By Michael Borella --
I. Introduction
The evolution of graphical user interfaces parallels the evolution of computing technology itself. As computers grow more powerful and sophisticated, so does their ability to display cutting-edge representations of information to users. Indeed, an entire field of academia, Human-Computer Interaction, has been established to address how to best allow humans to interface with computers, and graphical user interfaces are one of several modalities that are frequently studied.
The importance of providing a suitable experience for users of software applications cannot be overstated. One of the most visible aspects of any application is its user interface, which is often graphical. Good graphical user interfaces can help applications become successful, while poor graphical user interfaces have the opposite effect and are regularly the subject of frustration and criticism.
It would be sensible to assume that, as a field ripe with innovation, graphical user interfaces would be commensurately well-disposed for patenting. But this is not the case. Due to a series of Supreme Court decisions, as well as restrictive interpretations thereof by the Federal Circuit, patenting a graphical user interface can be fraught with peril.
This article applies current state of patent eligibility to inventions involving graphical user interfaces. In doing so, we develop a framework for assessing the patentability of such inventions and provide examples of claims that have both succeeded and failed to meet the eligibility standard.
Today we post Part I of this study and tomorrow we will port Part II
II. Subject Matter Eligibility Overview
A series of decisions by the Supreme Court from 2010 to 2014 significantly narrowed the scope of what is patentable under 35 U.S.C. § 101. This culminated in Alice Corp. v. CLS Bank Int'l, which held that claims of all statutory categories must have their eligibility determined by a two part test.
In a nutshell, the first part was described as "determin[ing] whether the claims at issue are directed to one of [the] patent-ineligible concepts" of laws of nature, natural phenomena, and abstract ideas. If this is the case, then for the second part one must "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements transform the nature of the claim into a patent-eligible application." The Court described the second part as "a search for an 'inventive concept'—i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.'"
While finding the claims in Alice directed to an abstract idea, the Court declined to actually define the term "abstract idea" in any meaningful fashion, noting that "we need not labor to delimit the precise contours of the abstract ideas category in this case." The Court's treatment of the "search for an inventive concept" was similarly elusive. Consistent with the prior holding of Mayo Collaborative Servs. v. Prometheus Labs., Inc., so-called "well-understood, routine, conventional activities previously known to the industry" would not clear this hurdle.
Recently, the Federal Circuit provided a major clue as to how to think about patent eligibility in practice. In Dropbox Inc. v. Synchronoss Techs. Inc. the Court wrote that "an inventive concept exists when a claim recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art." This suggests that in order for a claim to be successful under § 101, it should have three qualities: specificity, a technical solution that it provides, and some degree of novelty. More particularly, there should be a nexus between these three factors -- specificity, technical character, and an advance over the prior art should appear in the same claim element or at least be explicitly linked in some fashion in the recitation of the claim.
Support for the three factors being a more suitable proxy for eligibility than the Alice test can be found in case law. This point was argued at length with empirical support in a pair of previous articles: What is an Abstract Idea, Anyway? and The Three Properties of Patent-Eligibility: An Empirical Study.
Claim specificity is not the same thing as claim breadth, although in practice the two are correlated. Specificity, though, refers to whether and how much the claim recites a series of steps or set of elements that can be used to achieve a goal, rather than the goal itself. The latter style has been referred to as "result-oriented," "outcome-oriented," and "black box" claiming, where the claim recites what the inventor hopes to achieve without reciting how the inventor purports to have achieved that goal. The Federal Circuit often lauds the specificity of claims that it eventually finds eligible, while disparaging claims that lack this property.
Technical character is a bit trickier to explain. Notably, § 101 lacks any requirement that inventions be technical, and even Alice only hinted that such a requirement might be the case. But the Federal Circuit has run with these sub-dicta suggestions, using terms similar to "technical solution to a technical problem" among others to describe what it is looking for in eligible claims. To understand this property, it helps to imagine all inventions on a spectrum of technical character. Those at one extreme are clearly technical because they improve the operation of machines (e.g., engine control, error correction coding, image sharpening, memory management in a computer). Those at the other extreme are clearly more business-oriented than technical (e.g., derivative trading, annuity calculations, retail schemes). Put another way, the former improves how a machine works, while the latter improves how a business works. The fact that business-oriented inventions can be run on computers (and may even require computers to obtain meaningful results) is largely irrelevant to this analysis -- such claims are still "non-technical." Finally, in the middle of the spectrum we have inventions that improve how a person works (e.g., video game animations, livestock management, and in particular relevance to this discussion, graphical user interfaces). These could be viewed as either technical or non-technical depending on the actual claim language at play.
