Claims of US patent 5,987,610 in the name of Intellectual Ventures LLC were found to be patent eligible subject matter under 35 USC 101 because the asserted claims specifically recite a computer virus, which has a computer centric implications that can not be broadly “abstracted away”. The human mind cannot screen for computer viruses within a telephone network or elsewhere.
- Including significant technical detail in a specification supports a finding that an invention is not abstract.
- The invention described in the specification is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
- The coordination between a virus detecting computer, a sending computer and a receiving computer is necessarily rooted in computer technology.
Broad description of the invention
The patent is directed to “screen[ing] computer data for viruses within a telephone network before communicating the computer data to an end user.” (‘610 patent at 1:59-61) The patent recites “inhibiting communication of at least a portion of the computer data” being transmitted if the data contains a virus. (‘610 patent at 14:42-47)
A virus screening method comprising the steps of:
routing a call between a calling party and a called party of a telephone network;
receiving, within the telephone network, computer data from a first party selected from the group consisting of the calling party and the called party;
detecting, within the telephone network, a virus in the computer data; and
in response to detecting the virus, inhibiting communication of at least a portion of the computer data from the telephone network to a second party selected from the group consisting of the calling party and the called party.
Dependent claim 7 recites as follows:
The virus screening method of claim 1 further comprising the step of determining that virus screening is to be applied to the call based upon at least one of an identification code of the calling party and an identification code of the called party.
Under 35 U.S.C. § 101, “[w]hoever 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.” There are three exceptions to § 101’s broad patent-eligibility principles: “laws of nature, physical phenomena, and abstract ideas.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). Pertinent here is the third category, “abstract ideas,” which “embodies the longstanding rule that an idea of itself is not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (internal quotation marks omitted). “As early as Le Roy v. Tatham, 55 U.S. 156, 175 (1852), the Supreme Court 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.’ Since then, the unpatentable nature of abstract ideas has repeatedly been confirmed.” In re Comiskey, 554 F.3d 967, 977-78 (Fed. Cir. 2009).
In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), the Supreme Court set out 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.” Alice, 134 S. Ct. at 2355. First, courts must determine if the claims at issue are directed at a patent-ineligible concept. See id. If so, the next step is to look 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.
“Simply appending conventional steps, specified at a high level of generality, [is] not enough to supply an inventive concept.” Id. at 2357 (internal quotation marks omitted; emphasis in original). In Bilski v. Kappas, 130 S. Ct. 3218, 3231 (2010), for example, the Supreme Court held that the claims involved were drawn to the patent-ineligible abstract idea of “hedging, or protecting against risk,” which was a “fundamental economic practice.” Similarly, in Alice, 134 S. Ct. at 2356, the Supreme Court found that the claims were drawn to the patent-ineligible abstract idea of “intermediated settlement,” which was also a “fundamental economic practice.” In both cases, the Supreme Court found that the additional steps delineated in the claims did not embody an “inventive concept” sufficient to ensure that the patents amounted to more than patents upon the ineligible fundamental concepts themselves.
In determining, at the second step, if a patent embodies an inventive concept, courts may consider whether the process “is tied to a particular machine or apparatus” or “transforms a particular article into a different state or thing.” Bilski, 130 S. Ct. at 3225. “[T]o impart patent-eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine must impose meaningful limits on the claim’s scope.” CyberSource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (internal quotation marks omitted). To be “a meaningful limit on the scope of the claims,” the addition of a machine “must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly.” SiRF Tech., Inc. v. Int’l. Trade Comm’n, 601 F.3d 1319, 1332-33 (Fed. Cir. 2010). Hence, 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. “Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of additional feature that provides any practical assurance that the process is more than a drafting effort designed to monopolize the abstract idea itself.” Id.
“[T]he machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” Bilski, 130 S. Ct. at 3227. However, it is “not the sole test for deciding whether an invention is a patent-eligible `process.'” Id. “[I]n 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.” Alice, 134 S. Ct. at 2354 (internal citation and quotation marks omitted). The “concern that drives the exclusionary principle [i]s one of pre-emption.” Id. That is, where a patent would pre-empt use of basic tools of scientific and technological work, i.e., laws of nature, natural phenomena, and abstract ideas, the patent would “impede innovation more than it would tend to promote it, thereby thwarting the primary object of the patent laws.” Id. (internal quotation marks omitted).
