Drawing Software Patent Drafting Guidance in 2021 from an Unlikely Source: the Federal Circuit

Honing in on three software cases in which the Federal Circuit found claims patent eligible in 2020 is illuminating for software patent application drafters.

Since the Supreme Court’s Alice decision in 2014, inventors have faced extra hurdles trying to protect their software-related inventions with patents. A chief obstacle has been satisfying the two-part test for eligibility under Section 101 set forth in Alice and Mayo. To meet this test, claimed subject matter must not be directed to a judicial exception, such as an abstract idea, (Step One), and if it is, must add “significantly more” to provide an inventive concept (Step Two).

The Alice/Mayo test is applied during examination at the U.S. Patent and Trademark Office (USPTO) and can be a defense raised against enforcement of the patent. However, one aspect inventors have most control over is the drafting of their patent specifications that describe their claimed inventions. The challenge software patent application drafters now face is how to draft patent applications that can withstand scrutiny under the Alice/Mayo test.

Theodore Rand reported in IPWatchdog last week a disturbing but not surprising trend. Rand found that, in 2020, 81% of software-related patents on appeal for subject matter eligibility in decided precedential cases (22 of 27) were found invalid. But in three cases, software-related patents were found drawn to eligible subject matter for patent purposes. Id.

In each of the three cases, the appeals court pointed to aspects of the patent specifications themselves. Looking more closely at the representative claims and court’s comments with respect to the corresponding patent specification is illuminating. In particular, the court looked to the specifications for evidence of performance improvements over conventional systems, description of a technical problem/solution, and technological advantages.

Uniloc USA, Inc. v. LG Electronics USA, Inc.

In Uniloc decided April 30, 2020, the court found the following claim eligible:

1. A primary station for use in a communications system comprising at least one secondary station, wherein means are provided

for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and for adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.

(Uniloc, p. 4).

In so doing, the CAFC specifically referenced improvements over conventional communications systems described in the specification. The court also cited the description in the Abstract of an advantage provided by the claimed invention which “enables a rapid response time without the need for a permanently active communication link between a parked secondary station and the primary station.” Id., p. 3. As a result, the court held “the claims at issue are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems.” Id., p. 7. The court continued, “like the claims in DDR, the claimed invention changes the normal operation of the communication system itself to ‘overcome a problem specifically arising in the realm of computer networks.’” Id., p. 7. In this way, the court found the claims are not directed to an abstract idea under Step One of the Alice/Mayo test, but instead “are directed to a specific asserted improvement to the functionality of the communication system itself.” Id., p. 10.

Packet Intelligence v. Netscout

In Packet Intelligence, decided July 14, 2020, the court found a representative apparatus claim 19 eligible. Claim 19 was directed to a packet monitor and included a packet acquisition device, input buffer memory, parser subsystem, memory for storing a database, a look up engine, and a flow insertion engine. (Packet Intelligence, pp. 3-4).

In finding the claim eligible under Step One, the court again references the patent specification. In particular, the court looks to technological problems and solutions described in the patent itself:

The asserted patents’ specifications make clear that the claimed invention presented a technological solution to a technological problem. The specifications explain that known network monitors were unable to identify disjointed connection flows to each other, and the focus of the claims is a specific improvement in computer technology: a more granular, nuanced, and useful classification of network traffic. See, e.g., ’751 patent col. 2 ll. 53–56; col. 3 l. 2–col. 4 l. 6. The specifications likewise explain how the elements recited in the claims refer to specific technological features functioning together to provide that granular, nuanced, and useful classification of network traffic, rather than an abstract result. See, e.g., ’789 patent col. 23 l. 38—col. 27 l. 50 (describing the technological implementation of the lookup engine and flow insertion engine as used in the claims); see also ’725 patent col. 10 l. 3—col. 13 l. 4. (emphasis added)

(Packet Intelligence, pp. 14-15).

TecSec v. Adobe Inc.

In TecSec decided Oct. 23, 2020, the court considered a representative multi-level security method claim:

A method for providing multi-level multimedia security in a data network, comprising the steps of:
A) accessing an object-oriented key manager;
B) selecting an object to encrypt;
C) selecting a label for the object;
D) selecting an encryption algorithm;
E) encrypting the object according to the encryption algorithm;
F) labelling the encrypted object;
G) reading the object label;
H) determining access authorization based on the object label; and
I) decrypting the object if access authorization is granted.