Novelty is a simple enough concept, and is well-understood in patent law, though the exact nature of the de facto prior art analysis under § 101 is unclear. Nonetheless, comparisons between claimed inventions and prior art are found in a vast number of § 101 decisions including the aforementioned Enfish and McRO cases, as well as Koninklijke KPN N.V. v. Gemalto M2M GmbH, Chamberlain Group, Inc. v. Techtronic Indus. Co., and Cellspin Soft, Inc. v. Fitbit, Inc., just to name a few. Claims reciting features that are not in the universe of prior art being considered by the Court tend to fare much better than those that fall squarely within the prior art's confines.
To sum up, the three properties appear not only to be a reasonably useful way of thinking about patent-eligibility in a world where the two-part test is bewildering and obtuse, it is also highly predictive of patent-eligibility outcomes. Of course, when you are before the USPTO or a court, you need to argue the two parts of Alice. But keeping the three properties in mind can help you hone those arguments.
III. Graphical User Interfaces
With Alice and the three factors in mind, let's discuss how to successfully claim an invention based around a graphical user interface in such a way that the claims are unlikely to run afoul of § 101. But first let's define what we are talking about.
Graphical user interfaces facilitate user interaction with computing devices by way of graphical elements (and in some cases display links to audio elements as well), instead of through use of a pure text-based interface. These graphical elements may include windows, icons, widgets, sliders, text boxes, buttons, and menus that can be selected, highlighted, moved, and so on through use of a pointing device (e.g., a mouse). Modern smartphones expand these features to support touch and multi-touch manipulation. Often, two or more screens of a graphical user interface are linked together into a workflow. Navigation between these screens may be possible in particular orderings. Graphical user interfaces may be web-based, for example, with parts of each page being loaded from a server and/or a database, or natively-compiled to execute on a client device even when no network is available.
An ongoing challenge in graphical user interface design is to maximize the user experience by providing sought-after information in a consistent, logical, and low-effort fashion. This has, in turn, been an area that is ripe for innovation and in which many patents have been filed over the years. But not all of these patents have survived § 101 scrutiny.
In the following sub-sections, we explore a handful of Federal Circuit § 101 decisions addressing claims to graphical user interfaces. An understanding of these examples, as well as application of the three factors discussed above, can better guide claiming efforts in directions that are more likely to avoid § 101 pitfalls.
A. Simple Generation and Display of Information
As a first point of order, the generation and display of generic, mathematical, or financial information at a high level is almost certainly going to be viewed as ineligible. For an example, one need not look further than SAP America, Inc. v. InvestPic, LLC. Claim 1 of InvestPic's U.S. Patent No. 6,349,291 recites:
A method for calculating, analyzing and displaying investment data comprising the steps of:
(a) selecting a sample space, wherein the sample space includes at least one investment data sample;
(b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process; and,
(c) generating a plot of the distribution function.
It is relatively easy to glance at this claim, observe how non-specific it is (strike one) and how it appears to be focused on plotting a mathematical function (strike two) related to financial services (strike three), and then conclude that it is directed to an abstract idea. Indeed, that is more or less what the Federal Circuit did, as it wrote that "[t]he focus of the claims . . . is on selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis." All of these aspects had been previously found to be abstract.
There was some evidence in the specification that the invention entailed an improvement over the prior art. Notably, it states that "conventional financial information sites on the World Wide Web perform rudimentary statistical functions that are not useful to investors in forecasting the behavior of financial markets because they rely upon assumptions that the underlying probability distribution function ('PDF') for the financial data follows a normal or Gaussian distribution." The Court observed that "[such an] assumption, the patent says, is generally false: the PDF for financial market data is heavy tailed . . . rather than symmetric like a normal distribution." As a consequence, traditional "analyses understate the true risk and overstate the potential rewards for an investment or trading strategy." In other words, real-world financial data does not fit a so-called bell curve, and any statistics based on the incorrect assumption that it does will be flawed.
