IN RE CERTAIN POLYCRYSTALLINE DIAMOND COMPACTS AND ARTICLES CONTAINING SAME, INTERNATIONAL TRADE COMMISSION 2022 (SUBJECT MATTER ELIGIBILITY)

The ITC took 35 U.S.C. § 101 to its logical extreme in this case, finding that diamond drill bits with certain physical measures are not patent-eligible.

The U.S. International Trade Commission conducts unfair import investigations that, most often, involve claims regarding intellectual property rights.  US Synthetic Corporation filed an ITC complaint alleging violations based upon the importation into the United States of certain polycrystalline diamond compacts and articles infringing U.S. Patent Nos. 10,507,565, 10,508,502, and 8,616,306; and U.S. Patent Nos. 9,932,274 and 9,315,881.  An Administrative Law Judge found at least one accused product infringes all asserted claims of the Asserted Patents, but that those claims are patent ineligible under 35 U.S.C. § 101 and/or invalid under 35 U.S.C. § 102.

The technology in the patents relates to polycrystalline diamond compacts (“PDCs”), which are compacts made of a polycrystalline diamond (“PCD”) and a substrate. PDCs can be shaped as cylindrical parts.

In one disclosed embodiment, the PDC includes “a superabrasive diamond layer commonly referred to as a diamond table” or “PCD table,” a working surface of the PCD table, and a substrate. The substrate is often made from a cemented hard metal composite, like cobalt-cemented tungsten carbide.  At least a portion of the PCD table includes a plurality of diamond grains defining a plurality of interstitial regions.  The plurality of interstitial regions may be occupied by a metal-solvent catalyst, such as iron, nickel, cobalt, or alloys of any of the foregoing metals.  The plurality of diamond grains may exhibit an average grain size of about 50 μm or less, such as about 30 μm or less or about 20 μm or less.

Conventional PDCs were fabricated by placing the substrate into a cartridge with a volume of diamond particles next to the substrate. This cartridge may be loaded into a press that creates high pressure and high-temperature (“HPHT”) conditions.  The substrate and diamond particles are processed under the HPHT conditions in the presence of a catalyst material (e.g., from the substrate) that causes the diamond particles to bond to one another, creating a PCD table that is bonded to the substrate.

The inventors’ believed that the disclosed embodiments of PCDs sintered at a pressure of “at least about 7.5 GPa” differ from conventional HPHT products because they may promote a high-degree of diamond-to-diamond bonding.

PDCs can be used in drilling tools (e.g., cutting elements, gage trimmers, etc.), machining equipment, bearing apparatuses, wire-drawing machinery, and in other mechanical apparatuses. PDCs have found particular utility in cutters in rotary drill bits. A PDC with higher diamond-to-diamond bonding allows wear parts, such as drill bits, to last longer and perform better in high-abrasion applications, such as earth-boring.

Independent claims 1 of the ’565 patent is representative and reads as follows:

1. A polycrystalline diamond compact, comprising:

  • a polycrystalline diamond table, at least an unleached portion of the polycrystalline diamond table including:
    • a plurality of diamond grains directly bonded together via diamond-to-diamond bonding to define
      interstitial regions, the plurality of diamond grains exhibiting an average grain size of about 50 μm or
      less;
    • a catalyst occupying at least a portion of the interstitial regions;
    • wherein the unleached portion of the polycrystalline diamond table exhibits a coercivity of about 115 Oe or more;
    • wherein the unleached portion of the polycrystalline diamond table exhibits an average electrical conductivity of less than about 1200 S/m; and
    • wherein the unleached portion of the polycrystalline diamond table exhibits a Gratio of at least about
      4.0×10      6; and
  • a substrate bonded to the polycrystalline diamond table.

If you have read any of the other posts in Malhotra Law Firm’s History of Software Patents, you will be well aware that the Supreme Court has set forth a two-step framework for analyzing patent eligibility in Alice Corp. Pty. Ltd. v. CLS Bank Int’l,  First, in Alice Step 1, the Federal Circuit is to determine whether the claims at issue are directed to patent-ineligible concepts such as laws of nature, natural phenomena, and abstract ideas. If so, in Alice Step 2, the Federal Circuit is to examine the elements of each claim, considered both individually and as an ordered combination, for an “inventive concept” sufficient to transform the nature of the claim into a patent eligible application.

