Revenge of the Present Invention

| Bruce S. Itchkawitz, Ph.D.

Patentees suing alleged infringers have learned from a long history of federal district court and Federal Circuit rulings that (paraphrasing the Miranda warning given to criminal suspects) “anything you say [in the patent or during the process of pursuing a patent] can and will be used against you [when determining the scope of the asserted claims] in a court of law.”

If the patent states that “the present invention has” Feature X, then there’s a high likelihood that the asserted claims will be construed by the court to cover only products or methods that include Feature X, regardless of whether or not Feature X is explicitly recited in the asserted claims. Such claim interpretations are based on the rationale that since the patentee is free to define the invention however he/she sees fit, if the patentee chooses to define the invention as having Feature X, the claims will be interpreted by the court as requiring Feature X in any infringement action.

Even if the patent doesn’t explicitly state that “the present invention has” Feature X, if the patent describes only versions of the invention that include Feature X, then there’s a chance that the asserted claims will be construed by the court to require Feature X for a ruling of patent infringement. If the patentee had intended the claims to cover versions without Feature X, so the rationale goes, then the patentee was free to describe in the patent additional versions which did not have Feature X. Therefore, the failure to provide any such alternative versions of the invention can be considered to be a disclaimer of versions which omit Feature X, resulting in the claims being construed narrowly by the court to require Feature X for infringement.

Furthermore, even if the patent avoids stating that “the present invention has” Feature X, and even if the patent includes multiple versions of the invention, one or more of which do not have Feature X, the claims still aren’t safe against a narrow interpretation. Arguments made by the applicant to the U.S. Patent and Trademark Office (USPTO) during the process of getting a patent (referred to as “prosecution history”) can be used by the court to narrow the scope of the asserted claims. For example, the applicant might argue that the claimed invention is patentable because it differs from the references cited by the USPTO in that the invention has Feature X which is not disclosed by or obvious in view of the cited references. Such arguments can be treated by the court as a disclaimer by the applicant of versions which do not include Feature X, leading the court to interpret the claims narrowly as requiring Feature X for infringement.

Therefore, to protect clients from being bitten by unintentional disclaimers resulting in overly narrow claim interpretations, patent attorneys are generally careful to avoid writing patent applications which use phrases such as “the present invention has” Feature X or which include only a single version of the invention. In addition, when arguing to the USPTO Examiner that the claimed invention is patentable, patent attorneys are careful not to cite features which are not recited by the explicit claim language to keep unintentional disclaimers out of the prosecution history. The case law is replete with examples of the adverse ramifications of such disclaimers, and there has been little or no upside in such statements.

Until now. In a pair of recent rulings by the Federal Circuit, the patent eligibility of computer-based inventions hinged on how the invention was characterized in the patent. In one of the two rulings (Enfish, LLC v. Microsoft Corp., May 12, 2016), the Federal Circuit found that statements in the patent regarding the features of the invention weighed in favor of its patent eligibility. Conversely, the lack of such statements in the other of the two rulings (TLI Communications LLC v. AV Automotive, LLC, May 17, 2016) was cited in the finding that the claimed invention was ineligible for patenting.

These two rulings come during a tumultuous period regarding the patent eligibility for computer-based inventions. In a June 2014 ruling (Alice Corp. v. CLS Bank), the Supreme Court set forth a general two-step analytical structure for determining the patent eligibility of such inventions, but in doing so, the Court omitted definitions or guidance regarding key aspects of the analysis. Under this two-step analysis, a court must: (i) first determine whether the claims at issue are directed to a patent-ineligible abstract idea, and (ii) if the claims are so directed, then 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 something more, that is a patent-eligible application. If the claims are directed to an abstract idea and do not transform the nature of the invention into “something more,” then the computer-based invention is ineligible for patenting.

But what does it mean for a claim to be “directed to” an abstract idea, what constitutes “something more” than an abstract idea, and even more fundamentally, what exactly is an “abstract idea”? The Supreme Court declined to provide much guidance regarding these questions, leaving it to the lower federal district courts and the Federal Circuit to fill in these gaps.