But this was insufficient to establish eligibility. The Court ultimately concluded that:
There is, in short, nothing inventive about any claim details, individually or in combination, that are not themselves in the realm of abstract ideas. In the absence of the required "inventive concept" in application, the claims here are legally equivalent to claims simply to the asserted advance in the realm of abstract ideas—an advance in mathematical techniques in finance. Under the principles developed in interpreting § 101, patent law does not protect such claims, without more, no matter how groundbreaking the advance.
Or, specific, technical advances are necessary to establish patent eligibly, and the claimed invention here was neither.
B. Web Navigation
Internet Patents Corporation (IPC) filed infringement suits against Active Network, Inc. and several other parties alleging infringement of U.S. Patent No. 7,707,505. Of dispute was claim 1 of the '505 patent, which recites:
A method of providing an intelligent user interface to an online application comprising the steps of:
furnishing a plurality of icons on a web page displayed to a user of a web browser, wherein each of said icons is a hyperlink to a dynamically generated online application form set, and wherein said web browser comprises Back and Forward navigation functionalities;
displaying said dynamically generated online application form set in response to the activation of said hyperlink, wherein said dynamically generated online application form set comprises a state determined by at least one user input; and
maintaining said state upon the activation of another of said icons, wherein said maintaining allows use of said Back and Forward navigation functionalities without loss of said state.
In a nutshell, the claimed invention is directed to a web browser that stores state representing what a user has typed into a web-based form, even if that information has not yet been submitted. Then, if the user navigates away from and back to the web-based form, the stored state is usable in the form. In this way, the user does not have to retype the information.
The Court focused on what the specification of the '505 patent discloses regarding claim elements that were new and those encompassed by the prior art. Particularly, the '505 patent asserts that "the end result of 'maintaining the state' is described as the innovation over the prior art, and the essential, 'most important aspect'" thereof. On the other hand, the '505 patent describes the "browser Back and Forward button functionality" as "conventional," "well-known," and "common."
Ultimately, the Court was influenced by the claim's lack of specificity, writing that "claim 1 contains no restriction on how the result is accomplished," and "[t]he mechanism for maintaining the state is not described, although this is stated to be the essential innovation." Thus, "IPC's proposed interpretation of 'maintaining state' describes the effect or result dissociated from any method by which maintaining the state is accomplished upon the activation of an icon." As a result of this outcome-oriented claiming, the Court ruled that the claim was patent-ineligible.
C. Securities Trading
In Trading Technologies Int'l v. CQG, Inc., U.S. Patent Nos. 6,772,132 and 6,766,304 were found eligible in district court, and defendant CQG appealed. Claim 1 of the '304 patent was found to be representative for purposes of the § 101 analysis:
A method for displaying market information relating to and facilitating trading of a commodity being traded in an electronic exchange having an inside market with a highest bid price and a lowest ask price on a graphical user interface, the method comprising;
dynamically displaying a first indicator in one of a plurality of locations in a bid display region, each location in the bid display region corresponding to a price level along a common static price axis, the first indicator representing quantity associated with at least one order to buy the commodity at the highest bid price currently available in the market;
dynamically displaying a second indicator in one of a plurality of locations in an ask display region, each location in the ask display region corresponding to a price level along the common static price axis, the second indicator representing quantity associated with at least one order to sell the commodity at the lowest ask price currently available in the market;
displaying the bid and ask display regions in relation to fixed price levels positioned along the common static price axis such that when the inside market changes, the price levels along the common static price axis do not move and at least one of the first and second indicators moves in the bid or ask display regions relative to the common static price axis;
displaying an order entry region comprising a plurality of locations for receiving commands to send trade orders, each location corresponding to a price level along the common static price axis; and
in response to a selection of a particular location of the order entry region by a single action of a user input device, setting a plurality of parameters for a trade order relating to the commodity and sending the trade order to the electronic exchange.
In the words of the Federal Circuit, the patents "describe and claim a method and system for the electronic trading of stocks, bonds, futures, options and similar products," and "explain problems that arise when a trader attempts to enter an order at a particular price, but misses the price because the market moved before the order was entered and executed." The claimed graphical user interface involves "bid and asked prices [that] are displayed dynamically along the static display, and the system pairs orders with the static display of prices and prevents order entry at a changed price."
