McRO, Inc., d.b.a. Planet Blue, Plaintiffs,
v.
Disney Interactive Studios, Inc.,

Links

McRO, Inc., d.b.a. Planet Blue, Plaintiffs,
v.
Disney Interactive Studios, Inc., 

US 6,307,576

US 6,611,278

Summary

Claims of US patent 6,307,576 and 6,611,278 in the name of Maury Rosenfeld were found not to be] patent eligible subject matter under 35 USC 101 because the novel features of the claim are overly abstract.

Comments

  • Mere recitation of a generic computer cannot transform a patent –ineligible abstract idea into a patent-eligible invention to use in the same field.
  • Avoid describing prior art in the specification.
  • Clamining novel portions of an invention too broadly is dangerous.
  • When a claim recites tangible steps, but the only new part of the claim is an abstract idea, that may contribute a claim to an abstract idea.
  • Claiming “rules” may be seen as overly broad and possibly abstract.

Broad description of the invention

The patents claimmethods and systems to automatically create lip synchronisation and facial expression in three dimensional animated characters.

Characteristic Claim

`576 Patent claim 1:

A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;

obtaining a timed data file of phonemes having a plurality of sub-sequences;

generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;

generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and

applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

Details

Both patents are titled “Method for Automatically Animating Lip Synchronization and Facial Expression of Animated Characters.”

The patents explain that prior methods of animating lip synchronization and facial expressions were laborious and uneconomical. `576 Patent 1:14-31. The patents address that problem with an automated method of using “weighted morph targets and time aligned phonetic transcriptions of recorded text, and other time aligned data.” `576 Patent 2:64-3:12. The patents explain that in the relevant art, “`phonemes [are] defined as the smallest unit of speech, and correspond[] to a single sound.” `576 Patent 1:34-36. A sound recording can be transcribed into a “time aligned phonetic transcription” in which the timing of each phoneme is noted. `576 Patent 1:32-34. Such transcriptions can be created by hand or by automatic speech recognition programs. `576 Patent 1:39-43.

The patents explain that the prior art practice for 3-D computer generated speech animation was by manual techniques using a “morph target” approach. `576 Patent 1:44-46. That approach uses a reference model of a neutral mouth position in conjunction with “morph targets,” which are models of the mouth in non-neutral positions corresponding to different phonemes. `576 Patent 1:46-49. The reference model and morph targets all share the same “topology” of the mouth, defined by the same number and placement of “vertices” that designate specific points on the mouth. For example, vertex “n” on the neutral mouth and all of the morph targets may represent the left corner of the mouth. `576 Patent 1:51-54.

The “deltas,” or changes, of each vertex on each morph target relative to the corresponding vertex on the neutral model are computed as a vector to produce an individual “delta set” of vectors for each morph target. `576 Patent 1:58-62. From the neutral model, the animator need not move the mouth position all the way to a morph target. Instead, the animator can apply a value between 0 and 1, called the “morph weight,” to a delta set to move the mouth just a percentage of the way to the corresponding morph target. `576 Patent 1:63-2:1. For example, if the sound (morph target) is “oh,” and the morph weight is 0.5, the mouth only moves halfway between the neutral position and the “oh” morph target. `576 Patent 2:16-22. It is also possible to blend the morph targets, for example, 0.3 “oh” and 0.7 “ee,” resulting in a mouth position exhibiting a combination of the “oh” and “ee” sound characteristics. `576 Patent 2:23-28.

According to the patents, applying the appropriate morph weights in the prior art was usually done using a “keyframe” approach. In the keyframe approach, an artist sets the morph weights at certain important times, and a computer program then interpolates each of the channels at each frame between the keyframes. `576 Patent 2:29-34. The patents state that this method requires the artist to manually set a large number of keyframes, which is tedious, time consuming, and inaccurate. `576 Patent 2:34-37. Therefore, an object of the invention is to provide “an extremely rapid and cost effective means to automatically create lip synchronization and facial expression in three dimensional animated characters.” `576 Patent 2:50-54.

The invention “utilizes a set of rules that determine the system[‘]s output comprising a stream or streams of morph weight sets when a sequence of timed phonemes or other timed data is encountered.” `576 Patent 3:3-7. The invention includes:

[C]onfiguring a set of default correspondence rules between a plurality of visual phoneme groups and a plurality of morph weight sets; and specifying a plurality of morph weight set transition rules for specifying durational data for the generation of transitionary curves between the plurality of morph weight sets, allowing for the production of a stream of specified morph weight sets to be processed by a computer animation system . . . .

`576 Patent 3:23-30.

Defendants argue that the claims of both patents in suit are patent ineligible under 35 U.S.C. § 101 because they merely “set[] forth the previously-known animation method as a series of mathematical steps, and instruct[] the user to perform those steps on a computer.” Mot., Docket No. 338 at 12.

35 U.S.C. § 101 “defines the subject matter that may be patented under the Patent Act.” Bilski v. Kappos, 561 U.S. 593, ___, 130 S.Ct. 3218, 3225 (2010). It provides:

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.

Id. “In choosing such expansive terms . . . modified by the comprehensive `any,’ Congress plainly contemplated that the patent laws would be given wide scope” “to ensure that `ingenuity should receive a liberal encouragement.'” Id. (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (quoting 5 Writings of Thomas Jefferson 75-76 (H. Washington ed. 1871)) (some internal quotation marks omitted).

The “wide scope” of patent eligibility is not unlimited. Instead, the Supreme Court has invented or discovered “three specific exceptions to § 101’s broad patent-eligibility principles: `laws of nature, physical phenomena, and abstract ideas.'” Bilski, 130 S.Ct. at 3225 (quoting Chakrabarty, 447 U.S. at 309).

In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), the Supreme Court “set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). That framework is as follows:

First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us?” To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. We have described step two of this analysis as a search for an “`inventive concept'” — i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”

Id. at 2355 (citations omitted).

But despite its narrow holding, Alice did categorically establish a clear rule that had previously been subject to debate: “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” 134 S.Ct. at 2358.

And, while the boundaries of the judicial exceptions remain subject to further development, the Supreme Court has clearly stated the policy underlying those exceptions, i.e. avoiding patents that “too broadly preempt the use of a natural law [or abstract idea].” Mayo, 132 S.Ct. at 1294. Thus, patent law should “not inhibit further discovery by improperly tying up the future use of laws of nature [or abstract ideas].” Id. at 1301.

Mayo discussed the Supreme Court’s 1854 decision upholding many of Samuel Morse’s telegraph patent claims, but invalidating the most general claim, which covered “the use of the motive power of the electric or galvanic current . . . however developed, for making or printing intelligible characters, letters, or signs, at any distances.” Id. The Supreme Court presciently explained that such a claim would inhibit, rather than promote, the progress of the useful arts:

For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff’s specification. His invention may be less complicated — less liable to get out of order — less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.

Id. (quoting O’Reilly v. Morse, 15 How. 62, 113 (1854).) True, patents always present some impediment to follow-on innovation. The principle is one of balance: patents should not “foreclose[] more future invention than the underlying discovery could reasonably justify.” Mayo, 132 S.Ct. at 1301.

Of course, § 101 is not the sole, or even primary, tool to ensure that balance. Every condition of patentability set forth in the Patent Act acts to ensure that patents promote, rather than retard, the progress of science and useful arts. For example, in a manner quite similar to recent § 101 jurisprudence, “[t]he written description requirement guards against claims that `merely recite a description of the problem to be solved while claiming all solutions to it and . . . cover any compound later actually invented and determined to fall within the claim’s functional boundaries.'” Abbvie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., ___ F.3d ___, XXXX-XXXX, 2013 WL 2937477, 11 (Fed. Cir. July 1, 2014) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010)).

However, scholars have argued that the written description and enablement doctrines of § 112, as currently applied, do not adequately prevent unwarranted obstructions to follow-on innovation, and have urged that § 101 can and should do so. See, e.g., Lemley et al., Life After Bilski, 63 Stan. L. Rev. 1315, 1330 (2011) (cited in Mayo, 132 S.Ct. at 1301-03, 1304); but see Lemley, Point of Novelty, 105 Nw. U. L. Rev. 1253, 1279 (2011) (“[T]here is good reason to worry about overbroad patent claims that lock up a wide swath of potential future applications. But the enablement and written description doctrines largely address that concern.”).

In any event, the Supreme Court has spoken, and § 101 now plays an important limiting role. But District Courts and the Federal Circuit are now left with the task of figuring out when the “two-part” test is satisfied. Perhaps something like the function-way-result test used to evaluate infringement under the doctrine of equivalents might be useful. Thus, in one long-standing formulation, an accused instrumentality infringes “if it performs substantially the same function in substantially the same way to obtain the same result.” Union Paper-Bag Mach. Co. v. Murphy, 97 U.S. 120, 125 (1877); InTouch Technologies, Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1343 (Fed. Cir. 2014).

The test in practice often focuses on the “way” aspect of the test, because function and result are often identical in the patent and accused product, and the question is whether the accused infringer uses the same “way.” Laura A. Handley, Refining the Graver Tank Analysis with Hypothetical Claims: A Biotechnology Exemplar, 5 Harv. J.L. & Tech. 36 (1991) (“In practice, the second prong of the test — `substantially the same way’ is often emphasized, since most infringement suits result from competition for a given market niche which dictates the `function’ and `result’ prongs.”) (citing Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1531 (Fed. Cir. 1987)).[8]

Similarly, the question in the abstract idea context is whether there are other ways to use the abstract idea in the same field. If so, the Supreme Court has expressly encouraged others to find those other ways, without being held back by patents that preempt the whole concept. Mayo, 132 S.Ct. at 1294 (citing O’Reilly, 15 How. at 113); Alice, 134 S.Ct. at 3258 (noting “the pre-emption concern that undergirds our § 101 jurisprudence.”).

Concomitantly, we must be wary of facile arguments that a patent preempts all applications of an idea. It may often be easier for an infringer to argue that a patent fails § 101 than to figure out a different way to implement an idea, especially a way that is “less complicated — less liable to get out of order — less expensive in construction, and in its operation.” O’Reilly, 15 How. at 113. But the patent law does not privilege the leisure of an infringer over the labors of an inventor. Patents should not be casually discarded as failing § 101 just because the infringer would prefer to avoid the work required to develop non-infringing uses of the abstract idea at the heart of an appropriately circumscribed invention.

Defendants argue that the patents-in-suit are directed to a “fundamental, abstract animation practice,” namely, “the abstract idea of rules-based synchronization of animated mouth movement.” Mot., Docket No. 338 at 12. That is, Defendants argue that the patents cover the mere idea of using rules for three-dimensional lip synchronization, without requiring specific content for those rules. Id. at 12-13. But considered standing alone, the asserted claims do not seem to cover any and all use of rules for three-dimensional lip synchronization.

Facially, the claims do not seem directed to an abstract idea. They are tangible, each covering an approach to automated three-dimensional computer animation, which is a specific technological process. They do not claim a monopoly, as Defendants argue, on “the idea that the human mouth looks a certain way while speaking particular sounds,” “applied to the field of animation.” Mot., Docket No. 338 at 12, n.9. Further, the patents do not cover the prior art methods of computer assisted, but non-automated, lip synchronization for three-dimensional computer animation.

And according to Defendants, they do not cover the automated methods of lip synchronization for three-dimensional computer animation that Defendants employ. It is hard to show that an abstract idea has been preempted if there are noninfringing ways to use it in the same field. Section 101 motions can place parties in unfamiliar and uncomfortable positions: here it is to the patentee’s advantage to identify noninfringing alternatives, and it is the accused infringer’s advantage to posit the lack of any; the reverse of their positions at the infringement and damages stages of the case.

At first blush, it is therefore difficult to see how the claims might implicate the “basic underlying concern that these patents tie up too much future use of” any abstract idea they apply. Mayo, 132 S. Ct. at 1302; Alice, 134 S.Ct. at 2358 (noting “the pre-emption concern that undergirds our § 101 jurisprudence”).

However, for purposes of the § 101 analysis, it is not enough to view the claims in isolation. Instead, when determining whether a patent contains an adequate inventive concept, the Court must factor out conventional activity. That is because the inclusion of “well-understood, routine, conventional activity” previously used in the field “is normally not sufficient to transform an unpatentable law of nature [or abstract idea] into a patent-eligible application . . . .” Mayo, 132 S.Ct. at 1298.[9] Further, in addition to evaluating each step of the claim, the claims must be considered as “an ordered combination.” Alice, 132 S.Ct. at 2355.

This dual analysis tracks the law’s long-standing concern with patents that consist of old material with the addition of a new, but abstract, idea: “the vice of a functional claim exists not only when a claim is `wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.” Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371, 58 S. Ct. 899, 903 (1938). An abstract idea is the extreme case of functional language.

Thus, where a claim recites tangible steps, but the only new part of the claim is an abstract idea, that may constitute a claim to an abstract idea. See Alice, 134 S. Ct. at 2358. (disregarding the presence of a computer in the claim given “the ubiquity of computers”); Mayo, 132 S.Ct. at 1297-98 (claim step calling for administration of drug only disregarded because it “refers to the relevant audience, namely doctors who treat patients with certain diseases with thiopurine drugs”; claim step of determining the level of the relevant metabolites disregarded because it was “well known in the art”).

Here, the patents teach that in the prior art, three-dimensional character lip synchronization was performed using a “timed data file of phonemes having a plurality of sub-sequences,” as recited in the claims. `576 Patent 1:32-43. But the prior art did not, according to the patents, involve obtaining rules that define output morph weight sets as a function of the phonemes, or using those rules to generate the morph weight sets. Instead, an artist manually set the morph weights at certain important keyframes, and a computer program then interpolated the frames between the keyframes. `576 Patent 2:29-37. Therefore, while tangible, the steps of (1) using a timed phoneme transcript, (2) setting morph weight sets at keyframes, or (3) interpolating between keyframes, are not “inventive steps” that could transform the claims herein into patent eligible subject matter, if those claims are directed to an abstract idea.

In attacking the claims as simply drawn to the abstract idea of “rules-based lip-synchronized animation on a computer,” Mot., Docket No. 338 at 3, Defendants’ argument does not account for the presence in the claims, or the Court’s construction, of “morph weight set.” The Court construed “morph weight set” as a “set of values, one for each delta set, that, when applied, transform the neutral model to some desired state, wherein each delta set is the [set of vectors] from each vertex on the neutral (reference) model to each vertex on a model of another mouth position.” Rulings on Claim Constr., Docket No. 298-1 at 9.

However, the patents themselves teach that the prior art includes using morph targets that correspond to phonemes and calculating delta sets that contain the vectors from each vertex on the neutral model to the morph target. `576 Patent at 1:44-62. So, while Defendant’s characterization is overly broad, it would be fair to characterize the claims as drawn to the idea of automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation. Indeed, Plaintiff’s expert opines that:

A central part of the creative insight of the patents is the realization to use the specific approach of using morph weight set representations of the facial shape coupled with rules, including explicit and distinct timing rules, to generate keyframes. This approach uniquely provides the automation required to produce animation in a cost-effective way, yet provided the necessary artistic control required to produce commercial grade animation.

Declaration of Michael Gleicher, Ph.D. in Supp. of Opp’n, Docket No. 345, ¶ 20. Defendants object to this testimony, because “[t]he Court may not consider declarations in opposition to a Rule 12(c) motion without converting the motion to a motion for summary judgment.” Defs.’ Objections to Declarations Filed in Connection with Motion for Judgment on the Pleadings, Docket No. 351 at 2.[10] It is unclear how that response helps Defendants. Certainly, one option is for the Court to deny the Motion as presenting an issue that turns on the facts.