The ITC stated that it is clear from the language of the claims that the claims involve an abstract idea—namely, the abstract idea of a PDC that achieves the claimed performance measures (G-Ratio and thermal stability) and has certain measurable side effects (specific magnetic saturation, coercivity, and specific permeability), which, as discussed below, the specifications posit are derived from enhanced diamond-to-diamond bonding in the PCDs.  Gratio and thermal stability are performance measurements (specifically of a PDC’s wear resistance and thermal properties), which the specifications posit may be derived from
stronger diamond-to-diamond bonding.

As for the electrical and magnetic properties of a PCD, the ITC stated that there is no dispute that the presence of cobalt or other metal-solvent catalyst in the PCD is measurable.  However, electrical and magnetic properties are not design choices or manufacturing variables, but are instead indirect measures of the effectiveness of other design choices and manufacturing variables, such as sintering pressure, temperature, metal content, and grain size, none of which,
besides grain size, are recited in the claims. 

There was a dissenting view that the fact that the claimed characteristics of PDCs may be measured makes the claims less abstract for purposes of Alice. However, according to the majority, the Federal Circuit has explained that the patent eligibility inquiry requires that the claim identify how a functional result is achieved by limiting the claim scope to structures specified at some level of concreteness, in the case of a product claim, or to concrete action, in the case of a method claim.”

Alice rejections are thought to only be an issue for software and biotech inventions.  Patent practitioners who practice outside these areas may not seriously consider that Alice issues could become a problem.  They would be well advised to study the logic behind cases like this.  That is true even though one would be forgiven for believing that diamond drill bits or other compositions of matter are too abstract.  Alice rejections are based on an exception to the rule of 35 USC 101:  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.  However, the exception can swallow the rule if interpreted broadly enough.  The problem with characterizing something as “Abstract” in Alice step 1 is that it inherently requires summarizing a claim or ignoring details in a claim.  Anything can be characterized as abstract if enough limitations in a claim are ignored.  If accused of patent infringement, Alice challenges to validity should always be considered.  This is particularly true with broad claims that recite a desired result without much detail of how to achieve the result.  If you need help protecting your software or coming up with a strategy to defend against a claim of infringement, contact Malhotra Law Firm, PLLC.

YU V. APPLE INC., FEDERAL CIRCUIT 2021 (SOFTWARE PATENTS)

Two image sensors, two lenses, analog-to-digital converting circuitry, an image memory, and a digital image processor were not enough hardware. The claims were still found to be too abstract here.

There has been a lot of uncertainty in the field of Software Patents since the Supreme Court’s decision in Alice v. CLS.  The Supreme Court struck down a software patent covering a financial method involving hedging.  Roughly speaking, the Supreme Court invalidated a software patent in which conventional steps were computerized as being “not statutory;” i.e., not meeting the requirements of patent statute 35 U.S.C. 101.  The Federal Circuit and other courts have struggled to interpret this decision and apply it to software patents and business method patents.

In this decision, that uncertainty has been extended dramatically to an invention that involves A Lot of hardware, not just software.

Yu and Zhang sued Apple and Samsung alleging infringement of their U.S. Patent No. 6,611,289 for Digital Cameras Using Multiple Sensors with Multiple Lenses.  The patent relates to a digital camera having multiple analog image sensors with lenses mounted on the image sensors.  Analog-to-digital circuitry digitizes images from each camera and the images are stored in memory. An image processor creates a resultant digital image using images from the two lenses.

Claim 1 is representative and recites:

1. An improved digital camera comprising:

  • a first and a second image sensor closely positioned with respect to a common plane, said second image
    sensor     sensitive to a full region of visible color spectrum;
  • two lenses, each being mounted in front of one of said two image sensors;
  • said first image sensor producing a first image and said second image sensor producing a second image;
  • an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;
  • an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital
    image     and said second digital image; and
  • a digital image processor, coupled to said image memory and receiving said first digital image and
    said second     digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.

That sounds like a lot of hardware, doesn’t it?  Lenses, sensors, converters, an image processor.  How can it be considered to be too abstract?

Defendants filed a Rule 12(b)(6) motion to dismiss, which the district court granted after concluding that each asserted claim was patent ineligible under 35 U.S.C. § 101. The district court held that the asserted claims were directed to “the abstract idea of taking two pictures and using those pictures to enhance each other in some way.”