Symantec and Trend Micro argue that the asserted claims are patent-ineligible under the analytical framework set forth in Mayo and Alice. (See D.I. 699 at 2; C.A. No. 12-1581 D.I. 176 at 2) Symantec contends that “[e]ach of IV’s asserted claims [in the Symantec case] covers generic computer implementation of abstract ideas” and “do[es] not provide an `inventive concept'” that would satisfy the Mayo test for subject-matter eligibility. (D.I. 699 at 2, 5) Trend Micro similarly argues that “[b]ecause the asserted claims of the patents-in-suit are directed to abstract ideas, and because the added computer-related limitations are merely generic and do not add inventive concepts beyond the abstract ideas themselves, none of the asserted claims of the three patents-in-suit are eligible for patent protection.” (C.A. No. 12-1581 D.I. 176 at 29)
IV responds that “[t]he Court should reject Symantec’s sweeping indictment of software patentability, especially when it comes to the Patents-in-Suit, which pass every test the Supreme Court and the Federal Circuit have articulated for patent eligibility.” (D.I. 722 at 1 (emphasis in original)) IV focuses on the Federal Circuit’s post-Alice opinion in DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014), which IV contends gives the most “relevant guidance.” (D.I. 722 at 6) Specifically, IV argues that “DDR Holdings shows that patent eligibility extends at least to (1) claims providing a solution `necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,’ (2) claims that specify interactions yielding results that `override the routine and conventional sequence’ of Internet or computer events, and (3) claims that resolve a `particular Internet-centric problem.'” (D.I. 722 at 6, 8) (citing DDR Holdings, 773 F.3d at 1258-59) IV further contends that Defendants’ analysis, if accepted, would improperly result in all software patents being patent-ineligible. (See id. at 25) Among other things, IV cites recent guidance from the U.S. Patent and Trademark Office (“PTO”) on patent eligibility and an amicus brief filed in the Federal Circuit by a software association to which Defendants belong, all of which (in IV’s view) further undermine the strength of Defendants’ position. (See id. at 1, 10-12)
With this general description of the parties’ positions, the Court will now address the specific challenges to the eligibility of each of the three patents-in-suit.
Asserted claim 7 of the ‘610 patent is a method claim that depends from claim 1.
Symantec and Trend Micro argue that the ‘610 patent is directed to “screening data” and “screening information.” (D.I. 699 at 25; C.A. No. 12-1581 D.I. 176 at 24) Symantec states that the “key idea of the ‘610 patent is the business concept of providing conventional virus screening as a subscription service to customers.” (D.I. 699 at 23) IV counters Defendants’ arguments by again alluding to DDR Holdings, stating that Symantec and Trend Micro “cannot legitimately dispute that computer viruses are `a problem specifically arising in the realm of computer networks’ and computers.” (C.A. No. 12-1581 D.I. 183 at 19) IV insists, “The human mind cannot screen for computer viruses within the telephone network or elsewhere.” (Id. at 20) (emphasis added)
The Court agrees with IV. The ‘610 patent is not directed to screening generic “data” or “information.” Instead, the asserted claim specifically recites a computer virus, which has computer-centric implications that cannot be abstracted away so broadly. Furthermore, the human mind cannot perform the steps described in the specification for implementing virus screening functionality in a telephone network. For these and other reasons, as explained below, the Court is unpersuaded by Defendants’ analysis.
The specification of the ‘610 patent describes how implementing claim 7 requires at least three computers configured in a specific manner, as depicted (for example) in the flowcharts (and accompanying text) shown as Figures 3, 4, and 5 (excerpted below). (‘610 patent at 5:12-9:22) invention.” (Id. at 5:12-13) Figure 3 shows that “computer data” is received from a “first party” (“calling” or “sending” party). The computer data is destined for a “second party” (“called,” “client,” or “receiving” party). It is inherent that this disclosure includes a computer for both the first and second parties. In block 102, the method of the patent determines whether or not virus screening should be applied to the computer data based on, for example, whether or not “the called party is a subscriber to a virus screening service.” (Id. at 5:20-21) At block 112, the method screens computer data for at least one virus. An implementation of block 112 is illustrated in Figure 4 (below).