However, nothing in the Declaration affects the analysis. In the paragraph quoted above, Plaintiff’s expert opines that a central part of the patents is “using morph weight set representations of the facial shape coupled with rules, including explicit and distinct timing rules, to generate keyframes.” Everyone appears to agree with that characterization, except that Defendants point out that no particular “explicit and distinct” rules are required by the claims. The question is therefore whether the inclusion of that concept in the claims satisfies § 101 given (1) the prior art, and (2) the fact that the claims do not require any particular rules.

A consideration of the prior art recited in the patents shows that the point of novelty here is the idea of using rules, including timing rules, to automate the process of generating keyframes. The following chart compares the `576 Patent’s claim elements to the prior art described in that patent.

Step Admitted Prior Art
A method for automatically animating

lip synchronization and facial

expression of three-dimensional characters comprising:

 

Automating the process is the focus of the invention. However, the patent teaches that in the prior art, the use of computerized interpolation partially automated the process by allowing animators to set mouth shapes only at keyframes, rather than at every frame, as would be the case in hand-drawn animation. `576 Patent 2:31-34.
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence. Rules for defining morph weight sets as a function of phoneme sequence are disclosed as within the prior art. ‘576 Patent 1:44-2:28. Rules for defining morph weight sets as a function of timing are not; instead, the timing results from the artist’s choice of keyframes. `576 Patent 2:29-34. Note, however, that no particular timing rules are required by any claim.
generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules; An intermediate stream of morph weight sets is disclosed as being part of the prior art through the keyframes manually set by the artist. `576 Patent 2:29-34. The transition parameters are not. Those parameters flow from the timing rules.
generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and The patent teaches that the prior art generated the final stream by interpolating between the keyframes. `576 Patent 2:29-34. Again, transition parameters are not disclosed as being   within the prior art.
applying said final stream of output

morph weight sets to a sequence of

animated characters to produce lip

synchronization and facial expression

control of said animated characters.

Both the final set of output morph weight sets and applying those sets are covered by the interpolation process of the prior art. `576 Patent 2:29-34.

 

So, what the claim adds to the prior art is the use of rules, rather than artists, to set the morph weights and transitions between phonemes. However, both of these concepts are specified at the highest level of generality. At the hearing on the Motion, Plaintiff emphasized that the rules inventively take into account the timing of the phoneme sequence. But the specification states clearly that “[i]n operation and use, the user must manually set up default correspondence rules” that “specify the durational information needed to generate appropriate transitionary curves between morph weight sets, such as transition start and end times.” `576 Patent 6:46-54. Thus, the user, not the patent, provides the rules. And while the patent does provide an example of a very partial set of default and secondary rules, it expressly states that “this is only an example of a set of rules which could be use[d] for illustrative purposes, and many other rules could be specified according to the method of the invention.” `576 Patent 7:36-9:23. Because the claim purports to cover all such rules, in light of the prior art, the claim merely states “an abstract idea while adding the words `apply it.'” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S.Ct. at 1294) (some quotation marks omitted). The same is true for claim 1 of the `278 Patent, which does not differ in a manner relevant to this analysis.

Here, while the patents do not preempt the field of automatic lip synchronization for computer-generated 3D animation, they do preempt the field of such lip synchronization using a rules-based morph target approach. And if, as Plaintiff suggests, the inventive step is the use of timing rules, given the state of the prior art, that still leaves an abstract idea at the point of novelty, and preventing the development of any additional ways to use that abstract idea in the relevant field. See Alice, 134 S. Ct. at 2360 (“the claims at issue amount to `nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer”).

Defendants argue that a “patentee simpl[y] does not waste the time, money and effort to prosecute a patent application for an invention they casually indicate was known in the art.” Opp’n, Docket No. 344 at 10-11. But a § 101 defect does not mean that the invention was in the prior art. The invention here may have been novel, but the claims are directed to an abstract idea. And the patent’s casual — and honest — description of the prior art was made at a time when, under the then-prevalent interpretation of the law, such admissions were unlikely to be harmful. One unintended consequence of Alice, and perhaps of this and other decisions to come, is an incentive for patent applicants to say as little as possible about the prior art in their applications.[11]

Plaintiff points to one Defendant’s contemporaneous characterization of Plaintiff’s system as “revolutionary.” Opp’n, Docket No. 344 at 1 (quoting Decl. of John Petrsoric In Opp’n to Mot., Docket No. 346, Ex. 2, January 27, 1999 Warner Bros. Memorandum (inviting colleagues to a demonstration of Plaintiff’s “revolutionary lip synch technique” that “utilizes proprietary software.”)).

This argument is unpersuasive in this context for two reasons. First, for purposes of the § 101 inquiry, which is different from the § 103 inquiry, the revolutionary nature of an abstract idea does not weigh in favor of patentability. See Mayo, 132 S. Ct. at 1293 (“Einstein could not patent his celebrated law that E=mc2. . . . Such discoveries are `manifestations of . . . nature, free to all men and reserved exclusively to none.'”) (quoting Chakrabarty, 100 S.Ct. at 2204). Second, there has been no showing that the cited praise relates to the claims in all their breadth, rather than to a particular implementation that is not specified by the claims. Thus, the inventor’s specific implementation of the abstract idea represented by the claim may have been of significant value beyond that of the abstract idea itself.

This case illustrates the danger that exists when the novel portions of an invention are claimed too broadly. As noted above, the claims here are drafted to give the impression of tangibility, but the Supreme Court has “long warn[ed] . . . against interpreting § 101 in ways that make patent eligibility depend simply on the draftsman’s art. “Alice, 134 S. Ct. at 2351 (citing Mayo, 132 S.Ct. at 1294). When examined in light of the prior art, the claims are directed to an abstract idea, and lack an “inventive concept” “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself.” Id. at 2355 (citations omitted).

Click here for a list of US court approved software patent examples

MODERN TELECOM SYSTEMS LLC, Plaintiff,
v.
EARTHLINK, INC., Defendant.

Links

MODERN TELECOM SYSTEMS LLC, Plaintiff,
v.
EARTHLINK, INC., Defendant.

US 6,504,886

US 6,332,009

US 6,570,932

US 6,163,570

US 7,062,022

US 5,970,100

Summary

Claims of US patents 6,504,886, 6,332,009, 6,570,932, 6,163,570, 7,062,022 and 5,970,100 in the name of Modern Telecom Systems LLC were found to be patent eligible subject matter under 35 USC 101 because it was not shown that the claims lacked an inventive step, and the specific steps recited in the patents do not pre-empt all inventions concerning communicating between modems.

Comments

  • A solution that is necessarily routed in computer technology in order to overcome a problem specifically arising in the realm of computer networks is patent eligible.
  • Software must be patent eligible, unless it falls within one of the exceptions.

Broad description of the invention

The patent concerns software that controls the way a user modem communicates with a telephone company modem.

Characteristic Claim

A method of communicating a learning sequence, said method comprising:

receiving a first parameter specifying a number of segments in said learning sequence;

receiving a second parameter specifying a sign pattern of each of said segments;

receiving a third parameter specifying a training pattern of each of said segments, wherein said training pattern is indicative of an ordering of a reference symbol and a training symbol in each of said segments;

constructing said learning sequence based on said parameters; and transmitting said learning sequence.

Details

Section 101 of the Patent Act provides that a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank Int’l, ___ U.S. ___, 134 S. Ct. 2347, 2354, 189 L. Ed. 2d 296 (2014). “The concern that drives this exclusionary principle” is “one of pre-emption.” Id. In other words, the concern is “`that patent law not inhibit further discovery by improperly tying up the future use of’ these building blocks of human ingenuity.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., ___ U.S. ___, 132 S. Ct. 1289, 1301, 182 L.Ed.2d 321 (2012)). Alice warns courts, however, to “tread carefully in construing this exclusionary principle lest it swallow all of patent law,” because “[a]t some level, `all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'” Id. (quoting Mayo, 132 S. Ct. at 1293).

In Alice, the Court followed the framework it established in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Id. at 2355. First, the court asks “whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If so, the court then “consider[s] the elements of each claim both individually and `as an ordered combination’ to determine whether the additional elements `transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In this second step, the court looks for an “inventive concept” — that is, “an element or combination of elements that is `sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'” Id. (quoting Mayo, 132 S. Ct. at 1294).

This standard is easier to articulate than it is to apply. “The line between a patentable `process’ and an unpatentable `principle’ is not always clear.” Parker v. Flook, 437 U.S. 584, 589 (1978). The Federal Circuit has referred to § 101 jurisprudence as a “murky morass.” MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1259 (Fed. Cir. 2012) (suggesting, in dicta, that “courts could avoid the swamp of verbiage that is § 101” by addressing patentability defenses under §§ 102, 103, and 112 before addressing patent eligibility under § 101). Judge Pfaelzer recently lamented that “Supreme Court decisions on § 101 often confuse more than they clarify.” California Inst. of Tech. v. Hughes Commc’ns Inc., 2014 WL 5661290, at *3 (C.D. Cal. Nov. 3, 2014); see also MySpace, Inc., 672 F.3d at 1259 (“Our opinions spend page after page revisiting our cases and those of the Supreme Court, and still we continue to disagree vigorously over what is or is not patentable subject matter.”). Pinning down the exclusion for “abstract ideas” can be particularly challenging. See MySpace, Inc., 672 F.3d at 1259 (“When it comes to explaining what is to be understood by `abstract ideas’ in terms that are something less than abstract, courts have been less successful.”).

Under the first step of the Mayo test, the Court must determine whether the patent claims at issue are directed to abstract ideas.

As an initial matter, the Court notes that, “identifying the precise nature of the abstract idea” to which Plaintiff’s patent claims are directed “is not as straightforward as in Alice or some of [the Federal Circuit’s] other recent abstract idea cases.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). For example, the claims in Alice were directed to the abstract idea of intermediated settlement, “i.e., the use of a third party to mitigate settlement risk,” and “simply instruct[ed] the practitioner to implement the abstract idea . . . on a generic computer.” Alice, 134 S. Ct. at 2356, 2359. In Ultramercial, 772 F.3d at 715, the claims were directed to the abstract idea of “using advertisement as an exchange or currency.” In buySAFE, 765 F.3d at 1355, the claims simply invoked a generic computer to implement the abstract concept of “creating a contractual relationship — a `transaction performance guaranty’ — that is beyond question of ancient lineage.” In Content Extraction, 776 F.3d at 1347, the claims were “drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.” In Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014), the claims simply recited “a process of taking two data sets” — which were “generated by taking existing information . . . and organizing this information into a new form” — and “combining them into a single data set.”

Although determining whether the patents in suit are directed to an abstract idea is not as easy as the cases discussed above, under the Federal Circuit’s broad formulation of the first step of the Mayo test, see, e.g., Ultramercial, 772 F.3d at 715 (combination of steps in patent claim “recites an abstraction — an idea, having no particular concrete or tangible form”), one could conceivably conclude that all process or method patents, like the patents in suit, are directed to an abstract idea.[2] In fact, even cases Plaintiff relies on found the patents in suit directed to patent-ineligible subject matter. See Hughes Commc’ns, 2014 WL 5661290, at *15; Card Verification Solutions, LLC v. Citigroup Inc., 2014 WL 4922524, at *4 (N.D. Ill. Sept. 29, 2014) (“Even when looking at the patent in the light most favorable to Card Verification, it is directed toward a patent-ineligible abstract idea.”).

The representative claims of the Learning Sequence Patents (claim 5 of the ‘866 and claim 44 of the ‘009 patent) describe a method of communicating certain descriptors, signals, data, etc. between two devices (presumably modems) over a data communication channel. The representative claims of the Power Level Calculation Patents (claim 7 of the ‘932 patent and claim 1 of the ‘570 patent) describe using specific formulas to calculate modem power levels in signals transmitted over a data communication channel. The representative claim of the Fast Start-Up Patent (claim 1 of the ‘022 patent) describes a method of reducing startup latency between two devices configured to communicate with each other over a data communication channel. The representative claim of the Spectrum Frequency Patent (claim 1 of the ‘100 patent) describes a method for error correction in data communication channel impairment. Each of these methods is conceptual in nature. Ultimately, however, the Court need not decided whether the patents are “directed to” an abstract idea because, as discussed below, Defendants have failed to meet their burden of establishing that the patents in suit lack an inventive concept such that they are no more than a patent on an abstract idea.

Step Two of the Mayo Test

Under the second step of the Mayo test, the Court considers whether the elements of each claim, either individually or “as an ordered combination,” include an “inventive concept” such that “`the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294).

Defendants argue that each of the representative patent claims lack an inventive concept. Defendants’ argument amounts to a recitation of the elements of each representative claim followed by a conclusory characterization of the claims as “unlimited,” “so abstract and sweeping as to cover any and all uses of them,” and “recit[ing] nothing more than an ineligible concept.” See generally Motion, 10-21.[3] Defendants correctly point out that the patents concern software that controls the way a user modem communicates with a telephone company modem. However, Defendants have failed to demonstrate that the specific steps recited in the patents pre-empt all inventions concerning communicating between two modems.

The claims here “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.” See DDR Holdings, 773 F.3d at 1257. Cf. Content Extraction, 776 F.3d at 1347 (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions. And banks have, for some time, reviewed checks, recognized relevant data such as the amount, account number, and identity of account holder, and stored that information in their records.”). Instead, like the claims in DDR Holdings, Plaintiff’s claims appear to describe a solution that is “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, 773 F.3d at 1257. Thus, the patent claims here are at least potentially distinguishable from the patents in the cases cited by Defendants. For example, unlike in Content Extraction, Ultramercial, and buySAFE, here there is no record of the technology described in the patents being well-known at the time of filing or simply involving performance of “well-understood, routine, and conventional activities commonly used in the industry.” See Content Extraction, 776 F.3d at 1348. Cf. id. ([Patentee] conceded at oral argument that the use of a scanner or other digitizing device to extract data from a document was well-known at the time of filing, as was the ability of computers to translate the shapes on a physical page into typeface characters.”); Ultramercial, 772 F.3d at 716 (“[E]ach of those eleven steps merely instructs the practitioner to implement the abstract idea with `routine, conventional activit[ies], which is insufficient to transform the patent-ineligible abstract idea into patent-eligible subject matter.” (second alteration in original)); buySAFE, 765 F.3d at 1355 (holding that the subject of the patent claims was “beyond question of ancient lineage”).

Defendants emphasize the “software focus” of the patents as if recent Federal Circuit cases support a rule that software is categorically patent-ineligible. The Court does not interpret the cases that way and, instead, agrees with the conclusion in Hughes Commc’ns that “software must be eligible under § 101.” Hughes Commc’ns, 2014 WL 5661290, at *7 (emphasis added).

Ultimately, Defendants bear the burden of making clear “[t]he line between a patentable `process’ and an unpatentable `principle'” in the context of Plaintiff’s patent claims. Flook, 437 U.S. at 589; see also DDR Holdings, 773 F.3d at 1255 (“Distinguishing between claims that recite a patent-eligible invention and claims that add too little to a patent-ineligible abstract concept can be difficult, as the line separating the two is not always clear.”).

Click here for a list of US court approved software patent examples

DIGITECH IMAGE TECHNOLOGIES, LLC, v.
ELECTRONICS FOR IMAGING, INC.,

CITATION

2013-1600, 2013-1601, 2013-1602, 2013-1603, 2013-1604, 2013-1605, 2013-1606, 2013-1607, 2013-1608, 2013-1609, 2013-1610, 2013-1611, 2013-1612, 2013-1613, 2013-1614, 2013-1615, 2013-1616, 2013-1617, 2013-1618.

Links

DIGITECH IMAGE TECHNOLOGIES, LLC, v.
ELECTRONICS FOR IMAGING, INC.,

US 6,128,415

Summary

Claims of US patent 6,128,415 in the name of Digitech Image Technologies were found not to be patent eligible subject matter under 35 USC 101 because they do not require any physical embodiment.

