SRI INTERNATIONAL, INC., Plaintiff,
 v. 
CISCO SYSTEMS, INC., Defendant.

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SRI INTERNATIONAL, INC., Plaintiff, v. CISCO SYSTEMS, INC., Defendant.

US 6,711,615

US 6,489,203

Summary

Claims of US patent ‘615 in the name of SRI International was found to be patent eligible subject matter under 35 USC 101 because the claims define an invention necessarily rooted in computer technology to overcome a problem specifically arising in the realm of computer networks.

Comments

  • That Cisco can simplify the invention enough to find a human counterpart (or argue that a human could somehow perform the steps of the method) does not suffice to make the concept abstract, as “[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 (quoting Mayo, 132 S.Ct. at 1293).

Broad description of the invention

The patents relate to the monitoring and surveillance of computer networks for intrusion detection. In particular, the patents teach a computer-automated method of hierarchical event monitoring and analysis within an enterprise network that allows for real-time detection of intruders. Upon detecting any suspicious activity, the network monitors generate reports of such activity. The claims of the ‘203 and ‘615 patents focus on methods and systems for deploying a hierarchy of network monitors that can generate and receive reports of suspicious network activity.Characteristic Claim

Independent claim 1 the ‘615 patent read as follows:

  1. A computer-automated method of hierarchical event monitoring and analysis within an enterprise network comprising:

deploying a plurality of network monitors in the enterprise network;

detecting, by the network monitors, suspicious network activity based on analysis of network traffic data selected from one or more of the following categories: {network packet data transfer commands, network packet data transfer errors, network packet data volume, network connection requests, network connection denials, error codes included in a network packet, network connection acknowledgements, and network packets indicative of well-known network-service protocols};

generating, by the monitors, reports of said suspicious activity; and

automatically receiving and integrating the reports of suspicious activity, by one or more hierarchical monitors.

Details

The ‘615 patent (titled “Network Surveillance”) is a continuation of the ‘203 patent (titled “Hierarchical Event Monitoring and Analysis”), and the patents share a common specification and priority date of November 9, 1998.[2] (D.I. 179 at 1) SRI has asserted infringement of claims 1-4, 14-16, and 18 of the ‘615 patent and claims 1-4, 12-15, and 17 of the ‘203 patent.[3] (Id. at 3)

Section 101 provides that patentable subject matter extends to four broad categories, including: “new and useful process[es], machine[s], manufacture, or composition[s] of matter.” 35 U.S.C. § 101; see also Bilski v. Kappas, 561 U.S. 593, 601 (2010) (“Bilski II”); Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980). A “process” is statutorily defined as a “process, art or method, and includes a new use of a known process, machine manufacture, composition of matter, or material.” 35 U.S.C. § 100(b). The Supreme Court has explained:

A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.

Diamond v. Diehr, 450 U.S. 175, 182-83 (1981) (internal quotations omitted).

The Supreme Court recognizes three “fundamental principle” exceptions to the Patent Act’s subject matter eligibility requirements: “laws of nature, physical phenomena, and abstract ideas.” Bilski II, 561 U.S. at 601. In this regard, the Court has held that “[t]he concepts covered by these exceptions are `part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none.'” Bilski II, 561 U.S. at 602 (quoting Funk Bros. Seed Co. v. Kato Inoculant Co., 333 U.S. 127, 130 (1948)). “[T]he concern that drives this exclusionary principle is one of pre-emption,” that is, “`that patent law not inhibit further discovery by improperly tying up the future use of’ these building blocks of human ingenuity.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, ___ U.S. ___, 134 S.Ct. 2347, 2354 (2014) (citing Bilski II, 561 U.S. at 611-12 and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. ___, 132 S.Ct. 1289, 1301 (2012)).

Although a fundamental principle cannot be patented, the Supreme Court has held that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection,” so long as that application would not preempt substantially all uses of the fundamental principle. Bilski II, 561 U.S. at 611 (quoting Diehr, 450 U.S. at 187) (internal quotations omitted); In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (“Bilski II”). The Court has described the 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, 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.”

Alice, 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1294, 1296-98).

“[T]o 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.'” Mayo, 132 S.Ct. at 1294 (citing Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972)) (emphasis omitted). It is insufficient to add steps which “consist of well-understood, routine, conventional activity,” if such steps, “when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” Mayo, 132 S. Ct. at 1298. “Purely `conventional or obvious’ `[pre]-solution activity’ is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.” Id. (citations omitted). Also, 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 post-solution activity.'” Bilski II, 561 U.S. at 610-11 (citation omitted). For instance, 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 featur[e]’ that provides any `practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.'” Id. (citations omitted).

Because computer software comprises a set of instructions, the first step of Alice is, for the most part, a given; i.e., computer-implemented patents generally involve abstract ideas. The more difficult part of the analysis is subsumed in the second step of the Alice analysis, that is, determining whether the claims “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet,” or whether the claims are directed to “a problem specifically arising in the realm of computer technology” and the claimed solution specifies how computer technology should be manipulated to overcome the problem. DOR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).

