What Kind of Technical Improvement Is Enough for Patent Claims to Survive Alice?

Three patents directed to improving wireless digital signal transmission by “protecting data from loss due to transmission errors” have survived a summary judgment motion seeking to invalidate claims under 35 U.S.C. § 101 and the two-part Alice/Mayo test. The California Institute of Technology v. Broadcom Ltd.(C.D. Cal. Jan. 18, 2019). The court found that claims of US Patent Nos. 7,116,7107,421,032, and 7,916,781 “improve[d] on previous data encoding methods by allowing for more efficient data transmission,” and that this was a patent-eligible technical solution.

The three patents had a common priority claim and a common specification. At risk of oversimplification, the specification described, and the claims purportedly embodied, the technical improvement of manipulating bits of data to provide error correction codes to improve accuracy without bloating the amount of data being transmitted.

After addressing claim construction issues in providing a general background of the law of patent-eligibility, the court turned to the heart of the Defendants’ arguments, which relied on four Federal Circuit cases that the present court found distinguishable:

  • Digitech Image Techs., LLC v. Elecs. for Imaging, Inc. (Fed. Cir. 2014) - patent claims directed to a data structure capturing a device profile were held not patent-eligible. The present court distinguished Digitech as providing broad and result-oriented claims in contrast to the specific method of encoding claimed here.
  • Synopsys, Inc. v. Mentor Graphics Corp. (Fed. Cir. 2016) - patent claims that translated a description of a latch from a functional to a hardware component description were not patent eligible. These claims could have been practiced with a pen and paper, and, unlike the present claims, were not sufficiently complex to overcome this fact.
  • Recognicorp, LLC. v. Nintendo Co., Ltd. (Fed. Cir. 2017) - held a technique for encoding image data to be patent-in eligible. The court here distinguished the present claims as, unlike the Recognicorpclaims, not analogous to previously existing encoding.
  • Interval Licensing LLC v. AOL, Inc. (Fed. Cir. 2018) - held claims directed to data display patent-ineligible. Again, the claims from the prior case were characterized as result-oriented and not encompassing specific steps to achieve the result, unlike the present claims.

The court also discussed Visual Memory LLC v. NVIDIA Corp.in which a split Federal Circuit panel held that patent claims directed to a technique for storing data in a computer memory were patent-eligible. Even though, as the dissent in that case pointed out, the Visual Memory specification did not describe how to achieve the claimed storage, that was not fatal under § 101 rounds; there might be an enablement problem under § 112, but for § 101 purposes it was enough for the claims to recite a clear improvement to computer technology.

Likewise, and notably, the court thought that Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016), was notdistinguishable. The Defendants here had argued that Enfish’s “claims themselves recited the specific elements that were the improvements to how the self-referential database functioned,” whereas the claims here did not recite such elements. The court disagreed, because the claims all required “that information bits in a data set appear in a ‘variable number of subsets.’” The court explained that, “[l]ikeEnfishand Visual Memory, this element remains part of the claims, no matter the surrounding circumstances when the claims are practiced.”

Lessons for Practice

Even claims directed to manipulating data without explicit reference to hardware and/or claims that recite results can survive under Alice and § 101 if some structure or step in the claim leads to the result, and the result is a technical improvement.