Comments

  •       Claims that describe data are unlikely to be patent eligible.

Broad description of the invention

The ‘415 patent claims methods and systems for creating a device profile within a digital image processing system.

Characteristic Claim

Independent claims 1 and 26 describe a device profile as a collection of information; specifically, a description of a device dependent transformation of spatial and color information:

1. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:

first data for describing a device dependent transformation of color information content of the image to a device independent color space; and

second data for describing a device dependent transformation of spatial information content of the image in said device independent color space.

***

26. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising data for describing a device dependent transformation of spatial information content of the image to a device independent color space, wherein through use of spatial stimuli and device response for said device, said data is represented by spatial characteristic functions.

Details

In this appeal, we address the subject matter eligibility of claims in U.S. Patent No. 6,128,415 (“the ‘415 patent”). The district court concluded that the asserted claims were invalid under 35 U.S.C. § 101. For the reasons set forth below, we affirm.

Digitech Image Technologies (“Digitech”) is the assignee of the ‘415 patent, which is directed to the generation and use of an “improved device profile” that describes spatial and color properties of a device within a digital image processing system. In general, digital image processing involves electronically capturing an image of a scene with a “source device,” such as a digital camera, altering the image in a desired fashion, and transferring the altered image to an “output device,” such as a color printer.

According to the patent, all imaging devices impose some level of distortion on an image’s color and spatial properties. This distortion occurs because different devices (i.e., digital cameras, monitors, TVs, printers, etc.) allow for slightly different ranges of colors and spatial information to be displayed or reproduced. Prior art methods attempted to correct these distortions using certain device dependent solutions and device independent paradigms. Device dependent solutions work to calibrate and modify the color and spatial properties of the devices themselves. For example, some devices may be designed with certain upstream or downstream devices in mind to ensure optimal transfer of image data to those devices. Device independent solutions, on the other hand, work to translate an image’s pixel data from a device dependent format into an independent color space, which can then be translated to any number of output devices at a reduced level of distortion.

Device independent solutions discussed in the patent were limited to color information and require creating “device profiles” that describe the color properties of both the source and output devices, thereby enabling a more accurate translation of the image’s pixel data into the independent color space and across the source and output devices. The ‘415 patent expands this device independent paradigm to capture both spatial properties and color properties of an imaging device. The ‘415 patent thus discloses an “improved device profile” that “includes both chromatic characteristic information and spatial characteristic information.” ‘415 patent, col. 2, ll. 16-18.

Digitech argues on appeal that the “device profile” claimed in the ‘415 patent is eligible subject matter under section 101 because it is a tangible object that is an “integral part of the design and calibration of a processor device within a digital image processing system.” Appellant Br. 20 (emphasis omitted). We disagree.

Pursuant to section 101, an inventor may obtain a patent for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. For all categories except process claims, the eligible subject matter must exist in some physical or tangible form. To qualify as a machine under section 101, the claimed invention must be a “concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr v. Duryee, 68 U.S. 531, 570 (1863). To qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980). Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles. Id.

Here, the device profile described in the ‘415 patent is not a tangible or physical thing and thus does not fall within any of the categories of eligible subject matter.  Independent claims 1 and 26 describe a device profile as a collection of information; specifically, a description of a device dependent transformation of spatial and color information:

1. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:

first data for describing a device dependent transformation of color information content of the image to a device independent color space; and

second data for describing a device dependent transformation of spatial information content of the image in said device independent color space.

***

26. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising data for describing a device dependent transformation of spatial information content of the image to a device independent color space, wherein through use of spatial stimuli and device response for said device, said data is represented by spatial characteristic functions.  As noted in the above claims, the device profile is comprised of two sets of data that describe a device dependent transformation—one set of data for color information and the other set of data for spatial information. The asserted claims are not directed to any tangible embodiment of this information (i.e., in physical memory or other medium) or claim any tangible part of the digital processing system. The claims are instead directed to information in its non-tangible form. Hence, the device profile claimed in the ‘415 patent does not fall within any of the categories of eligible subject matter under section 101.

Digitech argues that a device profile is subject matter eligible because it is “hardware or software within a digital image processing system” and exists as a tag file appended to a digital image. Appellant Br. 26. Digitech’s position is not supported by the claim language, which does not describe the device profile as a tag or any other embodiment of hardware or software. The claims’ only description of the device profile is that it comprises “first data for describing” color information and “second data for describing” spatial information. The claims encompass all embodiments of the information contained in the device profile, regardless of the process through which this information is obtained or the physical medium in which it is stored. Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.

In Nuijten, we affirmed the U.S. Patent and Trademark Office’s rejection of the applicant’s attempt to claim a “signal” embedded with supplemental data. This claim reads:

A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.

Nuijten, 500 F.3d at 1351. Although we acknowledged that a signal had physical properties with “tangible causes and effects,” we nevertheless concluded that “such transitory embodiments are not directed to statutory subject matter.” Id. at 1353, 1357. We thus held that the physical embodiment of the supplemental data—the claimed “signal”—was not patent eligible.

The claims at issue here are even broader than the claim in Nuijten. While the claim in Nuijten requires supplemental data in the form of a transitory embodiment, the device profile claims of the ‘415 patent do not require any physical embodiment, much less a nontransitory one. The device profile, as claimed, is a collection of intangible color and spatial information. We therefore hold that the device profile claims of the ‘415 patent do not encompass eligible subject matter as required by section 101 and are therefore not patent eligible.

Digitech next argues that the asserted method claims of the ‘415 patent are patent eligible because they describe a process for generating a device profile that is specifically tied to a digital image processing system and is integral to the transformation of a digital image. Again, we do not agree.

There is no dispute that the asserted method claims describe a process. Claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. Chakrabarty, 447 U.S. at 309. The Supreme Court recently reaffirmed that fundamental concepts, by themselves, are ineligible abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. ___, No. 13-298, slip op. at 10 (June 19, 2014). In determining whether a process claim recites an abstract idea, we must examine the claim as a whole, keeping in mind that an invention is not ineligible just because it relies upon a law of nature or mathematical algorithm. As noted by the Supreme Court, “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Diamond v. Diehr, 450 U.S. 175, 187 (1981). A claim may be eligible if it includes additional inventive features such that the claim scope does not solely capture the abstract idea. Alice Corp., 573 U.S. ___, slip op. at 6. But a claim reciting an abstract idea does not become eligible “merely by adding the words `apply it.'” Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1276 (Fed. Cir. 2012). The method in the ‘415 patent claims an abstract idea because it describes a process of organizing information through mathematical correlations and is not tied to a specific structure or machine. Claim 10 describes the process for generating the device profile:

10. A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising:

generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions;

generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and device response characteristic functions; and

combining said first and second data in- to the device profile.

‘415 patent, col. 6, ll. 1-16.[2] The above claim recites a process of taking two data sets and combining them into a single data set, the device profile. The two data sets are generated by taking existing information—i.e., measured chromatic stimuli, spatial stimuli, and device response characteristic functions—and organizing this information into a new form. The above claim thus recites an ineligible abstract process of gathering and combining data that does not require input from a physical device. As discussed above, the two data sets and the resulting device profile are ineligible subject matter. Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible. “If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” Parker v. Flook, 437 U.S. 584, 595 (1978) (internal quotations omitted).

Contrary to Digitech’s argument, nothing in the claim language expressly ties the method to an image processor. The claim generically recites a process of combining two data sets into a device profile; it does not claim the processor’s use of that profile in the capturing, transforming, or rendering of a digital image. The only mention of a “digital image reproduction system” lies in the claim’s preamble, and we have routinely held that a preamble does not limit claim scope if it “merely states the purpose or intended use of an invention.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006). The method claimed in the ‘415 patent is thus “so abstract and sweeping” as to cover any and all uses of a device profile. See Gottschalk v. Benson, 409 U.S. 63, 68 (1972). We therefore need not decide whether tying the method to an image processor would lead us to conclude that the claims are directed to patent eligible subject matter in accordance with the Supreme Court’s Mayo test. Alice Corp., 573 U.S. ___, slip op. at 11. Accordingly, we hold that the process described in the asserted claims is directed to an abstract idea and is not patent eligible under section 101.

Click here for a list of US court approval patent examples 

MESSAGING GATEWAY SOLUTIONS, LLC, v. AMDOCS, INC. AND AMDOCS LIMITED

Links

MESSAGING GATEWAY SOLUTIONS, LLC, v. AMDOCS, INC. AND AMDOCS LIMITED

8,750,153

Summary

Claims of US patent 8,750,153 in the name of Messaging Gateway Solutions, LLC were found to be patent eligible subject matter under 35 USC 101 because the solution provided is tethered to the technology that created the problem.

Comments

  • The claims are necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
  • Claim 20 contains meaningful limitations that prevent it from preempting the abstract idea of receiving, translating, and delivering a message. It is limited to SMS text messages between a mobile device and the Internet.

Broad description of the invention

The ‘153 patent relates to a computer system that receives an SMS text message, converts it to an internet protocol message and delivers the converted message. It translates mobile phone language into internet language.

Characteristic Claim

Claim 20:

A method of using a computer system to facilitate two-way communication between a mobile device and an Internet server, comprising:

the computer system receiving a text message via a first communication path;

the computer system inserting at least a message body of the text message into an Internet Protocol (IP) message; and the computer system transmitting the IP message to the Internet server, via a second communication path,

wherein the text message originates from the mobile device as a short message service (SMS) text message, and wherein the SMS text message contains a multi-digit address that is fewer than seven digits and that is associated with a URL of the internet server.

Details

The patent eligibility of the subject matter of US 8,750,153 was challenged. Section 101 of the Patent Act defines patent-eligible subject matter. It provides: “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.” 35 U.S.C. § 101. The Supreme Court has recognized an implicit exception for three categories of subject matter not eligible for patentability: laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014). The purpose of these carve outs is to protect the “basic tools of scientific and technological work.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012). “[A] process is not unpatentable simply because it contains a law of nature or a mathematical algorithm,” as “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Id. at 1293-94 (quotation marks and emphasis omitted). The Supreme Court has made clear that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words `apply it.'” Id. at 1294 (emphasis omitted).

The Supreme Court recently reaffirmed the framework laid out in Mayo for distinguishing “patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. First, the court must determine whether the claims are drawn to a patent-ineligible concept. Id. If the answer is yes, the court must look to “the elements of the claim both individually and as an `ordered combination'” to see if there is an “`inventive concept’—i. e., an element or combination of elements that is `sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'” Id. (alteration in original); see also Accenture Global Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013) (“[T]he court must first `identify and define whatever fundamental concept appears wrapped up in the claim.’ Then, proceeding with the preemption analysis, the balance of the claim is evaluated to determine whether `additional substantive limitations . . . narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.'” (internal citation omitted)).

Furthermore, “the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant postsolution activity.” Bilski v. Kappas, 130 S. Ct. 3218, 3230 (2010) (internal quotation marks omitted). In addition, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2358. For this second step, the machine-or-transformation test can be a “useful clue,” although it is not determinative. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014).

“Whether a claim is drawn to patent-eligible subject matter under § 101 is an issue oflaw ” In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008), aff’d sub nom. Bilski v. Kappas, 561 U.S. 593 (2010). The Federal Circuit has held that the district court is not required to individually address claims not asserted or identified by the non-moving party, so long as the court identifies a representative claim and “all the claims are substantially similar and linked to the same abstract idea.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (internal quotation marks omitted). Neither party asserts that claim construction is necessary to decide the motions. (Tr. 33).

Defendants argue that Claim 20 is directed to an abstract idea. They offer differing arguments as to what the abstract idea in question is. mBlox argues that it is “delivering a message using an address.” (C.A. 14-735 D.I. 25 at p. 14). The other moving Defendants argue that the abstract idea is “receiving a message in one format, changing the message into another format, and sending the newly formatted message to its destination.”[1](C.A. 14-736 D.I. 22 at p. 7). Defendants contend that these are precisely the type of abstract ideas that courts have routinely held are not patent-eligible. (Tr. 12).

In Loyalty Conversion, the court held that “the conversion of loyalty award points from one vendor into loyalty award points of another” was not patentable. Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc., 2014 WL 4364848, at *8 (E.D. Tex. Sept. 3, 2014). Defendants argue that the ‘183 patent claims the same idea-converting information from one format to another.[2] (C.A. 14-736 D.I. 22 at p. 8). In Dealertrack, the Federal Circuit held that receiving credit application data and selectively forwarding it to remote terminals was an unpatentable abstract idea. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1331, 1334 (Fed. Cir. 2012). Defendants argue that the claim at issue is similar to that in Dealertrack; they both claim a method of receiving a message, performing an action based on that message, and transmitting the message. (Tr. 12-13). In Content Extraction, the Federal Circuit held that “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” was an abstract idea. Content Extraction, 776 F.3d at 1347. Defendants maintain that the claims in Content Extraction are very similar to the claim at issue here. (C.A. 14-735 D.I. 29 at p. 9 n.6). Both are directed to receiving information, processing it, and performing an additional step. (Id.)

Plaintiff responds that Defendants are over-generalizing the claim. (C.A. 14-732 D.I. 25 at p. 17). Plaintiff argues that Claim 20 is directed to a real-world problem and is firmly rooted in specific technology. (Id at p. 18). Plaintiff maintains that, unlike those in the cases cited by Defendants, the claim at issue “is securely tethered to a tangible idea of a particular way to allow a mobile device [to] communicate with an Internet server.” (C.A. 14-732 D.I. 25 at p. 19).

The Court finds that Claim 20 is directed to the abstract idea of translation. The claim is a method that enables a device that ordinarily cannot send a message to a different device to do so. That is essentially the same as a translator assisting two people who speak different languages to communicate with each other. A translator receives a message in one language, translates it into another, and delivers the translated message. Similarly, in Claim 20, a computer system receives an SMS text message, converts it to an Internet Protocol message, and delivers the converted message. In essence, it translates mobile phone language into Internet language. Having identified the “fundamental concept . . . wrapped up in the claim,” I will now turn to the second step of the Alice inquiry. See Accenture Global Servs., 728 F.3d at 1341.

Defendants argue that the claim has no additional features or inventive concept that would render it patent-eligible. (C.A. 14-735 D.I. 29 at p. 11). Defendants note that adding generic computer components or field-of-use limitations is insufficient to meet the “something more” required by the second step of Alice. (Tr. 15-16). Defendants argue that the only limitations present in addition to the abstract idea are: “computer system,” “mobile device,” “Internet server,” “text message,” “Internet Protocol (IP) message,” “short message service (SMS) text message,” and “URL of the internet server.” (Tr. 16 (quoting ‘183 patent, col. 13, 11. 53-67)). Defendants maintain that these are generic computer limitations, which are insufficient to render the claim patent-eligible. (Tr. 16). In addition, Defendants argue that limiting the invention to SMS messages does not meet the second prong of the test, because that is merely a field-of-use limitation. (Id. at 17).

Plaintiff argues that Claim 20 is a patent-eligible technological improvement. (C.A. 14-732 D.I. 25 at p. 20). Plaintiff notes that in Alice, the Supreme Court stated that applications of abstract ideas to “a new and useful end” are patent-eligible. (Id. (quoting Alice, 134 S. Ct. at 2354)). Plaintiff argues that even if Claim 20 is directed to an abstract idea, it is nevertheless patent-eligible because it applies that idea to solve a specific, concrete problem. (Id. at p. 21). In addition, Plaintiff argues that Claim 20 contains meaningful limitations because it applies only to SMS messages addressed to phone numbers that are less than seven digits and associated with a URL. (Id. at p. 22).

