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The Federal Circuit Muddies The 101 Waters After BASCOM

Chad Hammerlind Associate Haynes & Boone, LLP

Chad Hammerlind
Haynes and Boone, LLP

On September 30, 2016, in Intellectual Ventures I LLC, v. Symantec Corp., No. 15-1769, 15-1770, 15-1771, the Court of Appeals for the Federal Circuit (CAFC) overturned a lower court?ÇÖs finding of patent eligibility under 35 U.S.C.?á?º?á101 for a patent directed to using computer virus screening in a telephone network, while affirming the lower court?ÇÖs finding of patent ineligibility under 35 U.S.C.?á?º?á101 for two other patents directed to methods of screening emails and other data files for unwanted content, and methods of routing e-mail messages based on specified rules.?á ?á?áThe court analyzed each of the patents at issue separately using the Mayo/Alice two-part test for determining patent eligibility under 35 U.S.C.?á?º?á101, coming to the same conclusion each time.

First, the court addressed U.S. Patent No.?á 6,460,050 (?Ç£the ?Çÿ050 patent?Ç¥), which was held patent ineligible by the lower court. ?áThe ?Çÿ050 patent is directed to filtering e-mails that have unwanted content by receiving e-mail identifiers, characterizing the e-mail based on the identifiers, and communicating the characterization.?á Under step one of the Mayo/Alice?átest, the court determined the claims were directed to an abstract idea, analogizing the method of filtering e-mail to a person discarding a piece of physical junk mail before opening it based on some characteristic (e.g., the source) of the letter.

Under step two of the Mayo/Alicetest, the court determined that the claims of the ?Çÿ050 patent did not contain an ?Ç£inventive concept?Ç¥ that rendered the abstract idea patent eligible, but rather amounted to nothing significantly more than instructions to apply the abstract idea using a generic computer.?á ?áThe court dismissed the argument that the lack of anticipation or obviousness in light of the prior art was inconsistent for finding of a lack of ?Ç£inventive concept?Ç¥, arguing ?Ç£Indeed, ?Çÿ[t]he ?Ç£novelty?Ç¥ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the ?º?á101 categories of possibly patentable subject matter.?ÇÖ Diamond?á v. Diehr, 450 U.S. 175, 188-89 (1981) (emphasis added).?Ç¥ Intellectual Ventures I?áat 11-12.?á The court then proceeded to dismiss arguments directed to technological issues solved by the patent including shrinking the protection gap (i.e., the period of time between identification of a computer virus by an anti-malware provider and distribution of that knowledge to users) and addressing the volume problem (i.e., exponential growth in malware and spam that increases the amount of antivirus signature to be downloaded), as the court felt that the claims of the ?Çÿ050 patent did not contain any limitations that addressed these two problems.

Turning to U.S. Patent No.6,073,142 (?Ç£the ?Çÿ142 patent?Ç¥) that was held patent ineligible by the lower court, the court characterized the claims of the ?Çÿ142 patent as being directed to receiving, screening, and distributing e-mail based on rules, agreeing with the lower court?ÇÖs analogy to a corporate mailroom or a post office that keeps business rules defining actions to take based on the content of a correspondence.?á Under step two of the Mayo/Alicetest, the court determined that the claims and the specification of the ?Çÿ142 patent only taught the abstract idea being applied to generic computers performing generic functions.

Finally, the court addressed U.S. Patent No. 5,987,610 (?Ç£the ?Çÿ610 patent?Ç¥) that had been found patent eligible by the lower court.?á The ?Çÿ610 patent is directed to virus screening of calls within a telephone network by inhibiting communication of computer data when a virus is detected in that computer data, and includes dependent claim 7 that determines whether virus screening is to be applied to a call based on an identifier of the calling party or an identifier of the called party.?á The court noted that unlike the ?Çÿ050 patent and the ?Çÿ142 patent, the claims of the ?Çÿ610 patent involved an idea that originated from the computer era ?Çô computer virus screening.?á However, the court felt that, at the time of the ?Çÿ610 patent, virus screening was well known and constituted an abstract idea under step one of the Mayo/Aliceinquiry. Intellectual Ventures I?áat 20. ?áWith respect to step two of the Mayo/Alice?átest, the court determined that the abstract idea of virus screening applied to a generic telephone network did not provide an ?Ç£inventive concept?Ç¥ that made the abstract idea patent eligible.