(TecSec, pp. 3-4).

In its eligibility determination, the court found the claim was not directed to an abstract idea under Step One. The court looked at certain prosecution history before the USPTO and again at the patent specification itself. As explained by the court a Step One analysis depends among other things on “what the patent asserts to be the claimed advance.” Id., p. 24 (emphasis added).

The court noted the specification made clear the combination of labeling with the required encryption “is part of the focus of the claimed advance.” Id., p. 26. The court continued at length to cite where the specification described both a deficiency and the technical solution using labeling in multilevel security with encryption. Id., pp. 26-28.

Passing Muster

Despite a stream of adverse decisions on patent eligibility last year, we find the Federal Circuit perhaps pointing out some ways to protect software-related inventions. Often, a patent drafter must balance a desire for broad protection for purposes of infringement with narrower protection for purposes of validity. In the computer-related software arts at least, the Federal Circuit showed in 2020 how important the patent specification may be in striking the right balance and passing muster under the Alice/Mayo test in 2021.

Michael Messinger is co-founder of Shami Messinger. Mike helps companies of all sizes create intellectual property strategies for protection and to enhance their freedom-to-operate in the computer, electronics and sustainable technologies practice [...see more]

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

18 comments so far.

Curious
January 18, 2021 01:54 pm
Credible patent practitioners learn from case law, instead of claiming, “It’s all SO confusing!”
Then why are so many applications still getting rejected by 101 these days? I wrote this before, 101 and 112 are two provisions that aren’t dependent upon (possibly) unknown prior art and should be addressed by a patent practitioner prior to filing. As far as 112 goes, it is rare that a non-clerical error 112 rejection gets issued (and even rarely still that such a rejection gets affirmed at the Board). The bounds of what is permissible (or not) under 112 is fairly well-established. However, it has been 6 1/2 years since Alice came out, and the number of applications that get 101 rejections at the Patent Office is still outrageous. Why is that?

I reproduced the claims of two patents above (one rejected by the Federal and one not). This is patent from DDR Holdings:
13. An e-commerce outsourcing system comprising:
a) a data store including a look and feel description associated with a host web page having a link correlated with a commerce object; and
b) a computer processor coupled to the data store and in communication through the Internet with the host web page and programmed, upon receiving an indication that the link has been activated by a visitor computer in Internet communication with the host web page, to serve a composite web page to the visitor computer wit[h] a look and feel based on the look and feel description in the data store and with content based on the commerce object associated wit[h] the link.

The only thing non-conventional about this claim is “serve a composite web page to the visitor computer wit[h] a look and feel based on the look and feel description in the data store and with content based on the commerce object associated wit[h] the link.” How is this patent eligible whereas the claim of Two-Way Media (previously reproduced above and also below) is not?
1. A method for transmitting message packets over a communications network comprising the steps of:
converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol,
for each stream, routing such stream to one or more users,
controlling the routing of the stream of packets in response to selection signals received from the users, and
monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.

Under the USPTO’s most recent patent eligibility guidance, this claim would be patent eligible. As I wrote before: If the Patent Office, with all of their institutional knowledge, cannot figure out what is patent eligible, how can the average patent practitioner or inventor? I am 100% certain that there will be patents issued in 2021 (6 1/2 years after Alice) that will be invalidated by the Federal Circuit under 101 in the coming years. If the Patent Office cannot get it right, how can “[c]redible patent practitioners”? You cannot and will not address that question because you cannot do so without eviscerating your own positions.

“It’s all SO confusing!”
Contrary to your strawman, the law isn’t confusing. Rather, the law is inconsistent and constantly being rewritten. 35 USC 101 is rather plain on its face — it is not a condition for patentability and was never intended to be so. However, the ‘ends justify the means’ judiciary has written this statute into something that would be unrecognizable to the drafters of 35 USC 101.
Anon
January 18, 2021 11:58 am
And credible commentators point out — and accept — what leaders of each of the three branches of the government have said about that case law.