Plaintiff notes that a major policy concern behind prohibiting the patenting of abstract ideas was ensuring that the “building blocks of human ingenuity” remain available. (Id. (quoting Alice, 134 S. Ct. at 2354)). Plaintiff contends that the limitations of Claim 20 ensure that the concept of delivering a converted message is not preempted. (Id.). Rather, Claim 20 is limited to a very specific application of that concept. (Id.). Plaintiff further argues that in DDR Holdings, the Federal Circuit found that a method claim directed to solving a business challenge was patent-eligible because the “claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” (Id. (quoting DDR Holdings, LLC v. Hotels.com, L.P, 773 F.3d 1245, 1257 (Fed. Cir. 2014))). Plaintiff argues that the same is true for Claim 20. (Id.).

The Court agrees that DDR Holdings is apposite. In DDR Holdings, the Federal Circuit held that method claims directed to maintaining website visitors were patent-eligible. Id. at 1259. The claims at issue addressed the problem oflntemet users being transported away from a host website after clicking on a hyperlink in an advertisement. Id. at 1257. Rather than transporting the user to a third-party advertiser’s website, as would normally occur when a user clicks a hyperlink, the claimed method sent the user to an automatically generated hybrid website with the “look and feel” of the advertiser’s website. Id. That way, the host website did not lose visitors to a third-party website, but users were still able to purchase products from the third party on a website with the “look and feel” of the third-party website. Id. at 1257-58.

The DDR Holdings court noted that the claims at issue were in some ways similar to those that it had previously held patent-ineligible: the claims were directed to a business practice and involved the use of a computer and the Internet. Id. at 1257. The claims differed, however, because they did 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.” Id. Rather, they solved a problem specific to the realm of computer networks in a way that was rooted in computer technology. Id.

The Federal Circuit cautioned that “not all claims purporting to address Internet-centric challenges are eligible for patent.” Id. at 1258. The claims at issue differed from Internet-centric patent-ineligible claims because “they do not broadly and generically claim `use of the Internet’ to perform an abstract business practice (with insignificant added activity)”; rather, they “specify how interactions with the Internet are manipulated to yield a desired result-a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” Id. The court also noted that the claims did not preempt an abstract idea because they recite a particular method of addressing a specific problem faced by websites. Id. at 1259. Other means of increasing sales by making two web pages look the same remained open to all. Id.

The Court finds that Claim 20 contains an inventive concept sufficient to render it patent-eligible. Like the claims in DDR Holdings, Claim 20 “is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” See id. at 1257. Claim 20 is directed to a problem unique to text-message telecommunication between a mobile device and a computer. The solution it provides is tethered to the technology that created the problem.

While it is true that not all claims directed at addressing Internet issues are patent-eligible, this claim is analogous to those in DDR Holdings. It specifies how an interaction between a mobile phone and a computer is manipulated in order to achieve a desired result which overrides conventional practice. Conventionally, phones could not send SMS text messages to computers. The claimed method manipulates that interaction by translating the message in a way that allows the computer to receive and understand the message.

The Supreme Court has noted that “[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Alice, 134 S. Ct. at 2354 (internal quotation marks and alterations omitted). If one looks at almost any patent from far enough away, it could arguably claim an abstract idea. For example, Alexander Graham Bell’s patent could be said to claim the abstract idea of oral communication. But his invention was not the concept of oral communication itself; it was a technological innovation that allowed a type of oral communication between people who could otherwise not communicate in that way. The claimed method here does the same: it uses technology that allows communication where it would otherwise be impossible. In addition, Claim 20 contains meaningful limitations that prevent it from preempting the abstract idea of receiving, translating, and delivering a message. It is limited to SMS text messages between a mobile device and the Internet.

Unlike the claims identified by Defendants, Claim 20 contains a sufficient inventive concept to render it patent-eligible. It is firmly rooted in technology and is addressed to a specific problem arising in the realm of mobile device-to-Internet communication. Furthermore, it contains sufficient limitations to prevent it from preempting an abstract idea. Since the parties have relied upon their arguments with respect to Claim 20, and the other asserted claims are substantially similar and linked to the same abstract idea, there is no reason to address them separately. Thus, the other asserted claims are also not invalid under § 101.

Click here for a list of US court approved software patent examples

VERACODE, INC. v.
APPTHORITY, INC

Links

VERACODE, INC. v.
APPTHORITY, INC

US 5,854,924

US 7,752,609

Summary

Claims of US patent 5,854,924 and 7,752,609 in the name of Veracode were found to be patent eligible subject matter under 35 USC 101 because the claimed method exceeds mere automation of a well-known process by harnessing and improving upon the unique properties and complex capabilities of computer technologies.

Comments

  • The claimed invention is more complex than what could be done by humans and transforms the claimed invention from an abstract idea simply automated by a computer into an inventive concept.
  • The patents do not claim a monopoly over all decompiling methods, but rather focus on a specific method for generating as-complete-as possibledata and content flow models.

Broad description of the invention

The `924 Patent is a “static debugging tool . . . to detect the presence of program errors and potential errors” in the machine-code version of a piece of software without actually running the analyzed software. Veracode also owns the `609 Patent issued in 2010 but claiming priority to 2002. The `609 Patent is a “software analysis framework” that consists of a method of decompiling machine code — which humans cannot interpret — into a form “that one of a certain skill can analyze.”

Characteristic Claim

A static debugging tool for use with a computer and for debugging a binary program file without requiring the execution of the binary program file in order to detect the presence of program errors and potential program errors, the static debugging tool comprising:

an analyzer for causing die computer to statically analyze a representation of the binary program file to detect the presence of program errors or potential program errors in the representation of the binary program file without executing the binary program file, wherein the representation of the binary program file is an intermediate file; and an output arrangement for causing the computer to output an error list of the errors or potential errors detected by the analyzer.

Details

Both patents generate an intermediate file from a program’s binary code. Binary code is a machine-readable form of code that allows a computer to run a particular piece of software; it is originally written as source code by software developers and then compiled into binary form by a computer. Although binary code is not readable by humans, the intermediate file the patented technology generates is intelligible to persons of ordinary skill in the art of software development. A software developer can reverse engineer the intermediate code to reconstruct or approximate the program’s original source code.

As a threshold requirement for patent protection, the patented technology or subject matter of a patent must be patentable. 35 U.S.C. § 101. If this requirement is not satisfied, the patent is invalid. The purpose of § 101 is to ensure “that patent protection promotes, rather than impedes, scientific progress and technological innovation.” I/P Engine, Inc. v. AOL Inc., 576 F. App’x 982, 996 (Fed. Cir. 2014) (nonprecedential) (Mayer, J., concurring).

Section 101 defines patentable subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has identified three categories of unpatentable subject matter (or patent-ineligible concepts) because they fail to meet this definition: laws of nature, physical phenomena, and abstract ideas, including mental processes. In re Bilski, 545 F.3d 943, 952 (Fed. Cir. 2008) (en banc) (citing Supreme Court decisions), aff’d sub nom. Bilski v. Kappos, 561 U.S. 593 (2010). These categories are not patentable because “they are the basic tools of scientific and technological work,” Gottschalk v. Benson, 409 U.S. 63, 67 (1972), and must be available for future use by others. Inventions relying on such patent-ineligible concepts become patentable only when they apply the concept “to a new and useful end.” Funk Bros. Seed Co. v. Kalo Innoculant Co., 333 U.S. 127, 130 (1948).

The Supreme Court has recently focused its attention on the patentability requirement, particularly in the realm of abstract ideas and mathematical processes. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012). Under Alice and Mayo, a defendant asserting that a patent covers unpatentable subject matter must satisfy a two-part test. Alice, 134 S. Ct. at 2354.

First, the defendant must show that the claims at issue are directed toward one of the patent-ineligible concepts. Id.; see Mayo, 132 S. Ct. at 1296-97. This step requires ascertaining the purpose of the claimed invention and analyzing whether that purpose is, for example, abstract. See Cal. Inst. of Tech. v. Hughes Commc’ns Inc., 59 F. Supp. 3d 974, 980 (C.D. Cal. 2014).

If the defendant satisfies this burden, it must then satisfy the second step by demonstrating that there is no “inventive concept” in the claimed matter or technology that would “transform the nature of the claim into a patent-eligible application.” Alice, 134 S. Ct. at 2354 (citing Mayo, 132 S. Ct. at 1294, 1297-98 (internal quotation marks omitted)). An “inventive concept” is one that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. (quoting Mayo, 132 S. Ct. at 1294 (alteration in original)). Looking for an inventive concept requires consideration of “the elements of each claim both individually and as an ordered combination.” Id. (citing Mayo, 132 S. Ct. at 1297-98 (internal quotation marks omitted)). “[R]ecitation of conventional, routine, or well-understood activity will not save an abstract claim. . . . But a claim element is not conventional just because it appears in prior art.” Cal. Inst., 59 F. Supp. 3d at 980. If the ordered combination of elements, considering all of the elements together, “constitutes conventional activity, the claim is not patentable.” Id. However, even if a claim element individually is abstract (standing alone), “a series of conventional elements may together form an unconventional, patentable combination.” Id.

The `609 Patent claims a software analysis framework that consists of methods and systems of analyzing executable software code using a computer. As explained above, when a programmer writes a computer program, he or she does so in source code. That source code is not readable by computers, and as a result must be compiled into an intermediate file, which is then assembled into a binary that is readable by a computer; this final result is the executable file. Binary is not readable by humans. When the original source code is not available, decompilers and similar tools are used to translate a binary into an intermediate representation that is then readable by a programmer and can be used to determine, at least to some degree of accuracy, what the original source code for the program was.

The claimed method in the `609 Patent processes executable software code to generate “an optimized, exhaustive data flow model” and “an optimized, exhaustive control flow model.” In so doing, it decompiles the executable software code into an intermediate file form “that one of a certain skill can analyze.” This provides “a complete model of the executable software code based on the optimized data flow model and the optimized control flow model,” which “facilitate[s] analysis of the executable software code” by comparison to the intermediate file.

Appthority contends that the `609 Patent claims are directed to a computerized, automated approach to software analysis that is based on longstanding technological approaches (data flow and control flow), which were previously done by hand using human mental processes, and are therefore unpatentable. Veracode apparently concedes that the concepts of control flow and data flow analysis are abstract ideas, but instead contends that the invention is directed at much more than these concepts and contains inventive components, because the specific processes articulated in the `609 Patent claims cannot be performed by humans and contain meaningful limitations on the abstract idea underlying the patent claims.The focus in the first part of the Alice/Mayo test is on the purpose of the claimed invention, rather than its novelty. See Enfish, Inc. v. Microsoft Corp., 56 F. Supp. 3d 1167, 1170-71 (C.D. Cal. 2014). The claimed invention here involves a method of processing code to generate optimized, exhaustive data flow and control flow models. The specific features of these models — that they are optimized and exhaustive, for example — are relevant to the second part of the analysis, but not to the first, as Veracode contends.

Mathematical relationships and formulas, including algorithms, are considered abstract ideas. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014); see Parker v. Flook, 437 U.S. 584, 585 n.1, 594-95 (1978); Gottschalk, 409 U.S. at 67. The basic concept of translating binary code into an equivalent, legible code is, in essence, an idea of mathematics implemented by a mental process. See Gottschalk, 409 U.S. at 67 (concluding that “conversion of [binary-coded decimal] numbers to pure binary numerals can be done mentally” through “ordinary arithmetic steps a human would use,” and that claim for computer to run conversion was patent-ineligible because these mathematical procedures require “no new machinery” to be carried out by computers); Cal. Inst., 59 F. Supp. 3d at 993 (“concepts of encoding and decoding are longstanding steps in the process of error correction,” and therefore claims that “explicitly recite the fundamental concepts of encoding and decoding data” are directed to abstract ideas).

Appthority has presented substantial evidence that the primary functions of the invention at issue here — control flow and data flow analysis — are longstanding, recognized building blocks of computer science. See generally Alfred V. Aho et al., Compilers: Principles, Techniques, and Tools (reprint 1988). Consistent with the policy purposes of the patent system, these basic principles are not patent-eligible. See Enfish, 56 F. Supp. 3d at 1174 (“Longstanding practices are often the building blocks of future research and development. Patents on these practices would significantly impede productive or inventive activity, to the detriment of society.”).

In addition, both parties recognize that it is possible to analyze binary code manually or mentally. “[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible . . . . because computational methods which can be performed entirely in the human mind are the types of methods that embody the `basic tools of scientific and technological work’ that are free to all men and reserved exclusively to none.” See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (citing Gottschalk, 409 U.S. at 67).

It is clear, then, that the claimed invention of the `609 Patent is directed at a building block of computer science and a fundamental practice in the industry, and therefore is directed at a patent-ineligible concept.

I ask next whether the patent consists exclusively of a building block concept, or whether it forms an inventive concept by offering “additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize [the abstract, ineligible concept] itself.” Mayo, 132 S. Ct. at 1297; see Alice, 134 S. Ct. at 2354. To survive this inquiry, the claims must do more than employ a generic computer to perform a task that has been long-recognized. This was the thrust of Alice, in which the Supreme Court stated that a claim “directed to [an] abstract idea” does not “transform that abstract idea into a patent-eligible invention” by “merely requir[ing] generic computer implementation.'” Alice, 134 S. Ct. at 2357-58 (citing Flook, 437 U.S. at 594); see Bilski v. Kappos, 561 U.S. 610-11 (2010) (“the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of [the idea] to a particular technological environment”).

Indeed, the case law makes clear that a process that simply automates a known transaction and requires nothing more than a generic computer to perform conventional computer functions and activities already known in the industry is not patent-eligible. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1327 (Fed. Cir. 2015) (“the presence of a general purpose computer to facilitate operations through uninventive steps does not change the fundamental character of an invention”); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351, 1355 (Fed. Cir. 2014) (claims not patent-eligible because they “are squarely about creating a contractual relationship . . . that is beyond question of ancient lineage,” and their “invocation of computers adds no inventive concept” because “[t]he computer functionality is generic”); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (claim employing “algorithms to manipulate existing information to generate additional information” not patent-eligible); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1006 (Fed. Cir. 2014) (nonprecedential) (computerization of bingo game not patent-eligible because claim “consists solely of mental steps which can be carried out by a human using pen and paper”); see also CyberSource, 654 F.3d at 1370 (invocation of the Internet to perform the transaction does not transform an ineligible claim into an eligible one). Even the addition of steps for implementing the abstract idea will not render the claim patent-eligible if the additional steps are routine and conventional, and therefore “add nothing of practical significance to the underlying abstract idea” or serve to limit it in some meaningful fashion. See Versata Dev., 793 F.3d at 1334; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir. 2014), cert. denied sub nom. Ultramercial, LLC v. WildTangent, Inc., 135 S. Ct. 2907 (2015); see also Mayo, 132 S. Ct. at 1299 (“[w]ell-understood, routine, conventional activity,” without more, is insufficient); Enfish, 56 F. Supp. 3d at 1176-77 (additional limitations on claims must supply sufficiently inventive concepts).

