By Bruce Sunstein. A member of our Patent Practice Group
The Supreme Court’s 2014 decision in Alice v. CLS Bank held that software claims to computer-based financial hedging were patent ineligible because they were directed to an abstract idea and, taken as a whole, they failed to define an inventive concept “significantly more” than the ineligible abstract idea of hedging. Although Alice was viewed as potentially the death knell for software patents, a cluster of recent decisions by the Federal Circuit has made it less difficult to overcome challenges to software patents based on Alice.
In Alice, the Supreme Court adopted a two-step process for evaluating patent eligibility. Under step one, a court is to determine whether the claims at issue are directed to an abstract idea. If so, under step two, the court will next “examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.”
In Finjan, Inc. v. Blue Coat Systems, Inc., decided January 10, 2018, the Federal Circuit affirmed a trial court’s ruling that claims to “identifying and protecting against malware” are eligible for patenting, even in the face of the Alice decision. In doing so, the Federal Circuit said that it did not even have to reach step two in the Alice patent eligibility analysis.
The Federal Circuit had previously held that “[b]y itself, virus screening is well-known and constitutes an abstract idea.” Similarly, “performing the virus scan on an intermediary computer—so as to ensure that files are scanned before they can reach a user’s computer—is a ‘perfectly conventional’ approach and is also abstract.” According to the Federal Circuit, the claimed method “does a good deal more” than these abstract ideas.
Normally, doing “a good deal more” would seem to take the analysis to step two of the Alice analysis. However, the Federal Circuit said that the analysis need not go beyond step one. Because “the security profile ‘identifies suspicious code,’” it “allows the system to accumulate and utilize newly available, behavior-based information about potential threats. The asserted claims are therefore directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large.” As a result, the Court said that the eligibility analysis ends at step one.
In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., decided on January 25, 2018, the Federal Circuit affirmed a trial court’s ruling that claims to a user interface, particularly useful for devices like smart phones that have limited screen real estate, define subject matter that is patent eligible.
The claimed interface enables faster access to desired data and applications. An application summary window displays “a limited list of common functions and commonly accessed stored data which itself can be reached directly from the main menu listing some or all applications.” The application summary window can be reached in two steps: “first, launch a main view which shows various applications; then, launch the appropriate summary window for the application of interest.” More...