Those lawyers (including practitioners and mere litigators) that are NOT credible continue to pretend that the state of the law is not a Gordian Knot.
TFCFM
January 18, 2021 09:45 am
That one seeking to muddy the waters can describe the waters as muddy demonstrates nothing.

Credible patent practitioners learn from case law, instead of claiming, “It’s all SO confusing!”
Anon
January 17, 2021 09:13 am
Curious @ 13,

I hear you.

I would also add that part of that waywardness is a lack of appreciation for the (natural) effects of Patent Profanity — the effects of past judicial decisions that all too often aim for Desired Ends at the cost of rational Means, creating unintended (but only too easily foreseeable and avoidable) consequences.

For example, the judicial “Means” to reach a desired Ends of denying patent protection to any particular extant patent has been by way of making the legal fiction of PHOSITA stronger.

This however leads directly to the point that your present (and other ramifications) that what ANY ‘next’ inventor NEED present is hollowed out.

You have the likes of TFCFM whining about an art field that he has no clue about, and cannot comprehend your point that what is required IN an application is ONLY an advance*** OR DIFFERENCE** from the prior art – that advance or difference NEED NOT be an improvement in the colloquial ‘linear advance’ way of thinking about things.

35 USC 101 broadly provides BOTH improvement (part 2) and invention (part 1).

** Further – and this is absolutely critical (and understood by those who have studied innovation), “improvement” is itself NOT LIMITED to linear improvements over the existing state of art.

Quite in fact, MANY improvements are often retrograde to the state of the art at first development, and it is upon additional improvements to work the bugs out (or such things as ‘different adoptions’) that one may see a quantum jump in improvements over the prior state of art.

Those, like TFCFM, that may only have a very limited view of innovation in a ‘picture claim,’ ‘Jepson claim,’ type of understanding should develop the humility to recognize the limits of their understanding and NOT push the patent protection system to be so severely limited to cover what they understand.

*** The idea of enrichment also can be more richly understood when one recognizes how innovation works and that the scope of the word “promote” is not limited to a sense of linear (or even more than linear) advancement along a line of development. “Promote” also includes the very broad (and simple) notion of ‘spread the news’ as in the advertising sense of the word ‘promotion.’

This can be more easily grasped when one recognizes the cross-fertilization effect of how some truly astounding and disruptive innovations have occurred throughout history.

I have often ‘promoted’ the (now very old) television show by James Burke called Connections that played on this concept.

What you won’t see from the likes of TFCFM is any engagement or any inclination that they understand or appreciate these types of aspects of innovation.

They are the worse for that.

To the extent that they then turn around and want to climb on their soapboxes and denigrate innovation (typically 5th Kondratiev Wave type of innovation), then WE ALL ARE the worse for that.
Pro Say
January 15, 2021 02:34 pm
Thanks Curious — excellent analysis as always.

America could use a handful of “Curious,” “Anon,” and “B” judges on the CAFC; and SCOTUS as well.

If only.
Curious
January 15, 2021 11:49 am
Indeed, even for the specific issue of eligibility, the court’s interpretations excluding abstract ideas and laws of nature go back at least to the Telegraph case (O’Reilly v. Morse in 1853), and probably long before that.
Have you actually read that case? I have. Aside from it being an incoherent mess (the writing style of the times), the Court doesn’t mention exclusions to patent eligibility or abstract ideas. They don’t mention 35 USC 101 because the current version was enacted until 1952. The Patent Act of 1952 made substantial changes to patent law — partially in response to the Supreme Court mucking around with the law. A less-strained reading of O’Reilly v. Morse is that it was about enablement more than exceptions to patentable subject matter. The current exceptions to 35 USC 101 can best be traced to Benson.

that we should henceforth ignore more than a century-and-a-half of legal precedent on the eligibility issue
You still don’t get that Congress gets to write the patent laws — not the courts. If they say “anything goes,” then that is the law. If Congress eliminates these judge-made exceptions, then that is the law.

