Here is a case that undercuts the notion that claims are patent-ineligible where they are entirely directed to processing data. This is a favorite rationale of patent examiners rejecting claims under the Alice test. In Speedtrack, Inc. v. Amazon, Inc., No. C 09-04479 JSW (N.D. Cal. Jan 23, 2017), the court refused to grant a motion to dismiss alleging patent-ineligible subject matter where claims of U.S. Patent No. 5,544,360 recited software-implemented “systems and methods for accessing information stored in the data storage system of a computer.”
Claim 1 of the ’360 patent recites “[a] method for accessing files in a data storage system of a computer system having means for reading and writing data from the data storage system, displaying information, and accepting user input.” The method culminates in
creating in the computer system a search filter comprising a set of category descriptions, wherein for each category description in the search filter there is guaranteed to be at least one entry in the file information directory having a set of category descriptions matching the set of category descriptions of the search filter.
Clearly, this is not a hardware invention.
Nonetheless, the court found “that the claimed invention is not merely an abstract idea, but rather the ’360 Patent claims an improved method for accessing files in a data storage system of a computer system.” The court further found that “the claimed invention is directed at solving a challenge unresolved by the prior art in which a search in a hierarchical directory structure did not guarantee a result.
Then, after noting that considering the second prong of the Alice test was not necessary – because the claims were not directed to an abstract idea – the court nonetheless found that the ’930 patent claims included “a limiting inventive concept,” concluding that the
asserted claims of the ’360 Patent recite [a] specific implementation of a system of retrieving and accessing files stored in a computer storage device, using the combination of a “category description table,” a “file information directory,” and a “search filter” which, in combination, guarantees a search result and makes mistyping impossible. The Court further finds that although the patent claims do not preempt all ways to access files on a computer storage device, they do recite an improvement over the prior art methods for accessing such files that includes the additional features created to guarantee a search result.
In addition to relying on, of course, Alice herself, the court cited a number of the usual suspects, including Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016); TLI Communications LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016); and BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). These and other cases all state the same basic principles – abstract ideas are not patentable but non-preemptive inventive concepts are – and yet one wonders how much any statement of the law matters. How confident can we be that other courts, applying the same rules, would have reached the same result here? Nonetheless, this case reinforces an important principle - there is no per se rule that software, or steps that “merely” process data, constitute patent-ineligible subject matter.
Lessons for Practice
As the Federal Circuit has shown quite recently, data processing and business method patents can survive Alice. One way to try to make a patent survive a Section 101 challenge, as I have suggested in other recent posts on this blog, is to employ the problem-solution approach when drafting patent applications that include claims susceptible to attack under Alice and Section 101. True, it can sometimes be difficult to know when you are stating a “technical” problem to which a court, or that even more difficult customer, a patent examiner, will agree there is a technical solution. But in a world where patent drafters often don’t have a lot of good options, stating a technical problem and its solution is potentially a saving approach.