United States: Federal Circuit Sort Of Clarifies The Waters Of Patent Eligibility

In recent cases addressing patent eligibility of software patent claims, the US Court of Appeals for the Federal Circuit reached different conclusions in different cases, based on the Alice two-step inquiry. Most notable was the Federal Circuit's reiteration of its Enfish decision ( IP Update, Vol. 19, No. 6) in reversing a district court ruling that found claims directed to computer animation automation patent ineligible. McRO, Inc. v. Bandai Namco Games America Inc., et al., Case Nos. 15-1080; -1081; -1082; -1083; -1084; -1085; -1086; -1087; -1088; -1089; -1090; -1092; -1094; -1095; -1096; -1097; -1098; -1099; -1100; -1001 (Fed. Cir., Sept. 13, 2016) (Reyna, J). In three other cases, however, the Federal Circuit reached a different conclusion, finding the claims patent ineligible. Viewed as an ensemble, these cases reflect the Court's struggle to engage in line drawing as to what qualifies as patent eligible subject matter in software patent claims. Affinity Labs of Texas, LLC v. DirecTV, LLC, et al., Case Nos. 15-1845; -1846; -1847; -1848 (Fed. Cir., Sept. 23, 2016) (Bryson, J); Affinity Labs of Texas, LLC v. Amazon.com Inc., et al., Case No. 2015-2080 (Fed. Cir., Sept. 23, 2016) (Bryson, J); Intellectual Ventures I LLC v. Symantec Corp., et al., Case Nos. 15-1769; -1770; -1771 (Fed. Cir., Sept. 30, 2016) (Dyk, J) (Mayer, J, concurring) (Stoll, J, dissenting in part).

In McRO, the patents at issue related to individual 3D models, where each of the models included datapoints on certain areas of the face. In conventional modeling, the animator, using a computer, manually enters certain weights to the 3D models at certain times based on a timed transcript. A computer program then takes the animator manual inputs and interpolates the data to create intermediate frames. The McRO patents described this process as tedious and time consuming and were aimed at automating the process by providing specific rules that applied to the timed transcript, to thereby automatically generate the weight output values.

The Federal Circuit explained that the claimed process for animating characters using a computer was patent eligible because the claimed process used different techniques from those that animators had previously accomplished only manually. The Court concluded that the claimed invention utilized the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. The Court noted that there was no evidence establishing that the claimed process was the same process as the prior practice used by animators, and that the specific features of the rules as claim limitations reflect a specific implementation not demonstrated in existing manual animation techniques.

The Federal Circuit found that the claimed rules, not the use of a computer, improved the existing technological process, dismissing the defendants' argument that the claims simply used a computer as a tool. The Court disagreed with the district court that the claims were directed to the abstract idea of a set of automated rules for lip-synchronized 3D animation, explaining that the district court "oversimplified the claims" by looking at them generally and by failing to account for specific limitation in the claims. The Court also found that the claims did not preempt all approaches that use rules for achieving automated lip-synchronization of 3D characters, noting that the claims were limited to specific rules for automatically animating characters using particular information and techniques. The Court therefore concluded that the claims were patent eligible based on the Alice step one abstract idea inquiry.

In the first of the Affinity Labs cases, Affinity Labs sued nine defendants alleging patent infringement by marketing a system that allows customers to receive regional radio broadcasts on their cellphones even when their cellphones are outside the regions reached by the stations' broadcast signals. The district court concluded that the claimed invention was directed to an abstract idea, explaining that the purpose of the patent to disseminate regionally broadcast content to users outside the region was a well-known, longstanding business practice. The district court also found the claimed "downloadable application with graphical user interface" to be insufficient to qualify as an inventive concept.

The Federal Circuit agreed that the concept of providing out-of-region access to regional broadcast content is an abstract idea, citing a lack of any positive recitation of a non-generic function or component in the claims that provides, with any degree of specificity, a blueprint of how to disseminate regional broadcast content to a user outside the region over a wireless, cellular telephone service. The Court noted that the specification was scant in terms of providing any technological details regarding the manner in which the invention accomplishes the delivery of ordinary broadcast radio signals to cellphones, explaining that the specification included only a "very brief discussion" that was pertinent to the out-of-region broadcasting claims. Unlike in McRO, the Federal Circuit concluded that the claims were not directed to a technical improvement in cellular telephones but rather to the use of cellular telephones as a tool in the aid of a process focused on an abstract idea.

