A notable shift - Software survives patent-eligibility test
Patents covering software can face an uphill battle when challengers contend the software is actually a patent-ineligible abstract idea. In Mentone Solutions LLC v. Digi Int’l Inc., the U.S. Court of Appeals for the Federal Circuit recently upheld one such patent, though, shedding some light on how these patents can withstand judicial scrutiny.
A communication problem
Mentone Solutions owns a patent on a method for dynamic resource allocation in mobile communication systems. In earlier systems, mobile devices could communicate with a single network through packet data channels with uplink slots (which transmit information to the network) and downlink slots (which receive information from the network).
Limitations in those systems restricted certain multi-slot configurations, in turn reducing the amount of bandwidth that mobile devices could use to communicate with cell towers. The patented invention allows more multi-slot configurations than were previously possible. It does this, in part, using so-called “shifted” uplink status flags (USFs) sent to mobile devices. The result is a higher rate of data transmission.
Mentone sued two companies for infringement of its patent, and those companies argued that the invention was patent-ineligible. The trial court dismissed the lawsuit before trial, finding the patent invalid because it covered a patent-ineligible abstract idea. Mentone appealed.
The U.S. Supreme Court has established a two-step test — known as the Alice test, for the case in which it was established — for identifying patents that cover patent-ineligible concepts. Under the first step, the court determines whether the claimed invention is a law of nature, a natural phenomenon or an abstract idea. If so, it proceeds to the second step and determines whether the invention includes an “inventive concept” that transforms it into a patent-eligible application of the concept.
As the Federal Circuit noted, in cases involving software, the first step often depends on whether the patent focuses on specific asserted improvements in computer capabilities — as opposed to just a process or system that qualifies as an abstract idea for which computers are involved only as a tool (for example, by automating existing abstract practices). The court has found the former type of software claims to be patent-eligible under step one.
The court reached a similar conclusion here. It found that the patent describes an improvement to computer functionality — specifically, allowing additional multi-slot configurations for certain types of mobile devices using extended bandwidth allocation.
The patent doesn’t merely describe generalized steps to be performed on a computer or, as the defendants argued, data manipulation on a generic computer, the court said. Rather, the patent specification provides important details on a technological problem arising specifically in the realm of computer networks and how the invention solves that problem. The patent, the Federal Circuit found, demonstrates how the shifted USF allows a mobile device to use a multi-slot configuration it otherwise couldn’t.
The Court of Appeals faulted the trial court for basing its conclusion that the invention was an abstract idea on only a “high-level description” of how USFs generally operate in mobile devices using extended bandwidth allocation. The lower court’s description of the abstract idea didn’t even mention shifted USFs and, therefore, was “untethered” to the patented invention.
The Federal Circuit also distinguished the patent here from a patent for a method of transmitting packets of information over a communications network that it had found ineligible in a 2017 case. That patent, it explained, merely described a series of abstract steps (for example, “converting,” “routing” and “controlling”) using results-based language. Unlike this patent, it didn’t describe any means for achieving a technological improvement.
Make the call
Because it found the invention patent-eligible under the first step of Alice, the Federal Circuit didn’t need to consider the second step. It reversed the trial court’s motion to dismiss, thereby reviving the infringement lawsuit.
Sidebar: Identity authentication patent survives Alice test
About one month before it ruled in Mentone (see main article), the U.S. Court of Appeals for the Federal Circuit found a method of identity authentication patent-eligible. It previously had found methods of authentication and verification ineligible under the Alice test.
The patent at issue in CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC, covered a method for authenticating the identity of a user conducting a transaction at a computer terminal, including activating an authentication function on the user’s mobile device. Relying on earlier Federal Circuit opinions, the trial court found that the patent covered the abstract idea of authentication. It determined that the invention comprised steps that were routine activities already known in the field of authentication, and thus were ineligible for patentability.
The Federal Circuit disagreed, noting that it has found specific verification methods that depart from earlier approaches and improve technology to be patent-eligible. It concluded that the invention provides a specific improvement that increases security, prevents unauthorized access by a third party and is easy to implement.