In Enfish, the Federal Circuit provided some further details, particularly with regard to the first step of the analysis, in its ruling regarding the patent eligibility of a data storage and retrieval system that utilized a database of “self-referential” tables. To satisfy the first step, the Federal Circuit explained, it is not sufficient for a claim to merely involve an abstract idea, but the character of the claim “as a whole” must be directed to an abstract idea. There is a bit of circular reasoning here (the claim is directed to an abstract idea if its character as a whole is directed to an abstract idea), but the court further explained that inventions are not inherently abstract just because they are computer- or software-based, and that the first step of the analysis asks “whether the focus of the claims is on the specific asserted improvement in computer capabilities … or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”

In finding that the character of the Enfish patent claims as a whole were not directed to an abstract idea (and hence were patent-eligible), the Federal Circuit held that the claims were directed to a specific improvement to computer functionality, relying on statements in the patent such as:

  • “the present invention comprises a flexible, self-referential table that stores data,”
  • “[t]he present invention improves upon prior art information search and retrieval systems by employing a flexible, self-referential table to store data,” and
  • the “database of the present invention does not require a programmer to preconfigure a structure to which a user must adapt data entry.”

These statements regarding “the present invention” and the disparagement of conventional data structures have the effect of disclaimers which narrow the scope of the claims being asserted. However, now under the Alice analysis as interpreted by the Federal Circuit in Enfish, these scope-narrowing statements provide the benefit of supporting the patent eligibility of the claims by convincing the Federal Circuit that the claims as a whole were directed to an improvement of computer functionality, not to an abstract idea.

In TLI Communications, the Federal Circuit applied this analysis to a claimed method for recording and administering digital images using “a server” and “a telephone unit” having “a digital pick-up unit,” and held that the invention was not “directed to an improvement to computer functionality versus being directed to an abstract idea.” The tangible components of the claims (i.e., the telephone unit, the digital pick-up unit, the server) were held to be described in the patent simply in terms of performing generic functions expected to be performed by conventional such devices. The statement in the patent that the present invention “relates to a method for recording, communicating and administering [a] digital image” was not found to be enough to show that the claims were directed to an improvement to computer functionality. Since the patent did not provide the types of narrowing statements or disclaimers that were made in Enfish, the Federal Circuit found that the claims failed the first step of the Alice analysis by being “directed to the abstract idea of classifying and storing digital images in an organized manner.” Proceeding to the second step of the Alice analysis, the Federal Circuit held that the claims failed to transform the nature of the claims into something more by adding an inventive concept sufficient to confer patent eligibility. As a result, the Federal Circuit affirmed the ruling by the district court that the claims were ineligible for patenting.

In both of these recent cases, the Federal Circuit looked for narrowing statements by the patentee in the patent regarding the features of the computer-based invention that would show that the claims were directed to a specific asserted improvement in computer capabilities. In one of the cases (Enfish), such statements were found and the invention was patent-eligible. In the other case (TLI Communications), such statements were not found and the computer-based invention was ruled to be patent-ineligible. These two cases focused on statements made in the patents themselves, so they did not address to what degree disclaimers made in the prosecution history will be useful in supporting the patent eligibility of such inventions.

This clarification of the patent eligibility analysis has not yet received approval by the whole Federal Circuit en banc or by the Supreme Court, and it is yet to be seen how it is followed in other rulings by the district courts and the Federal Circuit. However, patent applicants and their attorneys are hungry for any guidance that will assist them in getting patents for their computer- or software-based inventions. Since, as a practical matter, it’s generally better to get a patent with claims somewhat narrowed by disclaimer, rather than no patent at all due to patent ineligibility, patent attorneys will likely be more inclined to include such disclaimers in their patent applications for computer- or software-based inventions, in view of Enfish and TLI Communications.

This article was originally published on LinkedIn Pulse via Bruce Itchkawitz, Ph.D.