Using narrow claim breadth as a sign of software patent-eligibility

Judge Raymond Chen of the United States Court of Appeals for the Federal Circuit, October 2015 at the AIPLA annual meeting.

Judge Raymond Chen of the United States Court of Appeals for the Federal Circuit, October 2015 at the AIPLA annual meeting.

In two cases written by Judge Chen (DDR Holdings, LLC v. L.P., 2013-1505 (Chen, Wallach, Meyer (dissent) and Bascom Global Internet Services, Inc., v. AT&T Mobility LLC, 2015-1763 (Newman, O’Malley, Chen)) the patents were found to be patent-eligible principally because analysis typically regarded as being under Mayo step 2 demonstrated that the claims added “something more” to the abstract ideas than merely well-understood and conventional steps. In effect, Judge Chen’s opinions focus on whether the narrowness of the claim is adequate. If it is, the claim is not abstract. How narrow is “narrow enough” is, like “abstract”, not defined, but this approach bears a closer resemblance to the original limiting principle of the abstract idea doctrine – preemption – than many recent decisions.

Beginning with DDR, the claim at issue was:

19.  A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:

(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages;

(i) wherein each of the first web pages belongs to one of a plurality of web page owners;

(ii) wherein each of the first web pages displays at least one active link associated with a
commerce object associated with a buying opportunity of a selected one of a plurality of
merchants; and

(iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;

(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:

(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages;

(ii) automatically identify as the source page the one of the first web pages on which the link has been activated;

(iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and

(iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays:

(A) information associated with the commerce object associated with the link that has been activated, and

(B) the plurality of visually perceptible elements visually corresponding to the source page.

Both of Judge Chen’s opinions observe that in some cases, patent-ineligible abstract ideas can be plainly identifiable and divisible from the generic computer limitations recited by the remainder of the claim, citing cases such as Alice, Ultramercial Inc. v. Hulu, LLC, ___ F.3d ___ (Fed. Cir. 2014), buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014), Accenture Global Services, GmbH v. Guidewire Software, Inc., 728 F.3d 1336, (Fed. Cir. 2013), and  Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012), all of which involve finance-related claims. But in both of Judge Chen’s cases, he grappled with claims that did not seem to him to be plainly identifiable abstract claims, and he tends to use “something more” analysis reminiscent of Mayo step 2 to find patent-eligibility.

According to Judge Chen in DDR, “[u]nder Supreme Court precedent, the claims were recited too broadly and generically to be considered sufficiently specific and meaningful applications of their underlying abstract ideas”. Here, it appears that the concern of Judge Chen is to avoid categorizing certain fields and in particular business methods as being patent-ineligible, since Alice explicitly rejected this (seemingly inevitable) conclusion of its abstract idea jurisprudence which is unbounded by any limiting principle other than whether claims at issue look “similar enough” to claims previously held to be abstract. This concern with breadth as a measure of abstractness permeates DDR.

DDR begins with Mayo step 1 analysis without definitively declaring whether the claims are or are not abstract. Instead, the opinion observes what the claims are not: they are not a mathematical algorithm or a fundamental economic or longstanding commercial practice, but instead address a business challenge (retaining website visitors), a challenge particular to the Internet. Instead of declaring this not to be “abstract”, however, Judge Chen simply points out that identifying the precise nature of the abstract idea is not as straightforward as in Alice given the various varying formulations of the underlying abstract idea presented by the infringer and by the dissent.

Perhaps importantly, Judge Chen admits that the claims “are similar to the claims in the cases discussed above in the sense that the claims involve both a computer and the Internet”, but that the claims “stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks”, namely, the problem of retaining website visitors.

But then Judge Chen somewhat doubles back on the above statement, noting that in Ultramercial claims “directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before” alone could not render its claims patent-eligible. In particular, the CAFC found some of the claims to merely recite the abstract idea of “offering media content in exchange for viewing an advertisement,” along with “routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet.” The reason the DDR claims are different enough from those in Ultramercial is because they do not broadly and generically claim “use of the Internet” to perform an abstract business practice (with insignificant added activity), but instead specify how interactions with the Internet are manipulated to yield a desired result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.

