Federal Circuit to Consider When A Computer-Implemented Invention Is Patentable

CLS Bank International v. Alice Corporation, No. 2011-1301 (Fed. Cir. 2012) (Order granting en banc rehearing).

The Federal Circuit Court of Appeals has granted an en banc rehearing in the CLS Bank case. As I previously discussed, the majority of a panel found CLS patents directed to using an intermediary in a financial transaction were valid and enforceable. The majority asserted that “when-after taking all the claim recitations into consideration-it is not manifestly evident that the claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under  § 101.” The dissent criticized the majority’s manifestly evident test.

The result in CLS Bank appeared to be in conflict with a prior panel’s decision in Bankcorp v. Sun Life, where a method of managing stable value protected life insurance policy was found not patent eligible.

The Federal Circuit will now rehear CLS Bank en banc, considering the following two questions:

1. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

2. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

Method of Managing Stable Value Protected Life Insurance Policy Found Not Patentable

Bankcorp v. Sun Life, No. 2011-1467 (Fed. Cir. 2012) [PDF].

Bankcorp sued Sun alleging infringement of U.S. Patent 5,926,792 and 7,249,037. The patents are directed to methods and systems for administering and tracking the value of life insurance policies.  The district court found both patents invalid as claiming an unpatentable abstract idea under section 101. The Federal Circuit agreed.

Background: Life Insurance Policies. The claims are directed to dealing with a particular type of life insurance plan where the policy owner pays additional premiums beyond that required to fund the death benefit and specifies the type of investment assets in which the additional premiums are invested. This arrangement provide certain tax-advantages. However, the value of this type of policy will fluctuate with the market value of the underlying assets, which may pose an accounting problem for owners that must report the values of such policies on a quarterly basis. To address this fluctuation, a third-party guarantor is brought into the mix to guarantee a given minimum book value on the policy.  The patents are directed to methods and systems that use a formula for determining the values required to manage a stable value protected life insurance policy.

Representative claim 9 of the ‘792 patent provides:

9. A method for managing a life insurance policy on behalf of a policy holder, the method comprising the steps of:

generating a life insurance policy including a stable value protected investment with an initial value based on a value of underlying securities;

calculating fee units for members of a management group which manage the life insurance policy;

calculating surrender value protected in vestment credits for the life insurance policy;

determining an investment value and a value of the underlying securities for the current day;

calculating a policy value and a policy unit value for the current day;

storing the policy unit value for the current day; and

one of the steps of:

removing the fee units for members of the management group which manage the life insurance policy, and
accumulating fee units on behalf of the management group.

The ‘037 patent included claims that were substantially similar to claim 9 of the ‘792 patent. The ‘037 patent also contained system and computer readable medium claims that tracked the method claims.

Do The Claims Require a Computer? The Federal Circuit first determined that the system and computer medium claims required a computer. It also determined that the broadest method claims did not require a computer. The court noted that each method claim has a dependent claim that required that the method be “performed by a computer.” Under the doctrine of claim differentiation, “the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.” Therefore, if a dependent claim required the method to be performed by a computer, then the doctrine of claim differentiation would lead one to the conclusion that the independent claim would not require a computer.

Claim Form Not Determinative: Look to Underlying Invention. The court asserted that it must look not just to the type of the claim but to the underlying invention for patent-eligibility purposes. The court found that the system and computer medium claims were no different from the asserted method claims for patent eligibility purposes.

Use of a Computer Also Not Determinative. The court stated, “To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.” The court found that the computer required for some of the claims of the Bankcorp patents were employed only for the computer’s most basic function, “the performance of repetitive calculations,  and as such does not impose meaningful limits on the scope of those claims.” The court continued to find there was no material difference between the claims invalidated by the Supreme Court in Bilski and the claims in the present case.  Further the court stated, using a computer to accelerate a patent ineligible mental process does not make that process patent-eligible.

Focus on Whether Inventive Aspects are Abstract. The court noted that when insignificant computer-based limitations are set aside from the claims, the question under section 101 reduces to an analysis of what additional features remain in the claims.  The court found that without the computer limitations nothing in the claims remained but the abstract idea of managing a stable value protected life insurance policy by performing calculations and manipulating the results.As a result the claims of the patents were invalid as directed to unpatentable subject matter.

