Software License Verification Patent-Ineligible under Alice

Implementing a process in a highly technical environment will not necessarily save patent claims challenged under the Alice abstract idea test, as illustrated in Ancora Technologies, Inc. v. HTC America, Inc., No. C16-1919 RAJ (W.D. Wash. Dec. 14, 2017).  In this case, the court dismissed, under FRCP 12(b)(6), a complaint of infringement of U.S. Patent No. 6,411,941, directed to a “method of restricting software operation within a license limitation,” even though the claimed method was implemented in the sophisticated technical environment of a computer BIOS system.

Claim 1 of the ’941 patent recites:

A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:

selecting a program residing in the volatile memory,

using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,

verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS, and

acting on the program according to the verification.

The plaintiff argued that, as in Enfish, LLC v. Microsoft Corp., the claims here were directed to improving operation of a computer. But, considering the claims under the first prong of the Alice abstract idea test, the court thought these patent claims were more like those at issue in Intellectual Ventures I LLC v. Erie Indemnity Corp., where the Federal Circuit held that claims directed to storage of electronic files were patent-ineligible. That is, the court explained, the claims of the ’941 patent “are not focused on how usage of the BIOS to store the verification structure leads to an improvement in computer security.”, Rather, the claims simply called for setting up a verification structure in the BIOS memory, which “is typically used to store data, and “[t]he ease or difficulty of altering this data does not change its function, or represent an improvement in its function.”

Turning to the second prong of the Alice test, the plaintiff, citing BASCOM Global Internet Services, Inc. v. ATT Mobility LLC., argued that claim 1 recited in unconventional arrangement of admittedly known parts by reciting “using an agent to software licensing verification structure in the BIOS, and then actually verifying a program using that verification structure.” But the court disagreed that this was an inventive concept overcoming the claimed abstract idea. The claim simply recited storing data in a pre-existing memory.

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