Judge Chen’s emphasis on claim breadth as a measure of abstraction is further manifest in his invocation of the apparently not-yet-dead doctrine of preemption: “[i]t is also clear that the claims at issue do not attempt to preempt every application of the idea of increasing sales by making two web pages look the same…they recite a specific way to automate the creation of a composite web page by an ‘outsource provider’ that incorporates elements from multiple sources in order to solve a problem faced by websites on the Internet. As a result, the claims include ‘additional features’ that ensure the claims are ‘more than a drafting effort designed to monopolize the [abstract idea]’” (citing Alice).

This is interesting, because Judge Chen elides right past deciding Mayo step 1 one way or the other and uses step 2 to find patent-eligibility. “In short, the claimed solution amounts to an inventive concept for resolving this particular Internet-centric problem, rendering the claims patent-eligible…. In sum, the claims are unlike the claims in Alice, Ultramercial, buySAFE, Accenture, and Bancorp that were found to be ‘directed to’ little more than an abstract concept. To be sure, the claims do not recite an invention as technologically complex as an improved, particularized method of digital data compression. But nor do they recite a commonplace business method aimed at processing business information, applying a known business process to the particular technological environment of the Internet, or creating or altering contractual relations using generic computer functions and conventional network operations, such as the claims in Alice, Ultramercial, buySAFE, Accenture, and Bancorp.” So are the DDR claims patent-eligible because they are not abstract, or because they are abstract but add sufficiently more to the abstract idea – or simply because they suit Judge Chen’s view about how appropriately broad claims should be?

Turning to Bascom Global Internet Services, Inc., v. AT&T Mobility LLC 2015-1763 (Newman, O’Malley, Chen), the patent-eligible claim at issue was:

1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:a local client computer generating network access requests for said individual controlled access network accounts;at least one filtering scheme;

a plurality of sets of logical filtering elements; and

a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

The district court found that the claims were directed to the abstract idea of “filtering content” because “content provided on the Internet is not fundamentally different from content observed, read, and interacted with through other mediums like books, magazines, television, or movies.” The district court determined that no individual limitation was inventive because each limitation, in isolation, was a “well-known, generic computer component” and that the limitations in combination were not inventive either because “[f]iltering software, apparently composed of filtering schemes and filtering elements, was well-known in the prior art” and “using ISP servers to filter content was well-known to practitioners.” The district court also noted that the absence of specific structure for the generic computer components “raises the likelihood that such claims could preempt every filtering scheme under the sun.”

Not so, said the CAFC. Look at Enfish, for example, wrote Judge Chen, in which a particular improvement to a database system was patent-eligible under step one, relying on “specific improvements” recited in the claim. This looks like another appeal to breadth – or lack thereof – as being the test for patent-eligibility. Consistently with DDR, Judge Chen here admits again that “in other cases involving computer related claims, there may be close calls about how to characterize what the claims are directed to…[i]n such cases…an analysis of whether there are arguably concrete improvements in the recited computer technology could take place under step two.” Per Judge Chen, step 1 of Mayo can be hard, maybe too hard to clearly base a conclusion as to whether something is abstract, in which case: “some inventions’ basic thrust might more easily be understood as directed to an abstract idea, but under step two of the Alice analysis, it might become clear that the specific improvements in the recited computer technology go beyond ‘well-understood, routine, conventional activit[ies]’ and render the invention patent-eligible….[w]e took this step-two path in DDR.”

With respect to the claims at issue in this case, Judge Chen reinforces the notion that the claims are directed to a “content filtering system for filtering content retrieved from an Internet computer network” as a broad measure of the claims by relying on what appears to be the Field of the Invention in the specification. “The specification reinforces this notion by describing the invention as relating “generally to a method and system for filtering Internet content.” Judge Chen thus agrees with the district court that filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract.

The CAFC rejected the patentee’s contention that the claims are directed to something narrower: the specific implementation of filtering content set forth in the claim limitations. Specifically, the patentee asserted that claim 1 is “directed to the more specific problem of providing Internet-content filtering in a manner that can be customized for the person attempting to access such content while avoiding the need for (potentially millions of) local servers or computers to perform such filtering and while being less susceptible to circumvention by the user”. Puzzlingly, the CAFC “recognize[s] that this court sometimes incorporates claim limitations into its articulation of the idea to which a claim is directed” but this case presents a “close call about how to characterize what the claims are directed to.”  Here, in contrast to Enfish, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a non-abstract idea. “We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.” So much as DDR, this case elides over explicitly deciding Mayo step 1.