Figure 4 is a “preferred embodiment of a method of screening the computer data” that performs some initial processing of the data (i.e., removing transmission-specific data from the computer data, decompressing, and decrypting the data). (Id. at 6:15-17, Fig. 4) The method in Figure 4 then “create[s] a model of a computer,” as indicated in block 206. (Id. at Fig. 4) “The model is provided by a virus screening computer other than the client computer.” (Id. at 7:66-67) This virus screening computer is a third computer; it could not be the sending computer (since virus detection takes place “within the telephone network” but the sending computer is not within the telephone network. (Id. at 3:14-16; see also D.I. 425 at 24-25 (construing “within the telephone network” to mean “in the voice or data network connecting the calling party and called
party, exclusive of the networks and gateway nodes of the called party and calling party”))
“An embodiment of a method of creating the model is described with reference to FIG. 5” (shown above). (Id. at 8:9-10) As shown in Figure 5, block 210 determines certain parameters of the receiving computer, including “operating system, a hardware type, registry information, configuration information, and information from initialization files,” in order to create an accurate model of the receiving computer in the virus screening computer’s memory. (Id. at 8:14-17) If the computer data includes “an executable program such as an installation program or a plug-in program for a Web browser, the executable program is installed” on the virus screening computer. (Id. at 8:5-7) During installation, “a step of intercepting read requests generated by the installation program is performed.” (Id. at 8:29-30) The virus screening computer analyzes the model computer in order to reply to these read requests appropriately. “The reply message is generated by gathering information from the model of the client computer and passing the information to the installation program.” (Id. at 8:35-38) Similarly, the virus screening computer intercepts write requests from the executable program and modifies the model computer according to the write request instructions. (Id. at 8:51-59)
The result of the steps described above is a model of the client computer stored in the virus screening computer’s memory. The model reflects the general state that the client computer would have been in had it executed the potentially virus-laden code. Virus screening techniques can then be applied to the model computer, as shown in block 220 in Figure 4, in order to determine whether the model computer has been infected.
Although the embodiment described in the specification with respect to Figures 3, 4, and 5 is not the only way to implement claim 7, it is necessary in practicing the claim to in some way imitate the receiving computer’s configuration in order to properly detect whether a harmful virus in an executable file may infect the receiving computer. The coordination between a virus detecting computer, a sending computer, and a receiving computer is something “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 1258-59.
Further, the specification confirms that the ‘610 patent is directed to solving the problem of individual computer users having periodically to update their virus detection software locally on their computers in order to ensure adequate protection from computer viruses. (See ‘610 patent at 1:10-23) The patent is also directed to problems of users having to be concerned about viruses getting downloaded onto their computers via the Internet. As the specification of the ‘610 patent describes:
Embodiments of the present invention advantageously screen computer data for viruses within a telephone network before communicating the computer data to an end user. As a result, end users can download computer data via the telephone network without concern of receiving various predetermined computer viruses. (Id. at 1:59-67)
The Federal Circuit in DDR Holdings, 773 F.3d at 1259, held that the “Internet-centric” claims at issue there were patent eligible. Claim 7 of the ‘610 patent is “Internet-centric.” In fact, the key idea of the patent is that virus detection can take place remotely between two entities in a telephone network. This is advantageous because it saves resources on the local caller and calling machines and more efficiently executes virus detection at a centralized location in the telephone network. Claims that “purport to improve the functioning of the computer itself’ or “effect an improvement in any other technology or technical field” may be patentable under § 101. Alice, 134 S. Ct. at 2359.
As with the other patents, Defendants provide hypotheticals showing why they believe the asserted claim of the ‘610 patent is patent-ineligible. Unlike with respect to the ‘050 and ‘142 patents, however, the analogies are not persuasive. Nonetheless, the Court reproduces them below:
|Limitations of ‘610 Patent Claim 1
[language from claim 7 inserted in
|Routine Steps Performed by a World War II Post Office|
|“routing a call between a calling party and a called party of a telephone network”||The Postal Service determines the best path for delivering a letter sent by Adam, a U.S. Army soldier stationed in Great Britain during 1944, to Beth, who lives in Wilmington.|
|“receiving, within the telephone network, computer data from a first party selected from the group consisting of the calling party and the called party”||The Postal Service receives a letter from Adam addressed to Beth.|
|“[determining that virus screening is to be applied to the call based upon at least one of an identification code of the calling party and an identification code of the called party]”||The Postal Service determines that because Adam’s letter is not “diplomatic mail,” the letter is to be screened to ensure that it does not disclose military secrets.|