Regarding step two of the Alice inquiry, the Federal Circuit found that the claimed invention did not provide an inventive concept that transformed the abstract idea of remote delivery of regional broadcasting into a patent-eligible application of that idea, explaining that the claims simply recited generic features of cellular telephones, including routine functions of those features. The Court disagreed with Affinity Labs that the claimed downloadable application for displaying the out-of-region broadcast content amounted to an inventive concept that was novel as of the effective filing date, stating that the patent eligibility inquiry does not turn on the novelty of the feature. Citing its BASCOM decision IP Update, Vol. 19, No. 8), the Court explained that the technical solution recited in the claims in BASCOM stands in stark contrast to the lack of any technical solution recited in the Affinity Labs patent claims. The Court ultimately found that the Affinity Labs patent claims were subject matter ineligible.

Similarly, in the second Affinity Labs case, the patent claims were found patent ineligible under the Alice step two inquiry. In this case, Affinity Labs sued Amazon alleging infringement by marketing a system that allowed customers to stream music from a customized library. The district court found the claims to be subject matter ineligible under Alice. On appeal, the Federal Circuit agreed that the patent claims were directed to an abstract idea, explaining that the idea of delivering media content to electronic devices was a well-known business practice and that the idea of tailoring content to a user was abstract. The Court further noted that the claims were written in largely functional terms, and that stating the relevant functions in general terms absent any technical discussion in the claims and the specification does not convert the abstract idea into a concrete technical solution to a problem.

In the Intellectual Ventures (IV) case, the patent owner sued Symantec and Trend Micro for infringement of various claims, and the district court held that claims of two of the patents were subject matter ineligible and that an asserted claim of the third patent was eligible. On appeal, the Federal Circuit affirmed the ruling on the first two patents but reversed in part with respect to the third patent, finding all asserted claims of the third patent ineligible. In the first IV patent, the Federal Circuit agreed with the district court that the idea of filtering files and/or emails is a long-prevalent fundamental practice that constitutes an abstract idea, equating such practice to people receiving mail and discarding certain mail based on characteristics of that mail. The Court dismissed IV's argument that since the prior art did not anticipate or render obvious the asserted claims under the Alice step two inventive concept inquiry, the claims were not abstract. The Court explained that the lack of prior art disclosure does not suggest that the features of "determining" and "outputting" are anything other than routine and conventional, let alone not abstract. To the contrary, the Federal Circuit found the claims in issue distinguishable from those at issue in Enfish and BASCOM, explaining that the challenged claims contained no limitations that addressed the alleged technical improvements of requiring automatic updates to the antivirus software or dealing with the large volume of such software. In regard to the second IV patent, the Federal Circuit concluded that the disclosure of only generic computers performing generic functions to implement the idea of automatic deferral and review of email messages using applied business rules was also routine and conventional, and that it did not improve, and was not directed to an improvement in, the functioning of the computer itself. Thus, these claims were also found to be patent ineligible under Alice

The third IV patent was directed to using computer virus screening in a telephone network. Again, the Federal Circuit found that the claimed subject matter did not improve or change the way a computer functions, dismissing IV's argument that the claim limitations narrowed the asserted claim to a specific way of screening for computer viruses within the telephone network and did not preempt all virus detection mechanisms. 

On this issue, disagreeing with the majority, the dissent argued that that the asserted claim of the third IV patent "advantageously screen[s] computer data for viruses within a telephone network before communicating the computer data to an end user," and viewed the invention as a fundamental architectural shift from prior-art virus screening. In finding no meaningful difference between the claims found to be patent eligible in BASCOM and the asserted claim, the dissent argued that the claimed shift of the virus screening software from end-user locations to within the telephone network amounted to an inventive concept. Judge Stoll also noted that while the network components recited in the claim may be conventional, in his view the asserted claim was patent eligible as an ordered combination. 

In a concurring opinion, Judge Mayer argued that the claims, in sweeping terms, were simply directed to screening a communication for viruses, a concept that (if patentable) has the potential to disrupt or even derail large swaths of online communication. Judge Mayer argued that "[i]t is well past time to return software to its historical dwelling place in the domain of copyright," noting that software is akin to a work of literature or a piece of music. Judge Mayer concluded that simply declaring that software implemented on a generic computer falls outside the § 101 protections would provide much-needed clarity and consistency in the approach to patent eligibility, ending the semantic difficulties of trying to bootstrap software into the patent system.

Federal Circuit Sort Of Clarifies The Waters Of Patent Eligibility

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