In analyzing whether claims are patent eligible under 35 U.S.C. § 101, the Federal Circuit employed the two-step Mayo/Alice framework.  First, they determine whether a patent claim is directed to an unpatentable law of nature, natural phenomenon, or abstract idea. If so, they then determine whether the claim nonetheless includes an “inventive concept” sufficient to “‘transform the nature of the claim’ into a patent–eligible application.”

In step 1, the Federal Circuit agreed with the district court that claim 1 is directed to the abstract idea of taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way.

The problem, according to the Federal Circuit, is that only conventional camera components are recited in the claim–two image sensors, two lenses, an analog-to-digital converting circuitry, an image memory, and a digital image processor.  It was undisputed that these components were well known and conventional.  According to the Federal Circuit, what was claimed is simply a generic environment in which to carry out the abstract idea.

Turning to step two, the Federal Circuit concluded that claim 1 does not include an inventive concept sufficient to transform the
claimed abstract idea into a patent-eligible invention. Because claim 1 is recited at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea, claim 1 fails at step two.

Yu argued that the digital camera architecture was unconventional because the asserted claims were allowed  over multiple prior art references.  Unfortunately, according to the Federal Circuit, even if claim 1 recites novel subject matter, that fact is insufficient by itself to confer eligibility.

Judge Newman dissented and stated that observation of the claims makes clear that that they are for a specific digital camera.  According to Judge Newman, claim 1 is for a digital camera having a designated structure and mechanism that perform specified functions; claim 1 is not for the general idea of enhancing camera images.  The camera of the ’289 patent may or may not ultimately satisfy all the substantive requirements of patentability, for this is an active field of technology. However, that does not convert a mechanical/electronic device into an abstract idea.

Judge Newman noted how much instability is being caused by these Alice cases, and how this case further expands this instability: “In the current state of Section 101 jurisprudence, inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce. Although today’s Section 101 uncertainties have arisen primarily in the biological and computer-implemented technologies, all fields are affected. The case before us enlarges this instability in all fields, for the court holds that the question of whether the components of a new device are well-known and conventional affects Section 101 eligibility, without reaching the patentability criteria of novelty and nonobviousness.

CUSTOMEDIA TECHNOLOGIES, LLC V DISH NETWORK, FEDERAL CIRCUIT 2020 (SOFTWARE PATENTS)

Customedia appealed a decision by the U.S. Patent and Trademark Office holding claims of U.S. Patent No. 8,719,090 and 9,053,494 ineligible under 35 U.S.C. § 101.

The patents both relate to a cable TV set-top box.  A cable distributor may provide customers with a cable set-top box with built-in storage sections that may be leased or sold to advertisers.

Claim 1 of U.S. Patent No. 8,719,090 is representative and recites:

1 A data delivery system for providing automatic delivery of multimedia data products from one or more multimedia data product providers, the system comprising:

  • a remote account transaction server for providing multimedia data products to an end user, at least one of the multimedia data products being specifically identified advertising data; and
  • a programmable local receiver unit for interfacing with the remote account transaction server to receive one or more of the multimedia data products and for processing and automatically recording the multimedia data products, said programmable lo-cal receiver unit including at least one individually controlled and reserved advertising data storage section adapted specifically for storing the specifically identified advertising data, said at least one advertising data storage section being monitored and controlled by said remote account transaction server and such that said specifically identified advertising data is delivered by said remote ac-count transaction server and stored in said at least one individually controlled and reserved advertising data storage section.

The Federal Circuit said that they must follow the  Supreme Court’s two-step framework for determining patent-eligibility under § 101 according to Alice Corp. Pty. Ltd. v. CLS Bank Int’l.

At Alice step one, the Federal Circuit must determine whether the claims are directed to an abstract idea.  in Alice, the Supreme Court made clear that the invocation of a computer does not necessarily transform an abstract idea into a patent-eligible invention. There, the Supreme Court held ineligible claims directed to a method of exchanging financial obligations using a computer system as a third-party intermediary. The Court explained that the claims were merely implemented “using some un-pecified, generic computer” and did not “purport to improve the functioning of the computer itself.

Customedia argued that its claims are patent-eligible because they provide for improvements to the functioning of computer systems.  The Federal Circuit disagreed.

By dedicating a section of the computer’s memory to advertising data, the claimed invention ensures memory is available for at least some advertising data. This does not, however, improve the functionality of the computer itself, according to the Federal Circuit.

