Drawing Software Patent Drafting Guidance in 2021 from an Unlikely Source: the Federal Circuit

By Michael Messinger
January 13, 2021

Honing in on three software cases in which the Federal Circuit found claims patent eligible in 2020 is illuminating for software patent application drafters.

https://depositphotos.com/10584789/stock-photo-advice-help-support-and-tips.htmlSince 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.

Uniloc USA, Inc. v. LG Electronics USA, Inc.

In Uniloc decided April 30, 2020, the court found the following claim eligible:

    1. 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.

Packet Intelligence v. Netscout

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).

TecSec v. Adobe Inc.

In TecSec decided Oct. 23, 2020, the court considered a representative multi-level security method claim:

  1. A method for providing multi-level multimedia security in a data network, comprising the steps of:
  2. A) accessing an object-oriented key manager;
  3. B) selecting an object to encrypt;
  4. C) selecting a label for the object;
  5. D) selecting an encryption algorithm;
  6. E) encrypting the object according to the encryption algorithm;
  7. F) labelling the encrypted object;
  8. G) reading the object label;
  9. H) determining access authorization based on the object label; and
  10. 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.

Passing Muster

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.

 

The Author

Michael Messinger

Michael Messinger is co-founder of Shami Messinger. Mike helps companies of all sizes create intellectual property strategies for protection and to enhance their freedom-to-operate in the computer, electronics and sustainable technologies practice areas. He works with company officers and engineers to identify patentable inventions and build strategic patent portfolios for their company's products and services. Mike helps companies navigate through inter partes review and reexamination. Mike received his JD degree from Georgetown University Law Center and a BS degree in Physics from Duke University. Mr. Messinger currently serves an adjunct professor of patent licensing at Georgetown Law.

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 14 Comments comments. Join the discussion.

  1. George January 13, 2021 2:08 pm

    Why hasn’t Alice had any impact on 103 arguments? It would seem that if claims do not satisfy the requirements of 101 under Alice, then they should not be applicable for 103 objections either. If disclosures do not provide original and unique algorithms in support of claims of novel computer control, they should not be allowed to be cited as prior art against inventions which do so and which fully pass the Alice test. When will Alice also apply to 103 objections?

  2. J. Doerre January 13, 2021 3:52 pm

    George – there is no requirement that disclosure be of patent-eligible subject matter in order to qualify as prior art.

  3. Anon January 13, 2021 10:22 pm

    Nice try, but no.

    Take the exact same cases and use different nouns (in a sense, to anonymize) and a different panel, and you are almost guaranteed a different result.

  4. Concerned January 14, 2021 5:25 am

    Exactly Anon. My (second) patent examiner admits the solution solved a decades old problem. So the examiner makes up a fictional situation, without any evidence, to state my solution only automates a manual process. And if this alleged manual process did exist, how did my automated process solve a decades old problem over and beyond the alleged manual process?

    The latest rejection by the second examiner was after the first examiner was dismissed. The first examiner thinks I should get a patent, the second does not. Exactly Anon’s point.

    The entire process has no credibility. If the law is behind the rejection, pony up real evidence and speak factually, not in circles.

  5. TFCFM January 14, 2021 9:27 am

    I note that the claims at issue in the three cases for which non-eligibility was denied all recite relatively specific structure/step, even when intended function is also recited, and do not merely claim “anything and everything that performs that function.”

    Coincidence? Perhaps. On the other hand, it seems to me that, by claiming what they seem to have actually invented (rather than trying to claim that as well as “everything that might work”), the patentees here avoided at least one type of patent-defeating “abstractness.”

    Surely worth considering — even if only as a ‘backup’ position for one’s “anything-and-everything-that-works” claims.

  6. Curious January 14, 2021 11:47 am

    I note that the claims at issue in the three cases for which non-eligibility was denied all recite relatively specific structure/step.
    Please identify the “specific structure” recited in each of these three cases (or in at least one if three is too many).

