Intellectual Ventures I LLC v. Symantec Corp. (Fed. Cir. 2018)

By Michael Borella --

Intellectual Ventures (IV) sued Symantec in the District of Delaware, alleging infringement of U.S. Patent No. 5,537,533.  The District Court invalidated the '533 patent on a summary judgment motion as being directed to patent-ineligible subject matter.  IV appealed.

Claim 25 of the '533 patent recites:

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.

Essentially, the claimed invention is a fairly straightforward backup process with the possible exception of the spoof packet, which is used to speed up the transaction.

The Supreme Court's Alice Corp. v. CLS Bank Int'l case set forth a test to determine whether claims are directed to patent-eligible subject matter under 35 U.S.C. § 101.  One must first decide whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to "significantly more" than the judicial exclusion.  But generic computer implementation of an otherwise abstract process does not qualify as significantly more.  On the other hand, a claimed improvement to a computer or technological process is typically patent-eligible.

Here, the Federal Circuit rapidly disposed of the matter:

[W]e conclude the district court did not err in finding claims 25 and 33 of the '533 patent ineligible under 35 U.S.C. § 101.  The district court correctly found that the claims were 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.

Once again, we have a § 101 case in which a broad, vague claim that likely would not be novel or non-obvious is disposed of under § 101 instead of § 102 or § 103.  The District Court even performed a de facto prior art analysis, stating that "[i]t is undisputed that institutions have long backed up data in general, and the specification even describes long-practiced methods of backing up digital data."  Nonetheless, despite IV's contention that the specification of the '533 patent described an improvement over the prior art, the District Court observed that "[t]he claims do not provide any concrete details that limit the claimed invention to a specific solution to the problem of remote back-up of digital data."  In other words, if there is a disclosed improvement, it is not in the claims.  Regarding sending the spoof packet, Symantec offered evidence that such an activity was conventional, and IV did not make a rebuttal.

Recently, the Federal Circuit's Berkheimer v. HP Inc. case held that when there is a material issue of fact over whether claims provide such an improvement, summary judgment is improper.  But here, the Court did not find such an issue:

Our recent decision in Berkheimer v. HP Inc. does not compel a different conclusion.  IV filed a notice of supplemental authority arguing that Berkheimer compels reversal and remand of the district court's judgment because "there is a genuine issue of material fact as to whether the '533 claims improve remote data mirroring in 'an inventive manner' or perform 'well-understood, routine, and conventional activities to a skilled artisan.'"  But, as the district court explained in detail, "the claims invoke conventional computer components that do not supply an inventive concept," and "[t]he specification confirms that the individual components . . . are conventional, generic, and operate as expected."  Moreover, the district court found that IV failed to offer evidence to show that the order of the steps was unconventional.  IV also acknowledged at oral argument that it did not offer expert testimony to show the lack of conventionality of its components.

As such, the Federal Circuit concluded that the District Court did not err in finding the '533 patent invalid under § 101.  And as an aside, anyone who thinks that backing up their data is an abstract concept should keep that in mind when their primary computer is lost, stolen, or crashes.

Intellectual Ventures I LLC v. Symantec Corp. (Fed. Cir. 2018)
Nonprecedential disposition
Panel: Circuit Judges O'Malley, Schall, and Wallach
Opinion by Circuit Judge O'Malley

Comments

[Paul Cole]

If you look at the patent spec you will find ample evidence that this is a serious invention directed at a real world problem. There are strong arguments that claim 1 defines a transformative "process" within the affirmative category of section 101. Although the 103 position may be open to question I am surprised at the 101 decision.

[Atari Man]

Paul Cole, how can anyone be surprised at any of these 101 decisions anymore? Many, like this one, are pure bovine excrement. With an extremely runny consistency (i.e., none) between different decisions.

[Martin H Snyder]

It's all abstract. Every bit of it. All electrons and information, using nothing but prior-art machines. The "invention" (if there is one) can be nothing more than a method (i.e. cannot be characterized as a machine, composition, or manufacture), and that method involves the manipulation of information, with the result being a collection of manipulated information.

Some people think logic and information have no place in the patent system. Others think that new, non-obvious logical and information based methods should be protected because they have undeniable utility.

That's the big question. The procedural question about 101 and 12(b)6 motions to me seems absurdly easy to solve- expand the Markman procedure, which is identically structured as a matter of law undergirded by mixed questions of fact, to include a formal construction of the invention- i.e. where exactly the invention is found in the claims and the nature of any included abstractions.

