35 USC 101, Still a Sea of Questions

Two recent non-precedential opinions out of the Court of Appeals for the Federal Circuit indicate how patent eligibility continues to have a bleak future in the federal judiciary. Automated Tracking Solutions v. Coca-Cola Company, Case No.: 2017-1494 (Feb. 16, 2018); Intellectual Ventures I&II v. Symantec et al., Case Nos: 2017-1814 & -1858 (Mar. 15, 2018). Intellectual Ventures and Automated Tracking involve data management and computer-assisted inventorying, respectively. Promoting the progress of science in data management and computer-assisted inventorying might be desirable since computing is, after all, a hard-core science and a pillar of this Information Age. However, Section 101’s recent application continues to puzzle many practitioners and beg serious questions…

In Intellectual Ventures v. Symantec, the Court of Appeals panel affirmed the district court’s grant of summary judgment for ineligibility. The invention in representative claim 25 regarded a method of remotely storing data.

25. A method for remote mirroring of digital data, said method comprising the steps of:

copying the data from a primary network server to a nonvolatile data buffer in a data transfer unit which is digitally connected to the primary network server, the primary network server including an operating system which is capable of accessing a nonvolatile server store, the data copied to the data transfer unit being a substantially concurrent copy of data which is being stored by the operating system in the nonvolatile server store of the primary network server;

copying the data from the data transfer unit to an input end of a communication link which has an output end physically separated from its input end;

generating and sending a spoof packet to the operating system of the primary network server; and

copying the data from the output end of the communication link to a nonvolatile server store on a remote network server.

The COA panel endorsed the reasoning of the district court in finding the claim directed to the abstract idea of “backing up data, and that the claim limitations lacked an inventive concept as they invoke conventional computer components that do not function in combination in an inventive manner.” Outside of this, the court provided little analysis as to why the claims were directed to the abstract concept of backing up data? For example, the claims do not recite data backup in the way that many household computers do, e.g., a word processor that automatically saves every X minutes. Such backup methods do not use “primary network servers,” nor do they “access a nonvolatile server” as recited in claim 25. Even though these elements may not be novel components, their inclusion in the claims narrows the invention to a particular implementation of backing up data.

The scant and conclusory opinion of Intellectual Ventures v. Symantec leaves us wondering (as usual): respectfully, what is the judiciaries’ problem with computer process and system claims on 101? In other words, what policy reasons are driving their assault on patent eligibility? With recent §101 opinions, judges seem to write more like dispassionate robots than sage instructors, reciting the Mayo/Alice formula without much explanation as to what really “offends” them about the claim(s). E.g., the practical reasons why the claims should not be allowed or the potential harms to the parties are nearly never spelled out. What do courts really care about on §101? Years into Mayo/Alice, this is still a burning question.

In Automated Tracking Solutions v. Coca-Cola, a Court of Appeals panel attempted to explain why it considered the representative claim directed to the abstract concept of “collecting data, analyzing it, and determining the results of the analysis of data” (or inventorying). Representative claim 1 of the ‘766 patent was listed in the opinion as follows:

[if !supportLists]1. [endif]A system for locating, identifying and/or tracking of an object, the system comprising:

a first transponder associated with the object;

reader that is configured to receive first transponder data via a radio frequency (RF) signal from the first transponder;

an antenna in communication with the reader and having a first coverage area;

a processor coupled to the reader, wherein the processor is configured to receive the first transponder data from the reader and to generate detection information based on the received first transponder data, the detection information comprising first sighting and last sighting of the first transponder in the first coverage area; and

a storage device that is configured to store the detection information.

Judge Stoll wrote (under step one) that the claims “simply do not require a particular configuration or arrangement of RFID system components.” (emphasis given). However, because the objective of the claimed invention was to achieve wireless inventory communications and the abstract concept is essentially inventorying, one would think that the particularity of the configuration would need to relate to that abstract concept, not radio frequency identification (RFID). Using radio/wireless means to communicate resource information is a particular configuration of the abstract concept of inventorying. The claim limitations were not analyzed against the abstract concept (inventorying) to determine whether the claims were directed to the abstract concept or merely involved it. Furthermore, limitations like receiving the “first sighting and last sighting of the first transponder in the first coverage area” would need to be considered in assessing whether a particular implementation of inventorying was sought to be claimed. (emphasis given).

Not surprisingly, under step 2 of Mayo/Alice, the panel in ATS did not find the additional claimed features sufficient to transform the claim into eligible subject matter as courts nearly never do on §101. This is despite the court’s obligation to accept as true all the patentee’s plausible allegations in the complaint about the additional features being nonconventional on Rule 12. Without finding support for the complaint’s allegation that RFID was a “developing technology,” the panel pointed to the patent specification’s reference to several claim features also being configurable in a “simple RFID” in the “Summary of Invention” section of the issued patent. This is concerning because patentees do not generally make admissions about the prior art (or state of the art) outside of the background section of the patent. It is difficult to be certain that the patent drafter intended to give the impression of characterizing the state of the art under the circumstances.

Automated Tracking Solutions leaves us further questioning, how can we be sure that an identified abstract concept remains the focal point and primary comparator of step 1? Also, nothing of the court’s policy considerations in either step of Mayo/Alice is apparent from this decision; so, it fails to instruct as to what the court’s real grievance is with the issued claims. Finally, one might ask what types of allegations of inventiveness need be in the complaint or specification to survive a §101 Rule 12 dismissal—especially when any disclosure from the specification can be construed as an admission about the state of the art?