|“detecting, within the telephone network, a virus in the computer data; and”||The postal inspector opens the letter and concludes that a reference to “a trip to Paris in June” must be censored.|
|“in response to detecting the virus, inhibiting communication of at least a portion of the computer data from the telephone network to a second party selected from the group consisting of the calling party and the called party.”||The post office redacts the reference and forwards the rest of the letter to Beth.|
|Limitations of ‘610 Patent Claim 1
[language from claim 7 inserted in
|Routine Steps Performed by Phone Answering Service|
|“routing a call between a calling party and a called party of a telephone network”||Bob is a subscriber to Acme Answering Service (“Acme”), which connects telephone calls through to Bob’s various phone lines or takes messages pursuant to his instructions.|
|“receiving, within the telephone network, computer data from a first party selected from the group consisting of the calling party
and the called party”
|Bob’s patient Mary places a call to Bob; Acme receives the call.|
|“[determining that virus screening is to be applied to the call based upon at least one of an identification code of the calling party and
an identification code of the called party]”
|Acme confirms that the called party is Bob prior to screening the call.|
|“detecting, within the telephone network, a virus in the computer data; and”||The operator on duty at Acme asks Mary if she has an emergency; she says no.|
|“in response to detecting the virus, inhibiting communication of at least a portion of the computer data from the telephone network to a second party selected from the group consisting of the calling party and the called party.”||Acme does not forward the call to Bob, but instead takes down Mary’s number and indicates that her call will be returned.|
Trend Micro further analogizes the asserted claims to the claims at issue in Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, 2015 WL 394273, *8 (N.D. Ill. Jan. 29, 2015). In Vehicle Intelligence, the claims were directed to “methods for screening equipment operators for impairment (e.g., intoxication, physical impairment, medical impairment, or emotional impairment) to prevent their operation of moving equipment” and were found to be directed to an abstract idea. (C.A. No. 12-1581 D.I. 176 at 27)
The Court finds all of Defendants’ hypotheticals unpersuasive. The Court did not construe the phrase “detecting … a virus in the computer data” from claim 7, as no party asked the Court to do so. (See D.I. 425) Nevertheless, it is evident from the specification that the steps for detecting a computer virus in a telephone network are not as straightforward as observing individuals for signs of intoxication, reading wartime correspondence, or asking someone if she is having an emergency. For example, the specification of the ‘610 patent describes, in one embodiment, “installing downloaded data using the virus-screening processor” such that “viruses can be detected in installed data (which may differ from the downloaded data).” (‘610 patent at 14: 18-21) This is, of course, merely one possible implementation of claim 7 and does not limit the plain and ordinary meaning of the claim language, but it is also the type of functionality 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. The concept of detecting a computer virus in installed data (and doing so in a telephone network) does not make sense outside of a computer context.
For the reasons stated above, and particularly in light of DDR Holdings, Defendants have failed to prove that claim 7 is directed to an abstract idea.
Mayo Step 2
It is not necessary for the Court to consider step two of the Mayo test, since the asserted claim of the ‘610 patent is not directed to an abstract idea. However, the Court notes that the specification of the ‘610 patent recites a specific machine configured in a specific way to implement claim 7, as discussed above with regard to Figure 3, 4, and 5 of the ‘610 patent and accompanying sections of the specification. Thus, the ‘610 patent satisfies the machine-or-transformation test, which is an important clue that the claim includes an inventive concept and is not directed to patent-ineligible subject matter.
IV states that “virus detection `within the telephone network’ would not be preempted if a call were not routed between the calling party and the called party or if computer data were not received within the telephone network, as required by the claim language.” (C.A. No. 12-1581 D.I. 183 at 27) IV continues: “[T]he ‘610 Patent captures only one form of virus detection, and its continued eligibility will not preclude the use of other virus detection techniques — even if they occur `within the telephone network.'” (Id.) The Court agrees with IV that the asserted claim of the ‘610 patent does not disproportionately preempt virus detection.
Additionally, claim 7 recites “inhibiting communication of at least a portion of the computer data,” which indicates that the claim covers situations where the virus detecting computer is excising virus-infected code. This is similar to the PTO’s patent eligible sample claim directed to excising malignant software code, which the PTO described as “inextricably tied to computer technology and distinct from the types of concepts found by the courts to be abstract.” (See D.I. 723-2 at 2) Excising virus-infected code is something that requires a machine that “play[ s] a significant part in permitting the claimed method to be performed, rather than function[ing] solely as an obvious mechanism for permitting a solution to be achieved more quickly.” SiRF Tech., 601 F.3d at 1333.
The Court concludes that Defendants have failed to prove by even a preponderance of the evidence that the asserted claim of the ‘610 patent is patent-ineligible under § 101. The Court will deny Defendants’ motions with respect to IV’s ‘610 patent.