In a dissenting opinion, Judge Stoll agreed with the majority that virus screening was well-known at the time of the ?Çÿ610 patent and therefore an abstract idea, but disagreed with the majority?ÇÖs decision that the claims did not add an inventive concept.?á Rather, she felt that the inventive concept involved ?Ç£moving the virus screening software from its typical location on end users?ÇÖ computers and deploying it instead ?Çÿwithin the telephone network?ÇÖ itself. ?Çÿ610 patent col. 14 l. 37. Thus, the invention harnesses network architecture and exploits it by utilizing a non-conventional and non-generic arrangement of virus screening components, which improves the overall network security and usability.?Ç¥ Intellectual Ventures I?áat 3. She went on to argue that the invention provided a novel solution to the protections gap problem, and was similar to the claims in BASCOM that were directed to filtering content on the Internet rather than locally on a user?ÇÖs computer. Id. at 4.?á She also disagreed that the claims were similar to claims in previous cases that were found to be directed to performing an abstract idea on the Internet, arguing that ?Ç£The claims at issue in those cases, like the claims at issue in Alice, simply invoked the Internet as a means to an end; they did not improve the security and functioning of the Internet itself.?Ç¥ Id. at 5.

The majority distinguished the ?Çÿ610 patent from BASCOM, arguing that the ?Ç£inventive concept?Ç¥ in BASCOMwas not merely moving existing content filtering technology from the local computers to the Internet, but also overcoming existing problems with other Internet filtering systems by enabling individualized filtering technology at the ISP server. See Intellectual Ventures I, Appeal No. 15-1769 at 24.?á With respect to the advantages of shifting virus detection to the telephone network and addressing the protection gap problem, the majority stated that ?Ç£the district court erred in relying on technological details set forth in the patent?ÇÖs specification and not set forth in the claims to find an inventive concept.?Ç¥ Id.at 25.

The majority decision is this case provides guidance to patent practitioners to draft specifications with specific solutions to technological problem, while making certain that the claims themselves include details as to how those technological problems are being solved.

Finally, in addition to the majority and dissenting opinion, Judge Mayer wrote a concurrence calling for a robust implementation of ?º?á101 that, if implemented, would be devastating to software patent holders.?á Judge Mayer argued that software patents run afoul the First Amendment by constricting the channels of online communication and, as such, claims directed to software implemented on generic computers should be categorically ?áineligible for patent protection.?á With respect to the First Amendment right of free speech, Judge Mayer cautioned that claims such as those in the ?Çÿ610 patent ?Ç£have the potential to disrupt, or even derail, large swaths of online communications.?Ç¥ (Intellectual Ventures I, Appeal No. 15-1770 at 3).?á?á He felt that ?Ç£[s]ection 101?Ǫ can preserve the Internet?ÇÖs open architecture and weed out those patents that chill political expression and impermissibly obstruct the marketplace of ideas?Ç¥ ?áId. at 4-5, and suggested that ?º?á101 be used much like the ?Ç£fair use?Ç¥ defense in copyright law to protect First Amendment rights.

Judge Mayer then called on the other judges of the court ?Ç£to acknowledge that Alice sounded the death knell for software patents,?Ç¥ Id. at 6, which he felt would alleviate First Amendment concerns attributed to the patent system..?á He then went on to criticize software patent claims for having scopes that are generally disproportionate to their technological disclosure, incentivizing work at the ?Ç£idea?Ç¥ stage before any real inventive work has been done, making it difficult to innovate in any technological field (i.e., due to the vast number of software patents), and lacking the concrete metes and bounds patent law demands.?á Under Judge Mayer?ÇÖs interpretation of ?º?á101, the claims at issue in BASCOM, Enfish, and DDR would be considered patent ineligible, and protection and encouragement of software innovation would be returned to the domain of copyrights. While these extreme views are simply dicta in a concurring opinion, they do provide insights into the divergence of views with respect to ?º?á101 between the judges of the Federal Circuit. ?áFor software patent holders, Judge Mayer?ÇÖs views towards software patents are thankfully those of the minority, as previous opinions from the Supreme Court and the Federal Circuit have repudiated the view that software patents are per se patent ineligible.

Chad Hammerlind is an associate in the Intellectual Property Practice Group in the Austin office of Haynes and Boone, LLP. He may be reached at chad.hammerlind@haynesboone.com or 512.867.8424.

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November 2016