Software Patentability
v.2.0.1.6
A Review of 2016 Federal Circuit Opinions
January 19, 2017
In a Nutshell
• Winners: Pure software solutions to technical
problems
– Enfish, LLC v. Microsoft Corp.
– BASCOM Global Internet Servs. v. AT&T
Mobility LLC
– McRO, Inc. v. Bandai Namco Games Am. Inc.
– Amdocs (Isr.) Ltd. v. Openet Telecom, Inc. (an
outlier?)
• Losers: Everybody that lost in 2015
– Claims reciting RESULTS – the “WHAT”
– Claims not reciting DETAILS – the “HOW”
Mortg. Grader, Inc. v. First Choice Loan Servs
• Abstract Idea: “anonymous loan shopping”
• The steps “could all be performed by humans
without a computer”
• Only adding generic computer components.
– Does not improve the functioning of the
computer itself
– No improvement in any other technology or
technical field.
– Does not solve a problem unique to tech.
– Not adequately tied to “a particular machine or
apparatus”
• NOT patent eligible
Enfish, LLC v. Microsoft Corp.
• Not all technology advances are “defined by
physical features”
• Pure Software: “Self Referential data table”:
– Eliminates rigidly defined records with fixed fields
– Configures memory as a logical table with logical
rows and columns defining logical cells
– Cells store information about columns
– Columns can be added by adding rows
• Directed to a specific improvement to the way
computers operate
– Not an abstract formula or mathematical principal
– Not conventional steps performed on computer
• Improvement on the way computer stores and
retrieves data in memory
TLI Communs. LLC v. AV Auto., L.L.C.
• Abstract Idea: Classifying and storing digital
images in an organized manner
• The steps “could all be performed by humans
without a computer”
• Using generic conventional computer tech
– Does not improve the functioning of the
computer itself
– No improvement in any other technology or
technical field
– Does not solve a problem unique to networks
• NOT patent eligible
BASCOM Global Internet Servs. v. AT&T Mobility LLC
• Abstract Idea: Filtering content on the internet
• “Something More”
– Not just an abstract idea using generic tech
– Claims do not preempt all ways of filtering
content on the Internet
– DC erred: Considered only components
separately, not the combination
– The inventive concept is a filtering tool at a
specific location, remote from the end-users, with
customizable filtering features specific to each
end user
• Tech solution: Provides advantages of local
filtering at a remote ISP.
Shortridge v. Found. Constr. Payroll Serv.
• Things NOT to do: Put “computer
implemented business method” in your
Abstract
• Abstract idea: cataloging labor data
• Using generic conventional computer tech
– Does not improve the functioning of the
computer itself
– Not solving a uniquely technical problem
– Only performing a business practice using
conventional tech
• NOT patent eligible
LendingTree, LLC v. Zillow, Inc.
• Abstract idea: a loan-application
clearinghouse, i.e. coordinating loans
• Using generic conventional computer tech to
address a very old business problem
– Nothing more than facilitating the claimed loanapplication process using generic technology
– Does not improve the functioning of the
computer itself
– Not solving a uniquely technical problem
– Only performing a business practice using
conventional tech
• NOT patent eligible
Elec. Power Group, LLC v. Alstom S.A
• CAFC: Falls into a familiar class of claims
"directed to" a patent-ineligible concept
• Abstract idea: Power grid monitoring
– Nothing but selecting, collecting, analyzing, and
displaying certain results
– Nothing but an ordinary mental process
– “result-focused, functional character of claim
language has been a frequent feature of claims held
ineligible” -- especially when “using generic
computer and network technology to carry out
economic transactions.
• Theme: CAFC says claim the “how” (details) not
the “what” (results)
• NOT patent eligible
In re Chorna
• An "organized securities exchange, commodities
exchange, alternative trading system, and 'over
the counter' system."
• Abstract idea: Same as Alice Corp
– "intermediated settlement, i.e., the use of a third
party to mitigate settlement risk [also known as a
clearing house].”
• No something more here
– No improvement to computer tech
– Using generic computer to issue automated
instructions
– Claims are directed at financial instruments that are
valued using an allocation formula and are traded
and cleared through conventional processes
• NOT patent eligible
TDE Petroleum Data Solutions, Inc. v. AKM Enter.
• Abstract Idea: Like Electric Power - selecting,
collecting, analyzing but without the displaying
• Involves monitoring state of an oil well using
known tech
• Nothing more claimed here
– “the specification arguably provides specific
embodiments for the step of ‘automatically selecting
one of the states as the state of the well operation’”
– The claim “recites none of those details.”
– “the claims of the '812 patent recite the what of the
invention, but none of the how that is necessary to
turn the abstract idea into a patent-eligible
application.”
• NOT patent eligible
McRO, Inc. v. Bandai Namco Games Am. Inc.
