It is clear abstract ideas are not patentable. However the topic is much more complex. I have written a number of articles regarding the fog shrouded abyss related to patenting computer business methods and medical diagnostic procedures. The Supreme Court and the Court of Appeals for the Federal Circuit (commonly known as the “Federal Circuit”) continue to grope on a case by case basis trying to discern what is and is not patentable. The Federal Circuit recently stated that “‘(w)e may assume that the techniques claimed are (g)roundbreaking, innovative, or even brilliant’ but that is not enough for (patent) eligibility”. Electronic Communication Technologies, LLC, v. Shopperschoice.com, LLC, 2019-1589, (Fed. Cir. May 14, 2020).
What I am speaking of is innovations that are deemed non-patentable subject matter since the innovation is “found” to pertain merely to abstract idea. Abstract ideas are not patentable. This the “Section 101” conundrum of 35 U.S.C. 101. Physical phenomena, natural laws or abstract ideas are not eligible for patent protection. Typically the fatal flaw is a finding that the innovation for which patent protection is sought, is determined by a court or the USPTO examiner to be merely an abstract idea. The natural question is what is an abstract idea? However the courts have been unable or unwilling to provide a definition. This is not a satisfactory situation.
I briefly discuss the recent Electronic Communication Technologies, LLC case and then examine an earlier Federal Circuit case that I suggest be used as a guide to drafting patent claims for computer business methods and similar.
If abstract ideas are not patentable, but there is no definition, the USPTO has endeavored to provide some clarity for the examiners by identifying the categories of (a) mathematical concepts, (b) methods of organizing human activity, or (c) mental processes as comprising abstract ideas. See my article When is Computer Software Patentable. That article focuses upon decisions of the Patent Trial and Appeals Board (PTAB)
My prior conclusion has been that computer software can be patentable. However the success in seeking patent protection requires forethought in the drafting of the patent specification and, most importantly, the drafting of the patent claims. This area of the law is highly nuanced. There are no magic words or phrases. I would encourage not only seeking the assistance of a patent attorney, but more specifically a patent attorney that is familiar with the myriad of case law and court rationales used in creating the case law.
Today’s exploration of the conundrum was prompted by review of the recent (May 2020) decision of Electronic Communication Technologies, LLC, v. Shopperschoice.com, LLC, decision cited above. This review led me to the earlier decision of Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (2016) and particularly to the cogent and well-reasoned dissenting opinion of Judge Reyna.
Electronic Communication Technologies LLC was awarded a patent that was summarized by the Federal Circuit to: (1) enables a first party to input authentication information; (2) stores the authentication information; (3) monitors the location of a mobile things; (4) initiates notification to the first party in advance of arrival of the mobile thing based in part on the location of the mobile thing; (5) provides the authentication information to the first party; and (6) enables the party to select whether or not to communicate with a second party having access to particulars of the pickup or delivery.
In seeking to enforce its patent against a claimed infringer, the Electronic Communication Technologies LLC patent was invalidated as non-patentable subject matter under Section 101. The trial court (and affirmed by the Federal Circuit) found that the patent claims were “directed to the abstract idea of providing advance notification of the pickup or delivery of a mobile thing.” Notwithstanding that the patent provided the requisite information required to practice the invention (i.e., enablement) the Federal Circuit stated “just because a patent claim is enabled does not mean that the claim is patent eligible—subject matter eligibility and enablement are separate inquiries.” Although this is technically correct, it is worth noting for purpose of the following discussion of the compelling dissent of Justice Reyna in Amdocs below. Justice Reyna looks to the existence of claim limitations that teach the means of achieving the “abstract” goal.
Note that the Federal Circuit in Electronics Communication Technologies LLC stated that the exemplary claim “specified at a high level of generality, is specified in functional terms, and merely invokes well-understood, routine, conventional components and activity to apply the abstract idea”.
So if understood correctly, the decision of Federal Circuit in Electronics Communication Technologies LLC stated that the patent taught a person skilled in the art to practice the invention (secure notification of impeding delivery) but it only described the invention at such high level and identified only generally known computer components. As a practice point, it would appear wise to have granularity in your description of the structure or method that is accomplishing the goal, i.e., the abstract idea.
Stated differently, the Federal Circuit in Electronics Communication Technologies LLC concluded that the patented claim recited merely an abstract idea (well know and long standing business practice that apparently pertained to an aspect of organizing human behavior). Therefore it did not constitute patentable subject matter under step 1 of the two step Alice/Bilski test. It failed the second part of the test since it identified only “off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”. There was no showing of improved computer functionality in contrast to the prior decision of Enfish, LLC v. Microsoft Corp., 822 F.3rd 1327, 1336 (Fed. Cir. 2016). This aspect of the Federal Circuit opinion should be kept in mind for comparison of the better Amdocs decision discussed below.
