Software Patentability v.2.0.1.6 A Review of 2016 Federal Circuit Opinions January 19, 2017

Winners: Pure software solutions to technical problems 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 loan-application 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

Abstract idea: Same as Alice Corp 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