Since providing that explanation, the Federal Circuit has not preserved the validity of any other computer-implemented invention under§ 101. Indeed, in reviewing post-Alice cases such as DOR and Intellectual Ventures, the court is struck by the evolution of the § 101 jurisprudence, from the complete rejection of patentability for computer programs to the almost complete acceptance of such, to the current (apparent) requirements that the patent claims in suit (1) disclose a problem “necessarily rooted in computer technology,” and (2) claim a solution that (a) not only departs from the “routine and conventional” use of the technology, but (b) is sufficiently specific so as to negate the risk of pre-emption. See DOR, 773 F.3d at 1257; Intellectual Ventures, 792 F.3d at 1371. In other words, even though most of the patent claims now being challenged under § 101 would have survived such challenges if mounted at the time of issuance, these claims are now in jeopardy under the heightened specificity required by the Federal Circuit post-Alice. Moreover, it is less than clear how a § 101 inquiry that is focused through the lens of specificity can be harmonized with the roles given to other aspects of the patent law (such as enablement under § 112 and non-obviousness under § 103),especially in light of the Federal Circuit’s past characterization of § 101 eligibility as a “coarse” gauge of the suitability of broad subject matter categories for patent protection. Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010). Given the evolving state of the law, the § 101 analysis should be, and is, a difficult exercise.At their broadest, the various decisions of the Federal Circuit would likely ring the death-knell for patent protection of computer-implemented inventions, a result not clearly mandated (at least not yet). On the other hand, to recognize and articulate the requisite degree of specificity — either in the equipment used or the steps claimed — that transforms an abstract idea into patent-eligible subject matter is a challenging task. In trying to sort through the various iterations of the § 101 standard, the court looks to DOR as a benchmark; i.e., the claims (informed by the specification) must describe a problem and solution rooted in computer technology, and the solution must be (1) specific enough to preclude the risk of pre-emption, and (2) innovative enough to “override the routine and conventional” use of the computer. DOR, 773 F. 3d at 1258-59.

Applying the analytical framework of Alice, the court first “determine[s] whether the claims at issue are directed to one of those patent-ineligible concepts,” namely, laws of nature, natural phenomena, and abstract ideas. 134 S.Ct. at 2354-55. Cisco argues that the claims are directed to the abstract idea “of monitoring and analyzing data from multiple sources to detect broader patterns of suspicious activity,” which is “a fundamental building block of intelligence gathering and network security.” (D.I. 159 at 7) Cisco analogizes this idea to a number of spy and security gathering endeavors, including “networks [employed by] ancient Chinese military strategists and both sides during the Revolutionary War” and police departments using crime reports to detect “broader patterns of criminal activity.” (Id. at 7-8) More specifically, Cisco argues that humans can perform each of the steps of the method (detecting suspicious network activity, generating reports of said activity, and receiving and integrating the reports), concluding that it is a process that may be performed in the human mind or using a pen and paper, thus, unpatentable. (Id. at 10-11) SRI disagrees, pointing out that a human would need to use hardware and software in order to examine network traffic. (D.I. 179 at 10-12)

That Cisco can simplify the invention enough to find a human counterpart (or argue that a human could somehow perform the steps of the method) does not suffice to make the concept abstract, as “[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 (quoting Mayo, 132 S.Ct. at 1293). The patents address the vulnerability of computer networks’ “interoperability and sophisticated integration of technology” to attack. (1:37-40) The claims at bar are, therefore, more complex than “merely recit[ing] the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet,” and are better understood as being “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DOR, 773 F.3d at 1257.

Turning to step two of the Alice framework, Cisco argues that the claims do not provide an inventive concept, describing the method as follows: A first step reciting conventional pre-solution activity (configuring and installing software); a generic and abstract second step (analyzing data from certain categories); a non-inventive third and fourth step (generating and receiving reports at a centralized computer); and, a fifth step (combining reports to create new information). (D.I. 159 at 12-14) According to Cisco, the patents recite generic computers, i.e., the network monitors, which the parties have agreed are “software and/or hardware that can collect, analyze and/or respond to data.” (Id. at 16; D.I. 47 at 1) The patents explain that “[s]election of packets can be based on different criteria” (5:12-38) and the claims at bar identify “particular categories of network traffic data . . . well suited for analysis in determining whether network traffic was suspicious when used in a hierarchical system.” (D.I. 179 at 12) As to the hierarchical analysis, the patents explain that the “tiered collection and correlation of analysis results allows monitors 16a-16f to represent and profile global malicious or anomalous activity that is not visible locally.” (8:53-56) The claims as an ordered combination (in light of the specification) sufficiently delineate “how” the method is performed to “improve the functioning of the computer itself,” thereby providing an inventive concept. Alice, 134 S.Ct. at 2359. The same specificity suffices to negate the “risk [of] disproportionately tying up the use of the underlying ideas.” Alice, 134 S.Ct. at 2354; Mayo, 132 S.Ct. at 1294. Cisco’s motion for invalidity (D.I. 158) is denied.

Other “Alice” patents found valid by a US court.