This dynamic display appears to be the nugget of eligibility in the claim, providing a specific technical advance over the prior art. The Federal Circuit agreed with the district court that the claims "solve problems of prior graphical user interface devices . . . in the context of computerized trading relating to speed, accuracy and usability," and that these improvements have "no pre-electronic trading analog." Furthermore, rather than merely claiming the displaying of information on a graphical user interface, the claims "require a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface's structure that is addressed to and resolves a specifically identified problem in the prior state of the art." Thus, the claims were not abstract under part one of Alice. Further, the static price index was an "inventive concept" under step two of Alice, because it "allows traders to more efficiently and accurately place trades using this electronic trading system."
The same plaintiff did not fare so well in Trading Technologies Int'l v. IBG LLC. At issue was claim 1 of U.S. Patent No. 7,783,556, which had been held ineligible in a Covered Business Method Review procedure at USPTO's Patent Trial and Appeal Board (PTAB). The claim recites:
A method for displaying market information on a graphical user interface, the method comprising:
receiving by a computing device a current highest bid price and a current lowest ask price for a tradeable object from an electronic exchange;
identifying by the computing device a long or short position taken by a user with respect to the tradeable object, wherein the long position is associated with a quantity of the tradeable object that has been bought by the user at a price, and wherein the short position is associated with a quantity of the tradeable object that has been sold by the user at a price;
computing by the computing device a plurality of values based on the long or short position, wherein each of the plurality of values represents a profit or loss if the long or short position is closed at a price level among a range of price levels for the tradeable object;
displaying via the computing device the plurality of values along a value axis;
displaying via the computing device a first indicator at a first location corresponding to a first value along the value axis, wherein the first indicator represents a particular price based on any of the following prices: current best bid, current best ask, and a last traded price, and wherein the first value represents a profit or loss incurred by the user if the long or short position is closed at the particular price; and
moving the first indicator relative to the value axis to a second location corresponding to a second value along the value axis responsive to receipt of an update to the particular price, wherein the second value represents a profit or loss incurred by the user if the position is closed at the update to the particular price.
The Court rapidly found the claims abstract, noting that "[t]he only difference between the trading screen of [the prior art] and the one claimed is that the axis in [the prior art] displays price values, and the claimed axis displays P&L values." Further, the Court concluded that the identifying and computing steps were "nothing more than mere automation of manual processes using generic computers, which does not constitute a patentable improvement in computer technology."
Despite the plaintiff arguing that the displaying and moving steps "provide a particular graphical user interface that improves usability, visualization, and efficiency," the Court disagreed. Instead, it found that the claims focus on "providing information to traders in a way that helps them process information more quickly, not on improving computers or technology" and they fail to be non-abstract "because arranging information along an axis does not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem." The Court also found no inventive concept in the combination of claim elements.
Thus, unlike the static price index of the '304 patent, there apparently was not enough daylight between the prior art and the displaying and moving of first indicator in the '556 patent. This goes to show how some graphical user interface decisions could easily go one way or another not just based on the claim language under review, but also the context of the invention with respect to the prior art.
If we go back to the Bilski case and look at what Justice Stevens attempted to do there with a direct attempt to rewrite the words of Congress vis a vis Business Methods, your analysis can be made much simpler.
This though would draw the more direct question and lead to the apparent impropriety of the Supreme Court deciding of their own accord the policy decision of what may or may not be considered to belong to the Useful Arts.
It is (or should be) abundantly clear that the Useful Arts includes Business Methods.
It should be (but sadly is not) also abundantly clear that the entire mess of eligibility jurisprudence can be FIRST laid at the feet of the Supreme Court, with generous helpings of additional muckery to the rest of the judicial branch and extending out to the other two branches as well.
Drive this to its point here, and we can arrive at a permanent answer.
Will that happen?
Well, I remain...
Posted by: skeptical | November 09, 2020 at 06:38 AM
Although about GUI patenting, the above article is about appellate decisions on utility patents claiming variable screen data displays. Design patenting of GUI screen icons themselves has been going on even before the expanded-Board decision in Ex parte Strijland (Bd. Pat. App. & Int. 1992).
Posted by: Paul F Morgan | November 09, 2020 at 04:06 PM