Distinguishing CLS Bank v. Alice. The court distinguished its prior decision in CLS Bank International v. Alice Corporation, Dkt No. 2011-1301 (Fed Cir. July 9, 2012), because in CLS the court found that the computer limitations of the claims played a significant part in the performance of the invention.

New Manifestly Evident Test Maintains Broad View of Patent Eligible Subject Matter

CLS Bank International v. Alice Corporation, Dkt No. 2011-1301 (Fed Cir. July 9, 2012) [11-1301 Opinion]. 

CLS sued Alice for declaratory judgement that  U.S. Patent No. 5,970,479, 6,912,510, 7,149,720, and 7,725,375 owned by Alice were invalid, unenforceable, or otherwise not infringed. The district court held that each of Alice’ s patents were invalid under section 101 for failure to claim patent eligible subject matter. The Federal Circuit reversed maintaining a broad view of patentable subject matter.

Representative Claim 33 of the ‘497 patent provides: A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:

(a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;

(b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;

(c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party’s shadow credit record or shadow debit record, allowing only these [sic] transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order; and

(d) at the end-of-day, the supervisory institution instructing one of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions.

Manifestly Evident Test.The Federal Circuit found that the district court took too narrow a view of patent eligible subject matter . The Federal Circuit introduced a new manifestly evident test which provides, “when–after taking all the claim recitations into consideration–t is not manifestly evident that the claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under  § 101.” The court continued, “It would undermine the intent of Congress to extend a judicially-crafted exception to the unqualified statutory eligibility criteria of § 101 beyond that which is ‘implicitly’ excluded as a ‘fundamental truth’ that is ‘free to all mend and reserved exclusively to none.’ ” (citing Bilski v. Kappos, 130 S. Ct. 3218 (2010)).  The court further stated that “Unless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching the idea to a specific application, it is inappropriate to hold the claim is directed to patent ineligible ‘abstract idea’ under 35 U.S.C. § 101.”

The Federal Circuit found that the claims of the ‘720 and the ‘375 Patents each had explicit machine limitations. ’720 Patent col.65 ll.42- 48 (“A data processing system . . . comprising a data  storage unit . . . ; and a computer . . . .”); ’375 Patent col.68 ll.5-7 (“A computer program product comprising a computer readable storage medium having computer readable program code embodied in the medium . . . .”). The court found these machine limitations could not be ignored and they were not “insignificant post solution activity.”

Electronic Adjustment Implicates a Machine. Regarding the method claims of the ‘510 patent, the Federal Circuit found that they each provided an “electronic adjustment” limitation, which implicated a machine under the machine-or-transformation test.  The court noted that the CLS agreed that the electronic adjustment required a computer, which was consistent with the patent specification.

Shadow Credit Record Implicates a Machine. Regarding the method claim of the ‘479 patent recited above, the court noted that the claims did not have the “electronic adjustment” limitation, but the claims did contain a “shadow credit record” and a “shadow debit record”, which when read in light of the specification, required a computer implementation. As a result the “shadow credit record” and “shadow debit record” where sufficient to implicate a machine under the machine under the machine-or-transformation test.

The court acknowledged that the mere fact of a computer implementation alone does not resolve the patent eligibility question. The court stated that it was not computer implementation, but the claims as a whole that make the invention patentable.

Dissent. Judge Prost criticized the majority’s manifestly evident test. The dissent asserted that the claims were merely directed to the basic idea of using an intermediary in a financial transaction, which the dissent noted existed since the Early Roman Empire. The dissent asserted that the representative claim 33 of the ‘479 patent involves four simple steps: (a) creating a debit and credit account for each party, (b) checking  the account balances in the morning, (c) adjusting the account balances through the day, and (d) paying the parties at the end of the day if both parties have performed. The dissent dismissed any patentable significance being attached to “shadow records.” The dissent asserted that shadow records are simply used to define an account that is used to ptrack a party’s payments and that any financial intermediation would do this.