• Abstract Idea
– DC: automated rules-based use of morph targets
and delta sets for lip-synchronized three-dimensional
animation
– CAFC: DC “avoid oversimplifying the claims” – fails
“to account for the specific requirements”
• Patent is “focused on a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type
– an animator's process was driven by subjective
determinations rather than specific, limited
mathematical rules
– uses a combined order of specific rules that renders
information into a specific format that is then used
and applied to create desired results: a sequence of
synchronized, animated characters
McRO, Inc. Cont.
• Patent is not
– Routine or conventional: No evidence animators
used these rules in the past, with or without
computers
– Simply "organizing [existing] information into a new
form“
– Carrying out a fundamental economic practice
– Tangible. . . But it doesn’t have to be
• “By incorporating the specific features of the
rules as claim limitations, claim 1 is limited to a
specific process for automatically animating
characters using particular information and
techniques”
• No preemption problem
Affinity Labs of Tex., LLC v. Amazon.com, Inc.
• Abstract Idea: delivering user-selected media
content to portable devices
• Nothing more here
– Conventional / generic tech
– “the claims do no more than describe a desired
function or outcome, without providing any
limiting detail that confines the claim to a
particular solution to an identified problem”
– “features set forth are described generically
rather than with specificity necessary to show
how those components provide a concrete
solution to the problem addressed by the
patent”
• NOT patent eligible
Affinity Labs of Tex. v. DIRECTV, LLC
• Abstract Idea: providing out-of-region access to
regional broadcast content
• No “something more”
– Only recites the general concept of out-of-region
delivery of broadcast content through the use of
conventional devices
– “Result-focused, functional claims” only limited to
cellular telephone with graphical user interface
• Patent is not
– directed to the solution of a technological problem
– directed to an improvement in computer or network
functionality
• NOT patent eligible
Intellectual Ventures I LLC v. Symantec Corp.
• Abstract Idea: filtering files/e-mail (virus/spam
protection)
• No “something more”
– No improvement to the functioning of the
computer
– Uses generic computers to perform generic
computer functions.
– Recites no improvement to conventional virus
screening software
• NOT patent eligible
FairWarning IP, LLC v. Iatric Sys.
• Abstract Idea: analyzing records of human
activity to detect suspicious behavior
• No “something more”
– No improvement to the functioning of the
computer
– Argument that this is technological advance
relating to accessing and combining disparate
information sources won’t fly because “its
claims do not recite any such improvement.”
– Claims directed to the broad concept of
monitoring audit log data.
• NOT patent eligible
Synopsys, Inc. v. Mentor Graphics Corp.
• Abstract Idea: translating a functional
description of a logic circuit into a hardware
component description of the logic circuit
• No “something more”
– Mental process
– The claims do not require a computer. . . So you
can’t characterize this as an improvement to a
computer
– No technical advance in the claims
• NOT patent eligible
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.
• Four patents: filtering, aggregating, and
reporting network usage information
• Previous appeal, CAFC approved and
expanded on the DC’s claim construction of
certain key terms
• This appeal CAFC says
– Claims involve an unconventional tech solution
(enhancing data in a distributed fashion)
– to a tech problem (massive record flows which
previously required massive databases)
– specific to computer networks
Amdocs cont.
• Dissent:
– Never really said whether this is directed to an
abstract idea or said what it is
– Relying on prior claim construction for concepts
not in the claim
– Relying on the specification to “import innovative
limitations into the claims”
“Inquiry is about whether the claims are directed to a
patent-eligible invention, not whether the specification
is so directed.”
– Eligibility determination rests on construction of
terms that is not in all the claims
Tranxition, Inc. v. Lenovo (United States) Inc
• Abstract Idea: migration, or transitioning, of
settings between two computers
• No “something more”
– No improvement to the functioning of the
computer
– Stating an abstract idea while only adding the
words “apply it” with a computer
– Routine conventional activities
• NOT patent eligible
Apple, Inc. v. Ameranth, Inc.
• Abstract Idea: generating [restaurant] menus
• No “something more”
– Ameranth argued some of this was “difficult”, and
this “difficulty” means it can’t be abstract
– “The difficulty of the programming details for this
functionality is immaterial because these
details are not recited in the actual claims.”
– “The degree of difficulty in implementing an
abstract idea in this circumstance does not itself
render an abstract idea patentable.”
• NOT patent eligible
Practice Tips for Software
• Define the technical problem, claim the
solution
• Functional claiming is not dead: Claim more
“how”, less “what”
• New life for patents on pure software. Absent
controlling a machine:
– Can it be presented as a software solution to a
technical problem?
– Does it make the computer do less work, fewer
steps, faster/fewer calculations?
– But you have to claim it.
Practice Tips Cont.
• Patents solving business problems still face a
tough road through USPTO and CAFC
• Do not include the words “computer
implemented business method” in your
application
• If you want to argue this is an improvement to
a computer, don’t forget to recite the computer