Federal Circuit Affirms District Court Ineligibility Decision under Alice

By IPWatchdog
January 6, 2021

“The Federal Circuit explained that Simio was improperly relying on the abstract idea to ‘supply the inventive concept that renders the invention ‘significantly more’ than that [abstract idea].’”

On December 29, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s decision dismissing Simio’s patent infringement action against FlexSim Software Products (FlexSim) and finding Simio’s claims patent ineligible under 35 U.S.C. § 101 (Simio v. FlexSim Software Products, Inc.). The CAFC also affirmed the district court’s dismissal of Simio’s motion for leave to file an amended complaint on the grounds of futility and, alternatively, on the ground that Simio failed to show good cause for its untimely motion for leave to amend.

District Court Dismissal

Simio filed a suit against FlexSim in the United States District Court for the District of Utah, alleging infringement of U.S. Patent No. 8,156,468 (the ’468 patent). FlexSim filed a motion to dismiss the complaint for failing to state a claim upon which relief could be granted because the claims of the ‘468 were ineligible for patenting under 35 U.S.C. § 101. The district court granted FlexSim’s motion to dismiss, concluding that (1) the claims were directed to “the decades-old computer programming practice of substituting text[-]based coding with graphical processing,” which the district court determined was an ineligible abstract idea and (2) “considering the claim elements both individually and as an ordered combination, FlexSim ‘met its burden of showing no inventive concept or alteration of computer functionality sufficient to transform the system into a patent-eligible application.’”

Simio moved for reconsideration and leave to file a proposed amended complaint (PAC). The district court denied the motion because the “amendment would be futile because the new factual allegations [in the PAC were] inadequate to remedy the ’468 patent on the merits.” Although FlexSim argued that Simio’s leave to amend should be denied for being untimely, the district court did not reach that issue. Simio appealed to the CAFC.

[[Advertisement]]

Key Advance Over the Prior Art

In addressing step one of Alice’s two-step framework for determining patent eligibility, the CAFC explained that it considers “what the patent asserts to be the focus of the claimed advance over the prior art,” in order to determine whether the claim’s “character as a whole” is directed to ineligible subject matter. The CAFC noted that the ’468 patent “showcases its key advance,” which was “using graphics instead of programming to create object-oriented simulations.” The CAFC noted that the ’468 patent acknowledges that “using graphical processes to simplify simulation building has been done since the 1980s and 1990s.” The CAFC stated that “[s]imply applying the already widespread practice of using graphics instead of programming to the environment of object-oriented simulations is no more than an abstract idea.” Thus, the court concluded that the claim of the ‘468 patent was directed to the abstract idea of using graphics instead of programming to create object-oriented simulations.

The CAFC rejected Simio’s argument that the claim was not directed to an abstract idea because it “present[ed] improvements to computer-implemented simulation, resulting in improvements in the computers’ capabilities.” The opinion explained that Simio failed to show how claim 1 was directed to improving a computer’s functionality. In response to Simio’s argument that the claim improved on the functionality of prior systems through the use “graphical or process modeling flowcharts with no programming code required,” the CAFC noted that “improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality.” Citing Customedia Techs., LLC v. Dish Network Corp. The CAFC also rejected Simio’s argument that claim 1 improves a computer’s functionality “with improved processing speed.” Again citing Customedia, the CAFC stated that “‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ [is] insufficient to render the claims patent eligible as an improvement to computer functionality.”

Inventive Concept

With respect to Alice at step two, the CAFC considered “the elements of [the] claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.” Simio acknowledged that “implementing the executable process’s functionality through programming” was conventional, but it argued that “doing so with graphics in a simulation provides the inventive concept necessary to confer eligibility.” The CAFC explained that Simio was improperly relying on the abstract idea to “supply the inventive concept that renders the invention ‘significantly more’ than that [abstract idea].”

In addition, Simio argued that the executable-process limitation was novel. The CAFC reasoned that the claim was “directed to the idea of using graphics instead of programming to create object-oriented simulations—maybe a new idea, but still an abstract one—and lacking any inventive concept, any meaningful application of this idea, sufficient to save the claim’s eligibility.” Thus, the CAFC dismissed the district court’s dismissal for failure to state a claim.

Simio’s Leave to Amend

The CAFC affirmed the district court’s futility-based grounds for denial and, alternatively, the ground that Simio failed to show good cause for its untimely motion for leave to amend. The CAFC rejected both of Simio’s arguments: 1) that the proposed amended complaint’s new allegations were sufficient to preclude dismissal for ineligibility, and 2) that the district court erred by finding ineligibility without first conducting claim construction. Thus, the court affirmed the district court’s denial of leave to amend the complaint.

The Author

IPWatchdog

IPWatchdog

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 16 Comments comments.

  1. Model 101 January 6, 2021 4:42 pm

    Another crooked CAFC decision.

    Get these crooks off the bench.

  2. Pro Say January 6, 2021 7:01 pm

    The. Ends. Justifies. The. Means.