That the patent law provides that the inventor states the nature of the invention, but provides no formal step for an adversary or fact-finder to challenge or determine that nature as law of the case seems a clear imbalance that should be corrected procedurally. 12(B)6 seems hopelessly inadequate, and unfair to all concerned for that role.

[skeptical]

Three words for that “lack of consistency:”

Void for Vagueness.

[Skeptical]

Mr. Snyder,

As you supposedly work in the field, it pains me to remind you that software is not the execution of software.

Will you ever be able to get out of your own way?

I am highly:

[Mike Borella]

Software is a physical, tangible thing. Just because the 1's and 0's are too small to see, that doesn't mean that they do not exist. Execution of the software is also tangible, even if you can't see it happening. Devices that execute software are also tangible (and you can even see them). None of these items are literally an abstract idea. An equation, an algorithm in your head or on paper - sure those are abstract. But the whole abstract idea exclusion is a legal fiction that does not comport with reality. Which is why it is so hard to understand 101 decisions, and also why the courts can't figure out what to do with it.

[Paul Cole]

@ Atari Man

In the present context "surprise" is a polite euphemism.

What is surprising in the present developments is the concentration on judicial exceptions to the exclusion of positive compliance with one of the four eligible categories, which also deserves serious judicial consideration. Drafting of claims, possibly of narrower scope, that fall clearly into eligible categories is a possible antidote to the present judicial enthusiasms.

The argument: "This is clearly an eligible transformative process, therefore it cannot be a judicial exception" does not seem to have been tried extensively. The reason, very probably, is that many of the claims that have come before the courts simply do not have sufficient substance to fall clearly into one of the four categories. The remedy is in our own hands.

[Paul Cole]

@ Mike

This is not a case purely about software.

Data is being shifted from one physical machine to another which is a transformative physical process in the real world, and the object of the invention is to increase speed which is widely acknowledged as a legitimate technical problem for an inventor to solve. The decision is very short, but goes against fundamental considerations that have underpinned the patent system for at least two centuries.

Apart from that minor defect, the decision is much to be applauded.

[skeptical]

There are certain things that legal fictions should be used for and certain things that the use of legal fictions provides an assault against reality.

Further, when it comes to the statutory law that is patent law, there are certain USES OF legal fiction that should be employed by a selective branch of the government and then there are USES OF such legal tools that broach the separation of powers doctrine.

The Supreme Court muckery is constitutionally infirm for more than one reason.

[Martin H Snyder]

"An equation, an algorithm in your head or on paper - sure those are abstract"

They are no more "abstract" as neurons than they are as transistor gate arrays.

The meaning of the information is abstract- utterly abstract. The physical reality of the information is not. The utility arises from the meaning, and not any mechanical or chemical effect of the information, which is why I say it's all abstract.

I have suggested a reasonable compromise (see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2709289) because reasonable people can disagree on the nature of such abstraction.

[Skeptical]

Does a machine have a sense of the meaning of the "transitor gate arrays" to which you wish to ascribe the utility?

Is that through "magic?"

"Witchcraft?"

"Your say-so?"

Your "compromise" is in no way reasonable. You have yet to bother with really understanding the realm of patent law upon which you wish to play and put your "compromise."

Can you even come close to any sense of meaningful compromise without doing so?

I remain:

[Martin H Snyder]

Once again anon, your limited imagination contains your idea of this problem as a problem of law. It is not. It is a problem of politics- of political economy and philosophy. This problem did not exist per se in 1952, or at least not in a meaningful enough way to cause the law to reflect the reality of an information age where massive value was contained in processed information rather than the machines doing the processing.

It is you who fails to understand the terrain- would you deny the controversy or some driving factor that is "destroying" the patent system or causing all of this angst? Have not infringers always wished to infringe "efficiently"?

No- something changed. Something big. Face it.

[skeptical]

Once again Mr. Snyder, it is the accusations that you offer that describe your own position.

I would suggest that you drop that nasty habit that you picked up over at that other blog.

That you think the "political economy and philosophy" problem did not exist prior to 1952 only too easily shows your own lack of effort in understanding patent law and the history of the patent system in the US.

Rather, it is your own lack of imagination, coupled with a lack of appreciation for the terrain, coupled more with an unmitigated hubris as to your own "contribution" with your "compromise" which is neither a compromise nor a contribution of any meaningful level which is on display.

Yet again.

[skeptical]

Oh, and yes, that "something changed" is called innovation.

That is what the patent system is meant to promote. But you seem to lack a fundamental grasp of innovation theory as well. An enjoyable book for you may be Trott's Innovation Management and New Product Development. It is a light read with references to others in the innovation field.