Patent Eligibility Requires Consideration of the Claim as a Whole
By Joseph Herndon --
The U.S. District Court for the Northern District of Ohio (Eastern Division) issued an opinion on December 21, 2015 in the case captioned 01 Communique Laboratory, Inc. vs. Citrix Systems, Inc., et al. (case no. 1:06-cv-253) regarding patent eligibility under 35 U.S.C. § 101 of software claims.
The Court found the patent claims to be eligible under § 101. The claims at issue are claims independent claim 24 and dependent claim 45 in U.S. Patent No. 6,928,479 (the '479 patent").
Independent claim 24 is provided below.
24. A computer program product for use on a server computer linked to the Internet and having a static IP address, for providing access to a personal computer from a remote computer, the personal computer being linked to the Internet, its location on the Internet being defined by either (i) a dynamic public IP address (publicly addressable), or (ii) a dynamic LAN IP address (publicly un-addressable), the computer program product comprising:
(a) a computer usable medium;
(b) computer readable program code recorded or storable in the computer useable medium, the computer readable program code defining a server computer program on the server computer wherein:
(i) the server computer program is operable to enable a connection between the remote computer and the server computer; and
(ii) the server computer program includes a location facility and is responsive to a request from the remote computer to communicate with the personal computer to act as an intermediary between the personal computer and the remote computer by creating one or more communication sessions there between, said one or more communication sessions being created by the location facility, in response to receipt of the request for communication with the personal computer from the remote computer, by determining a then current location of the personal computer and creating a communication channel between the remote computer and the personal computer,10 the location facility being operable to create such communication channel whether the personal computer is linked to the Internet directly (with a publicly addressable) dynamic IP address or indirectly via an Internet gateway/proxy (with a publicly unaddressable dynamic LAN IP address).
The '479 patent is owned by Communique, and the claimed invention is a "system, computer product and method for providing a private communication portal" through which individuals may remotely access a personal computer from a remote computer using a locator server acting as an intermediary between the personal and remote computers.
The Court utilized the two-part framework set forth in Mayo for distinguishing patent claims that cover laws of nature, natural phenomena, or abstract ideas from patent eligible claims. The first step is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." If the claim is not directed to one of the three patent ineligible concepts, no further analysis is required -- the claim is patent eligible under § 101. But if the claim is directed to an abstract idea, the Court must undertake the second step of Mayo to determine whether the elements of a claim, "both individually and 'as an ordered combination,'" contain "additional elements" that "transform the nature of the claim into a patent-eligible application" of an abstract idea.
The Court cited several cases in which the claims were found to be directed to abstract ideas, and noted those as examples including claims directed to algorithms, mathematical formulas, and conventional economic and business principles and practices, such as hedging risk and use of an intermediary; methods equivalent to human mental work; "[a]ge-old ideas [and] basic tools of research and development, like natural laws and fundamental mathematical relationships"; methods of budgeting; use of advertising as currency; guaranteeing a party's performance; automated call distribution; computerized telephone call routing system; and customizing content based on information known about customer.
The Defendant asserted that claim 24 usurps the abstract idea of an intermediary connecting two endpoints, and adds nothing of a technical nature. The Defendant further argued that claim 24 covers an abstract idea of an intermediary that, in response to a request for communication, finds a current location of the requested endpoint and creates a connection between the two devices, and argued that the invention could be, and was, performed by humans when telephone operators connected one caller to a second caller at the first caller's request.
However, the Court found that the Defendant's analogy breaks down when claim 24 is considered as a whole, as the Supreme Court in Alice requires. The Court noted that while an operator can connect callers, the operator could not do so if the recipient of the call has a dynamic (changing) phone number that is unknown to the operator (publicly unaddressable IP address). In addition, the "then current location" of the personal computer in claim 24 is not simply the personal computer's current IP address -- or a telephone number in the analogy -- but includes determining the then current "communication session for communicating with the personal computer."
The Court also noted that to further determine if a claim is directed to an abstract idea, "the court must identify the purpose of the claim -- in other words, determine what the claimed invention is trying to achieve -- and ask whether that purpose is abstract." Here, the purpose of claim 24, as reflected in the '479 patent specification, in creating the private communication channel for remote access is not simply to allow people to talk with each other, but to allow direct access of data on the personal computer from the remote computer. A telephone operator cannot and does not provide the caller with direct access to data on the callee's desk. The Court found that the Defendant oversimplified the subject matter of the '479 patent and claim 24 in an attempt to characterize the invention as an abstract idea.
Thus, the Court found that the '479 patent and claim 24 are not merely directed to a broad concept of remote access or automatic call routing, and that the '479 patent and claim 24 do not involve a basic or fundamental business or economic practice or principle, algorithm, a conventional idea that existed in a pre-Internet world simply implemented by a computer, or an idea that could be performed by humans.
Rather, the Court noted that claim 24 describes a "particular approach" to solving problems with prior art remote access patents that could only exist in a post-Internet world, utilizing a "location facility" that creates the private communication portal between the personal and remote computers in a specific way, even if the IP address of the personal computer is dynamic and not publicly addressable, to achieve the solution taught by the '479 patent.
Thus, the Court concluded that the '479 patent and claim 24 are not directed to an abstract idea. The Court further noted that even if claim 24 were determined to be an abstract idea, the claim would still be patent eligible under the second step of the Mayo analysis.
For purposes of completion of the analysis, the Court examined the claim under the second step of the Mayo test that requires the Court to "search for an 'inventive concept' . . . that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'"
The Court stated that a "software patent can be eligible under § 101 when it claims a solution to a problem necessarily rooted in computer technology, and does not merely recite a conventional business or economic practice known from a pre-Internet world that is simply implemented on a generic computer performing generic computer functions."
Again, here, the Court found that the Defendant failed to consider claim 24 as a whole, as required by Alice, by arguing that specific individual elements of claim 24 were previously known, and that "under certain circumstances," remote access between two server computers was possible before the '479 patent. But the '479 patent does not claim to invent each individual element of the claim or remote access, but to solve the problems with existing remote access technology.
The '479 patent and claim 24 disclose a specific solution, rooted in computer technology, to remote access problems that can only arise in the realm of computer networks, and accomplishes that solution even in the face of specific Internet-centric challenges.
In summary, the Court followed the two-step framework as required and found that the claims satisfy section 101. Notably, the Court ignored arguments against elements of the claim individually, and required the theoretical consideration of the claim "as a whole".
Most helpful to the patent owner is also probably that the claim is easily found to be necessarily rooted in computer technology for solving a specific problem that existed.
In reviewing this opinion, I find parallels to prosecution of pending U.S. patent applications at the USPTO. Many Examiners issue Office Actions alleging that claims are ineligible under 35 U.S.C. § 101, but they do not consider the claim as a whole. Moreover, often times, Examiners oversimplify the subject matter of the claims in an attempt to characterize the invention as an abstract idea by simply ignoring aspects of the claims during the section 101 analysis, or by characterizing novel aspects recited in the claims are routine, or generic computer implementation. This opinion offers some guidance on strategies for responding to such rejections in instances in which the Examiner may not have fully appreciated the breadth of the claim.
Further, it is helpful to see additional examples of software claims found to be patent eligible, which today does not happen too often. When drafting and prosecuting patent applications, it is often helpful to show Examiners that Courts have found claims similar to those pending in the application to be patent eligible, and so looking to such cases as examples is a great way to strategize a scope of claims to file.
01 Communique Laboratory, Inc. vs. Citrix Systems, Inc. (N.D. Ohio 2015)
Opinion by Judge Lioi