Sunday, November 13, 2016

Federal Circuit - AmDocs (Israel) Limited v. Opennet Telecom - Software Patent Claims Eligible

In Amdocs (Israel) Limited v. Opennet Telecom, the Federal Circuit reversed the district court decision that the claims are patent ineligible under 35 USC 101.

In Amdocs, the Federal Circuit stated that patent eligibility under Mayo is a two-step framework: (1) Is the patent claim directed to a patent-ineligible exception (e.g., abstract idea); and (2) if so, do elements of the claim both individually and as an ordered combination transform the nature of the claim into a patent-eligible application that is have an inventive concept.

The Federal Circuit observed although the framework is familiar courts have not articulated a single universal definition of abstract idea. "Instead of a definition, then, the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided ... That is the classic common law methodology for creating law when a single governing definitional context is not available. See generally Karl N. Llewellyn, The Common Law Tradition: Deciding Appeals (1960). This more flexible approach is also the approach employed by the Supreme Court. See Alice. We shall follow that approach here."

The Federal Circuit started its analysis by asserting claim 1 is representative:

1. A computer program product embodied on a computer readable storage medium for processing network accounting information comprising:

computer code for receiving from a first source a first network accounting record;

computer code for correlating the first network accounting record with accounting information available from a second source; and

computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.

The Federal Circuit stated "claim 1 is therefore distinct from the ineligible claims in Digitech, Content Extraction ... The claim in Digitech was not tied to any particularized structure, broadly preempted related technologies, and merely involved combining data in an ordinary manner without any inventive concept. See 758 F.3d at 1350-51. In contrast, claim 1 of the '065 patent is tied to a specific structure of various components (network devices, gatherers, ISMs, a central event manager, a central database, a user interface server, and terminals or clients). It is narrowly drawn to not preempt any and all generic enhancement of data in a similar system, and does not merely combine the components in a generic manner, but instead purposefully arranges the components in a distributed architecture to achieve a technological solution to a technological problem specific to computer networks. '065 patent at 4:29-33, 4:43-54, 3:56-65, 4:33-42, 7:51-57, 10:45-50, 7:7-8, 7:62-67, 11:1-7.

Similarly, claim 1 is distinct from the representative claim in Content Extraction, which involved the generic, well-known steps of collecting data, recognizing data, and storing data.776 F.3d at 1347. Unlike the claim in Content Extraction, claim 1 of the '065 patent depends upon a specific enhancing limitation that necessarily incorporates the invention's distributed architecture—an architecture providing a technological solution to a technological problem. This provides the requisite `something more' than the performance of "well-understood, routine, [and] conventional activities previously known to the industry." at 1347-48 (quoting Alice, 134 S. Ct. at 2359. Claim 1 is similar to the claims in DDR Holdings and BASCOM. As in DDR Holdings, when the claim limitations were considered individually and as an ordered combination, they recited an invention that is not merely the "routine or conventional use" of technology.

Here, claim 1 solves a technological problem (massive dataflows requiring huge databases) akin to the problem in DDR Holdings (conventional Internet hyperlink protocol preventing websites from retaining visitors). Cf. Intellectual Ventures I LLC v. Capital One Bank (USA) (Fed. Cir. 2015). Claim 1 involves some arguably conventional components (e.g., gatherers), but the claim also involves limitations that when considered individually and as an ordered combination recite an inventive concept through the system's distributed architecture.

Claim 1 is also like the claims in BASCOM because even though the system in the '065 patent relies upon some arguably generic limitations, when all limitations are considered individually and as an ordered combination, they provide an inventive concept through the use of distributed architecture. This is similar to the design in which permitted the invention to have a filtering tool with the benefits of a filter on a local computer and the benefits of a filter on an ISP server. The benefits in were possible because of customizable filtering features at specific locations remote from the user. Similarly, the benefits of the '065 patent's claim 1 are possible because of the distributed, remote enhancement that produced an unconventional result—reduced data flows and the possibility of smaller databases. This arrangement is not so broadly described to cause preemption concerns. Instead, it is narrowly circumscribed to the particular system outlined. As in BASCOM, this is a technical improvement over prior art technologies and served to improve the performance of the system itself.

For all these reasons, and with the understanding that claim 1 is representative, we reverse the district court's judgment that claims 1, 4,7, 13, and 17 of the '065 patent are ineligible under § 101."

Thus, the Federal Circuit is limiting the lower court and USPTO finding of patent ineligibility based on Alice/Mayo when the claims provide "an inventive concept" and "a technological solution to a technological problem."

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