    Yet again.

  3. Paul Cole January 7, 2021 3:27 am

    Unfortunately the patent has no European equivalent so it is not possible to gauge what the EPO might have made of the invention.

    Although there may have been an invention, the description and claims are at a high level of generality only and the invention is more likely to have been in the detail. There are decisions that inspire objection, and the Section 101 jurisprudence is anything but satisfactory but this decision does not appear to be in that category.

  4. Anon January 7, 2021 7:52 am

    Me. Cole, the notion that “the invention may have been in the details” raises the Spector that eligibility has been conflated with 35 USC 112.

    Any such conflation is as bad as the conflation with 35 USC 103.

    Do not be so quick to dismiss this case because it may not be the “ideal” case for your view of 101.

  5. TFCFM January 7, 2021 11:07 am

    Courts continue to find “any thing/way that works”-based claims to be abstract.

    How surprising. (Not, obviously.)

    Which ways of “implementing processing functionality graphically, rather than through programming” are encompassed by the claims? “Why, any way(s) that work (whether we’ve invented/disclosed them or not)!” How could anyone purport with a straight face that this concept is not abstract?

    Grow up, numbskulls-trying-to-claim-more-than-you’ve-invented. No one (other than some poorly-trained patent examiners) is fooled.

  6. __tr__ January 7, 2021 2:25 pm

    @TFCFM, you post so much banter about these issues and call people many names, but I still don’t know what you think WOULD be patentable. If practitioners only claimed precisely what the inventor made, then the workaround would be so easy that the patent would not be worth the paper that it is written on. In your view, are we as practitioners required to write nothing more than “picture claims” in securing rights? Are the rights dependent on the “draftsman’s art,” the ability of drafters to meet the standards of what people like you to be “high technology”?

    Computers are essentially nothing but systems for storing and manipulating bi-polar transistors that hold two states–a 1 and a 0. Yet, the inventions built on them are written atop hundreds or thousands of abstraction layers for manipulating those transistors. It’s easy to say this or that is “too general,” but what is not? The practitioner who wrote this claim was most surely not instructed in school or through apprenticeship to recite in a claim more than the result’s structure. Yet, years later, the ball has been moved, and almost EVERY software patent could be declared invalid under the new standard.

    Your short-circuited rhetoric is not relevant or constructive to a discussion that is the heart of and poses a huge problem to the innovation framework that millions of inventors and business leaders just want to work. They don’t care what non-engineer litigators think about the “patent quality” (i.e., making the technology sound “sophisticated”). This system is not about “sweat of the brow” and never has been. And you folks who search for “technical merit” to justify the “inventiveness” of what needs only to be a novel, good idea feeds right into the narrative that has been peddled by those who are now the most dangerous monopolies this country has ever witnessed.

  7. Anon January 7, 2021 2:32 pm

    TFCFM,

    Thank you for yet again displaying your lack of understanding of the subject matter and your inability to see why innovation in the computing arts is suffering under the broken scoreboard.

    Maybe you should stick to discussing things that you are more familiar with (from a technical understanding position)….

  8. __tr__ January 7, 2021 2:40 pm

    And before you accuse me of being a “technical peasant,” or a “numb-skull,” or accuse me of talking about a field I know “poorly, if at all,” I am aware that a MOSFET is not technically “bipolar” as the phrase has come to be applied in semiconductor technology.

    I mean that transistors are tied to one of two “poles” or states at any given time.

  9. Anon January 7, 2021 4:24 pm

    __tr__,

    Bingo – TFCFM’s picture claiming mantra is very much reminiscent of other software H8ters, and seems (if he is even a practitioner with a registration number — which is doubtful) to be moored more in the arts for which picture claiming may be more the norm. He just does not get that MOST ALL other art units (including those touched by computing advances – though, by no means limited to such), routinely apply the “Ladders of Abstraction” in order to capture WHAT WAS REALLY INVENTED.

    Note that WHAT WAS REALLY INVENTED is often more than what the inventor themselves initially think. The ability to develop innovation protection (which in most all cases does in fact need to be MORE THAN picture claims), IS the very heart of the art (the pejorative of the Supreme Court of ‘scriviner’ should be disdained with equal force back to that Court) for which we are paid handsomely.

    I would daresay that the level of effort and skill for those of us in this craft are HIGHER than for the likes of the egotistical TFCFM.

  10. TFCFM January 8, 2021 9:28 am

    _tr@#6: “If practitioners only claimed precisely what the inventor made, then the workaround would be so easy that the patent would not be worth the paper that it is written on.

    My suggestion would be that practitioners do what practitioners in all other technical fields do: Claim what you think your invention encompasses, and then fully describe and enable that invention THROUGHOUT ITS SCOPE.