Even if the court accepted Customedia’s assertions, the claimed invention merely improves the abstract concept of delivering targeted advertising using a computer only as a tool. This is not what the Supreme Court meant by improving the functioning of the computer itself, according to the Federal Circuit.

ChargePOINT, INC. v. SemaCONNECT, INC., FEDERAL CIRCUIT 2019 (SOFTWARE PATENTS)

This is a software patent decision in which the court ignored a substantial amount of hardware in the patent claim and found that the claim was directed to an abstract idea and therefore invalid.  In the Alice Supreme Court decision, the main issue was whether the patentee took a well known financial method and merely automated it on a computer.  In most post-Alice decisions, the computer was largely ignored in determining whether the claim was directed to an abstract idea and therefore unpatentable under 35 U.S.C. 101, unless there was an improvement in operation of the computer.

The ChargePOINT case relates to U.S. Patent No. 8,138,715; 8,432,131; 8,450,967; and 7,956,570 for charging stations for electric vehicles. The battery in an electric vehicle is recharged by connecting the vehicle to an electrical outlet.  At the time the patent application was filed, this process typically required hours and was often done overnight or while the electric vehicle was parked for a significant amount of time.

Businesses such as restaurants, apartments, and shopping centers have installed electric vehicle charging stations for the convenience of their customers. A shopping center may prefer to offer free vehicle charging to its customers to encourage customers to continue shopping.

Utility companies have different concerns in mind. Generally, the supply of electricity available from a power grid may vary, and in some cases the grid may lack sufficient electricity to meet demand. In addition to pulling electricity from a local electricity grid, electric vehicles may also supply electricity to the grid.

ChargePoint contends that its inventors created improved charging stations that address the various needs inherent in electric vehicle charging. This was accomplished by creating networked charging stations. According to ChargePoint, this network connectivity allows the stations to be managed from a central location, allows drivers to locate charging stations in advance, and allows all users to interact intelligently with the electricity grid.

Claim 1 of the ‘715 patent is representative and recites:

1. An apparatus, comprising:

  • a control device to turn electric supply on and off to enable and disable charge transfer for electric vehicles;
  • a transceiver to communicate requests for charge transfer with a remote server and receive communications from the remote server via a data control unit that is connected to the remote server through a wide area network; and
  • a  controller, coupled with the control device and the transceiver, to cause the control device to turn the electric supply on based on communication from the remote server.

The Federal Circuit noted that it is clear from the language of claim 1 that the claim involves an abstract idea—namely, the abstract idea of communicating requests to a remote server and receiving communications from that server, i.e., communication over a network. But at step one, “it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is `directed to‘, citing Thales Visionix.  In trying to discern what the claim is directed to, the Federal Circuit considered the problem being solved. The problem identified by the patentee, as stated in the specification, was the lack of a communication network that would allow drivers, businesses, and utility companies to interact efficiently with the charging stations.

The Federal Circuit stated that, looking at the problem identified in the patent, as well as the way the patent describes the invention, the specification suggests that the invention of the patent is nothing more than the abstract idea of communication over a network for interacting with a device, applied to the context of electric vehicle charging stations.  The Federal Circuit then agreed with SemaConnect that, based on the claim language, claim 1 would preempt the use of any networked charging stations.   The Federal Circuit stated that the inventors here had the good idea to add networking capabilities to existing charging stations to facilitate various business interactions. But that is where they stopped, and that is all they patented. The Federal Circuit therefore held that claim 1 is “directed to” an abstract idea.

I have a degree in electrical engineering and that sounds like a lot of hardware to me, in addition to just a computer or microprocessor.  35 U.S.C. 101 states that: 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.

This sure sounds like a machine.  The judicial exception that prevents abstract ideas from being patented relates to the concern that we don’t want to have patents covering mental steps or laws of nature or natural phenomenon.   This claim covers none of these things.

The main sin of the patentee is that their claim was arguably too broad.  But if that was the case, the claim should also be obvious and that is where the court should have focused its analysis.  Since it was a “good idea,” maybe it wasn’t so obvious.

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.

