Broad Software Patent Claims Survive Alice, Federal Circuit

Broad patent claims directed to computer virus screening have survived an Alice/35 U.S.C. § 101  patent-eligibility challenge at the Federal Circuit. Finjan, Inc., v. Blue Coat Systems Inc., No. 2016-2520 (January 10, 2018) (precedential).  As reported here, the District Court had denied a post-trial motion seeking to set aside a finding of infringement on the grounds that claims of the ’844 patent were patent-ineligible. Addressing patent-eligibility along with other issues (not addressed in this post) related to several patents in suit, the Federal Circuit affirmed the district court’s holding that claims of U.S. Patent  No.  6,154,844, entitled “System and method for attaching a downloadable security profile to a downloadable,” are not directed to a patent-ineligible abstract idea.

Claim 1 of the ’844 patent recites:

A method comprising:

receiving by an inspector a Downloadable;

generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and

linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.

The court started with its September 2016 decision in Intellectual Ventures I LLC v. Symantec Corp., which stood for the proposition that virus screening on its own “is well-known and constitutes an abstract idea.” But here, the court said,  “the claimed method does a good deal more” than simply scanning files on an intermediary computer “before they can reach a user’s computer.”

Specifically, the claimed method uses a security profile to match suspicious details to details detected in code of a “Downloadable,” i.e., an executable computer program. The security profile had to include specific information. Because of this, the claimed method was distinguishable from conventional “code-matching” by rescanning because it could do more than recognize known viruses.  Finjan “pioneered” this “behavior-based” approach that included analyzing downloadable code for “potentially dangerous or unwanted operations.” Further, the claimed approach “enables more flexible and nuanced virus filtering.”

With that characterization of the claims, one can see where the court’s patent-eligibility analysis was headed. The ’844 patent claims fell under the rubric of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. May 12, 2016), reciting improvements to computing technology. Specifically, the claimed method here “employs a new kind of file that enables a computer security system to do things it could not do before.”

Blue Coat argued that even if “the claims are directed to a new idea . . . they remain abstract because they do not sufficiently describe how to implement that idea.” In response, the court explained that “a foundational patent law principle” is “that a result, even an innovative result, is not itself patentable.” But the claims here recited “more than a mere result.” The patent claims here recited “specific steps – generating a security profile that identifies suspicious code and linking it to a downloadable – that accomplish the desired result.” The claims were non-abstract under step one of the Alice test.

Lessons for Practice

Patent-eligibility analysis is subjective, but we already knew that. One could have speculated that the lower court decision was at least partly explained by the fact that the patent-eligibility question was raised after the jury trial. And perhaps if the lower court had reached a different result and/or there had been a different Federal Circuit panel, the court here may have reached a different result.

Nonetheless, the bigger lesson here is that, as in Enfish, a “pure” software claim passed the Alice test and was deemed patent-eligible. This case reemphasizes the importance of being able to demonstrate a technical solution to a technical problem i.e., improvement of operation of a machine such as a computer.

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