“Beware the Jabberwock, my son!”

from Through the Looking Glass, and What Alice Found There (1871) by Lewis Carroll.

Since Alice v. CLS Bank[1], companies have found that obtaining software patents is more difficult, especially as many software patent applications going through the examination process at the USPTO were drafted before the Alice decision.  Although almost anything under the sun made by man is patentable, abstract ideas are not.  Alice was the Supreme Court’s way of reinforcing that principle.

Alice enforces a two-step framework first articulated in Mayo Collaborative Servs. v. Prometheus Labs., Inc.[2]:

1. Determine whether the claim is directed to an abstract idea, natural law, or natural phenomena
2. Examine the elements of the claim both individually and in combination to determine whether additional elements of the claim involves an “inventive concept” that “transform[s] the nature of the claim” into a patent eligible application.

Under this two-step analysis, the Patent Office has been frequently issuing post-Alice section 101 rejections to software patent applications.  Most rampant among these 101 rejections is the abstract idea of “organizing human activities,” for which there is no definition and no case law basis.[3] Examiners have been using this abstract idea as a “catch-all that enables rejection of any claim involving interaction with a human user, potentially encompassing everything from surgical techniques to methods of medical treatment to every-day activities like driving, using telecommunication devices, and food preparation.”[4]  The other abstract idea rejections used by Examiners are “fundamental economic practices,” “ideas themselves,” and “mathematical relationships/formulas.”

Despite the sharp rise in Alice-based “abstract idea” rejections, the examiners still need to consider if there is something “significantly more” that is claim other than the abstract idea.  This is the search for the “inventive concept.”  The USPTO gives us guidance in the search for the “inventive concept,” despite being limited guidance:  Limitations that may be enough to qualify as “significantly more” include:[5]

• Improvements to another technology or technical field[6]
• Improvements to the functioning of the computer itself
• Applying the judicial exception with, or by use of, a particular machine.
• Effecting a transformation or reduction of a particular article to a different state or thing
• Adding a specific limitation other than what is well-understood, routine, and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application
• The meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment

For an applicant that can show that their claims do claim something “significantly more”, then the applicant has slain the Jabberwock known as Alice.

The easiest advice that patent practitioners can give to their clients in fighting the Alice-Jabberwock, especially with regard to getting software patents through the Patent Office, is to add hardware structural elements to the claims.  While this advice appears to be contrary to the notion of a software patent, what is software but electrons stored on transistors to form ones and zeros?[7]  By adding hardware elements to software patents, the Patent Office will look at the claims as a whole and find the claim nonabstract under 35 U.S.C. § 101.

However, the hardware cannot be a generic computer and the software cannot be generic computer functions, because even though “computers and computer operations are not automatically” rejected under post-Alice § 101, “courts have found computers and computer-implemented processes to be ineligible when generic computer functions are merely used to implement an abstract idea, such as an idea that could be done by human analog (i.e., by hand or by merely thinking).” [8]

As an example of hardware that may transform an abstract idea into a nonabstract patent claim, the Eastern District of Texas found that the claims included “patent-eligible methods and systems of ‘using a central broadcast server’” to package and transmit ‘data from an online information source to remote computing devices.’”  Furthermore, the court also agreed that “the elements of ‘a central broadcast server,’ ‘a data channel,’ and ‘transmitting information whether the user was online or not online to a data channel to an information source’ are ‘sufficient to ensure that the patent amounts to significantly more than ‘processing and transmitting data.’”[9]  So, the addition of hardware not only removes the patent claims from the realm of the abstract, but it also adds the “significantly more” to make the patent claims patent-eligible.

Examples of non-generic computers include GPS receivers[10], central broadcasting servers[11], and gaming hardware components[12].

Another piece of advice that patent practitioners can give to their clients is to frame their software patent claims so that they are “necessarily rooted in computer technology,” so as to solve a problem arising from computer technology.”[13]  This may take careful investigation and asking about technical problems that were solved in reaching the claimed invention.  Patent practitioners should ask clients questions that focus on the heart of the invention, such as:

• What prevented others from doing what your invention is doing?
• What technical difficulties did you come across?
• Can a human perform your invention with paper and pencil?[14]
• Did this problem exist before the Internet Era?[15]

This notion of technical solutions solving technical problems can be exemplified in DDR Holdings LLC v. Hotels, LP and a subsequent case Messaging Gateway Solutions LLC v. Amdocs Inc.  In DDR Holdings, the Federal Circuit found that the software claims were directed to patentable subject matter because the claims addressed a business challenge “particular to the internet” and “necessarily rooted in computer technology in order to overcome a problem a problem specifically arising in the realm of computer networks.”[16]  Likewise, in Messaging Gateway Solutions, the claims were “directed to a problem unique to text-message telecommunication between a mobile device and a computer.  The solution it provides is tethered to the technology that created the problem.”[17]

However, applicants and patent practitioners should be careful about utilizing DDR Holdings for arguing a 35 U.S.C. § 101 rejection at the Patent Office.  One must ensure that the invention does not merely use the Internet and computer technology in a routine and conventional way with no additional specific features.[18]  Examples includes virus detection[19], graphic user interfaces for relocating obscured textual information[20] and halftone rendering of a gray-scale image using a blue noise mask[21].

Lastly, patent practitioners should advise their clients to provide much more detail for the patent application drafting process, as compared to the norm for software patents pre-Alice.  “The specification needs to be rich in detail, flowcharts, maybe even listing pseudo-code if its available . . . Descriptions of different implementations, swim-lane diagrams showing how and where each process step is implemented, and examples of physical implementation at each stage of the method” help patent practitioners with not only crafting nonabstract claims, but also help patent practitioners with amending claims to comply with the current and future changes to 35 U.S.C. 101.[22]

For example, in a district court case in Delaware, the patents in suit described

a method and system for preserving state in computers communicating over networks  . . . using stateless protocols . . . State is preserved in a conversation by performing the service and identifying all continuations (hyperlinks) in an output from the service; recursively embedding the state information in all identified continuations in the output sent to the client.[23]

The court noted that the specification provided “great detail about certain then-current methods of preserving state (and their drawings, before again nothing the inventor’s claimed solution:  ‘the embedding of state information’ in communications between computers using stateless protocols.”[24]  Because of the detail of the current art and the invention put into the specification, the court found that the specification emphasized that the invention was novel and nonbvious as compared to the prior art.  Furthermore, the court noted the “recursively embedding” limitation as described in the claims of the patent and in the specification of the patent was nonabstract.[25]

So, to those still fighting the Jabberwock known as Alice, there are weapons available to us, and these weapons are vorpal swords[26] that have been proven successful and victorious for those that have slain their own Jabberwock. These weapons are dependent on the wielder, and the wielder needs to identify where the Jabberwock is weak.  Strike hard and fast, lest the Jabberwock rise again with “jaws that bite [and] claws that catch!”[27]