2018 Unfavorable Software Patent Decisions -Alice Year in Review (Software Patents)

Though we had a couple of positive decisions for software patents in 2018, we also had many negative decisions.  The pendulum has not yet swung firmly into pro-software patent territory.  Software patents were found to be non-statutory in the following 2018 Federal Circuit decisions:

Move v. Real Estate Alliance
The following is a representative claim of a software patent that was found to be abstract without covering more than the use of a computer for a conventional business purpose:

1. A method using a computer for locating available real estate properties comprising the
steps of:
a) creating a database of the available real estate properties;
b) displaying a map of a desired geographic area;
c) selecting a first area having boundaries within the geographic area;
d) zooming in on the first area of the displayed map to about the boundaries of the first area to display a higher level of detail than the displayed map;
e) displaying the zoomed first area;
f) selecting a second area having boundaries within the zoomed first area;
g) displaying the second area and a plurality of points within the second area, each point representing the appropriate geographic location of an available real estate property; and
h) identifying available real estate properties within the database which are located within the
second area.
The Federal Circuit stated that while they do not suggest that every claim involving the collection, organization, manipulation, or display of data is necessarily directed to an abstract idea, this claim is not meaningfully distinct from claims they have previously held were directed to abstract ideas, such as in Electric Power Group, LLC v. Alstom S.A.  Further, there were similarities to other claims that “simply use computers to serve a conventional business purpose.” such as in Affinity Labs of Tex., LLC v. DIRECTV, LLC.

 

The following is a representative claim of a software patent for identifying invalid clicks:

1. A method for identifying invalid click(s) by a system including at least one web page on a server side computing device, the at least web page providing a plurality of links associated with a plurality of other web pages associated with a plurality of merchants, the method comprising the steps of:

  • generating a first code on the server side computing device, the first code identifying at least one device on a client side;
  • sending said first code to said at least one device over a communication network;
  • obtaining from the device on the client side, a second code when said at least one user performs a first click on at least one of said links associated with at least one of said other web pages at a first time;
  • obtaining from the device on the client side, a third code when said at least one user performs a second click on said at least one link associated with said at least one other web page at a second time; and
  • determining, by the server side computing device, whether said second click is invalid by examining a difference between said first time and said second time.

The Federal Circuit held that the asserted claims are directed to the abstract idea of collecting, transmitting, analyzing, and storing data to detect fraudulent and/or invalid clicks based on the time between two requests by the same device or client, and found that this was analogous to claims they found patent-ineligible in  Electric Power Group., LLC v. Alstom S.A.

Automated Tracking Solutions v. The Coca-Cola Company
The following is a representative claim:

1. A system for locating, identifying and/or tracking of an object, the system comprising:
     a first transponder associated with the object;
     a reader that is configured to receive first transponder data via a radio frequency
(RF) signal from the first transponder;
     an antenna in communication with the reader and having a first coverage area;
     a processor coupled to the reader, wherein the processor is configured to receive the first transponder data from the reader and to generate detection information based on the received first transponder data, the detection information comprising first sighting and last sighting of the first transponder in the first coverage area; and
     a storage device that is configured to store the detection information.

The Federal Circuit stated that the representative claims are quite broad, reciting uses of RFID system components recognized in the specification to be routine and conventional.  The claims do not use these conventional RFID components in a non-conventional combination or arrangement.  The Federal Circuit did not see any error in the district court’s ultimate conclusion that the asserted claims are directed to patent-ineligible subject matter under 35 U.S.C. §101.

The Federal Circuit stated the claims were “directed to selecting and sorting information by user interest or subject matter, a longstanding activity of libraries and other human enterprises.”
They stated that the claims at issue here are directed to an abstract idea.  They have held that “tailoring of content based on information about the user—such as where the user lives or what time of day the user views the content—is an abstract idea.”  Affinity Labs of Texas, LLC v. Amazon.com Inc.

The following is a representative claim:

A method for remote mirroring of digital data, said method comprising the steps of:
     copying the data from a primary network server to a nonvolatile data buffer in a data transfer unit which is digitally connected to the primary network server, the primary network server including an operating system which is capable of accessing a nonvolatile server store, the data copied to the data transfer unit being a substantially concurrent copy of data which is being stored by the operating system in the nonvolatile server store of the primary network server;
     copying the data from the data transfer unit to an input end of a communication link which has an output end physically separated from its input end;
     generating and sending a spoof packet to the operating system of the primary network server; and
     copying the data from the output end of the communication link to a nonvolatile server store on a remote network server.