Despite this limitation on patent eligibility for claims involving computer implementation of abstract ideas or known mathematical algorithms, Alice left open the possibility that a method that “purport[s] to improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field” could be patent-eligible. Alice, 134 S. Ct. at 2359; see Enfish, 56 F. Supp. 3d at 1172-73; Cal. Inst., 59 F. Supp. 3d at 980.A claim for a computer-implemented process that solves a technological problem the industry faces, for example, is patentable under the Alice framework. Cf. Diamond v. Diehr, 450 U.S. 175, 177-78 (1981) (computer-implemented process that employed widely used mathematical equation to solve technological problem was patentable); Versata Dev., 793 F.3d at 1327 (claim that “solve[s] a technical problem using a technical solution” may be patentable). DDR Holdings provides an example of such a process. In that case, the Federal Circuit upheld an Internet-based claim as a patent-eligible inventive concept where the claimed solution was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” because it “amount[ed] to an inventive concept for resolving this particular Internet-centric problem” and was narrowly defined. See DDR Holdings, 773 F.3d at 1257, 1259. Judge Pfaelzer similarly concluded that a claim for a particular computer-based process survived the Alice test because it presented “a unique computing solution that addresses a unique computing problem.” Cal. Inst., 59 F. Supp. 3d at 1000.[16]

With these principles in mind, I turn to the specific language of the claims of the `609 Patent, focusing primarily on claim 1. Claim 1 consists of “[a] method for analyzing executable software code using a computer comprising a processor and a memory.” As stated above, the method includes the following elements: “processing the executable software code to generate an optimized, exhaustive data flow model including parsing the executable software code to facilitate identification of data flows for inclusion in the exhaustive data flow model,” “processing the executable software code to generate an optimized, exhaustive control flow model,” and “storing, in the memory, an intermediate representation of the executable software code that provides a complete model of the executable software code based on the optimized data flow model and the optimized control flow model, thereby facilitating analysis of the executable software code according to comparison of the intermediate representation to reference models.”

Standing alone, the method is an abstract idea. The translation of binary code and storing of an intermediate representation that can be used to analyze the underlying executable software code — in other words, decompilation — is not of ancient lineage like the contract, bank transaction, and bingo games at issue in buySAFE, Digitech, and Planet Bingo, but it is sufficiently well-established that there must be some meaningful innovative concept to render it patent-eligible. See Gottschalk, 409 U.S. at 67; Cal. Inst., 59 F. Supp. 3d at 993-94. This was illustrated by Mr. Rioux’s own testimony at trial that the process could, at least in some limited capacity, be performed manually. That this method is implemented “using a computer” is not enough to render it patentable. See Alice, 134 S. Ct. at 2358.

Appthority — seizing on Mr. Rioux’s testimony that the claimed method could be performed manually— argues that the patent does not indicate any mechanism by which the computer-implemented method improves this longstanding process rather than simply automating it. To the contrary, however, the claimed method’s focus on the generation of an optimized, exhaustive model, as these descriptors have been defined in the claim construction process, renders the claimed invention more complex than what could be done by humans and transforms the claimed invention from an abstract idea simply automated by a computer into an inventive concept.

During claim construction, I found that “optimized” meant “refined by iteration until substantially all data variables or control branches are modeled.” See Veracode, 2013 WL 5587946, at *13. An optimized model “models `substantially all data variables or control branches.'” Id. I found that “exhaustive” did not require construction because it was used in the ordinary sense of the word. See Veracode, 2013 WL 557946, at *15-16.

The evidence presented at trial and through the subsequent submissions of the parties demonstrates that the optimized and exhaustive features of the claimed method “effect an improvement” in the technical field and the preexisting technology, compared to what could be done by humans or simply by automating a manual process. See Alice, 134 S. Ct. at 2359. The evidence demonstrates that in the mid-1990’s, software security analysts had three options available for analyzing software for bugs and program errors. First, they could conduct static analysis by looking at the source code for the software, mentally building a model of it, and looking for potential security problems. This method was often incomplete because the software developer would not provide the complete source code, resulting in gaps or “blind spots” in the security analysis. Second, they could conduct a dynamic analysis by running or executing the program, trying out various inputs, and watching how the program responds. This too had major deficiencies because it was limited to the time and creativity of the security analyst inputting various commands and activities into the program. Third, they could attempt to manually decompile the binary into an intermediate representation, a task that was described by Dr. Rubin — Veracode’s expert — as impossible without the assistance of a decompiler. The available decompilers, however, were impractical and ineffective, because they lost program elements in translation and therefore did not adequately preserve the meaning of the underlying program. The result, according to Dr. Rubin, was an approximation of the program that was “very rough” and “missing a lot of information from the actual . . . program.” Even Appthority’s expert, Dr. Clark, described decompilation as akin to taking something that had been translated from English to Chinese (i.e., source code to binary) and using a different translator to translate it back to English. The consequence of these omissions was that “any bugs or program errors that there might have been in that binary may not even be represented in the high level language output that you would get from decompiling.”

It was this third method that the claimed method under the `609 Patent sought to improve upon. By employing a method that involves multiple iterations or progressive steps to achieve as comprehensive as possible models, essentially mimicking the process employed for compilation, Mr. Rioux’s decompilation method overcame numerous shortcomings of existing methods for identifying security risks in producing a more complete and accurate model of the underlying software. By including both control flow and data flow models that aim for both optimization and exhaustion, the method achieves a more accurate and more complete translation of the binary for security analysts to review than what the existing methods could provide. An optimized data flow model, Dr. Rubin testified, is built up by iteration by “going through a loop in the code in the analyzer, and modeling substantially all of the variables that write to memory and read from memory.” Similarly, an optimized control flow model “models substantially all of the control flow branches in the program.”

These achievements — that is, the process and result of producing a more complete model of the computer program being analyzed — are ones that could not be done using the technology as it existed at the time, according to the trial testimony, and that rely upon the complex functions of the patented computer system. The claimed method performs steps that a human mind can take only so far; it thus continues the iterative process further toward completion than a human mind could, and than the existing technology could. Cf. Enfish, 56 F. Supp. 3d at 1181 (program that “recites a modern, computer-specific concept to solve the modern, computer-specific problem of scarce memory” would be patentable because “it is addressed to an inventive computing concept”). If the invention merely improved the speed and accuracy of a particular task through computer implementation, that would not be enough to generate a patent-eligible concept. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1368, 1370 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Enfish, 56 F. Supp. 3d at 1181. But the claimed method exceeds mere automation of a well-known process by harnessing and improving upon the unique properties and complex capacities of computer technology. The claimed method both improved the speed and accuracy of the process and produced a largely complete result through optimization and exhaustion that was unobtainable using existing methods.

The `609 Patent claims share important characteristics with those at issue in DDR Holdings. In that case, the Federal Circuit observed that the claims at issue did “not recite an invention as technologically complex as an improved, particularized method of digital data compression,” but they also did not “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.DDR Holdings, 773 F.3d at 1259; see Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Rather, the claims were directed to more than an abstract concept because they included “additional features” that specified how certain Internet-based interactions would be “manipulated to yield a desired result.” Id. at 1259. As the Federal Circuit later observed, “[t]he patent at issue in DDR provided an Internet-based solution to solve a problem unique to the Internet that (1) did not foreclose other ways of solving the problem, and (2) recited a specific series of steps that resulted in a departure from the routine and conventional sequence of events after the click of a hyperlink advertisement.” Intellectual Ventures, 792 F.3d at 1371 (citing DDR Holdings, 773 F.3d at 1256-57, 1259).

Here, the `609 Patent claims do not claim a monopoly over all decompiling methods, but rather focus on a specific method for generating as-complete-as-possible data and control flow models in the form of an intermediate representation that can be used to identify flaws in the executable software code. In so doing, the `609 Patent does not claim the broad concept of an intermediate representation, but rather a narrower manifestation of it, by articulating an iterative process that had previously been unavailable to programmers and security risk analysts that addressed the problem of analyzing illegible binary code. As in DDR Holdings, 773 F.3d at 1258, the claims here are directed to a “solution [that] is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer[s].” Cf. Versata Dev., 793 F.3d at 1334 (claim that “involve[s] arranging a hierarchy of organizational and product groups,” storing, retrieving, and sorting pricing information, “eliminating less restrictive pricing information, and determining the price” does not impose “sufficient additional limitations to transform” “basic conceptual framework for organizing information” into something inventive and is not patent-eligible); Digitech, 758 F.3d at 1349-50 (claim that “recites a process of taking two data sets” that are “generated by taking existing information,” and “combining them into a single data set, the device profile,” and does not add any additional limitations, simply employs mathematical algorithms to manipulate existing information to generate additional information” and is not patent-eligible); Bascom Research, LLC v. LinkedIn, Inc., 77 F. Supp. 3d 940, 950-954 (N.D. Cal. 2015) (analogizing to Digitech, observing that “[e]stablishing relationships between document objects and making these relationships accessible is not meaningfully different from classifying and organizing data,” and therefore concluding that claims at issue were not patent-eligible because they did not include any additional features other than computer implementation).

In sum: the fact of having to translate from one language (source code) to another (binary) is in many respects unique to the world of software and computers. The claimed method, by offering an iterative process for achieving an optimized and as-near-to-exhaustive modeling of the underlying software as possible to enable a more complete security analysis to be conducted than could be performed through basic automation of human processes, presents “a unique computing solution that addresses a unique computing problem.” Cal. Inst., 59 F. Supp. 3d at 1000; see Enfish, 56 F. Supp. 3d at 1181. For the reasons more fully set forth above, I find and conclude that Claims 1, 13, and 14 of the `609 Patent are patent-eligible under § 101.

Click here for a list of US court approved software patent examples

CONTENT EXTRACTION AND TRANSMISSION LLC, 
v.
 WELLS FARGO BANK, NATIONAL ASSOCIATION

Links

CONTENT EXTRACTION AND TRANSMISSION LLC, v.
 WELLS FARGO BANK, NATIONAL ASSOCIATION

US 5,285,855

Summary

Claims of US patent 5,258,855 in the name of Content Extraction and Transmission LLC were found not to be patent eligible subject matter under 35 USC 101 because the invention was merely the use of conventional equipment to perform standard activities.

Comments

  • For the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of “well-understood, routine, [and] conventional activities previously known to the industry.” Additionally using a scanner or other digitizing device to extract data is not sufficient.

Broad description of the invention

The ‘885 patent claims methods and systems that collect data using a scanner, recognise certain data therein, and storing the recognised data in memory.

Characteristic Claim

Claim 1 of the `855 patent recites:

A method of processing information from a diversity of types of hard copy documents, said method comprising the steps of:

(a) receiving output representing a diversity of types of hard copy documents from an automated digitizing unit and storing information from said diversity of types of hard copy documents into a memory, said information not fixed from one document to the next, said receiving step not preceded by scanning, via said automated digitizing unit, of a separate document containing format requirements;

(b) recognizing portions of said hard copy documents corresponding to a first data field; and

(c) storing information from said portions of said hard copy documents corresponding to said first data field into memory locations for said first data field.

Details

The claims generally recite a method of 1) extracting data from hard copy documents using an automated digitizing unit such as a scanner, 2) recognizing specific information from the extracted data, and 3) storing that information in a memory. This method can be performed by software on an automated teller machine (ATM) that recognizes information written on a scanned check, such as the check’s amount, and populates certain data fields with that information in a computer’s memory.

An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 and its statutory predecessors to contain an implicit exception: “laws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. Pty Ltd. v. CLS Bank Int’l, 573 U.S. ___, 134 S. Ct. 2347, 2354 (2014). We focus here on whether the claims of the asserted patents fall within the excluded category of abstract ideas.

The Supreme Court’s two-step framework, described in Mayo and Alice, guides our analysis. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. ___, 132 S. Ct. 1289, 1296-97 (2012)). We first determine whether a claim is “directed to” a patent-ineligible abstract idea. If so, we then consider the elements of the claim — both individually and as an ordered combination — to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Id. This is the search for an “inventive concept” — something sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id.

The Supreme Court has not “delimit[ed] the precise contours of the `abstract ideas’ category.” Id. at 2357. We know, however, that although there is no categorical business-method exception, Bilski v. Kappos, 561 U.S. 593, 606, 608 (2010), claims directed to the mere formation and manipulation of economic relations may involve an abstract idea. See Alice, 134 S. Ct. at 2356-57. We have also applied the Supreme Court’s guidance to identify claims directed to the performance of certain financial transactions as involving abstract ideas. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (creating a transaction performance guaranty for a commercial transaction on computer networks such as the Internet); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1338 (Fed. Cir. 2013) (generating rule-based tasks for processing an insurance claim); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (managing a stable value protected life insurance policy); Dealertrack, 674 F.3d at 1333 (processing loan information through a clearinghouse).

Applying Mayo/Alice step one, we agree with the district court that the claims of the asserted patents are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory. The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions. And banks have, for some time, reviewed checks, recognized relevant data such as the amount, account number, and identity of account holder, and stored that information in their records.

CET attempts to distinguish its claims from those found to be abstract in Alice and other cases by showing that its claims require not only a computer but also an additional machine — a scanner.[1] Appellant’s Br. 31-32. CET argues that its claims are not drawn to an abstract idea because human minds are unable to process and recognize the stream of bits output by a scanner. Id. at 29. However, the claims in Alice also required a computer that processed streams of bits, but nonetheless were found to be abstract. See 134 S. Ct. at 2358. Similar to how the computer-implemented claims in Alice were directed to “the concept of intermediated settlement,” id. at 2356, and the claims in Dealertrack were directed to the concept of “processing information through a clearinghouse,” 674 F.3d at 1333, CET’s claims are drawn to the basic concept of data recognition and storage.

For the second step of our analysis, we determine whether the limitations present in the claims represent a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2357. For the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of “well-understood, routine, [and] conventional activities previously known to the industry.” Id. at 2359 (quoting Mayo, 132 S. Ct. at 1294 (internal quotation marks and brackets omitted)). Further, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Id. at 2358.

Applying Mayo/Alice step two, we agree with the district court that the asserted patents contain no limitations — either individually or as an ordered combination — that transform the claims into a patent-eligible application. CET conceded at oral argument that the use of a scanner or other digitizing device to extract data from a document was well-known at the time of filing, as was the ability of computers to translate the shapes on a physical page into typeface characters. Oral Arg. at 3:35-3:55; 16:12-16:17, available at http://oralarguments. cafc.uscourts.gov/default.aspx?fl=2013-1588.mp3. CET’s claims merely recite the use of this existing scanning and processing technology to recognize and store data from specific data fields such as amounts, addresses, and dates. See id. There is no “inventive concept” in CET’s use of a generic scanner and computer to perform well-understood, routine, and conventional activities commonly used in industry. See Alice, 134 S. Ct. at 2359. At most, CET’s claims attempt to limit the abstract idea of recognizing and storing information from hard copy documents using a scanner and a computer to a particular technological environment. Such a limitation has been held insufficient to save a claim in this context. See Alice, 134 S. Ct. at 2358; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed Cir. 2014); buySAFE, 765 F.3d at 1355.

CET next argues that the failure of PNC or the district court to individually address every one of its claims is inconsistent with the statutory presumption of validity that requires proving the invalidity of each claim by clear and convincing evidence. See Dana Corp. v. Am. Axle & Mfg., Inc., 279 F.3d 1372, 1376 (Fed. Cir. 2002). The district court, however, correctly determined that addressing each claim of the asserted patents was unnecessary. After conducting its own analysis, the district court determined that PNC is correct that claim 1 of the `855 patent and claim 1 of the ‘416 patent are representative, because all the claims are “substantially similar and linked to the same abstract idea.” CET, 2013 WL 3964909, at *5 (citing Bilski, 561 U.S. at 612). Moreover, CET never asserted in its opposition to PNC’s motion that the district court should have differentiated any claim from those identified as representative by PNC. Nor did CET identify any other claims as purportedly containing an inventive concept. If CET disagreed with PNC’s or the district court’s assessment, CET could have identified claims in its opposition brief that it believed would not be fairly represented by claims 1 of the `855 and ‘416 patents for purposes of PNC’s § 101 challenge. Regardless, we have reviewed all the claims of CET’s asserted patents, and agree with the district court that, for the purposes of PNC’s § 101 challenge, 1) the claims of the asserted patents are substantially similar in that they recite little more than the same abstract idea, and 2) claim 1 of the `855 patent and claim 1 of the ‘416 patent are representative.

