Using a European technical effect approach to software patent-eligibility

Judge Todd Hughes of the United States Court of Appeals for the Federal Circuit

Judge Todd Hughes of the United States Court of Appeals for the Federal Circuit

Previously, I analyzed Judge Chen’s pro-patent decisions in DDR Holdings and BASCOM, both of which held the claims at issue patent eligible under the second step of the Mayo analysis. The approach taken by Judge Chen seems to differ with the approach taken by Judge Hughes, who also recently authored an opinion finding software claims patent eligible in Enfish, LLC v. Microsoft Corp., 2015-1244 (Moore, Taranto, Hughes).

In contrast to the way patent eligibility was handled by Judge Chen, in the two cases written by Judge Hughes (Enfish 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 essentially turned on Mayo step 1, in one case finding that the claims were not directed to an abstract idea and in the other finding that they were. While Judge Hughes also focuses on the breadth of the claim, he furthermore appears to employ a “technological arts” approach reminiscent of European law and advocated by Judge Mayer in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).

In contrast to Judge Chen’s analysis, Judge Hughes, employing different reasoning, finds the claim in TLI Communications to be patent-ineligible because it is abstract and the claim in Enfish to be patent-eligible because it is not abstract. In TLI the claim at issue was:

17.  A method for recording and administering digital images, comprising the steps of:

recording images using a digital pick up unit in a telephone unit,

storing the images recorded by the digital pick up unit in a digital form as digital images,

transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,

receiving the data by the server,

extracting classification information which characterizes the digital images from the received data, and

storing the digital images in the server, said step of storing taking into consideration the classification information.

On its face, the CAFC held that the above claim is drawn to the concept of classifying an image and storing the image based on its classification. While the claim requires concrete, tangible components such as “a telephone unit” and a “server”, this opinion echoes Bascom in relying on the specification, which “makes clear that the recited physical components merely provide a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner. And the specification’s emphasis that the present invention ‘relates to a method for recording, communicating and administering [a] digital image’ [the Field of Invention again] underscores that [the] claim is directed to an abstract concept.”

Contrasting this claim with Enfish, Judge Hughes asserts that the claims here are not directed to a specific improvement to computer functionality. “Rather, they are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two. According to the patent, the problem facing the inventor was not how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data. Nor was the problem related to the structure of the server that stores the organized digital images. Rather, the inventor sought to ‘provid[e] for recording, administration and archiving of digital images simply, fast and in such way that the information therefore may be easily tracked.’”

Unlike Judge Chen’s breadth-based approach, Judge Hughes appears to adopt the proposal of using the European technical effect ( or “technological arts”) analysis to determine whether a U.S. claim is patent-eligible. “For these same reasons, the claims are not directed to a solution to a ‘technological problem’”.  Nor, according to the opinion, “do the claims attempt to solve ‘a challenge particular to the Internet.’” Accordingly, “we find that…‘recognizing certain data within the collected data set,’ and ‘storing the recognized data in memory,’…attaching classification data, such as dates and times, to images for the purpose of storing those images in an organized manner is a well-established ‘basic concept’ sufficient to fall under Alice step 1.” But this “finding” is based on nothing more than the CAFC’s say so.

In Enfish, the claim at issue was:

17.  A data storage and retrieval system for a computer memory, comprising:

means for configuring said memory according to a logical table, said logical table including:

a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;

a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and

means for indexing data stored in said table.

First admitting the obvious, namely, that the “Supreme Court has not established a definitive rule to determine what constitutes an ‘abstract idea’ sufficient to satisfy the first step of the Mayo/Alice inquiry”, Judge Hughes notes the decision-by-empirical comparison approach of comparing “claims at issue to those claims already found to be directed to an abstract idea in previous cases.” The CAFC correctly notes that “fundamental economic and conventional business practices are often found to be abstract ideas”, meaning they are often simply declared to be “close enough” to Alice and Bilski, without any guidance as to how “close” makes it “enough”.

Knowing this, the CAFC senses it must draw a line somewhere, if not very brightly: “[w]e do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two” (that’s a relief). “Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis…Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis. For that reason, the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”

The CAFC decides that the above claim indeed is related to an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. This once again approaches the “technical problem” analysis of European law, which at least has the advantage of possessing something of a legal principle about it, as opposed to being a tautology.

Here, the self-referential table enabled the computer to work better. The CAFC faulted the district court’s definition of the abstract idea of “storing, organizing, and retrieving memory in a logical table” or, more simply, “the concept of organizing information using tabular formats” because “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” The present claims are not directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database. The CAFC also referred to the specification’s emphasis that “the present invention comprises a flexible, self-referential table that stores data” that “improves upon prior art information search and retrieval systems by employing a flexible, self referential table to store data.”