The Federal Circuit stated that the district court correctly found that the claims were directed to the abstract idea of backing up data , and that the claim limitations lacked an inventive concept as they invoke conventional computer components that do not function in combination in an inventive manner.  They concluded that the district court did not err in finding the claims patent ineligible under 35 U.S.C. §101.

West View Research LLC v. AUDI AG
The Federal Circuit stated that the patents-in-suit generally disclose a system and subsystems that use computer hardware, software, and peripheral devices to collect, organize, and display information.

The claims do not go beyond receiving or collecting data queries, analyzing the data query, retrieving and processing the information constituting a response to the initial data query, and generating a visual or audio response to the initial data query.  The Federal Circuit, citing again to Electric Power Group., LLC v. Alstom S.A., stated that collecting information, analyzing it, and displaying certain results of the collection and analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible concept.”

Voter Verified v. Election Systems & Software
The following is a representative claim:

85. A method for voting providing for self-verification of a ballot comprising the steps of:
     (a) voting by a voter using a computer voting station programmed to present an election ballot, accept input of votes from the voter according to the election ballot, temporarily store the votes of the voter;
     (b) printing of the votes of the voter from the votes temporarily stored in the computer for the voting station;
     (c) comparison by the voter of the printed votes with the votes temporarily stored in the computer
for the voting station;
     (d) decision by the voter as to whether a printed ballot is acceptable or unacceptable; and
     (e) submission of an acceptable printed ballot for
tabulation.

The Federal Circuit noted that, first, the claims as a whole are drawn to the concept of voting, verifying the vote, and submitting the vote for tabulation. Humans have performed this fundamental activity that forms the basis of our democracy for hundreds of years. Second, there is no inventive concept in the claims sufficient to transform them into patent-eligible subject matter.  They concluded that the district court properly determined that the claims of the patent are invalid under §101.

In re Eberra
The following is a representative software patent claim:

1. A process for providing a television network comprising:
(a) opening at least one physical location for a production of a television program;
(b) requiring at least one customer to make a purchase of a product;

(c) allowing said customer to give a performance in said production of said television program, in exchange for making said purchase of said product;

whereby said purchase made by said customer results in said production of said television program
for said performance of said customer on said television network.
Starting at step one of the Mayo/Alice test, the Federal Circuit agreed with the U.S. Patent and Trademark Office Appeals Board’s conclusion that the claims at issue are directed to an abstract idea, namely “promoting the purchase of a product with the incentive being a spot in a television program, i.e. product promotion.”  Like the concept of risk hedging, which the Supreme Court found to be an abstract idea in Bilski v. Kappos, the concept of product promotion is a “fundamental economic practice long prevalent in our system of commerce.”
Turning to step two, the Federal Circuit stated that each specific step in the claims—opening a location (which requires nothing more than finding a location), requiring a purchase, and allowing a performance in a television program—is a routine television-production or advertising
activity performed in a conventional way, as described in the specification. Thus, there is no inventive concept, and the claims are not patentable subject matter under §101.

The following is a representative claim:

A phonetic symbol system comprising:

     a plurality of phonetic symbols, wherein each of said phonetic symbols is defined by one or more than one letter of English alphabet, the case or the style of said letter does not affect the sounds of said phonetic symbols, there are vowel phonetic symbols and consonant phonetic symbols of said phonetic symbols, each vowel is distinctively represented by one of said vowel phonetic symbols, and each consonant is distinctively represented by one of said consonant phonetic symbols.

The Federal Circuit stated that when, as here, claims of a patent application recite an abstract idea, the question becomes whether they contain “additional features” that embody an “inventive concept,” so as to nevertheless make them patent-eligible.  The Federal Circuit stated that these claims, however, contain no “additional features” of any kind embodying an inventive concept. The claims merely encompass strings of English letters representing sounds. In short, there is no inventive concept that rescues them from patent ineligibility.

The following is a representative software patent claim:
1.  A geospatial media recorder, comprising:
     converting means for converting longitude and latitude geographic degree, minutes, and seconds (DMS) coordinate alphanumeric representations or decimal equivalent geographic coordinate alphanumeric representations and altitude alphanumeric representations into individual discrete all-natural number geographic coordinate and measurement representations; and
     combining means for concatenating the individual discrete all-natural number geographic coordinate and measurement representations into a single discrete all-natural number geospatial coordinate measurement representation for identification of a geospatial positional location at, below, or above earth’s surface allowing user to geospatially reference entities or objects based on the identified geospatial positional location and point identification.