I find the above Electronic Communication Technologies LLC decision unsatisfactory. The Federal Circuit wrote a brief opinion that too readily dismissed without analysis the aspects of the customer notification system that claimed provided enhanced “hack” protection. The Court simply lumped that aspect into the features only discussed at a “high level” and involving known computer components without examination of improved functionality.
I suggest the analysis of Justice Reyna’s dissenting opinion in Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (2016) to be much more enlightening. Please note both the majority and dissenting justices of Amdocs found many of the patent claims to be eligible for patent protection in view of Section 101. However I would write my patent specification and claims with a view to the logic of Justice Reyna.
The patents subject of the Amdocs litigation and decision pertained to a system designed to solve an accounting and billing problems faced by network service providers. A lengthy summary of the several patents is as follows:
The 7,631,065 patent concerns a system, method, and computer program for merging data in a network-based filtering and aggregating platform as well as a related apparatus for enhancing networking accounting data records. The 7,412,510 patent concerns a system, method, and computer program for reporting on the collection of network usage information. The 6,947,984 patent concerns a system and accompanying method and computer program for reporting on the collection of network usage information from a plurality of network devices. The 6,836,797 patent concerns a system, method, and computer program for generating a single record reflecting multiple services for accounting purposes.
Each patent’s written description describes the same system, which allows network service providers to account for and bill for internet protocol (“IP”) network communications. The system includes network devices; information source modules (“ISMs”); gatherers; a central event manager (“CEM”); a central database; a user interface server; and terminals or clients. See, e.g., ‘065 patent at 4:29-33, 43-54.
Network devices represent any devices that could be included on a network, including application servers, and also represent the source of information accessed by the ISMs. Id. at 5:10-26. The ISMs act as an interface between the gatherers and the network devices and enable the gatherers to collect data from the network devices. Id. at 5:33-35. The ISMs represent modular interfaces that send IP usage data in real time from network devices to gatherers. Id. at 5:35-39. Gatherers can be hardware and software installed on the same network segment as a network device or on an application server itself to minimize the data traffic impact on a network; gatherers “gather the information from the ISMs.” Id. at 6:54, 58-64. Gatherers also normalize data from the various types of ISMs and serve as a distributed filtering and aggregation system. Id. at 7:5-8. The CEM provides management and control of the ISMs and gatherers, and the CEM can perform several functions including performing data merges to remove redundant data. Id.at 8:13-67. The central database is the optional central repository of the information collected by the system and is one example of a sink for the data generated by the system. Id. at 9:1-5. The user interface server allows multiple clients or terminals to access the system, and its primary purpose is to provide remote and local platform independent control for the system. Id. at 10:5-12.
Importantly, these components are arrayed in a distributed architecture that minimizes the impact on network and system resources. Id. at 3:56-65. Through this distributed architecture, the system minimizes network impact by collecting and processing data close to its source. Id. The system includes distributed data gathering, filtering, and enhancements that enable load distribution. Id. at 4:33-42. This allows data to reside close to the information sources, thereby reducing congestion in network bottlenecks, while still allowing data to be accessible from a central location. Id. at 4:35-39. Each patent explains that this is an advantage over prior art systems that stored information in one location, which made it difficult to keep up with massive record flows from the network devices and which required huge databases. See, e.g., id. at 4:39-42.
I have provided this lengthy summary to show that the computer components can be viewed as known components. However the Court found it important that the arrangement and interrelationship of the components to be important. How is this relevant to whether the arrangement did or did not constitute an abstract idea? Continue reading.
The majority opinion of Amdocs decries the absence of a definition of abstract idea, stating
“Whether the more detailed analysis is undertaken at step one or at step two (of the Alice/Bilski test), the analysis presumably would be based on a generally-accepted and understood definition of, or test for, what an `abstract idea’ encompasses. However, a search for a single test or definition in the decided cases concerning § 101 from this court, and indeed from the Supreme Court, reveals that at present there is no such single, succinct, usable definition or test. The problem with articulating a single, universal definition of `abstract idea’ is that it is difficult to fashion a workable definition to be applied to as-yet-unknown cases with as-yet-unknown inventions. That is not for want of trying; to the extent the efforts so far have been unsuccessful it is because they often end up using alternative but equally abstract terms or are overly narrow.”
JUSTICE REYNA DISSENT
The dissent of Justice Reyna focus upon the explanation of the four Amdocs patents stating “that because the disclosed system distributes the work of collecting and processing the raw activity data among multiple components, it is able to process more information more quickly than do previous designs, in which ‘all the [raw] network information flows to one location.’ Id. at col. 4 ll. 9-13. In contrast to these previous designs, the distributed architecture reduces the storage and computational resource requirements of the central repository, which need no longer ‘keep up with the massive record flows from the network devices’ or maintain ‘huge databases.’”