Even though the software can run on a general-purpose computer or the fact that the improvement is not defined by reference to “physical” components does not doom the claims. The self-referential table recited in the claims is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Furthermore, the specification’s disparagement of conventional data structures, combined with language describing the “present invention” as including the features that make up a self-referential table, confirm that the claims are directed to a specific implementation of a solution to a problem in the software arts and thus are not abstract.

This appears to add to the “technical problem” approach by adding Judge Chen’s “is it narrow enough?” test.

To offer a few take-aways:

  1. Judge Chen in particular still adheres to the notion of undue breadth captured in the preemption doctrine. The narrower (and thus less valuable) your claims are, the more likely they are patent-eligible. A broad claim granted because the invention may truly be ground-breaking and there is little prior art to otherwise render it unpatentable may not pass the judiciary’s sensibilities as to appropriate claim scope.
  1. Judge Hughes (and at least Judge Mayer) are sympathetic to a “technological arts” approach. While there are downsides to doing so in terms of opening the door to reading unclaimed limitations into the claim, drafting a statement of a technological problem to be solved and a summary of the technical solution to it may help certain judges see your claim as patent-eligible.
  1. Beware overly broad Fields of the Invention. Heretofore this was not a known trap but as some of the cases above demonstrate, it indeed can be dangerous in terms of bolstering an argument that your claim is abstract because the Field of the Invention (or other broad statement about “the invention”) is abstract. One possible way to do this may be to erase the word “invention” from your patent applications, and instead use another word like “document” or “application”. This may be wordsmithing but as has been evident for well over a decade in the realm of claim interpretation, statements in the specification about “the invention” have been used to limit claim scope, and now they also appear to have conferred or removed patent-eligibility from a claim.
  1. The CAFC seems ready to regard any business method claim as being in the “easy” category to cast as “abstract” for Mayo step 1, and other claims as being in Judge Chen’s “not straightforward” classification. The best thing a business method claim can do for itself is to be narrow, perhaps excessively so. There probably will not be a broad business method claim that survives CAFC review unless Congress materially changes the judge-made exceptions to patentability.
  1. Last, it is clear that there are no limiting principles to any of the approaches for analyzing patent-eligibility. There is no limiting principle by which to cabin “abstract”, not by definition (there isn’t one), not by Judge Chen’s breadth approach (how narrow is narrow enough?), and not by the technological arts approach, which effectively denies entire categories of inventions patent protection even though Alice explicitly warned against this.


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Join the Discussion

3 comments so far.

  • [Avatar for Eric Berend]
    Eric Berend
    August 14, 2016 09:23 pm

    Does the language of this decision not strike to an essential part of the matter, where a deliberately nebulous expansion of the concept of “obviousness” is now creating a devilish sea of legitimized obfuscation? As, a manifestation of semantics which now suffice to establish a new convention of “describing the claims at such a high level of abstraction and untethered from the language of the claims [that it] all but ensures that the exceptions to § 101 swallow the rule.”?

    Hasn’t this been a core operation of said misapplication of the ‘non-obvious’ requirement to patent claim eligibility – to make the exception swallow the rule? Can those who promulgated such precisely crafted language in the AIA and fought so strenuously to ram it through Congress have been unaware of the havoc this obfuscation would wreak? No!

  • [Avatar for Curious]
    July 28, 2016 03:38 pm

    First admitting the obvious, namely, that the “Supreme Court has not established a definitive rule to determine what constitutes an ‘abstract idea’ sufficient to satisfy the first step of the Mayo/Alice inquiry”
    A definitive rule … I’m still looking for a half-a__ attempt at a rule.

    While I maintain that much of the blame belongs with the Federal Circuit after being warned by the Supreme Court not to play with matches for still burning down wide swaths of the forest, the Supreme Court did EVERYBODY a great disservice by not nailing down what constitutes a claim “directed to” an abstract.

    That being said, the cynic’s view is that the Supreme Court declined to present a definition since, by doing so, it provides unfettered leeway to judges to decide (on their own inclinations) as to what is or is not a claim directed to an abstract idea. As we have seen, the Federal Circuit hasn’t been shy about deeming just about everything (with few exceptions) a claim directed to an abstract idea.

  • [Avatar for Kevin R.]
    Kevin R.
    July 28, 2016 01:45 pm

    I’m extremely wary of calling J. Hughes’s analysis a “t-chnical arts test” because of the worry with continued confusion at the USPTO Examiner and District Court levels.

    Of course it’s good to apply a belt-and-suspenders approach in your applications, disclosures, and court briefs, but even mentioning J. Mayer’s proposed test in the Ultramercial concurrence may encourage a “know-it-when-I-see-it” analysis over the full Alice/Mayo examination.

    The technical improvement and/or solution approach should be one of many factors to determine “abstractness” when viewing the claim as a whole.