Starting at step 1, the Federal Circuit stated that they agreed with the district court’s conclusion that the claims at issue are directed to an abstract idea. Both claims are directed to, first, converting longitude and latitude coordinates into natural numbers—i.e. removing the decimal points and replacing any “+” signs with a “1” and any “–” signs with a 0—and second, concatenating the resulting natural numbers—i.e. joining the strings of resulting numbers together.  In sum, the claims apply a mathematical methodology to convert geospatial coordinates into a single string of natural numbers.  The Federal Circuit compared this to the concept of using a formula to convert binary-coded decimals into pure binary numerals, which the Supreme Court found to be an abstract idea in Gottschalk,
409 U.S. at 72.
Turning to step 2, the only additional features recited in claim 1 are the preamble providing for “[a] geospatial media recorder,” and the limitation of “allowing user to geospatially reference entities or objects based on the identified geospatial positional location and point identification….”  As the district noted, these additional features effectively do no “more than simply state the [abstract idea] while adding the words ‘apply it.’

Interval Licensing v. AOL
The following is a representative claim:

18.  A computer readable medium, for use by a content display system, encoded with one or more computer programs for enabling acquisition of a set of content data and display of an image or images generated from the set of content data on a display device during operation of an attention manager, comprising:
[1] acquisition instructions for enabling acquisition of a set of content data from a specified information source;
[2] user interface installation instructions for enabling provision of a user interface that allows a person to request the set of content data from the specified information source;
[3] content data scheduling instructions for providing temporal constraints on the display of the image or images generated from the set of content data;
[4] display instructions for enabling display of the image or images generated from the set of content
data;
[5] content data update instructions for enabling acquisition of an updated set of content data from an information
source that corresponds to a previously acquired set of content data;
[6] operating instructions for beginning, managing and terminating the display on the display device of an image
generated from a set of content data;
[7] content display system scheduling instructions for scheduling the display of the image or images on the display
device;
[8] installation instructions for installing the operating instructions and content display system scheduling
instructions on the content display system; and
[9] audit instructions for monitoring usage of the content display system to selectively display an image or
images generated from a set of content data.

Regarding step 1, the Federal Circuit noted, referring to Electric Power Group, that some software-based claimed inventions have failed to pass section 101 muster, because they did not recite any assertedly inventive technology for improving computers as tools and/or because the elements of the asserted invention were so result-based that they amounted to patenting the patent-ineligible concept itself.  In this case, Interval Licensing contended that the claimed “attention manager” provided a technological improvement to a computer system.  The Federal Circuit disagreed and said that the focus of the claims here is directed to “providing information to a person without interfering with the person’s primary activity,” i.e. , the result-centric construction of the claimed “attention manager.”  It is important to disclose and claim more than results of software methods.

Regarding step 2, the problem for Interval Licensing was that its claims, as construed, are so broad that they encompass the basic concept of displaying two sets of information, using any means to display them without overlap, in which the secondary data set is acquired and organized by generic, conventional steps.  Thus, unlike DDR Holdings, the claims here do not offer a particular solution to a problem that, in DDR Holdings, was unique to the Internet.  Further, unlike the claims in Amdocs, none of the claims recite anything even akin to a distributed architecture.

SAP America v. Investpic
The following is a representative claim:

1. A method for calculating, analyzing and displaying investment data comprising the steps of:

  • (a) selecting a sample space, wherein the sample space includes at least one investment data sample;
  • (b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process; and,
  • (c) generating a plot of the distribution function.

The Federal Circuit, referring to Electric Power Group, stated that the focus of the claims, as is plain from their terms, is on selecting certain  information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis. That is all abstract.  The Federal Circuit stated that, contrary to InvestPic’s contention, the claims here are critically different from those determined to be patent eligible in McRO, Inc. v. Bandai Namco Games America Inc. The claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions.”  (Malhotra Law Firm does not believe that the claims in McRO recited anything more physical, just that McRO used very complicated math as opposed to reciting a desired result).

Similarly, in Thales Visionix Inc. v. United States, the improvement was in a physical tracking system.  The use of mathematics to achieve an improvement no more changed the conclusion that improved physical things and actions
were the subject of the claimed advance than it did in Diamond v. Diehr. Here, in contrast, the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results.