CET argues on appeal that certain dependent claims recite additional steps, such as extracting and detecting specific data fields, repeating some steps, and storing data as images or text, rendering those claims patent-eligible. Appellant’s Br. 40-41. For instance, CET notes that dependent claim 44 of the ‘416 patent additionally requires: “defining a set of symbols which designate fields of information required by an application program; and detecting the presence of a particular one of said defined set of symbols on a hard copy document and extracting a field of information required by an application program based on said detecting.” Id. This limitation merely describes generic optical character recognition technology, which CET conceded was a routine function of scanning technology at the time the claims were filed. Oral Arg. at 3:35-3:55, 16:12-16:17, available at http://oralarguments. cafc.uscourts.gov/default.aspx?fl=2013-1588.mp3. Indeed, all of the additional limitations in the claims cited in CET’s appeal brief recite well-known, routine, and conventional functions of scanners and computers. Thus, while these claims may have a narrower scope than the representative claims, no claim contains an “inventive concept” that transforms the corresponding claim into a patent-eligible application of the otherwise ineligible abstract idea.

Click here for a list of US court approved software patent examples

Trade secrets get strong support in the US

Dennis Crouch reports that the Defend Trade Secrets Act has passed the US senate.

This act provides stronger protection in the US of commercial secrets.

Keeping elements of software secret can be a successful strategy for software that is difficult to reverse engineer, for example company internal processes.

It appears that software and algorithms are at the top of the politicians minds.

I am not sure how this will help innovation, however, because algorithms that are kept secret can not be communicated freely to others that could benefit. In this respect, patents are better because the details of the technology are in the publicly available patent specification.

Patentable software technologies in the US: Examples from the US courts

Colossus
Colossus Mk 2

Please click here for an update.

Below is a list of US court decisions which have found at least one software patent, or at least a patent for a technology that involves software, valid since the US Supreme Court decision Alice v. CLS Banks.

This list demonstrates what types of software technology is patent eligible in the US.

What is notable is that the number of patents being found valid by the US courts is increasing.

I will continually update this page.

CaseTechnologyVenue
DDR Holdings, LLC v. Hotels. Com, LP [Cited by 196]User, web interfaceUS C. of A.
CALIFORNIA INS. OF TECH. v. HUGHES COMMUNICATIONS INC. [Cited by 28]Error correctionUS Dist. C.
DDR HOLDINGS, LLC v. Hotels. com, LP [Cited by 3]User interface, web interfaceUS Dist. C.
INTELLECTUAL VENTURES I LLC v. Symantec Corp. [Cited by 3]Virus detectionUS Dist. C.
INTELLECTUAL VENTURES I v. MFRS. AND TRADERS TRUST [Cited by 1]User interfaceUS Dist. C.
CARD VERIFICATION SOLUTIONS, LLC v. CITIGROUP INC. [Cited by 0]FinancialUS Dist. C.
ContentGUARD HOLDINGS, INC. v. Amazon. com, Inc. [Cited by 0]Digital rights managementUS Dist. C.
ContourMED INC. v. AMERICAN BREAST CARE LP [Cited by 0]Design using computersUS Dist. C.
CORE WIRELESS LICENSING SARL v. LG Electronics, Inc. [Cited by 0]User interfaceUS Dist. C.
FAIRFIELD INDUSTRIES, INC. v. WIRELESS SEISMIC, INC. [Cited by 0]NetworksUS Dist. C.
HELIOS SOFTWARE, LLC v. SPECTORSOFT CORPORATION [Cited by 0]Networks, networkingUS Dist. C.
IMPROVED SEARCH LLC v. AOL INC. [Cited by 0]Internet searchingUS Dist. C.
INTELLECTUAL VENTURES I LLC v. RICOH AMERICAS CORPORATION [Cited by 0]Machine controlUS Dist. C.
INTERNATIONAL BUSINESS MACHINES CORPORATION v. PRICELINE GROUP INC. [Cited by 0]Networks, networkingUS Dist. C.
MESSAGING GATEWAY SOLUTIONS, LLC v. AMDOCS, INC. [Cited by 0]NetworksUS Dist. C.
MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC v. LEAP WIRELESS INTERNATIONAL, INC. [Cited by 0]Signal transmissionUS Dist. C.
NETWORK CONGESTION SOLUTIONS, LLC v. US CELLULAR CORPORATION [Cited by 0]NetworksUS Dist. C.
Paone v. Broadcom Corporation [Cited by 0]EncryptionUS Dist. C.
THE CHAMBERLAIN GROUP, INC. v. LINEAR LLC [Cited by 0]Machine control, interfaceUS Dist. C.
TRADING TECHNOLOGIES INTERNATIONAL, INC. v. CQG, INC. [Cited by 0]User interfaceUS Dist. C.
TREEHOUSE AVATAR LLC v. VALVE CORPORATION [Cited by 0]Advertising and or marketingUS Dist. C.
VERACODE, INC. v. APPTHORITY, INC. [Cited by 0]Software analysisUS Dist. C.

CARD VERIFICATION SOLUTIONS LLC V. CITIGROUP INC.

Links

Summary
Claims of US patent 5,826,245 in the name of Card Verification Services LLC were found to be patent eligible subject matter under 35 USC 101 because while they are drawn to the abstract idea of verifying transaction information, which is a fundamental economic practice long prevalent in our system of commerce, they are sufficiently limited by the plausible transformation that occurs when a randomly-generated tag is added to the piece of confidential information.
Comments
  •  Adding narrowing limitations to a claims may confer patentability.
  •  While the patent is device agnostic, as the claims are silent regarding machinery, to invalidate the patent on the ground that it does not expressly require the use of a computer in its claims would be overly formalistic.
Broad description of the invention
US Patent 5,826,245 (‘245) claims an invention for providing verification information for a transaction securely. Specifically, `245 discloses methods for passing confidential information over an unsecured network with reduced risk of it being captured by an untrusted party.
Characteristic Claim
1. A method for giving verification information for a transaction between an initiating party and a verification-seeking party, the verification information being given by a third, verifying party, based on confidential information in the possession of the initiating party, the method comprising:
on behalf of the initiating party, generating first and second tokens each of which represents some but not all of the confidential information,
sending the first token electronically via a nonsecure communication network from the initiating party to the verification-seeking party,
sending the second token electronically via a nonsecure communication network from the initiating party to the verifying party,
sending the first token electronically via a nonsecure communication network from the verification-seeking party to the verifying party,
verifying the confidential information at the verifying party based on the first and second tokens, and sending the verification information electronically via a nonsecure communication network from the verifying party to the verification-seeking party.
Dependent claims 4 through 6 require the addition of randomly generated, identical tags to the first and second pieces of the confidential information. The addition of the tags completes the creation of the tokens. The verifying party proceeds to authenticate the transaction by associating the first and second tokens with each other based on the identical tags added to each token.
The tags are four-digit pseudorandom strings of numbers and characters. The same tag is added to both pieces of the confidential information (e.g, a credit card number), the tag being attached to the end of one piece and to the beginning of the other piece. This attachment procedure allows the verifying party to recognize which piece comes first in reconstructing the confidential information. The `245 Patent states that use of a pseudorandom tag reduces the chance that someone monitoring the output of the device (e.g., a computer) for the purpose of attempting to steal the confidential information will be able to predict what tag will be used. Using the claimed process prevents the verification-seeking party from ever receiving the entirety of the confidential information, instead only receiving a tagged piece and an approval code. The confidential information is never available as a whole except at the initiating party’s computer and at the verifying party’s portal.
22. A method for use in relation to providing verification information for a transaction between an initiating party and a verification-seeking party, the verification information being given by a third, verifying party, based on confidential information in the possession of the initiating party, the method comprising:
on behalf of the initiating party, generating first and second tokens each of which represents some but not all of the confidential information,
on behalf of the initiating party, sending the first and second tokens electronically via a nonsecure communication network,
collecting the first and second tokens at the verifying party,
verifying the confidential information at the verifying party based on comparing the first and second tokens, and
sending the verification information electronically via a nonsecure communication network from the verifying party to the verification-seeking party.
Details
Citigroup contends that the `245 Patent is invalid because it is directed to patent-ineligible subject matter—specifically an abstract idea. Citigroup argues that the claims do not recite the application of an abstract idea in a concrete setting, but instead merely recite an idea that can be performed as a mental process. In particular, Citigroup contends that the claimed method is invalid because the method (1) can be performed by a human using pen and paper; (2) is not tied to a particular machine or apparatus; and (3) does not require or result in the transformation of one article into another. However, because the `245 Patent plausibly sets forth a process instituting the application of an abstract idea, Citigroup’s Motion to Dismiss is denied.
An inventor may obtain a patent for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Section 101 impliedly bars patents on” `[l]aws of nature, natural phenomena, and abstract ideas.'” Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013); see also Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012). The Supreme Court has explained that” `[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.'” Bilski v. Kappos, 561 U.S. 593, 130 S. Ct. 3218, 3230 (2010)(alteration in original) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (internal quotation marks omitted)); see also Mayo, 132 S. Ct. at 1301 (“`the basic tools of scientific and technological work'” are not patentable) (quoting Benson, 409 U.S. at 67).
A fine line must be walked in excluding patents that “pre-empt the use of an approach” that lead to “a monopoly over an abstract idea,” while also recognizing that “all inventions … embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” See Alice, 134 S. Ct. at 2354 (internal citations and quotation marks omitted). Accordingly, an invention is not rendered ineligible for patent merely because it involves an abstract concept. Id.; see also Diamond v. Diehr, 450 U.S. 175, 187 (1981). “[A]pplication[s]” of such concepts “`to a new and useful end,'” remain eligible for patent protection. Benson, 409 U.S. at 67. In applying the § 101 exception, courts must distinguish between patents that claim the “building blocks” of human ingenuity and those that integrate the building blocks into something more, thereby transforming them into a patent-eligible invention. See Mayo, 132 S. Ct. at 1294, 1303. The Supreme Court has set forth a two-step framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, courts must “determine whether the claims at issue are directed to one of those [patent-ineligible] concepts.” Alice, 134 S. Ct. at 2355. If so, courts proceed to consider the elements of the claims “to determine whether the additional elements `transform the nature of the claim’ into a patent-eligible application.” Id; Mayo, 132 S. Ct at 1297.The first step requires this Court to determine whether the claims at issue are directed toward a patent-ineligible concept, specifically, an abstract idea. They are. The claims recited in the `245 Patent are drawn to the abstract idea of verifying a transaction.
Patents that merely claim well-established, fundamental concepts fall within the category of abstract ideas. Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 Fed. A’ppx 988, 991 (Fed. Cir. 2014). Both the Supreme Court and the Federal Circuit have rejected attempts to patent basic financial and economic concepts. See Bilski, 130 S. Ct. at 3231 (holding that risk hedging is a “fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class”); Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1318, 1322-23 (Fed. Cir. 2012) (enabling tax-free property exchanges); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1277 (Fed. Cir. 2012); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330-34 (Fed. Cir. 2012)(applying for credit); CyberSource Corp. v. Retail Decisions, Inc.,654 F.3d 1366, 1367-68, 1376-77 (Fed. Cir. 2011) (method for detecting fraud in credit card transactions, including simple strategies that can be performed mentally, without the aid of a machine); In re Comiskey, 554 F.3d 967, 970-71, 981 (Fed. Cir. 2009)(conducting arbitration); In re Schrader, 22 F.3d 290, 291, 293-94 (Fed Cir. 1994)(bidding at an auction).
It follows from these cases, and CyberSourcein particular, that the claims within the `245 Patent are directed to an abstract idea. The very title of the `245 Patent is “Providing Verification Information for a Transaction.” Card Verification’s claims involve a method of passing along confidential information through a trusted, third-party intermediary to ensure both that a consumer can complete the transaction and that the necessary confidential information remains secure. On their face, the claims are drawn to the concept of verifying transaction information, and like the risk hedging in Bilski or verification of similar information in CyberSource, the concept of transaction verification is “a fundamental economic practice long prevalent in our system of commerce.” See Bilski, 130 S. Ct. at 3231. Even when looking at the patent in the light most favorable to Card Verification, it is directed toward a patent-ineligible abstract idea. Finding the abstract idea itself to be ineligible subject matter is not the end of the inquiry. See Mayo, 132 S. Ct. at 1297 (“[D]o the patent claims add enough … to allow the processes they describe to qualify as patent-eligible processes that applynatural laws?”). The second step in the § 101 analysis requires determining whether “additional substantive limitations … narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.” Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013) (internal citations and quotation marks omitted).
Citigroup argues that the `245 Patent is not patent eligible because it is merely a “mental process” that can be performed by humans. Citigroup additionally contends that the claims do not expressly require the use of a computer or any other specific machine because the patent says that “the technique could be used in a wide range of applications to protect confidential information.” (`245 Patent, 4:8-10). Citigroup states that the entirety of the process can be performed with pen and paper.
The `245 Patent is device agnostic, as the claims are silent regarding machinery. However, a review of the diagrams demonstrates incorporation of a computer, nonsecure network, and pseudorandom tag generating software. A plausible interpretation of the patent is that computing devices, software, keyboards, and credit card readers would be required to use the invention. To invalidate the `245 Patent on the ground that it does not expressly require the use of a computer in its claims would be to adopt an “overly formalistic approach[] to subject-matter eligibility.” See CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013).
Although simply implementing an abstract idea on a computer is not a patentable application of the idea, see Alice, 134 S. Ct. at 2357, a plausibly narrowing limitation is that of required pseudorandom tag generating software. The question whether a pseudorandom number and character generator can be devised that relies on an algorithm that can be performed by a human with nothing more than pen and paper poses a factual question inappropriate at the motion to dismiss stage. Without discovery on the issue, the Court is bound to make all reasonable inferences in favor of Card Verification. Here, an entirely plausible interpretation of the claims include a limitation requiring pseudorandom tag generating software that could not be done with pen and paper. Accordingly, Card Verification has plausibly alleged a method that does not comprise a “mental process.”
Citigroup additionally contends that the `245 Patent cannot survive the “machine or transformation” test. Although the Supreme Court rejected exclusive reliance on the test as unduly rigid for measuring compliance with § 101, the test is nevertheless a “useful and important clue” to patentability. See Bilski, 130 S. Ct. at 3227. Under the test, a process is patent-eligible if it is “tied to a particular machine or apparatus” or “transforms a particular article into a different state or thing.” SiRF Tech. v. Int’l Trade Comm’n, 601 F.3d 1319, 1332 (Fed. Cir. 2010)(internal quotations omitted). For “a machine to impose a meaningful limit … it must play a significant part in permitting the claimed method to be performed.” Id. at 1333. By contrast, “simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one.” Accenture, 728 F.3d at 1345.
Even under a liberal reading of the `245 Patent, the claims are not tied to a particular machine. The claims are entirely silent on the use of any physical apparatus, and although the diagrams display use of computers and software, the claims universally fail to specify how the computers are “specially programmed to perform the steps claimed in the patent” and therefore claims nothing more than a general purpose computer. Dealertrack, 674 F.3d at 1333.
But the claims may be sufficiently limited by the plausible transformation that occurs when the randomly-generated tag is added to the piece of confidential information. Typically, transforming data from one form to another does not qualify as the kind of transformation regarded as an important indicator of patent eligibility. See CyberSource, 654 F.3d at 1375 (“[T]he mere manipulation or reorganization of data … does not satisfy the transformation prong.”). But here, the claimed invention goes beyond manipulating, reorganizing, or collecting data by actually adding a new subset of numbers or characters to the data, thereby fundamentally altering the original confidential information. Contra id. at 1372 (process of constructing “map” of credit card numbers was no different than writing down a list of numbers and compiling information).

