Recitations of Hardware Can Save Patent-Eligibility

A court denied a motion to dismiss that alleged patent-ineligible subject matter where the patent claims recited physical structure that, the court said, showed that the claims were not directed to a patent-ineligible abstract idea under 35 U.S.C. § 101.  SPEX Technologies, Inc. v. Apricorn, No. 2-16-cv-07349 (C.D. Cal. January 9, 2017).  U.S. Patent Nos. 6,088,802 and 6,003,135 included claims directed to providing secure communications between peripheral devices.

The defendant argued that independent claim 11 of the ’802 patent is “directed to the abstract idea of securing access to secret information, which is a concept that has been practiced throughout modern history by humans.”  The defendant made a similar argument concerning independent claim 57 of the ’135 patent.  Those two claims are reproduced below:

Claim 11 of the ’802 patent recites:

A peripheral device, comprising:

security means for enabling one or more security operations to be performed on data;

target means for enabling a defined interaction with a host computing device;

means for enabling communication between the security means and the target means;

means for enabling communication with a host computing device; and

means for mediating communication of data between the host computing device and the target means so that the communicated data must first pass through the security means.

Claim 57 of the ’135 patent recites:

For use in a modular device adapted for communication with a host computing device, the modular device comprising a security module that is adapted to enable one or more security operations to be performed on data and a target module that is adapted to enable a defined interaction with the host computing device, a method comprising the steps of:

communicating with the host computing device to exchange data between the host computing device and the modular device;

performing one or more security operations and the defined interaction on the exchanged data;

mediating communication of the exchanged data between the host computing device and the modular device so that the exchanged data must first pass through the security module; and

operably connecting the security module and/or the target module to the host computing device in response to an instruction from the host computing device.

Looking at claim 11 of the ’802 patent, the court was persuaded that the claim was “tied to a specific structure, which is a peripheral device, and produces a technological improvement,” i.e. “[t]he invention addresses security problems pertaining to peripheral devices.”  The court concluded that “claim 11 describes a physical structure that contains a combination of components, not a method or system that uses a general computer to secure access to secret information,” and therefore “claim 11 is not directed to an abstract idea.”  Moreover, without reaching the second step of the Alice Corp. v. CLS Bank test (which looks for a significant additional innovation), the court expressed it view that a finding of a patentable inventive concept likely would be supported.

The court quickly reached a similar conclusion regarding claim 57 of the ’105 patent.  First, “[t]he preamble of the claim describes a series of steps that a modular device can use with a host computing device.”  The claim recited a machine performing a set of steps, but these steps “occur for the purpose of creating a technological improvement, which is to enhance security operations, so this claim is not an abstract idea.”

Lessons for Practice

Patent-eligibility under Alice and its progeny is a slippery thing, and sometimes courts get it wrong.  Regardless of whether it reached the right result, is solving “security problems” by itself a technological improvement under cases like Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. AV Automotive LLC?  I believe other courts would have looked at the claims here and found that the claims were directed to the abstract idea of providing security, and that the recited physical structure was simply an arrangement of conventional hardware, providing no inventive concept.

That said, the lessons for patent drafters are clear.  Consider preambles that you can argue set out a technological environment and/or purpose.  Draft patent claims that recite arrangements of hardware.  And above all, consider the problem-solution approach, often disfavored in the U.S. but de rigueur in other jurisdictions, to drafting patent applications, focusing on a technological problem, and a technological improvement that solves the problem.

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Practical Considerations of IPR Estoppel
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