The following is a representative claim:
1.  A method of indexing and retrieving data being posted by a plurality of users to a wide area network, comprising:
     providing the users with a mechanism for posting the data as parametized items;
     providing the users with listings of previously used parameters and previously used values for use in posting the data;
     providing the users with summary comparison usage information corresponding to the previously used
parameters and values for use in posting the data; and
     providing subsequent users with the listings of previously used parameters and values, and corresponding summary comparison usage information for use in searching the network for an item of interest.
The Federal Circuit agreed with the district court that the asserted claims are directed to the abstract idea of considering historical usage information while inputting data.  The focus of the claims is in guiding database users by presenting summary comparison information to users before they input data.  This is not a method “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of wide access databases and DDR Holding s, LLC v. Hotels.com is not applicable.  Further, claims are not saved from abstraction merely because they recite components more specific than a generic computer.  In addition, guiding users’ selection of classifications, parameters, and values through displays of summary comparison usage information, which allows users to quickly and efficiently access hundreds of thousands or even millions of records, and still find only those few records that are relevant, are not improvements to database functionality.

The following claim is representative:
57.  A system for distributing real-estate related information, comprising:
     one or more computers configured to:
     receive user-provided information and determine a geographic region based on received user-provided information;
     produce a plurality of automated valuation method (AVM) values using residential property information, the residential properties being within the geographic region, the AVM values reflecting current market estimates for the residential properties;
     provide display information to a remote terminal over a publically accessible network based on the user-provided information, the display information enabling the remote terminal to generate a map-like display for the geographic region, the map-like display containing at least:
     respective icons for each of a plurality of residential properties within the geographic region, the icons being spatially distributed relative to one another based on geographic information also residing in one or more computer-readable mediums; and
     an AVM value for at least one of the plurality of residential properties within the map-like display, wherein each AVM value is pre-process [sic] such that an AVM value for the at least one residential property pre-exists before a user query of the respective property is performed,
     and wherein the one or more computers update each of the AVM values without requiring a user query.

Beginning with Alice step one, the Federal Circuit easily concluded that claim 57 is directed to an abstract idea—specifically, a fundamental economic practice.  Claim 57 merely recites the familiar concept of property valuation. As the Supreme Court explained in Alice, claims involving “a fundamental economic practice long prevalent in our system of commerce,” such as the concepts of hedging and intermediated settlement, are patent-ineligible abstract ideas.

Turning to  Alice step two, the Federal Circuit concluded that claim 57 does not contain an inventive concept sufficient to “‘transform the nature of the claim’ into a patent-eligible application.”  The elements of claim 57 simply recite an abstract idea executed using computer technology, such as “one or more computers” and a “remote terminal” on a “publically accessible network.”  The applicants argued that an inventive concept arises from the ordered combination of steps in claim 57, but the Federal Circuit was not convinced.  Claim 57 recites the basic steps of receiving user input, producing property valuations, and providing display information. This is a classic case of implementing an abstract idea on a computer, which is not eligible under Alice.  Nor do the pre-processing limitations in the claim add anything more to make the claims eligible.  Rather, the pre-processing limitations are directed to using a computer to perform routine computer activity.  Nor was the Federal Circuit persuaded by Applicants’ Berkheimer argument that the Board failed to provide substantial evidence to support its rejection. Not every §101 determination contains genuine disputes regarding underlying facts material to the §101 inquiry.  Applicants did not point to any unresolved factual disputes that would warrant such consideration here.  In sum, the claims are directed to the abstract idea of property valuation and fail to recite any inventive concepts sufficient to transform that abstract idea into a patent-eligible invention.

I have summarized many of the negative software patent decisions of 2018 in a single post because I feel it is more important to focus on and learn from the positive decisions, to try to mold claims of a new patent application based on a similar analogous positive decision, to the extent possible.  Therefore, I have made separate posts out of positive decisions and lumped various negative decisions together.  It isn’t always possible to recite an inventive hardware improvement.  When there isn’t a hardware improvement, the best one can do is analogize the invention to one that was previously held to be patent-eligible and to mold the claims and application to be able to argue that it is analogous to the claims such a patent.  These decisions show that the pendulum has not yet started swinging more clearly into positive territory for software patents.  But we do have some good news and guidance in cases like Core Wireless, Berkheimer, and Ancora Techs v. HTC America.