The use of a credit card number provides an illustrative example. Once the computer in the process splits up the credit card number into two separate pieces, randomly generated tags are added to the two pieces. The addition of the tag transforms what was once a credit card number into an identifier for use by the verifying party. The verifying party then matches up the two pieces of the information solely because the randomly-generated tag is affixed to both. At least one of the objects of the `245 Patent process is to transform data from one form into another “that will be recognized by the intended recipient but secure against decryption by unintended recipients.” See, e.g., TQP Dev., LLC v. Intuit, Inc., No. 2:12 CV 180 WCB, 2014 WL 651935, at *5 (E.D. Tex. Feb. 19, 2014). The claim requiring the addition of the tags plausibly does just that. The patent not only recites a process for verifying transaction information, it also involves a protocol for making the communication system itself more secure. (`245 Patent, 2:14-20). Therefore, even though the method does not result in the physical transformation of matter, see Diehr, 450 U.S. 175, it utilizes a system for modifying data that may have a concrete effect in the field of electronic communications. Accordingly, when viewing the patent in the light most favorable to Card Verification, it plausibly recites a patent-eligible application of the abstract idea of verifying a transaction. Citigroup’s Motion to Dismiss is therefore denied without prejudice. Citigroup is free to challenge the validity of the `245 Patent after discovery and claim construction are completed in this case.

THE CHAMBERLAIN GROUP INC V. LINEAR LLC

Summary

Claims of US patent 6,998,997 were found to be patent eligible subject matter under 35 USC 101 because they have physical and tangible components that are directed to more than the performance of an abstract idea.
Comments
  •       A method that can be performed by human thought alone is an abstract idea.
  •       Claims that effect an improvement in another technology or technical field may be patent eligible.