  7. J. Doerre January 14, 2021 1:24 pm

    Many thanks to anyone trying to bring clarity to this muddled area of the law. I think it is worth highlighting this article’s emphasis on “evidence of performance improvements over conventional systems, description of a technical problem/solution, and technological advantages.”

    One thing to recognize, although it is frustrating, is that some “inventions” simply do not provide such improvements. Note that two of these cases involved networking technologies, and the third relates to a set of encryption patents from the 90s that had been at issue at the Federal Circuit multiple times before eligibility ever came up.

  8. Curious January 14, 2021 3:42 pm

    One thing to recognize, although it is frustrating, is that some “inventions” simply do not provide such improvements.
    Let’s go back to Bilski, which cited Diamond v. Diehr in stating that Courts “should not read into the patent laws limitations and conditions which the legislature has not expressed.”

    35 USC 101 reads “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” While a “new and useful improvement thereof” is one option, it isn’t the only option. Consequently a process, machine, manufacture, or composition of matter need only be new and useful.

    However, as the Supreme Court has done since Benson, the Courts just cannot resist messing with the simple (and intentionally expansive) language of 35 USC 101.

  9. Frank Coppa January 15, 2021 9:06 am

    Nice summary; very interesting

  10. TFCFM January 15, 2021 9:49 am

    Curious@#6: “Please identify the “specific structure” recited in each of these three cases

    In the Uniloc case, the claim appears to be a 112(f) “means plus function” claim, meaning that the claim is limited to the elements actually disclose in the specification (and their equivalents).

    The claim in the Packet Intelligence case is not reproduced here. However, the quotation from the case indicates that the court held that “The specifications likewise explain how the elements recited in the claims refer to specific technological features functioning together … rather than an abstract result.

    The claim reproduced here for the TecSec case recites a method that includes nine particular steps (reference #s 2-10 in the claim) that recite discrete actions, rather than “anything and everything that might achieve a goal.”

  11. TFCFM January 15, 2021 9:58 am

    Curious@#8: “as the Supreme Court has done since Benson, the Courts just cannot resist messing with the simple (and intentionally expansive) language of 35 USC 101.

    The courts have been interpreting the patent statutes since long before Benson. Indeed, even for the specific issue of eligibility, the court’s interpretations excluding abstract ideas and laws of nature go back at least to the Telegraph case (O’Reilly v. Morse in 1853), and probably long before that.

    Regardless of when courts may have started performing their judicial function in ways you dislike, Congress has certainly been on notice since at least 1853 that the patent laws were being interpreted as having exclusions. By my count, that has left Congress at least 167 annual chances to change that interpretation if they believed it to be incorrect — and yet they haven’t.

    I hold out little optimism that “This might be the year!” that Congress declares that, patent-eligibility-wise, “anything goes!” and that we should henceforth ignore more than a century-and-a-half of legal precedent on the eligibility issue.

  12. Curious January 15, 2021 11:13 am

    In the Uniloc case, the claim appears to be a 112(f) “means plus function” claim, meaning that the claim is limited to the elements actually disclose in the specification (and their equivalents).
    The Court did not point to that as the reason why they held the claims to be non-abstract. Rather, they wrote “The claims at issue do not merely recite generalized steps to be performed on a computer using conventional computer activity. Instead, they are directed to ‘adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.'” Hence, the court focused on the function — not the structure.

    The claim in the Packet Intelligence case is not reproduced here. However, the quotation from the case indicates that the court held that “The specifications likewise explain how the elements recited in the claims refer to specific technological features functioning together … rather than an abstract result.”
    I pulled up USP 6,665,725, which is the first patent listed in the decision. The claims refers to a packet, a connection point, a computer network, protocol descriptions, protocols, layered model, layer level, child protocol, locations in the packet, protocol specific operations, database, memory, data structure, database entry, index values, indication of validity, child recognition pattern, base level, child field. All generic descriptions of fairly common items in networks. Specific structure? No.