On a side note, I was reading Rich’s commentary regarding the 1952 laws and he makes the point of “[p]rogress in useful arts is made as well by what may be called enrichment as it is by improvement.” As one example, he pointed to the “talking pictures industry” and contrasted “sound-on-film” and “sound-on-disc.” He noted that a first commercialization that “discs were first used because … they were better.” However, he noted that these “are but obsolete and sound-on-film prevails.” He made this point to counteract the notion that the Constitution requires “that an invention to be patentable must be better than the prior art.” However, when we see the Federal Circuit’s making patent eligibility decisions based upon whether a patent “concretely capture[s]” an improvement, it is clear that they’ve gone of the track for reasons I have discussed elsewhere. There is no requirement that a patent claim an improvement.
Curious
January 15, 2021 11:13 am
In the Uniloc case, the claim appears to be a 112(f) “means plus function” claim, meaning that the claim is limited to the elements actually disclose in the specification (and their equivalents).
The Court did not point to that as the reason why they held the claims to be non-abstract. Rather, they wrote “The claims at issue do not merely recite generalized steps to be performed on a computer using conventional computer activity. Instead, they are directed to ‘adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.'” Hence, the court focused on the function — not the structure.

The claim in the Packet Intelligence case is not reproduced here. However, the quotation from the case indicates that the court held that “The specifications likewise explain how the elements recited in the claims refer to specific technological features functioning together … rather than an abstract result.”
I pulled up USP 6,665,725, which is the first patent listed in the decision. The claims refers to a packet, a connection point, a computer network, protocol descriptions, protocols, layered model, layer level, child protocol, locations in the packet, protocol specific operations, database, memory, data structure, database entry, index values, indication of validity, child recognition pattern, base level, child field. All generic descriptions of fairly common items in networks. Specific structure? No.

The claim reproduced here for the TecSec case recites a method that includes nine particular steps (reference #s 2-10 in the claim) that recite discrete actions, rather than “anything and everything that might achieve a goal.”
I would wager that most inventions killed under 35 USC 101 are far similar to what is recited in TecSec than “anything and everything that might achieve a goal.” For example, these are the claims of Two-Way Media (that Court cited in Uniloc and distinguished over):
1. A method for transmitting message packets over a communications network comprising the steps of:
converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol,
for each stream, routing such stream to one or more users,
controlling the routing of the stream of packets in response to selection signals received from the users, and
monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.

This claim was held to be ineligible under 35 USC 101. What is the “anything and everything that might achieve a goal” being claimed here? Compare that claim with the one held to be patent eligible in Uniloc:
2. A primary station for use in a communications
system comprising at least one secondary station, wherein means are provided
for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and
for adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.

Someone please explain how that claim (in Uniloc) is patent eligible whereas the claim from Two-Way Media is not. In Uniloc, the court wrote “[t]he claims we held ineligible in Two-Way Media similarly failed to concretely capture any improvement in computer functionality.” Where is the requirement that “claims … concretely capture any improvement” in 35 USC 101 (or anywhere else in the statutes)? There is, of course, no such requirement. Rather, it is the Court “read[ing] into the patent laws limitations and conditions which the legislature has not expressed” — inconsistent with Supreme Court precedent.

The farther out we get from Alice, the more of these inconsistent decisions we’ll get with each panel at the Federal Circuit creating ever more exceptions to exceptions to exceptions — in order to distinguish their present decision from past decisions — all of which are entirely unhinged from either statute or Supreme Court precedent.

Certain members of the Federal Circuit itself have admitted (on several occasions) that their case law is unworkable morass. Anybody who doesn’t understand this is either (i) ignorant as to the state of the law or (ii) happy with the state of the law in that it works to kill the vast majority of patents subject to a challenge under 35 USC 101.
TFCFM
January 15, 2021 09:58 am
Curious@#8: “as the Supreme Court has done since Benson, the Courts just cannot resist messing with the simple (and intentionally expansive) language of 35 USC 101.”

The courts have been interpreting the patent statutes since long before Benson. Indeed, even for the specific issue of eligibility, the court’s interpretations excluding abstract ideas and laws of nature go back at least to the Telegraph case (O’Reilly v. Morse in 1853), and probably long before that.

Regardless of when courts may have started performing their judicial function in ways you dislike, Congress has certainly been on notice since at least 1853 that the patent laws were being interpreted as having exclusions. By my count, that has left Congress at least 167 annual chances to change that interpretation if they believed it to be incorrect — and yet they haven’t.