Broad description of the invention
The ‘997 patent claims methods and systems that monitor the status at a garage door or other movable barrier.  The remaining patents relate to connecting a movable barrier to an automation system or alarm.
Characteristic Claim
The representative claims are:
1. An apparatus comprising:
a movable barrier operator including a controller for controlling movement of a moveable barrier; and
a network interface electronically connected to the controller for connecting the controller to a network;
wherein the network interface responds to requests received on the network by sending a status of the movable barrier over the network and;
wherein the network interface receives a status change request from the network and the controller responds to the status change request by moving the barrier.
2. A method for communicating between a peripheral alarm system and a movable barrier operator controlling movement of a movable barrier, the method comprising:
providing a secure encrypted wireless communication link between the movable barrier operator and the peripheral alarm system;
effecting at least one encrypted wireless information communication from the movable barrier operator to the peripheral alarm system using the secure encrypted wireless communication link; and
performing a peripheral alarm system action in response to the encrypted wireless information communication from the movable barrier operator to the peripheral alarm system,
wherein the moveable barrier operator is configured to receive secure encrypted signals from a user input via a remotely located user interface and wherein effecting the at least one encrypted wireless information communication further comprises providing an instruction from the movable barrier operator to the peripheral alarm system for the peripheral alarm system to take an action, and wherein the method further comprises the peripheral alarm system action providing an encrypted wireless signal over the secure communication link to instruct the movable barrier operator to take an action.
Details
US Patent 6,998,997 is directed to opening and closing a movable barrier, e.g., a garage door, a gate, a door, or a window, by sending status signals and requests over a computer network, e.g., the Internet. (Id., col.1:44-67; col.2:35-38.) The claimed apparatus and methods of the `977 Patent respond to “a need for a monitoring system for a movable barrier which can solve the problems.” (Id.,col.1:38-39.) The specification details the problem— generally due to human error—solved by the `977 Patent when “a movable barrier may be left open when the user intended that it be closed.” (Id., col.1:24-25.) In particular, the specification discloses apparatus and methods for monitoring the status of a garage door or other movable barrier. (Id.,col.3:54-61.) The status can then be checked over the Internet using a standard “web enabled cellular telephone or PDA.” (Id.)
The system disclosed in the `977 Patent adds network connectivity to movable barrier operators which can then allow a variety of remote devices, such as smartphones, to obtain the status of the door and open or close the door remotely. (Id., col.4:54-58.)
The remaining four patents asserted against Nortek are related and entitled “Alarm System Interaction with a Movable Barrier Operator Method and Apparatus” (the “Alarm System Patents”).
The Alarm System Patents generally describe connecting a movable barrier, e.g., a garage door opener, to a home or business alarm or automation system to carry out a number of functions and are each assigned to Chamberlain. (See R.54-5, at 1; R.54-4, at 1; R.54-3, at 1; R.54-2, at 1.) Figure 2 of the Alarm System Patents depicts how the “movable barrier operator 23” connects to a special “secure communication link interface 22” via a “secure communication link 24,” and then to an “alarm system controller 21″The secure communication link of the Alarm System Patents can communicate signals from the garage door opener to the security system (e.g., indicating whether the door is open or closed), and from the security system to the garage door opener (e.g., to open or close the door). (Id., col.2:45-52, 3:38-41.) The secure communication link prevents outsiders from compromising the system, such as by surreptitiously opening a closed garage door, or by falsely reporting to a user that the door is closed when it is actually open. (See id., col.5:6-41.) The Alarm System Patents identify benefits of the claimed integration as including delaying the actuation time for the alarm system until after the garage door has closed (id., col.2:40-51), disarming the alarm system upon opening of the garage door (id., col.4:22-32), and detecting an unauthorized opening of the garage door and providing a signal to a peripheral alarm system (id., col.5:7-19).
Section 101 of the Patent Act defines the subject matter eligible for patent protection and provides:
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.
35 U.S.C § 101. For over 150 years, the Supreme Court has “held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. V. CLS Bank Int’l, ___ U.S. ___, 134 S.Ct. 2347, 2358, 189 L.Ed.2d 296 (2014) (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___, ___, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013)).
The concerns of pre-emption drive this exclusionary principle. See Alice, 134 S.Ct. at 2354 (citing Bilski v. Kappos, 561 U.S. 593, 612, 130 S.Ct. 3218, 3231, 177 L.Ed.2d 792 (2010)) (explaining how upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). The Supreme Court has repeatedly emphasized the concern for inhibiting “further discovery by improperly tying up the future use of these building blocks of human ingenuity.” Id.at 2354 (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. ___, 132 S.Ct. 1289, 1301, 182 L.Ed.2d 321 (2012) (citations omitted)). This preemptive concern is construed carefully, however, “lest it swallow all of patent law.” Id. (citing Mayo, 566 U.S. at ___, 132 S.Ct. at 1293-94). Patent claims that include an abstract concept are not deemed ineligible on that basis alone. See id.(citing Diamond v. Diehr, 450 U.S. 175, 187, 101 S.Ct. 1048, 1057, 67 L.Ed.2d 155 (1981)). Indeed, inventions that are “applications of such concepts to a new and useful end … remain eligible for patent protection.” Id.(citing Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed. 2d 273 (1972)). “Accordingly, in applying the § 101 exception, [courts] must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more, thereby transforming them into a patent-eligible invention.” Id.(quotations and citations omitted).
The Supreme Court has also recognized, however, that “too broad an interpretation of this exclusionary principle could eviscerate patent law.” Mayo, 132 S.Ct. at 1293; see also Alice, 134 S.Ct. at 2354. “For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id. Accordingly, the Supreme Court has explained that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Diehr, 450 U.S. at 187; see also Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948) (“If there is to be invention from [a discovery of a law of nature], it must come from the application of the law of nature to a new and useful end.”) (internal quotation marks omitted).
Keeping this balance in mind, the Supreme Court has established a two-step framework to guide lower courts in distinguishing between “those patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S.Ct. at 2355; Mayo, 132 S.Ct. at 1294, 1296-98. First, courts must “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1296-97). If the claims are directed to a patent-ineligible concept, then courts must conduct an analysis to search for the “inventive concept”—”i.e., an element or combination of elements that is `sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Id. (citing Mayo, 132 S.Ct. at 1294). In doing so, the court must ask “what else is there in the claims before [it]?” and must “consider the elements of each claim both individually and `as an ordered combination’ to determine whether the additional elements `transform the nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132 S.Ct. at 1298, 1297).
The claims of the `977 Patent are directed to apparatus and methods for opening and closing a door (or other movable barrier) after detecting and transmitting a message of the status of the door—as either open or closed. This claimed process for monitoring and controlling the operator of a movable barrier (i.e., facilitating the closing and opening of a door) constitutes a category of statutory subject matter under 35 U.S.C. § 101. See 35 U.S.C. § 101 (“Whoever invents … process, machine, manufacture, or composition of matter … may obtain a patent thereof …”). The question remains, however, whether this process is directed to an exception— a law of nature, natural phenomena, or abstract idea. See Alice, 134 S.Ct. at 2354 (explaining that while the scope of Section 101 is broad, there is an “important implicit exception [to it]: [l]aws of nature, natural phenomena, and abstract ideas are not patentable”). Defendant argues that the `977 Patent is an exception to patent-eligibility because it is directed to an abstract idea. As such, the Court focuses its analysis under Alice to first address whether the `977 Patent claims are directed to the patent-ineligible concept of an abstract idea and if so, whether those claims include an inventive concept. See id. at 2355 (citations omitted).
Defendant presents a very brief argument in support of its contention that the `977 Patent claims are directed to an abstract concept. Specifically, Defendant argues that the “movable barrier” claims—directed to opening and closing a door—are “as old as civilization.” R.54, at 10 (“Houses, gates, castles, and city walls have had `movable barriers’ for as long as humans have built dwellings.”) Plaintiff responds that the `977 Patent claims are directed to real-world, physical components: “a movable barrier operator (e.g., a garage door opener) and a network interface connected to a controller of the garage door opener to connect the garage door opener to a network.” (R.58, at 6.) Plaintiff further asserts that the `977 Patent claims are directed to categories of invention that are patent eligible. Namely, an invention that improves the operation of a computer system and an invention that uses a computer to operate something that would be on its own, patent-eligible. (R.58, at 7.)
An idea is abstract if it has “no particular concrete or tangible form.” Ultramercial, 772 F.2d at 715; see also In re TLI Commc’ns., 2015 WL 627858, at *8 (An idea is abstract if it “describes a scheme or concept not tied to a particular concrete application”). Although the “precise contours of the `abstract ideas’ category” were not delimited in Alice, the Supreme Court and the Federal Circuit have provided some important principles that are instructive here. Namely, the Supreme Court has instructed that mathematical algorithms and fundamental economic and conventional business practices are abstract ideas. See DDR Holdings, LLC v. Hotels.com LP, 773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Benson, 409 U.S. at 64, 93 S.Ct. 253 (finding mathematical algorithms patent ineligible); Bilski, 561 U.S. at 611 (finding the “fundamental economic practice” of hedging to be patent ineligible); Alice, 134 S.Ct. at 2356 (same for intermediated settlement)). In addition, claims that “simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer” are also abstract. DDR Holdings, 773 F.3d at 1256 (citing Alice, 134 S.Ct. at 2359); see also Ultramercial, 772 F.3d at 715-16 (finding claims using advertising as a currency as applied to the particular technological environment of the Internet merely recited an abstract idea); BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)(finding claims patent ineligible that did nothing more than implement the abstract idea of creating a “transaction performance guaranty” over a network); Accenture Global Servs., GMbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (finding claims patent ineligible that merely recited “generalized software components arranged to implement an abstract concept on a computer”); Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (finding claims patent ineligible that recited the use of a computer to implement the abstract idea of managing a stable-value protected life insurance policy). The claims at issue in the above cases “were recited too broadly and generically to be considered sufficiently specific and meaningful applications of their underlying abstract ideas … [and] in substance were directed to nothing more than the performance of an abstract business practice on the Internet or using a conventional computer.” DDR Holdings, 773 F.3d at 1256. These type of claims are not patent-eligible. Id.
The `977 Patent claims do not fall within the contours of an abstract idea or patent-ineligible computer implementation of an abstract idea as they have physical and tangible components that are directed to more than performance of an abstract idea. See id. The `977 Patent claims use a computer network interface to facilitate communication between the movable barrier (e.g., a garage door) and a controller or operator that controls movement of the garage door in response to a status check or a status change request received on the network interface. Figure 2 of the Alarm System Patents, for example, illustrates a movable barrier operator for automatically opening and closing a barrier and depicts a garage door, guide rails, a ceiling, a wall, a power drive unit, an integrated drive rail, an operator arm, a trolley, a push button control unit, electrical conductors, network interface, a remote control transmitter, and an auxiliary power drive. (See R.54-5, Fig. 2.) These components are connected, in part, by a network interface. (See id., Fig. 2; id., Fig. 3.) The `977 Patent claims mirror the concept depicted by the Figures—physical and tangible components directed to performance of more than an abstract idea. Claim 1 of the `977 Patent, for example, is directed to an apparatus that has two components: a network interface and a movable barrier operator—which includes a controller for controlling movement of a movable barrier. (SeeR.54-1, col.5:5-15.) Claim 22 is also directed to an apparatus that has a network interface, a barrier status monitor coupled to a movable barrier, and a controller coupled to both the network interface and the movable barrier. (See id., col.6:27-39.) Claim 12 is directed to a method for checking the status of a movable barrier that includes the use of a barrier movement operator for controlling the movement of the barrier in response to a status change request. (Id., col.5:38-col.6:4.) The steps of Claim 12 include receiving a movable barrier status request (from a network client), determining the status of the movable barrier, sending a status over the network in response to the network client’s movable barrier status request. (Id.)
The `977 Patent claims are not directed to apparatus and methods that are capable of being “performed mentally” nor are they the “equivalent of human mental work.” See CyberSource Corp. v. Retail Decisions, Inc.,654 F.3d 1366, 1373 (Fed. Cir. 2011) (explaining that a “method that can be performed by human thought alone” is an abstract idea). In short, the `977 Patent claims are directed to opening and closing a movable barrier (e.g., garage door) using a computer network for communication between the monitor or operator (including a controller), and movable barrier. Indeed, Defendant understands the claims in this same manner. See R.54, at 1 (“The `977 Patent … describes the idea of opening and closing a garage door or other “movable barrier” over the Internet”); id., at 10 (“the claims are all directed to opening and closing a door”); R.59, at 5 (“Claim 1 narrows the abstract idea of moving a movable barrier …”); see also id., at 2 (“The Claims Are Directed to the Abstract Idea of Opening and Closing a Door” … “The `977 claims, with the network and controller limitations stripped away, is [sic] directed to moving a barrier. Or, more colloquially, opening and closing a door”). Despite agreeing that the claim is directed to real-work, physical opening and closing of a door, Defendant argues this is an abstract idea. The Court disagrees. Opening and closing—moving— a movable barrier in response to signals as to that barrier’s status is not an abstract idea. Monitoring the status of an open or closed movable barrier when the inquiring party is not in visual proximity of the movable barrier is not an abstract idea. An idea is abstract if it has “no particular concrete or tangible form.” Ultramercial, 772 F.3d at 715. The `977 Patent claims have a clear concrete and tangible form in that they are directed to monitoring and opening and closing a movable barrier—a particular tangible form, e.g., a garage door, gate, door, or window.
The exemplary cases upon which Defendant relies (see R.54, at 8, n.3) do not change the fact that the claims at issue here, are directed to a fundamental concept that, unlike those recited in the exemplary cases, is more than an abstract idea—more than a mental process. In Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,758 F.3d 1344, 1351 (Fed. Cir. 2014), the Federal Circuit affirmed summary judgment of invalidity under Section 101 for claims directed to a process of taking two data sets and combining them into a single data set. In finding the claims invalid, the Federal Circuit explicitly noted that the claim “recited an ineligible abstract process of gathering and combining data that does not require input from a physical device.” Id., 758 F.3d at 1351. Furthermore, it noted “nothing in the claim language expressly ties the method to an image processor” as the claim “generically recites a process of combining two data sets into a data profile; it does not claim the processor’s use of that profile in the capturing, transforming, or rendering of a digital image.” Id. Unlike the Digitech Image patent claims, the `977 Patent claims are explicitly tied to “a movable barrier operator including a controller for controlling movement of a moveable barrier.” (R.54-1, col.5:5-15.) The detection of the movable barrier’s status and relaying of that status over the communication network to the various integrated physical components renders the claimed invention more than an abstract idea because it provides a “concrete and tangible form.” See Ultramercial, 772 F.3d at 715.
In addition, the claims “effect an improvement in [another] technology or technical field.” See Alice,134 S.Ct. at 2539. The `977 Patent claims are not directed to a method for organizing human activity or computerizing a long-standing commercial practice. Rather, the claims are directed to a garage door opener and a network—the use of a computer in conjunction with a machine in a system. Defendant does not argue that a garage door opener, alone, is patent ineligible. The `977 Patent’s invention improves the technology or technical field by integration of a garage door opener and a network. Absent the integration, the garage door opener was limited. With the integration, the garage door opener can do new things like provide for remote monitoring and control of the garage door opener. The integration of the computer with the garage door opener, therefore, improves the technical field of a generic garage door and garage door opener.
In the single paragraph of Defendant’s opening brief asserting the `977 Patent claims are directed to an abstract concept, Defendant states: “[o]pening and closing a `movable barrier,’ of course, is as old as civilization. Houses, gates, castles, and city walls have had `movable barriers’ for as long as humans have built dwellings.” (R.54, at 10.) Defendant’s argument, however, treads too closely to allegations of novelty and obviousness. While it may be true that ancient civilizations used—and even, opened and closed—movable barriers, that analysis is more appropriately addressed as a question of what constitutes the prior art and whether the `977 Patent claims hold any novelty over the teachings of the prior art. See Diehr, 450 U.S. at 190 (“The question therefore of whether a particular invention is novel is `wholly apart from whether the invention falls into a category of statutory subject matter'”); accord. Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-CV-4811, 2015 WL 774655, at *5 (N.D. Ill. Feb. 24, 2015) (“The inventive concept” step of the Alice analysis requires something different than pre-AIA §§ 102 and 103.”)
Accordingly, the `977 Patent claims—directed to opening and closing a movable barrier via communication over a computer network—encompass patent eligible subject matter and do not claim an abstract, mental process. The analysis under Alice consequently comes to an end.
Although the `977 Patent claims are not directed to an abstract idea, as explained above, even if the Court found the concept of opening and closing a door to be an abstract idea—as Defendant asserts—the `977 Patent claims would still clear the hurdle of § 101 patent eligibility because the claims include an inventive concept. The second step of the Alice framework requires the Court to determine whether a claim—found to be directed to an abstract idea— includes “additional elements” that transform the nature of the claim into something “significantly more” than the ineligible subject matter. See Alice, 134 S.Ct. at 2355. In doing so, the Court must ask “what else is there in the claims before [it]?” and must “consider the elements of each claim both individually and `as an ordered combination’ to determine whether the additional elements `transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1298, 1297). The simple addition of using the internet in conjunction with an abstract idea is not an “inventive concept.” Ultramercial, 772 F.3d at 716 (“the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under § 101”); Content Extraction, 776 F.3d at 1348 (“[t]here is no `inventive concept’ in [the plaintiff’s] use of a generic scanner and computer to perform well-understood, routine, and conventional activities commonly used in the industry”).
The `977 Patent claims include additional elements that—considered individually and in combination—transform the nature of the claim into something significantly more than the idea of opening and closing a movable barrier. Defendant asserts that the `977 Patent claims “simply recite[] checking the status of a door, and then opening or closing that door, over a generic computer network.” (R.54, at 10.) This interpretation, however, is an oversimplification of the `977 Patent claims. Claim 1, for example, is an apparatus that in addition to using a computer network, uses a movable barrier operator which is connected to the network and used for automatically opening and closing a barrier (R.54-1, col.2:38-40.) Figure 2 of the `977 Patent depicts one embodiment of a movable barrier operator, which includes the garage door, guide rails, the fixtures of the ceiling and wall of the garage, a power drive unit, an integrated drive rail, an operator arm, a trolley, a push button control unit, electrical conductors, a remote control transmitter and an auxiliary power drive. (See R.54-1, col.2:38-col.3:35.) The specification and the claims, therefore, describe a movable barrier operator that has multiple components—more than the simple addition of a generic computer to check the status of a door and then open or close that door. Defendant ignores the garage door opener and controller, as well as ignoring the requirement for the network interface of the `977 Patent claims to be one that must connect the garage door opener to the network—a particular type of interface. The additional elements included in the `977 Patent claims provide an inventive concept beyond opening and closing a door. See e.g., Fairfield Indus., Inc. v. Wireless Seismic, Inc., No. 4:14-CV-2972, 2014 WL 7342525, at *5-6 (S.D. Tex. Dec. 23, 2014) (finding claims to a method of data transmission that includes the additional elements of acquisition units to receive and transmit data from other acquisition units to contain an inventive concept and minimize the risk of preemption).
Although the machine-or-transformation test is not the sole test governing a Section 101 analyses, it can provide a “useful clue” in the second step of the Aliceframework. Bancorp Servs., 687 F.3d at 1278 (citing Bilski, 561 U.S. at 604) (“[W]hile not the sole test for deciding whether an invention is a patent-eligible `process,'” the machine-or-transformation test “remains a `useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101”). The Supreme Court has acknowledged that the machine-or-transformation test “may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form.” Bilski, 561 U.S. at 605. Here, application of the machine-or-transformation test confirms the outcome reached by the Court. A claimed process can be patent-eligible under § 101 if: “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc), aff’d, Bilski, 561 U.S. 593. In addition to being tied to a network and network interface, the claims of the `977 Patent are tied to a particular machine or apparatus. In particular, the claims are tied to a movable barrier operator that includes a controller that can control movement of the movable barrier (e.g., a garage door). This is not a claimed method or apparatus that can be performed or function without its machine components. Instead, the use of the movable barrier and controller are essential to the operation of the claimed methods. See SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (finding a claimed GPS receiver to satisfy the machine-or-transformation test because it “played a significant part in permitting the claimed method to be performed” and put a meaningful limit on the scope of the claim). This connection, therefore, satisfies the machine prong of the machine-or-transformation test. The `977 Patent claims also satisfy the transformation prong of the test, as the controller responds to the status change request by moving the barrier e.g., from an open to a closed position—thereby transforming the state of the movable barrier. See Bilski, 561 U.S. at 600 (citations omitted) (“A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing”).
Furthermore, this implementation of the idea of opening and closing a door—limited to the additional use of a movable barrier operator and a controller—does not preempt every technique for opening and closing a door. In particular, the claimed implementation is limited to a system that can identify the status of the door and change that status over a network. See R.54-1, col.5:5-15 (claim limitations reciting “responds to requests received on the network by sending a status of the movable barrier over the network” and “receives a status change request from the network[,] and the controller responds to the status change request by moving the barrier”). The `977 Patent claims directed to the opening and closing of a door tied to a movable barrier operator and controller are patent eligible.[3]
Defendant argues that the Alarm System Patents fail the Alice test because they are directed to an abstract idea—integrating an alarm system and a movable barrier operator to permit communication between the two. Defendant further argues that the Alarm System Patents fail to add an inventive concept. Plaintiff replies that the Alarm System Patents’ claims are not directed to an abstract idea because they are not methods of organizing human activity or carrying out long-recognized commercial activity. Instead, Plaintiff contends that the `977 Patent claims are directed to methods and processes that have physical, real-world methods that use a machine and system, and are not about commerce or mental thought. As with the `977 Patent, because Defendant argues whether the Alarm System Patents are directed to an abstract idea, the Court focuses its analysis under Aliceon first addressing whether the Alarm System Patents’ claims are directed to the patent-ineligible concept of an abstract idea and if so, whether those claims include an inventive concept. See Alice, 134 S.Ct. at 2355 (citations omitted).
The Alarm System Patents are directed to monitoring the status of a movable barrier in such a way that a change in that status can set off an alarm or adjust the timing of an alarm disarmament or actuation. The claims of the Alarm System Patents—like those of the ‘977 Patent—include a limitation to a movable barrier operator that is configured to control movement of a movable barrier. (See e.g., R.54-2 (claims 1, 4, 8, 12, 15, and 21); R.54-3 (claims 1, 8, 17); R.54-4 (claims 1, 6, 11, 12, 16, 19, 21); R.54-5 (claims 1, 3, 11); see also R.54-5 (claim 22) & R.54-5 (claim 11) (directed to a garage door opener controlling movement of a garage door).) The various embodiments of the Alarm System Patents include “a secure communication link between a movable barrier operator and a peripheral alarm system … [that effects] at least one communication between these elements using that secure communication link.” (R.54-2, col.2:37-42.)
The claimed alarm system connected to a movable barrier operator falls within the realm of patent-eligible subject matter. The claims are directed to movable barrier operators and security systems that, individually, are the sort of mechanical and electrical systems that are patent-eligible. Indeed, the claimed methods of the Alarm System Patents could not be performed without the use of a movable barrier operator that controls a movable barrier in communication with an alarm system. This vital connection to the mechanical and electrical elements of the claim renders the claims at issue patent-eligible. See SiRF Tech., 601 F.3d at 1333 (finding claims tied to a GPS receiver to be patent eligible because the methods could not be performed without a GPS receiver because it would be impossible to generate pseudoranges or to determine the position of the GPS receiver whose position is the precise goal of the claims). The claims integrate communication between two real-world systems that “can comprise an instruction to the movable barrier operator regarding subsequent movement of a movable barrier as is controlled, at least in part, by the movable barrier operator.” (R.54-4, col.3:28-31; see also id., col.4:50-55 (describing the communication between the alarm system controller and the movable barrier operate to provide “a specific instruction to illuminate one or more lights, to move the movable barrier to a particular position, to maintain a present position of the movable barrier, and so forth”.) The claims require input from the physical devices of the movable barrier, the movable barrier operator and the alarm system controller, and the language of the claims expressly ties the methods and systems to at least one of these components. See Digitech Image Techs., 758 F.3d at 1351 (finding claims patent ineligible because they recited an “abstract process of gathering and combining data that does not require input from a physical device”).
Furthermore, the Alarm System Patents’ claims improve the operation of each of the basic components—the garage door opener and the security system. In particular, the movable barrier operator, e.g., the garage door opener, can access the functionality of the alarm security system without illicit interference. Similarly, the security system’s capabilities are expanded to include monitoring and controlling the garage door opener. The improvement of providing communication between these basic components—individually, patent-eligible—also uses a computer with methods or systems that would otherwise be patent eligible absent the computers. See Alice, 134 S.Ct. at 2359-60.
The Alarm System Patents’ claimed alarm system is more than an abstract idea as the patents disclose the monitoring of process variables and the means of setting off an alarm or adjusting an alarm system. Specifically, the Alarm System Patents disclose the means for setting an alarm and adjusting the alarm system to delay actuation time and disarmament of the alarm system upon opening of the garage door. (See e.g., R.54-2, col.2:43-64.) These additional variables in the disclosure of the Alarm System Patents anchor the claimed subject matter to a particular tangible and concrete form, rendering it patent-eligible. See Ultramercial, 772 F.3d at 715. The Supreme Court’s reasoning in Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978), is instructive here. In Parker, the Supreme Court found the claims patent-ineligible because they sought to protect a formula for computation of a number, an updated “alarm limit” calculated if certain variables were known, but did not provide any additional explanation as to how the variables were to be determined. See Diamond, 450 U.S. at 186-87 (citing Parker, 437 U.S. at 586) (finding claims patent ineligible, in part, because they failed to explain how to determine variables needed to calculate an updated alarm limit and did not purport “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system”)). The Alarm System Patents, unlike the alarm limit calculations in Parker, contain tangible components of the movable barrier operator and alarm system. In addition, the specification discloses use of the network to monitor and communicate regarding variables linked to the alarm system, e.g., open or closed status of the garage door.
Accordingly, the Alarm System Patents—directed to integrating an alarm system and a movable barrier to include communication between the two—do not claim an abstract idea and are patent-eligible subject matter. The analysis under Alice, therefore, ends.
Although the `977 Patent claims are not directed to an abstract idea, as explained above, even if the Court found the concept of integrating an alarm system and a movable barrier operator to permit communication between the two to be abstract, the Alarm System Patents’ claims would still clear the hurdle of § 101 patent eligibility because the claims include an inventive concept.
As noted above, the second step of the Alice framework requires the Court to determine whether a claim—found to be directed to an abstract idea—includes “additional elements” that transform the nature of the claim into something “significantly more” than the ineligible subject matter. See Alice, 134 S.Ct. at 2355. In doing so, the Court must ask “what else is there in the claims before [it]?” and must “consider the elements of each claim both individually and `as an ordered combination’ to determine whether the additional elements `transform the nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132 S.Ct. at 1298, 1297). The simple addition of using the internet in conjunction with an abstract idea is not an “inventive concept.” Ultramercial, 772 F.3d at 716 (“the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under § 101”); see also Content Extraction, 776 F.3d at 1348.
The Alarm System Patents’ claims include additional elements that—considered individually and in combination—transform the nature of the claims into something significantly more than mere communication. Defendant’s characterization of the claims as directed to mere communication ignores the claims’ specific ties to mechanical and electrical devices—a movable barrier operator and an alarm system controller. This connection is more than simply communication, as the claims rely on particular input and commands to operate—for example, the claims address particular commands that are to be relayed between the garage door opener (e.g., a “movable barrier movement command”), and the action of physically moving the garage door (“performing a movable barrier operator action”) in response to receiving a particular signal from the alarm system. These and other additional commands and inputs of the claimed alarm systems and methods transform any abstract concept of communication between the two components into something significantly more than communication, rendering it patent-eligible subject matter. See Alice, 134 S.Ct. at 2355 (explaining the inventive concept as transforming the nature of the claim into something “significantly more” than the ineligible subject matter).
In addition, inclusion of the movable barrier operator and the alarm system satisfies the machine-or-transformation test, further confirming the patent-eligible nature of the claims. A claimed process can be patent-eligible under § 101 if: “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc), aff’d, Bilski, 561 U.S. 593. The claims of the Alarm System Patents are tied to particular machines or apparatus—a movable barrier operator that includes a controller that controls movement of the movable barrier (e.g., a garage door), and an alarm system controller. As with the `977 Patent claims, these are not claimed methods or apparatus that can be performed or function without their machine components. See SiRF Tech., 601 F.3d at 1333. Indeed, the claimed mechanical and electrical parts (movable barrier operator, movable barrier, and alarm system) and their ability to detect and respond to the status of the movable barrier (e.g., by respectively, closing or opening) are central to the invention. This connection to a combination of devices satisfies the machine prong of the machine-or-transformation test and renders the subject matter patent-eligible. See id. at 1332 (defining a “machine” as “a concrete thing, consisting of parts, or of certain devices and combination of devices … to perform some function and produce a certain effect or result”); see also In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009).
Furthermore, the integration of an alarm system and a movable barrier operator to permit communication between the two does not preempt every technique for the use of an alarm system in connection with opening and closing a door. In particular, the claimed implementation is limited to a system that can identify the status of the door and respond to or change that status over a network. See e.g., R.54-5, col.5:59-col.6:7 (claim limitations of “performing a peripheral alarm system action in response to … communication from the movable barrier operator” and “the peripheral alarm system action … instruct[s] the movable barrier operator to take an action”). The Alarm System Patents’ claims directed to communication and response between an alarm system and a movable barrier operator are patent eligible.[4]