Boilerplate – New Consideration in View of Patent Subject Matter
Can boilerplate language describing possible variations to an invention ever impact validity of a patent? Many software patents include standard “boilerplate” text describing many ways to implement an invention, such as by discussing execution of the software on a smart phone, laptop, mainframe, PDA, audio player, or even a refrigerator! Often, such boilerplate language is added to patent applications with consideration of broadening the potential scope of the recited terms or providing additional support for recited claim terms.
However, in Nextpoint v. Hewlett-Packard, an Illinois district court used such “broadening” boilerplate language against the patent holder, Nextpoint, in supporting its holding that the claims of issued Patent 8,447,731 (the ‘731 Patent’) are directed to an abstract idea and thus not eligible for patent protection under §101. While the use of boilerplate was not, by itself, dispositive, the Judge indicated that this expansive language weighed against Nextpoint’s arguments that the ‘731 Patent describes “a specific technical solution.”
Citing the leading case on §101, the Supreme Court’s Alice v. CLS Bank Int’l decision, the district court judge determined that the claims of the ‘731 Patent were directed to an abstract concept – specifically being “directed to the receipt, storage, and processing of electronically stored information (‘ESI’) in a broadly defined computing environment.” Nextpoint did not dispute that receipt, storage, and processing is an abstract concept; rather they argued that the claims were instead drawn to “a specific technological solution” to a "specific problem in ESI processing," and therefore not an abstract idea under step 1 of the test outlined in Alice for determining patent eligibility.
Taking a skeptical view that the ‘731 Patent describes “a specific manner of processing” ESI, the Judge looked into the specification and noted that “the specification emphasizes that a multiplicity of alternatives for practicing the invention using a wide range of hardware and software technologies exist.” Citing specific passages of the specification that describe a great deal of usable hardware and software processing schemes, the Judge stated that “[i]t is difficult to reconcile [such] passages … with plaintiff’s argument that the ‘731 Patent claims a ‘specific technical solution.’” Thus, “the fact that the specification describes a wide variety of alternative configurations supports the conclusion that the patent could preempt every application of the basic idea of using a cloud computing environment to process … ESI,”
Ultimately, even though the ‘731 Patent discusses numerous specific examples in the specification, the generalized discussion of alternatives in the specification and the Judge’s determination that the ‘731 Patent is directed to “the use of conventional or generic technology in a nascent but well-known environment,” led to a holding that the claims are directed to an abstract idea. In finding that the ‘731 Patent does not transform the abstract idea into a patent‑eligible application under step 2 of Alice, the Judge dismissed the case.