Tranxition, Inc. v. Lenovo (United States) Inc. (Fed. Cir. 2016)

Federal Circuit Finds Another Software Patent Invalid under Section 101

By Joseph Herndon --

The U.S. Court of Appeals for the Federal Circuit issued a recent non-precedential decision in a case captioned Tranxition, Inc. v. Lenovo (United States) Inc.

Tranxition sued Lenovo asserting claims of U.S. Patent Nos. 6,728,877 and 7,346,766.  Shortly thereafter, Tranxition also asserted the patents against Novell, Inc. now known as Micro Focus Software in a separate action.  Lenovo subsequently moved for summary judgment under Rule 56(a) of the Federal Rules of Civil Procedure arguing that all the patented claims were invalid because they were targeted to patent-ineligible subject matter under 35 U.S.C. § 101, and the District Court agreed with Lenovo.

Tranxition appealed from a final decision of the United States Court for the District of Oregon finding that all claims of the '877 patent and the '766 patent are invalid because they are directed to ineligible subject matter under 35 U.S.C. § 101.

The Federal Circuit affirmed the District  Court's holding, and held that the claims generally provide instructions to a practitioner on how to transition settings between computers.  The claimed steps were found to merely describe a generic computer implementation, using routine, conventional activities, and thus, the claims were held invalid under 35 U.S.C. § 101.

Subject Matter of the Patents

The '877 patent and the '766 patent, which is a continuation of the '877 patent, concern computer system upgrades.  The patents describe that typically, a person's computer system contains many individualized settings, such as email addresses, desktop settings, and stored passwords.  When a computer is replaced, those settings do not appear on the new computer by default.  In order for a replacement computer to behave like its predecessor, consumers must manually "migrate" the settings on the old computer to the new computer, which is a time-consuming process, resulting in user frustration and lost productivity.  The '877 patent and the '766 patent propose to solve these problems by automatically transitioning these settings between computers.  This would provide an advantage over the prior art because it is desirable to provide an automatic migration of configuration settings from an old computing system to a new computing system without using a time consuming manual migration process.

Claim 1 of the '877 patent is representative of all claims for purposes of the analysis, and is reproduced below.

1.  A method in a computer system for preparing configuration settings for transfer from a source computing system to a target computing system, the method comprising:
    providing configuration information about configuration settings on the source computing system, the configuration information including a name and location of each configuration setting;
    generating an extraction plan that identifies configuration settings to be extracted from the source computing system, the generating including providing a list of configuration settings known to the source computing system and including identifying active configuration settings out of the provided list of configuration settings to be extracted from the source computing system;
    extracting the active configuration settings of the extraction plan from the source computing system, the extracted configuration settings being located using the provided configuration information;
    generating a transition plan that identifies configuration settings to be transferred from the source computing system to the target computing system, the generating including providing active configuration settings of the extraction plan and including identifying from the active configuration settings of the extraction plan active configuration settings to be transferred from the source computing system to the target computing; and
    for each active configuration setting of the transition plan, retrieving the extracted configuration settings identified as active configuration settings of the transition plan; and
    transitioning one or more of the retrieved configuration settings from a format used on the source computing system to a format used on the target computing system.

The Federal Circuit outlined the two step process to determine whether a claim is patent-eligible.  First, the court determines whether the claims at issue are directed to a patent-ineligible concept.  Second, if the claims are directed to patent-ineligible subject matter, the court determines if the claims contain an "inventive concept" sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

Step One

Under step one of Alice, the court first determines whether a claim is directed to a patent-ineligible concept.  The Federal Circuit noted that for claims solely implemented on a computer, they have previously found it "relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea," as in Enfish.

Here, the Federal Circuit stated that it is undisputed that manual migration is an abstract idea.  However, according to Tranxition, the claim is directed to "transitioning" settings from one computer to another, which is a specific software-based solution to a computer-based problem and "exceeds the abstract concept of migration."

The Federal Circuit was not convinced by this argument.  According to the specification, the patent is directed to solving problems arising out "migration," which was performed manually.  To solve these problems, the patent proposes automatic transitioning of configuration settings as a solution, and explains it is desirable to provide an automatic migration of configuration settings from an old computing system to a new computing system.  The Federal Circuit summarized the stated aim of the patent as automating the migration of data between two computers, which is not sufficient under step one of Alice.

The Federal Circuit did not find this claim to be directed to an improvement to computer functionality since there is nothing in the claim to suggest that, once settings have been transitioned, the target computer will be any more efficient.  The claim merely "transitions" data from one computer to another, and thus automates the migration process.  As a result, the Federal Circuit found that the claim is directed to the abstract idea of migration, or transitioning, of settings.

Step Two

Having determined that the claim is directed to an abstract idea, the Federal Circuit next determined whether it contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.

Tranxition argued that the claims contain an inventive concept because a manual process would not necessarily capture all the configuration settings in a computer and that there is no record evidence showing that the automated transition process operates in the same way as a manual process.

The Federal Circuit noted that although a computer could potentially have dozens, if not hundreds of settings across numerous applications, the claim language only requires one or more configuration settings.  The claim language does not provide a maximum number of settings.

The Federal Circuit further opined that it is necessarily true that a human might apply an abstract idea in a different manner from a computer, but what matters is the application.  Stating an abstract idea while adding the words "apply it with a computer" will not render an abstract idea non-abstract.

Here, the claim instructs a practitioner to (1) provide configuration information, (2) generate an extraction plan, (3) extract the configuration settings, (4) generate a transition plan, and (5) transition those settings to a new computer.  The Federal Circuit found that these steps, both individually, and as an ordered combination, do not disclose an inventive concept.  Rather, these steps merely describe a generic computer implementation, using "routine, conventional activities," of the abstract idea, which is insufficient to transform the patent ineligible abstract idea into patent-eligible subject matter.

Because the Federal Circuit found the claims to be are directed to an abstract idea, and there is no inventive concept present, the claims of the '877 patent and the '766 patent were held to be drawn to patent ineligible subject matter and therefore invalid under 35 U.S.C. § 101.

Tranxition, Inc. v. Lenovo (United States) Inc. (Fed. Cir. 2016)
Nonprecedential disposition
Before Chief Judge Prost and Circuit Judges Reyna and Chen
Opinion by Chief Judge Prost

Comments

[Paul Cole]

If you download the first of the patents in issue, the drawings appear very linear, devoid of significant branching or feedback features which could indicate genuine ingenuity. It is therefore difficult to see what was the innovation which creates genuine new function and is the inventors' own discovery.

Interestingly,the corresponding EP-B-1173809 was granted with minimal difficulty and there was no opposition filed.

[EG]

Hey Paul,

As you note, patent-eligibility law here in the States is currently a strange beast, and will remain as such until Congress tells SCOTUS to "toe the line," or more appropriately, read no exceptions into 35 USC 101.