Incorporation by Reference Saves Patent-Eligibility

A continuation-in-part patent application incorporated its parent by reference; now a court has relied on subject matter disclosed in the parent’s specification to support a finding that claims of the child patent were patent-eligible under 35 U.S.C. § 101.  Finjan Inc. v. Blue Coat Systems Inc., No. 5-15-cv-03295 (N.D. Cal. Dec. 13, 2016).  Accordingly, the court denied the defendant’s motion for judgment on the pleadings based on alleged invalidity of U.S. Patent No. 8,677,494.

Independent claims 1 and 10 of the ’494 patent recite

1. A computer-based method, comprising the steps of:

receiving an incoming Downloadable;

deriving security profile data for the Downloadable, including a list of suspicious computer operations that may be attempted by the Downloadable; and

storing the Downloadable security profile data in a database.

and

10. A system for managing Downloadables, comprising:

a receiver for receiving an incoming Downloadable;

a Downloadable scanner coupled with said receiver, for deriving security profile data for the Downloadable, including a list of suspicious computer operations that may be attempted by the Downloadable; and

a database manager coupled with said Downloadable scanner, for storing the Downloadable security profile data in a database.

The ’494 patent issued on an application that was a continuation-in-part of the application for U.S. Patent No. 6,092,194.  The court acknowledged that its patent-eligibility analysis should be limited to “to the language of the asserted claims of the ’494 patent, which recite, in relatively broad terms, only three basic functions: receiving, deriving, and storing.”  However, the specification was nonetheless important: “each of these functions should be read in light of the specification, including its detailed descriptions of how a ‘Downloadable’ is ‘receiv[ed]’ or how ‘security profile data’ is ‘deriv[ed].’”

Thus, the court was faced with “the question of what constitutes the specification” for the ’494 patent.  Here, the ’494 patent incorporated the entire ’194 patent.  This was enough for the entire ’194 patent specification to be incorporated.

And why did incorporation by reference matter in this case?  Because, under step one of the Alice test, the court found that the ’494 patent claims were directed to the abstract idea of gathering, analyzing, and storing data.  Thus, in turning to Alice step two – whether the claims recited an inventive concept to transform the abstract idea into a patent-eligible claim – the court turned the ’494 patent specification to determine whether the claims recited unconventional, rather than generic, technology.  And to understand the recitation of “deriving security profile data” the court turned to the discussion of “downloadable security profile data,” found only in the specification of the ’494 patent’s parent, the ’194 patent.  This process was disclosed to use unconventional technology, and was enough to make the claims patent-eligible.

Lessons for Practice

This is yet another Section 101 case that easily could have gone the other way.  The claims are short, broad, and certainly don’t seem to involve the invention of technology.  My first reaction on reading this case was that the court went way too far in performing a “claim construction” that read things into the claims that were not in the claims on their face.

So, patent drafters: make your specifications as rich in detail as you can.  Mention unconventional architectures and arrangements of technology, and how these arrangements provide benefits.  In my experience, at least, it might be tough to convince a patent examiner to rely on such disclosure, but you just might sell it to a judge.

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