The Dissent further noted that the invention is focused on the financial transaction and not the computer implementation. The dissent noted that the ‘disclosure of the invention” section of  the ‘720 Patent almost exclusively discusses the concept of risk minimization in financial transactions. There are no statements that the computer implementation is an advancement in the art and instead provides that the object of the invention can be “achieved by a computing/telecommunications infrastructure that is capable of being accessed worldwide by any enterprise/individual having access to a computer and a telephone network.” The dissent asserts that the rest of the specification is devoid of any teaching for how one implements computer systems.

Focus on Whether Inventive Aspects are Abstract. The Dissent asserts that “we must look beyond the non-inventive aspects of the claims and ask whether the remaining portion is and abstract idea.”

MySpace and Craigslist Invalidate Patents on Database with User Creatable and Categorizable Entries

MySpace, Inc. v. Graphon Corp., Dkt. No. 2011-1149 (Fed. Cir. March 2, 2012).

MySpace and Craigslist sued Graphon for declaratory judgement of non-infringement of U.S. Patent Nos. 6,324,538, 6,850,940, 7,028,034, and 7,269,591 (patents in suit). Graphon counterclaimed for patent infringement. The district court found the claims at issue in the patents in suit were invalid as either anticipated or obvious based upon a system called the Mother of all Bulletin Boards (MBB) and the Federal Circuit agreed.

User Manipulable Database Entries. The patents in suit were directed to a method and apparatus that allowed a user to create, modify, and search for a database record over a computer network. The inventors of the patents in suit claimed the prior systems, like Yahoo! directory, provided that the search engine operator rather than the users would categorize website listings. Under this system of categorization, the categorizer would miscategorize entries without user input. The inventors attempted to overcome this problem by allowing users to create and edit one or more database entries with their own text and graphics and then to create for each entry searchable categories that best matched the information in each entry.

Prior Art. Before the earliest priority date of the patents in suit, the Mother of all Bulletin Boards (MBB) was developed at the University of Colorado. The MBB allows the creation of an Internet catalogue that grew through user input without intervention from an administrator. The data in the MBB system was stored hierarchically as apposed to relationally (e.g. a relational database).

“Database” Includes Hierachical and Relational. The Federal Circuit found that the disputed claim term “database” included both hierachical and relational databases in the patents in suit. Therefore, the MBB’s use of a hieracrchical system met the claim term “database” and therefore resulted in the invalidity of the subject claims of the patents in suit. The court noted that the term “database” is generally understood to include different types of data organization systems, including hierarchical and relational systems. The court rejected Graphon’s argument that the written description and the prosecution history of the patents in suit indicate that the term database should be limited to relational database. If the term was so limited, the MBB would likely not invalid the patents in suit. The court found that the written description described features contained in multiple types of databases and therefore the term database could not be limited to relational databases.

Written Description & Reading in Limitations. The court explain that two principles on claim construction were complementary rather than competing. The first principle is that the written description is the best source for understanding the technical meaning of a claim. The second principle is that limitation from the written description cannot be read into the claims absent a clear intention by the patentee. The court explained that there are two limiting factors during claim construction–what was invented and what was claimed. A patentee can claim less than was invented, but never more than was invented. The court directed that we look to the entire patent to determine what was invented. Yet to determine what was claimed, the precise words of a claim are to be reviewed and the written description is used as an aid in understanding those words.

Address Patentable Subject Matter First? The dissent argued that before considering whether the patents in suit were invalid as obvious or anticipated, the court had a duty in the first case to determine whether the patents claimed patentable subject matter under section 101, even if the issue was not raised by the parties or the trial court. The majority rejected this approach. The majority noted the difficulty that courts had in defining the bounds of patentable subject matter. The majority stated that validity determinations under section 102, 103, 112 (anticipation, obviousness, and enablement) are the best approach to resolving most cases. These approaches avoid the search for universal truths that may be necessary when searching the bounds patentable subject matter under section 101. However, the court did not say that section 101 could never be raised first in a patent suit. Yet in first looking to sections 102, 103, and 112, the court said that questions of patent validity could be concluded in many cases without wading into the “murky morass that is section 101 jurisprudence.”

“For” Interpreted as Must Perform v. Capable of Performing

Typhoon Touch v. Dell Inc., et al., Dkt. No. 2009-1589 (Fed. Cir. Nov. 4, 2011).

