ANCORA TECHNOLOGIES, INC., v. HTC AMERICA, INC., HTC CORPORATION, FEDERAL CIRCUIT 2018 (SOFTWARE PATENTS))
Ancora Technologies, Inc.’s U.S. Patent 6,411,941 is entitled “Method of Restricting Software Operation Within a License Limitation.” The patent describes and claims methods of limiting a computer’s running of software not authorized for that computer to run.
Ancora brought this action against HTC America and HTC Corporation alleging infringement of the patent. HTC moved to dismiss on the ground that the patent’s claims are invalid because their subject matter is ineligible for patenting under 35 U.S.C § 101. The district court granted HTC’s motion to dismiss, concluding that the claims are directed to, and ultimately claim no more than, an abstract idea.
Claim 1 is representative and recites:
1. A method of restricting software operation within a license for use with a computer including
an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:
selecting a program residing in the volatile memory,
using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,
verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS, and
acting on the program according to the verification.
The Federal Circuit cited some cases in which software was found to be patentable. They noted that in Enfish, they held that the patent claims were not directed to an abstract idea because the claimed self-referential tables improved the way that computers operated and handled data. The claimed self-referential tables allowed the more efficient launching and adaptation of databases.
In Visual Memory LLC v. NVIDIA Corp., the Federal Circuit drew a similar conclusion about claims focused on a specific improvement in computer memory. The district court had determined that the claims were directed to the abstract concept of categorical data storage. The Federal Circuit determined that the district court had erred because the patent was specifically “directed to an improved computer memory system, not to the abstract idea of categorical data storage,” and therefore was not directed to an abstract idea. The claims were specific and limited to certain types of data to be stored.
In Finjan, the Federal Circuit held that claims to a “behavior-based virus scan” were a specific improvement in computer functionality and hence not directed to an abstract idea. The claimed technique of scanning enabled “more flexible and nuanced virus filtering” and detection of potentially dangerous code. The claims thus were directed to “a non-abstract improvement in computer functionality” having the benefit of achieving greater computer security.
In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., the Federal Circuit held that claims to a method for making websites easier to navigate on a small-screen device were not directed to an abstract idea.
In Data Engine Technologies LLC v. Google LLC, the Federal Circuit held that claims to “a specific method for navigating through three-dimensional electronic spreadsheets” were “not directed to an abstract idea.” The method provided “a specific solution to then-existing technological problems in computers and prior art electronic spreadsheets.” The navigation difficulties of prior-art spreadsheets were addressed “in a particular way—by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three dimensional worksheet environment.” The Federal Circuit distinguished other cases in which we had held claims to be “simply directed to displaying a graphical user interface or collecting, manipulating, or organizing information”; the claims in Data Engine, they concluded, recite “a specific structure (i.e., notebook tabs) within a particular spread-sheet display that performs a specific function (i.e., navigating within a three-dimensional spreadsheet).”
In accordance with those precedents, the Federal Circuit concluded that claim 1 of the patent is not directed to an abstract idea. Improving security—here, against a computer’s unauthorized use of a program—can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem, as was the case in Finjan.
The claimed method here specifically identifies how that functionality improvement is effectuated in an assertedly unexpected way: a structure containing a license record is stored in a particular, modifiable, non-volatile portion of the computer’s BIOS, and the structure in that memory location is used for verification by interacting with the distinct computer memory that contains the program to be verified. In this way, the claim addresses a technological problem with computers: vulnerability of license-authorization software to hacking. In short, claim 1 of the ’941 patent is directed to a solution to a computer- functionality problem: an improvement in computer functionality that has “the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.” It therefore passes muster under Alice step one , as it is not directed to patent-ineligible subject matter.