Berkheimer Stops Patent-Eligibility Motion at Pleading Stage

Saying that a defendant’s patent-eligibility challenge raised questions of fact under Berkheimer v. HP Inc. (Fed. Cir. 2018), a District Court has denied a motion for judgment on the pleadings under FRCP 12(c) concerning U.S. Patent No. 7,735,116, directed to a network security system including “unified threat management [UTM] with a relational rules methodology.” Symantec Corp.  v. Zscaler, Inc.,No. 17-cv-04426-JST (N.D. Cal. July 23, 2018).

The court considered claim 1 of the ‘116 patent, which recites:

A method of controlling access to a networked device, the method comprising:

receiving an incoming message packet by a security gateway coupled to said networked device;

evaluating the received message packet to determine if the received message packet is compliant with a first test, the first test corresponding to a first level of a security hierarchy implemented by said security gateway,

wherein the security hierarchy establishes a relationship between security functions from a lowest level to a highest level; and

the received packet is rejected at the earliest possible operation in the processing of the packet in the security hierarchy;

forwarding the received packet and an indication of its compliance with the first test for subsequent processing upon the received packet complying with the first test; and

dropping the received packet whereby no further processing of the received packet is performed upon the received packet not complying with the first test.

Turning first to the first prong of the Alice patent-eligibility test, the court considered the defendant’s argument that the claim “boils down to . . . functional results” of receiving and testing a packet, that was forwarded for further tests if it passed, and dropped if it failed. According to the defendant, the claim was analogous “to a human resources manager receiving a job application, checking if there are open positions, and dropping the application if not, but checking further for requisite training or experience if so.” The court agreed with the defendant that the claim was directed to an abstract idea, noting that the plaintiff’s own description of the claim described an abstract concept, “organizing security tests into an information sharing hierarchy.”

However, under the second prong of the patent-eligibility test, the court found that “the ordered combination of elements in claim 1 is inventive, at least at this preliminary stage.” The prior art disclosed “placing disparate security functions together on a single UTM,” but not “organizing that UTM’s functions or tests in any relational or hierarchical manner that shared information between the various tests.” Claim 1 captured these improvements. Because the ’116 patent discussed “the novelty of a hierarchical organization and information system for UTM’s,” there was a factual question as described in Berkheimerconcerning whether claim 1 recited a “well-understood, routine and conventional” combination of elements.

The court conducted a similar analysis, and reached a similar conclusion, regarding independent claim 5 of the ’116 patent.

Lessons for Practice

Before Berkheimer, it often seemed that the two-part patent-eligibility test (whether claims were directed to a patent-ineligible abstract idea, and whether claims recited a significant additional innovation” really amounted to a single analysis examining a claim’s breadth and technical scope. Now, Berkheimerseems to have changed two things.

First, the distinction between the two parts of the patent-eligibility test have gained in importance following Berkheimer.Formerly, when a claim was deemed abstract, the second part of the test was often glossed over.  Courts would say something like: “the claim simply recites use of generic computing technology, which is not a significant innovation.”  Now, even “abstract” claims are subjected to a more searching analysis with respect to whether a recited feature or combination of features is inventive.

Second, prior art is now more important to the patent eligibility analysis. Invalidity based on prior art and invalidity based on patent-eligibility are supposed to be distinct inquiries. Nonetheless, in emphasizing the second prong of the patent-eligibility test, courts will inescapably rely more and more on differences from prior art to determine patent-eligibility.

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