Inventions directed to "pure software" have arguably
had the most difficult time surviving Alice challenges.
Software is often characterized as an "abstract idea"
without more, and the inventive step requirement in Alice
seems difficult to prove absent a significant technological
advancement. The Northern District of Georgia recently rejected its
special master in favor of allowing a network-based software patent
survive a patentable subject matter challenge.
The case of Tridia Corp. v. Sauce Labs, Inc., (Case No.
1:15-cv-2284, N.D. Georgia Sept. 28, 2016) analyzed a patent
directed to "remote execution of computer programs over a
network." The invention was specifically directed to a problem
found in demo programs where a purchaser would like to first sample
a computer program before purchasing it. Previously, a user must
download the demo program, install it, and then sample the program.
The patent at issue allowed the user to remotely execute the
program to sample it, removing several steps that may otherwise
cause the purchaser's interest in the program to wane, and
therefore cause the purchaser not to buy the program.
The court first discussed how identifying what is an
"abstract idea" is not an easy task, something the
Supreme Court and lower courts have all had difficulty with. The
court noted the patent owner defined the invention differently, as
improving "computer function by allowing on demand control of
a remote computer without requiring installation of a remote
control program on the remote computer."
Applying the first step of Alice, the court noted it is
best to analogize the patent at issue against prior inventions
determined to be "abstract ideas" based on the difficulty
of defining what does, and does not, constitute an abstract idea.
The court found no such analogous cases, concluding
"Plaintiff's patent is not directed to a mathematical
algorithm or a longstanding fundamental economic or longstanding
business challenge, such that is claims are clearly directed to an
Even assuming the first Alice step was met, the court
concluded the invention was directed to a "technological
advance." The patent "overcomes a flaw in existing
technology—the inability to remotely install software
on-demand without pre- installation." The court therefore
found, under either Alice step, that the claims are
directed to patent-eligible subject matter, at least at the
This case involves a fairly typical Alice analysis, but
emphasizes the point that an "abstract idea" is so poorly
defined by the case law that analogizing to what does, and does
not, constitute an abstract idea is likely the best and simplest
analysis. This presents somewhat of a "chicken and the
egg" problem in that courts must set precedent to allow such
analogizing, i.e., a plaintiff or defendant cannot analogize to
that which has not been decided. Yet, with no direct comparisons
between inventions, analogizing to past cases will allow more
examples of the line between patentable and unpatentable subject
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
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Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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