Simio, LLC v. FlexSim Software Products, Inc.: Important Precedent for § 101 Patent-Eligibility of Software (or Lack Thereof)

The Federal Circuit ended 2020 with a precedential opinion holding that patent claims directed to providing a graphical user interface for controlling a software object’s behavior were patent-ineligible under the Alice/Mayo test and 35 USC § 101. Simio, LLC v. FlexSim Software Products, Inc., No. 2020-1171 (December 29, 2020; opinion by Chief Judge Prost, joined by Judges Clevenger and Stoll). The court held claims of U.S. Patent No. 8,156,468 were “directed to the abstract idea of using graphics instead of programming to create object-oriented simulations,” and that this abstract idea is patent ineligible.

Claim 1, the only independent claim of the ’468 patent, recites:

A computer-based system for developing simulation models on a physical computing device, the system comprising:

one or more graphical processes;

one or more base objects created from the one or more graphical processes,

wherein a new object is created from a base object of the one or more base objects by a user by assigning the one or more graphical processes to the base object of the one or more base objects;

wherein the new object is implemented in a 3-tier structure comprising:

an object definition, wherein the object definition includes a behavior,

one or more object instances related to the object definition, and

one or more object realizations related to the one or more object instances;

wherein the behavior of the object definition is shared by the one or more object instances and the one or more object realizations; and

an executable process to add a new behavior directly to an object instance of the one or more object instances without changing the object definition and the added new behavior is executed only for that one instance of the object.

The last limitation, reciting the “executable process,” was the focus of the court’s analysis. The court explained that this limitation

concerns changing a particular object’s behavior without changing the object’s overall definition in the simulation. By way of an example given during prosecution, in a simulation containing an object definition for “Poodle” and poodles Sam and Fred, a user might independently change Sam’s behavior (e.g., make him tend to chase cars) without similarly changing the behavior of Fred or any other poodle.

Under part one of the Alice test, this limitation could not save the claim from being found directed to an abstract idea. The main focus of the specification was use of “graphics instead of programming to create object-oriented simulations.” Citing FairWarning IP, LLC v. Iatric Sys., Inc. (Fed. Cir. 2016), the court explained that “[s]imply applying the already-widespread practice of using graphics instead of programming to the environment of object-oriented simulations is no more than an abstract idea.” (Emphasis in original.) The patent-owner’s argument that this application of computer graphics improved a user’s experience was to no avail because this argument did not explain how computing functionality was improved. Cases such as Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016) were “readily distinguished” because in these cases “the claims read in light of their specifications confirmed that they were directed to – were focused on – an actual technological improvement.”

The court further addressed the patent-owner’s argument that the recited “executable process” was “an improvement to computer functionality sufficient to survive step-one scrutiny.” The court emphasized the importance of looking at the claim as a whole, and explained that even if a claim limitation could evidence an inventive concept, the claim as a whole could still be directed to an abstract idea. Further, in this case, the specification throughout demonstrated a focus on the abstract idea of using computer graphics for object-oriented simulations, and mentioned the executable process only minimally. At best, the limitation could be a “potentially inventive application of the abstract idea at step two, rather than as sufficient to shift the claim’s focus away from the abstract idea at step one.”

However, under Alice step two, there was no inventive concept. The patent owner admitted at oral argument that “the functionality reflected in the executable-process limitation was conventional or known in object-oriented programming.” The only possibly inventive concept was implementing that functionality in the context of object-oriented simulations. But that inventive concept had already been found to be an abstract idea, and as such, could not supply the inventive concept rendering the claimed invention “significantly more” than the abstract idea. (Citing BSG Tech LLC v. BuySeasons, Inc., (Fed. Cir. 2018).

In addition to patent-eligibility, the court also held that the District Court had not improperly denied the patent owner leave to amend its complaint, because amendment would have been futile. Moreover, there was no showing that claim construction should have been necessary.

Lessons

I recall that in the early days after Alice was decided, many people thought that part two of the Alice test, which after all was referred to as “inventive step,” meant that showing that claims were non-obvious would be a path to overcoming patent-eligibility challenges. And one way of looking at this case is that the claims combined two known features of computer programming, object-oriented simulations, and graphical manipulation of objects. While there have subsequently been many cases, too many decide, warning against conflating patent-eligibility and non-obviousness, the present case illustrates that combinations of known technology, at least in the software area, can face patent-eligibility obstacles.

Another way to look at this case is that it emphasizes the importance of showing a technical improvement, and that a technical improvement has to be an improvement to generic computing technology, and not to a specific user application. Or, to tie together the different ways of looking at the result here, a novel and non-obvious technical improvement is more likely to be patent-eligible then a potentially obvious combination of pre-existing technology.