Patent eligibility is therefore found in a computer system utilizing known and off the self components but arranged in a new way, i.e., the distributed architecture.
As repeatedly stated the Alice/Bilski analysis of patent eligible subject matter requires a two step test of the patent claim. First, is the claim directed to or claim a judicial (Section 101) exception, e.g., natural law, natural phenomena, or abstract idea. If yes, the second element asks if the elements of the claim in combination recite an inventive concept sufficient to ensure the patent in practice amounts to significantly more than the ineligible concept, e.g., abstract idea. Recall Diamond v Diehr, 450 U.S. 175 (1981) that used an abstract idea, i.e., the Arrhenius equation, but in a narrow application, i.e., heating and curing rubber. In other words, are the elements of the patent claim blocking all use of the abstract idea from further exploitation by others or rather is it only one element of a multi-element claim directed to a specific and limited application? Justine Reyna states “Supreme Court precedent clearly establishes that a desired goal without means of achieving it that goal is an abstract idea.” Note the “desired goal” is the subject of the patent claim.
Justice Reyna states: “Step one (of the two step Alice/Bilski test) of the eligibility inquiry asks whether the claim is ‘directed to’ a judicial exception, such as an abstract idea. The answer is not automatically ‘yes’ simply because a claim involves an abstract idea, and it is not automatically ‘no’ simply because a claim recites limitations beyond the abstract idea.” “The Supreme Court has recognized that “[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”
Further, the inquiry requires asking “what type of discovery is sought to be patented”. “For example, a claim is ‘directed to’ an abstract goal if the claim fails to describe how – whether by particular process or structure – the goal is accomplished.” “Conversely, where the claim recites specific structure or function for accomplishing the desired goal in a particular way, the claim is more likely directed to a means (other) that to the underlying abstract goal.” “In those cases, concerns of patent eligibility are resolved (satisfied) at step one, and there is no need to proceed to step two.”
However, in most cases the inquiry proceeds to step two which requires a careful claim limitation-by-limitation analysis. To pass step two, the claim limitations must state a particular means of accomplishing the underlying goal – or to otherwise obviate concerns of pre-emption. In other words, the claim must restrict use of the abstract idea to a particular mode of operation to avoid monopolizing the abstraction and precluding the later innovation of others. For example, the goal of flying may be viewed as an abstract idea. A claim that includes flying as a goal but requires or is limited to structures have certain aerodynamically shaped wings and a propulsion engine having a minimum weight to thrust ratio may be patentable incorporation of the abstract idea.
“The purpose of the step-two analysis is to ensure that the claim recites an ‘inventive concept’ which the Supreme Court has defined as ‘an (claim) element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”
“Claims that fail to recite how a desired goal is accomplished do not recite an inventive concept. For example, limitations on the context — as opposed to the manner — of accomplishing a desired result is typically not inventive, even if that context is novel.”
“(O)ne way for a claim to be directed to a means rather than to an abstract end is to recite process limitations defining a specific way of arriving at that end.”
REQUIREMENTS FOR PATENTABLE INVENTION
It may be appreciated that the formulation of distinguishing between abstract ideas and patentable inventions is in synch with the very definition of when a patentable invention is created. There are two steps that must occur for the creation of a patentable invention, first there must be conception of the idea and second there must be reduction to practice. Reduction to practice occurs when the method or product subject of the idea actually works in the manner intended.
“Making the invention requires conception and reduction to practice. While conception is the formation, in the mind of the inventor, of a definite and permanent idea of a complete and operative invention, reduction to practice requires that the claimed invention work for its intended purpose.”
Solvay S.A. v. Honeywell International, 742 F.3d 998, 1000 (2014)
Justice Reyna is requiring the means for practicing the idea must be disclosed in the specification and claims. In other words, the means of reducing the idea to practice must be disclosed. In the absence of this disclosure, the idea is merely abstract.
There has been a great deal of time, money and energy expended in attempting to understand when an idea is merely abstract and therefore ineligible for patent protection. This effort obviously applies to attempting to understanding what is not an abstract idea. Also how to write a claim that will not be rejected as claiming only an abstract idea.
I am suggesting that looking at whether the claim contains elements or limitations that describe the means for accomplishing the idea or goal can provide the necessary distinction.
In other words, what must be added to a “brilliant” or “groundbreaking” idea to transform it into a patentable invention may be whether the claim discloses not only the idea but how the goal expressed by the idea can be accomplished.
I am further suggesting that this test is consistent with the fundamental concept or definition of what is a patentable invention, i.e., conception of the idea coupled with reduction to practice.
© David McEwing 2020