IN OUR previous post we explained how buzzwords were being used by both the EPO and USPTO to allow some software patents. This isn't good, but one must remember that a patent being granted by a patent office isn't the final stop; courts too must examine and rule on the matter, but only if it reaches the courts (i.e. not a settlement out of court or 'protection' money).
SimpleAir, Inc. v. Google LLC, No. 2016-2738, 2018 (Fed. Cir. Mar. 12, 2018) (Before Lourie, Reyna, and Chen, J.) (Opinion for the court, Lourie, J.)
The Federal Circuit vacated a district court order dismissing SimpleAir’s complaint as barred by claim preclusion and the Kessler doctrine, and remanded for further proceedings.
The Federal Circuit affirmed the decision on ۤ 101, reversed denial of JMOL on infringement of the '685 patent, vacated judgment for damages as a result of its decision on '685 patent infringement, and remanded for the District Court to recalculate damages, in a decision by Judge Moore joined by Judge Bryson; Judge Hughes dissented.
The majority set forth the now canonical two-prong test for subject matter eligibility under Mayo and Alice: the claims need to be "directed to" a law of nature, natural phenomenon or abstract idea, and there must be "something more" amounting to an "inventive concept" that is not merely "routine, conventional, and well-understood" in the prior art. Here, the majority spends little time on the first prong, accepting without comment that the claimed invention is dependent on the "natural law" that body temperature can be measured from skin temperature at the forehead. The District Court had relied on Diamond v. Diehr, 450 U.S. 175 (1981), for the principle that claims can recite "additional steps" that "transformed the underlying natural laws into inventive methods and useful devices that noninvasively and accurately detect human body temperature." These steps, which included "(1) moving while laterally scanning ('685 patent claims 7, 14, and 17; '938 patent claims 17, 24, 33, 60, and 66); (2) obtaining a peak temperature reading ('685 patent claim 7; '938 patent claims 60 and 66); and (3) obtaining at least three readings per second ('938 patent claims 17, 24, 39, 40, 46, and 49)" were known in the prior art but that was not enough. According to the District Court "simply being known in the art did not suffice to establish that the subject matter was not eligible for patenting" because "a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made," citing Diehr. The distinction (and in some ways the distinction missing from much of ۤ 101 jurisprudence post-Mayo) is that these methods were used for a different purpose in the prior art, in this case detecting "hot spots" indicative of tumors, fractures, or other injuries (and in at least some testimony, used in horses not humans). In addition, the invention here newly provided a "calculated coefficient for translating measurements taken at the forehead into core body temperature readings" which was not routine, well understood or conventional in the prior art.
I have not spent too much time trying to determine whether the court here accurately applied the tests mandated by Alice, Mayo and their progeny. My discomfort comes from the specific result (that the claims are not, as a whole directed to patent eligible subject matter) more than the general result (patent invalidity) or the path to it. At bottom, all inventions work because of the physics, math, etc. governing their structure and operation. The claims here seem directed, as a whole, to the manufacture of automotive drive shafts. It seems certain to me that even a few years ago, it would have been unthinkable to challenge such a claim on Section 101 grounds. Was the patent bar really that disconnected from the statute for the past century? Is the sea change brought on by Bilski, Alice and Mayo based not on difficult questions brought on by the nature of information age inventions but instead on a longstanding, fundamental misunderstanding of the statutory statement of what our patent system is intended to protect?
The case has good shot at being heard by the whole court. I expect that the court would agree with Judge Moore that underlying factual issues are possible in the eligibility analysis, the exercise is not “a predominately factual one that ‘opens the door in both steps of the Alice inquiry for the introduction of an inexhaustible array of extrinsic evidence, such as prior art, publications, other patents, and expert opinion.'” (HP Petition, quoting Judge Reyna’s dissent in Aatrix).
Finjan Inc. owns patents on technology involving computer and network security. Its patents are directed toward behavior-based internet security, addressing a method of “identifying, isolating, and neutralizing” potentially malicious code based on the behavior of that code rather than by scanning and maintaining a list of known viruses and malicious code signatures like so many other providers of internet security software.
Patent claims serve to provide notice as to the scope of an invention described in a patent. The claims can be directed to various statutory types, such as an apparatus, article, composition, method, system, or any other patentable subject matter.
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CRM claims combine the functionality of method claims with the tangibility of apparatus claims: they recite operations typically provided in a method while being directed to a physical memory having instructions that are executable to cause such operations. Accordingly, whereas it is uncertain whether a method can be “sold,” “offered for sale,” or “imported” for purposes of infringement under €§ 271, the Federal Circuit has held that CRMs can be. For example, in Finjan v. Secure Computing Corp., the Federal Circuit affirmed that the defendant infringed the plaintiff’s CRM claims because the defendant had “sold” an infringing software product.[14] And while each step of a method must actually be performed in the United States to be infringed, the court in Finjan did not require that the instructions stored in the infringing CRM actually be executed. The court reasoned that, “to infringe a claim that recites capability and not actual operation, an accused device ‘need only be capable of operating’ in the described mode.”[15] Thus, CRM claims can operate like apparatus claims for purposes of an infringement analysis.