    If there’s a work-around, disclose it. If there are two, describe both. If there are an infinite number, reconsider the supposed
    “inventiveness” of the technology and the scope of what you’re trying to claim. If you’re trying to claim something with “infinite” (or a very large number of) work-arounds, then it is very likely that you are attempting to claim a goal or a mere function, rather than a technology that performs/achieves that function/goal.
    – Scenario One – If that is the case, you are claiming and abstract idea and your claim should not be allowed (but sometimes is, which is what leads to these cases).
    – Scenario Two -If you believe that not to be the case, then leave the infinite-number-of-alternatives element out of your claim — that is, claim the parts that ARE specific to what you’ve invented. If you find it necessary to include an element that is a synonym of “anything that performs this function/goal,” see Scenario One.

    Devising A SOLUTION to a problem does not entitle the deviser of that solution to a patent to ALL SOLUTIONS to the same problem, if fewer than all such solutions are disclosed. “Anything that works”-type claims get invalidated when they seek to claim all solutions while disclosing fewer (usually far fewer) than all. See O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853).

  11. Anon January 8, 2021 11:31 am

    Maybe TFCFM should himself see O-Reilly v. Morse and view the claims that were confirmed.

    Hint: they most likely would fall into his bucket of “don’t do’s” even though he has NO EXPERIENCE in this art field.

  12. __tr__ January 8, 2021 3:33 pm

    @TFCFM You are making the exact same argument that it’s all just too general without saying what detail is sufficient. Must the inventor include the source code in the claims? The patent doesn’t need to explain the invention to a bitter chemist who has never written a line of code in their life and who’s eyes glaze over every time they read the word “processor.” In the words of Peter Griffin, your arguments are “shallow and pedantic.”

    As an analogy, I know little about chemistry and medicine (in fact, I had to withdraw from Chem 2 the first time because I hated the lab so much). If I read a claim that does the same thing as the prior art except for adding “administering an antifolate”, I assume that the inventor did not RTP a solution for EVERY antifolate in existence. I assume they found a solution and based on the underlying principles behind the solution, they explained how the solution would work sufficiently so that a PHOSITA could do the same thing with other materials.

    Are you saying that if I find a new solution for sorting photos in a collection, and I write it in JavaScript, I can only claim the specific script that I wrote? That no one could develop a similar one in Python, or Java, or even over a network API unless I literally enable every conceivable embodiment in a 5,000-page tome of a Spec?

    You’re arguing that the problem with the situation is that software patent attorneys don’t know how to write detailed specs, but you wouldn’t because YOU DON’T KNOW THE TECHNOLOGY. It would be like if I took potshots at pharma claims by generalizing every limitation that I didn’t immediately have the comprehension to visualize. A different standard is being applied, and it’s not fair to inventors.

    Joe Biden: C’mon, Man!

  13. TFCFM January 12, 2021 11:22 am

    __tr__@#12: “Are you saying that if I find a new solution for sorting photos in a collection, and I write it in JavaScript, I can only claim the specific script that I wrote?

    If I were “saying that,” I would have said that.

    What I am “saying” (hint: read what I wrote) is:

    TFCFM@#10: …what practitioners in all other technical fields do: Claim what you think your invention encompasses, and then fully describe and enable that invention THROUGHOUT ITS SCOPE.

    If you believe that your invention is the idea of sorting photographs a certain way, then claim that idea (surely include some dependent claims to cover what you have actually done as well, at least as a back-up position).

    When you claim your invention, it may be that your claimed “invention” is abstract and therefore not patent-eligible. The “general idea of sorting photographs in the manner X, Y, Z” probably is an abstract idea, as here. If that is so, your dependent claims may nonetheless be patent eligible if they recite some non-abstract (and otherwise inventive) implementation of the abstract idea.

    The mere fact that a standard for patent-eligibility-defeating abstractness may exclude some subject matter from being patent eligible does not mean that the standard is faulty. Such a standard should — of course — exclude from eligibility subject matter that is inappropriately abstract. The fact that *I* (or my client) invented one way of practically-implementing an abstract idea does not (and ought not to) entitle me to claim all practical implementations of that idea.

    It seems to me near-axiomatic that mere implementation of a general idea in this-or-that-particular coding language will seldom, if ever, render a generic-for-abstractness idea patentable (but I suppose it might under the right circumstances; no such circumstances appear to be described in this case). This is, I believe, what the two-part test in Alice is attempting to address.

  14. Anon January 12, 2021 2:15 pm

    that mere implementation of a general idea in this-or-that-particular coding language will seldom, if ever, render a generic-for-abstractness idea patentable

    I love when you use words that highlight your lack of understanding — especially when you do so in a condescending manner.

    You of course realize (or should realize) that any actual claim down to a level of code would not be a “mere implementation,” eh?

    Do you even understand what an implementation is?

    On general terms?

    Yet again, have you ever heard of the patent concept called Ladders of Abstraction?

    It is something pretty much universal outside of picture-claim land.

  15. TFCFM January 13, 2021 10:05 am

    Whining about “ladders of abstraction” does not make an abstract method non-abstract.

  16. Anon January 13, 2021 2:36 pm

    TFCFM,

    No whining from me – your characterization says more about you than you think.

    Are you even familiar with what that term means?