I hold out little optimism that “This might be the year!” that Congress declares that, patent-eligibility-wise, “anything goes!” and that we should henceforth ignore more than a century-and-a-half of legal precedent on the eligibility issue.
TFCFM
January 15, 2021 09:49 am
Curious@#6: “Please identify the “specific structure” recited in each of these three cases”

In the Uniloc case, the claim appears to be a 112(f) “means plus function” claim, meaning that the claim is limited to the elements actually disclose in the specification (and their equivalents).

The claim in the Packet Intelligence case is not reproduced here. However, the quotation from the case indicates that the court held that “The specifications likewise explain how the elements recited in the claims refer to specific technological features functioning together … rather than an abstract result.”

The claim reproduced here for the TecSec case recites a method that includes nine particular steps (reference #s 2-10 in the claim) that recite discrete actions, rather than “anything and everything that might achieve a goal.”
Frank Coppa
January 15, 2021 09:06 am
Nice summary; very interesting
Curious
January 14, 2021 03:42 pm
One thing to recognize, although it is frustrating, is that some “inventions” simply do not provide such improvements.
Let’s go back to Bilski, which cited Diamond v. Diehr in stating that Courts “should not read into the patent laws limitations and conditions which the legislature has not expressed.”

35 USC 101 reads “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” While a “new and useful improvement thereof” is one option, it isn’t the only option. Consequently a process, machine, manufacture, or composition of matter need only be new and useful.

However, as the Supreme Court has done since Benson, the Courts just cannot resist messing with the simple (and intentionally expansive) language of 35 USC 101.
J. Doerre
January 14, 2021 01:24 pm
Many thanks to anyone trying to bring clarity to this muddled area of the law. I think it is worth highlighting this article’s emphasis on “evidence of performance improvements over conventional systems, description of a technical problem/solution, and technological advantages.”

One thing to recognize, although it is frustrating, is that some “inventions” simply do not provide such improvements. Note that two of these cases involved networking technologies, and the third relates to a set of encryption patents from the 90s that had been at issue at the Federal Circuit multiple times before eligibility ever came up.
Curious
January 14, 2021 11:47 am
I note that the claims at issue in the three cases for which non-eligibility was denied all recite relatively specific structure/step.
Please identify the “specific structure” recited in each of these three cases (or in at least one if three is too many).
TFCFM
January 14, 2021 09:27 am
I note that the claims at issue in the three cases for which non-eligibility was denied all recite relatively specific structure/step, even when intended function is also recited, and do not merely claim “anything and everything that performs that function.”

Coincidence? Perhaps. On the other hand, it seems to me that, by claiming what they seem to have actually invented (rather than trying to claim that as well as “everything that might work”), the patentees here avoided at least one type of patent-defeating “abstractness.”

Surely worth considering — even if only as a ‘backup’ position for one’s “anything-and-everything-that-works” claims.
Concerned
January 14, 2021 05:25 am
Exactly Anon. My (second) patent examiner admits the solution solved a decades old problem. So the examiner makes up a fictional situation, without any evidence, to state my solution only automates a manual process. And if this alleged manual process did exist, how did my automated process solve a decades old problem over and beyond the alleged manual process?

The latest rejection by the second examiner was after the first examiner was dismissed. The first examiner thinks I should get a patent, the second does not. Exactly Anon’s point.

The entire process has no credibility. If the law is behind the rejection, pony up real evidence and speak factually, not in circles.
Anon
January 13, 2021 10:22 pm
Nice try, but no.

Take the exact same cases and use different nouns (in a sense, to anonymize) and a different panel, and you are almost guaranteed a different result.
J. Doerre
January 13, 2021 03:52 pm
George – there is no requirement that disclosure be of patent-eligible subject matter in order to qualify as prior art.
George
January 13, 2021 02:08 pm
Why hasn’t Alice had any impact on 103 arguments? It would seem that if claims do not satisfy the requirements of 101 under Alice, then they should not be applicable for 103 objections either. If disclosures do not provide original and unique algorithms in support of claims of novel computer control, they should not be allowed to be cited as prior art against inventions which do so and which fully pass the Alice test. When will Alice also apply to 103 objections?