Typhoon sued Dell, Lenovo, San Due Ventures, Toshiba, Fujitsu, Panasonic, Apple, and HTC alleging infringement of US Pat. Nos. 5,379,057 and 5,675,362, each patent directed to a portable computer with touch screen. The appeals court reviewed the district courts finding of non-infringement and invalidity.

Claim 12 of the ‘057 patent is a representative claim, with terms in dispute emphasized:

A portable, keyboardless, computer comprising:

an input/output device for displaying inquiries on a touch-sensitive screen, said screen configured for entry of responses to said inquiries;

a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen;

a processor coupled to said memory and said in-put/output device for executing said data collection application; and

an application generator for generating said data collection application and for creating different functional libraries relating to said contents and said formats displayed on said screen, said applica-tion generator further comprising means for cross-referencing responses to said inquiries with possible responses from one of said libraries; and

a run-time utility operating in conjunction with said processor to execute said application and said libraries to facilitate data collection operations.

Must Perform v. Capable of Performing. Typhoon argued that the district court erred in construing the claim term “a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen.” The district court found that the memory must perform the recited function.  Typhoon argued the district court was wrong and that an infringing device need only be capable of performing the recited function.  In other words, as long as the memory is capable  of being configured to (e.g. programmed to) store the data collection application, even if the memory is not so configured, the element is satisfied.

The Federal Circuit reviewed prior cases and noted that  “capable of” did not mean “might be later modified to perform that function.” It said that infringement may not be based on “a finding that an accused product is merely capable of being modified in a manner that infringes the claims of a patent.” Further the specification supported the district court’s construction.

Algorithm Adequately Disclosed. The district court found the term means for cross-referencing responses to said inquiries with possible responses from one of said libraries” was indefinite because the specification failed to adequately provide an algorithm for carrying out the means element.  The court noted that “a means-plus-function term is impermissibly indefinite under §112 ¶ 2 when the specification “simply describes the function to be performed, not the algorithm by which it is performed.”

The court provided that an algorithm in computer systems encompasses “in essence a series of instructions for the computer to follow” whether in mathematical formula, or a word description of the procedure, or shown in a flow chart. The court also observed that “[t]he preferred definition of ‘algorithm’ in the computer art is: ‘A fixed step-by-step procedure for accom-plishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps.’”

The court review the specification of the patents at issue and found that the following excerpt of the specifcation sufficiently disclosed an algorithm:

Cross-Referencing imports that, for each answer field, the entered response can be related to a library to determine if the response in the answer field is existent in the library. In other words, the answer information is cross-referenced against that specific library. If it is available in that library, then, corresponding to that library entry, an action is executed. For instance, the associated action can involve an overlay window that alerts the user of the fact of the match with the library entry, or dis-plays the contents of an information field stored in association with that entry in the memory.

The court affirmed on the issue of non-infringement and reversed on the issue of invalidity.

Sufficient Computer Structure Disclosure for Means-Plus-Function Elements

HTC Corp v. IPCom GMBH, Dkt. No. 2011-1004 (Fed. Cir. Jan 30, 2012) [PDF].

HTC sue IPcom for declaratory judgement of non-infringement of IPCom’s Patents, including U.S. Pat. No. 6,879,830 and IPCom countersued for infringement. The ‘830 patent is directed to the handover of a cellular phone from one base (tower) to another, as for example, when a person uses a cell phone in a car traveling between coverage areas.  The invention is intended to reduce the chance of service interruption during the handover.

Claim 1 provides:

A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:

storing link data for a link in a first base station,

holding in reserve for the link resources of the first base station, and

when the link is to be handed over to the sec-ond base station:

initially maintaining a storage of the link data in the first base station,

initially causing the resources of the first base station to remain held in reserve, and

at a later timepoint determined by a fixed pe-riod of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:

an arrangement for reactivating the link with the first base station if the handover is unsuc-cessful.

At summary judgement, HTC claimed that claims 1 and 18 (similar to claim 1), were invalid as indefinite because (1) they claimed both an apparatus and method steps and (2) the patent failed to disclose structure corresponding to the claimed means-plus-function element “arrangement for reactivating.”

