Back from the Dead: Post-Alice Case-law Revives Software Patent Outlook
Posted on May 2, 2016 in Blog
When the Supreme Court issued its opinion in Alice Corp. v. CLS Bank Int’l, 134 S.CT. 2347 (2014) that rejected patentability for algorithms, many considered this a death knell for software patents even though the ruling never once used the term “software”. Since Alice, it has become nearly standard practice for courts to entertain early motions to dismiss software patent-based complaints for invalidity under 35 U.S.C. 101.
Alice, drafted by Justice Thomas, gave us a nebulous two-part test asking first: whether the claim recites an abstract idea, and second: whether the elements of the patent claim as a whole contain an “inventive concept” sufficient to transform the abstract idea into a patent-eligible application. Thomas was roundly criticized for his statement that “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case”—a quip that launched a thousand motions to dismiss and probably ten times as many claim rejections by patent examiners.
Two recent cases, however, show courts limiting the Alice ruling, relying significantly on the Federal Circuit case DDR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). The oft-cited nugget from DDR asks whether “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” and if so, such claims are not “abstract.” In DDR, the Federal Circuit upheld claims directed to keeping a website user at a host web site even while viewing a third party’s merchandise instead of the user being redirected off the host site to the third party site. Fair enough, a “problem specifically arising in the realm of computer networks.”
Three recent cases show the blossoming of this concept. In the District of Delaware, Judge Robinson, citing DDR, recently declined to dismiss under 35 USC 101 the following claim of US Patent no. 6,604,101:
A method for performing a contextual search and retrieval of documents in a computer network comprising: receiving through an input device, a query in a first language, processing said query to extract at least one content word from the query; performing dialectical standardization of the at least one content word extracted from the query; translating the at least one dialectically standardized content word into a second language through a translator; performing a contextual search in the second language based on at least one translated content word, using a search engine in the second language; and obtaining the search results in the second language in the form of at least one of site names (URLs) and documents, satisfying a search criteria. Improved Search, LLC v. AOL Inc., Civ. No. 15-262-SLR. (Mem. Op. March 22, 2016).
One struggles to see how language translation is a problem specifically arising in the realm of computer networks, but, at least for now, the parties will have the opportunity to explore that concept in depth as the case proceeds.
In a much easier case to justify escaping Alice¸ Judge Robinson on the same day refused to dismiss this claim of US Patent no. 6,130,761:
An image scanning method for a scanner, the method comprising steps of: determining a driving signal, a triggering signal, and a number of rotation steps according to a predetermined resolution, wherein a period TG of the triggering signal equals a period TM of the driving signal multiplied by the number of rotation steps N within the period TG; driving a motor by the driving signal, outputting an image signal by the triggering signal; and storing the image signal within the period of the triggering signal. (Intellectual Ventures I, LLC, v. Ricoh Americas Corp. et al., Civ. No. 13-474-SLR).
Significantly, the Court recognized that this claim passes even the first Alice hurdle in that it is not directed to an abstract idea. Presumably, if the method steps involve hardware like motors and scanners, as opposed to the physical components of computers they do not amount to an abstract idea.
In the Eastern District of Texas, Judge Gilstrap denied a motion to invalidate the following claim of US Patent no. 8,713,476 to a graphical user interface (GUI) in Core Wireless Licensing S.a.r.l. v. LG Electronics, Inc. (2:14-cv-911-JRG-RSP).
A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an un-launched state.
In refusing to invalidate the claim on summary judgment, the Court cited DDR that claims “‘rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks’ are concrete, not abstract.”
Should courts follow this opinion graphical user interfaces would be pretty much guaranteed to pass 35 USC 101 muster, since by its very nature a computer interface is “rooted in computer technology.” A counter argument is that GUI claims such as the one above solve only the most rudimentary problem of information storage, which is how to index and find what one is looking for, which is rooted not in computer technology but in the ancient technology of written documents and libraries containing them.
As the post-Alice case law evolves, cautious optimism for software patents may now be the catch phrase at least where one can make the case for those “rooted in computer technology.”