With respect to step two and the search for an “inventive concept”, the CAFC agrees that the claims, taken individually, recite generic computer network and Internet components, none of which is inventive by itself. But the ordered combination of these individual claim limitations was patent-eligible because “the district court’s analysis in this case, however, looks similar to an obviousness analysis under 35 U.S.C. § 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” That sure sounds like an obviousness analysis, doesn’t it?

Because the inventive concept claimed is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user, a design that gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server, on this limited record the CAFC was unable to say that the claims cannot be said, as a matter of law, to have been conventional or generic.

While this much so far is less than a model of clarity, Judge Chen, true to form, invokes a narrow breadth as a sign of patent-eligibility by using the occasional test of preemption: The claims do not “preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.”

Similar to DDR, although the instant invention “is engineered in the context of filtering content, the invention is not claiming the idea of filtering content simply applied to the Internet. The patent is instead claiming a technology-based solution (not an abstract-idea-based solution implemented with generic technical components in a conventional way) to filter content on the Internet that overcomes existing problems with other Internet filtering systems. By taking a prior art filter solution (one-size-fits-all filter at the ISP server) and making it more dynamic and efficient (providing individualized filtering at the ISP server), the claimed invention represents a ‘software-based invention[ ] that improve[s] the performance of the computer system itself.’”


CLICK HERE to CONTINUE READING… Up next will be a review of Judge Hughes’ decisions in Enfish, LLC v. Microsoft Corp., 2015-1244 (Moore, Taranto, Hughes) and TLI Communications LLC v. AV Automotive L.L.C., 2015-1372, -1376, -1377, -1378, -1379, -1382, -1383, -1384, -1385, -1417, -1419, -1421 (Dyk, Schall, Hughes) the analysis of which both essentially turned on Mayo step 1.


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Join the Discussion

7 comments so far.

  • [Avatar for Anon]
    July 28, 2016 05:42 am

    The “something more” is now being confused with “adding to the claim”….

    The “something more” that the Court speaks about is already in the claim.

    Your last sentence is simply something that the Supreme Court flatly rejected.

  • [Avatar for Louis Iselin]
    Louis Iselin
    July 27, 2016 10:02 pm

    We can all read what the Supreme Court has said, but the courts and the USPTO have not agreed on what the Supreme Court meant, so we all seek clarity where we can find it. Just because you think the article confuses doesn’t mean that others won’t find the analysis enlightening. COAs have split hairs on legal issues for decades. Just how can an application of an idea still be “abstract,” when concrete equipment is being used? Finding that line requires narrowing the claim by adding something more. But how many words and phrases that must be parsed have been left undefined by the Supreme Court? The common law rule that 101 must be addressed before 102 and 103 is the root cause of this nonsense. Most Supreme Court cases on 101 would never reach there if 102 and 103 had been properly applied first.

  • [Avatar for Anon]
    July 27, 2016 09:32 pm

    I dismissed the article because the different legal concepts collide with what the Supreme Court has said – as is clearly present in my comment Louis.

    That’s NOT a healthy “intersection,” by the way, that is a collision which does more to confuse than to clarify.

    Hence, my post.

  • [Avatar for Louis Iselin]
    Louis Iselin
    July 27, 2016 04:27 pm

    True, adding something more and narrowing of a claim are different legal concepts. They are also related, as Kraterous mentioned. And they directly intersect in the issue of patentable subject matter. So you cannot dismiss the article solely for that reason.

  • [Avatar for Anon]
    July 27, 2016 12:20 pm


    They are different legal concepts.

    No pebble for you grasshopper.

  • [Avatar for Krateros]
    July 26, 2016 10:32 pm

    ““Adding something more” and “narrowness of the claim” are not interchangeable concepts.” Riddle me this, grasshopper: if you “add something more” to a claim, how are you not narrowing it? Maybe you should have given it more than one reading, with an open (or at least, not logic-challenged) mind.

  • [Avatar for Anon]
    July 26, 2016 03:57 pm

    I think that the editorial approach here is more confusing than helpful.

    “Adding something more” and “narrowness of the claim” are not interchangeable concepts as is being attempted here and the Supreme Court declaration that even a narrow selection for something otherwise ineligible will not make the claim eligible strongly suggests that even the attempt to treat as interchangeable should be avoided.

    Truth be told, I did not even make it through one reading of the article for this reason.