Introduction
Until recently, DDR Holdings v. Hotels.com, Fed. Cir. 2014, was the only United States Court of Appeals for the Federal Circuit decision to uphold the validity of computer implemented patent claims since the Supreme Court’s decision in Alice Corp. v. CLS Bank, S. Ct. 2014. Recently, there have been two further cases which have allowed computer implemented patent claims and so help indicate what might be allowable in the U.S.
The current test, outlined in Alice, for establishing whether a computer implemented invention is patentable is as follows:
- Determine whether the claims at issue are directed to a patent ineligible concept (e.g. an abstract idea). If not, the claims recite patentable subject matter. If they are directed to a patent ineligible concept proceed to Step 2:
- Identify elements showing an inventive concept. If an inventive concept can be shown, the claims recite patentable subject matter.
Enfish (Enfish v. Microsoft, Fed. Cir. 2016)
The patents in this case related to a “self-referential” database. This self-referential property can be best understood in contrast with the more standard “relational” model. With the relational model, each entity (i.e., each type of thing) that is modeled is provided in a separate table. For instance, a relational model for a corporate file repository might include the following tables:
- document table,
- person table,
- company table.
The document table might contain information about documents stored on the file repository, the person table might contain information about authors of the documents, and the company table might contain information about the companies that employ the persons.
In contrast, the patented logical model includes all data entities in a single table, with column definitions provided by rows in that same table. The patents describe this as the “self-referential” property of the database.
Claim 1 of one of the patents recites:
A data storage and retrieval system for a computer memory, comprising:
means for configuring said memory according to a logical table, said logical table including:
a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
means for indexing data stored in said table.
The patents teach that multiple benefits flow from this design. First, the patents disclose an indexing technique that allows for faster searching of data than would be possible with the relational model. Second, the patents teach that the self-referential model allows for more effective storage of data other than structured text, such as images and unstructured text. Finally, the patents teach that the self-referential model allows more flexibility in configuring the database.
The Court noted that they did not “read Alice to broadly hold that all improvements in computer-related technology are inherently abstract”. They went further to say that they did not think “that claims directed to software, as opposed to hardware, are inherently abstract”. That is, software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route.
In this case, the Court found that the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. Accordingly, the Court found that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice, and therefore recited patentable subject matter.
Bascom (Bascom v. AT&T Mobility, Fed. Cir. 2016)
The patent is related to a system for filtering Internet content (e.g. businesses filtering entertainment sites; families filtering explicit or objectionable content). The description noted that initial attempts at Internet content control implemented the filter function on the local (client) machine. The patent identified a number of shortcomings with this solution:
- It is subject to hacking or other circumvention.
- It is difficult and time consuming to install on every end-user’s client machine.
- It must be made compatible with a number of different client systems.
- The client database must be updated frequently to track changes in the content of various Internet sites (this requires frequent updates).
Other solutions include using a server-based filter, but this only allows a single set of filtering criteria which may not appropriate for all end-users.
The claimed invention relates to allowing a filtering scheme stored on the ISP to be tailored for each associated client computer.
Claim 1 recites:
A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
a local client computer generating network access requests for said individual controlled access network accounts;
at least one filtering scheme;
a plurality of sets of logical filtering elements; and
a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.
The issue raised was whether the claims were directed to the abstract idea of “filtering content”, “filtering internet content” or “determining who gets to see what” each of which is a well known “method of organizing human activity” like the intermediated settlement concept that was held to be an abstract idea in Alice.
The Court found that the claims were not sufficiently limited to avoid the “abstract idea” exclusion under step 1, but were nonetheless eligible under step 2.
Regarding step 2 (elements showing an “inventive concept”), the District Court had considered some of the technical features of the claim in isolation (e.g. local client computer, remote ISP server) and determined that these were simply common computer components. While agreeing with the District Court’s analysis of the individual features, the Federal Circuit came to a different conclusion regarding the synergy between the individual components. That is, the Court found that the inventive concept described and claimed in the patent was the “the installation of a filtering tool at a specific location, remote from the end users, with customizable filtering features specific to each end user”. This limitation improves the functionality of both the local computer and the ISP server, and so could not be considered conventional or generic.
That is, by taking a prior art filter solution (one-size-fits-all filter at the ISP server) and making it more dynamic and efficient (providing individualized filtering at the ISP server), the claimed invention represents a software-based invention that improves the performance of the computer system itself, and so constitutes an “inventive concept”.
Conclusions
These cases provide some valuable indications on how to anticipate and to overcome excluded-subject objections in the U.S. As is familiar from the Canadian perspective, providing details on why the computer is essential may also help establish that the subject matter is patentable in the U.S. This can be done by focusing on improvements in the computer itself thereby establishing that the invention is not abstract, or by focusing on how combining conventional elements gives rise to a synergistic improvement in functionality thereby showing an inventive concept.
For more information, please contact William Murphy at william.murphy@hicksip.com.