June 29, 2022


Technology Forever

Drawing Computer software Patent Drafting Steering in 2021 from an Not likely Resource: the Federal Circuit

Honing in on a few computer software circumstances in which the Federal Circuit observed statements patent eligible in 2020 is illuminating for software program patent software drafters.

Considering the fact that the Supreme Court’s Alice selection in 2014, inventors have faced further hurdles seeking to secure their application-relevant innovations with patents. A main obstacle has been fulfilling the two-element test for eligibility underneath Part 101 established forth in Alice and Mayo. To meet up with this exam, claimed matter make any difference must not be directed to a judicial exception, such as an abstract idea, (Move One), and if it is, should add “significantly more” to give an inventive thought (Action Two).

The Alice/Mayo take a look at is applied during examination at the U.S. Patent and Trademark Place of work (USPTO) and can be a defense lifted in opposition to enforcement of the patent. Even so, a single aspect inventors have most regulate more than is the drafting of their patent specs that describe their claimed innovations. The challenge computer software patent software drafters now deal with is how to draft patent purposes that can withstand scrutiny below the Alice/Mayo test.

Theodore Rand documented in IPWatchdog past week a disturbing but not surprising development. Rand located that, in 2020, 81% of computer software-relevant patents on charm for topic subject eligibility in made a decision precedential conditions (22 of 27) were identified invalid. But in a few conditions, computer software-connected patents have been found drawn to suitable subject make a difference for patent uses. Id.

In each and every of the 3 scenarios, the appeals courtroom pointed to factors of the patent requirements them selves. Searching much more carefully at the representative promises and court’s opinions with respect to the corresponding patent specification is illuminating. In distinct, the court looked to the technical specs for proof of performance improvements around traditional units, description of a specialized challenge/alternative, and technological pros.

Uniloc Usa, Inc. v. LG Electronics Usa, Inc.

In Uniloc determined April 30, 2020, the courtroom located the subsequent assert suitable:

    1. A key station for use in a communications system comprising at minimum one particular secondary station, whereby means are supplied

for broadcasting a collection of inquiry messages, every in the sort of a plurality of predetermined knowledge fields arranged according to a initially communications protocol, and for incorporating to each and every inquiry concept prior to transmission an further information subject for polling at least 1 secondary station.

(Uniloc, p. 4).

In so accomplishing, the CAFC especially referenced advancements about traditional communications programs described in the specification. The court docket also cited the description in the Summary of an advantage presented by the claimed invention which “enables a quick response time with out the have to have for a forever energetic interaction hyperlink in between a parked secondary station and the primary station.” Id., p. 3. As a final result, the courtroom held “the claims at issue are directed to a patent-qualified improvement to computer system functionality, namely the reduction of latency knowledgeable by parked secondary stations in communication methods.” Id., p. 7. The courtroom continued, “like the statements in DDR, the claimed creation adjustments the regular operation of the conversation method alone to ‘overcome a challenge precisely arising in the realm of computer networks.’” Id., p. 7. In this way, the courtroom found the statements are not directed to an abstract idea less than Stage A single of the Alice/Mayo take a look at, but as an alternative “are directed to a distinct asserted advancement to the operation of the conversation procedure itself.” Id., p. 10.

Packet Intelligence v. Netscout

In Packet Intelligence, determined July 14, 2020, the court located a representative apparatus assert 19 suitable. Assert 19 was directed to a packet keep track of and bundled a packet acquisition unit, input buffer memory, parser subsystem, memory for storing a database, a glance up engine, and a stream insertion motor. (Packet Intelligence, pp. 3-4).

In getting the declare suitable below Phase A person, the court docket again references the patent specification. In individual, the court appears to be to technological difficulties and options explained in the patent alone:

The asserted patents’ specs make distinct that the claimed invention introduced a technological resolution to a technological trouble. The specs reveal that acknowledged community screens were being unable to identify disjointed link flows to just about every other, and the concentrate of the claims is a unique enhancement in laptop technological know-how: a much more granular, nuanced, and valuable classification of community website traffic. See, e.g., ’751 patent col. 2 ll. 53–56 col. 3 l. 2–col. 4 l. 6. The specifications furthermore clarify how the aspects recited in the promises refer to distinct technological options operating together to present that granular, nuanced, and practical classification of community targeted visitors, fairly than an summary outcome. See, e.g., ’789 patent col. 23 l. 38—col. 27 l. 50 (describing the technological implementation of the lookup engine and circulation insertion engine as employed in the statements) see also ’725 patent col. 10 l. 3—col. 13 l. 4. (emphasis extra)

(Packet Intelligence, pp. 14-15).

TecSec v. Adobe Inc.

In TecSec decided Oct. 23, 2020, the court considered a agent multi-stage protection strategy claim:

  1. A system for delivering multi-level multimedia stability in a information network, comprising the techniques of:
  2. A) accessing an item-oriented essential supervisor
  3. B) deciding upon an object to encrypt
  4. C) picking out a label for the item
  5. D) picking an encryption algorithm
  6. E) encrypting the item according to the encryption algorithm
  7. F) labelling the encrypted object
  8. G) studying the item label
  9. H) figuring out entry authorization centered on the item label and
  10. I) decrypting the item if entry authorization is granted.

(TecSec, pp. 3-4).

In its eligibility willpower, the court docket uncovered the declare was not directed to an abstract thought beneath Action 1. The court seemed at sure prosecution heritage in advance of the USPTO and all over again at the patent specification by itself. As described by the courtroom a Move A single evaluation is dependent between other matters on “what the patent asserts to be the claimed advance.” Id., p. 24 (emphasis additional).

The court docket pointed out the specification built crystal clear the blend of labeling with the necessary encryption “is part of the focus of the claimed advance.” Id., p. 26. The court docket ongoing at length to cite where by the specification described both a deficiency and the technical alternative using labeling in multilevel safety with encryption. Id., pp. 26-28.

Passing Muster

Irrespective of a stream of adverse choices on patent eligibility final calendar year, we come across the Federal Circuit most likely pointing out some techniques to shield application-similar inventions. Typically, a patent drafter ought to equilibrium a drive for broad security for functions of infringement with narrower security for applications of validity. In the personal computer-relevant program arts at minimum, the Federal Circuit showed in 2020 how important the patent specification may well be in striking the correct equilibrium and passing muster less than the Alice/Mayo exam in 2021.


Michael Messinger

Michael Messinger

is co-founder of Shami Messinger. Mike helps organizations of all dimensions create intellectual residence techniques for safety and to greatly enhance their independence-to-operate in the laptop, electronics and sustainable technologies apply spots. He is effective with enterprise officers and engineers to establish patentable innovations and make strategic patent portfolios for their firm’s products and solutions and companies. Mike allows providers navigate by way of inter partes review and reexamination. Mike obtained his JD diploma from Georgetown University Law Centre and a BS degree in Physics from Duke College. Mr. Messinger currently serves an adjunct professor of patent licensing at Georgetown Law.