    The claim reproduced here for the TecSec case recites a method that includes nine particular steps (reference #s 2-10 in the claim) that recite discrete actions, rather than “anything and everything that might achieve a goal.”
    I would wager that most inventions killed under 35 USC 101 are far similar to what is recited in TecSec than “anything and everything that might achieve a goal.” For example, these are the claims of Two-Way Media (that Court cited in Uniloc and distinguished over):
    1. A method for transmitting message packets over a communications network comprising the steps of:
    converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol,
    for each stream, routing such stream to one or more users,
    controlling the routing of the stream of packets in response to selection signals received from the users, and
    monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.

    This claim was held to be ineligible under 35 USC 101. What is the “anything and everything that might achieve a goal” being claimed here? Compare that claim with the one held to be patent eligible in Uniloc:
    2. 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.

    Someone please explain how that claim (in Uniloc) is patent eligible whereas the claim from Two-Way Media is not. In Uniloc, the court wrote “[t]he claims we held ineligible in Two-Way Media similarly failed to concretely capture any improvement in computer functionality.” Where is the requirement that “claims … concretely capture any improvement” in 35 USC 101 (or anywhere else in the statutes)? There is, of course, no such requirement. Rather, it is the Court “read[ing] into the patent laws limitations and conditions which the legislature has not expressed” — inconsistent with Supreme Court precedent.

    The farther out we get from Alice, the more of these inconsistent decisions we’ll get with each panel at the Federal Circuit creating ever more exceptions to exceptions to exceptions — in order to distinguish their present decision from past decisions — all of which are entirely unhinged from either statute or Supreme Court precedent.

    Certain members of the Federal Circuit itself have admitted (on several occasions) that their case law is unworkable morass. Anybody who doesn’t understand this is either (i) ignorant as to the state of the law or (ii) happy with the state of the law in that it works to kill the vast majority of patents subject to a challenge under 35 USC 101.

  13. Curious January 15, 2021 11:49 am

    Indeed, even for the specific issue of eligibility, the court’s interpretations excluding abstract ideas and laws of nature go back at least to the Telegraph case (O’Reilly v. Morse in 1853), and probably long before that.
    Have you actually read that case? I have. Aside from it being an incoherent mess (the writing style of the times), the Court doesn’t mention exclusions to patent eligibility or abstract ideas. They don’t mention 35 USC 101 because the current version was enacted until 1952. The Patent Act of 1952 made substantial changes to patent law — partially in response to the Supreme Court mucking around with the law. A less-strained reading of O’Reilly v. Morse is that it was about enablement more than exceptions to patentable subject matter. The current exceptions to 35 USC 101 can best be traced to Benson.

    that we should henceforth ignore more than a century-and-a-half of legal precedent on the eligibility issue
    You still don’t get that Congress gets to write the patent laws — not the courts. If they say “anything goes,” then that is the law. If Congress eliminates these judge-made exceptions, then that is the law.

    On a side note, I was reading Rich’s commentary regarding the 1952 laws and he makes the point of “[p]rogress in useful arts is made as well by what may be called enrichment as it is by improvement.” As one example, he pointed to the “talking pictures industry” and contrasted “sound-on-film” and “sound-on-disc.” He noted that a first commercialization that “discs were first used because … they were better.” However, he noted that these “are but obsolete and sound-on-film prevails.” He made this point to counteract the notion that the Constitution requires “that an invention to be patentable must be better than the prior art.” However, when we see the Federal Circuit’s making patent eligibility decisions based upon whether a patent “concretely capture[s]” an improvement, it is clear that they’ve gone of the track for reasons I have discussed elsewhere. There is no requirement that a patent claim an improvement.

  14. Pro Say January 15, 2021 2:34 pm

    Thanks Curious — excellent analysis as always.

    America could use a handful of “Curious,” “Anon,” and “B” judges on the CAFC; and SCOTUS as well.

    If only.

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