35 U.S.C. §101 is the statute that addresses the basic question of “is this invention the type that is patentable.” Lately the USPTO and the courts have had trouble answering this question consistently. We’ve discussed the decision in Alice repeatedly, and why its lack of clarity on what constitutes an “abstract idea” has made the prosecution of patents for software, business methods and other less tangible inventions a challenge. However, a series of recent court decisions have shed some much needed light on Alice’s two-prong test and how to avoid and fight §101 rejections.
The first case, Enfish, LLC. v Microsoft Corp., dealt with the first prong of the Alice test: namely whether the claims are directed towards an abstract idea. In Enfish, the Federal Circuit reversed a district court ruling that the claims in a patent about data organization were “invalid as ineligible under §101”. Enfish had sued Microsoft for infringement of two U.S. patents, 6,151,604 and 6,163,775. These patents cover a “self-referential” data table model for storing information. In its reversal the court pointed to two features that made the invention distinct from traditional data systems. In particular, the court pointed out that the model in question “can store all entity types in a single table, and . . . can define the table’s columns using rows in that same table.” These features provide a number of advantages over traditional data structures from a technical standpoint and the net result is that data can be accessed and modified more quickly by a computer when it is organized this way. The Federal Circuit applied a test for patent eligible subject matter that asked “whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” The Enfish patents were found to be “directed to a specific improvement to the way computers operate”, and thus were patent eligible. The improvements over the prior art made the computer operate more efficiently, improving the ability of the computer to perform a task, rather than the invention simply being improving the performance of a task by using a computer.
Another recent case, Bascom Global Internet Service, Inc. v. AT&T Mobility LLC, dealt with the second prong of the Alice analysis: if the invention involves an abstract idea, does it deal with “something more”. In Bascom, the patent holder claimed infringement of Patent 5,987,606, which is directed to a means for filtering internet traffic. The district court had found the claims ineligible under §101. The Federal Circuit reversed, holding that while the invention involved an arrangement of known elements in internet filtering, the elements were arranged in a non-conventional way. The filtering tool was installed at a specific, upstream location for internet traffic. Although filtering “content on the Internet” is an abstract idea, the ‘606 patent recited more than simply implementing this idea on a generic computer with a predictable result.
In a third case, McRo, Inc. v. Bandai Namco Games America Inc., McRo sued for infringement of U.S. Patents 6,307,576 and 6,611,278 which are directed to a method for synchronizing animated lips and facial expressions. While facial expressions, audio, and animated lips have been synchronized by software for some time, animators often had to manually insert specialty frames into video sequences in order to make the final product more realistic. Again, the Federal Circuit overruled the district court’s conclusion that the claims of the patent were ineligible under §101, holding that the claimed method did not simply replace the manual process with an automated digital one. Instead, the method improved upon the prior art by proposing rules for altering animated frames in areas where only animators had previously been able to operate.
These rulings, while not a complete clarification of the Alice standards, are a promising start. They provide paths for overcoming §101 rejections, and give further clarification to the Alice analysis. Using this information, patents can be drafted with a better chance of avoiding, or least overcoming §101 rejections. It’s likely that the Federal Circuit will continue to review cases requiring §101 analysis, and in each instance will hopefully continue to shed light on what is required to patent business methods and software.
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