security, it does not follow that all patents relating to multilevel security are necessarily ineligible for patenting. Here, although the patent involves multilevel security, that does not negate the conclusion that the patent is aimed at solving a particular problem of multicasting computer networks…By way of comparison, in [another case] we held the claims at issue to be directed to solving a problem of reducing communication time by using otherwise-unused space in a particular protocol-based system…even though reducing communication time by using such available blank space (or, generally, reducing resource use by using otherwise-unused available resources) is a goal in many settings. Similarly, in [yet another case], we held the claims at issue to be directed to solving a problem presented by particularly easy unauthorized use of software by placing the software in an especially secure computer location…even though placing items in especially secure locations to prevent unauthorized access is a goal in many settings. [emphasis added].
Interestingly, the Federal Circuit indicated later that even if Adobe had properly argued the abstract idea of managing access to objects using multiple layers of encryption and labels, that still “does not meaningfully address the combination” recited in the claim.
“Rather, it asserts the ‘commonplace’ character of the individual component techniques generally…or speaks at an even higher level of generality of ‘encoding, converting, encrypting, and controlling access to data.’” Yet again highlighting the importance of a self-serving background, the Federal Circuit noted that, “But that approach is insufficient where, as is true here for the reasons we have explained, it is the combination of techniques that is ‘what the patent asserts to be the focus of the claimed advance over the prior art.’”
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