Honing in on three software cases in which the Federal Circuit found claims patent eligible in 2020 is illuminating for software patent application drafters.
Since the Supreme Court’s Alice decision in 2014, inventors have faced extra hurdles trying to protect their software-related inventions with patents. A chief obstacle has been satisfying the two-part test for eligibility under Section 101 set forth in Alice and Mayo. To meet this test, claimed subject matter must not be directed to a judicial exception, such as an abstract idea, (Step One), and if it is, must add “significantly more” to provide an inventive concept (Step Two).
The Alice/Mayo test is applied during examination at the U.S. Patent and Trademark Office (USPTO) and can be a defense raised against enforcement of the patent. However, one aspect inventors have most control over is the drafting of their patent specifications that describe their claimed inventions. The challenge software patent application drafters now face is how to draft patent applications that can withstand scrutiny under the Alice/Mayo test.
Theodore Rand reported in IPWatchdog last week a disturbing but not surprising trend. Rand found that, in 2020, 81% of software-related patents on appeal for subject matter eligibility in decided precedential cases (22 of 27) were found invalid. But in three cases, software-related patents were found drawn to eligible subject matter for patent purposes. Id.
In each of the three cases, the appeals court pointed to aspects of the patent specifications themselves. Looking more closely at the representative claims and court’s comments with respect to the corresponding patent specification is illuminating. In particular, the court looked to the specifications for evidence of performance improvements over conventional systems, description of a technical problem/solution, and technological advantages.
In Uniloc decided April 30, 2020, the court found the following claim eligible:
- A primary station for use in a communications system comprising at least one secondary station, wherein means are provided
for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and for adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.
(Uniloc, p. 4).
In so doing, the CAFC specifically referenced improvements over conventional communications systems described in the specification. The court also cited the description in the Abstract of an advantage provided by the claimed invention which “enables a rapid response time without the need for a permanently active communication link between a parked secondary station and the primary station.” Id., p. 3. As a result, the court held “the claims at issue are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems.” Id., p. 7. The court continued, “like the claims in DDR, the claimed invention changes the normal operation of the communication system itself to ‘overcome a problem specifically arising in the realm of computer networks.’” Id., p. 7. In this way, the court found the claims are not directed to an abstract idea under Step One of the Alice/Mayo test, but instead “are directed to a specific asserted improvement to the functionality of the communication system itself.” Id., p. 10.
In Packet Intelligence, decided July 14, 2020, the court found a representative apparatus claim 19 eligible. Claim 19 was directed to a packet monitor and included a packet acquisition device, input buffer memory, parser subsystem, memory for storing a database, a look up engine, and a flow insertion engine. (Packet Intelligence, pp. 3-4).
In finding the claim eligible under Step One, the court again references the patent specification. In particular, the court looks to technological problems and solutions described in the patent itself:
The asserted patents’ specifications make clear that the claimed invention presented a technological solution to a technological problem. The specifications explain that known network monitors were unable to identify disjointed connection flows to each other, and the focus of the claims is a specific improvement in computer technology: a more granular, nuanced, and useful classification of network traffic. See, e.g., ’751 patent col. 2 ll. 53–56; col. 3 l. 2–col. 4 l. 6. The specifications likewise explain how the elements recited in the claims refer to specific technological features functioning together to provide that granular, nuanced, and useful classification of network traffic, rather than an abstract result. See, e.g., ’789 patent col. 23 l. 38—col. 27 l. 50 (describing the technological implementation of the lookup engine and flow insertion engine as used in the claims); see also ’725 patent col. 10 l. 3—col. 13 l. 4. (emphasis added)
(Packet Intelligence, pp. 14-15).
In TecSec decided Oct. 23, 2020, the court considered a representative multi-level security method claim:
- 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.
(TecSec, pp. 3-4).
In its eligibility determination, the court found the claim was not directed to an abstract idea under Step One. The court looked at certain prosecution history before the USPTO and again at the patent specification itself. As explained by the court a Step One analysis depends among other things on “what the patent asserts to be the claimed advance.” Id., p. 24 (emphasis added).
The court noted the specification made clear the combination of labeling with the required encryption “is part of the focus of the claimed advance.” Id., p. 26. The court continued at length to cite where the specification described both a deficiency and the technical solution using labeling in multilevel security with encryption. Id., pp. 26-28.
Despite a stream of adverse decisions on patent eligibility last year, we find the Federal Circuit perhaps pointing out some ways to protect software-related inventions. Often, a patent drafter must balance a desire for broad protection for purposes of infringement with narrower protection for purposes of validity. In the computer-related software arts at least, the Federal Circuit showed in 2020 how important the patent specification may be in striking the right balance and passing muster under the Alice/Mayo test in 2021.