Over Emphasis on Prosecution History. While the district court found the claims invalid because they claimed both apparatus and method steps, the Federal Circuit disagreed.  The Federal Circuit found the claim was an apparatus claim directed to a moble station (cellular phone) to be used within a network. In interpreting the claim language the Federal Circuit considered factors set out in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc): (1) the words of the claim, (2) the specification, (3) the prosecution history, and (4) extrinsic evidence. The Federal Circuit found that the district court put too much emphasis on the prosecution history. The patentee in response to an office action stated, “the cited section of [the prior art reference] clearly describes a process that is completely different from the claimed process. . .” (emphasis added). The Federal Circuit  noted that “claim language and the specification generally carry greater weight than the prosecution history.” The court found that the attorney’s signle reference to a “process” in response to an office action was insufficient when viewed in relation to the plain language of the claims and specification.

Sufficient Computer Structure. The Federal Circuit found that the district court erred in finding that the disclosure of a processor and transceiver was sufficient structure. The Federal Circuit noted that when considering whether their is sufficient support in the specification for a means-plus-function limitation, the disclosure of a general purpose computer or micro processor is not enough. Instead an algorithm must also be disclosed which the computer/processor executes. A patent must disclose “a means for achieving a particular outcome, not merely the outcome itself.” Yet, the appellate court found HTC waived any argument regarding whether the ‘830 patent disclosed a sufficient algorithm.

Further, the Federal Circuit rejected HTC’s argument that the specification needed to disclose the precise circuitry, components, or schematics or controllers would be employed. The court provided that level of hardware disclosure is not necessary, stating “as long as a sufficient algorithm describing how a general-purpose computer will perform the function is disclosed, reference to such general-purpose processors will suffice to overcome an indefiniteness challenge.”

High Bar for Implied Redefinition of Claim Term

Thorner v. Sony Computer, Dkt. No. 2011-1114 (Fed. Cir. Feb 1, 2012) [PDF].

Craig Thorner and Virtual Reality Feedback Co. sued Sony Corporation alleging  Sony’s game controllers with tactile feedback infringed U.S. Patent No. 6,422,941. On appeal Thorner argued that the district court erred in the construction of two term from claim 1.

Claim 1 provides in relevant part:

In a computer or video game system, apparatus for providing, in response to signals generated by said computer or video game system, a tactile sensation to a user of said computer or video game system, said apparatus comprising:

a flexible pad;
a plurality of actuators, attached to said pad, for selectively generating tactile sensation; and
a control circuit . . . for generating a control signal to control activation of said plurality of actuators . . . .

District Court Claim Construction. The district court construed the term (1) “flexible pad” to mean “capable of being noticeably flexed with ease” and (2) the term “attached to said pad” to mean attached to the outside of the pad.” The district court reasoned that the specification redefined the term attached by implication.

Claim Term Meaning. The Federal Circuit noted that words of a claim are given their ordinary and customary meaning (ordinary meaning rule) as understood by one skilled in the arts unless (1) the patentee acts as a lexicographer and provides his own definition, or (2) patentee disavows the full scope of a claim in the specification or during prosecution.

Term Use Only One Way in Spec Not Alone Limiting. The court held that the fact that the specification never used a word of a claim in reference to an embodiment that would cover the accused device–here the specification never used the word “attached” to refer to an actuator located on the interior of a controller–does not implicate either exception to the ordinary meaning rule. In other words the court said “[i]t is not enough that the patentee used the term when referencing an attachment to an outer surface in each embodiment.” The court noted that the plain meaning of the term attached included both internal and external attachment. Therefore, the court concluded that the district erred in restricting the term “attached” to only external attachment.

High Standard for Implied Redefinition. Further the court stated that for a term to be impliedly redefined, the redefinition must be be so clear that it equates to an explicit redefinition. The court stated that referring to two terms as alternatives or “disclosing embodiments that all use the term the same way” is not enough to redefine a claim term. The court said “A person of ordinary skill in the art would have to read the specification and conclude that the applicant has clearly disavowed claim scope or acted as its own lexicographer.”

The court also concluded that the district court erred in limiting the term “flexible pad” to those “capable of being noticeably flexed with ease.”