In the past few months, the Federal Circuit reversed a two-year
trend of overturning software patents by
publishing three decisions that outlined
various parameters in which software can be eligible for
patenting. In those decisions (described in previous IP
Spotlight posts published
here) the court cautioned that not all improvements
in computer-related technology are inherently abstract. It
also said that when assessing patent-eligibility, one must be
careful to not use patent-eligibility to invalidate
a claim when the real issue with the claim is obviousness.
A new opinion from the Federal Circuit sets some boundaries in
the other direction, and limits how far software patent holders can
push the boundaries of patent-eligibility. In Intellectual Ventures I LLC v. Symantec
Corp., the court found certain claims of three
software patents to be invalid. The patents were US 5,987,610 (directed to computer virus screening
methods), US 6,073,142 (directed to automated analysis of
e-mail messages) and US 6,460,050 (directed to a system for identifying
The court drew an analogy between the representative claim
of the '142 patent and a corporate mailroom that receives
correspondence and uses business rules to define actions to be
taken based on the application of the rules to the correspondence.
The court found this claimed use of a "rule engine" to be
a "conventional business practice" and noted that
"with the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from
being performed by a human."
In the case of the '050 patent, the court found that the
representative claim was directed to nothing more than
"[c]haracterizing e-mail based on a known list of
The '610 patent was directed to a virus screening method.
The court noted that this patent "involves an idea that
originated in the computer era – computer virus
screening." Nonetheless, the court said that
"[p]erforming virus screening was a long prevalent practice in
the field of computers" and that the representative claim
"does not claim a new method of virus screening or
improvements thereto." The court also noted that "[j]ust
as the performance of an abstract idea on the Internet is abstract,
so too the performance of an abstract concept in the
environment of the telephone network is abstract."
To understand the boundaries of what the Federal Circuit
considers to be patent-eligible, the court's analysis of the
broad claims of the '142 and '050 patents can be compared
to the court's
recent decisions that found claims directed to discrete,
technical solutions to be patent-eligible. However, the
court's analysis of the '610 patent arguably conflicts with
its recent statements in
Bascom Global Internet Services, Inc. v. AT&T Mobility et
al., where the court cautioned that one should not
use patent-eligibility to reject a claim when the real issue
is obviousness. Although not expressly stated in the
decision, the court may have actually considered the possible
pre-emptive effect of the claims, as it did in recent cases
such as Bascom Global and
McRO, Inc. v. Bandai Namco Games America, Inc.
Notably, in a concurring decision Judge Mayer expressed a hard
line view against software patents: "claims directed to
software implemented on a generic computer are categorically not
eligible for patent." Notwithstanding the Supreme
Court's statement to the contrary in Alice v. CLS Bank, Judge Mayer further
argued that "[s]oftware is a form of language," and that
patents such as those at issue in the case "run afoul of the
First Amendment" by "constricting the essential channels
of online communication."
Judge Mayer was not part of any of the court's panels
that upheld software patents earlier this year. Judge Mayer's
comments, while certainly provocative, do not reflect the overall
direction of either the Federal Circuit or the Supreme Court.
Although the court is unlikely to follow his call
for all-out ban on software patents, it may do well to
consider his request to "provide much-needed clarity and
consistency in our approach to patent eligibility.
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